Ex Parte Gilbert

Board of Patent Appeals and Interferences

Jan 11, 2010

11016276 (B.P.A.I. Jan. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAWANDA F. GILBERT
____________

Appeal 2009-010769
Application 11/016,276
Technology Center 3700
____________

Decided: January 11, 2010
____________

Before WILLIAM F. PATE, III, JOHN C. KERINS and
MICHAEL W. O’NEILL, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Tawanda F. Gilbert (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-20, all of the claims
currently pending in the application. Appellant further appeals from a
concomitant objection under 35 U.S.C. § 132(a), contained in the Final
Rejection, to the introduction of new matter into the Specification. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).1

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is directed to an absorbent article for
absorbing bodily fluid. Independent claim 1 is reproduced below, and is
representative of the overall claimed subject matter:
1. An absorbent article for absorbing a bodily
fluid comprising:

a pad region having a width and comprising a first
absorbent core, a liquid pervious surface, and a
liquid impervious surface, wherein the absorbent
core of the pad region is positioned between the
liquid pervious surface and the liquid impervious
surface; and

a non-corrugated, conformable gluteal region
comprising:

1 Section 2163.06(II) of the MPEP sets forth that when both a rejection of
claims and an objection to the specification based upon the introduction of
alleged new matter have been made, the objection becomes appealable and
is not to be decided by petition.
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a gluteal insert region having a width, a length, and
comprising a second absorbent core in fluid
connection with the first absorbent core, an inner
gluteal region surface surrounding the second
absorbent core, an outer gluteal region surrounding
the inner gluteal region surface, and an outer
gluteal region surface surrounding the outer gluteal
region, wherein the inner gluteal region surface
comprises a liquid impervious surface, the outer
gluteal region comprises an absorbent material,
and the outer gluteal region surface comprises a
liquid pervious surface, wherein the width of the
gluteal insert region is less than the width of the
pad region, and wherein the gluteal insert region is
configured to secure at least a portion of the
absorbent article between a user's buttocks to wick
fluid from the pad region; and

a bib region having a proximal surface and a distal
surface wherein the gluteal insert region and the
bib region are discrete structures and the gluteal
insert region connects to the bib region such that
the gluteal insert region projects above the
proximal surface of the bib region, and the bib
region lies on either side of at least the length of
the gluteal insert region; and

wherein the absorbent article extends at least about
12 inches in length.

THE REJECTION
The Examiner has rejected claims 1-20 under the first paragraph of 35
U.S.C. § 112, as failing to comply with the written description requirement.
The Examiner has further objected, under 35 U.S.C. § 132(a), to
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amendments made to the Specification in an Amendment filed August 27,
2007, on the basis that the changes constitute new matter.

ISSUES
The Examiner found that the application as originally filed fails to
evidence, to persons of ordinary skill in the art, that Appellant was in
possession of the claimed invention, in particular, an absorbent article that
includes a gluteal region as now claimed, in combination with a bib region.
The Examiner further found that amendments made in the Specification that
parallel the language now presented in the claims lacked support in the
application as originally filed, and thus constitute new matter.
Appellant contends that the Examiner’s position is unsupported at
law, and that various parts of the Specification discussing the bib region and
the gluteal insert region, as well as the use of non-limiting language in
describing different embodiments of the invention, evidence that Appellant
was in possession of the invention as now claimed.
The issue joined here is whether Appellant has established that the
Examiner erred in finding that the application as originally filed fails to
evidence that Appellant was in possession of the invention as now claimed.

FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
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FF 1. Appellant’s Specification, in the section headed “Brief
Description of the Drawings”, identifies Figures 4B-4D as “show[ing]
alternative cross-sectional embodiments of the gluteal region of the
absorbent article of Figure 4A . . . ”. (Spec., p. 5, ll. 5-6).
FF 2. Appellant’s Specification describes the constructions of the
gluteal insert regions illustrated in Figures 4B-4D as including particular
structures, e.g., outer adsorbent region 404, liquid impervious inner gluteal
region surface 401, and liquid pervious outer region 406. (Spec. p. 12, l. 25-
p. 13, l. 26). The discussion of providing particular properties relative to
liquid (absorbency, perviousness, imperviousness) would be understood by
persons of ordinary skill in the art that these properties are called out in
order to impart particular liquid management capabilities to the gluteal insert
region. (Id.).
FF 3. The two surfaces 108, 110 that form the bib region 122, are
disclosed as having particular properties (perviousness, imperviousness)
relative to liquids, and would be understood, by persons of ordinary skill in
the art, to have particular liquid management capabilities as a result of those
properties. (Spec., p. 9, ll. 13-15; p. 12, ll. 16-18).
FF 4. The gluteal insert region shown in Figure 4D of Appellant’s
application is specifically described as having an outer gluteal region surface
406 that has particular properties relative to liquids. (Spec., p. 13, ll. 3-5,
ll. 12-14).
FF 5. The gluteal insert region shown in Figure 1C has no such outer
surface structure. (Spec., passim; Fig. 1C).

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PRINCIPLES OF LAW
An appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See Ex parte Yamaguchi, 88 USPQ2d
1606, 1614 (BPAI 2008) (on appeal, applicant must show examiner erred);
Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 83
USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 1509,
1519 (BPAI 2007).
Compliance with the written description requirement set forth in the
first paragraph of 35 U.S.C. § 112 does not require that the claimed subject
matter be described identically, but the disclosure as originally filed must
convey to those skilled in the art that applicant had invented the subject
matter later claimed. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
Stated using somewhat different terminology, the applicant must convey,
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, (Fed. Cir. 1991). Precisely how close
the original description must come to comply with the description
requirement must be determined on a case by case basis. In re Smith, 458
F.2d 1389, 1395 (CCPA 1972). The inquiry into whether the description
requirement is met is a question of fact. In re Wertheim, 541 F.2d 257, 262,
(CCPA 1976); In re Ruschig, 379 F.2d 990, 996 (CCPA 1967).

ANALYSIS
Independent claim 1 is directed to an absorbent article for absorbing a
bodily fluid having a pad region, a gluteal region and a bib region. (Appeal
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Br., Claims Appendix). The gluteal region, in pertinent part, is recited as
including:
a gluteal insert region . . . comprising a second
absorbent core in fluid connection with the first
absorbent core [core of the pad region], an inner
gluteal region surface surrounding the second
absorbent core, an outer gluteal region surrounding
the inner gluteal region surface, and an outer
gluteal region surface surrounding the outer gluteal
region, wherein the inner gluteal region surface
comprises a liquid impervious surface, the outer
gluteal region comprises an absorbent material,
and the outer gluteal region surface comprises a
liquid pervious surface . . .
(Id.).
The Examiner acknowledges that Figures 4B and 4C of the
application as filed provide support for, i.e., provide an adequate written
description of, a gluteal insert region as set forth above. (Answer 4). The
Examiner further finds that those drawing figures do not show the gluteal
insert region in combination with a bib region. (Id.). The Examiner
additionally finds that Figure 1C, for example, shows a bib region as
claimed in combination with a gluteal insert region, but that the gluteal insert
region is not as claimed, in that it does not include a core, an outer gluteal
region, and inner and outer surfaces. (Id.).
The Examiner’s basis for the ultimate finding that the application as
filed does not evidence that Appellant was in possession of the claimed
invention starts with a recognition that the application does not teach, in one
single embodiment, the gluteal insert region as presently claimed in
combination with a bib region. (Answer 4, 6). The Examiner takes the
position that, “the manner in which the exemplary embodiments are
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illustrated and described in the originally-filed specification would not
convey to one of ordinary skill in the art that the inventor possessed the
invention.” (Answer 6). In this regard, the Examiner notes that the
Specification does not disclose that the disclosed embodiments, which differ
in construction, could be used in combination with other of the disclosed
embodiments (Answer 8), and that the constructional details of the gluteal
region in the embodiment disclosed as having a bib portion differ from those
shown and described in Figures 4B and 4C, such that persons skilled in the
art would not recognize the combinability of the latter into the former.
(Answer 7).
We agree with Appellant that the written description requirement in
the first paragraph of § 112 does not mandate that all claim features of a
claim at issue be explicitly shown or described in a single embodiment.
That is not the sole basis for the rejection, rather it is the starting point of the
analysis. Were all of the claim features here shown or described in a single
embodiment, the application would clearly evidence that Appellant was in
possession of the claimed invention. Since they are not so shown or
described, it is reasonable to consider the possibility that the application
does not evidence possession of a claim that combines features explicitly
disclosed only in different embodiments.
Appellant cites to the disclosure in the Specification directed to the
absorbent article of Figures 3A-3C evidences that various embodiments of
the “absorbent article 100 invention” may, or may not, have a bib region.
(Appeal Br. 9). Appellant continues with the assertion that, “[n]owhere does
the originally-filed specification teach or suggest that the particular
configuration of the gluteal insert region 130 is dictated in any way by the
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presence or absence of a bib region 122, and that one of ordinary skill in the
art would not understand the embodiments to be limited in this respect”.
(Appeal Br. 10). In a further effort to establish that the Specification
evidences that features of different embodiments would be understood as
being applicable to other embodiments, Appellant points to the absorbent
article 100 and the gluteal insert region 130 of Figures 1A-1C, and
characterizes the gluteal insert region as being “virtually identical to that
shown in FIG. 4D and described at page 13, lines 22-26.” (Id.). Having
thus established a purported connection between an embodiment shown
within Figures 4A-4D and the embodiment in Figures 1A-1C, Appellant
urges that this would convey to one of ordinary skill in the art that, “the
invention possessed by the inventor, . . . , was such that the gluteal insert
regions 130 of FIGS. 4B-4C [the currently claimed structure], like the
gluteal insert region 130 of FIG. 4D illustrated therebeside, could be
combined with an absorbent article 100 having a bib region 122, as now
claimed.” (Id.).
We find Appellant’s above contentions to be unpersuasive. The
Specification, in the section headed “Brief Description of the Drawings”,
identifies Figures 4B-4D as “show[ing] alternative cross-sectional
embodiments of the gluteal region of the absorbent article of Figure 4A . . . ”
(FF 1). Further, the description of the constructions of the gluteal insert
regions illustrated in Figures 4B-4D evidences that particular structures
(e.g., outer adsorbent region 404, liquid impervious inner gluteal region
surface 401, liquid pervious outer region 406) are to be provided to impart
certain liquid management capabilities to the gluteal insert region. (FF 2).
Comparing these constructions to that illustrated in Figures 1A-1C, in which
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the absorbent core 106 of the gluteal insert region is disposed between two
surfaces 108, 110 that form the bib region 122, and that have their own
liquid management properties (FF 3), we find that one of ordinary skill in
the art would, contrary to Appellant’s argument, understand that the
originally-filed specification teaches or suggests, with respect to the Figure
4A-4D embodiments, that the particular configuration of the gluteal insert
region 130 may well be dictated by the presence or absence of a bib region.
In other words, the person of ordinary skill in the art would view the
provision of the additional elements disclosed in Figures 4B-4D as being
provided in lieu of providing a bare absorbent core disposed between two
layers of a bib region that may interact, in a liquid management sense, with
the absorbent core. Furthermore, that Figures 3A-3C disclose embodiments
in which a bib is either present or not does not evidence that the
embodiments of the gluteal insert region illustrated in Figures 4B-4D would
be understood by persons of ordinary skill in the art as being combinable
with those embodiments that include a bib region.
We, like the Examiner (see, Answer 7), find Appellant’s attempt to
bootstrap the gluteal insert region illustrated in Figure 4D into the
embodiment of Figure 1C, on the basis that they are “virtually identical”, to
not be well taken. The gluteal insert region shown in Figure 4D is
specifically described as having an outer gluteal region surface 406 that is to
aid in managing liquid storage or transport. (FF 4). The gluteal insert
region shown in Figure 1C has no such outer surface structure. (FF 5).
Thus, despite the not-too-different cross-sectional appearance, as illustrated,
Appellant has not established that the two structures are “virtually identical”
in function, and the Specification, in presenting them as different
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embodiments, suggests otherwise. Thus, the extended bootstrapping of the
gluteal insert regions illustrated in Figures 4B and 4C, which appear to have
more intricate liquid management structures, into the Figure 1C
embodiment, is unavailing as well.
Appellant further argues that the consistent use of reference numerals
122 and 130 in all of the drawing figures to refer to the bib region and the
gluteal insert region, respectively, clearly conveys to the person of ordinary
skill in the art that the invention possessed at the time of filing included the
interchangeability of these features between the exemplary embodiments.
Viewing the Specification and the associated drawings as a whole, we find,
as above, that the preponderance of the evidence supports the opposite
proposition. In the only explicit disclosure relevant to this point, Figures
4B-4D are identified as being the alternative cross-sectional embodiments of
the gluteal region of only the absorbent article illustrated in Figure 4A (FF
1), and not alternative embodiments for the absorbent articles in Figures 1A-
1C or Figures 3A-3C. As above, that explicit disclosure, coupled with the
apparent differences in liquid management functions of the different
embodiments, and the possible influence thereon of disposing the Figure 4B-
4D gluteal insert region configuration between layers of a bib region,
outweigh any significance of using the same reference numerals for all of
the different embodiments.
Finally, Appellant argues that, because the claims on appeal are
enabled by the present Specification and associated drawings, this evidences
that the written description requirement is also met. (Appeal Br. 11-12).
Appellant cites to the Lizardtech case as supporting the proposition that a
recitation of how to make and use the invention across the full breadth of the
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claim is ordinarily sufficient to demonstrate possession of the full scope of
the claims. (Reply Br. 7, quoting Lizardtech, Inc. v. Earth Resource
Mapping, Inc., 424 F.3d 1336, 1344-45 (Fed. Cir. 2005)). Here, however,
there is no explicit description or recitation of how to make and use the
invention as presently claimed, as evidenced at least by Appellant’s
proposed amendments to the Specification that stand objected to as
constituting new matter. Only in those proposed changes do we see a
description of the claimed invention having both a bib region and a gluteal
insert region of the specifically claimed construction. The legal standard for
meeting the enablement standard is that the disclosure must be sufficient to
allow persons of ordinary skill in the art to make and use the invention
without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232
(CCPA 1982). Assuming that the Examiner was of the opinion that the
Specification enables the claimed invention to be made and used without the
use of undue experimentation, that does not compel a finding that Appellant
was in possession of the invention.
Appellant has not demonstrated that the Examiner erred in rejecting
claims 1-20 under 35 U.S.C. § 112, first paragraph, and the rejection will be
sustained.
Appellant has presented no different or additional arguments
attempting to establish error in the Examiner’s objection to the amendments
to the Specification under 35 U.S.C. § 132(a), and the issue presented is
essentially the same as that for the rejection under 35 U.S.C. § 112.
Accordingly, that objection will be sustained as well.

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CONCLUSIONS
Appellant has not established that the Examiner erred in rejecting
claims 1-20 under 35 U.S.C. § 112, first paragraph; and in objecting to the
amendments to the Specification under 35 U.S.C. § 132(a).

DECISION
The decision of the Examiner to reject claims 1-20, and to object to
the amendments to the Specification presented in the Amendment dated
August 27, 2007, is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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