Ex Parte Hughes et alDownload PDFBoard of Patent Appeals and InterferencesJun 22, 201011013268 (B.P.A.I. Jun. 22, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JEANNE MARIE HUGHES, RONALD BOSMAN VISSCHER, PETER CHARLES MASON JR., FOLKE SCHLUETER, EMMA SOMMA, GIOVANNI CARLUCCI, and PAUL THOMAS WEISMAN ____________ Appeal 2009-003037 Application 11/013,268 Technology Center 3700 ____________ Decided: June 23, 2010 ____________ Before: LINDA E. HORNER, WILLIAM F. PATE III, and FRED A. SILVERBERG, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-003037 Application 11/013,268 2 STATEMENT OF THE CASE Jeanne Marie Hughes et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-7. Br. 2. Claims 8-20 are withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. THE INVENTION Appellants’ claimed invention is a method of placing a feminine hygiene articles in an undergarment. Claims App., Claim 1. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for placing a feminine hygiene article in the crotch portion of an undergarment having a crotch portion bounded on opposite sides by portions of curved leg openings, the method comprising the steps of: a. providing a feminine hygiene article having a body- facing surface and at least one functional enhancement indicator visible from said body-facing surface, said functional enhancement indicator providing a distinct visual emphasis to a portion of said feminine hygiene article; b. orienting said feminine hygiene article with respect to said crotch portion such that said at least one functional enhancement indicator is oriented toward the front of said undergarment; and, c. affixing said feminine hygiene article to said crotch portion of said undergarment. THE REJECTIONS Appellants seek review of the following rejections by the Examiner: 1. Rejection of claims 1, 2, 6, and 7 under 35 U.S.C. § 102(b) as anticipated by Hunter (US 6,077,255). Appeal 2009-003037 Application 11/013,268 3 2. Rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Hunter in combination with either Murji (D374,928), or Unger (D387,158)1, or Papajohn (US 4,758,241). 3. Rejection of claims 4-6 under 35 U.S.C. § 103(a) as unpatentable over Hunter and Trombetta (US Des. 412,574). ISSUES The issues before us are: Does Hunter disclose a functional enhancement indicator as recited in claim 1? Does Hunter disclose “orienting said feminine hygiene article with respect to said crotch portion such that said at least one functional enhancement indicator is oriented toward the front of said undergarment” as recited in independent claim 1? Does the proposed combination of Hunter and Trombetta disclose an asymmetrically-shaped feminine hygiene article as called for in claims 4 and 5? FINDINGS OF FACT We find that the following enumerated facts are supported by at least a preponderance of the evidence. 1. Appellants’ Specification describes that: Functional enhancement indicator 34 can be an indication or signal perceptible to the user that corresponds to a functionally-distinguishable portion of a feminine hygiene article. A functionally-distinguishable portion of a feminine hygiene article is a portion that is different 1 The Examiner’s Evidence Relied Upon properly identifies D387,158 as Unger, while the body of the rejection mistakenly identifies this reference as Proglhof. Appeal 2009-003037 Application 11/013,268 4 composition, configuration, or construction from relative to adjacent portions of the article. Spec. 9:6-11. 2. Appellants’ Specification describes that: Functional enhancement indicator 34 can be disposed off-center of the feminine hygiene article; that is, it can be a visually-perceptible mark or signal that is itself not centered with respect to at least the transverse centerline T. In one embodiment, as shown in FIG. 1, functional enhancement indicator 34 is off center with respect to the transverse centerline, but is symmetric with respect to the longitudinal centerline. In this manner, functional enhancement indicator 34 can identify one end region of a feminine hygiene article as being a region of particular functional significance, for example, as the region of intended fluid entry. Functional enhancement indicator 34 can also signal the front of an incontinence pad 10 to indicate to the user the portion of the article intended to be placed for the function of absorbing urine and vaginal discharge. Functional enhancement indicator 34 can also identify a region of the pad having other enhanced functionality, such as greater absorbency, greater fluid containment, less leakage, better dryness, better sensate concentration, greater odor control additives, or the like. Spec. 10:8-20. 3. Appellants’ Specification does not provide a lexicographic definition of the term “orienting,” as used in claim 1. Spec. passim. 4. The word “orient” is commonly understood to mean “to set or arrange in any determinate position especially in relation to the points of the compass.” WEBSTER’S NEW UNIVERSAL UNABRIDGED DICTIONARY (Deluxe 2d ed. 1983) (“orient,” transient verb, definition 1b). Appeal 2009-003037 Application 11/013,268 5 5. Hunter discloses an absorbent article such as a sanitary napkin 20 having a main body portion 21, a transverse centerline T, and a longitudinal centerline L. Hunter, col. 5, ll. 40-41, 51-52; figs. 1, 3. 6. Hunter discloses that sanitary napkin 20 includes a pair of side wrapping elements 50 that extend laterally outward beyond the lateral side edges 22 of the main body portion 21. Hunter, col. 7, ll. 34-38; fig. 1. Side wrapping elements 50 are comprised of a web of material or laminate, and have at least one and preferably two zones of extensibility 56 that are extensible in the longitudinal or transverse direction or in a direction in between. Hunter, col. 7, ll. 50-51; col. 8, ll. 15-33; fig. 1. Zones of extensibility 56 may be formed by ring rolling (or pre-corregating) two regions of each of side wrapping elements 50, creating fold lines 60. Hunter, col. 10, ll. 63-65; col. 11, ll. 6-9; figs. 1, 3. 7. Hunter discloses zones of extensibility 56 are depicted as symmetrical about the transverse axis T of the sanitary napkin 20. Hunter, col. 1, ll. 40-41; col. 10, ll. 63-65; figs. 1, 3, 5, 6. 8. Hunter discloses that when sanitary napkin 20 is positioned for use, a central pad fastener 44 secures the main body portion 21 of the sanitary napkin 20 to the crotch region of the undergarment. Hunter, col. 11, ll. 21-27; figs 1-3, 6. Sanitary napkin 20 is placed in a pair of panties so that the panties edges E cross the distal edge 54 within zones of extensibility 56 of the side wrapping element 50 at two points P, and side wrapping elements 50 fold around the elasticized side edges of the wearer’s panties. Hunter, col. 6, ll. 61-65; col. 8, ll. 56-64; col. 11, ll. 21-27; figs. 3, 6. Appeal 2009-003037 Application 11/013,268 6 9. Trombetta discloses an ornamental design for a sanitary napkin that appears to be symmetrical about the transverse axis. Trombetta, figs. 1, 2. ANALYSIS Rejection of claims 1, 2, 6, and 7 under 35 U.S.C. § 102(b) as anticipated by Hunter, and rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Hunter and either Murji, or Unger, or Papajohn Appellants argue claims 1, 2, 6, and 7 as a group. Br. 4-5. We select claim 1 as the representative claim, and claims 2, 6, and 7 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). “Both anticipation under § 102 and obviousness under § 103 are two- step inquiries. . . . The first step in both analyses is a proper construction of the claims. . . . The second step in the analyses requires a comparison of the properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (citations omitted). Independent claim 1 is a method of placing a feminine hygiene article in the crotch portion of an undergarment including the steps of (a) providing a feminine hygiene article having “at least one functional enhancement indicator … providing a distinct visual emphasis to a portion of said feminine hygiene article”, and (b) orienting the feminine hygiene article with respect to the crotch portion of the undergarment such that “at least one functional enhancement indicator is oriented towards the front of the undergarment.” The Examiner determined that the method steps of claim 1 set forth “orienting the article such that the at least one indicator is oriented toward the front of the undergarment, not vice versa.” Ans. 5. We agree with the Examiner’s reading of the claim. Appeal 2009-003037 Application 11/013,268 7 Appellants’ Specification describes that the functional enhancement indicator can be an indication to the user, such as a visually-perceptible mark that corresponds to a functionally-distinguishable portion of a feminine hygiene article, that is, a portion that is different in composition, configuration, or construction from adjacent portions, such as a portion having increased absorbency (Facts 1, 2). Claim 1 recites only that the functional enhancement indicator provides “a distinct visual emphasis to a portion of said feminine hygiene article” and does not require that the indicator must indicate any specific functional enhancement of the article. As such, we interpret “functional enhancement indicator” in light of the claim language and the Specification to mean a visually-perceptible mark corresponding to a functionally-distinguishable portion of the feminine hygiene article. Step (b) of claim 1 includes “orienting said feminine hygiene article with respect to said crotch portion such that said at least one functional enhancement indicator is oriented toward the front of said undergarment.” Appellants’ Specification does not define “orienting,” which is commonly understood to mean “to set or arrange in any determinate position especially in relation to the points of the compass” (Facts 3, 4). The claim language, as written, does not require a person employing the method to use the functional enhancement indicator to orient the article. Rather, the language of claim 1 merely calls for the user to orient the article with respect to the crotch portion, such that upon orientation at least one functional enhancement indicator is oriented toward the front of the undergarment. Therefore, the orienting step, as written, does not require that the functional enhancement indicator provides the user with the correct orientation. We interpret the orienting step of claim 1 to require arranging the feminine Appeal 2009-003037 Application 11/013,268 8 hygiene article with respect to the crotch portion of the user’s undergarment so that as a result of such orienting step at least one functional enhancement indicator is arranged toward the front of the undergarment. Appellants contend that Hunter fails to disclose a functional enhancement indicator as recited in independent claim 1 because the element identified by the Examiner (zones of extensibility 56) is not oriented toward the front of the undergarment. Br. 4-5. We disagree. We agree with the Examiner’s finding that Hunter’s corrugated zones of extensibility 56 satisfy the claimed at least one functional enhancement indicator because the zones of extensibility 56, being corrugated and having fold lines 60, provide a visually-perceptible mark corresponding to a functionally-distinguishable portion (i.e., an extensible portion) of the feminine hygiene article (Fact 6). Ans. 3, 5. We further agree with the Examiner’s finding that Hunter discloses the orienting step of claim 1. Ans. 5-6. Hunter’s functional enhancement indicators (zones of extensibility 56) are disposed symmetrically about the transverse axis of the feminine hygiene article (sanitary napkin 20) (Facts 5- 7). Hunter discloses orienting a feminine hygiene article (sanitary napkin 20) in the crotch portion of an undergarment by arranging the side wrapping elements 50 across the edges of the panties E (Fact 8). As a result of such orientation, two functional enhancement indicators (zones of extensibility 56) are oriented towards the rear of the undergarment and two are oriented towards the front of the undergarment. Thus, we find that Hunter discloses “providing a feminine hygiene article having … at least one functional enhancement indicator … providing a distinct visual emphasis to a portion of said feminine hygiene article” and “orienting said feminine hygiene article with respect to said crotch portion Appeal 2009-003037 Application 11/013,268 9 such that said at least one functional enhancement indicator is oriented toward the front of said undergarment” as required by independent claim 1. Claims 2, 6, and 7 fall with claim 1. Claim 3 also depends from claim 1. Because the rejection of claim 3 under § 103(a) relies upon the same findings of fact related to Hunter used in the anticipation rejection of claim 1, and because Appellants simply assert the same arguments used against the rejection of claim 1 with respect to claim 3, for the reasons explained in the analysis of claim 1, supra, those arguments are also unconvincing with respect to claim 3. Rejection of claims 4-6 under 35 U.S.C. § 103(a) as unpatentable over Hunter and Trombetta Claims 4 and 5 We agree with Appellants that claims 4 and 5 depend from claim 3, and therefore contain the limitation of claim 3 that the feminine hygiene article is asymmetrically-shaped about the transverse centerline. The rejection of claims 4 and 5 makes no finding that either Hunter or Trombetta discloses this limitation, or that a modification of the feminine hygiene article of Hunter would have been obvious (Ans. 4, 6-7). Given this, we cannot sustain the rejection of claims 4 and 5. Claim 6 In contrast to claims 4 and 5, claim 6 depends directly from claim 1, and therefore does not contain the limitation that the feminine hygiene article is asymmetrically-shaped about the transverse centerline. Appellants repeat the arguments against Hunter used against the rejection of claim 1 with respect to claim 6. Br. 11. For the reasons explained in the analysis of claim 1, supra, we find those arguments unconvincing here as well. Appeal 2009-003037 Application 11/013,268 10 DECISION We AFFIRM the Examiner’s decision to reject claims 1, 2, 6, and 7 as anticipated by Hunter, the Examiner’s decision to reject claim 3 as unpatentable over Hunter and either Murji, or Unger, or Papajohn, and the Examiner’s decision to reject claim 6 as unpatentable over Hunter and Trombetta. We REVERSE the Examiner’s decision to reject claims 4 and 5 as unpatentable over Hunter and Trombetta. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009). AFFIRMED-IN-PART nhl THE PROCTER & GAMBLE COMPANY GLOBAL LEGAL DEPARTMENT - IP SYCAMORE BUILDING - 4TH FLOOR 299 EAST SIXTH STREET CINCINNATI OH 45202 Copy with citationCopy as parenthetical citation