Ex Parte Hughes et al

Board of Patent Appeals and Interferences

Jun 22, 2010

11013268 (B.P.A.I. Jun. 22, 2010)

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
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Application 11/013,268
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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Claims 8-20 are withdrawn.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).
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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.
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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).
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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.
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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.
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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
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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
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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.
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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

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