Ex Parte Kim et al

Board of Patent Appeals and Interferences

Jul 22, 2005

09990787 (B.P.A.I. Jul. 22, 2005)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HYUNGBYUM KIM, EOYEON HWANG,
HYUNGWOO PARK, and EUNJUNG KANG
__________
Appeal No. 2005-0961
Application No. 09/990,787
__________
ON BRIEF
__________
Before WILLIAM F. SMITH, GARRIS, and JEFFREY T. SMITH,
Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1-16.
The subject matter on appeal relates to a liner for personal
care products. With reference to Figures 2 and 3 of the
appellants’ drawing, the liner 31 comprises a hydrophilic first
bodyside apertured nonwoven layer 41 laminated with a hydrophobic
Appeal No. 2005-0961
Application No. 09/990,787
1 With respect to this rejection, the appellants have
separately grouped the rejected claims such that claims 1-12, 15
and 16 constitute Group I and claims 13 and 14 constitute Group
II. See page 4 of the brief. Therefore, in assessing the merits
of the section 102 rejection, we will focus on independent claims
(continued...)
2
second apertured nonwoven layer 42. This liner may be part of a
pantiliner which includes a liquid impervious baffle 27 and an
absorbent core 23. This appealed subject matter is adequately
represented by independent claims 1 and 13 which read as follows:
1. A liner for personal care products comprising a
hydrophilic first bodyside apertured nonwoven layer laminated
with a hydrophobic second apertured nonwoven layer.
13. A pantiliner comprising a liquid permeable liner, a
liquid impervious baffle, and an absorbent core positioned
therebetween, wherein said liner comprises a hydrophilic first
bodyside apertured nonwoven layer laminated by a spunlace process
with a hydrophobic second apertured nonwoven layer.
The reference set forth below is relied upon by the examiner
in the section 102 rejection before us:
Chen et al. WO 98/42290 Oct. 1, 1998
Claims 11 and 12 are rejected under the second paragraph of
35 U.S.C. § 112 for failing to particularly point out and
distinctly claim the subject matter which the appellants regard
as their invention.
All of the appealed claims are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Chen.1
Appeal No. 2005-0961
Application No. 09/990,787
1(...continued)
1 and 13 which are representative of the aforementioned claim
groupings.
3
We refer to the brief and to the answer for a complete
discussion of the viewpoints expressed by the appellants and by
the examiner concerning these rejections.
OPINION
For the reasons set forth in the answer and below, these
rejections will be sustained.
On the record of this appeal, the appellants have chosen to
not contest the examiner’s section 112, second paragraph,
rejection of claims 11 and 12. See pages 4 and 8 of the brief.
Therefore, we hereby summarily sustain this rejection.
As for the section 102 rejection, it is paramount to bear in
mind that a reference will anticipate if it expressly or
inherently discloses every limitation recited in the claims even
though it does not address the intended use of the claimed
structure. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d
1429, 1431-32 (Fed. Cir. 1997). Further, in our consideration of
this rejection, it is important to recognize that, during
examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification. In
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Application No. 09/990,787
4
re Hyatt, 211 F.2d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir.
1998).
The examiner has properly found appealed independent claim 1
to be anticipated by Chen. This is because the claim 1 liner is
structurally indistinguishable from the liner of Chen since each
includes a hydrophilic apertured nonwoven layer laminated with a
hydrophobic apertured nonwoven layer (e.g., see Chen’s Figure 5,
the paragraph bridging pages 41 and 42 and the second full
paragraph on page 48). According to the appellants, this
anticipation finding is erroneous because the aforementioned
layers of the claim 1 liner and Chen’s liner are opposite to one
another, that is, the bodyside layer of claim 1 is the
hydrophilic layer whereas the bodyside layer of Chen is the
hydrophobic layer. This argument is unpersuasive for several
reasons.
First, this argument concerns the intended use of the claim
1 liner rather than its structure. As previously explained, a
reference disclosing recited structural limitations will
anticipate a claim even though it does not disclose the intended
use of the claim structure. Schreiber, 128 F.3d at 1477, 44
USPQ2d at 1431. Here, the “bodyside” recitation of claim 1
relates solely to the disposition of the claimed liner during use
Appeal No. 2005-0961
Application No. 09/990,787
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and therefore does not serve to structurally distinguish the
claim liner from Chen’s liner.
Second, as correctly pointed out by the examiner and not
disputed by the appellants, Chen discloses an embodiment wherein
his dual-zone web or liner is formed of apertured multiple plies
(e.g., again see the second full paragraph on page 48). Because
each of these apertured multiple plies would comprise a
hydrophilic apertured nonwoven layer laminated with a hydrophobic
apertured nonwoven layer, the ultimate multi-ply product would
necessarily contain a hydrophilic layer disposed between a first
hydrophobic layer (e.g., in contact with a body) and a second
hydrophobic layer (e.g., in contact with Chen’s absorbent core).
We fully agree with the examiner’s finding that this sandwiched
hydrophilic layer would be properly characterized as “bodyside”
relative to the second hydrophobic layer. Viewed from this
perspective, Chen’s multi-ply embodiment would read on all
aspects of appealed claim 1 including the “bodyside” recitation
thereof.
In this latter regard, it is appropriate to emphasize the
examiner’s well taken point that the claim term “bodyside” merely
requires the layer in question to be on the side which is nearer
to the body as opposed to requiring that the layer be “body-
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contacting.” Similarly, the term “comprising” leaves claim 1
open to the inclusion of additional liner structures such as a
hydrophobic layer between the recited hydrophilic layer and a
user’s body. See In re Baxter, 656 F.2d 679, 686, 210 USPQ 795,
802 (CCPA 1981)(“comprising” leaves claims open to inclusion of
other elements, materials, etc.). Moreover, it is appropriate to
remind the appellants of the earlier mentioned legal principle
that, during examination proceedings, claims are given their
broadest reasonable interpretation consistent with the
specification. Hyatt, 211 F.2d at 1372, 54 USPQ2d at 1667.
Certainly, interpreting appealed claim 1 to encompass a multiple
layer embodiment of the type taught by Chen is reasonable and
consistent with the subject specification (e.g., see the last
paragraph on specification page 9 which teaches that the liner
may comprise multiple layers).
Third, the appellants’ argument also is unpersuasive because
Chen’s bodyside layer (i.e., his body-contacting layer) comprises
a mixture of both hydrophobic as well as hydrophilic fibers
(e.g., see the last paragraph on page 5 in comparison with
Figures 1 and 5). When broadly interpreted, appealed claim 1
encompasses an embodiment of the type taught by Chen wherein the
bodyside or body-contacting layer includes both hydrophilic and
Appeal No. 2005-0961
Application No. 09/990,787
7
hydrophobic nonwoven material. This interpretation of claim 1,
though broad, is reasonable and consistent with the appellants’
specification which explicitly discloses an embodiment wherein
the bodyside layer of the appellants’ invention, like the
bodyside layer of Chen’s invention, is preferably made from a
blend of hydrophilic fibers and hydrophobic fibers (see the first
paragraph on specification page 13).
Under these circumstances, we agree with the examiner’s
finding that independent claim 1 is anticipated by Chen.
Regarding separately argued independent claim 13, the
appellants in essence reiterate their above discussed argument by
stating that claim 13 “further reinforces the fact that the
hydrophilic layer would face the body of the wearer by the
liner’s relationship with the other components of the pantiliner
claimed” (brief, page 7). However, for reasons analogous to
those previously discussed, the claim 13 pantiliner would
encompass Chen’s pantiliner embodiments wherein the liner is in
the form of multiple plies (again see page 48) and wherein the
liner bodyside surface comprises a mixture of hydrophobic as well
as hydrophilic nonwoven materials (again see page 5).
Furthermore, this interpretation of claim 13 is reasonable and
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consistent with the appellants’ specification for the reasons
detailed with respect to appealed claim 1.
In light of the foregoing and for the reasons expressed in
the answer, we hereby sustain the examiner’s section 102
rejection of all appealed claims as being anticipated by Chen.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
William F. Smith )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jeffrey T. Smith )
Administrative Patent Judge )
Appeal No. 2005-0961
Application No. 09/990,787
9
Kimberly-Clark Worldwide, Inc.
401 North Lake Street
Neenah, WI 54956
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