Ex Parte Kim et al

Board of Patent Appeals and Interferences

Feb 12, 2007

09750744 (B.P.A.I. Feb. 12, 2007)

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written for publication and is not binding precedent of the Board.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 HYUNG BYUM KIM, EUN JUNG KANG,
EO YEON HWANG and DOO HONG KIM
__________

Appeal No. 2006-1952
Application No. 09/750,744
___________

ON BRIEF
___________

Before OWENS, CRAWFORD and LEVY, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The appellants appeal from a rejection of claims 23-37,
which are all of the pending claims.
THE INVENTION
The appellants claim an absorbent article having a liquid
pervious cover including a hydroentangled, hydroapertured
spun-lace material. Claim 23 is illustrative:
23. An absorbent article, comprising
a liquid pervious cover;
an absorbent core; and
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Application No. 09/750,744

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an intake intensifier pledget located on a central
portion of the absorbent core;
wherein

the cover includes a hydrogentangled,hydroapertured
spun-lace material;
the pledget includes a Thru-Air Bonded Carded Web material;
and

the Thru-Air Bonded Carded Web material has a basis weight
of between about 15 g/m2 and about 70 g/m2.

THE REFERENCES
Jackson et al. (Jackson) 5,643,240 Jul. 1, 1997
Reiter et al. (Reiter) 5,769,834 Jun. 23, 1998
Hamajima et al. (Hamajima) 6,326,525 Dec. 4, 2001
(filed Apr. 21, 1998)
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 23-33, 35 and 37 over Hamajima in view of Jackson,1 and
claims 34 and 36 over Hamajima in view of Jackson and Reiter.
OPINION
We reverse the aforementioned rejections and remand the
application to the examiner.

Regarding the rejections, we need to address only the

1 In the statement of the rejection in the examiner’s answer, the claims
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Application No. 09/750,744

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independent claims, i.e., claims 23 and 37.2 Those claims
require an absorbent article having a cover including a
hydroentangled, hydroapertured spun-lace material.
Hamajima discloses (col. 1, lines 53-55; col. 3, line 36;
fig. 2A) an absorbent article having a liquid permeable
topsheet (23), an absorptive portion (33) and, in a central
region of the absorptive portion, two layers (an absorbent member
(24) and a second absorbent layer (27)) which the examiner relies
upon as being a two layer pledget (answer, page 4). The topsheet
can be an apertured nonwoven fabric (col. 4, line 59 - col. 5,
line 1).
Jackson discloses an absorbent article having a fibrous,
nonwoven separation layer (26) (col. 4, lines 35-36) which the
examiner relies upon as being a pledget (answer, page 4). The
separation layer readily desorbs fluid from the surface of the
absorbent article and transfers it to an absorbent core (16)
(col. 4, lines 37-40). Jackson teaches that it is important for
the separation layer to maintain its loftiness, and that through-
air bonding does not adversely affect loft (col. 4, lines 18-23).
The separation layer can include a through-air bonded carded
stable fiber bicomponent web having a basis weight of 27 g/m2

rejected over Hamajima in view of Jackson are stated incorrectly as “27-33, 25
and 37” (page 3).
2 The examiner does not rely upon Reiter for any disclosure that remedies the
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Application No. 09/750,744

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(col. 6, lines 53-56).
The appellants argue that Hamajima’s disclosure of an
apertured nonwoven fabric is insufficient for disclosing or
suggesting a hydroentangled, hydroapertured spun-lace material
(brief, page 7; reply brief, pages 2-3).
The examiner argues (answer, page 4):
With respect to the cover layer being hydroentangled
and hydroapertured: Hamajima discloses the topsheet being an
apertured nonwoven fabric (column 5, line 1), therefore
being apertured and entangled (due to the fabric being a
nonwoven web), the formation of the apertures and
entanglement are Product-by-Process limitations, and these
limitations are not limited to the manipulations of the
steps, only the structure implied by these steps (see
MPEP 2113). It follows that if the product in the claim
with the product-by-process limitation is the same as the
product of the prior art, the claim is unpatentable even
though the prior art was made by a different process.
Therefore, cover layer being entangled and apertured using a
hydro method or means, is anticipated in the Hamajima
reference.

The examiner is correct that if a claimed product made according
to a process-by-product limitation is the same as a prior art
product, the product-by-product limitation does not patentably
distinguish the claimed product over the prior art product.
However, the examiner has the initial burden of establishing a
prima facie case of unpatentability by providing evidence or
reasoning which indicates that the appellants= product and the
prior art product are identical or substantially identical. See

deficiency in Hamajima and Jackson as to the independent claims.
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Application No. 09/750,744

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In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977). The examiner has not provided the required evidence
or reasoning which shows that apertured nonwoven fabrics, in
general, are identical or substantially identical to
hydroentangled, hydroapertured spun-lace fabrics. Also, the
examiner has not established that Hamajima’s disclosure of an
apertured nonwoven fabric would have fairly suggested a
hydroentangled, hydroapertured spun-lace fabric to one of
ordinary skill in the art.
The examiner, therefore, has not carried the burden of
establishing a prima facie case of obviousness of the appellants’
claimed invention.
Remand
We remand the application for the examiner and the
appellants to address on the record whether Hamajima’s disclosure
of an apertured nonwoven fabric, alone or in combination with
other prior art, would have fairly suggested, to one ordinary
skill in the art, a hydroentangled, hydroapertured spun-lace
material.3
DECISION

3 Absorbent article topsheets comprising spun-lace (i.e., hydroentangled),
hydroapertured material appear to have been conventional in the art at the
time of the appellants’ invention. See, e.g., U.S. 5,431,643 to
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Application No. 09/750,744

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The rejections under 35 U.S.C. § 103 of claims 23-33, 35 and
37 over Hamajima in view of Jackson, and claims 34 and 36 over
Hamajima in view of Jackson and Reiter, are reversed. The
application is remanded to the examiner.
This remand to the examiner pursuant to 37 CFR § 41.50(a)(1)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)) is made
for further consideration of a rejection. Accordingly, 37 CFR
§ 41.50(a)(2) applies if a supplemental examiner's answer is
written in response to this remand by the Board.
REVERSED and REMANDED

TERRY J. OWENS
Administrative Patent Judge )
)

) BOARD OF PATENT
) APPEALS
) AND
MURRIEL E. CRAWFORD ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
STUART S. LEVY )
Administrative Patent Judge )

Ouellette et al. (col. 4, line 68 – col. 5, line 4).
Appeal No. 2006-1952
Application No. 09/750,744

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Kimberly-Clark Worldwide, Inc.
401 North Lake Street
Neenah, WI 54956

TJO/ki