Ex Parte Koele et al

Board of Patent Appeals and Interferences

Jun 16, 2010

11365543 (B.P.A.I. Jun. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MATTHEW L. KOELE, ELIZABETH D. GADSBY,
THOMAS M. FLICKER, JASON S. FAIRBANKS, COURTNEY SHEA,
and ANN L. MCCORMACK
____________________

Appeal 2009-013675
Application 11/365,543
Technology Center 3700
____________________

Decided: June 16, 2010
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
STEFAN STAICOVICI, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013675
Application 11/365,543

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to an absorbent article featuring a laminated
material with a low Poisson’s ratio. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An absorbent article defining a longitudinal direction and a
lateral direction perpendicular to the longitudinal direction,.
[sic.] the absorbent article comprising:
an outercover, the outercover comprising a laminated
material including first and second-layers, the second layer
having been joined to the first layer at a point of lamination
while the second layer was maintained at a lower tension than
the first layer at the point of lamination;
an absorbent body disposed adjacent the outercover; and
a graphic associated with the outercover, wherein the
laminated material exhibits a Poisson’s ratio less than 1.0 at 4
percent longitudinal strain using ASTM-E132.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
LeMahieu
Olson
US 5,620,431
US 6,297,424 B1
Apr. 15, 1997
Oct. 2, 2001

REJECTIONS
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over LeMahieu and Olson. Ans. 3.

Appeal 2009-013675
Application 11/365,543

3
OPINION
The Examiner contends that the limitation requiring a specific
Poisson’s ratio is functional in nature and is given little patentable weight.
Ans. 3, 5. The Examiner argues that since both the Specification and
LeMahieu describe a spunbound laminate as a suitable material, the
materials would exhibit the same properties and behaviors, and, therefore,
the same Poisson’s ratio under the ASTM-E132 test. Ans. 4, 5. Appellants
contend that LeMahieu discloses a standard laminate and the Examiner has
no factual basis to conclude LeMahieu’s laminate meets this limitation of the
claim. App. Br. 4-5. Appellants further contend that Olsen does not cure
this deficiency. Id. Appellants’ arguments are persuasive.
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). “Yet,
choosing to define an element functionally, i.e., by what it does, carries with
it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As stated
in Swinehart:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
439 F.2d at 213. Nevertheless, before an applicant can be put to this
burdensome task, the examiner must provide sufficient evidence or scientific
reasoning to establish the reasonableness of the examiner's belief that the
functional limitation is an inherent characteristic of the prior art. The fact
Appeal 2009-013675
Application 11/365,543

4
that a certain result or characteristic may occur or be present in the prior art
is not sufficient to establish the inherency of that result or characteristic. In
re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). “Inherency . . . may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). In
relying upon the theory of inherency, the examiner must provide a basis in
fact and/or technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the teachings of
the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).
The Specification clearly indicates that a Poisson’s ratio within the
claimed range is not necessarily a property of an adhesive spunbound film
laminate. Spec. p. 22-23, paras. [0060]-[0061]; see Table 1. For example,
Table 1 of Appellants’ Specification shows a spunbound film exhibiting a
Poisson’s ratio of more than 1.0 at 4 percent longitudinal strain using
ASTM-E132 (Roll #s 1, 2, 3, and 6). The tension in the layers of laminate
plays a role in achieving the claimed Poisson’s ratio and LeMahieu is silent
on this subject. See id.; LeMahieu. Thus, it was erroneous for the Examiner
to conclude that LeMahieu’s laminate would necessarily exhibit the same
properties and behaviors as the claimed laminate, and, therefore, the claimed
Poisson’s ratio under the ASTM-E132 test solely based upon the fact that
Lemahieu, like Appellants, employs a spunbound laminate. Olson, as
applied by the Examiner, does not cure this deficiency. Accordingly, we
must reverse the rejection of claims 1-21 as being unpatentable over
LeMahieu and Olson.

Appeal 2009-013675
Application 11/365,543

5
DECISION
For the above reasons, the Examiner’s rejection of claims 1-21 is
reversed.

REVERSED

nhl

KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH WI 54956