Ex Parte LEAK et al

Board of Patent Appeals and Interferences

Apr 24, 2002

08366090 (B.P.A.I. Apr. 24, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte A. TODD LEAK, APIROMRAJ S. ROSLANSKY,
PAUL T. VAN GOMPEL, GEORGIA L. ZEHNER,
EDWARD H. RUSCHER, and YUNG HSIANG HUANG

Appeal No. 2000-0921
Application No. 08/366,090
____________
ON BRIEF
____________
Before COHEN, STAAB, and McQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1-54, all the claims pending in the
application.
Appellants’ invention pertains to a mechanical fastener tab
suitable for use on a disposable absorbent product (claims 1-11),
wherein the fastening tab comprises a substrate and a first
Appeal No. 2000 0921
Application No. 08/366,090
1As stated on page 6 of appellants’ specification, “a first
mechanical fastener component is intended to refer to a material
which is adapted to mechanically interlock with a second
material. . . . In the illustrated embodiment, the first
mechanical fastener component is the hook portion of a hook-and-
loop fastener.”
2Reference is made to pages 17-18 of appellants’
specification for an explanation of a suitable technique for
determining Gurley stiffness values.
2
mechanical fastener component1 joined to the substrate, with the
fastening tab having a Gurley stiffness value2 of less than about
1000 milligrams in the area of the fastening tab that includes the
first mechanical fastener component. Appellants’ invention also
pertains to a disposable product (claims 12-33 and 54) and to a
disposable absorbent product (claims 34-53) comprising a mechanical
fastening tab as described above. According to appellants,
mechanical fastening tabs in accordance with the invention have
improved flexibility. A further understanding of the claimed
invention can be derived from a reading of exemplary claim 1, which
appears in the appendix to appellants’ brief.
The references applied in the final rejection are:
Flug et al. (Flug) 5,401,275 Mar. 28, 1995
(filed Sept. 11, 1991)
Roessler et al. (Roessler) 5,176,670 Jan. 5, 1993
Appeal No. 2000 0921
Application No. 08/366,090
3The requirement that the substrate overlays from about 2 to
about 98 percent of the planar surface of the first mechanical
fastener component is found only in dependent claims 8 and 20.
3
Claims 1-54 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Roessler in view of Flug. The examiner states
(final rejection, page 2):
Roessler teaches all aspect[s] of the claimed invention
except for the specific Gurley stiffness values and
substrate overlay of 2%-98%.[3] The Roessler article
comprises similar materials as recited in applicants’
invention, therefore the Gurley stiffness value is
considered to be the same. The Gurley stiffness values
recited in applicants’ specification, even though
performed in a standard testing machine, are considered
useless for comparison purposes to the prior art. The
Gurley stiffness values can vary depending to sample size
and other factors. Even if Roessler stated a Gurley
stiffness value, there would be no way to correlate a
Roessler value with the claimed values due to different
testing procedures.
The examiner further considers (final rejection, page 3) that
substrate overlayment of from about 2% to about 98%, as called for
in claims 8 and 20, is taught by Flug, and that it would have been
obvious in view of this teaching to provide a similar overlayment
arrangement in Roessler. The examiner contends (final rejection,
page 3) that the rejection is proper because “[a]pplicants have not
sufficiently demonstrated that the fastening tab of Roessler will
not meet the test value of applicants’ invention when tested in
accordance to applicants’ test method.”
Appeal No. 2000 0921
Application No. 08/366,090
4
Discussion
The initial burden of establishing a prima facie basis to deny
patentability to a claimed invention rests upon the examiner. In
re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). In making a rejection on the ground that claimed subject
matter would inherently be present in the apparatus or process
described by a reference, the examiner bears the initial burden of
making out a prima facie case, as by providing a basis in fact
and/or technical reasoning which reasonably supports the position
that what is allegedly inherent would necessarily flow from the
teachings of the prior art. See Ex parte Levy, 17 USPQ2d 1461,
1464 (BPAI 1990) and the cases cited therein. If examination at
the initial stage does not produce a prima facie case of
unpatentability, then without more the applicant is entitled to a
patent. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1990).
The main issue in this case is whether Roessler discloses a
fastener tab comprising a substrate and a mechanical fastener
component wherein the tab has a Gurley stiffness value of less than
about 1000 milligrams in the area of the tab that includes the
mechanical fastener component. Because we do not agree with the
examiner that the claimed invention necessarily flows from the
Appeal No. 2000 0921
Application No. 08/366,090
5
disclosure of Roessler, we will not sustain the examiner’s
rejection.
The Roessler reference cited by the examiner against the
appealed claims discloses, in pertinent part, a mechanical fastener
tab 30 of the hook-and-loop type that is suitable for use on a
disposable absorbent product. Beginning at column 6, line 29, and
continuing to column 9, line 2, Roessler goes into considerable
detail concerning the nature of the hook material and the loop
material components of the mechanical fastener; however, it is not
disputed that Roessler makes no mention whatsoever of the Gurley
stiffness value of any of these fastener tab components.
Nevertheless, the examiner takes the position that “[[t]he Roessler
article comprises similar materials as recited in applicants’
invention, therefore the Gurley stiffness value is considered to be
the same [as that recited in the claims]” (final rejection, page
2). We surmise from this that the examiner considers the teachings
of Roessler at, for example, column 6, line 29, through column 7,
line 13, to be of such kind that a fastener tab having the claimed
Gurley stiffness value would necessarily flow from making a
fastener tab in accordance with these teachings.
In our view, the examiner has provided no basis in fact and/or
technical reasoning which reasonably supports the above stated
Appeal No. 2000 0921
Application No. 08/366,090
4That is, the area of the fastening tab that includes both
the hook material and the substrate.
5See, for example, page 7, line 18, through page 8, line 15,
and page 9, lines 6-15, of appellants’ specification.
6
theory of inherency. More particularly, we find appellants’
reasoning on pages 3-4 of the brief, which the examiner has not
even attempted to refute, as to why the allegedly inherent Gurley
stiffness value does not necessarily flow from Roessler’s teachings
to be persuasive. In brief, appellants argue that while the hook
material described by Roessler appears to be like the hook material
described on page 18 of appellants’ specification in connection
with example 1, this alone is not enough to establish that the area
of the fastener tab in question4 necessarily has a Gurley stiffness
value within the claimed range. In that appellants’ specification
clearly points out5 that the Gurley stiffness value at the claimed
area is influenced by the physical properties of both the hook
material and the substrate, appellants’ argument is well taken. In
addition, and as aptly pointed out by appellants on page 4 of the
brief, fastener tabs made using the hook material described on page
18 of appellants’ specification, which material is akin to that
disclosed in Roessler, may or may not fall within the claimed
Gurley stiffness value depending on the characteristics of the
Appeal No. 2000 0921
Application No. 08/366,090
7
substrate. In light of this well reasoned argument, the examiner’s
unvarnished position to the effect that the claimed subject matter
would necessarily result from using Roessler’s hook material simply
because the hook material of the reference is similar to that used
by appellants in making the claimed invention cannot be sustained.
We are likewise in agreement with appellants that there is no
factual basis for the examiner’s contention (final rejection, page
2; answer, pages 3-4) that Gurley stiffness values can vary from
sample to sample, such that even if Roessler stated a Gurley
stiffness value, there would be no way to correlate a Roessler
value with the claimed values. The examiner’s contention (final
rejection, page 3; answer, page 4) that the burden is on appellants
to prove that the fastening tabs of Roessler will not have a Gurley
stiffness value within the claimed range is simply wrong. See In
re Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444.
We have also considered whether Roessler would have rendered
obvious a fastener tab having a Gurley stiffness value of less than
about 1000 milligrams in the area of the fastening tab that
includes the first mechanical fastener component, but find nothing
Appeal No. 2000 0921
Application No. 08/366,090
8
in Roessler that would have suggested the claimed subject matter.
Further, the examiner does not contend, and it is not apparent to
us, that Flug makes up for the deficiencies of Roessler in this
respect.
In view of the foregoing, the examiner’s rejection of claims
1-54 as being unpatentable over Roessler in view of Flug cannot be
sustained.
The decision of the examiner is therefore reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
LJS/lp
Appeal No. 2000 0921
Application No. 08/366,090
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