Ex Parte Morman et al

Board of Patent Appeals and Interferences

Feb 24, 2011

10730364 (B.P.A.I. Feb. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/730,364 12/08/2003 Michael T. Morman KCX-654B (19124B) 2821
22827 7590 02/24/2011
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
CRAIG, PAULA L
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
02/24/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL T. MORMAN, PATRICIA H. CALHOUN, and
JAMES M. CARR
____________________

Appeal 2009-011611
Application 10/730,364
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-011611
Application 10/730,364
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
9, 13, 14, 16-19, and 25, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b). This case is related to Appeal 2009-
011564 in Application 10/730,493, for which a Decision was issued on
September 16, 2010.
We reverse.

The claims are directed to an absorbent article. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An absorbent article, comprising:
a chassis having a front waist region, a back waist region,
and a crotch region extending between said front and back waist
regions;
an outer cover member extending longitudinally between
said front and back waist regions;
a bodyside liner extending longitudinally between said
front and back waist regions;
a non-extensible absorbent body structure sandwiched
between said outer cover member and said bodyside liner;
said bodyside liner comprising a material having
an untensioned and ungathered, inherently extensible
base layer of a fluid permeable material, said base layer
extendable to at least about 125% of its original dimension in a
first direction essentially without fracture of said base layer
material;
at least a first and a second strip of substantially
untensioned elastomeric material wholly disposed on and
attached to said base layer material to form flat planar
composite regions with a space between said strips such that a
center untensioned region of said base layer material is
bordered on at least two longitudinally extending sides by said
composite regions of said elastomeric materials and said base
Appeal 2009-011611
Application 10/730,364
3
layer material, said center region generally disposed over said
absorbent body structure; and
wherein said center region of untensioned base layer
material is bonded directly to the immediately underlying
portion of said absorbent body structure in registry with the
center region of untensioned base layer material in its
untensioned condition and said composite regions are
stretchable in at least a second direction of said absorbent
article.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Serbiak
Krautkramer
US 5,846,232
US 6,231,557 B1
Dec. 8, 1998
May 15, 2001
Popp US 2002/0087139 A1 Jul. 4, 2002

REJECTIONS
Claims 1-4, 6, 8, 9, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Serbiak. Ans. 3.
Claims 5 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Serbiak, and Krautkramer. Ans. 9.
Claims 13, 14, and 16-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Serbiak, and Popp. Ans. 10.

OPINION
Independent claims 1 and 25 each require the base layer material to be
“bonded directly to the immediately underlying portion of said absorbent
body structure.” The Examiner contends that Serbiak’s description of the
base structure 26 as “effectively attached”, “fixedly attached” or “effectively
fixedly attached” suggests that the base layer material is directly bonded to
Appeal 2009-011611
Application 10/730,364
4
the absorbent body structure. Ans. 5; See Serbiak, col. 9, ll. 33-35; claims 3
and 12. The Examiner’s argument is one of inherency. This argument is not
persuasive because the terms used by Serbiak to describe the particular type
of attachment do not necessarily require direct bonding. Ex parte Levy, 17
USPQ2d 1461, 1464 (BPAI 1990).
Alternatively, the Examiner acknowledges that Serbiak does not
expressly teach the base layer “bonded directly” to the absorbent body but
contends that this would have been an obvious modification and that direct
and indirect bonding are equivalent. Ans. 5-6, 16-17. Appellants counter that
one of ordinary skill in the art would “avoid the risk of degrading either the
permeability of the bodyside liner or the capillary absorbency of the portion
of the absorbent body structure facing the bodyside liner, if the bodyside
liner portion of the absorbent body structure is bonded directly to the
immediately underlying portion of the absorbent body structure.” App. Br.
12. “[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
Examiner has failed to articulate any reasoning with a rational underpinning
to support the conclusion that directly bonding the layers would have been
an obvious modification or that direct and indirect boding are equivalent in
the art. The Examiner’s reliance on Popp and the Specification is misplaced.
See Ans. 16-17. Expressly defining the term “bonded” or “attached” to
include both indirect and direct methods does not establish that the two
methods are structural and/or functional equivalents such that one of
ordinary skill in the art would view them as interchangeable.
Appeal 2009-011611
Application 10/730,364
5
Furthermore, the Examiner recognizes that none of the embodiments
of Serbiak disclose the materials of the claimed subject matter arranged in
the manner as claimed. Ans. 3-8; see also Reply Br. 2-4. Thus the Examiner
must rely on various features from the individual embodiments of Serbiak
and general statements in Serbiak that the embodiments can be combined.
See, e.g., Serbiak, col. 12, ll. 24-30. In our view, the Examiner has also not
articulated any reasoning with a rational underpinning as to why one of
ordinary skill in the art would pick and choose various features from the
individual embodiments of Serbiak to construct the claimed subject matter.
In our view, the rejection of independent claims 1 and 25 is based on
impermissible hindsight reconstruction of the claimed subject matter.
For these reasons, the rejection of claims 1 and 25 and dependent
claims 2-4, 6, 8 and 9, must be reversed. Since neither Krautkramer nor
Popp, as applied by the Examiner, cure the deficiencies of Serbiak, the
rejections of claims 5, 7, 13, 14, and 16-19 must also be reversed.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-9, 13, 14,
16-19, and 25 are reversed.

REVERSED

nlk

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