Ex Parte Olson et al

Board of Patent Appeals and Interferences

Oct 25, 2011

09855196 (B.P.A.I. Oct. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHRISTOPHER PETER OLSON
and RAYMOND JEFFREY MAY
____________________

Appeal 2009-012775
Application 09/855,196
Technology Center 3700
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012775
Application 09/855,196

2
STATEMENT OF THE CASE
Christopher Peter Olson and Raymond Jeffrey May (Appellants) seek
our review under 35 U.S.C. § 134 of the final rejection of claims 1-4 and 6-
37. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellants’ claimed invention is directed to a garment having at least
one apparent elastic band which looks and functions like a conventional
elastic band, but is not a conventional elastic band (Spec. 2:2-4).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A disposable garment, comprising:
a chassis defining a waist opening and two leg openings;
and
an apparent elastic band in the vicinity of at least one of
the waist and leg openings, the apparent elastic band including
a color pigment applied to a zone in a targeted elastic material
that creates a visible perception of a discrete elastic band on the
targeted elastic material where no actual elastic band is present
on the targeted elastic material.

THE REJECTION
The following rejection by the Examiner is before us for review:
Claims 1-4 and 6-37 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mathis (US 5,680,653, issued Oct. 28, 1997) in view of
Glaug (US 6,478,786 B1, issued Nov. 12, 2002).

Appeal 2009-012775
Application 09/855,196

3
ISSUE
The issue before us is whether the Examiner erred in concluding that
the combined teachings of Mathis and Glaug would have led a person
having ordinary skill in the art to an apparent elastic band that creates a
visible perception of a discrete elastic band where no actual elastic band is
present (App. Br. 3).

ANALYSIS
Appellants contend that “Mathis et al. discloses what Appellant's
claimed invention is avoiding, namely a stretchable material/elastic film
laminate applied as an elastic band to, for example, the substrate material of
footwear article 64 (col. 7, lines 22-35)” (Reply Br. 3) (Bold added).
The Examiner found that “[b]ased on applicant’s definition, Mathis
meets the limitations of an ‘apparent elastic band’” (Ans. 5). In particular,
the Examiner found that “Mathis teaches a stretchable material attached to
an underlying material; therefore, Mathis provides an apparent elastic band
as defined by applicant” (Ans. 7).
Appellants’ Specification describes that “[t]he term ‘apparent elastic
band’ is an element, and/or part of an underlying material, that looks like an
elastic band and behaves like an elastic band, but is not an elastic band (i.e.,
is not a discrete elongated element having elastic properties)” (Spec. 7:12-
15) (Italics added).
Independent claims 1, 15 and 27 call for, inter alia, an apparent elastic
band that creates a visible perception of a discrete elastic band where no
actual elastic band is present.
Appeal 2009-012775
Application 09/855,196

4
Thus, as defined in Appellants’ Specification and as called for in
independent claims 1, 15 and 27, an apparent elastic band does not include
an elastic band.
Mathis describes two embodiments of laminates, (1) an elastic
laminate 20 including a stretchable layer 22 and a self-adhering elastic layer
24 (col. 4, ll. 7-10); and (2) another embodiment 26, which is similar to the
elastic laminate 20 with the exception that the elastic layer 24 is sandwiched
between the stretchable layer 22 and a layer 28 (col. 6, ll. 31-34).
Mathis describes that “[t]he above laminate may also be use[d] to
form elastic closure tabs or diapers ‘ears’, elastic bands for diapers and
feminine care articles, and an elastic liquid impermeable surgical
stockinette” (col. 3, ll. 23-26) (Italics added).
Mathis describes that an elastic cuff 56, elastic leg cuffs 78, 80 and
cuff 114 may be formed from the elastic laminates 20, 26, respectively,
(Mathis, passim).
Since Mathis’ elastic cuff 56, elastic leg cuffs 78, 80 and cuff 114 are
formed from elastic laminates 20, 26, respectively, we find that they are
elastic bands.
Thus, Mathis does not describe an apparent elastic band, which does
not include an elastic band, as called for in independent claims 1, 15 and 27.
The Examiner has not relied on Glaug for any teaching that would
remedy the deficiency in Mathis (Ans. 5).
We reverse the rejection of independent claims 1, 15 and 27 and
dependent claims 2-4 and 6-14, 16-26, and 28-37.

Appeal 2009-012775
Application 09/855,196

5
CONCLUSION
The Examiner has erred in concluding that the combined teachings of
Mathis and Glaug would have led a person having ordinary skill in the art to
an apparent elastic band that creates a visible perception of a discrete elastic
band where no actual elastic band is present.

DECISION
The decision of the Examiner to reject claims 1-4 and 6-37 is
reversed.

REVERSED

Klh