10880995 (B.P.A.I. May. 17, 2011)

Ex Parte Olson et al

Board of Patent Appeals and InterferencesMay 17, 2011

10880995 (B.P.A.I. May. 17, 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. 10/880,995 06/30/2004 Christopher Peter Olson KCX-855 (20657) 1986 22827 7590 05/18/2011 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER HAND, MELANIE JO ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 05/18/2011 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 CHRISTOPHER OLSON, JAMES CARR, LAWRENCE SAWYER, MICHAEL FAULKS, ROBERT POPP, and MARK MLEZIVA ____________ Appeal 2009-012877 Application 10/880,995 Technology Center 3700 ____________ Before JOHN C. KERINS, MICHAEL W. O’NEILL, and KEN B. BARRETT, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Christopher Olson et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-8, 10-12, and 16-23 under 35 U.S.C. § 102(a) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Uitenbroek (US Pub. No. 2003/0120243 A1, Appeal 2009-012877 Application 10/880,995 2 pub. Jun. 26, 2003), claims 13, 14, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable over Uitenbroek, and claims 9, 15, and 26-30 under 35 U.S.C. § 103(a) as unpatentable over Uitenbroek and Urankar (US 6,746,976 B1, iss. Jun. 8, 2004). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Invention The claims on appeal relate to an absorbent article with biaxial stretch ratio ranges. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A biaxially stretchable absorbent article comprising: an outer cover; a bodyside liner joined to the outer cover in a superimposed relation; an absorbent structure positioned in between the outer cover and the liner; and wherein the absorbent article includes a front region, a back region and a crotch region, the front region and back region defining a waist opening when worn about a wearer, the crotch region being positioned in between two leg openings that are located opposite the waist opening, the absorbent article including a longitudinal direction extending from the front region, through the crotch region and to the back region, and a lateral direction generally parallel to the circumference of the waist opening and perpendicular to the longitudinal direction, the absorbent article including hip circumference in the lateral direction that is located so as to circumscribe the hips of a wearer and wherein the absorbent article is stretchable so as to have a biaxial stretch ratio of from about 1.0 to about 2.5, the biaxial stretch ratio being defined by the formula: Appeal 2009-012877 Application 10/880,995 3 Biaxial Stretch Ratio = % Stretch Along the Hip Circumference % Stretch in the Longitudinal Direction wherein: % Stretch Along the Hip Circumference = (Hip Circumference at 2000 g – Hip Circumference at 70 g) X 100 Hip Circumference at 70 g % Stretch in the Longitudinal Direction = (Length of Article at 500g – Length of Article at 70g) X 100. Length of Article at 70 g The Rejections Subsequent to correlating the components of the claimed absorbent article to reference numerals of Uitenbroek, the Examiner asserts that Uitenbroek “teaches an identical material for the outer cover 42 to that disclosed for the claimed outer cover. (Specification, Page 19, lines 20-25; ‘243 ¶0043)”. Ans. 4. The Examiner posits that “[s]ince the outer cover is the only element of the article responsible for biaxial stretching of the article, the absorbent article of Uitenbroek necessarily possesses a biaxial stretch ratio within the claimed range. Alternatively, it would be obvious to one of ordinary skill in the art to modify the article of Uitenbroek so as to have a biaxial stretch ratio within the claimed range with a reasonable expectation of success.” Id. Responding to Appellants, the Examiner posits that all that the Examiner needs to show to establish inherency is a teaching that the identical material is disclosed in Uitenbroek that Appellants disclose within their Specification for the outer layer. Ans. 16. Further in response to Appellants, the Examiner states that only the claimed outer layer contributes to the claimed biaxial ratios since the claims do not recite any of the other structural features that Appellants have argued to contribute to the Appeal 2009-012877 Application 10/880,995 4 claimed biaxial stretch ratios. Id. The Examiner concludes that the Examiner has provided sufficient evidence and technical reasoning in order to shift the burden to Appellants to provide “factual evidence and/or side-by- side experiments showing that the biaxial stretch ratio is not an inherent property of the article of Uitenbroek.” Ans. 17. Contentions Appellants contend that the Examiner has failed to establish sufficient evidence and technical reasoning in order to find by a preponderance of the evidence that the claimed biaxial stretch ratios are inherent within the disclosure of Uitenbroek. In particular, Appellants argue that the Examiner erred by assuming that the biaxial stretch ratio of the absorbent article is “necessarily dictated solely by the biaxial stretch ratio of the stretchable outer cover.” App. Br. 8. Appellants provide a quotation from the Specification that explains that “the nonelastic layer may be connected or attached to the elastic layer in the manner that controls the stretch properties of the elastic layer so that the elastic layer has a biaxial stretch ratio as desired.” Id. Given this disclosure, Appellants assert “the structural features of the absorbent article also have an effect on the biaxial stretch ratio.” Id. OPINION Issues The determinative issue in this appeal is: Given the presentation of the Examiner’s findings and analysis, did the Examiner establish by a preponderance of the evidence that the claimed biaxial stretch ratios should be found inherent or rendered obvious based on inherency? Appeal 2009-012877 Application 10/880,995 5 Analysis We agree with Appellants that, given Appellants’ Specification, both the materials of the absorbent article and the structural features of the article affect the biaxial stretch ratio for the absorbent article. As argued by Appellants, the Examiner erred by finding that Appellants’ outer cover layer solely dictates the biaxial stretch ratio of the absorbent article claimed in order to further find that since Uitenbroek’s outer layer is of the same material as Appellants’ outer layer, then Uitenbroek’s absorbent article would inherently satisfy the claimed range of biaxial stretch ratios. We agree with Appellants that, as their absorbent article is described within the Appellants’ Specification, the structural features, such as the nonelastic layer being a gathered layer that permits the elastic layer to stretch more in the transverse direction than in the longitudinal direction, see e.g. Spec. pg. 9, ll. 1-3, also contribute to the biaxial stretch ratios. As such, the Examiner could not solely rely on the outer layer disclosed in Uitenbroek in order to establish by a preponderance of the evidence that Uitenbroek’s absorbent article inherently possesses the claimed biaxial stretch ratios in order to shift the burden to Appellants to provide evidence or technical reasoning that Uitenbroek fails to possess the characteristic that Appellants are relying upon to establish the patentability of the claimed feature, viz., biaxial stretch ratios, over Uitenbroek. The Examiner’s obviousness analysis with Uitenbroek concerning the “inherent” obviousness of the claimed biaxial stretch ratios suffers from the same deficiency. The Examiner does not use Urankar to remedy the deficiency within the disclosure of Uitenbroek. Appeal 2009-012877 Application 10/880,995 6 CONCLUSION Based on the Examiner’s findings and analysis, the Examiner did not establish by a preponderance of the evidence that the claimed biaxial stretch ratios are found inherent or rendered obvious. DECISION The Examiner’s decision to reject claims 1-8, 10-12, and 16-23 under 35 U.S.C. § 102(a) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Uitenbroek is reversed. The Examiner’s decision to reject claims 13, 14, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable over Uitenbroek is reversed. The Examiner’s decision to reject claims 9, 15, and 26-30 under 35 U.S.C. § 103(a) as unpatentable over Uitenbroek and Urankar is reversed. REVERSED Klh