Ex Parte Peterson

Board of Patent Appeals and Interferences

May 28, 2009

10246851 (B.P.A.I. May. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DALE A. PETERSON
__________

Appeal 2007-002824
Application 10/246,851
Technology Center 3700
__________

Decided:1 May 28, 2009
__________

Before TONI R. SCHEINER, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
disposable diaper. The Examiner has rejected the claims for nonenablement,

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/246,851

lack of adequate written description, indefiniteness, anticipation, and
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm the
rejection of claims 16, 17, 21, 29, and 41 for obviousness, but reverse the
other rejections.
STATEMENT OF THE CASE
Claims 16, 17, 21, 29, 41, and 42 are on appeal. With the exception
of claim 42, the claims have not been argued separately and therefore stand
or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claims 41 and 42 read as
follows:
41. An absorbent garment comprising:
a garment chassis having a length;
a pair of outer containment flaps extending generally lengthwise on
the garment chassis, each outer containment flap comprising a flap material
and at least one elastic member secured to at least a portion of the flap
material, each outer containment flap having an elasticized length in the
range of about 60 percent to about 100 percent of the length of the chassis,
each outer containment flap also having an elastic tension as determined by
an Elastic Tension Test; and
a pair of inner containment flaps extending generally lengthwise on
the garment chassis, each inner containment flap comprising a flap material
and at least one elastic member secured to at least a portion of the flap
material, each of said inner containment flaps having an elasticized length
substantially less than the elasticized length of each of the outer containment
flaps, each inner containment flap also having an elastic tension as
determined by the Elastic Tension Test which is substantially equal to the
elastic tension of each outer containment flap.

42. The absorbent garment set forth in claim 41 wherein the inner
containment flaps are constructed at least in part of a liquid impervious
material.

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The following rejections are on appeal:
• Claims 16, 17, 21, 29, 41, and 42 under 35 U.S.C. § 112, first
paragraph, for lack of enablement (Answer 5-6);
• Claims 16, 17, 21, 29, 41, and 42 under 35 U.S.C. § 112, first
paragraph, for lack of adequate written description (Answer 8);
• Claims 16, 17, 21, 29, 41, and 42 under 35 U.S.C. § 112, second
paragraph, as indefinite (Answer 9);
• Claims 16, 17, 29, 41, and 42 under 35 U.S.C. § 102(b) as
anticipated by Gillies2 (Answer 10); and
• Claims 16, 17, 29, 41, and 42 under 35 U.S.C. § 103(a) as obvious
in view of Gillies (Answer 11).
In addition to the above rejections, claim 21 also stands rejected under
35 U.S.C. § 103(a) (Answer 3). Appellant “confirm[ed] that the rejection of
claim 21 . . . is not being appealed” (Appeal Br.3 1). Since Appellant has
provided no basis for concluding that the rejection of claim 21 under 35
U.S.C. § 103(a) is in error, we summarily affirm it.
REJECTIONS UNDER 35 U.S.C. § 112
Issue
The Examiner has rejected claims 16, 17, 21, 29, 41, and 42 under the
first and second paragraphs of § 112 for nonenablement, inadequate written
description, and indefiniteness. The rejections all rely on the same line of
reasoning (Answer 5-10).

2 Gillies et al., WO 98/29074, published July 9, 1998.
3 “Appeal Brief” refers to the Second Amended Appeal Brief filed March
13, 2006.
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The Examiner reasons that claim 41 defines the claimed product in
terms of the property of the containment flaps, as determined by a test, rather
than in terms of specific structures (Answer 6), but the Specification’s
description of the Elastic Tension Test is deficient because it does not
include all of the relevant properties of samples to be tested (id. at 7). The
Examiner also concludes that, because the claimed product is defined in
terms of physical characteristics rather than specific structure, the “claims
could cover any conceivable combination of materials whether presently
existing or which might be discovered in the future” (id.) and that “the
claims could cover any conceivable present or future absorbent article which
includes at the very least cuffs having such elasticized lengths” (id. at 8).
Appellant contends that “the Elastic Tension Test recited in claim 41
is set forth in the specification at page 30, line 13 through page 32, line 12,”
and this test enables those skilled in the art to determine the elastic tension
of a containment flap (Appeal Br. 7); that the disclosure on pages 29-33 of
the Specification satisfies the written description requirement (id. at 12-13);
and that the Examiner has not provided an adequate basis for concluding that
the claims are indefinite (id. at 13).
The issue with respect to these rejections is: Did the Examiner err in
concluding that the Elastic Tension Test described in the Specification does
not adequately enable or describe the method of claim 41, and in concluding
that the scope of claim 41 is indefinite for the same reason?
Findings of Fact
1. Claim 41 defines an absorbent garment comprising, among other
things, a pair of outer containment flaps, each “having an elastic tension as
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determined by an Elastic Tension Test”; a pair of inner containment flaps,
each “also having an elastic tension as determined by the Elastic Tension
Test”; where the elastic tension of the inner and outer containment flaps is
substantially equal.
2. The Specification states that “‘substantially equal’ means that the
elastic tensions of the flaps are within at least about 10 percent of each
other” (Spec. 29: 26-28).
3. The Specification describes an “Elastic Tension Test” for
determining the “elastic tension of the containment flaps . . . of diapers
constructed in accordance with the present invention” (id. at 30: 9-12).
4. The Specification’s description of the Elastic Tension Test begins
at page 30, line 13, and ends at page 32, line 12.
Principles of Law
“When rejecting a claim under the enablement requirement of section
112, the PTO bears an initial burden of setting forth a reasonable explanation
as to why it believes that the scope of protection provided by that claim is
not adequately enabled by the description of the invention provided in the
specification of the application.” In re Wright, 999 F.2d 1557, 1561-62
(Fed. Cir. 1993).
The examiner
“bears the initial burden . . . of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed.Cir.1992). Insofar as the written
description requirement is concerned, that burden is discharged
by “presenting evidence or reasons why persons skilled in the
art would not recognize in the disclosure a description of the
invention defined by the claims.”
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In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d at 1561. “That
some experimentation may be required is not fatal; the issue is whether the
amount of experimentation required is ‘undue.’” In re Vaeck, 947 F.2d 488,
495 (Fed. Cir. 1991), emphasis in original.
“The purpose of the ‘written description’ requirement is broader than
to merely explain how to ‘make and use’; the applicant must also convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention. ” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.”
Miles Laboratories, Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir.
1993).
“[B]readth is not to be equated with indefiniteness.” In re Miller, 441
F.2d 689, 693 (CCPA 1971).
“A patent applicant is free to recite features of an apparatus either
structurally or functionally.” In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997).
Analysis
The Examiner concludes that, because claim 41 defines the elastic
tension of the containment cuffs by reference to the Elastic Tension Test, the
claims encompass materials that have not yet been discovered and are not
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commensurate with the scope of enablement (Answer 7-8). The Examiner
also finds that the claims lack adequate descriptive support because “the
tests which are essential or critical to the selection of the cuffs have not been
enabled” (id. at 9), and that “[f]or the reasons set forth supra, the claims are
indefinite, vague and too broad” (id. at 10).
We agree with Appellant that the Examiner has not adequately shown
that the claims on appeal fail to meet the requirements of 35 U.S.C. § 112.
The Specification describes the Elastic Tension Test in great detail and the
Examiner has not provided an adequate basis for concluding that a person of
ordinary skill in the art would not be able to carry out the disclosed test and
determine the elastic tension of a containment flap of any particular diaper.
The Examiner’s reasoning that the claims may encompass diapers
made from materials that are not disclosed in the Specification, or materials
that have not been discovered yet, is not an adequate basis for a rejection
under § 112. See, e.g., Chiron Corp. v. Genentech, Inc., 363 F.3d 1247,
1254 (Fed. Cir. 2004): A “patent disclosure need not enable information
within the knowledge of an ordinarily skilled artisan. . . . At the other end of
the knowledge continuum, a patent document cannot enable technology that
arises after the date of application. The law does not expect an applicant to
disclose knowledge invented or developed after the filing date. Such
disclosure would be impossible.”
The claims do not define the containment flaps of the claimed diaper
as having any particular elastic tension; they simply require that the elastic
tension of the inner containment flaps is substantially equal to (i.e., no more
than 10% different from) the elastic tension of the outer containment flaps,
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when the elastic tension of both sets of flaps is measured by the disclosed
Elastic Tension Test.
The Examiner has not shown that the Specification’s disclosure does
not show possession of a product having an elastic tension measured by the
Elastic Tension Test, or that a skilled artisan would not have been able to
follow the Specification’s disclosure to measure elastic tension of
containment flaps using the Elastic Tension Test, or that the Specification’s
description of the Elastic Tension Test makes the scope of the claims
unclear.
Conclusion of Law
The Examiner erred in concluding that the Elastic Tension Test
described in the Specification does not adequately enable or describe the
method of claim 41, and erred in concluding that the scope of claim 41 is
indefinite for the same reason.
ANTICIPATION
Issue
The Examiner has rejected claims 16, 17, 29, 41, and 42 under 35
U.S.C. § 102(b) as anticipated by Gillies (Answer 10). The Examiner
interprets “elasticized length,” as recited in claim 41, to include the length of
unelasticized parts of a flap (id. at 4). The Examiner finds that, in Gillies’
product, the
“elasticized length” of the outer ridge/flaps . . . is either the
entire, i.e. 100%, longitudinal dimension of the diaper or a
portion thereof, i.e. includes greater than 60% but less than
100%, and the “elasticized length” of the inner ridges/flaps is
less than that of the outer ridges/flaps, i.e. includes less than
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about 90% of the length of the outer ridges/flaps, see . . . Figure
8 and the first two full paragraphs on page 12.
(Id. at 10.)
Appellant contends that “elasticized length” is defined in the
Specification and includes “only those portions of the flap along which the
elastic components stretch when the flaps are pulled taut” (Appeal Br. 18).
Appellant contends that, “under the definition of ‘elasticized length’ set forth
in the specification, Gillies et al. clearly fail to disclose outer containment
flaps having an elasticized length in the range of about 60% to about 100%
of the garment chassis as recited in claim 41” (id. at 22).
The issue with respect to this rejection is: Has the Examiner shown
that Gillies discloses a garment having outer containment flaps with an
elasticized length recited in claim 41, when the claim language is given its
broadest reasonable interpretation?
Additional Findings of Fact
5. The Specification states that “the term ‘elasticized length’ means
the total length along the flap . . . that may be under tension due to the elastic
components . . . within the flap” (Spec. 25: 15-18).
6. The Specification states that the “elasticized length of the inner
flap 106 and outer flap 108 may be provided in any number of ways. . . . For
example, the elastic components may be provided within the inner and outer
flaps over only a particular portion of the flap.” (Id. at 26: 24-28.)
Principles of Law
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
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the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Analysis
The Examiner interprets “elasticized length” to encompass the total
length of a flap because “regardless of the specific physical length of the flap
portion within which the elastic component is provided . . . , the total length
of the flap which may, and thereby may not be, under tension is the entire
length of the flap” (Answer 4). Appellant argues that this interpretation is
broader than is reasonable (Appeal Br. 15-16).
We agree with Appellant that the Examiner’s interpretation of the
claim language is not consistent with the Specification. The Specification
discloses that the “elasticized length” of the flaps depends on what portion
of the flaps is provided with elastic components. In the Examiner’s
interpretation, the elasticized length does not depend on what portion of the
flaps is provided with elastic components because “portions of the flap in
which the elastic component is not attached do exhibit tension due to the
portions in which the elastic component is attached” (Answer 4).
We agree with Appellant that, when “elasticized length” is interpreted
consistently with the Specification, it means the length of the flaps that can
be under “elastic tension, i.e., a retractive tension caused by stretching of the
elastic components of the flap upon pulling the flap taut” (Appeal Br. 17).
The Examiner has not pointed to a disclosure in Gillies of flaps having the
elasticized length recited in claim 41.
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Conclusion of Law
The Examiner has not shown that Gillies discloses a garment having
outer containment flaps with an elasticized length recited in claim 41, when
the claim language is given its broadest reasonable interpretation.
OBVIOUSNESS
Issue
The Examiner has rejected claims 16, 17, 29, 41, and 42 under 35
U.S.C. § 103(a) as obvious in view of Gillies (Answer 11). The Examiner
concluded that, even if Gillies does not expressly disclose the properties
required by the claims “at the very least the Gill[i]es et al reference teaches
the general conditions of the claim . . . and it is not inventive, i.e. it would be
obvious to one of ordinary skill in the art, to discover the optimum or
workable ranges by routine experimentation” (Answer 11-12).
Appellant contends that Gillies does not disclose the “relative lengths
of the central (e.g., elasticized) portions 116 of the ridges 100 to the length
of the diaper” (Appeal Br. 24) and “increasing the elasticized portion of the
ridges 100 of Gillies et al. to include the front and rear ends would hamper
the ability of the diaper to lie flat as taught by Gillies et al.” (id. at 25-26).
The issue with respect to this rejection is: Did the Examiner err in
concluding that it would have been obvious to modify the ridges (or flaps) of
the product disclosed by Gillies to have the elasticized length recited in
claim 41?
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Additional Findings of Fact
7. Gillies discloses “absorbent articles that have a longitudinally
pleated liner to provide improved containment” (Gillies 1).
8. Gillies’ diaper has “a plurality of laterally alternating adhered liner
portions and unadhered liner portions. . . . At least one longitudinally
extending elastic member is associated with . . . at least some of the
unadhered portions of the liner layer to create stand-up ridges.” (Id. at 3.)
9. Gillies discloses that “a plurality of laterally spaced apart
upstanding ridges 100 are provided in the liner at least in the intermediate
region” (id. at 12).
10. Gillies discloses that “[e]ach elastic member has a front end 112,
a rear end 114, and a central portion 116 interconnecting the front and rear
ends. The front and rear ends are in a relaxed state . . . while the central
portion is in elastically contractible condition” (id. at 13).
11. Gillies discloses that, “because the front and rear ends of the
elastic member are in a relaxed state the ends of the diaper will lie
substantially flat when the diaper is removed from the packaging prior to
installing on the wearer” (id.).
12. Gillies discloses that
each ridge may extend longitudinally an equal or different
distance from the other ridges. . . . [I]n FIG. 8, the central
portion of each elastic member and, thus the upstanding ridge it
forms, does not extend an equal length. Instead, in the middle
of the diaper the central portion of the elastic member has a
longitudinal length that is less than the longitudinal length of
the central portion of the elastic member adjacent the side
margins.
(Id. at 12.)
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13. Gillies does not disclose that the length of the elasticized central
portion of the outermost ridges shown in Figure 8 is at least 60% of the
length of the chassis.
14. Gillies discloses that the liner is preferably “sufficiently porous to
be liquid permeable” (id. at 6).
15. Gillies discloses that the liner can be made of “porous foams,
reticulated foams, apertured plastic films, natural fibers (for example, wood
or cotton fibers), [or] synthetic fibers (for example, polyester or
polypropylene fibers)” (id.).
Principles of Law
“[T]he analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” Id. at 421.
Analysis
It is undisputed that the diaper disclosed by Gillies meets all the
requirements of claim 41 except for “each outer containment flap having an
elasticized length in the range of about 60 percent to about 100 percent of
the length of the chassis.” Appellant argues that Gillies does not expressly
or implicitly disclose this limitation, and estimates that the relevant
elasticized lengths in the embodiment of Gillies’ Figure 8 are only 40-45%
of the length of the diaper (Appeal Br. 24-25).
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Appellant also argues that modifying Gillies’ flaps or ridges to have
the elasticized length required by claim 41 would not have been obvious
because “Gillies et al. disclose the importance of keeping the ends of the
elastic members in a relaxed state so that the diaper is able to lie flat so as to
be easier to put the diaper on the wearer. . . . Thus, increasing the elasticized
portion of the ridges 100 of Gillies et al. to include the front and rear ends
would hamper the ability of the diaper to lie flat.” (Id. at 25-26.)
We agree with the Examiner that the product of claim 41 would have
been obvious to a person of ordinary skill in the art based on Gillies’
teachings, and Appellant’s arguments to the contrary are not persuasive.
The only difference between what is claimed and what was disclosed in the
prior art, according to Appellant’s own calculations, is that the prior art
product was illustrated as having outer ridges or flaps with an elasticized
length of 40-45% of the length of the diaper, while the product of claim 41
requires outer flaps with an elasticized length of at least 60% of the length of
the diaper.
This minor difference does not make the claimed product nonobvious
over the prior art product. It is true, as Appellant points out, that Gillies
teaches that having relaxed portions at the front and rear of each ridge or
flap provides the advantage that the diaper lies flat when removed from its
packaging. Gillies does not, however, disclose or imply that the front and
rear ends must be 20% of the length of the diaper in order to provide this
property.
That is, Gillies discloses the advantage of having relaxed portions at
the end of the elastic members, and therefore may not have suggested ridges
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having an elasticized length equal to (100% of) the length of the diaper, but
Gillies does not provide any reason for limiting the elasticized length of the
ridges to less than 60% of the length of the diaper. We agree with the
Examiner that modifying Gillies’ diaper to have ridges with an elasticized
length of at least 60% of the length of the diaper would have been within the
level of ordinary creativity of those skilled in the art, and therefore obvious.
Appellant also argues that claim 42 requires the inner containment
flaps to be made at least in part of a liquid impervious material, and Gillies’
ridges are constructed from the liner material, which is liquid pervious
(Appeal Br. 26).
We agree with Appellant that the Examiner has not shown that the
product of claim 42 would have been obvious based on Gillies. The
Examiner points to Gillies’ disclosure that the liner can be, among other
things, apertured plastic film, and reasons that “the portion of the flaps
between the apertures of a plastic film are constructed of liquid impervious
material, i.e. ‘constructed at least in part of a liquid impervious material’”
(Answer 11).
In our view, the Examiner’s interpretation of the claim is broader than
is reasonable. Claim 42 recites flaps “constructed at least in part of a liquid
impervious material,” not “constructed of a material that is at least partly
liquid impervious.” Apertured plastic film, as a material, is not liquid
impervious because it has holes in it.
Conclusion of Law
The Examiner did not err in concluding that it would have been
obvious to modify the ridges (or flaps) of the product disclosed by Gillies to
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have the elasticized length recited in claim 41, but did err in concluding that
Gillies suggests flaps “constructed at least in part of a liquid impervious
material,” as recited in claim 42.
SUMMARY
We reverse the rejection of claims 16, 17, 21, 29, 41, and 42 based on
the first and second paragraph of 35 U.S.C. § 112, and the rejection of
claims 16, 17, 29, 41, and 42 as anticipated by Gillies. We affirm the
rejection of claims 16, 17, 29, and 41 as obvious in view of Gillies, and the
rejection of claim 21 as obvious in view of Gillies and Wada. We reverse
the rejection of claim 42 as obvious in view of Gillies.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

cdc
Christopher M. Goff (27839)
ARMSTRONG TEASDALE LLP
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