Ex parte POPP et al.

Board of Patent Appeals and Interferences

Apr 6, 1998

08054508 (B.P.A.I. Apr. 6, 1998)

Application for patent filed April 26, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT L. POPP, FRANK S. GLAUG, JULIA M. LUBEN,
SHIRLEE A. WEBER and DAVID A. KUEN
__________
Appeal No. 97-0937
Application No. 08/054,5081
__________
ON BRIEF
__________
Before CALVERT, ABRAMS and FRANKFORT, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 46-50. Claims 1-45 have been
canceled. No claims have been allowed.
Appeal No. 97-0937
Application No. 08/054,508
2
The appellants’ invention is directed to a disposable
absorbent article. The subject matter before us on appeal is
illustrated by reference to claim 46, a copy of which appears
in an appendix to the appellants’ Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Repke et al. (Repke) 4,205,679 Jun. 3,
1980
Boland et al. (Boland) 4,747,846 May 31,
1988
Kielpikowski et al. 4,834,738 May
30, 1989
(Kielpikowski)
Enloe et al. (Enloe) 4,846,825 Jul. 11,
1989
Freeland et al. (Freeland) 5,032,120 Jul. 16,
1991
Igaue et al. (Igaue) 5,114,420 May 19,
1992
THE REJECTIONS
Claims 46-50 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Enloe in view of Igaue and Freeland.
Appeal No. 97-0937
Application No. 08/054,508
The examiner saw fit in the Answer to explain the2
rejections by referring only to pages and lines from three
previous office actions. Two of those (Papers 21 and 14) used
the same format, and only when one reached Paper No. 10, the
first office action, were the rejections actually explained.
This is a flagrant violation of the instructions regarding
reference to previous papers in Examiner’s Answers (see MPEP
§1208). More importantly, however, like the appellants, we
found it very difficult to effectively and efficiently
understand and evaluate the rejections, which is the very
reason for the rule.
3
Claims 46-50 also stand rejected under 35 U.S.C. § 103 as
being unpatentable over Enloe in view of Igaue, Repke, Boland,
Kielpikowski and Freeland.
The rejections are explained in the Examiner's Answer.2
The opposing viewpoints of the appellants are set forth
in the Brief.
OPINION
After consideration of the positions and arguments
presented by both the examiner and the appellant, we have
concluded that neither of the rejections should be sustained.
Our reasons for arriving at this conclusion follow.
Both of the rejections are under 35 U.S.C. § 103. The
test for obviousness is what the combined teachings of the
Appeal No. 97-0937
Application No. 08/054,508
4
prior art would have suggested to one of ordinary skill in the
art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981).
Independent claim 46 is directed to a disposable
absorbent article. Among the features recited in the claim is
a pair of containment flaps operatively joined at
their respective end portions in a transversely
foreshortened state to said waste containment
assembly.
Enloe, the primary reference cited against the claims, also
discloses a disposable absorbent article comprising a pair of
containment flaps (30 & 32). However, there is a difference
between the structure of Enloe and that required by claim 46.
The claim specifies that the containment flaps be “in a
transversely foreshortened state” at their end portions. As
explained in the specification, this means that at their end
portions the flaps (which already include a fold at distal end
65 in which elastic 67 is positioned) are folded over upon
themselves, that is, shortened, so that the distal edges are
closer to the proximal edges (pages 15 and 16; compare Figures
6A and 6B). According to the appellants, this results in the
center portions of the containment flaps being more upright
Appeal No. 97-0937
Application No. 08/054,508
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(Figures 5 and 7), so that they do not tend to fold downwardly
as the article is donned, as was the case in the prior art
(Figure 4). In the Enloe article, the containment flaps are
not “in a transversely foreshortened state” in accordance with
the meaning established for this terminology in the
specification, as can be seen in Figure 1 of the Enloe
drawings.
The examiner apparently looks to Igaue for the above-
described feature. Igaue’s disposable article comprises a
waste containment section 11 which is flanked by a pair of
upstanding flaps 17 (Figures 2 and 4). The upper edge of each
flap has a fold over its entire length to accommodate elastic
bands 22 (Figure 4). From our perspective, the Igaue flaps
also are not “in a transversely foreshortened state,” in
accordance with the interpretation that is established in the
appellants’ specification.
Freeland has been applied by the examiner for its
teaching of utilizing flap elastic having the specifications
recited in claim 46. Be that as it may, this reference fails
to overcome the deficiency in the basic combination.
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Application No. 08/054,508
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Since the teachings of the three references fail to
establish a prima facie case of obviousness with regard to the
subject matter of claim 46, we will not sustain this rejection
of independent claim 46 or of claims 47-50, which depend
therefrom.
The second rejection of claims 46-50 also utilizes Enloe,
Igaue and Freeland as evidence that the basic features recited
in claim 46 would have been obvious, adding an additional
three references with regard to the subject of the
interchangability between two and three dimensional absorbent
garments. The added references also fail to overcome the
problem discussed above with the basic combination, and
therefore this rejection will not be sustained.
The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge)
Appeal No. 97-0937
Application No. 08/054,508
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)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge)
Appeal No. 97-0937
Application No. 08/054,508
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Douglas L. Miller
Kimberly-Clark Corporation
Patent Department
401 North Lake Street
Neenah, WI 54956