Ex Parte Roe et al

Patent Trial and Appeal Board

Apr 6, 2016

11900311 (P.T.A.B. Apr. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111900,311 09/11/2007
27752 7590 04/08/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Donald Carroll Roe
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10644R 2251
EXAMINER
KIDWELL, MICHELE M
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
04/08/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD CARROLL ROE, CARL LOUIS
BERGMAN, KIMBERLY ANN DREIER,
CONSTANCE LEE FISHER, BARRY
ROBERT FEIST, and MARK JAMES KLINE
Appeal2014-004650
Application 11/900,311
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PERCURIAM
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a
disposable absorbent article having a wrap and tuck configuration. The
Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as The Procter & Gamble
Company (see Br. 1 ).
Appeal2014-004650
Application 11/900,311
Statement of the Case
Background
Appellants' invention relates to "disposable absorbent articles having
wrap and tuck folding configurations for application of the articles to
wearers that mimic swaddling characteristics" (Spec. 1:9--10).
The Claims
Claims 1, 3-5, and 7-25 are on appeal. Independent claim 1 is
representative and reads as follows (emphasis added):
1. A disposable absorbent article adapted to be worn about a
lower torso region of a wearer comprising:
a chassis having an outer surface and an inner surface and
including a first waist region, a second waist region, and a crotch
region disposed intermediate the first waist region and the second
waist region, the chassis further including a first ear and a second
ear, wherein the first and second ears extend in opposing lateral
directions from the first waist region, and wherein the second
waist region is adapted to be permanently deformed by a user to
form a tuck flap, wherein the tuck flap is defined by a
longitudinally stretched portion of the chassis and extends in a
longitudinal direction from the second waist region;
at least one fastener element disposed on a first area of the
chassis and adapted to connect with a second area of the chassis;
and
wherein at least one portion of the tuck flap is stretchable
in at least one direction.
The Issues
A. The Examiner rejected claims 1 and 4 under 35 U.S.C. § 103(a) as
obvious over Schwartz,2 LaVon, 3 and Nakaoka4 (Ans. 2-8).
2 Schwartz, US 3,089,494, issued May 14, 1963.
3 La Von et al., US 2007/0066953 Al, published Mar. 22, 2007.
4 Nakaoka, JP 2005/192670 A, published July 21, 2005.
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Application 11/900,311
B. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as obvious
over Schwartz, La Von, Nakaoka, and Sosalla5 (Ans. 8-9).
C. The Examiner rejected claims 5 and 7-9 under 35 U.S.C. § 103(a) as
obvious over Sosalla, La Von, Schwartz, and Nakaoka (Ans. 9-14).
D. The Examiner rejected claims 10-25 under 35 U.S.C. § 103(a) as
obvious over Knight, 6 La Von, and Coates7 (Ans. 14--20).
A. 35 USC§ 103(a) over Schwartz, La Von, and Nakaoka
The Examiner finds that Schwartz teaches a disposable absorbent
article "wherein the second waist region 4 is adapted to form a tuck flap 5, []
wherein the tuck flap 5 is defined by a longitudinal portion 3, 4 of the article
10 and extends in a longitudinal direction 5---4 from the second waist region
4---3" (Ans. 2; citing Schwartz 1 :45-53, 2: 1--4) and "wherein at least one
portion of the tuck flap is stretchable in at least one direction" (Ans. 3; citing
Schwartz 2: 11-13).
The Examiner concludes that it would have been obvious
to provide the chassis of Schwartz having a stretched portion as
taught by La Von since La Von states . . . that the benefit of
forming the chassis with this design is that it permits the chassis
to better conform to the body of the wearer and impart a tailored
appearance thereby providing a better fitting e.g. more secure fit
of [a] diaper which is an object of Schwartz.
(Ans. 6-7; citing La Von i-f 68.) The Examiner further concludes that it
would have been obvious
to provide the waist region of Schwartz adapted to be
permanently deformed by a user to form a tuck flap defined by a
5 Sosalla, US 5,695,488, issued Dec. 9, 1997.
6 Knight, US 4,995,873, issued Feb. 26, 1991.
7 Coates, US 4,681,581, issued July 21, 1987.
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Application 11/900,311
longitudinally stretched portion as taught by Nakaoka, since
Nakaoka 8 states ... that the benefit of providing the diaper with
this design is that it improves fit of the diaper around the waist
and torso during movements of the wearer and reduces gaps
between the diaper and wearer thereby reducing leakage and thus
providing a more sanitary diaper.
(Ans. 8; citing Nakaoka i-fi-139, 48--49.)
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that the combination of Schwartz,
La Von, and Nakaoka renders the claims prima facie obvious?
Findings of Fact
1. Schwartz teaches pinless diapers having "one wing [that] is
folded over the other," and "[a] downwardly extending portion of the sheet
[that] is so designed as to be adapted to be folded upwardly (against the
abdomen for a boy or in case of a girl in the back) and then downwardly
over the wings in sealed engagement" such that "[ t ]his latter downwardly
extending portion contains self-sealing adhesive only on the surface away
from the abdomen (or back) in the unfolded position so that, when folded
over the wings, it is adapted to be pressed into sealed engagement therewith
thus holding the diaper in place" (Schwartz 1:8-36).
8 It appears that the Examiner refers to the machine translation of Nakaoka
by Paterra® InstantMT®, made of record during prosecution. Therefore, for
purposes of this Appeal, all references to Nakaoka will refer to the machine
translation of Nakaoka.
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Application 11/900,311
2. Figure 1 of Schwartz is reproduced below.
Figure 1 shows a diaper 10 having a crotch portion 1, adhesives 8 and 9, a
portion 2 extending upwardly from portion 1, wings 6 and 7, a portion 3
extending downwardly from portion 1, and portions 4 and 5, in which "[i]n
fastening the diaper to the boy baby, the downwardly extending portion 3 is
folded upwardly against the abdomen exposing 5," "[t]he wings are then
placed into sealed engagement by being folded over the abdomen with the
use of only mild pressure," and "[p ]ortion 4, with the sealed adhesive
portion 5 exposed, is then folded over the wings and also pressed into sealed
engagement therewith fastening the diaper" (Schwartz 1 :42-2:4).
3. Schwartz teaches that "elastic materials can be incorporated
around the edges, if desired, for [a] more secure fit" (Schwartz 2: 11-13 ).
4. La Von teaches a diaper having a chassis in which "[a] portion
or the whole of chassis and/or the absorbent assembly and/or the belt strip
may be formed of an elastically extensible material or materials" and "[ t ]he
additional extensibility may be desirable in order to allow the diaper [] to
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Application 11/900,311
conform to the body of a wearer during movement by the wearer" (La Von
Abstract, ,-r 68).
5. The Examiner finds that Nakaoka teaches a diaper "having a
longitudinal[ly] extended waist region part 11" "to adjust the rise of the
diaper" that is "permanently deformed by a user to form a tuck flap" and
stretched in forming a tuck flap, and made of substantially identical
materials as recited in the Specification (Ans. 7; see Nakaoka Abstract, i-fi-16,
8-13, 20-24, 27-34, 42, Figures 5-8; Specification i-fi-139, 44, 48, 58---63).
6. Figure 8 of Nakaoka is reproduced below.
8
Figure 8 shows a diaper having an extended part 11, and in the process of
folding the extended part (Nakaoka Abstract, i-fi-110, 54--55).
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Application 11/900,311
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417.
Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product. .
. . Whether the rejection is based on "inherency" under 35 U.S.C.
§ 102, on "prima facie obviousness" under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO' s inability to manufacture
products or to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2-29; FF 1-10) and agree that the
claims are obvious over Schwartz, La Von, and Nakaoka. We address
Appellants' arguments below.
Appellants contend that the combination of Schwartz, La Von, and
Nakaoka "does not teach or suggest the claimed second waist region and
tuck flap of claim 1" (Br. 5). More particularly, Appellants contend that the
Examiner
erroneously equates an existing tuck flap that can be permanently
held in position to the claimed waist region that is adapted to be
permanently deformed to form a tuck flap, wherein the tuck flap
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Application 11/900,311
is defined by a longitudinally stretched portion of the chassis and
extends in a longitudinal direction from the waist region.
(Id. at 6.) Appellants argue that the Examiner "has not provided reasoning
as to why it would have been obvious to modify the diaper of Schwartz to
include the claimed second waist region that is adapted to be permanently
deformed by a user to form a tuck flap" (id.).
We do not find these arguments persuasive. As the Examiner points
out, folding and tucking the flap, and fastening the diaper adhesive fasteners
of Schwartz would necessarily deform and stretch the diaper (see Ans. 22-
24; FF 1-3). See In re Best, 562 F.2d at 1255. Appellants have provided no
evidence rebutting this finding.
Moreover, Schwartz teaches incorporating elastic materials (FF 3),
La Von teaches using elastic materials for the chassis to allow the diaper to
conform to the body during movement (FF 4), and Nakaoka teaches using the
same materials as taught by the Specification for a diaper having portions that
can be folded (FF 5-6). Alternatively, as the Examiner points out, it would
have been obvious to modify Schwartz' diaper to have a stretchable chassis, as
taught by LaVon to better conform to the body (Ans. 6-7; FF 4), and to provide
a waist region that can be permanently deformed by user, as taught by Nakaoka
to improve fit (Ans. 8; FF 5---6). Therefore, we are not persuaded by
Appellants' contentions to the contrary.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that the
combination of Schwartz, La Von, and Nakaoka renders claim 1 prima facie
obvious. Appellants do not argue separately the claims for this obviousness
rejection. Therefore, claim 4 falls with claim 1.
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B. 35 USC§ 103(a) over Schwartz, La Von, Nakaoka, and Sosalla
Appellants contend that "claim 3 is believed patentable under
35 U.S.C. § 103(a) for at least the same reasons as claim 1" (Br. 7). Having
affirmed the obviousness rejection of claim 1 over Schwartz, La Von, and
Nakaoka for the reasons given above, we also affirm the rejection of claim 3.
C 35 USC§ 103(a) over Sosalla, La Von, Schwartz, and Nakaoka
The Examiner finds that Sosalla teaches a diaper "wherein the second
waist region 14 is adapted to be permanently deformed by the user to form a
foldable region 60 that performs the same or similar function as the present
tuck flap of securing the diaper about the wearer's waist" (Ans. 10-11;
citing Sosalla Figures 7 A-10, 5:52---67).
The Examiner concludes that it would have been obvious to provide
the side panels or ears of Sosalla in the either of the front or the
back or the first or the second waist regions as taught by
Sch\~1artz since it appears [that] the invention \~1ould \~1ork
equally well with the ears extending from either waist region
since the ears laterally extending from either waist region
perform the substantially identical function of wrapping about
the lower torso of a wearer in order to secure the diaper in place
and since it has been held that rearranging parts of an invention
involves only routine skill in the art.
(Ans. 13.) The Examiner concludes that it would have been obvious to
provide the tuck flap of Sosalla having a longitudinally stretched
portion as taught by La Von since La Von states[] that the benefit
of forming the chassis with this design is that it permits the
chassis to better conform to the body of the wearer and impart a
tailored appearance thereby providing a better fitting diaper.
(Ans. 14; citing La Von i-f 68.)
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Application 11/900,311
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that the combination of Sosalla,
La Von, Schwartz, and Nakaoka renders the claims prima facie obvious?
Findings of Fact
7. Sosalla teaches improving "the fit of the absorbent article by
reducing rollover at the waist and reducing sagging" (Sosalla 3 :4---6), in
which the absorbent article has a bridge flap (Sosalla 4:30-41) and "a pair of
elasticized side panels 58 connected at laterally opposed end regions of the
back waistband portion 14 of the article, and each of the side panels 58 can
include an operable portion of the waistband-edge attaching means" (Sosalla
5:46-51).
8. Figure 7 A of Sosalla is reproduced below.
Figure 7 A shows a diaper having fold attachment means 104, side panel 58,
and "a foldable section 60 which extends longitudinally and protrudes
length-wise past a longitudinally terminal edge 94" such that the foldable
sections 60 is "in a substantially C-folded condition which substantially
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Application 11/900,311
wraps about a laterally extending, terminal edge 96 of the article front
waistband" (Sosalla 5:52---67).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 9--14; FF 1-8) and agree that the
claims are obvious over Sosalla, La Von, Schwartz, and Nakaoka. We
address Appellants' arguments below.
Appellants contend that the combination of Sosalla, La Von, Schwartz,
and Nakaoka does not teach "wherein the tuck flap is defined by a
longitudinally stretched portion of the chassis and extends in a longitudinal
direction from the second waist region" (Br. 8; emphasis omitted). More
particularly, Appellants contend that the Examiner "fails to show where the
prior art discloses a waist region adapted to be permanently deformed by a
user to form a tuck flap" (id. at 10). Appellants argue that the Examiner
does not provide reasoning to modify Sosalla to include a second waist
region that is adapted to be permanently deformed by a user to form a tuck
flap, wherein the tuck flap has a longitudinally stretched portion from the
chassis to the waist region (see id.).
We are not persuaded. As the Examiner points out, the definition of
"tuck" is "to pull up into a fold, push, fold or tum the edges or ends of
something, especially a garment or bedclothes so as to hide them or to hold
them in place" (Ans. 25; citing Merriam-Webster's Collegiate Dictionary
Tenth Edition, 1998) and that Sosalla teaches that "flap 60 is folded over and
tucked against the top edge of the diaper waist band and can be located at
either of the first or second i.e. the front or rear waist region as preferred"
(Ans. 25 (citing Sosalla 5:52---67, 11:64--65, 23:61---64); FF 7-8). As
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Application 11/900,311
discussed above, the folding and tucking of the flap, would necessarily
deform and stretch the diaper to a certain degree (see also Ans. 11, 13, 25-
26). See In re Best, 562 F.2d at 1255. Appellants have provided no evidence
rebutting this finding.
Moreover, Schwartz teaches incorporating elastic materials (FF 3),
La Von teaches using elastic materials for the chassis to allow the diaper to
confirm to the body during movement (Ans. 13-14; FF 4), and Nakaoka
teaches using the same materials as taught by the Specification for a diaper
having portions that can be folded (FF 5---6). Alternatively, as the Examiner
points out, it would have been obvious to modify Sosalla's diaper to have a
stretchable chassis, as taught by La Von to better conform to the body (Ans. 13-
14; FF 4), and to provide a waist region that can be permanently deformed by
user, as taught by Nakaoka to improve fit (Ans. 8; FF 5-6). Therefore, we are
not persuaded by Appellants' contentions to the contrary.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that the
combination of Sosalla, La Von, Schwartz, and Nakaoka renders claim 5
prima facie obvious. Appellants do not argue separately the claims for this
obviousness rejection. Therefore, claims 7-9 fall with claim 5.
D. 35 USC§ 103(a) over Knight, La Von, and Coates
The Examiner finds that Knight teaches that a disposable absorbent
article "wherein the second waist region 14 is adapted to be permanently
deformed 15 by a user to form a tuck flap 26" and "wherein the tuck flap 26
is defined by a longitudinally stretched portion 15 of the article, see 14---22-
-25-26, and extends in a longitudinal direction 14---22-25-26 from the
second waist region 14" (Ans. 15; citing Knight 3:57---61, Figures 1, 2, 5).
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Application 11/900,311
The Examiner concludes that it would be obvious to have
at least 25 % of the areas of Knight covered with fastening
elements as taught by Coates to optimize or utilize workable
ranges of material thereby provide economically efficient diapers
having sufficient amounts of areas covered with the fastening
elements that will securely attach a diaper around a wearer's
torso while minimizing economic wastage on high cost or
expensive and unnecessary fastening element material.
(Ans. 18.)
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that the combination of Knight,
La Von, and Coates renders the claims prima facie obvious?
Findings of Fact
9. Knight teaches "[a Jn absorbent garment such as a diaper having
a substantially 'T' -shaped configuration when laid out flat" and that "[t ]he
garment can be folded into the shape of a loincloth" (Knight Abstract; see
1 A.. -1 A -1 ,r>._ atso Ans. 14-lOJ.
10. Figure 5 of Knight is reproduced below.
Figure 5 shows the garment with a fold line 15 (Knight 3: 1-7; see also Ans.
15).
Analysis
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Application 11/900,311
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 14--20; FF 1-10) and agree that the
claims are obvious over Knight, La Von, and Coates. We address
Appellants' arguments below.
Appellants similarly contend that the combination of Knight, La Von,
and Coates does not teach "wherein the tuck flap is defined by a
longitudinally stretched portion of the chassis and extends in a longitudinal
direction from the second waist region" (Br. 11 ). More particularly,
Appellants contend that the Examiner "fails to show where the prior art
discloses a waist region adapted to be permanently deformed by a user to
form a tuck flap" (id. at 12). Appellants argue that the Examiner does not
provide reasoning to modify Knight to include a second waist region that is
adapted to be permanently deformed by a user to form a tuck flap, wherein
the tuck flap has a longitudinally stretched portion from the chassis to the
waist region (see id. at 13).
We are not persuaded. As the Examiner points out, Knight teaches a
tuck flap 26 having a longitudinally stretched portion 15 and a waist region
14 that is permanently deformed as the portion 15 is bended and folded over
(Ans. 27; FF 9-10). As discussed above, the folding and tucking of the flap,
would necessarily deform and stretch the diaper to a certain degree. See In
re Best, 562 F.2d at 1255. Also as already noted, Appellants have provided no
evidence rebutting the Examiner's position that "fastening the diaper adhesive
fasteners into sealing engagement would necessarily deform the article" (Ans.
22).
Moreover, La Von teaches using elastic materials for the chassis to allow
the diaper to confirm to the body during movement (Ans. 18; FF 4).
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Alternatively, as the Examiner points out, it would have been obvious to
modify Knight's diaper to have a stretchable chassis, as taught by La Von to
better conform to the body (Ans. 18; FF 4). Therefore, we are not persuaded by
Appellants' contentions to the contrary.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that the
combination of Knight, La Von, and Coates renders claims 10, 18, and 24
prima facie obvious. Appellants do not argue separately the claims for this
obviousness rejection. Therefore, claims 11-17 fall with claim 10, and
claims 19-23 and 25 fall with claim 18.
SUMMARY
In summary, we affirm the rejection of claim 1under35 U.S.C. §
103(a) as obvious over Schwartz, La Von, and Nakaoka. Claim 4 is not
separately argued and falls with claim 1.
We affirm the rejection of claim 3 under 35 U.S.C. § 103(a) as
obvious over Schwartz, La Von, Nakaoka, and Sosalla.
We affirm the rejection of claim 5 under 35 U.S.C. § 103(a) as
obvious over Sosalla, La Von, Schwartz, and Nakaoka. Claims 7-9 are not
separately argued and fall with claim 5.
We affirm the rejection of claims 10, 18, and 24 under 35 U.S.C. §
103(a) as obvious over Knight, La Von, and Coates. Claims 11-17 are not
separately argued and fall with claim 10. Claims 19-23 and 25 are not
separately argued and fall with claim 18.
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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
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