Ex Parte Roe et al

Patent Trial and Appeal Board

Nov 17, 2016

12687425 (P.T.A.B. Nov. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/687,425 01114/2010
27752 7590 11/21/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
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.
11559 1515
EXAMINER
HANRAHAN, BENEDICT L
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
11/21/2016 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 and ELAINE MARY WIGGINS
Appeal 2015-003112
Application 12/687,425
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PERCURIAM
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to leg and
waist band structures for an absorbent article. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
Statement of the Case
Background
Appellants' invention "relates generally to legband and waistband
structures useful in reusable apparel articles, and more specifically to
legband and waistband structures useful in reusable outer covers for
1 Appellants identify the Real Party in Interest as The Procter & Gamble
Company of Cincinnati, Ohio (see Br. 1 ).
Appeal 2015-003112
Application 12/687,425
absorbent articles, such as outer covers for diapers, training pants, adult
incontinence devices, catamenial products, and the like" (Spec. 1 :4--7).
The Claims
Claims 1, 3---6, and 9--15 are on appeal. Independent claim 1 is
representative and reads as follows (emphasis added):
1. An absorbent article comprising
a reusable outer cover, wherein the reusable outer
cover is folded over an elastic component to form a tubular
sheath,
wherein the sheath has a longitudinal length; and
wherein the elastic component has a longitudinal
length shorter than the longitudinal length of the sheath when
the elastic component is in a relaxed state and moveably
disposed within the sheath; and
wherein the reusable outer cover further comprises a
bond between the elastic component and the sheath at each
end of the longitudinal length of the sheath, and at least one
intermediate bond between the elastic component and the
sheath between the longitudinal ends of the sheath
component,
wherein there is between 1 cm and 1 Ocm between each
of the bonds, measured along the longitudinal length of the
sheath component when the sheath component is fully
extended,
wherein at least one intermediate bond is positioned to
correspond to a front of a wearer's thigh.
The Issues
A. The Examiner rejected claims 1, 3---6, 9--12, 14, and 15 under 35
U.S.C. § 103(a) as obvious over Buell2 (Ans. 3-5).
2 Buell, US 4,081,301, issued Mar. 28, 1978.
2
Appeal 2015-003112
Application 12/687,425
B. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as obvious
over Buell and Ekstrom3 (Ans. 5).
Because the same issue is dispositive for both rejections, we will
consider them together.
The Examiner finds that Buell teaches
an absorbent article 2 comprising a reusable outer cover 5 and
6, wherein the reusable outer cover 5 and 6 is folded over an
elastic component 4 to form a tubular sheath (Fig 8), wherein
the sheath 5 and 6 has a longitudinal length; and an elastic
component 4 having a longitudinal length shorter than the
longitudinal length of the sheath when the elastic component
is in a relaxed state and moveably disposed within the sheath;
and wherein the reusable outer cover further comprises a bond
7 and 7' between the elastic component and the sheath at each
end of the longitudinal length of the sheath, and at least one
intermediate bond between the elastic component and the
sheath between the longitudinal ends of the sheath
component, wherein at least one intermediate bond is
positioned to correspond to a front of a wearer's thigh (Figs.
2, 4, 6, 10 and 11 4 ; Col[.] 1, lines 9--17, 27-36, Col[.] 2, lines
29--50; Col[.] 4, lines 35--43; Col[.] 5, line 45 to Col 6, line
30 and Col[.] 10, lines 1-12 and 37--48).
(Ans. 3.)
The Examiner acknowledges that "Buell does not specifically disclose
that the spacing is between 1 cm and 10 cm" (id.).
The Examiner concludes that it would have been obvious to have "the
spacing between the bonds may be between 1 and 10 cm to ensure a strong
3 Ekstrom, US 2009/0216209 Al, published Aug. 27, 2009.
4 We note that Figs. 10 and 11 do not exist in Euell's disclosure.
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Appeal 2015-003112
Application 12/687,425
bond" because "discovering the optimum or workable ranges involves only
routine skill in the art" (id. at 3--4 ).
The issue with respect to these rejections are: Does the evidence of
record support the Examiner's conclusion that Buell renders the claims
prima facie obvious?
Findings of Fact
1. Buell teaches that
a continuous elastic ribbon is fed to a diaper web assembly
station in a stretched condition. While traveling to the
assembly station, an adhesive is applied to discrete lengths of
the elastic ribbon at regularly spaced intervals. . . . At the
station, the stretched elastic ribbon is adhered to the moisture-
impervious backsheet web in the discrete areas of the elastic
which are covered by adhesive at predetermined points along
the length of said web.
(Buell Abstract; see also Ans. 3.)
2. Figure 8 of Buell is reproduced below:
Fig. 8
7 &._ 7\ I~ /5
\.., 'L LL Ll LLL Lt-.LLL- --";'''' LL>'L 1--= _.( ·· .. i. ··: ;.~·- .. /~; ... ,.· ·• 7
~
1
! , ·--14
t'
(--.........,.
14 i
Figure 8 shows that "the moisture-impervious backsheet material 5 is coated
on portions of its innermost surface with a flexible adhesive 7," in which
"those portions of the moisture-impervious web 5 which are laterally aligned
with the continuous stretched bands of elastic 4 are preferably not coated
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Appeal 2015-003112
Application 12/687,425
with adhesive 7 prior to entry into the nip between combining rolls" (Buell
4:36-43; see also Ans. 4).
3. Buell teaches that
alternative preferred embodiments of adhesive patterns ...
may be employed in the practice of the present invention.
. . . [I]t is desired to uniformly gather the elasticized article
throughout the area of adherence between the elastic bands 4
and the backsheet 5. The reduced amount of adhesive applied
in the centermost areas of the elastic bands 4 has a lesser
tendency to restrict expansion or contraction of the elastic,
while the greater quantities of adhesive at the end points act
to firmly secure the elastic bands 4 to the backsheet 5.
(Buell 10:26-37; see also Ans. 4.)
Principles of Law
"[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955).
"[T]he discovery of an optimum value of a variable in a known
process is usually obvious." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1368 (Fed. Cir. 2007). The rationale for determining the optimal parameters
for prior art result effective variables "flows from the 'normal desire of
scientists or artisans to improve upon what is already generally known."' Id.
(quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).)
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 3-8; FF 1-3) and agree that claim 1
would have been obvious over Buell. We address Appellants' arguments
below.
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Appeal 2015-003112
Application 12/687,425
Appellants contend that "the cited reference fails to teach a reusable
outer cover" (Br. 5).
We are not persuaded. We begin with claim interpretation and
specifically with the term "reusable" in claim 1. The Specification defines
the term "reusable" to mean "that a referenced material, component, or all of
an absorbent article is configured to be restored and/or reused for more than
one usage cycle" (Spec. 4:28-29). However, the Specification does not
define what constitutes a usage cycle. As the Examiner points out,
Euell's outer cover is fully capable of being reused. There is
no time constraint for reusability as defined by the claim. A[]
user may put the outer cover on their body for ten seconds,
remove the outer cover, and put the outer cover back on their
body. The outer cover would then be reused. [Also], the
outer cover could be washed and then reused.
(Ans. 5.)
"[T]he patentability of apparatus or composition claims depends on
the claimed structure; not on the use or purpose of that structure." Catalina
Mktg. Int'!, Inc. v. Coo/savings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). "'Functional' terminology may render a claim quite broad. By its
own literal terms a claim employing such language covers any and all
embodiments which perform the recited function." In re Swinehart, 439
F.2d 210, 213 (CCPA 1971). Therefore, "[i]fthe prior art structure is
capable of performing the intended use, then it meets the claim" (id.).
Here, the Examiner has reasonably established that the scope of the
term "reusable" encompasses the outer cover of Buell. Appellants provide
no narrower limitations that exclude the outer cover of Buell.
In referring to Figure 2 of Buell, Appellants contend that "the cited
reference also fails to teach, 'wherein the reusable outer cover is folded over
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Appeal 2015-003112
Application 12/687,425
an elastic component to form a tubular sheath,' as recited in claim 1" (Br. 5).
Appellants argue that "the disposable diaper [of Buell] is being folded after
it has been configured" (id. at 6).
This argument is unpersuasive. As the Examiner explains,
"Appellant[s] admit[] that Buell discloses [a] reusable outer [cover that] is
folded; see Appeal Brief page 6, lines 1-3. Appellant[ s are] arguing about
the method of making the absorbent article. However, Appellant[ s have] not
claimed a method" (Ans. 6; see also FF 2). The patentability of product-by-
process claims is not dependent on process limitations. See In re Thorpe,
777 F .2d 695, 697 (Fed. Cir. 1985) ("even though product-by-process claims
are limited by and defined by the process, determination of patentability is
based on the product itself.") Moreover, the bonds, as claimed, encompass
bonds that are either permanent or non-permanent.
Appellants argue that "[ f]igure 6 of Buell illustrates that the elastic
band is sandwiched between the topsheet and the backsheet. Thus, Buell
fails to teach a reusable outer cover folded over an elastic component to
form a tubular sheath. Buell fails to teach that any material has been folded
over the elastic component" (Br. 6-7).
We are not persuaded. As the Examiner explains, "[t]his is not the
figure Examiner has relied upon in the office action to disclose the folding
over limitation," and "[t]he reusable outer cover 5 is also shown [in Figure
6] as being folded over the elastic component 4" (Ans. 6-7; see also FF 2).
Appellants contend that
Buell also fails to teach, "wherein there is between 1 cm and
1 Ocm between each of the bonds, measured along the
longitudinal length of the sheath component when the sheath
component is fully extended," and "wherein at least one
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Appeal 2015-003112
Application 12/687,425
intermediate bond is positioned to correspond to a front of a
wearer's thigh," as recited in independent claim 1.
(Br. 7.)
We are not persuaded. As the Examiner explains
Buell discloses that the spacing of the adhesive is a result
effective variable (Col[.] 10, lines 37--48). Buell discloses that
the spacing of the adhesive affects the uniformity of the
gathering. Therefore, it would have been obvious to one
having ordinary skill in the art at the time the invention was
made [] that the adhesive is disposed between 1 cm and 10 cm
between each of the bonds, since it has been held that
discovering an optimum value of a result effective variable
involves only routine skill in the art.
(Ans. 7; see also FF 1, 3.) See In re Aller, and Pfizer, Inc. v. Apotex, Inc.
Appellants do not identify any secondary consideration, such as unexpected
results, that overcomes the prima facie case of obviousness based on routine
optimization of the spacing between the bonds as disclosed by Buell.
We also agree with the Examiner that "[t]he limitation of 'one
element corresponding in position to another' adds little patentable weight.
... any portion of Euell's absorbent article will definitely correspond in
position to another portion of the absorbent article. As long as there are two
elements, they correspond to one another in position" (Ans. 8.) See
Catalina Mktg. Int 'l, Inc. v. Coo/savings. com, Inc., In re Schreiber, and In re
Pearson. That is, the location of the intermediate bond is not required to be
at the front of the outer cover, or even at the wearer's thigh, but rather is
required to "correspond" to that location without any specific degree of
correspondence required.
Appellants contend that "the Office Action fails to provide some
articulated reasoning to support the conclusion of obviousness" (Br. 8).
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Application 12/687,425
This argument is unpersuasive for the reasons discussed above.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
102(b) as being obvious over Buell. Claims 3-6, 9-12, 14, and 15 fall with
claim 1.
We affirm the rejection of claim 13 under 35 U.S.C. § 103(a) as
obvious over Buell and Ekstrom.
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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