Ex parte Roessler et al.

Board of Patent Appeals and Interferences

Jun 15, 1999

08554640 (B.P.A.I. Jun. 15, 1999)

Application for patent filed November 6, 1995.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte THOMAS H. ROESSLER, PAUL T. VAN GOMPEL,
DANIEL R. SCHLINZ, MARK G. HEATH
and GEOFFREY W. FROST
__________
Appeal No. 98-2787
Application 08/554,6401
___________
ON BRIEF
___________
Before ABRAMS, FRANKFORT and CRAWFORD, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 20, which are all of the claims
pending in this application.
Appeal No. 98-2787
Application 08/554,640
2
Appellants’ invention relates to an absorbent article,
such as a disposable diaper, with asymmetric leg elastics (34,
38) that provide improved fit and leakage protection. As can
be seen in Figure 1 of the drawings, the outboard leg elastic
members (38) are located laterally outboard of the inboard
elastic members (34) to provide a set of elastic members at
each side margin of the absorbent article, wherein the elastic
members of each said set are arranged in a staggered
overlapping relation. As repeatedly pointed out in the
specification and as seen in Figure 1 of the drawings, a major
portion of a longitudinal end edge (82) of each of the
outboard elastic members (38) is configured substantially
coterminous with a terminal side edge (74) of each side margin
(20) at the intermediate portion (16) of the absorbent
article. At page 3, lines 4-11, of the specification it is
noted that
“the article of the present invention can be
more effectively produced on high speed
manufacturing lines and can be readily constructed
to provide a desired conformity to the different,
natural body lines and shapes which are typically
present at the front and back regions of a wearer’s
body. The article can also exhibit less bunching at
its crotch region and can provide reduced bulk in
the crotch. When the article is worn the article
can also exhibit less sagging at the waistband
Appeal No. 98-2787
Application 08/554,640
3
regions, and can provide improved body conformance
and fit. As a result, the article can be readily
configured to exhibit improved resistance to leakage
and to provide improved aesthetics.”
Claims 1 and 12 are representative of the subject matter
on appeal and a copy of those claims may be found in Appendix
1 of appellants’ brief.
The sole prior art reference of record relied upon by the
examiner as evidence of obviousness of the claimed subject
matter is:
Roessler et al. (Roessler) 5,540,672 Jul. 30, 1996

Claims 1 through 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Roessler. The examiner’s position
as stated in the paragraph bridging pages 2 and 3 of the final
rejection (Paper No. 7) is that Roessler
“discloses the claimed invention except for the
substantially coterminous relationship between the
ends of the outboard elastics and the side edges of
the articles. It would have been an obvious matter
of design choice to have provided such relationship,
since applicant has not disclosed that such
relationship solves any stated problem or is for any
particular purpose and it appears that the invention
Appeal No. 98-2787
Application 08/554,640
4
would perform equally well with the positioning of
the elastics of Roessler et al.”
Rather than further reiterate the examiner's position on
the above rejection and the conflicting viewpoints advanced by
the examiner and appellants regarding the rejection, we refer
to pages 3 and 4 of the examiner's answer (Paper No. 13) and
to pages 8 through 16 of appellants’ brief (Paper No. 12) for
the full exposition thereof.
OPINION
In reviewing the obviousness issue raised in this appeal,
we have carefully considered appellants’ specification and
claims, the applied references, and the respective viewpoints
advanced by appellants and the examiner. As a consequence of
our review, we have come to the conclusion, for the reasons
which follow, that the examiner's rejection of the appealed
claims is not well founded, and that the evidence relied upon
by the examiner does not support a conclusion of obviousness
with respect to the subject matter of claims 1 through 20 on
appeal.
Appeal No. 98-2787
Application 08/554,640
5
In evaluating the examiner’s rejection of claims 1
through 20 under 35 U.S.C. § 103, we observe that the Roessler
reference relied upon by the examiner discloses (e.g., in
Figs. 1, 4, 7, 9 and 11) an absorbent article (10) which
includes inboard (34) and outboard (38) elastic members
located in each of the side margin areas (20) of the article,
with the elastic members being arranged in a staggered
overlapping relation. Like the present invention, the
Roessler reference, in the paragraph bridging columns 1 and 2,
indicates that the invention therein
“can more closely conform to the different, natural body
lines and shapes which are typically present at the front and
back regions of a wearer’s body. The article can also exhibit
less bunching at its crotch region and can provide reduced
crotch bulk. When the article is worn, the article can also
exhibit less sagging at the waistband regions, and can provide
improved body conformance and fit. As a result, the article
can exhibit improved resistance to leakage and can provide
improved aesthetics.”
The only apparent difference between the absorbent article of
the Roessler reference and that which is claimed by appellants
herein is the requirement in independent claims 1 and 12 on
appeal that a major portion of a longitudinal end edge of each
of the outboard elastic members (38) be configured
Appeal No. 98-2787
Application 08/554,640
6
substantially coterminous with a terminal side edge of each
side margin at the intermediate portion (16) of the absorbent
article.
The examiner, recognizing this deficiency in the applied
reference, has urged that it would have been an obvious matter
of design choice to have provided such a relationship in the
Roessler reference, since appellants (in their specification)
have not disclosed that such relationship solves any stated
problem or is for any particular purpose. Based on the record
as a whole, we do not agree with the examiner's assertions
that the differences between the claimed invention and the
absorbent article of the Roessler patent can be considered to
be merely matters of "obvious design choice."
While it is true that appellants’ specification (page 3)
sets forth general advantages of the absorbent article without
attributing those advantages to specific structural features
of the absorbent article, appellants have now, in their brief
(page 14), indicated that the claimed positioning of a major
portion of a longitudinal end edge of each of the outboard
Appeal No. 98-2787
Application 08/554,640
7
elastic members substantially coterminous with a terminal side
edge of each side margin of the absorbent article provides the
advantages of more effectively 1) holding the terminal edges
of the article against the wearer’s body and 2) reducing the
amount of unsightly or loosely-fitted free edges. In this
light, it is clear to us that the limitation at issue cannot
be dismissed as merely being a matter of "obvious design
choice," based solely on the examiner's bald assertion that
such is the case. On the contrary, in a proper obviousness
determination, the examiner is required to consider the
totality of the record, including all evidence and arguments
presented by appellants during the give-and-take of
ex parte patent prosecution, and to evaluate even minor
changes in terms of the invention as a whole and in the
context of whether the prior art provides any teaching or
suggestion to one of ordinary skill in the art to have made
the changes that would produce appellants’ claimed absorbent
article. See, for example, In re Chu, 66 F.3d 292, 298-99, 36
USPQ2d 1089, 1094-95 (Fed. Cir. 1995) and In re Gal, 980 F.2d
717, 719, 25 USPQ2d 1076, 1078 (Fed. Cir. 1992) which notes
that a finding of “obvious design choice” is precluded where
Appeal No. 98-2787
Application 08/554,640
8
the claimed structure and the function it performs are
different from the prior art.
In support of our above determination, we observe that in
the present case the examiner has himself expressly noted
(answer, page 4) that he
"does not hold that to have provided the claimed
structural limitation to the device of Roessler et
al. would have been obvious at the time of the
Appellants’ invention,”
but rather that he maintains that the purportedly “routine
changes” between the absorbent article of the Roessler patent
and appellants’ claimed invention “are insufficient to be
patentably distinguishing.” Such a position on the examiner’s
part applies an entirely inappropriate standard for
obviousness under
35 U.S.C. § 103.
For the above reasons, the decision of the examiner
rejecting claims 1 through 20 under 35 U.S.C. 103 is reversed.
REVERSED
Appeal No. 98-2787
Application 08/554,640
9
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
CEF/kis
Paul Yee
KIMBERLY CLARK COMPANY
401 North Lake Street
Neenah, WI 54956