Ex Parte Schmidt et al

Board of Patent Appeals and Interferences

Nov 20, 2006

10168887 (B.P.A.I. Nov. 20, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MATTIAS SCHMIDT
AND BRUNO J. EHRNSPERGER
____________

Appeal 2006-2813
Application 10/168,887
Technology Center 1700
____________

Decided: November 20, 2006
____________

Before KIMLIN, TIMM, and GAUDETTE, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-27. Claim 1 is
illustrative:
1. A disposable absorbent article comprising a liquid handling
member, said liquid handling member comprising a first zone

and a second zone connected to a suction device,

Appeal 2006-2813
Application 10/168,887

said first zone and said second zone being separated by a porous
membrane assembly comprising a membrane material having a [sic, an]
actual surface area along its surface contours,

wherein said membrane assembly has a projected surface area
projected on an surface generally aligned with the member surface during its
intended use whereby said membrane assembly is capable of maintaining a
pressure differential between the second zone and the first zone without
permitting air to penetrate from said first zone to said second

wherein said membrane material has an actual surface area which is at
least 2 times the area of said projected surface of said membrane assembly,
and which is not more than 200 times the area of said projected surface of
said membrane assembly when measured without a load applied to the
member.

The Examiner relies upon the following references in the rejections of
the appealed claims:
Corbin, III US 4,246,121 Jan. 20, 1981
Lawrence US 5,678,564 Oct. 21, 1997
Blaney US 5,834,385 Nov. 10, 1998
Appellants' claimed invention is directed to a disposable absorbent
article comprising a liquid handling member having first and second zones,
wherein the second zone is connected to a suction device. These zones are
separated by a porous membrane assembly, and the membrane material has
an actual surface area that is at least two times, but less than 200 times, the
area of the projected surface of the membrane assembly.
Appealed claims 1-4, 6-10, 12, 16, 17, 19, and 20 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Corbin. Claim 27 stands rejected
under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as being unpatentable over Corbin. In addition, claims 5,
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Application 10/168,887

11, 13, 14, 15, 18, and 21-26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Corbin. Also, claims 1-6 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Lawrence in view of Blaney,
while claims 7-27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lawrence in view of Blaney and Corbin.1
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we agree with the Examiner that the claimed subject
matter is unpatentable over the applied prior art. Accordingly, we will
sustain the Examiner's rejections for the reasons set forth in the Answer,
which we incorporate herein, and we add the following primarily for
emphasis.
Appellants do not set forth specific arguments for any particular claim
on appeal. Accordingly, the groups of claims separately rejected by the
Examiner stand or fall together.
We first consider the Examiner's rejection of claims 1-4, 6-10, 12, 16,
17, 19, and 20 under § 102 over Corbin. There is apparently no dispute that
Corbin describes a liquid handling member comprising first and second
zones separated by membrane material having an actual surface area that
falls within the claimed range and is capable of maintaining a pressure
differential between the two zones without permitting air to penetrate from
the first to the second zone. Appellants' principal argument is that "Corbin
fails to disclose a liquid handling member with a second zone that is
connected to a suction device" (page 4 of principal Brief, last paragraph).
Although there is no dispute that Corbin explicitly teaches applying a

1 The Examiner has withdrawn the rejection of claims 1-17 under 35 U.S.C.
§ 112, first paragraph (see page 13 of Answer, second paragraph).
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Application 10/168,887

vacuum to one of the plugs in ports 22 and 24, Appellants contend that "the
apparatus of Corbin is in a temporary state [when the vacuum is applied] that
is part of the preparation of the dialysis apparatus (i.e., the apparatus is not in
a usable condition for its intended function when the vacuum pump is
connected)" (page 5 of principal Brief, first paragraph). Appellants explain
"it is clear that the dialysis apparatus is removed from the vacuum source
when the potting mix is completely cured, or even before full cure" (id.).
We concur with the Examiner that the flaw in Appellants' argument is
that the appealed claims are drawn to an apparatus, not a method, and all that
is required under § 102 is that the claimed structure be described in the
Corbin reference. Hence, although Corbin does not teach that a vacuum is
drawn through ports 22 or 24 during the dialysis procedure, we agree with
the Examiner that the apparatus of Corbin is fully capable of meeting the
presently claimed requirement of connecting the second zone of the liquid
handling member to a suction device. Significantly, Appellants have
advanced no argument that the apparatus of Corbin does not possess this
capability. Also, Appellants have not refuted the Examiner's reasonable
position that since ports 22 and 24 of Corbin "are connected to a dialysate
source" (column 5 lines 5-10), one of the ports would be fully capable of
being connected to the suction of a dialysate pump (see page 14 of Answer,
first paragraph). The pneumatic resistor of Corbin noted by Appellants need
not be used during the dialysis operation.
We now turn to the Examiner's rejection of claims 1-6 under § 103
over Lawrence in view of Blaney. Appellants have not contested the
Examiner's factual determination that Lawrence, like Appellants, discloses a
disposable absorbent article comprising a liquid handling member
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Application 10/168,887

comprising first and second zones that are separated by a porous membrane
assembly wherein the second zone is connected to a suction device, and the
membrane assembly is capable of maintaining a pressure differential
between the two zones without permitting air to penetrate from the first to
the second zone. As appreciated by the Examiner, "Lawrence does not teach
the membrane material as having an actual surface area and a projected
surface area, actual surface area more than twice the projected surface area,
but less than 200 times" (page 9 of Answer, first sentence). However, we
fully concur with the Examiner that Blaney evidences the obviousness of
utilizing an absorbent article having an actual surface area greater than the
projected surface area for the purpose of enhancing the absorption capacity
of the material. While Blaney does not explicitly teach that the actual
surface area of the membrane material is at least two times the area of the
projected surface but not more than 200 times the area of the projected
surface, we agree with the Examiner that it would have been obvious for one
of ordinary skill in the art to resort to routine experimentation to determine
the optimum actual surface areas of the membrane material, particularly
since Corbin teaches a membrane material having an actual surface area
within the claimed range.
Appellants maintain that modifying the membrane of Lawrence in
accordance with the teachings of Blaney would render the Lawrence
member unsatisfactory for its intended purpose because the melt blow or
spun bonded fibrous polymeric non-woven webs of Blaney would not permit
air to pass, and, also, Blaney teaches that the non-woven is necessarily
hydrophobic. However, we agree with the Examiner that these arguments
miss the thrust of the Examiner's rejection. As explained by the Examiner,
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the teaching of Blaney that would have motivated one of ordinary skill in the
art to modify the membrane of Lawrence is the corrugated or checkered
structure of Blaney's membrane that increases the membrane surface and,
consequently, the rate of absorption. Moreover, Corbin further supports the
obviousness of employing a membrane material having the claimed actual
surface area relative to projected surface area. Manifestly, it can hardly be
gainsaid that one of ordinary skill in the art would have appreciated that the
greater the surface area of the membrane the greater the rate of absorption.
Also, we note that Appellants have not addressed the Examiner's alternate
rationale that since Appellants' claims "do not recite any limitation on the
membrane material, one of ordinary skill in the art would also find
motivation to combine the teaching of the vacuum suction source of
Lawrence in the Blaney device for faster suction of oil spills in oil spill
clean-up with the Blaney device" (page 16 of Answer, first paragraph).
Appellants do not present separate substantive arguments against the
§ 103 rejection of claims 5, 11, 13-15, 18 and 21-26 over Corbin, nor for the
§ 103 rejection of claims 7-27 over Lawrence in view of Blaney and Corbin.
As a final point, we note that Appellants base no argument upon
objective evidence of non-obviousness, such as unexpected results, which
would serve to rebut the inference of obviousness for claims rejected under
35 U.S.C. § 103.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner's decision rejecting the appealed claims is
affirmed.
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Application 10/168,887

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(iv)(effective Sept.
13, 2004).
AFFIRMED

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