Ex Parte Schmitt

Board of Patent Appeals and Interferences

Jun 23, 2008

09242014 (B.P.A.I. Jun. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ACHIM SCHMITT
____________

Appeal 2008-1658
Application 09/242,014
Technology Center 3700
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Decided: June 23, 2008
____________

Before JENNIFER D. BAHR, LINDA E. HORNER and
MICHAEL W. O’NEILL Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Achim Schmitt (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claim 1. This is the Appellant’s second
appeal before the Board of Patent Appeals and Interferences. In the first
appeal (2005-1242, Decision mailed July 18, 2005), the decision of the
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Application 09/242,014

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Examiner to reject claim 1 under 35 U.S.C. § 102(b) was reversed.1 We
have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
The Appellant’s invention is drawn towards a disposable absorbent
article 20 including a main body portion 21 having side edges 23 extending
generally parallel to a longitudinal axis L and transverse edges 22 extending
generally parallel to a transverse axis T (Spec. 6, ll. 10-22 and figs. 1 and 2).
The main body portion includes a liquid pervious topsheet 38 that faces the
wearer, a liquid impervious backsheet 40 that faces the garment, an
absorbent structure 42, and side wrapping elements 50 that are integral with
the main body portion 21 (Spec. 7, ll. 4-6; Spec. 14, ll. 26-27; and fig. 3).
The side wrapping elements 50 are folded along folding lines 25 and are
attached to the side facing the garment using attachment 27 such that the
side wrapping elements 50 are pre-positioned in an in-use position prior to
the use of the disposable absorbent article 20 (Spec. 15, ll. 1-5 and 20-23;
Spec. 16, ll. 18-22; and fig. 3).

Claim 1, the sole claim in the instant appeal, reads as follows:
1. Disposable absorbent article (20) for wear in an
undergarment, comprising:
a longitudinal axis (L) and a transverse axis (T),
said disposable absorbent article comprising a main
body portion (21) having longitudinal side edges (23)

1 The Examiner reopened prosecution in light of new prior art (Page 2 of
Non-Final Rejection mailed August 1, 2005).
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substantially extending parallel to said longitudinal axis
(L) and having transverse side edges (22) substantially
extending parallel to said transverse axis (T),
said main body portion (21) further having a wearer
facing surface and a garment facing surface, and
said disposable absorbent article comprising side
wrapping elements that are integral with said main body
portion (21) said wrapping elements being folded along
fold lines and attached to said garment facing side of said
main body portion such that said side wrapping elements
are pre-positioned in an in-use-position prior to the use of
the disposable absorbent article.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Nakanishi US 5,201,727 Apr. 13, 1993

The Appellant seeks review of the Examiner’s rejection of claim 1
under 35 U.S.C. §102(b) as being anticipated by Nakanishi.
The Examiner provides reasoning in support of the rejections in the
Answer (mailed January 24, 2006). The Appellant presents opposing
arguments in the Appeal Brief (filed October 19, 2005) and the Reply Brief
(filed February 28, 2006).

OPINION
Nakanishi discloses an absorbent article 1 having a liquid permeable
outer surface (topsheet) 2, a liquid impermeable surface (antileakage sheet)
3, a liquid retentive absorbent element 4, wing-like fixing elements 5, and
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first and second adhesive portions 6, 7 (col. 4, ll. 41-53; col. 4, l. 61 through
col. 5, l. 3; and figs. 1a, 1b, and 2). Each of the adhesive portions 6 and 7
has a two-layered structure including a lower layer with a high strength
adhesive and an upper layer with a low strength adhesive (col. 5, ll. 11-16).
The purpose of the two-layered structure is to allow the adhesive portions 6
and 7 to be bonded to the antileakage sheet 3 while also to each other
without the need of a release sheet (col. 5, ll. 16-24 and figs. 1a and 2). In
positioning the absorbent article of Nakanishi, the wing elements 5 are
spread and pulled out from both side edge portions, the absorbent article 1 is
adhered to the inner surface of a garment using adhesive portion 7, and then
the wing-like fixing elements 5 are affixed to the outer surface of the
garment using adhesive portions 6 (col. 5, l. 65 through col. 6, l. 9).
The Appellant argues that Nakanishi’s side wrapping elements “are
not attached to the garment facing side of the main body portion in such a
way as to be pre-positioned in an in-use-position prior to use of the
absorbent article” (App. Br. 3). According to the Appellant, because the
absorbent article of Nakanishi requires multiple manipulative steps in order
to be positioned for use, the absorbent article of Nakanishi is “in a position
for delivery or in a package” (App. Br. 3). In response, the Examiner
contends that “the position of the wrapping elements prior to use…is the
same as the position of the wrapping elements during use” (Ans. 3-4). The
Examiner takes note that a clear definition of the term "in-use-position" has
not been provided and, as such, the “in-use-position” and the “prior-to-use”
position of the absorbent article of Nakanishi are one and the same position
in which the wrapping elements are folded along the fold lines and placed
beneath the garment facing side (Ans. 4).
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"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). The issue presented in the appeal of the rejection
of Claim 1 is whether the wing elements of the absorbent article of
Nakanishi are attached to the garment facing side of the main body portion
such that they are “pre-positioned in an in-use-position prior to use of the
absorbent article.”
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)). We agree with the Appellant that a person of ordinary skill in the art
would understand an “in-use” position for an absorbent article of the type
taught by the Appellant and Nakanishi to be a position in which “the crotch
portion of the undergarment would be wrapped between the side wrapping
elements 50 and the garment facing surface of the backsheet 40” (Reply Br.
4, quoting Spec. 15, ll. 3-5). Similarly, Nakanishi describes an “in-use”
position as a position in which the absorbent article is adhered to the inner
surface of a garment using adhesive portion 7 and the wrapping elements 5
are affixed to the outer surface of the garment using adhesive portions 6 (col.
5, l. 65 through col. 6, l. 9). Therefore, the “in-use” position of Nakanishi is
the same as the Appellant’s “in-use” position.
We note that in Figures 1a, 2, and 9b of Nakanishi (“prior-to-use”
position) the absorbent article has the wrapping elements folded such that
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Application 09/242,014

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the adhesive portions are bonded together. In contrast to this position, in the
“in-use” position the adhesive portions are separated in order to position the
garment in between the adhesive portions. Hence, we disagree with the
Examiner that the "in-use-position" and the "prior-to-use" position of the
absorbent article of Nakanishi are one and the same position. In conclusion,
we find that the wing elements of the absorbent article of Nakanishi are not
attached to the garment facing side of the main body portion such that they
are “pre-positioned in an in-use-position prior to use.” We therefore agree
with the Appellant that Nakanishi does not disclose all the limitations of
claim 1. As such, the rejection of claim 1 is reversed.

DECISION
The decision of the Examiner to reject claim 1 is reversed.

REVERSED

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