Ex Parte Shelley et al

Board of Patent Appeals and Interferences

Mar 30, 2010

11026227 (B.P.A.I. Mar. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LINDSAY C. SHELLEY, THOMAS BROCK, JOY
FRANCINE JORDAN, RENETTE RICHARD, CHRISTIAN
SANDERS, ERIC SCOTT KEPNER,
JARED LOCKWOOD MARTIN, and WING-CHAK NG
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Appeal 2009-008873
Application 11/026,227
Technology Center 1700
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Decided: March 30, 2010
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 20-36. Claims 1-19, which are all of the other pending

Appeal 2009-008873
Application 11/026,227

claims, stand withdrawn from consideration by the Examiner. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a laminate material. Claims 25 and 36 are
illustrative:
25. A laminate material of a first flexible layer and a second
flexible layer, wherein said laminate is either uniaxial or biaxial elastic and
demonstrates a cross-machine direction tension between about 200 and
750 gf at 50 percent extension, with a machine direction tension between
500 and 1000 gf at 30 percent extension.

36. A laminate material, comprising:
a first flexible, elastic sheet material;
a second flexible sheet material having a first surface and a second
surface, the second flexible sheet material being an accordion shaped
material with a plurality of peaks defining said first surface; and
the first flexible, elastic sheet material being joined by adhesive to the
first surface of the second flexible sheet material wherein the adhesive is
primarily on the peaks of the accordion shaped second flexible sheet
material.

The References
Benecke 5,423,935 Jun. 13, 1995
Sageser 6,039,906 Mar. 21, 2000
Benson 6,114,263 Sep. 5, 2000
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 25
and 26 over Benson; claims 20-24, 27-32 and 34-36 over Benson in view of
Benecke; and claim 33 over Benson in view of Benecke and Sageser.1

1 A rejection of claims 20-24 and 27-36 under 35 U.S.C. § 112, second
paragraph, is withdrawn in the Examiner’s Answer (Ans. 3).
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OPINION
We reverse the rejections. We need to address only the independent
claims, i.e., claims 20, 25, 26 and 36.2
Rejection of claims 20 and 36 over Benson in view of Benecke
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, an accordion shaped flexible
sheet joined by adhesive primarily on its peaks to another flexible sheet?
Findings of Fact
Benson discloses a nonwoven web (12) that is pressed between two
rollers (15, 16) having grooves (19, 21) in the machine direction to form
rugosites (22) in the nonwoven web (12) (col. 5, ll. 42; Fig. 2). The
nonwoven web (12) then is pressed between two rollers (34, 36) having
grooves (41, 43) in the cross-machine direction to form stabilizing
embossments (44) in the nonwoven web (12) (col. 7, l. 31 – col. 8, l. 5).
Alternatively, the nonwoven web (12) can be stabilized using crimping
and/or creping rollers (col. 9, ll. 19-22). A composite elastic material can be
formed by joining the stabilized nonwoven web (12) to an elastic member
either intermittently or substantially continuously along at least a portion of
their coextensive surfaces while the elastic member is in either a tensioned
or untensioned condition (col. 10, ll. 5-19).

2 The Examiner does not rely upon Sageser for any disclosure that remedies
the deficiency in Benson and Benecke as to independent claim 20 from
which claim 33 indirectly depends.
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Benecke discloses a slot coater (abstract) which is a type of device the
Appellants can use to apply their adhesive (Spec. 26:5-6).
Analysis
The Appellants argue that Benson’s stabilized nonwoven web (12) has
a crisscross, lattice-shaped pattern rather than being accordion shaped (Br. 6-
9; Reply Br. 6).
The Examiner argues that “[t]he structure shown in [Benson’s]
Figure 3 appears to be substantially similar as Figure 2 in Appellants’
specification and therefore within the scope of ‘accordion shaped’”
(Ans. 13).
Benson’s Figure 3 shows stabilizing embossments (44) that would be
formed in a flat nonwoven web (12). As shown in Benson’s Figure 1,
however, before the nonwoven web (12) passes between the rollers (34, 36)
that form the stabilizing embossments (Fig. 3), the nonwoven web (12)
passes between rollers (15, 16) that form rugosites (22) in the nonwoven
web (12) that are perpendicular to the stabilizing embossments (44)
(Figs. 2, 3).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). The Examiner has not established that
Benson’s nonwoven web (12) having the rugosites (22) and stabilizing
embossments (44) formed therein is “accordion shaped” as that term is most
broadly construed consistently with the Appellants’ Specification.
The Examiner points out that Benson’s nonwoven web (12) can be
stabilized by crimping and/or creping rollers (col. 9, ll. 19-22) (Ans. 13-14).
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The Examiner argues that “[a] plain reading of crimping and/or creping the
web would result in a structure such as crimped or sinusoidal or wavy or
undulating, each of which is within the scope of ‘accordion shape’ as set
forth in Appellants’ specification and reiterated in Appellants’ Brief at
page 14” (Ans. 13-14).
The Appellants’ Figure 2 shows an example of an accordion shaped
material. The Examiner has not established that even if Benson’s nonwoven
web (12) having rugosites (22) therein (Fig. 1) is accordion shaped, the
nonwoven web (12) having the rugosites (22) therein would still be
accordion shaped, as the term “accordion shaped” is most broadly construed
consistent with the Appellants’ Specification, after being stabilized using
crimping and/or creping rollers.
Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, an accordion shaped flexible
sheet joined by adhesive primarily on its peaks to another flexible sheet.
Rejection of claims 25 and 26 over Benson
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, a laminate that is either uniaxial
or biaxial elastic and demonstrates a cross-machine direction tension
between about 200 and 750 gf at 50% extension, with a machine direction
tension between 500 and 1000 gf at 30% extension?
Analysis
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The Appellants argue that Benson’s crisscrossing lines of embossment
would directionally tend to increase the tension required to extend the
laminate material, and that “[b]ecause of the substantially dissimilar
structure of the Benson et al laminate, it cannot be presumed that the
materials described by Benson et al would inherently have the low tensions
achieved by the materials of claims 25 and 26” (Br. 11-12).
The Examiner argues that “Benson appears to teach that the laminate
demonstrates a cross-machine direction tension between about 200 and 750
gf at 50 percent extension, with a machine direction tension between 500
and 1000 gf at 30 percent extension (Benson, column 2 line 25 to column 3
line 20, column 9 lines 7-15)” (Ans. 4).
Benson’s column 2, line 25 to column 3, line 20 merely defines
Benson’s terms. Benson discloses at column 9, lines 7-15:
The stabilized extensible necked nonwoven web is preferably
elongatable to at least about 60 percent and more preferably to at least
about 100 percent without suffering catastrophic failure upon the
application of a biasing force of less than about 300 grams, more
preferably upon the application of a biasing force of less than about
200 grams, and most preferably upon the application of a biasing
force of less than about 100 grams.

The Examiner’s argument is not persuasive because the Examiner has
not explained how the relied-upon disclosures would have led one of
ordinary skill in the art to a laminate that is either uniaxial or biaxial elastic
and has a cross-machine direction tension between about 200 and 750 gf at
50% extension, with a machine direction tension between 500 and 1000 gf at
30% extension.
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The Examiner argues that “[a]dditionally, the claimed cross-machine
tension and machine direction tension appear to be inherent to the invention
of the prior art since Benson appears to teach a substantially similar structure
and composition as the claimed invention. Products of identical structure
and composition cannot have mutually exclusive properties” (Ans. 4).
An inherent characteristic must be inevitable, and not merely a
possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA
1981). The Examiner has provided no evidence or technical reasoning
which shows that Benson discloses a laminate which inevitably is either
uniaxial or biaxial elastic and has a cross-machine direction tension between
about 200 and 750 gf at 50% extension, with a machine direction tension
between 500 and 1000 gf at 30% extension.
Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, a laminate that is either uniaxial
or biaxial elastic and demonstrates a cross-machine direction tension
between about 200 and 750 gf at 50% extension, with a machine direction
tension between 500 and 1000 gf at 30% extension.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 25 and 26 over
Benson, claims 20-24, 27-32 and 34-36 over Benson in view of Benecke,
and claim 33 over Benson in view of Benecke and Sageser are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

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tc
Dority & Manning, P.A.
P.O. Box 1449
Greenville, SC 29602
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