Ex Parte Soon et al

Board of Patent Appeals and Interferences

Oct 27, 2005

10148759 (B.P.A.I. Oct. 27, 2005)

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written for publication and is not binding precedent of the Board.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 SEE AUN SOON and JORG MULLER
_____________
Appeal No. 2005-2531
Application No. 10/148,759
______________
ON BRIEF
_______________
Before GARRIS, PAK and KRATZ, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1 and
3-14.
With reference to figures 2-8 of the appellants’ drawing,
the subject matter on appeal relates to an apertured elastic
member 200 having a first direction 210 and a second direction
220 perpendicular to the first direction, and having a plurality
of apertures 230 aligned in a pattern of rows 240 and having a
substantially constant thickness dimension 260, the member
Appeal No. 2005-2531
Application No. 10/148,759
2
comprising a plurality of repeating units 270, wherein a
repeating unit comprises a portion of a first aperture from a
first row and a portion of a second aperture from a second row,
wherein the second row is adjacent to the first row, and a
nonapertured region 250 extending between adjacent rows of
apertures, and wherein the nonapertured region of the repeating
unit has substantially the same cross sectional area everywhere
along the repeating unit in a plane that is parallel to the
second direction. This appealed subject matter is adequately
illustrated by independent claim 1 which reads as follows:
1. An apertured elastic member having a first direction
and a second direction perpendicular to said first
direction, said apertured elastic member having a plurality
of apertures aligned in a pattern of rows substantially
parallel to said first direction, and said apertured elastic
member having a substantially constant thickness dimension,
the apertured elastic member comprising:
a plurality of repeating units, wherein a repeating
unit comprises a portion of a first aperture from a first
row and a portion of a second aperture from a second row,
wherein the second row is adjacent to the first row, and a
nonapertured region extending between adjacent rows of
apertures, and wherein the nonapertured region of the
repeating unit has substantially the same cross sectional
area everywhere along the repeating unit in a plane that is
parallel to the second direction.
The references set forth below are relied upon by the
examiner as evidence of obviousness:
Appeal No. 2005-2531
Application No. 10/148,759
1The “Grounds of Rejection” section of the answer (see page
3) contains only statements of these rejections without
explanatory expositions.
3
Fahrenkrug et al. (Fahrenkrug) 5,376,198 Dec. 27, 1994
Palumbo 6,106,925 Aug. 22, 2000
Under 35 U.S.C. § 103(a):
Claims 1, 3-12 and 14 are rejected as being
unpatentable over Fahrenkrug; and claims 1, 3-8, 13 and
14 are rejected as being unpatentable over Palumbo.
OPINION
For the reasons which follow, neither of these rejections
can be sustained.
As correctly indicated by the appellants in their brief, the
examiner’s expositions of these rejections as presented in the
final Office action1 do not identify any claim difference
relative to the applied prior art and correspondingly do not
identify any teaching or suggestion in the Fahrenkrug and Palumbo
prior art which would have motivated those skilled in this art to
provide the apertured elastic members of these references with
the asserted difference, thereby resulting in subject matter
corresponding to that of appealed independent claim 1. It
follows that the examiner, in formulating these rejections, has
failed to comply with established legal precedents and guidelines
Appeal No. 2005-2531
Application No. 10/148,759
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regarding obviousness under 35 U.S.C. § 103. See the legal
authority cited in the brief, most notably Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). Also see, the
Manual of Patent Examining Procedure (MPEP) § 2141 et seq.
Although the rejections do not clearly state a basis for the
examiner’s conclusion of obviousness, the “Response to Argument”
section of the answer (see pages 3-8) provides some clarity to
this matter. Specifically, in their brief, the appellants argue
that appealed independent claim 1 differs from Fahrenkrug and
Palumbo respectively by requiring that “the nonapertured region
of the repeating unit has substantially the same cross sectional
area everywhere along the repeating unit in a plane that is
parallel to the second direction” and that these references
contain no teaching or suggestion concerning this difference. In
her response to this argument, the examiner argues that the
applied references teach “a spacing of the apertures in the
elastic layer . . . that is a structural equivalent of the
corresponding element disclosed in the specification, [i.e.,] the
repeating unit having substantially the same cross sectional area
everywhere along the repeating [unit]” (answer, page 5 regarding
Fahrenkrug; answer, page 7 regarding Palumbo). The examiner
further elaborates on her position by explaining that “the
Appeal No. 2005-2531
Application No. 10/148,759
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spacing of [Fahrenkrug and Palumbo] perform the function, [i.e.,]
the ability to absorb liquids through the openings in the layer
to pull liquid away from the skin surface, as specified by in
[sic] the specification in substantially the same manner as the
function is performed by the corresponding element, [i.e.,] the
repeating unit, described in the specification” (answer, page
5 regarding Fahrenkrug; answer page 7, regarding Palumbo).
Finally and significantly, the examiner acknowledges that “[each
of Fahrenkrug and Palumbo] does fail to teach of [sic] the claim
limitations of claimed invention” but argues that “the apertures
[of these references] are an equivalent function of the repeating
unit provided in the [appellants’ claimed] elastic member”
(answer, page 5 regarding Fahrenkrug; answer, page 7 regarding
Palumbo).
The examiner’s aforequoted rebuttals to argument reflect
that her obviousness conclusion is not based on a proposed
modification of the applied references but instead is based on
the assertion that these references teach an aperture/spacing
arrangement which is structurally and functionally equivalent to
the repeating units of appealed independent claim 1. This
rationale is wholly inadequate to establish a prima facie case of
unpatentability for multiple reasons.
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Application No. 10/148,759
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First, the fact that the here claimed and prior art members
are for the purpose of absorbing liquids plainly does not support
the examiner’s proposition that the spacing/aperture arrangements
of Fahrenkrug and Palumbo are functionally or structurally
equivalent to the appealed claim 1 feature “wherein the
nonapertured region of the repeating unit has substantially the
same cross sectional area everywhere along the repeating unit in
a plane that is parallel to the second direction.” This lack of
equivalency is evinced, for example, by the specification
disclosure concerning figures 9-13 and particularly by the first
whole paragraph on specification page 17.
Second, even if the examiner’s equivalency determination
were assumed to be proper, her concomitant obviousness conclusion
still would be in error. For over forty years, it has been well
settled that the mere existence of functional and mechanical
equivalents is inadequate to establish a prima facie case of
obviousness. In re Flint, 330 F.2d 363, 367-68, 141 USPQ 299,
302 (CCPA 1963); In re Scott, 323 F.2d 1016, 1019-20, 139 USPQ
297, 299 (CCPA 1963). Also see MPEP § 2144.06 (Revision 2, May
2004).
Appeal No. 2005-2531
Application No. 10/148,759
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Under the circumstances recounted above, we cannot sustain
either the Section 103 rejection of claims 1, 3-12 and 14 as
being unpatentable over Fahrenkrug or the Section 103 rejection
of claims 1, 3-8, 13 and 14 as being unpatentable over Palumbo.
REMAND
Pursuant to our authority in 37 CFR § 41.50(a)(1)(September
2004), we hereby remand this application to the examiner for the
purpose of taking further action consistent with our comments
below.
The appellants’ independent claim 1 at three different
points contains the term “substantially” which is a word of
degree that may render a claim indefinite under the second
paragraph of 35 U.S.C. § 112 depending upon whether an artisan is
provided with some standard for measuring the degree in question.
See Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d
818, 826 and 829, 221 USPQ 568, 573-74 and 576 (Fed. Cir. 1984).
Also see MPEP, § 2173.05(b)(Revision 2, May 2004). Compare Verve
LLC v. Crane Cams, Inc., 311 F.3d 1116, 11120, 65 USPQ2d 1051,
1054 (Fed. Cir. 2002).
More specifically, we observe that the claim 1 phases
“substantially parallel” on line 3 and “substantially constant
thickness dimension” on lines 4-5 are expressly defined on pages
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Application No. 10/148,759
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13-14 of the appellants’ specification. These definitions
provide an artisan with a standard for reasonably measuring the
degree encompassed by these claim phrases. However, we find no
express definition in the specification for the phrase
“substantially the same cross sectional area” on the penultimate
line of claim 1. The lack of an express definition raises the
issue of whether an artisan would have any standard for
reasonably measuring the degree encompassed by this last
mentioned claim phrase. For example, while dependent claim 4
evinces that a variation of 10 percent or less is encompassed by
the phrase “substantially the same cross sectional area,” we find
nothing in the application record which evinces that 10 percent
is the upper limit of this variation or whether degrees of
variation higher than 10 percent are encompassed by the phrase
under consideration.
In light of the foregoing, in response to this remand, the
examiner (and the appellants) must address and resolve on the
written record of this application whether the claim phrase
“substantially the same cross sectional area” complies with the
second paragraph requirements of Section 112, and if so, why, and
conversely if not, why not.
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Application No. 10/148,759
9
In addition, the examiner (and the appellants) must consider
whether the appealed claims patentably distinguish over the prior
art including Fahrenkrug and Palumbo based on reasoning
completely unrelated to the unacceptable rationale discussed
above in relation to the Section 103 rejections advanced on this
appeal. The issue to be considered is whether the aforementioned
prior art includes repeating units which are encompassed by
independent claim 1 when given (as it must be) its broadest
reasonable interpretation consistent with the appellants’
specification. In re Hyatt, 211 F.2d 1367, 1372, 54 USPQ2d 1664,
1667 (Fed. Cir. 2000). To facilitate our following exposition of
this issue, we will discuss the prior art by referring to figures
9-13 of the appellants’ drawing (i.e., just as the appellants did
on pages 5-10 of their brief).
In their above noted discussion of figures 9-13, the
appellants implicitly have presumed that the apertured elastic
member 400 shown in these figures possesses only the repeating
units 470 as displayed in figures 9 and 11. This presumption is
incorrect. For example, this member also possesses repeating
units whose left and right borders (when viewed from direction
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Application No. 10/148,759
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420) are the same as depicted in figure 9 but whose upper and
lower borders (when viewed from direction 410) correspond to the
upper and lower borders of apertures 430.
Thus, the figure 9 member includes repeating units which are
spaced (claim 1 does not exclude spaced repeating units) and
which include a nonapertured region extending between adjacent
rows of apertures 430 whose upper and lower borders correspond to
the upper and lower borders of these apertures. Because of this
last mentioned circumstance, the width of the nonapertured region
450 inside these repeating units is constant and is defined by
the width between adjacent row apertures. Due to this constant
width dimension and due to the constant thickness dimension
460 of the figure 9 member, the cross sectional area of the
aforementioned nonapertured region also would be constant and
would be the cross sectional area illustrated in figure 12 of the
appellants’ drawing.
Viewed from this perspective, the member of figures 9-13
necessarily includes a nonapertured region of a repeating unit
which has “the same cross sectional area everywhere along the
repeating unit in a plane that is parallel to the second
direction” as required by the appellants’ independent claim.
Again, this is because independent claim 1, when given its
Appeal No. 2005-2531
Application No. 10/148,759
2On specification page 17, the first full paragraph and
particularly the last sentence thereof indicates that the
apertured elastic member of figures 9-13 constitutes prior art.
The appellants should clarify whether this member is indeed prior
art.
11
broadest reasonable interpretation consistent with the
specification, does not exclude the previously discussed
repeating units and nonapertured region of the figures 9-13
member2 (e.g., claim 1 does not require that the plurality of
repeating units abut one another at the upper and lower
boundaries).
Therefore, in response to this remand, the examiner (and the
appellants) must address and resolve on the written record of
this application whether some or all of the pending claims should
be rejected under 35 U.S.C. § 102 or 35 U.S.C. § 103 over, for
example, either Fahrenkrug or Palumbo based on the reasoning and
analysis set forth above.
This remand to the examiner pursuant to 37 CFR § 41.50(a)(1)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)) is not
made for further consideration of a rejection. Accordingly,
37 CFR § 41.50(a)(2) does not apply.
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Application No. 10/148,759
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SUMMARY
The decision of the examiner is hereby reversed.
The application is hereby remanded to the examiner.
REVERSED and REMANDED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNK K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
BRG:hh
Appeal No. 2005-2531
Application No. 10/148,759
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