10835638 (B.P.A.I. Feb. 22, 2011)

Ex Parte Sperl

Board of Patent Appeals and InterferencesFeb 22, 2011

10835638 (B.P.A.I. Feb. 22, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MICHAEL DONALD SPERL ____________ Appeal 2009-011953 Application 10/835,638 Technology Center 3700 ____________ Before MICHAEL W. O’NEILL, STEFAN STAICOVICI, and KEN B. BARRETT, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Michael Donald Sperl (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 2, 5-9, 11-13, 15-24, 26-33, 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-011953 Application 10/835,638 2 35, 36, 38, 40, 41, 46, 47, and 49-58 under 35 U.S.C. § 102(b) as anticipated by Arteman (US 5,925,026, iss. Jul, 20, 1999). Claims 34, 37, 39, 42-45, and 48 have been canceled by Appellant. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Invention The claims on appeal relate to an absorbent article. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An absorbent article having a longitudinal axis, a lateral axis, a front waist region, a back waist region, and a crotch region extending longitudinally between and interconnecting said front and back waist regions, said article comprising: an outer cover stretchable in at least one direction; a liner in opposed relationship with the outer cover and stretchable in at least one direction; and an absorbent structure disposed between the liner and the outer cover and extending from the crotch region to at least one of the front waist region and the back waist region of the article, the absorbent structure having at least one weakening element disposed therein for reducing the resistance of the absorbent structure to stretching in a direction that defines an angle relative to the lateral axis of the absorbent article of greater than zero degrees and less than 90 degrees. DISCUSSION We have carefully reviewed the rejection on appeal in light of the arguments of the Appellant and the Examiner. We find that claims 1, 2, 5-9, 11-13, 15-24, 26-33, 35, 36, 38, 40, 41, 46, 47, and 49-58 are novel over Appeal 2009-011953 Application 10/835,638 3 Arteman. Therefore, the rejection of claims 1, 2, 5-9, 11-13, 15-24, 26-33, 35, 36, 38, 40, 41, 46, 47, and 49-58 under § 102(b) is reversed. Our reasons follow. We agree with Appellant that Arteman fails to disclose “an absorbent structure disposed between the liner and the outer cover and extending from the crotch region to at least one of the front waist region and the back waist region of the article, the absorbent structure having at least one weakening element disposed therein for reducing the resistance of the absorbent structure to stretching in a direction that defines an angle relative to the lateral axis of the absorbent article of greater than zero degrees and less than 90 degrees.” See App. Br. 6 and Claim App’x. We further agree with Appellant that Arteman fails to disclose “an absorbent structure disposed between the liner and the outer cover and extending from the crotch region to at least one of the front waist region and the back waist region of the article, the absorbent structure having at least one weakening element disposed therein extending in the longitudinal direction for separation of the absorbent structure upon application of a donning force to the absorbent article and at least one other weakening element generally adjacent to said at least one longitudinally oriented weakening element and extending in a direction other than the longitudinal direction of the article to reduce resistance of the absorbent structure to stretching.” See App. Br. 14-15 and Claim App’x. The Examiner has failed to provide sufficient evidence or analysis that Arteman’s apertures 20 would satisfy the functionality of the elongated weakening element as set forth in the claims. Arteman discloses the “apertures 20 improve the overall distribution of fluid in absorbent pad 10.” Appeal 2009-011953 Application 10/835,638 4 Col. 3, ll. 41-42. Moreover, Arteman discloses that the material around the apertures is denser than the remaining portions of the pad. Id. at ll. 34-36. The Examiner has failed to cogently explain how such a denser material adjacent the apertures would permit the apertures to function as weakening elements that reduce resistance to stretching as set forth in claims 1, 18, 29, and 46. The Examiner appears to posit that “any material that is capable of being stretched, even if it does not exhibit any elastic properties, fulfills the limitations of the present claims.” Ans. 4. In support of this position and thus maintaining the rejection, the Examiner cites to portions of Arteman that disclose materials used to fabricate the article and then concludes “[t]hese materials are fully capable of being stretched in either their lateral or longitudinal directions, and therefore meet the requirement of being stretchable in at least one direction.” Ans. 5. However, the Examiner fails to cogently explain how this relatively ambitious language appearing in the Arteman patent is capable of being stretched as Appellant has lexicographically defined in the Specification. Arteman never expressly discloses or teaches the materials are stretchable. It is clear from reading Arteman that the materials of the inner liner are expressly taught to be “suitably utilized to help isolate the liquids held in absorbent pad 10 from the skin of a user.” Col. 8, ll. 44-46. The materials for the outer liner are expressly taught to be “substantially impermeable to liquids.” Col. 9, ll. 10- 12. Before Appellant can be put to the burdensome task of disproving an assertion that a reference inherently has the characteristic relied on by the Examiner to maintain a rejection, the Examiner must provide sufficient evidence or scientific reasoning to establish the reasonableness of the Appeal 2009-011953 Application 10/835,638 5 Examiner’s belief that the functional limitation is an inherent characteristic of the prior art. The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Here, the Examiner has failed to provide sufficient evidence or reasoning to establish the reasonableness of the Examiner’s belief that the inner and outer liners are capable of being stretched as defined and then claimed by Appellant. As such, the Examiner has failed to establish how the apertures within the inner liner would be capable of reducing the resistance of the absorbent structure to stretching as claimed by Appellant. CONCLUSION Based on the foregoing, we cannot sustain the Examiner’s rejection of claims 1, 2, 5-9, 11-13, 15-24, 26-33, 35, 36, 38, 40, 41, 46, 47, and 49-58 as anticipated by Arteman. DECISION We reverse the Examiner’s decision to reject claims 1, 2, 5-9, 11-13, 15-24, 26-33, 35, 36, 38, 40, 41, 46, 47, and 49-58 as being anticipated by Arteman. REVERSED Klh CHRISTOPHER M. GOFF (27839) ARMSTRONG TEASDALE LLP 7700 FORSYTH BOULEVARD SUITE 1800 ST. LOUIS, MO 63105