Ex parte TRACY

Board of Patent Appeals and Interferences

Sep 29, 1997

08092540 (B.P.A.I. Sep. 29, 1997)

Application for patent filed July 16, 1993. According to1
the appellant, the Application is a continuation of Application
07/790,469, filed November 12, 1991, now abandoned, which is a
continuation of Application 07/516,473, filed April 30, 1990, now
U.S. Patent No. 5,064,421, which is a continuation of Application
07/093,681, filed September 8, 1987, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RHONDA TRACY
____________
Appeal No. 95-3512
Application 08/092,5401
____________
HEARD: September 17, 1997
____________
Before McCANDLISH, Senior Administrative Patent Judge, and
STAAB and McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 26 through
39 and 41, all of the claims pending in the application.
Appeal No. 95-3512
Application 08/092,540
2
The invention relates to “a disposable diaper having a
padded waistband and legholes” (specification, page 1). Claim 26
is illustrative and reads as follows:
26. A disposable diaper comprising:
a body portion having two enlarged end portions and a
narrowed intermediate portion therebetween, the body portion
being shaped so that said diaper may extend about a waist and
crotch of a wearer and have an inside and an outside with respect
to the wearer;
each end portion having a respective waistband portion at an
edge thereof so that when the diaper is worn, the waistband
portions gird the waist of the wearer;
at least two body-portion layers including a layer of
liquid-absorbent material and a plastic layer having an edge at
the edge of the diaper;
a soft padding member located along at least one of said
waistband portions, being adjacent to said plastic layer edge,
the soft padding member being distinct from all of said body-
portion layer, the soft padding member including a material
formed from a soft substance presenting a soft surface along at
least a portion of said inside of the diaper waistband portion
despite said plastic layer edge.
The references relied upon by the examiner as evidence of
obviousness are:
McConnell et al. (McConnell) 3,461,872 Aug. 19, 1969
Gilles 4,728,326 Mar. 1, 1988
(filed Jan. 2, 1986)
Claims 26 through 39 and 41 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Gilles in view of McConnell.
Appeal No. 95-3512
Application 08/092,540
3
Gilles discloses an adjustable diaper 10 having a body
portion 12. As described in the reference,
[t]he body portion has a relatively narrow central
portion 22 formed by gathers 24 and 26 prior to
stitching at 28 and 30 near the sides 14 and 16. This
produces a concave interior for a better fit. The body
portion also has a front part 34 generally adjacent
front end 18 and a back part 32 generally adjacent back
end 20.
The body portion is made of a flexible sheet-like
material, preferably cotton flannelette. Two layers of
fabric 36 and 38 are used as seen in FIG. 4.
Internally, additional somewhat trapezoidal-shaped
layers of fabric are used for absorbency purposes.
These are sandwiched together as seen in FIG. 4. The
outer layers 40, 42, 44 and 46 extend from the central
portion 22 into the back part 32 and the front part 34.
Two additional layers 48 and 50 occur between layers
42 and 44 and extend from the central portion into the
front part. The layers 40-50 are held in position
between layers 36 and 38 by stitching 52 shown in
FIG. 3.
The sides of the body portion are finished by
cloth strips 54 and 56 folded over the edges and sewn
in place by stitching 30 and 28 shown in FIG. 4. The
use of gathers 24 and 26 in combination with cloth
strips 54 and 56 and stitching 30 and 28 provides a
more comfortable fit than the elastic portions used in
prior art fitted diapers. FIG. 5 shows strip 54 in
section. At front end 18 [a] layer of cloth 38 is
folded over to form a portion 62 overlaying layer 36
and held in position by stitching 64.
At back end 20 the diaper has a pair of strap
members 66 and 68 which form outer extensions of a
waist band 70. As seen best in FIGS. 3, 4 and 6, the
waist band 70 is formed of a single strip of cloth
folded and with stitching 72 and 74 extending along
opposite sides thereof [column 2, lines 29 through 62].
Appeal No. 95-3512
Application 08/092,540
4
McConnell discloses a diaper retaining garment “for
retaining a diaper, generally of the disposable type, in position
adjacent the perineal region of a wearer” (column 1, lines 21
through 28). The garment consists of a generally rectangular
sheet of flexible polymeric cellular material having snap
fasteners secured at its four corners. Folded about the side and
end edges of the sheet are an elastic strip 21 and an overlying
outer strip 22 which is preferably made of a woven fabric or
scrim. The purpose of the outer strip 22 is “to prevent contact
of the wearer with the elastic material forming strip 21"
(column 3, lines 32 and 33).
In explaining the rejection on appeal, the examiner states
that:
Gilles discloses the invention substantially as
claimed with at least two body portion layers (42, 44,
46, 48, and 50) that include a liquid absorbent layer
and soft absorbent padding members (54, 56, and 70)
formed of cloth along the leg portions and at least one
of the waistband portions, however, Gilles does not
teach the padding at the waistband to extend around
from the inside to the outside and one of the layers to
include plastic.
McConnell teaches it is old and well known within
the art to those of ordinary skill in that art to
provide padding (22) that is of absorbent cloth
extending around from the inside to the outside of the
waistband (lines 30-39 of column 3).
Appeal No. 95-3512
Application 08/092,540
5
As to the plastic limitation, whether one of the
layers is plastic or one of the materials taught by
Gilles is considered an obvious matter of design choice
to one of ordinary skill within the art as determined
by what material is considered most appropriate for the
article and in view of the fact that the inventive
concept of shielding the wearer from discomfort from
rough edges is not a function of the material in the
layers.
It would have been obvious to said artisan to
modify Gilles per the above cited teachings of
McConnell to provide a waistband that feels more
comfortable to the wearer [final rejection, Paper
No. 19, pages 3 and 4].
Claims 26, 34 and 41, the three independent claims on
appeal, recite with varying degrees of specificity a disposable
diaper comprising, inter alia, a plastic layer or material at or
extending to a waistband edge of the diaper and an associated
soft padding member. More particularly, claim 26 requires “a
plastic layer having an edge at the edge of the diaper” and “a
soft padding member located along at least one of said waistband
portions, being adjacent to said plastic layer edge . . .
including a material formed from a soft substance presenting a
soft surface along at least a portion of said inside of the
diaper waistband portion despite said plastic layer edge.” Claim
34 sets forth “a plastic material extending to an edge of the
body portion [of the diaper]” and “a first soft padding member
. . . including a strip of a soft substance located along at
Appeal No. 95-3512
Application 08/092,540
6
least one of said waistband portions . . . to present a soft
surface at said inside of the diaper waistband despite the
plastic material at the edge of the body portion.” Claim 41
calls for the waist band to include “plastic material at border
edges thereof” and “a padding member extending along an opposite
edge portion at an exposed surface of the waist band . . .
including at least one strip of material formed from a soft
substance . . . forming a soft surface for contact with the skin
of the individual at least one of the border edges.”
As indicated above, the examiner concedes that the Gilles
diaper does not meet the noted limitations in claims 26, 34 and
41 relating to the plastic layer or material. In this regard,
the Gilles diaper is made essentially of cloth fabric and is not
disclosed as containing any plastic layer or material of the sort
required by the claims. The examiner’s conclusion that it would
have been an obvious matter of design choice to provide the
Gilles diaper with such a plastic layer or material is not well
founded.
Rejections based on 35 U.S.C. § 103 must rest on a factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78
(CCPA 1967). In making such a rejection, the examiner has the
initial duty of supplying the requisite factual basis and may
Appeal No. 95-3512
Application 08/092,540
7
not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. Id. Here, the
examiner has failed to supply any factual basis to support the
conclusion that the provision of a plastic layer or material as
recited in the claims to the Gilles diaper would have been an
obvious matter of design choice. Indeed, the cloth fabric
construction of the Gilles diaper would appear to teach away
from the proposed modification. The diaper retaining garment
disclosed by McConnell is of no help to the examiner in this
regard. Thus, it is evident that the examiner has resorted
speculation, unfounded assumptions and/or hindsight
reconstruction to supply the acknowledged deficiency in the
prior art basis for the appealed rejection.
The combined teachings of Gilles and McConnell also would
not have suggested a diaper having a soft padding member as
recited in independent claims 26, 34 and 41. Although both the
Gilles diaper and McConnell diaper retaining garment include
cloth or fabric border strips, there is nothing in these
references to indicate that such strips constitute soft padding
members as alleged by the examiner.
Appeal No. 95-3512
Application 08/092,540
8
For these reasons, the combined teachings of Gilles and
McConnell do not justify the examiner’s conclusion that the
subject matter recited in independent claims 26, 34 and 41 would
have been obvious to one of ordinary skill in the art.
Therefore, we shall not sustain the standing 35 U.S.C. § 103
rejection of these claims or of claims 27 through 33 and
35 through 39 which depend therefrom.
As a final matter, it is noted that the claims in parent
Application 07/790,469 were subjected to an obviousness-type
double patenting rejection based on U.S. Patent No. 5,064,421,
and that such rejection was overcome by a terminal disclaimer
(Paper No. 6). Given its terms, the terminal disclaimer would
not appear to be effective with respect to the instant
application (see MPEP 1490). Since the claims on appeal are of a
scope which is similar to that of the claims which were rejected
in the parent application, the examiner my wish to consider
whether the claims on appeal raise an obviousness-type double
patenting issue which can be obviated by the filing of a new
terminal disclaimer.
Appeal No. 95-3512
Application 08/092,540
9
In any event and for the above reasons, the decision of the
examiner to reject claims 26 through 39 and 41 under 35 U.S.C.
§ 103 as being unpatentable over Gilles in view of McConnell is
reversed.
REVERSED
HARRISON E. McCANDLISH, Senior )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 95-3512
Application 08/092,540
10
Edward D. Manzo
Cook, Egan, McFarron & Manzo, Ltd.
135 South Lasalle St., Ste. 4100
Chicago, IL 60603
JPM/jrg
APPEAL NO. 95-3512 - JUDGE McQUADE
APPLICATION NO. 08/092,540
APJ McQUADE
Senior APJ McCANDLISH
APJ STAAB
DECISION: REVERSED
Typed By: Jenine Gillis
DRAFT TYPED: 27 Nov 98
FINAL TYPED: