Ex Parte Tracy

Board of Patent Appeals and Interferences

Sep 30, 2003

09107643 (B.P.A.I. Sep. 30, 2003)

The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RHONDA TRACY
__________
Appeal No. 2002-0913
Application No. 09/107,643
__________
HEARD: December 12, 2002
__________
Before STAAB, McQUADE, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
Rhonda Tracy appeals from the examiner’s final rejection of
claims 7-40, all the claims currently pending in the application.
We affirm-in-part and enter a new rejection pursuant to
37 CFR § 1.196(b).
Appeal No. 2002-0913
Application No. 09/107,643
2
Appellant’s invention pertains to a disposable diaper, and
in particular to a disposable diaper having a padded waistband
and legholes. A further understanding of the invention can be
derived from a reading of exemplary claims 7 and 8 which appear
in the appendix to appellant’s corrected main brief.
The references relied upon by the examiner in the final
rejection are:
McConnell et al (McConnell) 3,461,872 Aug. 19, 1969
Lindquist et al (Lindquist) 3,572,342 Mar. 23, 1971
Foreman 4,816,025 Mar. 28, 1989
(effective filing date Oct. 10, 1986)
The following rejections are before us for review:
(1) claims 11 and 12, rejected under 35 U.S.C. § 101
“because there exists a positive recitation of a human and/or
human anatomy as part of the claimed invention” (answer, page 8);
(2) claims 7, 8, 11-13, 15, 16, 18, 21, 23-26, 28, 31, 33-36
and 38, rejected under 35 U.S.C. § 102(b) as being anticipated by
Foreman;
Appeal No. 2002-0913
Application No. 09/107,643
1Tracy I was submitted as an attachment to Paper No. 7.
2Tracy II was filed as an attachment to Paper No. 19.
3
(3) claims 7, 12 and 32, rejected under 35 U.S.C. § 103(a)
as being unpatentable over Foreman in view of Lindquist; and
(4) claims 7-40, rejected under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103(a)
as obvious over McConnell.
Reference is made to appellant’s main and reply briefs
(Paper Nos. 35 and 37) and to the examiner’s answer (Paper
No. 36) for the respective positions of appellant and the
examiner regarding the merits of these rejections. In addition,
appellant also relies on the declaration of inventor Rhonda Tracy
executed January 28, 1999 (Tracy I)1 and the declaration of
inventor Rhonda Tracy executed April 18, 2000 (Tracy II).2
Rejection (1)
The rejection of claims 11 and 12 under 35 U.S.C. § 101 is
not sustained.
Appeal No. 2002-0913
Application No. 09/107,643
4
Claim 11 is directed to an improved disposable diaper
comprising, in pertinent part,
a horizontally oriented strip, said strip being
distinct from the top and bottom sheets, said strip
being located at the waistband between the plastic edge
and the wearer at a position so that the strip contacts
the skin of the wearer. [Emphasis added.]
Claim 12 depends from claim 11 and adds that strip of the
disposable diaper is a padded member.
In responding to appellant’s argument, the examiner explains
the rationale for the rejection of claims 11-12 under § 101 as
follows:
[T]he claims state “the strip contacts the skin of the
wearer”, therefore the article must be in use in order
to satisfy this limitation, the article as it is
presently claimed cannot stand on its own without the
wearer being present. By changing the word “contacts”
into “is capable of contacting” or “is provided to
contact” it states that the article is fully capable of
performing his [this?] function, but recites only
limitations of the article, the wearer need not be
present. [Answer, pages 11-12.]
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Application No. 09/107,643
5
In the present instance, we consider that claim 11 is
directed to a disposable diaper per se which does not require the
presence of the wearer. This interpretation is both consistent
with appellant’s specification as a whole and appellant’s view of
the scope of claims 11 and 12 (see pages 39-40 of the main
brief). In that we do not agree with the examiner’s
interpretation of claims 11-12, which interpretation is essential
to the standing § 101 rejection, it follows that we shall not
sustain this rejection.
Rejection (2)
A threshold issue in the examiner’s rejections based on
Foreman is whether Foreman qualifies as prior art against the
appealed claims.
The Foreman patent issued on March 28, 1989 on an
application filed on October 30, 1987. The front page of the
Foremen patent indicates that the application that matured into
the Foreman patent was a continuation of an application filed on
October 10, 1986. Thus, on its face, the effective filing date
of the Foreman patent is October 10, 1986 (i.e, the filing date
Appeal No. 2002-0913
Application No. 09/107,643
3Foreman would still qualify as a reference under 35 U.S.C.
§ 102(e) because the effective filing date of October 10, 1986 of
the Foreman patent is earlier than the September 8, 1987 filing
date of the ‘681 design application.
6
of its parent), and appellant does not argue otherwise.
Appellant asserts, however, that the appealed claims should be
accorded the benefit of the filing date of design application
Serial No. 07/093,681 filed September 8, 1987, which design
application is the first application in a line of applications
that can be traced forward to the present application. This
would nullify Foreman as a bar under 35 U.S.C. § 102(b) against
the appealed claims.3 Appellant would then rely on the Tracy I
declaration to swear behind 35 U.S.C. § 102(e) effective filing
date of Foreman. Thus, appellant’s effort to eliminate Foreman
as a reference involves two steps, the first step being to gain
benefit of the September 8, 1987 filing date of the ‘681 design
application, and the second step being to use the Tracy I
declaration to swear behind the October 10, 1986 effective filing
date of Foreman. Appellant must prevail on both issues in order
to eliminate Foreman as a reference.
The examiner considers that the appealed claims should not
be accorded the benefit of the filing date of the ‘681 design
Appeal No. 2002-0913
Application No. 09/107,643
7
application, and that, accordingly, Foreman qualifies as a bar
under 35 U.S.C. § 102(b). On this basis, the examiner takes no
position with respect to the sufficiency of the Tracy I
declaration to swear behind the October 10, 1986 effective filing
date of Foreman. We shall consider both issues of appellant’s
effort to eliminate Foreman as a prior art reference.
Issue (1): Should the appealed claims be accorded the benefit of
the filing date of the ‘681 design application?
Under 35 U.S.C. § 120, a later filed application shall be
accorded the benefit of the filing date of an earlier filed
application if, among other things, the invention (i.e., claims)
of the later application are disclosed in the earlier filed
application in the manner provided by the first paragraph of
35 U.S.C. § 112. Thus, in order for a claim in the later filed
application to be accorded the benefit of the filing date of the
earlier filed application, the earlier filed application must,
among other things, provide descriptive support within the
meaning of 35 U.S.C. § 112, first paragraph, for the claim of the
later filed application. Transco Prods. Inc. v. Performance
Contracting, Inc., 38 F.3d 551, 557, 32 USPQ2d 1077, 1081 (Fed.
Appeal No. 2002-0913
Application No. 09/107,643
8
Cir. 1994), cert. denied, 513 U.S. 1151 (1995); In re
Van Langenhoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA
1972).
The test for determining compliance with the written
description requirement found in the first paragraph of 35 U.S.C.
§ 112 is whether the disclosure of the application as originally
filed reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter,
rather than the presence or absence of literal support in the
specification for the claim language. In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The content of
the drawings may also be considered in determining compliance
with the written description requirement. Id. Claim limitations
which are urged to be inherent in the disclosure must be shown as
having clear support from the necessary and only reasonable
construction to be given the disclosure by one skilled in the
art. Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419,
1423, 5 USPQ2d 1194, 1198 (Fed. Cir. 1987), cert. denied,
486 U.S. 1008 (1988).
In addition, a disclosure that merely renders the later-
claimed invention obvious is not sufficient to meet the written
Appeal No. 2002-0913
Application No. 09/107,643
9
description requirement; the disclosure must describe the claimed
invention with all its limitations. See Tronzo v. Biomet, Inc.,
156 F.3d 1154, 1158-60, 47 USPQ2d 1829, 1832-34 (Fed. Cir. 1998);
Lockwood v. American Airlines, Inc., 107 F.3d 1656, 1571-72,
41 USPQ2d 1961, 1966 (Fed. Cir. 1997); Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991); In re DiLeone, 436 F.2d 1404, 1405, 168 USPQ 592, 593
(CCPA 1971); In re Wohnsiedler, 315 F.2d 934, 937, 137 USPQ 336,
339 (CCPA 1963). Although it may be apparent that the particular
later claimed construction could be utilized for an article of
manufacture, that does not mean that such a construction is
described as part of the invention. That a person skilled in the
art might realize from reading a disclosure that a particular
later claimed construction is possible is not a sufficient
indication to that person that said construction is part of
invention. See In re Winkhaus, 527 F.2d 637, 640, 188 USPQ 129,
131 (CCPA 1975).
Appeal No. 2002-0913
Application No. 09/107,643
4The drawing figures of the ‘681 design application are
included as an attachment to this decision.
10
In the present instance, the examiner has concluded that
there is no descriptive support in the ‘681 design application4
for the requirement of independent claims 7, 8, 11, 21 and 31
that the body portion of the disposable diaper comprises “a
plastic layer,” or the requirement of independent claim 7 calling
for a “soft padding member” located along a waistband portion, or
the requirement of independent claim 8 calling for “a strip non-
abrasive material” located along a waistband portion. We agree.
Simply put, there is no basis in the disclosure of the ‘681
design application for concluding that the disposable diaper
disclosed therein possesses the features noted by the examiner.
We also consider that there are a number of other
limitations set forth in the appealed claims for which this is no
descriptive support in the ‘681 design application. These
include the requirement that the padding member of claim 7 and
the strip of claim 8 are “distinct from all of said body-portion
layer[s],” the requirement of claim 11 that the horizontally
oriented strip located at the edge of the waistband is “distinct
from the top and bottom sheets,” and the requirement of claim 21
Appeal No. 2002-0913
Application No. 09/107,643
11
calling for a “discrete member” interposed between the edge of
the waistband and the wearer. Here, consistent with the
disclosure of the present application, we consider the claim
terminology “distinct” and “discrete” as requiring that the
member or strip is a separate element relative to the diaper’s
body portion layers or sheets; however, for all the ‘681 design
application discloses, the strips seen at the front and back
waistband portions may be folded over extensions of an underlying
body portion layer.
We also find a lack of descriptive support in the ‘681
design application for the requirement of claim 7 that the
plastic layer of the diaper has an edge along which the padding
member is located, and the similar language found in claims 8, 11
and 21. In this regard, notwithstanding appellant’s argument on
page 10 of the main brief to the contrary, we find no descriptive
support in the ‘681 design application of the claim requirement
that the edge of the outer layer necessarily extends to the edge
of the diaper at either one of the waistband portions.
Other limitations of the appealed claims for which we find
no descriptive support in the ‘681 design application are the
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Application No. 09/107,643
12
limitation of claims 12 and 32 that the strip is a “padding
member,” the limitation of claims 13, 23 and 33 that the strip or
member is a “cushion,” the limitation of claims 14, 22 and 34
that the strip or member “is configured to soften the effect on
the skin of the wearer of the plastic edge,” the limitation of
claims 15, 26 and 35 that the strip or member provides “an
additional barrier against leakage,” the limitation of claims 17,
27 and 37 that the strip or member “is absorbent,” the limitation
of claims 19, 29 and 39 that the strip or member “is an absorbent
padding member positioned to provide an additional barrier
against leakage,” and the limitation of claims 20, 30 and 40 that
the strip or member “is absorbent . . . to provide an additional
barrier against leakage.” For example, and with respect to
claims 15, 19, 20, 26, 30, 35, 39 and 40, it does not necessarily
follow from the mere presence of a strip or member at an edge of
a diaper that the strip provides a barrier against leakage, as
appellant appears to argue, since the ability of a material to
act as a barrier against leakage depends, among other things,
upon the composition of that material, which the ‘681 design
application does not address.
Appeal No. 2002-0913
Application No. 09/107,643
13
Appellant’s arguments and evidence concerning these matters
have been considered but are not persuasive. In short, the
above-noted claim limitations are not inherent in the disclosure
of the ‘681 design application because it has not been shown that
the limitations in question have clear support from the necessary
and only reasonable construction to be given the disclosure of
the ‘681 design application by one skilled in the art. Kennecott
Corp., 835 F.2d at 1423, 5 USPQ2d at 1198.
As to the Tracy II declaration relied upon by appellant in
conjunction with these matters, we have carefully considered this
declaration but find it to be insufficient in its purpose of
establishing what one of ordinary skill in the art would have
understood the ‘681 design application to disclose. By way of
example, take paragraph 5 of Tracy II, wherein declarant states:
I understood that the outermost layer illustrated in my
figures 1-3 of my design application Serial No. 93,681
represented a plastic layer of a disposable diaper.
Due to the prevalent nature of disposable diapers
having the outer layer as plastic in that time era, I
believe that the person of ordinary skill in the diaper
designing art would understand from my figures and from
the title of my design patent application that the
outer layer was plastic.
Appeal No. 2002-0913
Application No. 09/107,643
14
Declarant’s statement as to what declarant understood the
figures of the ‘681 design application to represent (“I
understood that the outermost layer illustrated in my figures 1-3
of my design application Serial No. 93,681 represented a plastic
layer”) is of little probative value as to what one of ordinary
skill in the art would have understood those figures to
represent. Further, declarant’s opinion as to what one of
ordinary skill in the art would have understood the ‘681 design
application to disclose (“I believe that the person of ordinary
skill in the diaper designing art would understand from my
figures and from the title of my design patent application that
the outer layer was plastic”) fails because it recites a
conclusion and few, if any, facts to buttress that conclusion.
See, for example, In re Grunwell, 609 F.2d 486, 491, 203 USPQ
1055, 1059 (CCPA 1979) and In re Brandstadter, 484 F.2d 1395,
1405, 179 USPQ 286, 294 (CCPA 1973). Finally, the facts asserted
by declarant to support declarant’s opinion (the “prevalent
nature of disposable diapers having the outer layer as plastic in
that time era” and the similar statements in paragraph 3 of the
declaration) are not supported by objective evidence. Moreover,
Appeal No. 2002-0913
Application No. 09/107,643
5In the ‘681 design application, the Figure 3 sectional view
of an edge of the diaper is not cross hatched in the manner
conventionally used to indicate plastic. In addition, see U.S.
Patent 4,230,113, issued to Mehta on October 28, 1980, and cited
by appellant in the Information Disclosure Statement filed
June 30, 1998 (Paper No. 4). Mehta states at column 2, lines
33-38, that the outer moisture impervious layer of the disposable
diaper thereof may comprise waterproofing treated cotton
sheeting.
6We do not consider Tracy I, discussed below, to address
issue (1).
15
there is evidence in the record to the contrary.5 For these
reasons, Tracy II is not persuasive that the ‘681 design
application provides descriptive support within the meaning of
the first paragraph of 35 U.S.C. § 112 for the “plastic layer”
limitation or any of the other above noted limitations of the
appealed claims.6
In light of the foregoing, we conclude that appellant has
not established that the appealed claims should be accorded the
benefit of the filing date of the ‘681 design application.
Issue (2): Has appellant established that the claimed invention
was completed prior to the effective filing date of Foreman?
Assuming, arguendo, that the appealed claims can be accorded
Appeal No. 2002-0913
Application No. 09/107,643
16
the benefit of the filing date of the ‘681 design application,
Tracy I does not antedate the October 10, 1986 effective filing
date of Foreman.
The requirements for antedating a reference under 37 CFR
§ 1.131 are quite specific. Under this rule, the inventor of the
subject matter of the rejected claims must submit an appropriate
oath or declaration to overcome the reference by establishing a
completion of the invention including an actual reduction to
practice prior to the effective date of the reference or
conception of the invention prior to the effective date of the
reference coupled with due diligence from a time as least just
prior to said effective date to a subsequent reduction to
practice or to the filing of a U.S. patent application. See
37 CFR § 1.131(b) and In re Gosteli, 872 F.2d 1008, 1012,
10 USPQ2d 1614, 1617 (Fed. Cir. 1989). An invention is completed
when there is conception and a reduction to practice of the
invention. Dunn v. Ragin, 50 USPQ 472, 474, (Bd. Pat. Inter.
1941).
For the reasons that follow, Tracy I does establish an
actual reduction to practice prior to the effective filing date
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Application No. 09/107,643
17
of the reference patent. The only portions of Tracy I relevant
to an actual reduction prior to the effective filing date of
Foreman are paragraphs 3 and 4, which refer to a model or
prototype being created and left with appellant’s first patent
counsel, Roger Van Epps, on or about October 3, 1986. However,
there is no evidence of record as to the nature of the model or
prototype, or as to whether the model or prototype was tested to
see if it worked for its intended purpose. Nor is there any
corroboration for the facts alleged in paragraphs 3 and 4. On
this basis, we conclude that Tracy I does not establish an actual
reduction to practice prior to the effective filing date of
Foreman.
Tracy I also does not establish conception of the invention
prior to the effective filing date of the reference patent
coupled with due diligence to a constructive reduction to
practice (i.e., the filing of the ‘681 design application).
Assuming that the disclosure document 166,418 referred to in
paragraph 2 of Tracy I establishes conception of the invention
prior to Foreman’s effective filing date, due diligence from just
prior to Foreman’s October 10, 1986 effective filing date to the
September 8, 1987 filing date of the ‘681 design application has
Appeal No. 2002-0913
Application No. 09/107,643
7It should not be assumed that we consider Tracy I to
establish due diligent from just prior to the effective filing
date of Foreman up to March 2, 1987.
18
not been established. In particular, there is an unexplained gap
of over six months between the March 2, 1987 date when appellant
reviewed and signed the application papers (Tracy I, paragraph 7)
and the application was filed in the PTO (Tracy I, paragraph 8).7
Appellant must account for the entire period during which
diligence is required. Gould v. Schawlow, 363 F.2d 908, 919,
150 USPQ 634, 643 (CCPA 1966). This has not been done.
Accordingly, appellant has not established that the claimed
invention was completed prior to the effective filing date of
Foreman, and Foreman has not been removed as a reference against
the appealed claims.
The merits of the § 102 rejection based on Foreman.
Turning to the merits of the anticipation rejection of 7, 8,
11-13, 15, 16, 18, 21, 23-26, 28, 31, 33-36 and 38 based on
Foreman, Foreman discloses a disposable diaper comprising an
absorbent core 44, a liquid impervious backsheet 42 made of
Appeal No. 2002-0913
Application No. 09/107,643
19
plastic (column 8, lines 42-45), and a liquid pervious topsheet
38. The diaper also includes first barrier cuffs 62 (Figure 2)
disposed along the longitudinal edges of the diaper, and second
barrier cuffs 262 (Figure 3) disposed along the waistband
portions 22, 24 of the diaper. The second barrier cuffs
extending along the waistband portions each include a flap
portion 274 and a channel portion 275. In describing the channel
portion of the second barrier cuff, Foreman states (column 5,
lines 56-61) that the tunnel at the distal (inner) edge 266 of
the barrier cuff is formed by folding the end of the cuff member
back upon itself and securing it to another segment of the cuff
member “to present a soft nonjagged edge to the wearer” (emphasis
added). As to the flap portions of the barrier cuffs, Foreman
further explains that the flap portions seen in Figures 1, 2, and
3 (column 11, line 13) are “preferably hydrophobic, liquid
impermeable, compliant, soft feeling and non-irritating to the
wearer’s skin” (column 11, lines 31-34; emphasis added) since the
flap portions contact the wearer when in use. Concerning the
material of the barrier cuffs, which include the flap portions,
Foreman states (column 11, lines 1-4) that they may be made from
a wide variety of materials includes foams and elastic foams.
Finally, Foreman also discloses (column 13, 24-35) that the
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Application No. 09/107,643
20
barrier cuffs may additionally be provided with absorbent means
secured to or within the barrier cuffs capable of absorbing and
retaining fluids, said absorbent means preferably being a layer
of airfelt secured along the inner surface of the barrier cuff.
At the outset, we observe that appellant does not challenge
the merits of the rejection of claims 11, 15, 16, 18, 21, 24-26,
28, 31, 34-36 and 38 as being anticipated by Foreman other than
to assert that these claims should be accorded the filing date of
the ‘681 design application, which would remove Foreman as a
reference. Since we have determined supra that Foreman is a
proper reference, this argument is not persuasive. Accordingly,
the standing § 102 rejection of these claims based on Foreman is
sustained.
We also sustain the anticipation rejection of claims 7, 8,
12, 13, 23 and 33 based on Foreman. Like the examiner, we
consider that the tunnel at the distal edge 266 of Foreman’s
second barrier cuff 262, which presents a soft nonjagged edge to
the wearer, constitutes a soft padding member that presents a
soft surface to the wearer, as broadly claimed in claims 7 and
12. We also consider that said tunnel constitutes a strip of
Appeal No. 2002-0913
Application No. 09/107,643
21
non-abrasive material presenting a cushioned surface to the
wearer, as broadly claimed in claims 8, 13, 23 and 33. In
addition, the flap portion 274 adjacent the proximal edge 264 of
Foreman’s second barrier cuff 262, which is described as being
compliant, soft feeling and non-irritating to the wearer’s skin
and which may be made from foam or elastic foam, constitutes a
soft padding member of non-abrasive material that presents a soft
cushioned surface to the wearer, as now claimed. Accordingly, it
is our view that both the tunnel at the distal edge of Foreman’s
second barrier cuff and the flap portion of Foreman’s second
barrier cuff respond to the soft padded member and non-abrasive
cushion member limitations of claims 7, 8, 12, 13 and 23. For
similar reasons, the flap portion 74 adjacent the proximal edge
64 of Foreman’s first barrier cuff responds to the leg hole strip
being a cushion limitation of claim 32.
Rejection (3)
We sustain the rejection of claims 7, 12 and 32 as being
unpatentable over Foreman in view of Lindquist.
Claim 7 is directed to a disposable diaper comprising, among
Appeal No. 2002-0913
Application No. 09/107,643
22
other things, a soft padding member located along at least one of
the waistband portions. Claim 12 depends from claim 11 and adds
that the strip of non-abrasive material of base claim 11 is a
padding member. Claim 32 depends from claim 31 and adds that the
distinct strip located at the leg hole of base claim 31 is a
padded member.
As noted in our treatment of the anticipation rejection
based on Foreman, the tunnel at the distal edge 266 of Foreman’s
barrier cuff 262, which presents a soft nonjagged edge to the
wearer, comprises a soft padding member as broadly claimed. In
addition, the respective flap portions 74, 274 of Foreman’s first
and second barrier cuffs 62, 262, which are described as being
compliant, soft feeling and non-irritating to the wearer’s skin
and which may be made from foam or elastic foam, comprise soft
padding members at the waistband portions and leg hole portions.
Viewed in this light, Foreman provides response for all
limitations of claims 7, 12 and 32, making the teachings of
Lindquist mere surplusage in this rejection. While a rejection
over a single reference such as Foreman that responses to all
limitations of claims would ordinarily be based on 35 U.S.C.
§ 102 rather than 35 U.S.C. § 103, the practice of nominally
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Application No. 09/107,643
23
basing a rejection on § 103 when, in fact, the actual ground of
rejection is that the claims are anticipated by the prior art has
been sanctioned by a predecessor of our present review court in
In re Fracalossi, 681 F.2d 792, 215 USPQ 569 (CCPA 1982) and
In re Pearson, 494 F.2d 1399, 181 USPQ 641 (CCPA 1974). For
these reasons, appellant’s arguments of nonobviousness with
respect to these claims are simply not germane to the novelty
issue discussed above. The standing § 103 rejection of claims 7,
12 and 32 is therefore sustained.
Rejection (4)
We do not sustain the rejection of claims 7-40 as being
anticipated by or, in the alternative, as obvious over McConnell.
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-
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 is an elastic strip 21 and an overlying outer strip
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Application No. 09/107,643
24
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 32-33). Figure 5 shows a disposable absorbent diaper pad
for use in conjunction with the retaining garment. Figure 6
illustrates the retaining garment with the disposable diaper pad
retained therein. According to McConnell, with retaining
garments and disposable diaper pads of this type, “the diaper
supporting and retaining garment is reused many times while the
disposable diaper pads are discarded after becoming soiled in
use” (column 1, lines 45-47).
Upon review of the examiner’s explanation of the rejection
on page 6 of the answer, it is clear that in rejecting
appellant’s claims as being anticipated by or obvious in view of
McConnell the examiner reads the claimed disposable diaper
comprising a body portion having a layer of liquid-absorbent
material and a plastic layer on the combination of the retaining
garment and the disposable diaper pad of the reference, with
McConnell’s sheet of flexible polymeric cellular material 10
corresponding, in the examiner’s view, to the claimed “plastic
layer” of the disposable diaper and with McConnell’s disposable
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Application No. 09/107,643
25
diaper pad corresponding to the claimed “liquid-absorbent
material” of the disposable diaper.
Like appellant, we believe the examiner has misapplied
McConnell is attempting to read the claimed “disposable diaper”
comprising a layer of liquid-absorbing material and a plastic
layer on McConnell’s combined reusable retaining garment and
disposable diaper pad. We arrive at this conclusion
notwithstanding the examiner’s observation, admittedly correct,
that the reusable retaining garment of McConnell “is fully
capable of being disposed . . . after one use” (answer, page 11).
Simply put, one of ordinary skill in the art would not consider
the appealed claims, when read in light of the specification, to
encompass within their scope the combination of a reusable
retaining garment and a disposable pad such as taught by
McConnell. This is especially so in view of McConnell’s
disclosure at column 1, lines 45-47, that the retaining garment
thereof is of the type intended to be reused many times.
For this reason alone, the rejection of claims 7-40 as being
anticipated by or, in the alternative, obvious over McConnell
cannot be sustained.
Appeal No. 2002-0913
Application No. 09/107,643
26
New Ground of Rejection
Pursuant to our authority under 37 CFR § 1.196(b), we enter
the following new rejection.
Claims 14, 17, 19, 20, 22, 27, 29, 30, 32, 37, 39 and 40 are
rejected under 35 U.S.C. § 102(b) as being anticipated by
Foreman.
These claims depend for various ones of the independent
claims on appeal and additionally call for the claimed member or
strip of the respective base claims to be (1) configured to
soften the effect on the skin of the wearer of the plastic edge
(claims 14 and 22), (2) absorbent (claims 17, 27 and 37), (3) an
absorbent padding positioned to provide an additional barrier
against leakage (claims 19, 29 and 39), (4) absorbent and
positioned to provide an additional barrier against leakage
(claims 20, 30 and 40), and (5) a padding member (claim 32).
As noted above, Foreman’s barrier cuffs 62, 262 comprise
flap portions 74, 274 that are compliant, soft feeling and non-
irritating to the wearer’s skin (column 11, lines 31-34), and
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that may be made from foam or elastic foam (column 11, lines 1-
4). Further, the barrier cuffs may include absorbent means such
as a layer of airfelt secured along the inner surface of the
barrier cuff to absorb and retain fluids (column 13, lines 24-
35). Barrier cuffs made in accordance with these directives
(i.e., having flap portions of foam or elastic foam and including
a layer of absorbent airfelt material on the inner surface of the
cuff to absorb and retain fluids) constitute soft, absorbent
“padding members” as broadly claimed that are configured to
soften the effect on the skin of the plastic backsheet 42.
Hence, the second barrier cuffs 262 of Foreman positioned at the
waistband portions of the diaper respond to the claimed strip or
member located at the waistband of claims 14, 17, 19, 20, 22, 27,
29 and 30, and the first barrier cuffs 62 of Foreman positioned
at the sides of the crotch of the diaper respond to the claimed
strip located at the leg holes of claims 32, 37, 39 and 40.
Summary
The rejection of claims 11 and 12 under 35 U.S.C. § 101 is
reversed.
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The rejection of claims 7, 8, 11-13, 15, 16, 18, 21, 23-26,
28, 31, 33-36 and 38 under 35 U.S.C. § 102(b) as being
anticipated by Foreman is affirmed.
The rejection of claims 7, 12 and 32 under 35 U.S.C.
§ 103(a) as being unpatentable over Foreman in view of Lindquist
is affirmed.
The rejection of claims 7-40 under 35 U.S.C. § 102(b) as
being anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over McConnell is reversed.
Pursuant to 37 CFR § 1.196(b), we have entered a new
rejection of claims 14, 17, 19, 20, 22, 27, 29, 30, 32, 37, 39
and 40 under 35 U.S.C. § 102(b) as being anticipated by Foreman.
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b). 37 CFR 1.196(b) provides that
“[a] new ground of rejection shall not be considered final for
purposes of judicial review.”
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Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for rehearing
within two months from the date of the original
decision. . . .
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (37 CFR § 1.197(c))
as to the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
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with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to the Board of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for rehearing thereof.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
LJS:svt
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Edward D. Manzo
Cook, McFarron & Manzo
200 West Adams Street
Suite 2850
Chicago, IL 60606