Ex Parte Underhill et alDownload PDFBoard of Patent Appeals and InterferencesMar 31, 200910857090 (B.P.A.I. Mar. 31, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte RICHARD L. UNDERHILL, MICHAEL J. NIEMEYER, and MARIANNA K. LEICK __________ Appeal 2008-5825 Application 10/857,090 Technology Center 3700 __________ Decided:1 March 31, 2009 __________ Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N. FREDMAN, Administrative Patent Judges. SCHEINER, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-5825 Application 10/857,090 2 This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE The present invention is directed to a disposable absorbent article, e.g., toilet training pants, “capable of indicating to the wearer that a release of liquid body waste has occurred” (Spec. ¶ 5). Claims 1-4 and 7 are representative of the subject matter on appeal: 1. A disposable absorbent article for personal wear, the disposable absorbent article having a longitudinal direction and a lateral direction, said absorbent article comprising: a generally liquid permeable liner having a bodyfacing surface; an outer cover; an absorbent body disposed between the liner and the outer cover for absorbing liquid body waste and having lateral side edges; and a flow control layer between the liner and the absorbent body, the flow control layer having lateral side edges, at least a portion of each lateral side edge of the flow control layer being spaced laterally inward from the lateral side edges of the absorbent body, the flow control layer being at least in part liquid impermeable to retard the flow of liquid body waste penetrating the liner toward the absorbent body whereby at least a portion of the liquid body waste that penetrates the liner is directed by the flow control layer to migrate laterally outward toward the lateral side edges of the flow control layer for subsequent flow around the flow control layer toward the absorbent body. 2. A disposable absorbent article as set forth in claim 1 wherein the flow control layer is configured to permit at least some liquid body waste that passes through the liner to flow past the flow control layer toward the absorbent body without migrating laterally outward around the lateral side edges of the flow control layer. 3. A disposable absorbent article as set forth in claim 2 wherein the flow control layer has at least one aperture formed therein. Appeal 2008-5825 Application 10/857,090 3 4. A disposable absorbent article as set forth in claim 3 wherein the flow control layer comprises a plurality of apertures, said apertures each being sized in the range of about 1 mm to about 10 mm. 7. A disposable absorbent article as set forth in claim 1 wherein the flow control layer has a thickness of less than or equal to about .003 inches. The Examiner relies on the following evidence: Van Gompel et al. US 4,940,464 Jul. 10, 1990 Inoue et al. US 6,320,096 B1 Nov. 20, 2001 The Examiner rejected the claims as follows: • Claims 1-19 under 35 U.S.C. § 103(a) as unpatentable over Inoue. • Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Inoue and Van Gompel. We affirm-in-part. THE ISSUES The issues raised by this appeal are as follows: Has the Examiner established that a disposable absorbent article having an inner liquid permeable liner, an outer cover, an absorbent body between the liner and the outer cover, and a flow control layer between the liner and the absorbent body would have been obvious over Inoue’s disclosure? Has the Examiner established that it would have been obvious over Inoue’s disclosure to incorporate a flow control layer comprising a plurality of apertures ranging in size from about 1 mm to about 10 mm, or a flow control layer with a thickness less than or equal to .003 inches into the disposable absorbent article? Appeal 2008-5825 Application 10/857,090 4 FINDINGS OF FACT FF1 Appellants claim a disposable absorbent article having a generally liquid permeable liner on its body-facing side; an outer cover; an absorbent body between the liner and the outer cover; and a flow control layer between the liner and the absorbent body. The sides of the flow control layer are spaced inwardly from the side edges of the absorbent body (i.e., the flow control layer is narrower than the absorbent body). The flow control layer is at least in part liquid impermeable, so that it retards the flow of liquid through it to the absorbent body, and directs at least a portion of the liquid laterally outward and around the side edges of the flow control layer and then toward the absorbent body (Claim 1). FF2 Figure 5 of the Specification illustrates an embodiment of the present invention, and shows the various layers required by claim 1: Figure 5 depicts a separated cross-section taken laterally through the crotch region of the disposable absorbent article (Spec. ¶ 13), and shows the Appeal 2008-5825 Application 10/857,090 5 relative positions of liquid permeable body-facing liner 251, flow control layer 281, absorbent body 253, and outer cover 249 (Spec. ¶ 67). FF3 The Specification teaches that “liner 251 is secured to the flow control layer 281, such as by being bonded thereto using suitable adhesive 289” (Spec. ¶ 67). FF4 As the Specification explains: [When] urine penetrates the liner 251, the flow control layer 281 retards the flow of urine . . . [and] unabsorbed urine is maintained by the flow control layer 281 in the vicinity of the liner 251 to facilitate a prolonged feeling of wetness against the wearer’s skin, thereby providing an indication that urination has occurred. Urine eventually flows through (if the flow control layer 281 is constructed of a permeable material) and/or around (if the flow control layer is constructed of an impermeable material) the flow control layer to . . . the absorbent body 253 for absorption thereby to again provide a dry, comfortable feeling against the wearer’s skin. (Spec. ¶ 68.) FF5 Inoue discloses disposable training pants, illustrated in Figure 2, reproduced immediately below: Appeal 2008-5825 Application 10/857,090 6 Figure 2 is a perspective view of Inoue’s unfolded disposable training pants. “The topsheet layer 2 of the pants 1 comprises a liquid-permeable first sheet 21 which is identical to the backsheet layer 3 both in shape and size and a hydrophobic second sheet 22 arranged in a transverse middle of the first sheet 21” (Inoue, col. 2, ll. 20-24). “The first sheet 21 is a liquid-permeable sheet entirely covering an upper surface of the absorbent core 4” (id. at col. 2, ll. 31-32). “The second sheet 22 is a sheet indirectly covering the upper surface of the absorbent core 4 with the first sheet 21 interposed therebetween. The second sheet 22 has a width narrower than the width of the absorbent core 4” (id. at col. 2, ll. 47-50). FF6 “The first sheet 21 is a liquid-permeable sheet . . . and may be made of a nonwoven fabric obtained from staple fibers of thermoplastic synthetic resin, [or] a thermoplastic synthetic resin film having a plurality of liquid-permeable apertures” (Inoue, col. 2, ll. 31-35). The “basic weight of the nonwoven fabric is preferably 10-100 g/m2 and a thickness of the film is preferably 0.02-0.1 mm [0.00079-0.0039 inches]” (id. at col. 2, ll. 45-46). FF7 “The second sheet 22 may be made of a nonwoven fabric formed by staple fibers . . . of thermoplastic synthetic resin, . . . or thermoplastic synthetic resin film having a plurality of liquid-impermeable apertures” (Inoue, col. 2, ll. 52-57). Nonwoven fabric having “a basic weight of 10-100 g/m2 may be appropriately compression-molded to increase a fiber density thereof and thereby to make it liquid impermeable” (id. at col. 3, ll. 7-10). Inoue teaches that “urine discharged onto an upper surface of the second sheet 22 . . . cannot easily transfer through the second sheet 22 itself or through the [liquid-impermeable] apertures formed in the second sheet 22” (id. at col. 2, ll. 60-64). Appeal 2008-5825 Application 10/857,090 7 FF8 “The second sheet 22 has a lower surface thereof bonded to an upper surface of the first sheet 21 along bonding lines 16” (Inoue, col. 2, ll. 25-27). FF9 The Examiner finds that Inoue “discloses the invention substantially as claimed except for teaching the flow control layer is on top of the liner instead of underneath the liner” (Ans. 3). PRINCIPLES OF LAW The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) evidence of secondary factors, also known as objective indicia of nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1741 (2007). It is appropriate to take into account “the inferences and creative steps that a person of ordinary skill in the art would employ” (id.), and “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at ___, 127 S.Ct. at 1739. Appeal 2008-5825 Application 10/857,090 8 ANALYSIS The Examiner rejected claims 1-19 under 35 U.S.C. § 103(a) as unpatentable over Inoue. Appellants and the Examiner agree that Inoue does not disclose a disposable absorbent article “having a flow control layer disposed between a liner and an absorbent body” (App. Br. 7-8). As the Examiner puts it, Inoue “discloses the invention substantially as claimed except for teaching the flow control layer is on top of the [liquid-permeable] liner instead of underneath the liner” (Ans. 3). The Examiner concluded that “it would have been obvious to one having ordinary skill in the art to provide the flow control layer either on the top surface or the bottom surface of the liner” (Ans. 4-5) since [B]oth locations are above the absorbent body and both locations perform the substantially identical function of retarding the flow of urine into the absorbent body to provide a feeling of wetness against the wearer’s skin to toilet train the wearer. . . . furthermore, [one] would have expected Appellants’ invention to perform equally well with either the flow control layer on top of the liner or underneath the liner because both [the prior art and present flow control] layers perform the same function of retarding the flow of liquid penetrating the liner toward the absorbent body and directing a portion of the liquid that penetrates the liner [to migrate laterally] toward the absorbent body. (Id. at 5.) Appellants contend that the Examiner has not provided “evidence of the required teaching, suggestion or motivation” (App. Br. 10) “to make the asserted modification, i.e., the asserted rearrangement of parts” (id. at 11). Appeal 2008-5825 Application 10/857,090 9 Appellants’ argument is not persuasive. The lack of an explicit teaching or suggestion in the cited art is not the end of the obviousness analysis. “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at ___, 127 S.Ct. at 1741. Again, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at ___, 127 S.Ct. at 1739. Here, we agree with the Examiner’s conclusion that switching the relative positions of Inoue’s liquid-permeable liner and flow control layer would have been obvious to one of ordinary skill in the art (who is also a person of ordinary creativity), and one would have expected the flow control layer to retard the flow of urine to the absorbent layer - regardless of whether the liquid-permeable liner or the flow control layer was on top - so long as both were above the absorbent body. Either way, one of skill in the art would have recognized that liquid would still make its way primarily around, rather than directly through, the flow control layer to the absorbent body. Appellants further contend that “the flow control layer . . . being disposed between the liner and the absorbent body has a number of advantages that inherently flow from this combination/arrangement and which the second sheet 22 of Inoue . . . [is] incapable of achieving” (App. Br. 12). For example, Appellants argue that covering the flow control layer with the liner is less irritating to the wearer than the reverse because the wearer’s skin is not exposed to the edges of the flow control layer (id. at 13). Appeal 2008-5825 Application 10/857,090 10 Similarly, Appellants argue “with the flow control layer between the liner and the absorbent body . . . urine flows through the liner and then flows outward beneath the liner such that the fibers of the liner act to slow down the outward flow of urine and promote a more uniform flow, and to also prolong the wetness feeling to the wearer” (id.). These arguments are not persuasive. Even if we accept, for the sake of argument, that these advantages accrue from reversing the arrangement of Inoue’s flow control layer and the liner, so that the liner is on top of the flow control layer instead of beneath it, Appellants have provided no evidence that these advantages would have been unexpected. Claims 4-6 According to the Examiner, Inoue discloses a flow control layer 22 with a plurality of apertures, and it is known that The size and number of apertures through which the liquid flows affects the amount of liquid that can flow through the apertures. Therefore the amount of liquid flow-through is a result effective variable . . . and discovery of an optimum . . . size and number of apertures to accommodate the volume of liquid loading imparted by the intended use of the article in order to control the rate of fluid passing though the apertured layer to the core below is within the skill of a routine worker in the art. (Ans. 6.) Appellants contend that the flow control layer of claim 4 (and dependent claims 5 and 6) “comprises a plurality of apertures . . . each being sized in the range of about 1 mm to about 10 mm” (App. Br. 14), and the flow control layer is configured to permit at least some liquid that passes through the liner to flow past the flow control liner without migrating Appeal 2008-5825 Application 10/857,090 11 laterally outward (see claim 2, from which claim 4 depends). Appellants contend that Inoue teaches “that the second sheet 22 may be made of a thermoplastic synthetic resin film having a plurality of ‘liquid-impermeable apertures’” i.e., “the film is vapor permeable, to allow air to pass therethrough, but the apertures are so small that they are substantially liquid impermeable” (Appeal Br. 15). Appellants’ argument is persuasive. Inoue teaches that “urine discharged onto an upper surface of the second sheet 22 . . . cannot easily transfer through the second sheet 22 itself or through the apertures formed in the second sheet 22” (Inoue col. 2, ll. 60-64), which are “liquid-impermeable apertures” (id. at col. 2, ll. 56-57) (FF7). The Examiner has not established that Inoue’s liquid-impermeable apertures are the size required by claims 4-6, and if they are not, why one of skill in the art would have had reason to modify their size to make them liquid-permeable. The Examiner has not established that it would have been obvious over Inoue’s disclosure to incorporate a flow control layer comprising a plurality of apertures ranging in size from about 1 mm to about 10 mm into the disposable absorbent article. Claim 7 Appellants contend that Inoue does not “expressly state nor is it inherent that the thickness of the second sheet 22 [i.e., the flow control layer] is less than or equal to .003 inches as recited in claim 7” (App. Br. 16). Appellants’ argument is not persuasive. Inoue’s first sheet 21 and second sheet 22 may both be made of nonwoven fabric formed by staple Appeal 2008-5825 Application 10/857,090 12 fibers of thermoplastic synthetic resin with a basic weight of 10-100 g/m2 (FF6, FF7). Inoue teaches that nonwoven fabric of that basic weight has a thickness of 0.02-0.1 mm (i.e., 0.00079-0.0039 inches) (FF6). We agree with the Examiner that it would have been obvious over Inoue’s disclosure to incorporate a flow control layer with a thickness less than or equal to .003 inches into the disposable absorbent article. Claims 9-19 Appellants contend that claims 9 and 15, as well as claims 10-14 and claims 16-19, which depend from claims 9 and 15, respectively, are “non- obvious in view of and patentable over Inoue et al. for the same reasons set forth above with respect to claim 1. That is Inoue et al. fail to show or suggest an absorbent article having a flow control layer between a liner and an absorbent body” (App. Br. 17, 18). Appellants’ argument is not persuasive for the same reasons discussed above with respect to claim 1. Claim 20 The Examiner also rejected claim 20 as unpatentable over Inoue and Van Gompel. Appellants contend that claim 20 is non-obvious over the combined teachings of Inoue and Van Gompel “in that whether considered alone or in combination the references fail to show or suggest an absorbent article having a flow control layer between a liner and an absorbent body” (App. Br. 20), “[a]s explained in detail above with respect to claim 1” (id.). Appellants’ argument is not persuasive for the same reasons discussed above with respect to claim 1. Appeal 2008-5825 Application 10/857,090 13 CONCLUSIONS OF LAW The Examiner has established that a disposable absorbent article having an inner liquid permeable liner, an outer cover, an absorbent body between the liner and the outer cover, and a flow control layer between the liner and the absorbent body would have been obvious over Inoue’s disclosure, as would a disposable absorbent article with a flow control layer less than or equal to 0.003 inches thick. Therefore, we affirm the rejection of claims 1-3 and 7-19 as unpatentable over Inoue, as well as the rejection of claim 20 as unpatentable over Inoue and Van Gompel. However, Inoue does not teach or suggest a flow control layer with apertures between about 1 mm and 10 mm in size. Therefore, we reverse the Examiner’s rejection of claim 4-6 as unpatentable over Inoue. SUMMARY The rejection of claims 1-19 under 35 U.S.C. § 103(a) as unpatentable over Inoue is affirmed with respect to claims 1-3 and 7-19, and reversed with respect to claims 4-6. The rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over Inoue and Van Gompel is affirmed. Appeal 2008-5825 Application 10/857,090 14 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006). AFFIRMED-IN-PART LP CHRISTOPHER M. GOFF ARMSTRONG TEASDALE LLP ONE METROPOLITAN SQUARE SUITE 2600 ST. LOUIS, MO 63102 Copy with citationCopy as parenthetical citation