Ex Parte Underhill et al

Board of Patent Appeals and Interferences

Mar 31, 2009

10857090 (B.P.A.I. Mar. 31, 2009)

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).

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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.

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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?

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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
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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:

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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).
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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.
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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).
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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).
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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
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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
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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.

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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.
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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

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ARMSTRONG TEASDALE LLP
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