Ex Parte Woon et al

Board of Patent Appeals and Interferences

Mar 26, 2009

10367568 (B.P.A.I. Mar. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PAUL S. WOON and LIN-SUN WOON
__________

Appeal 2008-5680
Application 10/367,568
Technology Center 3700
__________

Decided:1 March 26, 2009
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a liquid
absorbent article. The Examiner rejected certain claims as anticipated and

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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the remainder of the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The claimed invention is a multi-component liquid absorbent
structure, said to have improved performance as a personal care article such
as a feminine pad. (Spec. 1:10-14.) The article comprises two absorbent
components with adjacent surfaces.
Claims 1-27, which are all the pending claims, are on appeal. The
Examiner rejected the claims as follows:
• claims 1-8, 11-17 and 25-272 under 35 U.S.C. § 102(b) as being
anticipated by Osborn;3
• claims 23 and 24 under 35 U.S.C. § 103(a) as being unpatentable over
Osborn;
• claims 9, 10, 18 and 19 under 35 U.S.C. § 103(a) as being unpatentable
over Osborn in view of Palumbo;4
• claims 21 and 22 under 35 U.S.C. § 103(a) as being unpatentable over
Osborn in view of Trombetta;5 and
• claim 20 under 35 U.S.C. § 103(a) as being unpatentable over Osborn in
view of Mizutani.6
Appellants group the claims for argument as follows:

2 The Examiner included claim 28 in the rejection. However, claim 28 was
canceled.
3 U.S. Patent No. 5,647,862, issued to Osborn, III et al., Jul. 15, 1997.
4 U.S. Patent No. 6,107,539, issued to Palumbo et al., Aug. 22, 2000.
5 U.S. Patent No. 5,827,254, issued to Trombetta et al., Oct. 27, 1998.
6 U.S. Patent No. 5,795,345, issued to Mizutani et al., Aug. 18, 1998.
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claims 1-8, 11-17 and 25-27;
claims 23 and 24;
claims 9, 10, 18 and 19;
claims 21 and 22; and
claim 20. (App. Br. 3-4.)
Appellants refer to these claims in their arguments:
1. A multi-component liquid absorbent structure comprising:

a first liquid absorbent component comprising a coherent, flexible
matrix including stratified layers of fibrous material, the first liquid
absorbent component having a first major surface, a second major
surface, a first total area and a first volume, and

a second liquid absorbent component comprising a layer of a different
liquid absorbent material adjacent the second major surface of the first
liquid absorbent component, the second liquid absorbent component
having a second total area and a second volume

such that the ratio of the second total area to the first total area is
greater than about 3.5 to 1, the ratio of the second volume to the first
volume is greater than about 10 to 1 and the total volume of the liquid
absorbent structure is less than about 130 cm3.

6. A multi-component liquid absorbent structure comprising:

a first liquid absorbent component comprising a coherent, flexible
matrix including stratified layers of fibrous material, the first liquid
absorbent component having a first major surface, a second major
surface, a first total area and a first liquid absorbent capacity, and

a second liquid absorbent component comprising a layer of a different
liquid absorbent material adjacent the second major surface of the first
liquid absorbent component, the second liquid absorbent component
having a second total area and a second liquid absorbent capacity,

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such that the ratio of the second total area to the first total area is
greater than about 3.5 to 1, the ratio of the second liquid absorbent
capacity to the first liquid absorbent capacity is greater than about 10
to 1 and an overall liquid absorbent capacity of the liquid absorbent
structure is greater than about 35 grams.

7. The multi-component liquid absorbent structure of claim 6, wherein
the first absorbent component comprises interstitial spaces and the
interstitial spaces at the second major surface of the first liquid
absorbent component are configured to transfer liquid substantially
along the length of the first liquid absorbent component in addition to
releasing liquid to the second liquid absorbent component.

9. The multi-component liquid absorbent structure of claim 6, wherein
the first liquid absorbent component provides a distribution of
interstitial spaces that are smaller in size adjacent the second major
surface and larger in size adjacent the first major surface.

11. A sanitary napkin having a longitudinal centerline and improved
liquid management based on the utility of an absorbent multi-
component structure, the sanitary napkin comprising:

a liquid permeable body-facing layer;
a liquid impermeable garment-facing layer; and
a multi-component absorbent structure between the liquid permeable
body-facing layer and the liquid impermeable garment-facing layer,
the multi-component absorbent structure comprising:

a first liquid absorbent component in which at least a portion of the
component is positioned on the longitudinal centerline of the sanitary
napkin, the first liquid absorbent component comprising a coherent,
flexible matrix of fibrous materials forming generally stratified layers,
the first liquid absorbent component having a first major surface
adjacent the liquid permeable body facing layer, a second major
surface opposite the first major surface, a first total area and a first
liquid absorbent capacity, and

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a second liquid absorbent component comprising a layer of a different
liquid absorbent material adjacent the second major surface of the first
liquid absorbent component, the second liquid absorbent component
having a second total area and a second liquid absorbent capacity such
that the ratio of the second total area to the first total area is greater
than about 3.5 to 1 and the ratio of the second liquid absorbent
capacity to the first liquid absorbent capacity is greater than about 10
to 1 and a total liquid absorbent capacity of the multi-component
liquid absorbent structure is greater than about 35 grams.

20. The sanitary napkin of claim 11, further comprising a channel in the
second liquid absorbent component spanning at least a portion of the
periphery of the first liquid absorbent component.

21. The sanitary napkin of claim 11, wherein the generally stratified
layers of the first liquid absorbent component comprises at least two
layers of a fibrous nonwoven web.

22. The sanitary napkin of claim 21, wherein at least one of the layers of a
fibrous nonwoven web is selected from bonded-carded webs, air-laid
webs, meltblown fiber webs, spunbonded filament webs, hydraulically
entangled fibrous webs, mechanically entangled fibrous webs and
combinations thereof.

23. The sanitary napkin of claim 11, wherein the first liquid absorbent
component overlays at least about 50% of a stain area in the second
liquid absorbent component generated by artificial menses liquid
about 10 minutes after an approximately 5 mL insult introduced at the
center of the first major surface of the first liquid absorbent
component.

24. A thin, efficient liquid absorbent structure comprising:

a first liquid absorbent component comprising a coherent, flexible
matrix including stratified layers of fibrous materials, the first liquid
absorbent component having a first major surface, a second major
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surface, a first total area, thickness and volume and a first liquid
absorbent capacity, and

a second liquid absorbent component comprising a layer of a different
liquid absorbent material adjacent the second major surface of the first
liquid absorbent component, the second liquid absorbent component
having a second total area, thickness and volume and a second liquid
absorbent capacity,

wherein the thickness of first and second liquid absorbent component
is each between about 1 mm and about 2 mm, the ratio of the second
liquid absorbent capacity to the first liquid absorbent capacity is
greater than about 10; the ratio of the second total area to the first total
area is greater than about 3.5 to 1, the ratio of the second volume to
the first volume is greater than about 10 to 1 and the total volume of
the liquid absorbent structure is less than about 30 cm3;

such that the first liquid absorbent component retains less than about
30% of an artificial menses liquid about 1 minute after an
approximately 10 mL insult.

ANTICIPATION
The Anticipation Issues
The Examiner’s position is that Osborn disclosed all the elements of
the absorbent structure of claims 1-8, 11-17 and 25-27. (Ans. 4-7.)
Appellants contend that Osborn’s structure is different from the
claimed structure, and stress the “adjacent” positioning of the first and
second absorbents as recited in claim 1. (App. Br. 4-5.) Appellants explain
that while small portions of Osborn’s two absorbents are in contact with
each other at their ends, the claim term “adjacent” requires the absorbents to
be entirely in direct contact. (App. Br. 6.)
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Appellants also dispute whether Osborn’s first liquid absorbent
component is a coherent flexible matrix having stratified layers of fibrous
material (App. Br. 6-7), and whether Osborn disclosed a second liquid
absorbent component prepared from a different liquid absorbent material
(App. Br. 7).
For claims 7 and 16, Appellants argue that the Examiner mistakenly
attributed the purpose of Osborn’s fluid directing component 48 to Osborn’s
absorbent strip 46 or absorbent core 42, and did not have evidence that
Osborn’s first absorbent had “interstitial spaces” that were configured to
transfer liquid substantially along its length, and to release liquid to the
second absorbent component. (App. Br. 7-8.) Appellants contend their
claims exclude the fluid directing strip required by Osborn. (App. Br. 8.)
The issues with respect to this rejection are:
were Osborn’s first and second absorbents correctly found “adjacent,”
although a fluid directing strip partially intervened between them;
was Osborn’s first absorbent a coherent flexible matrix with stratified
layers of fibrous material;
did Osborn disclose a second absorbent prepared from a material
different from the first absorbent; and
did Osborn’s first absorbent have “interstitial spaces” configured to
transfer liquid substantially along its length, and to release liquid to the
second absorbent component?

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Findings of Fact Relating to Anticipation
1. Osborn disclosed a sanitary napkin designed so that the entire
absorptive capacity of the napkin would be used before liquids
reached the longitudinal sides of the napkin. (Col. 2, ll. 14-18.)
2. Osborn’s napkin was flexible and conformed to the wearer’s body.
(Col. 2, ll. 19-21.)
3. Osborn’s napkin comprised an absorbent strip 46 positioned between
a topsheet 38 and an absorbent core 42, and a fluid or liquid directing
strip 48 between absorbent strip 46 and absorbent core 42. (Col. 4, ll.
63-67; see Figs. 1-2.)
4. Osborn’s absorbent strip 46 corresponds to Appellants’ “first liquid
absorbent component,” and Osborn’s absorbent core 42 corresponds
to Appellants’ “second liquid absorbent component.” (Ans. 4.)
5. Osborn’s absorbent core 42 collected and contained discharges. (Col.
6, ll. 29-30.)
6. Osborn’s absorbent core 42 was made of fibrous materials such as
cellulosic fibers, hydrogel materials, and others. (Col. 6, ll. 46-63.)
7. Osborn’s absorbent strip 46 transported discharges to the underlying
fluid directing strip 48 and to the ends of the absorbent core 42. (Col.
8, ll. 43-48.)
8. Suitable materials for the absorbent strip 46 “include, but are not
limited to” any of those materials used in the absorbent core,
including fibers, and may be multiple layers or laminates. (Col. 8, l.
65 – col. 9, l. 12.)
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9. Osborn Fig. 1 showed absorbent strip 46 and absorbent core 42 in
direct contact at the ends of absorbent strip 46.
10. Osborn Fig. 1 and Fig. 2 show the relative positions of absorbent strip
46 and absorbent core 42.

Principles of Law Relating to the Anticipation Issues
A claim is anticipated if a complete description of every element of a
claimed invention is described, either expressly or inherently, within the four
corners of a single prior art document, such that a person of ordinary skill in
the art could practice the invention without undue experimentation.
Advanced Display Systems, Inc. v. Kent State University, 212 F.3d 1272,
1282 (Fed. Cir. 2000). “Extrinsic evidence may be considered when it is
used to explain, but not expand, the meaning of a reference.” In re Baxter
Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citation omitted). “To
anticipate a claim, a prior art reference must disclose every limitation of the
claimed invention, either explicitly or inherently. Anticipation is an issue of
fact, and the question whether a claim limitation is inherent in a prior art
reference is a factual issue.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997) (citations omitted). The test for anticipation “is not an ‘ipsissimis
verbis’ test.” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
“During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow.” In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989). “‘Comprising’ is a term of art used in claim language
which means that the named elements are essential, but other elements may
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be added and still form a construct within the scope of the claim.”
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).

Analysis of the Anticipation Issues
Appellants dispute (i) the Examiner’s interpretation of “adjacent;”
(ii) the finding that Osborn disclosed “a first liquid absorbent component
comprising a coherent, flexible matrix including stratified layers of fibrous
material;” (iii) the finding that Osborn disclosed a “second liquid absorbent
component comprising a layer of a different liquid absorbent material;” and
(iv) the finding that Osborn disclosed the “interstitial spaces” of claims 7
and 16.
(i). “Adjacent” describes Osborn’s absorbents 42 and 46, which are
partially separated by intervening fluid distribution strip 48.
Appellants construe “adjacent” to mean that the first and second
absorbents are “next to or in direct contact with one another without an
intervening fluid directing layer.” (App. Br. 6.) Applying that meaning,
Appellants argue that Osborn’s absorbents 42 and 46 are not adjacent
because fluid directing strip 48 partially intervenes between them. (Id.) The
Examiner responded that Appellants’ interpretation of “adjacent” was too
narrow, relying in part on the court’s interpretation of “adjacent” in Free
Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343 (Fed. Cir. 2005),
(Ans. 13.) We agree. The term should be assigned its ordinary meaning,
and understood as broadly as reasonable in light of the specification. Zletz,
893 F.2d at 321.
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Contrary to Appellants’ interpretation of adjacent, things can be
adjacent when not in direct contact. See Webster’s Third New International
Dictionary of the English Language Unabridged 26 (2002), quoted in Free
Motion, 423 F.3d at 1349 n.3. The ordinary meaning of adjacent describes
things that are “nearby but not touching,” as well as things that are
“’relatively near and having nothing of the same kind intervening.’” (Id.)
Those definitions are consistent with the Examiner’s finding that Osborn
disclosed adjacent absorbents 42 and 46, even with fluid directing strip 48
intervening between part of the adjacent surfaces. (FF10.) Appellants have
not pointed to any express definition in the Specification inconsistent with
this interpretation.
Appellants acknowledge that Osborn’s fluid directing strip 48 does
not entirely separate absorbents 42 and 46, but argue that the claims exclude
arrangements where only a “portion” is in direct contact and adjacent under
Appellants’ interpretation. (App. Br. 6.) Even if adjacent required “direct
contact,” which it does not, the claims would be open to any proportion of
direct contact. Appellants use “comprising” at three transition points in
claim 1. Thus, Osborn anticipates even under Appellants’ direct contact
theory because portions of Osborn’s absorbents are in direct contact, and the
claims are open to the presence of other objects in the article. (FF9.)
Genentech, 112 F.3d at 501. Claim 25 recites that an entire surface on one
absorbent is adjacent the other absorbent; under the ordinary meaning of
adjacent, that is what Osborn disclosed, notwithstanding partially
intervening fluid distribution strip 48, because the absorbent layers of
Osborn’s article are “nearby but not touching” and “relatively near and
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having nothing of the same kind intervening.” See Free Motion, 423 F.3d at
1349 n.3.
(ii). Osborn disclosed “a first liquid absorbent component comprising a
coherent, flexible matrix including stratified layers of fibrous material.”
The Examiner found that Osborn described absorbent strip 46 having
the claimed matrix structure at col. 8, l. 64 – col. 9, l. 12. (Ans. 14-15.)
Appellants dispute the finding by saying they are “unable to find” a teaching
that recites the language claimed. (App. Br. 6-7.) We agree that Osborn’s
“conformable” absorbent strip is a coherent and flexible matrix. (FF2, FF8.)
Osborn described the first absorbent component as “multiple layers or
laminates of such material” which is what “stratified” means. (FF8.) The
cited passage in Osborn described “fibrous material” as including things
such as “tissue paper” which is fibrous by nature, as well as “cross-linked
cellulose fibers,” and others. (FF8.) Section 102 does not require that a
reference use the identical words of a claim to anticipate. See Bond,
910 F.2d at 832.
Appellants allege the Examiner “has not pointed out where the
limitations of [claims 2-4 and 12-14] are taught or suggested in Osborn.”
(App. Br. 7.) We disagree; the Examiner cited to Osborn at col. 8, l. 64 –
col. 9, l. 12 (Ans. 14) and specifically addressed certain of these claims on
page 3 of the Answer. Appellants do not deny that Osborn taught the
limitations.
(iii). Osborn disclosed a “second liquid absorbent component comprising a
layer of a different liquid absorbent material.”
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The Examiner found Osborn’s absorbent core 42 corresponded to the
claimed “second liquid absorbent component,” having a different material
from the first absorbent component 46. (Ans. 4.) Although they
acknowledge that Osborn “suggest[s] that the material may be different,”
Appellants argue that a “positive direction” to use different materials is
required for Osborn to anticipate. (App. Br. 7.) Osborn taught that
“materials for the absorbent strip 46 ‘include, but are not limited to’ any of
those materials used in the absorbent core such as . . . .” (FF8, emphasis
added.) That is, Osborn taught articles having different absorbent materials
in the strip and core.
(iv). Claim 7 requires that the first absorbent component comprise
“interstitial spaces” configured to transfer liquid substantially along its
length, and to release liquid to the second absorbent component.
The Examiner found that Osborn’s absorbent 46, corresponding to the
first absorbent component, comprised interstitial spaces configured to
transfer liquid substantially along its length and to release liquid to the
absorbent core 42, citing Osborn at col. 10, ll. 1-10. (Ans. 6.)
Appellants argue that the Examiner erred by pointing to Osborn’s
“description of the purpose of the fluid directing component 48, not the
absorbent strip [46].” (App. Br. 7.) We agree that the lines the Examiner
cited describe the function of the fluid directing component 48, but we do
not agree this is a reason to reverse the rejection. Osborn assigned liquid
transporting functions to absorbent strip 46. See Osborn, col. 8, ll. 35-38
(“The means for directional fluid distribution 44 comprises: (1) a liquid
transporting component such as an absorbent strip 46 ….”). Where
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Osborn’s fluid directing component 48 intervenes between absorbent strip
46 and absorbent core 42 as shown in Fig. 1, it slows absorbent strip 46 from
releasing liquid to absorbent core 42 and the strip transfers liquid along its
length to the ends. In the passage the Examiner cited, Osborn explained that
liquid is transferred substantially along the length of absorbent strip 46 until
reaching the ends of the strip past component 48, where the liquid is then
released to core 42. Put another way, the fact that fluid directing component
48 is effective evidence that Osborn’s absorbent 46 performs the functions
recited in Appellants’ claim 7. We therefore find that Osborn’s absorbent 46
had the functional properties recited for Appellants’ first absorbent
component in claim 7. (FF7.) Appellants’ argument is that the Examiner
pointed to the wrong part of Osborn’s disclosure, but Appellants do not
dispute the Examiner’s finding that “interstitial spaces” in Osborn’s article
perform the recited function.
“A patent applicant is free to recite features of an apparatus either
structurally or functionally. . . . [But] choosing to define an element
functionally, i.e., by what it does, carries with it a risk.” Schreiber, 128 F.3d
at 1478. The Examiner’s evidence shows that Osborn’s absorbent 46 had
the limitations claimed, and “the burden shifted to [Appellants] to show that
the prior art structure did not inherently possess the functionally defined
limitations of [the] claimed apparatus.” Id.

OBVIOUSNESS
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The Examiner entered several obviousness rejections addressing
particular claims. We consider the rejections in the order Appellants briefed
them.

Findings of Fact Relating to Obviousness
Osborn
11. Osborn disclosed two embodiments for fluid directing strip 48: the
strip could be impervious or semi-pervious to liquid. (Col. 10, ll. 7-
10.)

Trombetta
12. Trombetta’s disclosure concerned disposable absorbent articles such
as incontinence pads, incontinence briefs, diapers, and sanitary
napkins. (Col. 4, ll. 3-19.)
13. Trombetta’s absorbent article had a topsheet, a fluid acquisition
component 30, and a fluid absorbent core 25. (Col. 4, ll. 20-36.)
14. Trombetta’s fluid acquisition component 30 comprised two distinct
layers 31 and 32. (Col. 4, ll. 37-46.)
15. Fluid acquisition component 30 accepted a high rate of fluid intake,
efficiently transported fluids over and into the absorbent core, and
drained substantially completely into the absorbent core in order to
remain empty for subsequent fluid loadings. (Col. 7, ll. 48-53.)
16. Fluid acquisition component layers 31 and 32 could comprise
nonwoven webs of fibers such as bonded carded webs, spunbonded
webs, meltblown webs, and others. (Col. 8, l. 62 – col. 9, l. 15.)
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Palumbo
17. Palumbo described a disposable absorbent article comprising a fluid
acquisition/distribution region and at least one fluid storage region.
(Col. 2, ll. 57-67.)
18. The goal of the invention was to achieve good skin dryness for the
wearer. (Col. 2, ll. 44-50.)
19. Palumbo’s invention could be applied to feminine hygiene devices.
(Col. 3, ll. 42-45.)
20. Palumbo described “combining acquisition material with high pore
openings on top of a layer [or] layers with smaller pore openings on
top of a highly absorbent material layer.” (Col. 14, ll. 18-22.)
21. The Examiner found that Palumbo recognized the “pore size gradient”
as a result effective variable at col. 14, l. 19 – col. 20, l. 9. (Ans. 11.)
22. According to Palumbo, “[t]he key feature of the invention is to
arrange the materials in the most effective way, such that the fluid is
drained away from the surface of the absorbent article to the ultimate
storage material, without retaining residual moisture in the layer next
to the wearer’s skin.” (Col. 14, ll. 56-60.)

Mizutani
23. Mizutani described a sanitary napkin with longitudinal grooves
designed to suppress staining and provide enhanced fit to the wearer’s
body. (Col. 1, ll. 36-45; col. 2, ll. 6-21.)

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Principles of Law Relating to Obviousness
A patent may not be obtained . . . if the differences between the
subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.

35 U.S.C. § 103(a).
Obviousness is a question of law based on fact findings. The scope
and content of the prior art are determined; differences between the prior art
and the claims at issue are ascertained; the level of skill in the art is resolved;
and objective evidence of nonobviousness is considered. Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966). Against that background, the
obviousness or nonobviousness of the subject matter is determined. Id.; In
re Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006).

Issues and Analysis
Claims 23 and 24
The Examiner found that Osborn did not literally disclose the overlay
stain pattern recited in claim 23 “about 10 minutes after an approximately
5 mL insult.” (Ans. 8.) Instead, the Examiner found that the arrangement of
absorbent components in Osborn’s article shown in Fig. 1 is such that the
first absorbent component (46) overlays at least about 50% of a stain area of
the second liquid absorbent (42), assuming the insult is delivered to the
center of the absorbent article. (Id.) Based on that structural finding, the
Examiner concluded that if Osborn’s article were subjected to the liquid test
recited in claim 23, it would show the overlay pattern claimed. Considering
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the stained article of claim 23 as a “product-by-process,” the Examiner put
Appellants to the test of showing that Osborn’s article did not function as the
article in claim 23 is claimed. (Id.)
Appellants argue that Osborn’s fluid directing component 48 (between
absorbents 46 and 42) must be taken into account because it intervenes in the
transfer of fluid from one absorbent to the other. (App. Br. 9.) Appellants
explain that the impermeable fluid directing component would force the
stain to the outer edges of the second absorbent. (Id.) Appellants argue that
if the fluid directing strip is semi-permeable “as the Examiner implies,” it
should not be so permeable that it does not perform the function of directing
the fluid toward the ends of the article. (Id.) Appellants thus conclude that
“it is highly unlikely that the first absorbent strip will cover at least 50% of
the stain.” (Id.)
The Examiner pointed out that Osborn disclosed an embodiment in
which strip 48 can allow fluid to permeate through to the core. (Ans. 16.)
Osborn taught that strip 48 could be semi-pervious to liquid. (FF11.) We
agree with the Examiner there is sufficient evidence that when Osborn’s
article has the semi-pervious component 48, a stain would form on absorbent
core 42 where fluid passes through component 48. The Examiner had a
reasonable basis for concluding that Osborn’s first absorbent would likely
cover at least 50% of the stain, shifting the burden to Appellants to provide
rebuttal arguments or evidence. We do not find Appellants’ argument
persuasive in the face of the evidence.
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
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characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

In re Swinehart, 439 F.2d 210, 213 (CCPA 1971), quoted in Schreiber,
128 F.3d at 1478. The Swinehart principle is applicable to obviousness
situations where a difference between the claim and the prior art might be
proved by test evidence. In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellants also argue that Osborn lacks at least three features of claim
11, from which claim 23 depends (App. Br. 9), but rely on the same
arguments they presented with respect to claim 1. (Id. at 4.) Appellants also
traverse the rejection of claim 24 solely by referencing their earlier
arguments about claims 1 and 11. (Id. at 9.) We agreed with the Examiner
that Osborn anticipated claim 11, which Appellants grouped with claim 1
without separate argument. We do not find Appellants’ reference to
arguments about anticipated claims 1 and 11 persuasive of nonobviousness.

Claims 9, 10, 18 and 19
Claim 9 further limits the absorbent structure of claim 6, by requiring
that the first liquid absorbent component provides a distribution of
interstitial spaces that are smaller in size adjacent the second major surface
and larger in size adjacent the first major surface.
The Examiner found that Osborn disclosed the invention as claimed
but for a disclosure of the size relationship of interstitial spaces. (Ans. 10.)
Palumbo taught that a pore size gradient in an absorbent component
facilitated fluid transfer from a rapid wicking acquisition layer to a slower
wicking retention layer. (FF20.) The Examiner found that Palumbo
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recognized pore size as a “result effective variable” for liquid transport, and
concluded it would have been obvious to provide Osborn’s article with a
pore size gradient as taught by Palumbo. (FF21.) “Doing so would
[provide] a means for efficiently directing fluid away from the surface of the
absorbent article to prevent discomfort for the user.” (Ans. 11.)
Appellants argue that the Examiner did not say “why” one would have
been motivated to use a pore size gradient in Osborn’s first absorbent strip.
(App. Br. 10.) We disagree. The Examiner identified preventing a user’s
discomfort as the motivation for modifying Osborn’s article with Palumbo’s
gradient. (Ans. 11.) So modified, the surface of Osborn’s first absorbent
strip closest to the body would have been a rapid wicking acquisition layer.
(FF22.) We see no error in the Examiner’s finding that efficiently directing
fluid away from the surface, i.e., rapid wicking, would have been expected
to prevent user discomfort.
Appellants argue that even if the teachings of Palumbo and Osborn
were combined, the resulting article would still have a fluid directing layer.
(App. Br. 10.) As already discussed in the context of the anticipation
rejection, Osborn’s two absorbents were adjacent even with the fluid
directing strip between them.
Appellants do not argue claims 10, 18 or 19 separately.
Claims 21 and 22
Claim 21 further limits the sanitary napkin of claim 11 so that the
stratified layers of the first liquid absorbent comprise at least two layers of a
fibrous nonwoven web. The Examiner found this feature missing from
Osborn. (Ans. 11.) However, Trombetta described an absorbent article with
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a “fluid acquisition component 30, and a fluid absorbent core 25.” (FF13.)
Trombetta’s fluid acquisition component 30 comprised a first layer 31 and a
second layer 32, both of fibrous nonwoven material. (FF14.) Trombetta’s
fluid acquisition system had the advantage of being able to acquire and drain
liquid surges into the underlying absorbent core. (FF15.) Given that
advantage, the Examiner concluded it would have been obvious to modify
Osborn’s first absorbent component using Trombetta’s layered fibrous
nonwoven fluid acquisition system. (Ans. 11-12.)
Appellants argue that Trombetta cannot be combined with Osborn.
(App. Br. 11.) That is, because Trombetta’s first absorbent layer functioned
to drain liquid surges into an underlying core layer, and Osborn taught
separating the layers, the combination “is clearly contrary to the structure
taught by Trombetta.” (App. Br. 11.) First, the “separating the layers”
characterization oversimplifies Osborn. Osborn taught that the first
absorbent layer released fluid into the underlying absorbent core, whether by
conveying fluid to the ends of the first absorbent (the impervious fluid
directing strip embodiment) or by a mix of conveying fluid to the ends and
allowing some fluid through the length of the first absorbent (the semi-
pervious fluid directing strip embodiment). (FF11.) Second, the Examiner
concluded that improvement of Osborn’s first absorbent layer, not
Trombetta’s, would have been obvious. The Examiner found the
modification would have accelerated the rate at which the Osborn article
would acquire and transfer fluid. We agree. The proper focus is on the
Examiner’s prima facie conclusion that it would have been obvious to
improve Osborn’s article.
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Whether the modification to Osborn would have been “contrary to the
structure taught by Trombetta” has little bearing on whether it would have
been obvious to adapt Trombetta’s teachings to improving Osborn’s first
absorbent layer. Modifying Osborn’s article would have had no effect on
Trombetta’s article at all. To the extent Appellants mean that the structures
were incompatible, references need not be capable of physical combination
in order to show obviousness. In re Etter, 756 F.2d 852, 859 (Fed. Cir.
1985) (in banc); see also, In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures”) (emphasis in original).
Claim 22 lists kinds of fibrous nonwoven webs for the layers, which
the Examiner found would have been obvious to use, as they were listed in
Trombetta. (Ans. 12.) Appellants have not argued claim 22 separately, and
we conclude they have not rebutted the prima facie case for obviousness.

Claim 20
Claim 20 further limits the sanitary napkin of claim 11 by requiring “a
channel in the second liquid absorbent.”
The Examiner rejected claim 20 as obvious over the combined
teachings of Osborn and Mizutani. (Ans. 12 and 18-19.) The Examiner
found that Osborn disclosed Appellants’ invention “substantially as
claimed,” but for the channel described in claim 20. (Ans. 12.) Mizutani
described a sanitary napkin with longitudinal grooves designed to suppress
staining and provide enhanced fit to the wearer’s body. (FF23.) Based on
Mizutani’s teaching of the advantages of grooves or channels, the Examiner
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concluded that modifying Osborn’s article by adding Mizutani’s channel
would have been an obvious modification for one of skill in the art at the
time of the invention. (Id.)
Appellants dispute that Osborn disclosed the invention substantially as
claimed, but do not dispute the obviousness of the channel modification.
(App. Br. 12.) That is, Appellants traverse the rejection only by revisiting
their arguments that (1) Osborn did not disclose a second absorbent adjacent
a first absorbent, (2) Osborn’s first absorbent was not a coherent flexible
matrix having stratified layers of fibrous material, and (3) the claims require
a second absorbent of a different material than the first. (Id.) We have
already discussed our agreement with the Examiner’s findings that Osborn
did disclose those limitations. We agree with the Examiner’s findings
concerning the combination of Osborn and Mizutani, and we conclude that
Appellants did not rebut the prima facie case of obviousness for claim 20.

CONCLUSIONS OF LAW
Osborn’s first and second absorbent components were adjacent.
Osborn’s first absorbent was a coherent flexible matrix with stratified
layers of fibrous material.
Osborn disclosed a second absorbent prepared from a material
different from the first absorbent.
Osborn’s first absorbent had “interstitial spaces” configured to
transfer liquid substantially along its length, and to release liquid to the
second absorbent component.
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The factually unrebutted evidence supports a conclusion that Osborn’s
article would show the stain pattern recited in claim 23 “about 10 minutes
after an approximately 5 mL insult.”
Palumbo suggested providing Osborn’s first liquid absorbent
component with a distribution of interstitial spaces that are smaller in size
adjacent the second major surface and larger in size adjacent the first major
surface, and the modification would have been obvious to one of ordinary
skill in the art at the time of Appellants’ invention.
Trombetta suggested modifying Osborn’s first absorbent layer so that
the stratified layers of the first liquid absorbent comprise at least two layers
of a fibrous nonwoven web, and the modification would have been obvious
to one of ordinary skill in the art at the time of Appellants’ invention.
Mizutani suggested modifying Osborn’s second absorbent layer with a
channel, and the modification would have been obvious to one of ordinary
skill in the art at the time of Appellants’ invention.

SUMMARY
We affirm the rejection of
• claims 1-8, 11-17 and 25-27 under 35 U.S.C. § 102(b) as being anticipated
by Osborn;
• claims 9, 10, 18 and 19 under 35 U.S.C. § 103(a) as being unpatentable
over Osborn in view of Palumbo;
• claim 20 under 35 U.S.C. § 103(a) as being unpatentable over Osborn in
view of Mizutani;
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• claims 21 and 22 under 35 U.S.C. § 103(a) as being unpatentable over
Osborn in view of Trombetta; and
• claims 23 and 24 under 35 U.S.C. § 103(a) as being unpatentable over
Osborn.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc
KIMBERLY-CLARK WORLDWIDE, INC.
Catherine E. Wolf
401 NORTH LAKE STREET
NEENAH WI 54956

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