Ex Parte Woon et alDownload PDFBoard of Patent Appeals and InterferencesMar 26, 200910367568 (B.P.A.I. Mar. 26, 2009) Copy Citation 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). Appeal 2008-5680 Application 10/367,568 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. 2 Appeal 2008-5680 Application 10/367,568 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, 3 Appeal 2008-5680 Application 10/367,568 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 4 Appeal 2008-5680 Application 10/367,568 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 5 Appeal 2008-5680 Application 10/367,568 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.) 6 Appeal 2008-5680 Application 10/367,568 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? 7 Appeal 2008-5680 Application 10/367,568 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.) 8 Appeal 2008-5680 Application 10/367,568 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 9 Appeal 2008-5680 Application 10/367,568 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. 10 Appeal 2008-5680 Application 10/367,568 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 11 Appeal 2008-5680 Application 10/367,568 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.†12 Appeal 2008-5680 Application 10/367,568 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 ….â€). Where 13 Appeal 2008-5680 Application 10/367,568 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 14 Appeal 2008-5680 Application 10/367,568 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.) 15 Appeal 2008-5680 Application 10/367,568 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.) 16 Appeal 2008-5680 Application 10/367,568 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 17 Appeal 2008-5680 Application 10/367,568 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 18 Appeal 2008-5680 Application 10/367,568 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 19 Appeal 2008-5680 Application 10/367,568 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 20 Appeal 2008-5680 Application 10/367,568 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. 21 Appeal 2008-5680 Application 10/367,568 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 structuresâ€) (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 22 Appeal 2008-5680 Application 10/367,568 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. 23 Appeal 2008-5680 Application 10/367,568 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; 24 Appeal 2008-5680 Application 10/367,568 • 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 25 Copy with citationCopy as parenthetical citation