Ex Parte Zehner et al

Board of Patent Appeals and Interferences

Sep 25, 2007

10011088 (B.P.A.I. Sep. 25, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGIA LYNN ZEHNER,
DUANE GIRARD UITENBROEK, and JOHN PHILIP VUKOS
____________

Appeal 2007-1015
Application 10/011,088
Technology Center 3700
____________

Decided: September 25, 2007
____________

Before THOMAS A. WALTZ, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Examiner’s final rejection of
claims 2-41, the only claims that remain pending in this application. We
have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134.

Appeal 2007-1015
Application 10/011,088

Appellants’ claimed invention is directed to an absorbent article
including a chassis including a biaxial extendable outer cover, a biaxial
extendable body side liner, an absorbent core disposed between the cover
and the liner, first and second leg elastic members, each captured between
the cover and liner along first and second longitudinal sides of the chassis,
respectively, wherein at least one of the longitudinal sides forms a straight
edge in the crotch area of the absorbent article when the article is placed in a
flat, planar orientation. Appellants indicate that the claimed article self
forms seals at natural body hinge points of a wearer (Specification 2).
Claim 2 is illustrative and reproduced below:
2. An absorbent article adapted to be worn by a wearer, the absorbent
article including a front waist area forming a front edge, a back waist area
forming a back edge, and a crotch area disposed between the front and back
waist areas, the absorbent article comprising:
a chassis having opposed first and second longitudinal sides and
opposed first and second lateral sides, the chassis having an original
longitudinal length and an original lateral length, the chassis defining first
and second leg openings and including;
a biaxially extensible outer cover,
a biaxially extensible bodyside liner forming a wearer adjacent
surface,
an absorbent core assembly interposed between the biaxially
extensible outer cover and the biaxially extensible bodyside liner,
a first leg elastic member captured between the biaxially extensible
outer cover and the biaxially extensible bodyside liner along the first
longitudinal side of the chassis and
a second leg elastic member captured between the biaxially extensible
outer cover and the biaxially extensible bodyside liner along the second
longitudinal side of the chassis,

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Application 10/011,088

wherein at least one of the first and second longitudinal sides of the
chassis forms a straight edge in at least the crotch area of the absorbent
article when the absorbent article is in a flat, planar orientation.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Widlund US 4,692,163 Sep. 8, 1987
Newkirk US 5,921,973 Jul. 13, 1999
Blenke US 6,129,720 Oct. 10, 2000
Claims 2, 3, 27, 35, 39, 40, and 41 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Widlund. Claims 4-6 and 31 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Widlund in view of
Newkirk. Claims 19-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Widlund. Claim 34 stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Widlund in view of Newkirk. Claims 2,
7-18, 26, 27, 29, and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blenke in view of Widlund. Claims 25 and 28 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Blenke in view
of Widlund and Newkirk. Claims 31-33 and 36-38 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Blenke in view of Widlund and
Newkirk. We affirm the Examiner’s rejections as to all of the claims
subjected to a rejection over prior art including Blenke as relied upon
evidence, and we reverse the first four stated rejections. This Decision also
includes a Remand. Our reasoning follows.
§ 102(b) Rejection
All of the rejected claims require an absorbent article comprising a
chassis that includes, among other features: (1) a biaxially extensible outer
cover; (2) a biaxially extensible bodyside liner; (3) an absorbent core
interposed between the cover and liner; and (4) first and second leg elastic
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Application 10/011,088

members captured between the biaxially extensible liner and outer cover
along differing longitudinal sides of the chassis.
The Examiner contends that Widlund discloses an absorbent article
including:
A chassis having opposed first and second longitudinal
sides and opposed first and second lateral sides (Figure 1). The
chassis has original longitudinal and lateral length and defines
first and second leg openings (Figures 1, 4, and 8).
The article further includes a biaxially extensible outer
cover 2, a biaxially extensible bodyside liner in that Widlund
discloses in paragraph 5, lines 40-47 elastic ribbons or threads
are applied to the liquid permeable layer 1 transversely and
longitudinally, and this results in contraction of both the inner
liner and cover. When the article is applied to the body, both
the inner liner and cover are biaxially extensible by creating
stretch in the transverse and longitudinal directions, thus the
bodyside liner and outer cover are considered biaxially
extensible. Widlund further discloses an absorbent core 3
interposed between the biaxially extensible outer cover and the
biaxially extensible bodyside liner (col. 5, line 1-4, lines 40-52;
col. 6, lines 28-54; col. 8, line 60 through col. 9, line 2; Figures
4, 8, and 9).
Widlund further discloses first and second leg elastic
member captured between the biaxially extensible outer cover
and the biaxially extensible bodyside liner along the first
longitudinal side of the chassis (Figure 1, elements 15, 18).
Each of the first and second longitudinal sides of the
chassis forms a straight edge in at least the crotch area when the
absorbent article is in a flat, planar, orientation (Figures 1, 4,
and 8) and the first and second leg elastic each include at least
one straight edge along the first and second longitudinal sides
(Figures 1, 4, and 8).
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Appeal 2007-1015
Application 10/011,088

As to claim 40, Widlund shows leg elastic members 32
and 33 along the longitudinal sides of the absorbent article that
provide biaxial stretchability.
Answer 4-5.
The Examiner further maintains that:
Widlund discloses in col. 5, lines 40-60 that elastic
threads 24 are applied to the liquid permeable layer and the
longitudinal threads simultaneously form an edge elastic, which
is shown in Figures 4 and 5. Widlund discloses the elastic
threads are applied to the two outer layers 1 and 2 (col. 5, lines
15-18). Therefore, Widlund discloses leg elastic members
captured between a biaxially extensible outer [cover] and a
biaxially extensible bodyside liner as described above.
Answer 13-14.
Appellants contend that:
The assertion, in the Action, that Widlund discloses leg
elastic members captured between a biaxially extensible outer
cover and a biaxially extensible bodyside liner is not well
founded. In particular, the contention that Widlund discloses
leg elastic members captured between a biaxially extensible
outer cover and a biaxially extensible bodyside liner improperly
ignores that the rejection simultaneously relies on the very same
elastic threads or ribbons in Widlund as both forming the leg
elastic members and the biaxially extensible outer cover and
the biaxially extensible bodyside liner. Clearly, if the elastic
threads or ribbons of the absorbent article of Widlund are
required and included to form a part of the biaxially
extensible outer cover and the biaxially extensible bodyside
liner, respectively, such elastic threads or ribbons are not
also captured between the biaxially extensible outer cover
and the biaxially extensible bodyside liner along the first
and second longitudinal side of the chassis, respectively, as
required by the claimed invention. That is, without the
elastic threads or ribbons, the outer cover and the bodyside liner
of the absorbent article of Widlund have been acknowledged as
not being biaxially extensible. It is respectfully submitted that
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Appeal 2007-1015
Application 10/011,088

it is improper to reject the pending claims based on the elastic
threads or ribbons of Widlund forming both the biaxially
extensible outer cover and the bodyside liner and also
simultaneously being captured between the biaxially extensible
outer cover and the biaxially extensible bodyside liner.
Br. 8.
Hence, a dispositive issue raised by Appellants with regard to the
Examiner’s anticipation rejection is: Has the Examiner established, prima
facie, that Widlund describes an article that includes features that correspond
to all of the limitations respecting the outer cover, bodyside liner, and the
first and second leg elastic members, as required by all of the rejected
claims? We answer this question in the negative for the reasons set forth in
Appellants’ Brief, as reproduced above, and for the reasons set forth in the
Reply Brief (Reply Br. 2-3).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997);
accord Glaxo, Inc. v. Novopharm, Ltd., 52 F.3d 1043, 1047, 34 USPQ2d
1565, 1567 (Fed. Cir. 1995). However, anticipation by a prior art reference
does not require that the reference recognize either the inventive concept of
the claimed subject matter or the inherent properties that may be possessed
by the prior art reference. See Verdegaal Bros., Inc. v. Union Oil Co.,
814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S.
827 (1987).
Anticipation under this section is a factual determination. See In re
Baxter Travenol Labs., 952 F.2d 388, 390, 21 USPQ2d 1281, 1283 (Fed.
Cir. 1991) (citing In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567
(Fed. Cir. 1990).
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Appeal 2007-1015
Application 10/011,088

Here, as emphasized by Appellants in the arguments in the Briefs, the
Examiner has not fairly explained how the provision of the elastic threads or
ribbons of Widlund (24 and 25, Fig. 4), which elements are considered by
the Examiner to be a part of the extensible outer cover and extensible
bodyside liner of Widlund, as well as being a part of the elastic leg
members, can meet the claimed requirement for a leg elastic member that is
captured between the extensible outer cover and the extensible bodyside
liner. In this regard, the Examiner’s references to elastic threads 15 and 18
of prior art Figure 1, elastic threads or ribbons 24 of the embodiment of
Figures 4-7, and the elastic threads 32 and 33 of the Figure 9 embodiment of
Widlund in the explanation of the anticipation rejection does not serve to
explain how any of these three distinct absorbent articles referenced by
Widlund includes features that meet all of the limitations of any of the
rejected claims such that a description of the rejected claimed subject matter
could be said to be found therein.
Accordingly, we reverse the Examiner’s anticipation rejection of
claims 2, 3, 27, 35, 39, 40, and 41 by Widlund, on this record.
§ 103(a) Rejections
Turning to the obviousness rejections, we note that under 35 U.S.C.
§ 103, the factual inquiry into obviousness requires a determination of:
(1) the scope and content of the prior art; (2) the differences between the
claimed subject matter and the prior art; (3) the level of ordinary skill in the
art; and (4) any secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). The analysis supporting
obviousness should be made explicit and should “identify a reason that
would have prompted a person of ordinary skill in the relevant field to
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Appeal 2007-1015
Application 10/011,088

combine the elements” in the manner claimed. KSR Int’l Co. Teleflex, Inc.,
127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
We reverse the Examiner’s § 103(a) rejection over Widlund alone and
the two § 103(a) rejections over Widlund in view of Newkirk given our
determinations respecting Widlund’s teachings above with regard to the
anticipation rejection. This is because the Examiner has not otherwise
identified a persuasive rationale in light of the teachings of Widlund alone or
in combination with Newkirk that would have taught or suggested or
otherwise led one of ordinary skill in the art to an article including the
claimed features with respect to a biaxially extensible outer cover, a
biaxially extensible bodyside liner, and first and second leg elastic members
captured thereby, as further specified by all of the so rejected claims.
Our disposition of the Examiner’s obviousness rejections employing
Blenke in combination with Widlund and Blenke in combination with
Widlund and Newkirk is another matter as set forth below.
Appellants argue rejected claims 2, 7-18, 26, 27, 29, and 30 together
as a group. Accordingly, we select claim 2 as the representative claim on
which we shall decide this appeal as to the obviousness rejection over
Blenke in view of Widlund.
Appellants do not contest the Examiner’s basic determination that
Blenke teaches or suggests an absorbent article corresponding to that
required by representative claim 2 but for the claim requirement for a
straight edge on at least one of the first and second longitudinal sides of the
absorbent article chassis in the crotch area (Answer 8, Br. 13-15). Rather,
Appellants’ principal dispute with the Examiner’s rejection of claims 2, 7-
18, 26, 27, 29, and 30 over Blenke taken with Widlund centers on an alleged
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Appeal 2007-1015
Application 10/011,088

lack of motivation for one of ordinary skill in the art to employ a straight
edge on the longitudinal side of an absorbent article chassis in the crotch
area of Blenke based on the teachings of Widlund with respect to the use of
such a construction of an absorbent article chassis longitudinal side straight
edge in a substantially similar article.1 We are not persuaded of reversible
error in the Examiner’s obviousness rejection by this argument.
In particular, we note that Widlund discloses several absorbent article
embodiments including an embodiment with longitudinal sides of a chassis
having straight edges in the crotch area (Fig. 4) when placed in a flat, planar
orientation and an embodiment wherein the longitudinal sides of a chassis
has a curved edge in the crotch area (Fig. 10). Furthermore, we note that
representative claim 2 places no limitation on the width of the material that
is located in the crotch zone of the absorbent article as seemingly agreed
with by Appellants (Br. 14). Thus, it is our determination that Widlund
furnishes ample evidence that would have suggested that an ordinarily
skilled artisan employ a chassis longitudinal side straight edge, as claimed,
in the absorbent article of Blenke as an alternative to a curved edge in the
crotch region with a reasonable expectation of success in so doing. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR,
127 S. Ct. at 1739, 82 USPQ2d at 1395.

1 The edge is required to be straight in at least the crotch area when the
absorbent article is placed in a flat, planar orientation as set forth in
representative claim 2.
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Appeal 2007-1015
Application 10/011,088

It follows that we shall affirm the Examiner’s obviousness rejection of
claims 2, 7-18, 26, 27, 29, and 30 over Blenke in view of Widlund, on this
record.
§ 103(a) Rejections over Blenke in view of Widlund and Newkirk
Concerning rejected dependent claims 25 and 28, Appellants rely on
their arguments as made against the rejection of independent claim 2 (Reply
Br. 6). Accordingly, as we find these arguments unpersuasive for reasons
set forth above, we shall sustain the Examiner’s obviousness rejection of
claims 25 and 28 over Blenke in view of Widlund and Newkirk.
Concerning rejected claims 31-33 and 36-38, Appellants argue the
claims together as a group. Thus, we select claim 31 as the representative
claim on which we decide this appeal as to these rejected claims.
Claim 31 additionally requires that at least one of the leg elastic
members of the absorbent article is an elastic film material.
Regarding this claimed feature, Newkirk discloses an elastic layer of a
nonwoven fabric that can comprise an elastic film material, including several
polymeric materials that can be used in forming such a film, with the elastic
film being described as being useful in making a composite fabric suitable
for use in diapers (Newkirk, col. 1, ll. 18-22; col. 1, l. 55- col. 2, l. 22; and
col. 5, ll. 13-38). Given this additional disclosure of Newkirk, the Examiner
takes the position that it would have been obvious to one of ordinary skill in
the art at the time of the invention to employ an elastic film material in at
least one of the leg elastic members of the absorbent article of Blenke
(Answer 10-11).
In addition to Appellants’ arguments respecting the chassis
longitudinal side straight edges, which we found unconvincing as set forth
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Appeal 2007-1015
Application 10/011,088

above, Appellants maintain that the leg elastic film material requirement for
at least one of the elastic members as recited in representative claim 33 is
not taught or suggested by the combination of Blenke in view of Widlund
and Newkirk. This is because the Examiner’s reliance on the composite
elastic material of Newkirk as being suggestive of the use of a leg elastic
film material as part of at least one of the elastic members of Blenke is
allegedly misplaced due to the argued absence of a specific disclosure of
using the composite material of Newkirk in that area of an absorbable article
and the added assertion that a composite is not an elastic film material (Br.
15-16; Reply Br. 7-8).
We do not find Appellants’ arguments persuasive of any reversible
error in the Examiner’s obviousness rejection of representative claim 31. In
particular, we note that representative claim 31 employs open “comprising”
language and does not exclude the presence of additional materials, layers,
or other features in the claimed article besides those specifically identified in
claim 31. Thus, Appellants’ arguments as to the difference between a
composite including an elastic film material and an elastic film material are
not found persuasive on this basis alone. Furthermore, even if the rejected
claims excluded the presence of composite materials, we note that the elastic
film component described in Newkirk would have been readily recognized
by one of ordinary skill in the art as a suitable material for use in forming a
leg elastic member of Blenke. In this regard, we note that Blenke teaches
that the leg elastic members (28) can be made from “one or more layers of a
polymeric and/or elastomeric material…” (Blenke, col. 9, ll. 57-65). As
such, Appellants’ arguments respecting this claim feature as patentably
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Appeal 2007-1015
Application 10/011,088

distinguishing representative claim 31 over the applied references are
without merit.
It follows that we affirm the Examiner’s obviousness rejection of
claims 31-33 and 36-38 over Blenke in view of Widlund and Newkirk.
REMAND
We remand this application to the Examiner to consider whether a
§ 103(a) rejection of any or all of claims 3-6, 19-24, 34, 35, and 39-41
should be entered over the combined teachings of Blenke in view of
Widlund with or without Newkirk. For example, we note that dependent
claim 3 requires that “each of the first and second longitudinal sides of the
chassis is a straight edge” and dependent claim 4 requires that “at least one
of the first and second leg elastic members is an elastic film material.” The
Examiner should consider introducing a 103(a) rejection of claim 3 over
Blenke in view of Widlund, and the Examiner should consider introducing a
103(a) rejection of claim 4 over Blenke in view of Widlund and Newkirk in
light of our determinations herein. Similarly, the Examiner should review
claims 5, 6, 19-24, 34, 35, and 39-41 and determine whether these claims
would have been obvious over Blenke in view of Widlund with or without
Newkirk and any other prior art the Examiner may be aware of in light of
our determinations herein.
CONCLUSION
The decision of the Examiner to reject claims 2, 7-18, 26, 27, 29, and
30 under 35 U.S.C. § 103(a) as being unpatentable over Blenke in view of
Widlund; to reject claims 25 and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Blenke in view of Widlund and Newkirk; and to reject
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Appeal 2007-1015
Application 10/011,088

claims 31-33 and 36-38 under 35 U.S.C. § 103(a) as being unpatentable over
Blenke in view of Widlund and Newkirk is affirmed.
The decision of the Examiner to reject claims 2, 3, 27, 35, 39, 40, and
41 under 35 U.S.C. § 102(b) as being anticipated by Widlund; to reject
claims 4-6, and 31 under 35 U.S.C. § 103(a) as being unpatentable over
Widlund in view of Newkirk; to reject claims 19-24 under 35 U.S.C.
§ 103(a) as being unpatentable over Widlund; and to reject claim 34 under
35 U.S.C. § 103(a) as being unpatentable over Widlund in view of Newkirk
is reversed.
In addition to affirming the Examiner's rejection of one or more claims,
this decision contains a remand. 37 C.F.R. § 41.50(e) provides that:
Whenever a decision of the Board includes a remand,
that decision shall not be considered final for judicial review.
When appropriate, upon conclusion of proceedings on remand
before the examiner, the Board may enter an order otherwise
making its decision final for judicial review.
Regarding any affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
"[a]ppellant may file a single request for rehearing within two months of
the date of the original decision of the Board."
The effective date of the affirmance is deferred until conclusion of the
proceedings before the Examiner unless, as a mere incident to the limited
proceedings, the affirmed rejection is overcome. If the proceedings before
the Examiner do not result in allowance of the application, abandonment or a
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Appeal 2007-1015
Application 10/011,088

second appeal, this case should be returned to the Board of Patent Appeals
and Interferences for final action on the affirmed rejections, including any
timely request for rehearing thereof.
AFFIRMED-IN-PART and REMANDED

clj

PAULEY PETERSEN & ERICKSON
2800 WEST HIGGINS ROAD
HOFFMAN ESTATES, IL 60169

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