Ex Parte Zhao et al

Board of Patent Appeals and Interferences

Feb 14, 2012

11713960 (B.P.A.I. Feb. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/713,960 03/05/2007 Jean Jianqun Zhao 10735 3165
27752 7590 02/14/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
ANDERSON, CATHARINE L
ART UNIT PAPER NUMBER
3764
MAIL DATE DELIVERY MODE
02/14/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEAN JIANQUN ZHAO, BRUCE WILLIAM LAVASH,
ANN-MARIE VENTURA, and DENISE JEAN BIEN
__________

Appeal 2010-010615
Application 11/713,960
Technology Center 3700
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to a
feminine hygiene device. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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Statement of the Case
The Claims
Claims 1, 4-6, 9-19, and 23-27 are on appeal. Claim 1 is
representative and reads as follows:
1. A feminine hygiene device comprising:
a topsheet;
a backsheet;
an absorbent core disposed between said topsheet and
said backsheet, said absorbent core comprising absorbent
material, having a core longitudinal axis, and having a
planar configuration, wherein at least a portion of said
absorbent core that is generally aligned with said core
longitudinal axis comprises structural features selected from
the group consisting of slits intersecting said core
longitudinal axis and spaced apart from one another,
corrugations approximately orthogonal to the core
longitudinal axis and extending across the core longitudinal
axis, nodules comprised of tented portions of said absorbent
core said tented portions having an open interior, and tufts
wherein the fraction of fibers in said tufts oriented
orthogonal to the planar configuration of said absorbent core
is greater in said tufts than in adjacent non-tufted areas; and
an elastic member, said elastic member spanning at
least a portion of said absorbent core comprising said
structural features, said elastic member operatively related to
said absorbent core, said elastic member generally aligned
with said core longitudinal axis.

The issues

A. The Examiner rejected claims 1, 4, 5, 10-19, and 23-27 under 35
U.S.C. § 103(a) as obvious over Shimoe
1
and Raidel
2
(Ans. 3-5).

1
Shimoe et al., US 6,464,678 B2, issued Oct. 15, 2002.
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B. The Examiner rejected claims 1, 6, 10-19, and 23-27 under 35 U.S.C.
§ 103(a) as obvious over Shimoe and Tanzer
3
(Ans. 5-6).
C. The Examiner rejected claims 1, 9-19, and 23-27 under 35 U.S.C. §
103(a) as obvious over Shimoe and Osborn, III
4
(Ans. 6-7).
A. 35 U.S.C. § 103(a) over Shimoe and Raidel
The Examiner finds that “Shimoe discloses a hygiene device
comprising a topsheet 2, a backsheet 3, an absorbent core 4 and an elastic
member 6 aligned with the longitudinal axis of the core” (Ans. 3). The
Examiner finds that Shimoe teaches that the “absorbent core 4 is folded at a
fold axis in the middle section 4A of the absorbent core, and the absorbent
core is deformed away from the fold axis along a fold line” (id.). The
Examiner finds that “Raidel teaches an absorbent core 16 having a plurality
of slits 18 therein . . . . The slits comprise a plurality of pairs of slits that
intersect each other orthogonally . . .The slits are located in the center of the
absorbent core, and therefore intersect the longitudinal axis of the core,” (id.
at 4).
The Examiner finds it obvious “to provide the absorbent core of
Shimoe with the slits taught by Raidel, to provide the absorbent core with
extensibility and the ability to conform comfortably to the wearer” (id.).
Appellants “submit that if the slits of Raidel were employed in the
absorbent core of Shimoe in the manner being taught and claimed by the
present invention, the elastic member that runs along the longitudinal axis of

2
Raidel et al., US 2007/0135787 A1, published Jun. 14, 2007.
3
Tanzer, US 7,137,971 B2, issued Nov. 21, 2006.
4
Osborn, III et al., US 5,824,004, issued Oct. 20, 1998.
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the Shimoe diaper core would likely counteract any extensibility potentially
enabled by the slits since the elastic member is secured under tension” (App.
Br. 7).
Appellants contend that “the elastic member would likely diminish or
eliminate the intended function of the slits as taught by Raidel. In this
regard, the respective disclosures teach away from their combination” (id).
Appellants contend that the “Examiner failed to address claims 23-27
with any specificity that could enable a rebuttal. And this type of conclusory
rejection is impermissible” (id. at 8).
In view of these conflicting positions, we frame the obviousness issue
before us as follows: Does the evidence of record support the Examiner‟s
conclusion that Shimoe and Raidel render claim 1 obvious?
Findings of Fact
1. Shimoe teaches that “diaper 1 basically comprises a liquid-
pervious topsheet 2, a liquid-impervious backsheet 3 and a mat-like liquid-
absorbent core 4 disposed between these sheets 2, 3 and bonded to the inner
surface of at least one of these sheets 2, 3” (Shimoe, col. 2, ll. 58-61).
2. Shimoe teaches that
diaper 1 is further provided between the front waist region
20 and the rear waist region 22 with a single first elastically
stretchable member 6 extending across a middle zone 4a of
the core 4 and a pair of second elastically stretchable
members 7 extending across the transversely opposite side
zones 4b longitudinally of the diaper 1, respectively.

(Shimoe, col. 3, ll. 7-13.)

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3. Figure 1 of Shimoe is reproduced below:

“FIG. 1 is a perspective view showing one embodiment of a partially
cutaway disposable diaper” (Shimoe, col. 2, ll. 41-42).
4. Raidel teaches “an absorbent article which is extensible and
highly conformable to the body of the wearer. Furthermore, the present
invention provides an extensible and highly conformable absorbent layer for
an absorbent article which efficiently utilizes the absorbent capacity of the
absorbent layer” (Raidel 1 ¶ 0006).
5. Raidel teaches that the
absorbent layer is prepared from an absorbent nonwoven
web having a first plurality of slits with a first orientation
and a second plurality of slits with a second orientation,
wherein the first orientation is different from the second
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orientation. The first plurality of slits and the second
plurality of slits are at least partially through the absorbent
nonwoven web, and the second plurality of slits at least
partially intersects the first plurality of slits in a manner such
that where the first and second plurality of slits intersect the
first and second plurality of slits combine to form apertures
in the absorbent nonwoven web. The first plurality of slits
may be non-linear and the second plurality of slits may also
be non-linear.

(Raidel 1 ¶ 0007.)
6. Figure 5 of Raidel is reproduced below:

“FIG. 5 shows an absorbent layer of the present invention with slits in a first
orientation and slits in a second orientation that combine to form apertures”
(Raidel 1 ¶ 0017).
7. Raidel teaches that “for the absorbent article to be able to
conform to the body of the wearer, the absorbent layer should be sufficiently
extensible in both the longitudinal and lateral direction, while maintaining
sufficient strength in both directions” (Raidel 1 ¶ 0003).
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8. The Examiner finds that regarding “claims 23-25, the article of
Shimoe is folded at a fold axis in the middle section 4A of the absorbent
core, and the absorbent core is deformed away from the fold axis along a
fold line, as shown in figure 3” (Ans. 9).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” 550 U.S. at 421.
Analysis
Shimoe teaches an absorbent article comprising a topsheet, backsheet,
and an absorbent core (FF 1, 3). Shimoe teaches an elastic member in the
absorbent article where
diaper 1 is further provided between the front waist region
20 and the rear waist region 22 with a single first elastically
stretchable member 6 extending across a middle zone 4a of
the core 4 and a pair of second elastically stretchable
members 7 extending across the transversely opposite side
zones 4b longitudinally of the diaper 1, respectively.

(Shimoe, col. 3, ll. 7-13; FF 2.)
Raidel teaches an absorbent article with slits to make the absorbent
article conformable to the body of the wearer (FF 4-6). Raidel teaches that
“for the absorbent article to be able to conform to the body of the wearer, the
absorbent layer should be sufficiently extensible in both the longitudinal and
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lateral direction, while maintaining sufficient strength in both directions”
(Raidel 1 ¶ 0003; FF 7).
Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that the ordinary artisan would have reasonably
found it obvious to incorporate the slits of Raidel into the absorbent article
of Shimoe in order for the absorbent article to be able to conform to the body
of the wearer (FF 4, 5, 7). Such a combination is merely a “predictable use
of prior art elements according to their established functions.” KSR, 550 U.S.
at 417.
Appellants “submit that if the slits of Raidel were employed in the
absorbent core of Shimoe in the manner being taught and claimed by the
present invention, the elastic member that runs along the longitudinal axis of
the Shimoe diaper core would likely counteract any extensibility potentially
enabled by the slits since the elastic member is secured under tension” (App.
Br. 7).
We are not persuaded. Appellants, in using the words like
“counteract” and “diminish” implicitly recognize that the resistance of the
elastic member would only partially offset the longitudinal extensibility and
conformability provided by the slits. More significantly, the slits provide
not only longitudinal extensibility but also extension and conformability in
the lateral direction, which would be relatively unaffected by the resistance
of the elastic member, as Raidel expressly teaches that “for the absorbent
article to be able to conform to the body of the wearer, the absorbent layer
should be sufficiently extensible in both the longitudinal and lateral
direction, while maintaining sufficient strength in both directions” (Raidel 1
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¶ 0003; FF 7; emphasis added). See KSR, 550 U.S. at 419 (“In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.”).
Appellants contend that “the elastic member would likely diminish or
eliminate the intended function of the slits as taught by Raidel. In this
regard, the respective disclosures teach away from their combination” (App.
Br. 7).
We are not persuaded. As discussed above, Raidel specifically
teaches conformability in the lateral direction, which will not be impaired by
the presence of the longitudinal elastic member. There is nothing in either
Shimoe or Raidel which disparages, discourages, or otherwise dissuades the
ordinary artisan from incorporating slits for conformability into the
absorbent member or teaches that elastic members will render the
incorporation of slits nonfunctional. Like our appellate reviewing court,
“[w]e will not read into a reference a teaching away from a process where no
such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Appellants contend that the “Examiner failed to address claims 23-27
with any specificity that could enable a rebuttal. And this type of conclusory
rejection is impermissible” (App. Br. 8).
We are not persuaded. The Examiner found that with “regards to
claims 23-25, the article of Shimoe is folded at a fold axis in the middle
section 4A of the absorbent core, and the absorbent core is deformed away
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from the fold axis along a fold line, as shown in figure 3” (Ans. 9). Using
similar language, the Examiner found in the Final Rejection that Shimoe
teaches that the “absorbent core 4 is folded along a fold line, as shown in
figure 3” (Final Rej. 3) and that Raidel teaches the “slits form an area of
mangled absorbent material in the core, thus creating a weakened zone in the
core” (id. at 4). Appellants do not provide specific reasons why these
teachings do not address the limitations of claims 23-27.
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Shimoe and Raidel render claim 1 obvious.
B. 35 U.S.C. § 103(a) over Shimoe and Tanzer
The Examiner finds that “Shimoe discloses all aspects of the claimed
invention with the exception of a structural feature in the form of
corrugations” (Ans. 5). The Examiner finds that “Tanzer teaches an
absorbent core 44 having a plurality of corrugations 43 . . . . The
corrugations allow the core to stretch to provide for a better fit of the
article,” (id.).
The Examiner finds it obvious to “provide the absorbent core of
Shimoe with the corrugations taught by Tanzer, to provide the core with
extensibility to allow for a better fit of the article” (id.).
Appellants contend that “the respective Shimoe and Tanzer
disclosures however teach away from their combination” (App. Br. 9).
Appellants contend that “[w]hereas, the elastic member (6) of Shimoe is
secured within the article under tension longitudinally so that the article
assumes a contracted and curved shape along its longitudinal axis” (id. at
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9). Appellants “submit that there is no apparent reason to combine one
element that provides stretchability from a first reference with an element
that could counter the stretchability from a second reference” (id.).
In view of these conflicting positions, we frame the obviousness
issues before us as follows: Does the evidence of record support the
Examiner‟s conclusion that Shimoe and Tanzer render claim 1 obvious?
Findings of Fact
9. Tanzer teaches corrugations to provide “limited but controlled
stretching of the primary liquid retention layer in the plane of the garment
without distortion of the basic garment shape” (Tanzer, col. 2, ll. 62-64).
10. Tanzer teaches that “one or more isolated regions of the
primary liquid retention layer may be pleated, so as to facilitate stretching
only in those regions” (Tanzer, col. 3, ll. 2-3).
11. Tanzer teaches that “the pleated primary liquid retention layer
may be intermittently bonded to a layer of elastic material. By providing an
elastic backing, the pleated primary liquid retention layer can be both
extended and retracted, the latter occurring when a stretching force is
removed” (Tanzer, col. 3, ll. 10-14).
12. Tanzer teaches
an incontinence garment having a pleated, extensible,
absorbent, primary liquid retention layer. The pleated liquid
retention layer is selectively stretchable in a direction
perpendicular to the pleats, may have elastic recovery
properties, and is economical to produce, while providing
sufficient aesthetics and capacity to serve as the liquid
retention layer of an incontinence garment

(Tanzer, col. 1, ll. 14-21).
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Analysis
As discussed above, Shimoe teaches an absorbent article comprising a
topsheet, backsheet, an absorbent core, and a longitudinal elastic member
(FF 1-3).
Tanzer teaches an absorbent article with corrugations to provide
“limited but controlled stretching of the primary liquid retention layer in the
plane of the garment without distortion of the basic garment shape” (Tanzer,
col. 2, ll. 62-64; FF 9-12).
Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that the ordinary artisan would have reasonably
found it obvious to incorporate the corrugations of Tanzer into the absorbent
article of Shimoe in order for the absorbent article to be able to permit
limited and controlled stretching without distortion of the basic garment
shape (FF 9-12). Such a combination is merely a “predictable use of prior
art elements according to their established functions.” KSR, 550 U.S. at 417.
Appellants contend that “the respective Shimoe and Tanzer
disclosures however teach away from their combination” (App. Br. 9).
Appellants contend that “[w]hereas, the elastic member (6) of Shimoe is
secured within the article under tension longitudinally so that the article
assumes a contracted and curved shape along its longitudinal axis” (id.).
Appellants “submit that there is no apparent reason to combine one element
that provides stretchability from a first reference with an element that could
counter the stretchability from a second reference” (id.).
We are not persuaded. Tanzer expressly recognizes a desire for
coordination of an elastic member with the corrugations in order to permit
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“limited but controlled stretching of the primary liquid retention layer in the
plane of the garment without distortion of the basic garment shape” (Tanzer,
col. 2, ll. 62-64; FF 9). Thus, Tanzer provides reasons to incorporate both
elastic members and corrugated members in order to achieve the desired
aesthetic (FF 9-12). There is nothing in either Shimoe or Tanzer which
disparages, discourages, or otherwise dissuades the ordinary artisan from
incorporating corrugations for controlled stretching into the absorbent
member or teaches that elastic members will render the corrugations of
Tanzer nonfunctional. Like our appellate reviewing court, “[w]e will not
read into a reference a teaching away from a process where no such
language exists.” DyStar Textilfarben, 464 F.3d at 1364.
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Shimoe and Tanzer render claim 1 obvious.
C. 35 U.S.C. § 103(a) over Shimoe and Osborn
The Examiner finds that “Shimoe discloses all aspects of the claimed
invention with the exception of a structural feature in the form of tufts”
(Ans. 6). The Examiner finds that “Osborn teaches an absorbent core having
a plurality of tufts therein, the tufts being formed from fibers being oriented
orthogonal to the plane of the core . . . . The tufts provide improved liquid
transport through the article” (id. at 7).
The Examiner finds it obvious “to provide the absorbent core of
Shimoe with the tufts taught by Osborn, to provide improved liquid transport
through the article” (id.).
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Appellants “respectfully submit that this interpretation of Osborn is
incorrect. The component shown in figure 13 is a topsheet and not an
absorbent core” (App. Br. 9). Appellants “disagree with the Examiner[„s]
conclusion that „one of ordinary skill in the art would be motivated to apply
the teachings of Osborn to the absorbent core of Shimoe, which is a fibrous
layer located below a topsheet film layer.‟” (Id. at 10.)
In view of these conflicting positions, we frame the obviousness
issues before us as follows: Does the evidence of record support the
Examiner‟s conclusion that Shimoe and Osborn render claim 1 obvious?
Findings of Fact
13. Figure 13 of Osborn is reproduced below:

“FIG. 13 is a simplified schematic view of a topsheet material that comprises
an apertured film with entangled nonwoven fibers” (Osborn, col. 3, ll. 65-
67).
14. Osborn teaches that the
fiber-entangled topsheet 38 material provides more intimate
contact between the apertured film 68 and the nonwoven
fibers 70. This can create advantages of improved liquid
transport through the film 68 to the fibers 70 and the
underlying layers. It may also provide improved comfort if
the fibers lie along the body-facing side 38A of the topsheet
38. It can also provide improved comfort when fibers lie
along the core-facing side 38B of the topsheet 38 since the
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film 68 portion of the topsheet 38 will be less likely to
separate from the underlying entangled fibers 70 and move
into the crevices of the wearer‟s body.

(Osborn, col. 17, ll. 20-30.)
15. Figure 15 of Osborn is reproduced below:

“FIG. 15 is a photograph showing a cross-sectional view of an embodiment
on which an underlying fibrous layer has been stretched and bonded to an
apertured film” (Osborn, col. 4, ll. 5-7).
16. Osborn teaches that:
In FIG. 15, the topsheet 38 is bonded to an underlying
acquisition layer 46 by the type of individual fusion bonds
72 shown in FIG. 5. In the embodiment shown in FIG. 15,
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the acquisition layer 46 is stretched before it is fused to the
topsheet 38. The topsheet 38 and acquisition layer 46, thus,
form a laminate. When the stretched laminate is relaxed, the
laminate has tufted areas 74 formed therein between bonded
areas 72 and valleys 76 formed at the bonds.

(Osborn, col. 18, ll. 12-19.)
Analysis
As discussed above, Shimoe teaches an absorbent article comprising a
topsheet, backsheet, an absorbent core, and a longitudinal elastic member
(FF 1-3).
Osborn teaches an absorbent article which comprises entangled
nonwoven fibers which are oriented orthogonal to the planar configuration
of the absorbent core (FF 13-16).
Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that the ordinary artisan would have reasonably
found it obvious to incorporate the tufts of Osborn into the absorbent article
of Shimoe in order to “create advantages of improved liquid transport
through the film 68 to the fibers 70 and the underlying layers” (Osborn, col.
17, ll. 22-24; FF 14). Such a combination is merely a “predictable use of
prior art elements according to their established functions.” KSR, 550 U.S. at
417.
Appellants “respectfully submit that this interpretation of Osborn is
incorrect. The component shown in figure 13 is a topsheet and not an
absorbent core” (App. Br. 9). Appellants “disagree with the Examiner[„s]
conclusion that „one of ordinary skill in the art would be motivated to apply
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the teachings of Osborn to the absorbent core of Shimoe, which is a fibrous
layer located below a topsheet film layer.‟” (Id. at 10.)
We are not persuaded. As shown in figure 15 of Osborn and
discussed at column 17 of Osborn, there is a continuous connection between
the topsheet 38 and acquisition layer 46 which is mediated by the tufted
areas 74 (FF 15-16). These tufted areas, which are laminated to both the
acquisition or core and the topsheet, may reasonably be interpreted as being
part of either component, consistent with the finding of the Examiner that
“modifying the article of Shimoe based on the teaching of Osborn (i.e. to
provide fibrous tufts directly below the film topsheet layer) would result in
modifying the fibrous core of Shimoe to include tufts” (Ans. 9).
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Shimoe and Osborn render claim 1 obvious.
SUMMARY
In summary, we affirm the rejection of claims 1 and 23-27 under 35
U.S.C. § 103(a) as obvious over Shimoe and Raidel. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 4, 5, 10-19, as
these claims were not argued separately.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Shimoe and Tanzer. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 6, 10-19, and
23-27, as these claims were not argued separately.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Shimoe and Osborn, III. Pursuant to 37 C.F.R. §
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41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 9-19, and 23-
27, as these claims were not argued separately.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED

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