Ex Parte Carlucci et al

Patent Trial and Appeal BoardSep 28, 2012

10239599 (P.T.A.B. Sep. 28, 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. 10/239,599 09/23/2002 Giovanni Carlucci CM2305M 9369 27752 7590 09/28/2012 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER KIDWELL, MICHELE M ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 09/28/2012 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GIOVANNI CARLUCCI, ROBERTO D'ADDARIO, and IVANO GAGLIARDI ____________ Appeal 2010-006603 Application 10/239,599 Technology Center 3700 ____________ Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and WILLIAM A. CAPP, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 4-7 and 9. Claims 1-3 and 8 have been cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-006603 Application 10/239,599 2 REJECTIONS The following Examiner’s rejections are before us for review. Claims 4 and 9 are rejected under 35 U.S.C. § 102(b) as anticipated by Hammons (US 5,647,863, issued Jul. 15, 1997). Claim 5 is rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Hammons. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hammons and Soga (US 5,364,381, issued Nov. 15, 1994). CLAIMED SUBJECT MATTER Claim 4 is the sole independent claim on appeal, is reproduced below1 with emphasis added, and is representative of the subject matter on appeal. 4. An absorbing article comprising a liquid pervious topsheet, a liquid impervious backsheet, and an absorbent structure intermediate said liquid pervious topsheet and liquid impervious backsheet, wherein said article is a sanitary napkin or a pantiliner for use in the crotch region of an undergarment, said absorbing article comprising a pair of wings intended for folding around the crotch portion of an undergarment, said wings are comprised of integral extensions of said topsheet and said backsheet, wherein each of said wings are provided with at least one region of transparency. 1 Claim 4, as listed in the Claims Appendix of the Appeal Brief, is not a correct version of the appealed claim. See Ans. 3, 9. The correct version of appealed claim 4 was filed by the Appellants on July 8, 2004, and was rejected by the Examiner in a Final Office Action mailed January 27, 2005. Appeal 2010-006603 Application 10/239,599 3 OPINION The rejection of claims 4 and 9 as anticipated by Hammons The Examiner found that Hammons’s absorbent article 20 corresponds with the absorbing article recited in claim 4, including “a pair of wings [54] intended for folding around the crotch portion of an undergarment . . . , said wings are comprised of integral extensions of the topsheet [38] and the backsheet [40] (col. 16, lines 26-27).” Ans. 3-4, 6; see also, Hammons, col. 3, ll. 45-47, and figs. 4-6. The Examiner’s finding is based on two premises: first, that Hammons’s reference to Ahr '0452 includes the specific disclosure of Ahr '045’s transparent “web,” i.e., a transparent topsheet; and second, that Hammons’s wings 54, i.e., the joined extensions of topsheet 38 and backsheet 40 include “at least one region of transparency” as recited in claim 4. Ans. 4, 6; see also Hammons col. 16, ll. 26-31. The Examiner attempts to support the first premise by citing to Hammons at column 5, line 63 to column 6, line 5. Ans. 4. The citation is directed to a paragraph that describes “[a] preferred topsheet 38 compris[es] an aperture formed film” and references Ahr '045 as describing a suitable aperture formed film. Hammons, col. 5, l. 56 – col. 6, l. 1. The Examiner also found that Ahr '045’s film or “web” is disclosed as transparent. Ans. 4, 6, Ahr '045, col. 11, ll. 41, 42; see also Ahr '045, col. 2, ll. 21-23, and col. 15, l. 54. Lastly, the Examiner found that “Hammons discloses . . . that the 2 Ahr '045 (US 4,463,045, issued July, 31, 1984) is referenced at column 5, line 65 to column 6, line 1 and column 6, lines 16-17 of Hammons. Ahr '045 is not to be confused with Ahr (US 4,321,924, issued Mar. 30 1982) cited by Hammons at col. 19, ll. 30-31, or Ahr (US 4,909,802, issued Mar. 20, 1990) cited by Hammons at col. 20, l. 38. Appeal 2010-006603 Application 10/239,599 4 wings of the invention comprise extensions of the topsheet thereby rendering the wing transparent.” Ans. 4. This last finding is based on the understanding that Hammons incorporates by reference Ahr '045’s disclosure of a transparent film. See Ans. 7. To incorporate subject matter by reference, a host document must contain language “clearly identifying the subject matter which is incorporated and where it is to be found.” In re De Seversky, 474 F.2d 671, 674 (CCPA 1973). “Put differently, ‘the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.’” Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir. 2009), citing to Adv. Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). Although Hammons states “[t]he disclosures of all patents . . . mentioned throughout this patent application are hereby incorporated by reference herein” (Hammons, col. 22, ll. 16-22), Hammons does not identify with specificity the transparency of Ahr '045’s apertured film. Hammons discloses at column 5, line 63 to column 6, line 1: A preferred topsheet 38 comprises an apertured formed film. Apertured formed films are preferred for the topsheet because they are pervious to body exudates and yet non-absorbent and have a reduced tendency to allow liquids to pass back through and rewet the wearer's skin. Thus, the surface of the formed film which is in contact with the body remains dry, thereby reducing body soiling and creating a more comfortable feel for the wearer. Suitable formed films are described in . . . U.S. Pat. No. 4,463,045 issued to Ahr et al. on Jul. 31, 1984. Appeal 2010-006603 Application 10/239,599 5 Hammons also discloses at column 6, lines 8-16: Preferably, the topsheet 38 has a plurality of apertures to permit liquids deposited thereon to pass through to the core 42. An apertured polyolefinic film topsheet 38 having about 5 to about 60 percent open area, typically about 25 percent open area, and a thickness of about 0.01 to about 0.05 millimeters prior to aperturing and about 0.42 to about 0.51 millimeters after aperturing is suitable. A particularly suitable topsheet 38 may be made in accordance with . . . U.S. Pat. No. 4,463,045 issued Jul. 31, 1984 to Ahr, et al. As such, Hammons’s disclosure is directed to the function and dimensions of Ahr '045’s apertured film. Accordingly, we do not find that Hammons incorporates by reference the transparent characteristic of Ahr '045’s apertured film. Hence, the Examiner’s finding that “Hammons discloses a transparent topsheet through incorporation of the Ahr ['045] reference” (Ans. 6) is incorrect. Even if, arguendo, the extension of Hammons’s topsheet 38 included Ahr '045’s transparent film we do not agree with the Examiner’s second premise that such evidences Hammons’s “wings [54] to be provided with at least one region of transparency,” as recited in claim 4. Rather, we agree with the Appellants that a portion of both the topsheet and the backsheet is required to be transparent to find that a wing includes “at least one region of transparency.” App. Br. 4, 6. This is supported by the Specification at page 17, which defines a “transparent region of a product” as: Appeal 2010-006603 Application 10/239,599 6 1. having the property of transmitting rays of light in such a way that written or printed text/characters and colors located opposite the transparent product can be clearly viewed by the human eye.[; sic] and/or 2. having the property of transmitting rays of light in such a way that the human eye may see through the product. In this case, the claimed term “wing” can replace the term “product” in the definition of a “transparent region of a product.” As such, both Hammons’s topsheet 38 and backsheet 40 must satisfy at least one of the above-quoted definitions of the term “transparent region of a product”, i.e., “transparent region of a wing,” in order for the Examiner’s finding that Hammons wings 54 include the integral extensions of topsheet 38 and backsheet 40 to be correct. Since Hammons does not disclose that backsheet 40, or any portion thereof, has a “transparent region,” we cannot agree with the Examiner that Hammons anticipates all of the limitations of claim 4. As such, the Appellants correctly contend that Hammons does not disclose “wherein each of said wings are provided with at least one region of transparency,” as recited in claim 4. App. Br. 3-6. Thus, for the reasons provided above, the rejection of claims 4 and 9 as anticipated by Hammons is not sustained. The rejection of claim 5 as anticipated by or, in the alternative, as unpatentable over Hammons Claim 5, recites “[a]n absorbing article according to Claim 4, wherein each entire wing is transparent.” At the outset, we note that the Examiner’s determination that Hammons anticipates claim 5 relies on the erroneous findings discussed Appeal 2010-006603 Application 10/239,599 7 supra. Thus, the Examiner’s rejection of claim 5 as anticipated by Hammons is not sustained. Regarding the Examiner’s rejection of claim 5 under obviousness grounds, the Examiner concluded that: it would have been obvious to one of ordinary skill in the art to modify the amount of the wing that is provided as transparent since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only a level of ordinary skill in the art. Ans. 4-5. The Examiner’s conclusion relies on a per se rule of obviousness. See App. Br. 8. Reliance solely on a per se rule of obviousness is improper because “[r]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). Moreover, we agree with the Appellants’ contention that “the Examiner has not shown where the ‘general conditions’ are found in the prior art.” App. Br. 8. Lastly, the Examiner comments that “[l]ikewise, the benefits of providing a transparent backsheet have been discussed and supported by the Soga reference.” Ans. 7. Since Soga’s teachings, infra, have not been included as evidence in the Examiner’s rejection of claim 5, the Examiner’s comment is immaterial to this ground of rejection. Thus, the rejection of claim 5 as unpatentable over Hammons is not sustained. Appeal 2010-006603 Application 10/239,599 8 The rejection of claims 6 and 7 as unpatentable over Hammons and Soga Claim 6, recites “[a]n absorbing article according to Claim 4, wherein said topsheet and said backsheet are transparent.” Claim 7 is dependent on claim 6. The Examiner rejects claim 6 in view of Hammons and Soga. Ans. 5. This rejection also relies on the Examiner’s erroneous first premise and unsubstantiated finding that Hammons discloses a transparent topsheet by incorporating by reference Ahr '045’s apertured film as discussed supra. Thus, for the reasons provided above, we cannot sustain the rejection under 35 U.S.C. § 103(a) of claim 6, and claim 7 dependent thereon, as unpatentable over Hammons and Soga. DECISION We REVERSE the rejections of claims 4-7 and 9. REVERSED Klh