Ex Parte Roe et al

Patent Trial and Appeal BoardApr 6, 2016

11900311 (P.T.A.B. Apr. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111900,311 09/11/2007 27752 7590 04/08/2016 THE PROCTER & GAMBLE COMPANY Global Patent Services - Legal IP Central Building, CS One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Donald Carroll Roe 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 10644R 2251 EXAMINER KIDWELL, MICHELE M ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 04/08/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): centraldocket.im @pg.com pair_pg@firsttofile.com mayer.jk@pg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONALD CARROLL ROE, CARL LOUIS BERGMAN, KIMBERLY ANN DREIER, CONSTANCE LEE FISHER, BARRY ROBERT FEIST, and MARK JAMES KLINE Appeal2014-004650 Application 11/900,311 Technology Center 3700 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and JACQUELINE T. HARLOW, Administrative Patent Judges. PERCURIAM DECISION ON APPEAL This is an appeal 1 under 35 U.S.C. Â§ 134 involving claims to a disposable absorbent article having a wrap and tuck configuration. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify the Real Party in Interest as The Procter & Gamble Company (see Br. 1 ). Appeal2014-004650 Application 11/900,311 Statement of the Case Background Appellants' invention relates to "disposable absorbent articles having wrap and tuck folding configurations for application of the articles to wearers that mimic swaddling characteristics" (Spec. 1:9--10). The Claims Claims 1, 3-5, and 7-25 are on appeal. Independent claim 1 is representative and reads as follows (emphasis added): 1. A disposable absorbent article adapted to be worn about a lower torso region of a wearer comprising: a chassis having an outer surface and an inner surface and including a first waist region, a second waist region, and a crotch region disposed intermediate the first waist region and the second waist region, the chassis further including a first ear and a second ear, wherein the first and second ears extend in opposing lateral directions from the first waist region, and wherein the second waist region is adapted to be permanently deformed by a user to form a tuck flap, wherein the tuck flap is defined by a longitudinally stretched portion of the chassis and extends in a longitudinal direction from the second waist region; at least one fastener element disposed on a first area of the chassis and adapted to connect with a second area of the chassis; and wherein at least one portion of the tuck flap is stretchable in at least one direction. The Issues A. The Examiner rejected claims 1 and 4 under 35 U.S.C. Â§ 103(a) as obvious over Schwartz,2 LaVon, 3 and Nakaoka4 (Ans. 2-8). 2 Schwartz, US 3,089,494, issued May 14, 1963. 3 La Von et al., US 2007/0066953 Al, published Mar. 22, 2007. 4 Nakaoka, JP 2005/192670 A, published July 21, 2005. 2 Appeal2014-004650 Application 11/900,311 B. The Examiner rejected claim 3 under 35 U.S.C. Â§ 103(a) as obvious over Schwartz, La Von, Nakaoka, and Sosalla5 (Ans. 8-9). C. The Examiner rejected claims 5 and 7-9 under 35 U.S.C. Â§ 103(a) as obvious over Sosalla, La Von, Schwartz, and Nakaoka (Ans. 9-14). D. The Examiner rejected claims 10-25 under 35 U.S.C. Â§ 103(a) as obvious over Knight, 6 La Von, and Coates7 (Ans. 14--20). A. 35 USCÂ§ 103(a) over Schwartz, La Von, and Nakaoka The Examiner finds that Schwartz teaches a disposable absorbent article "wherein the second waist region 4 is adapted to form a tuck flap 5, [] wherein the tuck flap 5 is defined by a longitudinal portion 3, 4 of the article 10 and extends in a longitudinal direction 5---4 from the second waist region 4---3" (Ans. 2; citing Schwartz 1 :45-53, 2: 1--4) and "wherein at least one portion of the tuck flap is stretchable in at least one direction" (Ans. 3; citing Schwartz 2: 11-13). The Examiner concludes that it would have been obvious to provide the chassis of Schwartz having a stretched portion as taught by La Von since La Von states . . . that the benefit of forming the chassis with this design is that it permits the chassis to better conform to the body of the wearer and impart a tailored appearance thereby providing a better fitting e.g. more secure fit of [a] diaper which is an object of Schwartz. (Ans. 6-7; citing La Von i-f 68.) The Examiner further concludes that it would have been obvious to provide the waist region of Schwartz adapted to be permanently deformed by a user to form a tuck flap defined by a 5 Sosalla, US 5,695,488, issued Dec. 9, 1997. 6 Knight, US 4,995,873, issued Feb. 26, 1991. 7 Coates, US 4,681,581, issued July 21, 1987. 3 Appeal2014-004650 Application 11/900,311 longitudinally stretched portion as taught by Nakaoka, since Nakaoka 8 states ... that the benefit of providing the diaper with this design is that it improves fit of the diaper around the waist and torso during movements of the wearer and reduces gaps between the diaper and wearer thereby reducing leakage and thus providing a more sanitary diaper. (Ans. 8; citing Nakaoka i-fi-139, 48--49.) The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that the combination of Schwartz, La Von, and Nakaoka renders the claims prima facie obvious? Findings of Fact 1. Schwartz teaches pinless diapers having "one wing [that] is folded over the other," and "[a] downwardly extending portion of the sheet [that] is so designed as to be adapted to be folded upwardly (against the abdomen for a boy or in case of a girl in the back) and then downwardly over the wings in sealed engagement" such that "[ t ]his latter downwardly extending portion contains self-sealing adhesive only on the surface away from the abdomen (or back) in the unfolded position so that, when folded over the wings, it is adapted to be pressed into sealed engagement therewith thus holding the diaper in place" (Schwartz 1:8-36). 8 It appears that the Examiner refers to the machine translation of Nakaoka by PaterraÂ® InstantMTÂ®, made of record during prosecution. Therefore, for purposes of this Appeal, all references to Nakaoka will refer to the machine translation of Nakaoka. 4 Appeal2014-004650 Application 11/900,311 2. Figure 1 of Schwartz is reproduced below. Figure 1 shows a diaper 10 having a crotch portion 1, adhesives 8 and 9, a portion 2 extending upwardly from portion 1, wings 6 and 7, a portion 3 extending downwardly from portion 1, and portions 4 and 5, in which "[i]n fastening the diaper to the boy baby, the downwardly extending portion 3 is folded upwardly against the abdomen exposing 5," "[t]he wings are then placed into sealed engagement by being folded over the abdomen with the use of only mild pressure," and "[p ]ortion 4, with the sealed adhesive portion 5 exposed, is then folded over the wings and also pressed into sealed engagement therewith fastening the diaper" (Schwartz 1 :42-2:4). 3. Schwartz teaches that "elastic materials can be incorporated around the edges, if desired, for [a] more secure fit" (Schwartz 2: 11-13 ). 4. La Von teaches a diaper having a chassis in which "[a] portion or the whole of chassis and/or the absorbent assembly and/or the belt strip may be formed of an elastically extensible material or materials" and "[ t ]he additional extensibility may be desirable in order to allow the diaper [] to 5 Appeal2014-004650 Application 11/900,311 conform to the body of a wearer during movement by the wearer" (La Von Abstract, ,-r 68). 5. The Examiner finds that Nakaoka teaches a diaper "having a longitudinal[ly] extended waist region part 11" "to adjust the rise of the diaper" that is "permanently deformed by a user to form a tuck flap" and stretched in forming a tuck flap, and made of substantially identical materials as recited in the Specification (Ans. 7; see Nakaoka Abstract, i-fi-16, 8-13, 20-24, 27-34, 42, Figures 5-8; Specification i-fi-139, 44, 48, 58---63). 6. Figure 8 of Nakaoka is reproduced below. 8 Figure 8 shows a diaper having an extended part 11, and in the process of folding the extended part (Nakaoka Abstract, i-fi-110, 54--55). 6 Appeal2014-004650 Application 11/900,311 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, Â§ 103 likely bars its patentability." Id. at 417. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. . . . Whether the rejection is based on "inherency" under 35 U.S.C. Â§ 102, on "prima facie obviousness" under 35 U.S.C. Â§ 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Analysis We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Ans. 2-29; FF 1-10) and agree that the claims are obvious over Schwartz, La Von, and Nakaoka. We address Appellants' arguments below. Appellants contend that the combination of Schwartz, La Von, and Nakaoka "does not teach or suggest the claimed second waist region and tuck flap of claim 1" (Br. 5). More particularly, Appellants contend that the Examiner erroneously equates an existing tuck flap that can be permanently held in position to the claimed waist region that is adapted to be permanently deformed to form a tuck flap, wherein the tuck flap 7 Appeal2014-004650 Application 11/900,311 is defined by a longitudinally stretched portion of the chassis and extends in a longitudinal direction from the waist region. (Id. at 6.) Appellants argue that the Examiner "has not provided reasoning as to why it would have been obvious to modify the diaper of Schwartz to include the claimed second waist region that is adapted to be permanently deformed by a user to form a tuck flap" (id.). We do not find these arguments persuasive. As the Examiner points out, folding and tucking the flap, and fastening the diaper adhesive fasteners of Schwartz would necessarily deform and stretch the diaper (see Ans. 22- 24; FF 1-3). See In re Best, 562 F.2d at 1255. Appellants have provided no evidence rebutting this finding. Moreover, Schwartz teaches incorporating elastic materials (FF 3), La Von teaches using elastic materials for the chassis to allow the diaper to conform to the body during movement (FF 4), and Nakaoka teaches using the same materials as taught by the Specification for a diaper having portions that can be folded (FF 5-6). Alternatively, as the Examiner points out, it would have been obvious to modify Schwartz' diaper to have a stretchable chassis, as taught by LaVon to better conform to the body (Ans. 6-7; FF 4), and to provide a waist region that can be permanently deformed by user, as taught by Nakaoka to improve fit (Ans. 8; FF 5---6). Therefore, we are not persuaded by Appellants' contentions to the contrary. Conclusion of Law The evidence of record supports the Examiner's conclusion that the combination of Schwartz, La Von, and Nakaoka renders claim 1 prima facie obvious. Appellants do not argue separately the claims for this obviousness rejection. Therefore, claim 4 falls with claim 1. 8 Appeal2014-004650 Application 11/900,311 B. 35 USCÂ§ 103(a) over Schwartz, La Von, Nakaoka, and Sosalla Appellants contend that "claim 3 is believed patentable under 35 U.S.C. Â§ 103(a) for at least the same reasons as claim 1" (Br. 7). Having affirmed the obviousness rejection of claim 1 over Schwartz, La Von, and Nakaoka for the reasons given above, we also affirm the rejection of claim 3. C 35 USCÂ§ 103(a) over Sosalla, La Von, Schwartz, and Nakaoka The Examiner finds that Sosalla teaches a diaper "wherein the second waist region 14 is adapted to be permanently deformed by the user to form a foldable region 60 that performs the same or similar function as the present tuck flap of securing the diaper about the wearer's waist" (Ans. 10-11; citing Sosalla Figures 7 A-10, 5:52---67). The Examiner concludes that it would have been obvious to provide the side panels or ears of Sosalla in the either of the front or the back or the first or the second waist regions as taught by Sch\~1artz since it appears [that] the invention \~1ould \~1ork equally well with the ears extending from either waist region since the ears laterally extending from either waist region perform the substantially identical function of wrapping about the lower torso of a wearer in order to secure the diaper in place and since it has been held that rearranging parts of an invention involves only routine skill in the art. (Ans. 13.) The Examiner concludes that it would have been obvious to provide the tuck flap of Sosalla having a longitudinally stretched portion as taught by La Von since La Von states[] that the benefit of forming the chassis with this design is that it permits the chassis to better conform to the body of the wearer and impart a tailored appearance thereby providing a better fitting diaper. (Ans. 14; citing La Von i-f 68.) 9 Appeal2014-004650 Application 11/900,311 The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that the combination of Sosalla, La Von, Schwartz, and Nakaoka renders the claims prima facie obvious? Findings of Fact 7. Sosalla teaches improving "the fit of the absorbent article by reducing rollover at the waist and reducing sagging" (Sosalla 3 :4---6), in which the absorbent article has a bridge flap (Sosalla 4:30-41) and "a pair of elasticized side panels 58 connected at laterally opposed end regions of the back waistband portion 14 of the article, and each of the side panels 58 can include an operable portion of the waistband-edge attaching means" (Sosalla 5:46-51). 8. Figure 7 A of Sosalla is reproduced below. Figure 7 A shows a diaper having fold attachment means 104, side panel 58, and "a foldable section 60 which extends longitudinally and protrudes length-wise past a longitudinally terminal edge 94" such that the foldable sections 60 is "in a substantially C-folded condition which substantially 10 Appeal2014-004650 Application 11/900,311 wraps about a laterally extending, terminal edge 96 of the article front waistband" (Sosalla 5:52---67). Analysis We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Ans. 9--14; FF 1-8) and agree that the claims are obvious over Sosalla, La Von, Schwartz, and Nakaoka. We address Appellants' arguments below. Appellants contend that the combination of Sosalla, La Von, Schwartz, and Nakaoka does not teach "wherein the tuck flap is defined by a longitudinally stretched portion of the chassis and extends in a longitudinal direction from the second waist region" (Br. 8; emphasis omitted). More particularly, Appellants contend that the Examiner "fails to show where the prior art discloses a waist region adapted to be permanently deformed by a user to form a tuck flap" (id. at 10). Appellants argue that the Examiner does not provide reasoning to modify Sosalla to include a second waist region that is adapted to be permanently deformed by a user to form a tuck flap, wherein the tuck flap has a longitudinally stretched portion from the chassis to the waist region (see id.). We are not persuaded. As the Examiner points out, the definition of "tuck" is "to pull up into a fold, push, fold or tum the edges or ends of something, especially a garment or bedclothes so as to hide them or to hold them in place" (Ans. 25; citing Merriam-Webster's Collegiate Dictionary Tenth Edition, 1998) and that Sosalla teaches that "flap 60 is folded over and tucked against the top edge of the diaper waist band and can be located at either of the first or second i.e. the front or rear waist region as preferred" (Ans. 25 (citing Sosalla 5:52---67, 11:64--65, 23:61---64); FF 7-8). As 11 Appeal2014-004650 Application 11/900,311 discussed above, the folding and tucking of the flap, would necessarily deform and stretch the diaper to a certain degree (see also Ans. 11, 13, 25- 26). See In re Best, 562 F.2d at 1255. Appellants have provided no evidence rebutting this finding. Moreover, Schwartz teaches incorporating elastic materials (FF 3), La Von teaches using elastic materials for the chassis to allow the diaper to confirm to the body during movement (Ans. 13-14; FF 4), and Nakaoka teaches using the same materials as taught by the Specification for a diaper having portions that can be folded (FF 5---6). Alternatively, as the Examiner points out, it would have been obvious to modify Sosalla's diaper to have a stretchable chassis, as taught by La Von to better conform to the body (Ans. 13- 14; FF 4), and to provide a waist region that can be permanently deformed by user, as taught by Nakaoka to improve fit (Ans. 8; FF 5-6). Therefore, we are not persuaded by Appellants' contentions to the contrary. Conclusion of Law The evidence of record supports the Examiner's conclusion that the combination of Sosalla, La Von, Schwartz, and Nakaoka renders claim 5 prima facie obvious. Appellants do not argue separately the claims for this obviousness rejection. Therefore, claims 7-9 fall with claim 5. D. 35 USCÂ§ 103(a) over Knight, La Von, and Coates The Examiner finds that Knight teaches that a disposable absorbent article "wherein the second waist region 14 is adapted to be permanently deformed 15 by a user to form a tuck flap 26" and "wherein the tuck flap 26 is defined by a longitudinally stretched portion 15 of the article, see 14---22- -25-26, and extends in a longitudinal direction 14---22-25-26 from the second waist region 14" (Ans. 15; citing Knight 3:57---61, Figures 1, 2, 5). 12 Appeal2014-004650 Application 11/900,311 The Examiner concludes that it would be obvious to have at least 25 % of the areas of Knight covered with fastening elements as taught by Coates to optimize or utilize workable ranges of material thereby provide economically efficient diapers having sufficient amounts of areas covered with the fastening elements that will securely attach a diaper around a wearer's torso while minimizing economic wastage on high cost or expensive and unnecessary fastening element material. (Ans. 18.) The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that the combination of Knight, La Von, and Coates renders the claims prima facie obvious? Findings of Fact 9. Knight teaches "[a Jn absorbent garment such as a diaper having a substantially 'T' -shaped configuration when laid out flat" and that "[t ]he garment can be folded into the shape of a loincloth" (Knight Abstract; see 1 A.. -1 A -1 ,r>._ atso Ans. 14-lOJ. 10. Figure 5 of Knight is reproduced below. Figure 5 shows the garment with a fold line 15 (Knight 3: 1-7; see also Ans. 15). Analysis 13 Appeal2014-004650 Application 11/900,311 We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Ans. 14--20; FF 1-10) and agree that the claims are obvious over Knight, La Von, and Coates. We address Appellants' arguments below. Appellants similarly contend that the combination of Knight, La Von, and Coates does not teach "wherein the tuck flap is defined by a longitudinally stretched portion of the chassis and extends in a longitudinal direction from the second waist region" (Br. 11 ). More particularly, Appellants contend that the Examiner "fails to show where the prior art discloses a waist region adapted to be permanently deformed by a user to form a tuck flap" (id. at 12). Appellants argue that the Examiner does not provide reasoning to modify Knight to include a second waist region that is adapted to be permanently deformed by a user to form a tuck flap, wherein the tuck flap has a longitudinally stretched portion from the chassis to the waist region (see id. at 13). We are not persuaded. As the Examiner points out, Knight teaches a tuck flap 26 having a longitudinally stretched portion 15 and a waist region 14 that is permanently deformed as the portion 15 is bended and folded over (Ans. 27; FF 9-10). As discussed above, the folding and tucking of the flap, would necessarily deform and stretch the diaper to a certain degree. See In re Best, 562 F.2d at 1255. Also as already noted, Appellants have provided no evidence rebutting the Examiner's position that "fastening the diaper adhesive fasteners into sealing engagement would necessarily deform the article" (Ans. 22). Moreover, La Von teaches using elastic materials for the chassis to allow the diaper to confirm to the body during movement (Ans. 18; FF 4). 14 Appeal2014-004650 Application 11/900,311 Alternatively, as the Examiner points out, it would have been obvious to modify Knight's diaper to have a stretchable chassis, as taught by La Von to better conform to the body (Ans. 18; FF 4). Therefore, we are not persuaded by Appellants' contentions to the contrary. Conclusion of Law The evidence of record supports the Examiner's conclusion that the combination of Knight, La Von, and Coates renders claims 10, 18, and 24 prima facie obvious. Appellants do not argue separately the claims for this obviousness rejection. Therefore, claims 11-17 fall with claim 10, and claims 19-23 and 25 fall with claim 18. SUMMARY In summary, we affirm the rejection of claim 1under35 U.S.C. Â§ 103(a) as obvious over Schwartz, La Von, and Nakaoka. Claim 4 is not separately argued and falls with claim 1. We affirm the rejection of claim 3 under 35 U.S.C. Â§ 103(a) as obvious over Schwartz, La Von, Nakaoka, and Sosalla. We affirm the rejection of claim 5 under 35 U.S.C. Â§ 103(a) as obvious over Sosalla, La Von, Schwartz, and Nakaoka. Claims 7-9 are not separately argued and fall with claim 5. We affirm the rejection of claims 10, 18, and 24 under 35 U.S.C. Â§ 103(a) as obvious over Knight, La Von, and Coates. Claims 11-17 are not separately argued and fall with claim 10. Claims 19-23 and 25 are not separately argued and fall with claim 18. 15 Appeal2014-004650 Application 11/900,311 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 16