Ex Parte Roe et al

Patent Trial and Appeal Board

Dec 31, 2012

11111414 (P.T.A.B. Dec. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DONALD CARROLL ROE, PATRICK JAY ALLEN, and
EDWARD PAUL CARLIN
____________

Appeal 2011-001227
Application 11/111,414
Technology Center 3700
____________

Before DONALD E. ADAMS, STEPHEN WALSH, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims a wearable
disposable absorbent article. The Examiner has rejected the claims for
indefiniteness, lack of written description, and anticipation. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appeal 2011-001227
Application 11/111,414

2
STATEMENT OF THE CASE
The Specification is directed to hygienic absorbent articles, such as
diapers, and training pants. Specifically, the Specification is directed to
training pants for facilitating the toilet training process. (Spec. 1, ll. 3-6.)
Claims 21-34 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief (App. Br. 12-14). Claim 21 is the sole independent
claim and representative of the claims on appeal, and reads as follows:
21. A wearable disposable absorbent article comprising a first
waist region, a second waist region, a crotch region, a body side, and a
garment side, the absorbent article further comprising:
a plurality of layers, including a first layer that is permeable and
is the outermost layer on the body side, a second layer that is
impermeable, a third layer that is permeable, a fourth layer that is an
absorbent layer, and a fifth layer that is impermeable and forms a
backsheet and is the outermost layer on the garment side;
wherein the second layer is directly bonded to the first layer in
the crotch region, and
wherein the second layer is oriented between the first layer and
the third layer; and
wherein the plurality of layers form the backsheet, a topsheet,
an absorbent core, and a wetness sensation member, the wetness
sensation member holding urine discharged from a body of a wearer
in continuous contact with skin of the wearer.

The Examiner has rejected the claims as follows:
I. claims 21-34 under 35 U.S.C. § 112, second paragraph as
failing to particularly point out and distinctly claim the subject
matter Appellants regard as the invention;
Appeal 2011-001227
Application 11/111,414

3
II. claims 21-34 under 35 U.S.C. § 112, first paragraph as failing
to comply with the written description requirement; and
III. claims 21-34 under 35 U.S.C. § 102(b) as being anticipated by
Yoshihisa.1
As Appellants do not argue the claims separately, we focus our
analysis on claim 21, and claims 22-34 stand or fall with that claim. 37
C.F.R. § 41.37 (c)(1)(vii).

I.
The Issue
The Examiner finds that claims 21-34 are indefinite because it is not
clear how many layers are contemplated in Appellants’ disposable article.
(Ans. 3.)
Appellants assert that the Specification “provide[s] ample evidence to
support a reasonable conclusion that one of ordinary skill in the art would
understand what is claimed when claim 21 is read in light of the
specification.” (App. Br. 3.)
The issue is whether there is consistency within the claim with regard
to the number of layers comprising the absorbent article.

1 Yoshihisa, EP 0,945,110 A2, publication Sept. 29, 1999.

App
App

Find
layer
(Spe
sepa
sens
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when
skill
Mar

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lication 11
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s, Fig. 3b
c. Fig. 3b.
rate compo
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tion to the
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A claim
read in li
ed in the a
ion Rousse
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/111,414
ct
he Specifi
is reprodu
) Fig. 3b s
site memb
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yer 54 op
topsheet 2
sorbent co
aw
is indefini
ght of the
rt of the sc
l, Inc., 314
cation pro
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4 and the
re 28, and
te under 3
specificati
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F.3d 131
4
vides an ab
:
tness sens
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ermeable
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wetness se
a backshe
5 U.S.C. §
on, it does
invention
3, 1342 (F
sorbent a
ation mem
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body-facin
g layer.” (
nsation m
et 26. (Sp
112, seco
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.” Amgen,
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rticle havi
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Spec. 10.)
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ph “if,
ise those
echst
e

Appeal 2011-001227
Application 11/111,414

5
Analysis
The Specification disclosed that the “wetness sensation member” is a
single unit (50) that is made up of two parts (i.e. layers) the permeable body
facing layer (52) and an impermeable layer (54) (FF1). When read in light
of the Specification, the skilled artisan would understand that the “wetness
sensation member” is a descriptive term describing a single unit that is made
up of two layers. Thus, the ordinary artisan reading the claim limitation of
“the plurality of layers form the backsheet, a topsheet, an absorbent core and
a wetness sensation member,” would understand that the four listed units
make up a total of at least five individual layers because one unit is defined
in the Specification as comprising two individual layers (FF1). Therefore,
contrary to the Examiner’s assertion, we find that claim 21, in view of the
Specification, provides sufficient clarity to allow the ordinary artisan to
understand the scope of the claim. The rejection of claims 21-34 as being
indefinite under the 35 U.S.C. § 112, second paragraph is reversed.

II.
The Issue
The Examiner finds that claims 21-34 are not supported by the
Specification as filed because the claims are directed to “the wetness
sensation member holding urine discharged from the body of a wearer in
continuous contact with skin of the wearer.” (Ans. 4-5.)
Appeal 2011-001227
Application 11/111,414

6
Appellants assert that there is no requirement that the Specification
provides verbatim support. (App. Br. 4.)
The issue is whether the preponderance of evidence on this record
supports the Examiner’s conclusion that Appellants’ Specification fails to
provide written descriptive support for the limitation “continuous contact
with skin of the wearer.”

Findings of Fact
FF2. The Specification provides “a wearable article having a wetness
sensation member that increases a wearer's awareness that urination has
occurred by causing the urine discharged from the body of the wearer to wet
an effective area of the member held in close contact with the wearer’s skin
during use.” (Spec. 3, ll. 24-27.)
FF3. The Specification provides that
The impermeable layer supports the flow of liquid between the
permeable and impermeable layers and retains the liquid thereby
expanding the wetted area of the wetness sensation member, which is
held in as intimate and continuous contact as possible with the
wearer’s skin. The combination of penetration and flow enables the
urine to spread out and effectively wet a large area before being
absorbed into the core, which in turn maximizes the wetness signal
experienced by the wearer.

(Spec. 6, ll. 4-9.)

Appeal 2011-001227
Application 11/111,414

7
Principals of Law
The Examiner “bears the initial burden . . . of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
Insofar as the written description requirement is concerned, that
burden is discharged by ‘presenting evidence or reasons why persons
skilled in the art would not recognize in the disclosure a description of
the invention defined by the claims.’ . . . If . . . the specification
contains a description of the claimed invention, albeit not in ipsis
verbis (in the identical words), then the examiner . . ., in order to meet
the burden of proof, must provide reasons why one of ordinary skill in
the art would not consider the description sufficient.

In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (internal citations omitted).

Analysis
The Specification provides that the wetness sensation member is
either held in “close contact” with the wearer’s skin (FF2) or in “intimate
and continuous contact as possible with the wearer’s skin” (FF3). Thus, the
Specification provides support for contact between the member and the
wearer’s skin so that the wearer can feel wetness against the skin (FFs 2-3).
The Examiner has provided no reason why one of ordinary skill in the art
would not consider the description of holding the article in close contact or
intimate contact sufficient to meet the claim limitation of “continuous
contact.” Therefore, contrary to the Examiner’s assertion, we find that
Appellants’ Specification provides descriptive support for the wetness
Appeal 2011-001227
Application 11/111,414

8
sensation member being held in continuous contact with the wearer’s skin.
The rejection of claims 21-34 under the written description provision of 35
U.S.C. § 112, first paragraph is reversed.

III.
The Issue
The Examiner finds that Yoshihisa “teaches a wearable disposable
absorbent article 1, 20 having a first waist region, 1A or 1B, a second waist
region, the other of 1A or 1B, a crotch region, 1C.” (Ans. 5-6.) The
Examiner finds that layer 21 is permeable and “the core 23 and 22, are also
permeable” (Ans. 6). The Examiner finds “the ‘layer’ is 21-23 of 20”
combined (Ans 6), and there is “an impermeable layer, e.g. 27, a
polyolefinic resin sheet in face to face arrangement with at least a portion of
the permeable first layer” (Ans. 6).
Appellants contend that “the structure of the article asserted by the
Office as being disclosed in Unicharm is not arranged in the same way as the
wearable disposable article recited in claim 21 of the present application”
(App. Br. 8), because “Unicharm clearly discloses that the liquid-permeable
facing layer (21), the absorbent core (23) of the urine pad, and the backing
layer (22) form the first three discrete layers of the urine pad” (id. at 9).
The issue is whether the Examiner has established by a preponderance
of the evidence that Yoshihisa anticipates the absorbent article of claim 21.

App
App

Find
FF4.
conju
abso
(Yos
diap
diap
inner
(4) in
is ma
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(Id.
betw
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lication 11
ings of Fa
Yoshihis
nction wi
rbent artic
hihisa Fig
er showing
er (1). (Yo
layer (2)
terposed
de up of a
ing layer (
ing layer (
¶0021.) T
een the liq
0.)
01227
/111,414
ct
a disclose
th a dispos
le is repro
ure 4.) Fig
two urine
shihisa ¶0
a liquid im
between th
liquid-pe
22) and an
22) has op
he urine a
uid perme
d a dispos
able diape
duced belo
. 4 depict
absorben
026.) The
permeabl
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rmeable fa
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enings (22
bsorbent p
able layer
9
able absor
r. A cros
w:
s a cross s
t pads (20)
disposab
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(Id. ¶0027
cing layer
t core (23)
a) that exp
ad (20) ha
and the liq
bent pad th
s section o
ection of th
stacked o
le diaper h
er (3), wit
.) The urin
(21), a liq
. (Id. ¶00
ose the ab
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uid imper
at can be
f Yoshihis

e crotch a
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as a liquid
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uid-imper
14.) The
sorbing sh
ember tha
meable la
used in
a’s
rea of a
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bent body
nt pad (20
meable
liquid
eet (23a)
t are
yer. (Id.

e
)
.
Appeal 2011-001227
Application 11/111,414

10
FF5. Yoshihisa provides that “[i]f the user can frequently change the
absorbent pad, for example, during the daytime, the urine-absorbent pad 20
is used with the covering sheet 27 attached.” (Yoshihisa ¶0031.)

Principals of Law
To anticipate a reference must expressly or inherently disclose “within
the four corners of the document not only all of the limitations claimed but
also all of the limitations arranged or combined in the same way as recited in
the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371
(2008).

Analysis
Independent claim 21 recites an absorbent article having multiple
layers, wherein “the second layer is directly bonded to the first layer in the
crotch region.” “[D]uring examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification.” In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000).
The Specification and drawings do not define “layer” per se, but
describe the absorbent article comprising multiple units such as a topsheet,
bottom sheet, absorbent core, and a wetness sensation member. The
description and drawings in the Specification use the term “layer” in a
manner consistent with how an ordinary artisan defines (and would have
Appeal 2011-001227
Application 11/111,414

11
defined) the term (FF1).2
The Examiner finds that Yoshihisa disclosed an absorbent article
made up of a plurality of layers (Ans. 5-6). The “first layer” is liquid-
permeable and made up of components 21, 22, and 23 (Ans. 6), “a second
layer that is impermeable, e.g., 27, a third layer, e.g., 2, that is permeable, a
fourth layer, e.g., 4, that is an absorbent layer, and a fifth layer, e.g., 3, that is
impermeable and forms the backsheet and is an outermost layer on the
garment side” (Ans. 6). The Examiner interprets Yoshihisa’s absorbent
article (20), made up of three components, as a single liquid permeable layer
that is attached to a liquid-impermeable sheet (27) (Ans. 6). The Examiner
has provided no explanation why three components disclosed in Yoshihisa
urine pad (20) should be interpreted as a single layer, as opposed to three
individual layers as one of ordinary skill in the art would interpret layers
(FF4). The Examiner’s interpretation of the “first layer” as being made up
of three components (21-23), ignores the plain meaning of the term layer, as
being one thickness, course, or fold laid or lying over or under another, and
consistent with the term in the Specification, and the use of the term in
Yoshihisa.

2 Layer: (1): one that lays (as a worker who lays brick or a hen that lays
eggs); (2)(a): one thickness, course, or fold laid or lying over or under
another (b):stratum (c): horizon; (3)(a): a branch or shoot of a plant that
roots while still attached to the parent plant (b): a plant developed by
layering. Merriam-Webster, http://www.merriam-
webster.com/dictionary/layer, accessed Dec 21, 2012.
Appeal 2011-001227
Application 11/111,414

12
Yoshihisa disclosed that the absorbent article with the attached liquid
permeable backsheet can be placed into a diaper (FF5). Thus, Yoshihisa
disclosed an absorbent article that has an outer permeable layer (21), an
absorbent core (23), a backing layer (22), a liquid-impermeable cover layer
(27), a liquid permeable layer (2), an absorbent core (4) and backing layer
(3) (FF4). The Examiner is inconsistent in the use of the term layer within
the same reference; the Examiner interprets absorbent core (4) as being a
discrete absorbent layer and then indicates without reason why component
(23) is not a discreet layer but is now only a layer if combined with
components (21) and (22).
We agree with Appellants that Yoshihisa disclosed an absorbent
article comprising 7 layers. (App. Br. 8, see Modified Figure 4 of
Unicharm.) Although claim 21 allows for additional layers, the claim
limitation that “the second layer is directly bonded to the first layer in the
crotch region” is not found in the Yoshihisa reference. The claim requires
that the first layer, a permeable layer, is directly bonded to the second layer,
an impermeable layer. In Yoshihisa the absorbent article (20) with the cover
sheet (27) in place, has the liquid-permeable layer (21) in contact with an
absorbent core (23), that is, in contact with the liquid-impermeable layer
(22) which is bonded to the cover sheet (27). Thus, the liquid-permeable
layer (21) is not in direct contact with the liquid-impermeable cover sheet
(27), as require by the limitation that “the second layer is directly bonded to
the first layer in the crotch region.” The Examiner fails to establish that
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Application 11/111,414

13
Yoshihisa described one of the claimed elements, specifically, that “the
second layer is directly bonded to the first layer in the crotch region.”
“[A]bsence from the reference of any claimed element negates anticipation.”
Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir.
1986).
The preponderance of evidence of this record fails to support the
Examiner’s conclusion of anticipation of claim 21. The rejection of claim
21 under 35 U.S.C. § 102(b) as being anticipated by Yoshihisa is revered.

SUMMARY
We reverse the rejection of claims 21-34 under 35 U.S.C. § 112
second paragraph as being indefinite.
We reverse the rejection of claims 21-34 under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description requirement.
We reverse the rejection of claims 21-34 under 35 U.S.C. § 102(b) as
being anticipated by Yoshihisa.

REVERSED

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