Ex Parte Sawyer et al

Patent Trial and Appeal Board

Sep 18, 2012

10835528 (P.T.A.B. Sep. 18, 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.
10/835,528 04/29/2004 Lawrence Howell Sawyer KCX-834 (20376) 8775
22827 7590 09/19/2012
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
CHAPMAN, GINGER T
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
09/19/2012 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 LAWRENCE HOWELL SAWYER, ROBERT LEE POPP,
CHRISTOPHER PETER OLSON, JAMES MARCUS CARR,
MARK MICHAEL MLEZIVA, and MICHAEL JOHN FAULKS
__________

Appeal 2011-012410
Application 10/835,528
Technology Center 3700
__________

Before FRANCISCO C. PRATS, STEPHEN WALSH, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims directed to an absorbent article. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2011-012410
Application 10/835,528

2
STATEMENT OF THE CASE
Claims 1-10 and 12-19 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief (App. Br. 10-13). Claim 1 is the sole
independent claim and is representative of the claims on appeal, and reads as
follows (emphasis added):
1. An absorbent article comprising:

an outer cover comprising an elastic material;

a stretchable bodyside liner joined to the outer cover in a
superimposed relation;

an absorbent structure positioned in between the outer cover and the
liner; and

wherein the outer cover, liner and absorbent structure form a chassis,
the chassis defining a waist opening opposite two leg openings when
worn about a wearer, the chassis comprising six equal distant zones in
a longitudinal direction, the zones including a front waist zone, a back
waist zone, a front midsection zone, a back midsection zone, a front
crotch zone, and a back crotch zone, wherein the front waist zone, the
front midsection zone, and the front crotch zone define a front zone,
and wherein the back waist zone, the back midsection zone, and the
back crotch zone define a back zone, and wherein the chassis is
constructed such that at least one of the front zone or the back zone
has a lengthwise stretch of from about 5% to about 30% in the
longitudinal direction and wherein at least 60% of said lengthwise
stretch is contained in the respective waist zone, wherein the stretch in
the crotch zone and the midsection zone is reduced by attaching the
absorbent structure to the liner, the outer cover or to both the liner and
the outer cover.

The following grounds of rejection are before us for review:
Appeal 2011-012410
Application 10/835,528

3
The Examiner has rejected claims 1-10 and 12-19 under 35 U.S.C. §
103(a) as unpatentable over Morman
1
in view of Clear.
2

As Appellants do not argue the claims separately, we focus our
analysis on claim 1, and claims 2-10 and 12-19 stand and fall with that
claim. 37 C.F.R. § 41.37 (c)(1)(vii).

ISSUE
The Examiner finds that “Mormon [sic] discloses two embodiments
wherein the entire chassis 90, 98 is stretchable [], Mormon [sic] is concerned
with providing the desired properties of highly longitudinally stretchable
waist regions and retractive crotch region.” (Ans. 7.)
Appellants assert that “all of the embodiments of Mormon, et al.
require the use of a stretchable outer cover and a non-stretchable bodyside
liner.” (App. Br. 6.) “No where does Mormon, et al. teach that the entire
chassis can stretch in any significant amount.” (Id.) Appellants contend that
“the Examiner fails to realize that the disclosed stretching properties of
Morman, et al. are limited to the stretchable outer cover - not the entire
chassis of the article.” (Id. at 7.)
Does the evidence of record support the Examiner‟s conclusion that
that the combination of references disclosed an absorbent article that has an
elastic cover, a stretchable bodyside liner and an absorbent structure between
the outer cover and the liner?

1
Morman et al., WO 02/34185 A1, published May 2, 2002; all references to
Morman in this opinion will cite the WO document.
2
Clear et al., US 5,690,627, issued Nov. 25, 1997.
Appeal 2011-012410
Application 10/835,528

4
FINDINGS OF FACT
FF 1. Morman disclosed that “[t]otally stretchable diapers have proven to be
successful in terms of providing a form-fitting product.” (Morman 1, ll. 13-
14.)
FF 2. “„Stretchable‟ means that a material can be stretched, without
breaking. . . . The term includes elastic materials as well as materials that
stretch but do not significantly retract.” (Morman 8, ll. 1-5.)
FF 3. Morman disclosed a stretchable outer cover comprising material that
can be stretched longitudinally. (Morman 12, ll. 4-11.) The stretchable
outer cover can be made of breathable elastic material. (Id. at 14, ll. 24-29.)
A “stretchable outer cover 40 can suitably be stretched in the longitudinal
direction and/or the transverse direction by about 25% to about 300%, to
between about 125% and about 400% of an unstretched length and/or width
of the outer cover.” (Id. at 12, ll. 4-11.)
FF 4. “„Elastic,‟ „elasticized‟ and „elasticity‟ mean that property of a
material or composite by virtue of which it tends to recover its original size
and shape after removal of a force causing a deformation.” (Morman 5, ll.
1-3.)
FF 5. Morman disclosed “an absorbent garment 82 having a completely
stretchable chassis 90, including a stretchable outer cover 40, a stretchable
bodyside liner 92, and a stretchable absorbent assembly 94 bonded to the
stretchable outer cover at multiple attachment points 74.” (Morman 20, ll.
18-28; Figure 7 (emphasis added).)
FF 6. Morman disclosed “an absorbent garment 82 having a stretchable
chassis 98, including a stretchable outer cover 40, a stretchable bodyside
Appeal 2011-012410
Application 10/835,528

5
liner 92, and a „free-floating‟ non-stretchable absorbent assembly 44 bonded
to the stretchable outer cover at only one attachment point 74.” (Morman
20, l. 29 to 21, l. 9 (emphasis added).)
FF 7. “[D]ifficulty remains in finding a stretchable absorbent assembly 94
and a stretchable bodyside liner 92 that have sufficient retractive forces to
prevent the absorbent assembly and the bodyside liner from elongating too
far and causing bagging and wrinkling of the absorbent assembly and the
bodyside liner.” (Morman 20, ll. 18-28; Figure 9.)
FF 8. Clear is directed to absorbent articles, such as diapers, having fit
panels. “The fit panels have longitudinal elastic extensibility that provides a
body contact force causing the containment assembly to have improved
contact with a wearer.” (Clear Abstract.) A fit panel can have an elastic
extensibility “from about 1 cm (0.25 inches) to about 5 cm (2 inch) without
rupture. (Id. col. 10, ll. 29-30.)
FF 9. “[T]he diaper 20 preferably comprises a containment assembly 22
comprising a liquid pervious topsheet 24; a liquid impervious backsheet 26
joined to the topsheet; and an absorbent core 28 positioned between the
topsheet 24 and the backsheet 26.” (Clear 4, ll. 24-28.) “[T]he topsheet 24 is
preferably elongatable, more preferably drawable, but not necessarily
elastomeric, so that the topsheet 24 will, upon mechanical stretching, be at
least to a degree permanently elongated such that it will not fully return to
its original configuration.” (Id. at 8, ll. 21-25.)
FF 10. The Specification provides that “„stretchable‟ refers to a
material that may be extensible and/or elastic (or elastomeric). That is, the
material may be extended, deformed or the like, without breaking, and may
Appeal 2011-012410
Application 10/835,528

6
or may not significantly retract after removal of an extending force.” (Spec.
5, ll. 30-33.)
FF 11. The Specification provides that “„elastic” or „elastomeric‟ are
used interchangeably herein and refer to property of a material where upon
removal of a elongating force, the material was capable of recovering to
substantially its unstretched size and shape or the material exhibits a
significant retractive force.” (Spec. 5, l. 33 to 6, l. 3.) Suitable elastic
material includes breathable elastic film/nonwoven laminate. (Id. at 19, l. 29
to 20, l. 8.)

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. For the same reason, if a technique
has been used to improve one device, and a person of ordinary skill in
the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application
is beyond his or her skill.

Id. at 417. It is proper to “take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” Id. at 418. See also
id. at 421 (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”). In addition, like our appellate reviewing court, “[w]e
will not read into a reference a teaching away from a process where no such
Appeal 2011-012410
Application 10/835,528

7
language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).

ANALYSIS
The Examiner‟s statement of rejection and rebuttal may be found at
pages 3-20 of the Answer.
Appellants‟ arguments are: that Morman does not “teach that the
entire chassis can stretch in any significant way” (App. Br. 6), that Clear
“fails to teach a „stretchable bodyside liner‟” (id.), and that Morman teaches
away from using a stretchable bodyside liner (id. at 7-8).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner's position. See In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)); see also In re Jung, 637 F.3d 1356 , 1365 (Fed. Cir. 2011) (Board
did not err in placing burden on appellants to show “reversible error” where
examiner gave appellants adequate notice of statutory ground and rationale
for rejection). Therefore, we look to Appellants' Brief to show error in the
proffered prima facie case. Only those arguments actually made by
Appellants have been considered in this decision. Arguments which
Appellants could have made but chose not to make in the Brief have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appeal 2011-012410
Application 10/835,528

8
We are not persuaded by Appellants‟ arguments that Morman fails to
disclose a stretchable chassis. The Examiner found that Morman disclosed
stretchable bodyside lines. (Ans. 17-18.) Morman disclosed a completely
stretchable chassis, having a stretchable outer cover, a stretchable bodyside
liner and a stretchable absorbent assembly. (FF 5.) Morman additionally
disclosed a stretchable chassis, having a stretchable outer cover, a
stretchable bodyside liner and a free-floating absorbent assembly. (FF 6.)
We agree with the Examiner‟s finding that Morman disclosed an absorbent
article having a stretchable bodyside liner.
We are not persuaded by Appellants argument that Clear “fails to
teach a „stretchable bodyside liner.‟” (App. Br. 6.) The Examiner found that
Clear disclosed an absorbent article with a stretchable outer cover,
stretchable liner and absorbent structure in between. (Ans. 9-10.) Clear
provides for topsheets (bodyside liners) that are stretchable but may not
retract fully. (FF 9.) The Examiner found that Clear has at “least 60% of
lengthwise stretch contained in a respective waist zone waist zone [sic] 45,
38 and reducing stretch in the crotch and midsection zones 48 by attaching
the absorbent structure 28 to a bodyside liner 24, outer cover 40 or both”
(Ans. 10) (internal citation omitted). We agree with the Examiner‟s finding
that Clear disclosed stretchable topsheets (bodyside liners).
We are not persuaded by Appellants‟ argument that Morman teaches
away from using a stretchable bodyside liner. Morman acknowledged the
difficulty of finding suitable bodyside liners that have sufficient retractive
force to prevent the liner and absorbent assembly from bagging. (FF 7.)
Stretchable materials in Morman include materials that can stretch but do not
Appeal 2011-012410
Application 10/835,528

9
possess retractive forces. (FFs 2, 3.) The Specification provides that
“stretchable” includes materials that may or may not retract. (FF 10.) Thus,
both Morman and the present Specification use the term “stretchable” to
refer to materials that can stretch but do not necessarily fully retract. A
statement in a reference that suggests improvements in the material are
necessary to reap the full benefit of the disclosed construction does not
constitute to a teaching away from the disclosed construction. “The prior
art‟s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed ….” In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Morman‟s preferred
embodiments are directed to non-stretchable bodyside liners this does not
constitute a teaching away from the use of the alternative construction that
uses stretchable bodyside liners. We agree with the Examiner‟s conclusion
that Morman disclosed absorbent articles with stretchable bodyside liners.

CONCLUSION OF LAW
We conclude that the preponderance of the evidence of record
supports the Examiner‟s conclusion that the combination of Morman in view
of Clear renders obvious the absorbent article of claim 1. We thus affirm the
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious, and as
claims 2-10 and 12-19 stand or fall with claim 1, we affirm the rejection as
to those claims as well.

Appeal 2011-012410
Application 10/835,528

10
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc