Ronald Joseph. Zink et al.Download PDFPatent Trials and Appeals BoardNov 1, 201913893735 - (D) (P.T.A.B. Nov. 1, 2019) Copy Citation 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. 13/893,735 05/14/2013 Ronald Joseph Zink 12415M 4934 27752 7590 11/01/2019 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 EXAMINER DULKO, MARTA S ART UNIT PAPER NUMBER 1746 NOTIFICATION DATE DELIVERY MODE 11/01/2019 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 mayer.jk@pg.com pair_pg@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RONALD JOSEPH ZINK, SARAH MARIE WADE, GARY DEAN LAVON, and KAORU ISHIHARA ____________ Appeal 2018-008449 Application 13/893,735 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to finally reject claims 1–16 and 21–30. We have jurisdiction under 35 U.S.C. § 6(b). 1 Our decision refers to the Specification (“Spec.”) filed May 14, 2013, the Examiner’s Final Office Action (“Final”) dated May 4, 2017, Appellant’s Appeal Brief (“Br.”) filed October 9, 2017, and the Examiner’s Answer (“Ans.”) dated May 17, 2018. 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as The Procter & Gamble Company. Appeal Br. 1. Appeal 2018-008449 Application 13/893,735 2 We AFFIRM IN PART. CLAIMED SUBJECT MATTER The invention relates to methods of making laminates for absorbent articles including elastic elements disposed at least partially intermediate first and second substrates of the laminate. Spec. 1:9–11; 1:31–2:1. Appellant discloses that methods comprise forming densified regions in the first substrate, adhesively attaching the elastic elements to the first substrate, joining the second substrate to the first substrate or to some of the elastic elements, and forming a plurality of rugosities in the first substrate by allowing the elastic elements to at least partially contract, wherein the frequency and amplitude of the rugosities results from the pattern of the densified regions. Id. at 2:2–9. Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. 1. A method of making a laminate configured to form a portion of an absorbent article, wherein the laminate comprises a plurality of elastic elements disposed at least partially intermediate a first substrate and a second substrate, and wherein the first substrate has a primary fiber bond pattern formed therein that comprises a plurality of primary fiber bonds, the method comprising: forming densified regions in the first substrate, wherein a perimeter of each of the densified regions is larger than a perimeter of each of the primary fiber bonds, and wherein the densified regions together form a pattern of densified regions in the first substrate; adhesively attaching the elastic elements to portions of the first substrate; joining the second substrate to the first substrate or to some of the elastic elements; and forming a plurality of nested rugosities in the first and Appeal 2018-008449 Application 13/893,735 3 second substrates by allowing the elastic elements to at least partially contract, wherein frequency and amplitude ranges of the nested rugosities result from the pattern of the densified regions. Independent claims 10 and 23 differ from the method of claim 1 primarily in not reciting a step of forming a plurality of nested rugosities, but additionally reciting a step of attaching the elastic elements to one of the substrates in areas that are free of the densified regions. Independent claim 21 differs from the method of claim 1 primarily in not reciting a step of forming a plurality of nested rugosities, but additionally reciting a step of creating a frequency range of rugosities in the substrate as a result of the pattern of densified regions by allowing the elastic elements to at least partially contract. REFERENCES The Examiner relies on the following references, the prior art status of which is not in dispute: Name Reference Date Sakaguchi US 2009/0275909 A1 Nov. 5, 2009 Kauschke et al. US 6,537,644 B1 Mar. 25, 2003 Suzuki US 5,576,090 Nov. 19, 1996 REJECTIONS The Examiner maintains, and Appellant requests our review of, the following grounds of rejection: 1. Claims 1–9, 28, and 30 under 35 U.S.C. § 112, second paragraph, as indefinite (Final Act. 2); Appeal 2018-008449 Application 13/893,735 4 2. Claims 1–9, 28, and 30 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement (Final Act. 3); 3. Claims 1–16, 23–28, and 30 under 35 U.S.C. § 103(a) as unpatentable over Sakaguchi in view of Kauschke and Suzuki (Final Act. 3–19); and 4. Claims 21, 22, and 29 under 35 U.S.C. § 103(a) as unpatentable over Sakaguchi in view of Suzuki (Final Act. 19–21). OPINION After review of the Examiner’s and Appellant’s opposing positions, the applied prior art, and Appellant’s claims and Specification disclosures, we determine that Appellant’s arguments are sufficient to identify reversible error in each of the Examiner’s rejections, except where noted below. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we reverse the stated indefiniteness, written description, and obviousness rejections of claims 1–16, 23–28, and 30 for substantially the reasons set forth by the Appellant in the Appeal Brief, but affirm the stated obviousness rejection of claims 21, 22, and 29 for the reasons set forth by the Examiner in the Final Office Action. Rejections 1 and 2: 35 U.S.C. § 112, first and second paragraphs The Examiner rejects claims 1–9, 28, and 30 under 35 U.S.C. §112, second paragraph, as indefinite for reciting “nested rugosities.” Final Act. 2. The Examiner finds that the “term ‘nested’ means one rugosity would have to fit inside the other.” Id. at 2. However, the Examiner finds that because Appellant’s disclosure describes the rugosities as disposed on opposite sides of a substrate, these rugosities cannot be nested. Id. The Examiner also rejects claims 1–9, 28, and 30 under 35 U.S.C. § 112, first paragraph, as Appeal 2018-008449 Application 13/893,735 5 failing to comply with the written description requirement because “‘nested rugosities’ [] is not described in [the] originally [filed] application.” Id. at 3. Appellant argues these two rejections together. Br. 3–4. In particular, Appellant contends that Figures 19A, 20B, 20C, 20E, and 20F depict one substrate nested with another substrate in a rugosity and therefore provide support for “nested rugosities.” Id. at 4. Appellant asserts that, in Figure 19A, first substrate 302 is nested with second substrate 304 in a rugosity. Id. In response, the Examiner finds that the term “nested rugosity” is not known in the diaper art nor was it found in prior art searches. Ans. 3. In addition, the Examiner finds that the originally filed application fails to describe this term. Id. As such, the Examiner determines that one of ordinary skill in the art would not know that Figure 19A shows “nested rugosities” and would not understand the scope of this term. Id. “[W]e apply the approach for assessing indefiniteness approved by the Federal Circuit in Packard, i.e., ‘[a] claim is indefinite when it contains words or phrases whose meaning is unclear.”’ Ex parte McAward, No. 2015- 006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (quoting In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)). The language in 35 U.S.C. § 112, second paragraph, “of ‘particular[ity]’ and ‘distinct[ness]’ indicates[] claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms.” Packard, 751 F.3d at 1313. Although exact precision is not required, the claim language must be as reasonably precise as the subject matter permits. Id.; see also In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (The first inquiry “is merely to determine whether the claims do, in fact, set out and circumscribe a particular area with a reasonable degree of precision and particularity.”). Appeal 2018-008449 Application 13/893,735 6 Here, there is no dispute as to the meaning of the term “rugosity,” which we determine to mean “wrinkles in the substrates of the laminate.” See Final Act. 4 (“plurality of rugosities (wrinkles) in the first substrate”), 7 (“plurality of rugosities (wrinkles) in the second substrate”). This interpretation is consistent with Appellant’s disclosure which teaches: The term “rugosity” or “rugosities” as used herein may mean ridges, wrinkles, and/or creases formed in a substrate proximate to elastic elements attached to or otherwise engaged with the substrate when the elastic elements are in a relaxed state or a partially relaxed state. Spec. 9:24–27. In addition, there is no dispute as to the meaning of the term “nested,” which we determine to mean “to be placed one inside the other.”3 Thus, the adjective “nested,” when used to modify “rugosities,” means that one rugosity is placed or fits inside another rugosity. See Final Act. 2 (“‘nested’ means one rugosity would have to fit inside the other”). In spite of there being no dispute regarding the meaning of “nested rugosities,” the Examiner determines that the presence of these terms in the claims renders the claims indefinite because the disclosed rugosities are disposed on opposite sides of a substrate and cannot be nested. We disagree. Appellant’s Figure 19A shows rugosities or wrinkles in both first substrate 302 and second substrate 304, wherein the frequency and amplitude of these rugosities in each substrate are clearly shown to be the same such that the rugosities in first substrate 302 fit inside the rugosities in second substrate 304, and vice versa. Because the rugosities of each substrate match in 3 See https://www.thefreedictionary.com/nested, last visited October 10, 2019 (“(of similar object) placed one inside the other”). Appeal 2018-008449 Application 13/893,735 7 frequency and amplitude, these rugosities nest one inside the other, i.e., they are nested rugosities. The Examiner also determines that Appellant’s originally filed disclosure fails to provide written description support for these nested rugosities because the term “nested” does not appear therein. We disagree. Appearance of a claim in the specification in ipsis verbis does not guarantee that the written description requirement is satisfied, see, e.g., Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002), nor does a failure to meet that standard require a finding that a claim does not comply with the written description requirement, In re Edwards, 568 F.2d 1349, 1351-52 (Fed. Cir. 1978). “In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323, 56 USPQ2d 1481, 1483 (Fed. Cir. 2000). Nonetheless, the disclosure must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the invention. See id.; Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008). Here, as indicated above, Appellant’s Figure 19A clearly shows the nested rugosities and therefore possession of this aspect of the claimed invention. Accordingly, we do not sustain either of the Examiner’s rejections of claims 1–9, 28, and 30 under 35 U.S.C. § 112, first and second paragraphs. Rejection 3: Obviousness of claims 1–16, 23–28, and 30 The Examiner rejects claims 1–16, 23–28, and 30 under 35 U.S.C. §103(a) as unpatentable over Sakaguchi in view of Kauschke and Suzuki. Appeal 2018-008449 Application 13/893,735 8 Final Act. 3–19. Because the methods of independent claims 10 and 23, and Appellant’s arguments, differ from the method and arguments for claim 1, we address these claims separate from claim 1. Claim 1 Appellant argues that the obviousness rejection of claim 1 is based on an incorrect claim interpretation. Br. 4–6. In particular, Appellant contends that the Examiner misinterprets “nested rugosities” and therefore misapplies the prior art based on this incorrect interpretation. Id. We agree. The method recited in claim 1 includes a step of forming a plurality of nested rugosities in the first and second substrates. As discussed above, there is no dispute that “nested rugosities” means that one rugosity is placed or fits inside another rugosity. However, the Examiner applies a different interpretation— “folds (rugosities) of one substrate having larger amplitude (height) than the folds of the other substrate”—when applying the prior art to claim 1. Final Act. 3, citing Spec. ¶ 135. Although Specification paragraph 135 recites an embodiment in which the frequency and amplitude range of rugosities in the first and second substrates may be different, the Examiner does not direct our attention to any disclosure or evidence that the ordinary artisan would interpret the meaning of “nested rugosities” based on this embodiment. To the contrary, the ordinary artisan would not interpret “nested rugosities” based on the embodiment discussed in paragraph 135 because the rugosities of each substrate, having different frequency or amplitude, would not nest one inside the other. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)) (“‘claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’”) Appeal 2018-008449 Application 13/893,735 9 Therefore, the Examiner’s rejection relies on an interpretation of claim 1 that is inconsistent with Appellant’s disclosure as it would be interpreted by the ordinary artisan. In addition, the Examiner fails to find or otherwise establish that the prior art teaches or suggests providing nested rugosities, as correctly interpreted. Accordingly, we cannot sustain the Examiner’s obviousness rejection of claim 1 and dependent claims 2–9 and 27. Claims 10 and 23 Appellant argues that the Examiner fails to address the step of attaching the elastic elements to a substrate in areas free of densified regions as recited in claims 10 and 23. Br. 6. In particular, Appellant contends that Sakaguchi, Figure 5, shows elastic elements 4 are not attached to one of the substrates in areas free of densified regions 21. Id. Appellant notes that the rejection finds that Sakaguchi teaches adhesively attaching the elastic elements to the substrate without forming folds, but contends that this feature does not address step of attaching the elastic elements to the substrate in areas free of densified regions. Id. The Examiner responds that the folds read on the densified regions “because any fold in a substrate has more material than the rest of the substrate and is ‘densified’.” Ans. 3. The Examiner further explains that “a fold naturally is a region where material is laid upon itself and therefore is naturally thicker (denser) than a region lacking those folds.” Id. The Examiner therefore finds that the finding that Sakaguchi teaches attaching the elastic elements to the substrate without folds addresses the recitation that these elements are attached to the substrate in areas free of densified regions. Id. Appeal 2018-008449 Application 13/893,735 10 Thus, the issue here concerns the proper interpretation of “densified regions” as used in claims 10 and 23. See Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003) (explaining that anticipation and obviousness require comparison of the properly construed claims to the available prior art); Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“Only when a claim is properly understood can a determination be made . . . whether the prior art anticipates and/or renders obvious the claimed invention.”). “During examination, ‘claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364 (quoting In re Bond, 910 F.2d at 833). Appellant discloses forming a pattern of densified regions in at least the first substrate, wherein the perimeter of each of the densified regions is larger than the perimeter of the primary fiber bonds of the first substrate. Spec. 2:1–4. In addition, Appellant discloses that the frequency and amplitude of the rugosities result from the pattern of the densified regions. Id. at 2:8–9. Appellant further discloses that densified regions provide for alteration of local stiffness of a substrate “to better define buckling or pleating points in interstitial areas between the elastic elements.” Id. at 31:25–27. In addition, Appellant discloses, in measuring the dimensions of densified regions, that the laminate is extended to remove rugosities before a square segment of the laminate is cut out for the measurement. Id. at 59:21– 24. Appeal 2018-008449 Application 13/893,735 11 Appellant discloses that these “densified regions may be formed by calendaring, embossing, heating, other mechanical or thermal deformation, and/or densification.” Spec. 47:25–27; see also id. at 49:8–13, 53:29–31. Appellant’s Figure 19A, reproduced below, illustrates densified regions DR in substrate 302, wherein these densified regions may have a thickness less than about 1/3 of the thickness of the non-densified regions of the substrate. Id. at 32:11–13. Appellant’s Figure 19A, depicting a cross-section of a laminate Appellant further discloses that the term “densified region” refers to bonds formed in a substrate which have a thickness in a direction perpendicular to a plane of the substrate that is less than any areas of the substrate not comprising densified regions. Id. at 48:23–26. Appellant defines “bond” as a distinct location on the substrate at which the fibers or filaments are substantially more interconnected, when compared to unbonded areas of the substrate. Id. at 48:31–49:3. These disclosures describe the densified regions as regions of the substrate that have the fibers or filaments substantially more interconnected and have a thickness that is less than other areas. The densified regions are formed by processes that are known to produce such interconnectivity in the Appeal 2018-008449 Application 13/893,735 12 fibers or filaments of a substrate as well as the thickness reductions. The Examiner fails to direct our attention to any evidence or persuasive technical reasoning that folds provide either such increased fiber connectivity or thickness reduction, nor do we find any in this record. The ordinary artisan would also understand that these disclosures describe the densified regions as distinct regions of a substrate that alter local substrate stiffness to better define the buckling or pleating points defining the rugosities. As such, contrary to the Examiner’s interpretation, the ordinary artisan would understand that these densified regions are not rugosities or folds. Therefore, the Examiner’s rejection relies on an interpretation of claims 10 and 23 that is inconsistent with Appellant’s disclosure as it would be interpreted by the ordinary artisan. In addition, the Examiner fails to find or otherwise establish that the prior art teaches or suggests attaching the elastic elements in areas of the substrate free of the densified regions, as correctly interpreted. Accordingly, we cannot sustain the Examiner’s obviousness rejection of claims 1 and 23, and dependent claims 11–16 and 24–26, 28, and 30. Rejection 4: Obviousness of claims 21, 22, and 29 The Examiner rejects claims 21, 22, and 29 under 35 U.S.C. § 103(a) as unpatentable over Sakaguchi in view of Suzuki. The Examiner finds that Sakaguchi discloses the method of claim 21 except for forming different portions of the substrate with different pattern of folds or rugosities. Final Act. 19–20. The Examiner finds, however, that forming two different patterns of folds on two different portions of the same substrate was known in the art of making elastic laminates for diapers as taught by Suzuki. Id. at Appeal 2018-008449 Application 13/893,735 13 20. The Examiner concludes that it would have been obvious to modify Sakaguchi’s elastic laminate by including different portions having different patterns of folds in order to predictably provide a waist portion of a diaper with increased extension in the belly region. Id. Appellant notes that claim 21 recites, in part, forming different patterns of densified regions in different portions of the substrate. Br. 6. Appellant asserts that claim 21 does not claim two different patterns of folds. Id. at 7. As such, Appellant contends that it is unclear why the rejection addresses two different patterns of folds instead of different patterns of densified regions in different portions of the substrate. Id. With regard to Suzuki, Appellant argues that “bonding regions 3 (densified regions) all appear to be the same.” Id. Appellant’s argument is not persuasive of reversible error in the Examiner’s obviousness rejection of claim 21. As shown in Appellant’s Figure 19A (reproduced above), the patterns of densified regions DR in regions 334, 336 are different result in rugosities in these two regions having different frequencies and amplitudes. See Spec. 38:11-16. Further, Suzuki Figures 10a and 10b show that bonding or densified regions 3 having different patterns in the center and side regions result in different patterns of rugosities or folds. Suzuki, Figs. 10a and 10b, 8:16–24. Therefore, the Examiner’s finding that Suzuki, Figure 10b, teaches forming two different patterns of folds on two different portions of the same substrate demonstrates that Suzuki teaches forming different patterns of densified regions in different portions of the substrate as recited in claim 21. Appeal 2018-008449 Application 13/893,735 14 Appellant does not separately argue dependent claims 22 and 29. Accordingly, we sustain the Examiner’s obviousness rejection of claims 21, 22, and 29. CONCLUSION Upon consideration of the record, and for the reasons given above and in the Appeal Brief, the Examiner’s rejections are reversed. More specifically, the rejection of claims 1–9, 28, and 30 under 35 U.S.C. § 112, second paragraph, as indefinite is reversed; the rejection of claims 1–9, 28, and 30 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is reversed; and the rejection of claims 1–16, 23–28, and 30 under 35 U.S.C. § 103(a) as unpatentable over Sakaguchi in view of Kauschke and Suzuki is reversed. However, upon consideration of the record, and for the reasons given above and in the Final Office Action, the rejection of claims 21, 22, and 29 under 35 U.S.C. § 103(a) as unpatentable over Sakaguchi in view of Suzuki is affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–9, 28, 30 112, ¶ 2 1–9, 28, 30 1–9, 28, 30 112, ¶ 1, WD 1–9, 28, 30 1–16, 23–28, 30 103(a) Sakaguchi, Kauschke, Suzuki 1–16, 23–28, 30 21, 22, 29 103(a) Sakaguchi, Suzuki 21, 22, 29 Appeal 2018-008449 Application 13/893,735 15 Overall Outcome 21, 22, 29 1–16, 23–28, 30 AFFIRMED IN PART Copy with citationCopy as parenthetical citation