Ronald Joseph. Zink et al.

Patent Trials and Appeals Board

Nov 1, 2019

13893735 - (D) (P.T.A.B. Nov. 1, 2019)

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.
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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
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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);
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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
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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.”).
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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”).
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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.
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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.’”)
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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.
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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.
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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
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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
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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.
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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
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Overall
Outcome
21, 22, 29 1–16, 23–28,
30

AFFIRMED IN PART