The Procter & Gamble Company

Patent Trials and Appeals BoardJun 10, 2020

15158656 - (D) (P.T.A.B. Jun. 10, 2020)

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. 15/158,656 05/19/2016 Klaus Eimann 13863MQ 7811 27752 7590 06/10/2020 THE PROCTER & GAMBLE COMPANY GLOBAL IP SERVICES CENTRAL BUILDING, C9 ONE PROCTER AND GAMBLE PLAZA CINCINNATI, OH 45202 EXAMINER WILLETT, TARYN T ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 06/10/2020 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 KLAUS EIMANN, BRADLEY EDWARD WALSH, and UWE SCHNEIDER Appeal 2019-004719 Application 15/158,656 Technology Center 1700 Before JEFFREY T. SMITH, JULIA HEANEY, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 3–35. See Final Act. 2–30. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “The Procter & Gamble Company of Cincinnati, Ohio.” Appeal Br. 1. Appeal 2019-004719 Application 15/158,656 2 CLAIMED SUBJECT MATTER The claims are directed to a process and apparatus for manufacturing an absorbent article using a laser source. Spec. 1:9–12. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for manufacturing an absorbent article, the method comprising: advancing a belt assembly, wherein the belt assembly comprises a first substrate defining a first outer surface, a second substrate defining a second outer surface, and an elastic material disposed between the first substrate and the second substrate; and advancing the belt assembly to a first laser assembly, where the first laser assembly comprises a first laser source positioned adjacent the first surface and a second laser source positioned adjacent the second surface, wherein the first laser source operatively engages the first surface of the belt assembly imparting a first line of weakness on the first surface of the belt assembly and the second laser source operatively engages that second surface of the belt assembly imparting a second line of weakness on the second surface of the belt assembly, wherein the first line of weakness and the second line of weakness are coincident. Claims Appendix (Appeal Br. 10). REFERENCES The prior art references relied upon by the Examiner are: Name Reference Date Mlinar ’040 US 6,838,040 B2 Jan. 4, 2005 Mlinar Nakakado Feinstein Verboomen US 2003/0051805 A1 US 2004/0035521 A1 US 2010/0154992 A1 US 2014/0110037 A1 Mar. 20, 2003 Feb. 26, 2004 June 24, 2010 Apr. 24, 2014 Appeal 2019-004719 Application 15/158,656 3 REJECTIONS Claims 1 and 5 are provisionally rejected on the ground of non- statutory double patenting. Final Act. 3. Claims 1, 3, 6, and 7 are rejected under 35 U.S.C. § 103 as being unpatentable over Verboomen in view of Feinstein. Final Act. 4. Claims 1, 3–5, 8, 9, and 11–16 are rejected under 35 U.S.C. § 103 as being unpatentable over Mlinar in view of Feinstein. Final Act. 6. Claims 1, 3–5, 8–10, and 13–16 are rejected under 35 U.S.C. § 103 as being unpatentable over Nakakado in view of Verboomen and Feinstein. Final Act. 13. Claims 17–22 are rejected under 35 U.S.C. § 103 as being unpatentable over Mlinar in view of Mlinar ’040. Final Act. 19. Claim 23 is rejected under 35 U.S.C. § 103 as being unpatentable over Mlinar in view of Mlinar ’040 and Feinstein. Final Act. 22. Claims 24–28, 30–31, and 33–35 are rejected under 35 U.S.C. § 103 as being unpatentable over Mlinar in view of Feinstein. Final Act. 23. Claims 29 and 32 are rejected under 35 U.S.C. § 103 as being unpatentable over Mlinar in view of Feinstein and Nakakado. Final Act. 28. OPINION Claim 1 (Verboomen in view of Feinstein) In rejecting claim 1 over Verboomen in view of Feinstein, the Examiner acknowledges that Verboomen does not teach a method “of advancing a belt assembly” that has first and second surfaces and “a first laser assembly . . . imparting a second line of weakness on the second surface of the belt assembly” so that “the first line of weakness and the second line of weakness are coincident.” Final Act. 4 (stating that Appeal 2019-004719 Application 15/158,656 4 “Verboomen is silent to the duplication of the single laser assembly for forming a line of weakness on the belt to first and second laser assemblies that form first and second coincident lines of weakness”). The Examiner accordingly relies on Feinstein for the teaching. Id. Citing Feinstein’s teaching about applying heat for delamination, the Examiner finds that a skilled artisan would have been motivated to duplicate the prior art single laser source to produce the recited coincident first and second lines of weakness. Id. (citing Feinstein ¶¶ 22, 40, 44–46). Appellant argues that the Examiner reversibly erred because the prior art does not teach applying the first and second laser sources on different sides of the belt assembly. Appeal Br. 5. The Examiner responds that the claim language does not preclude the first substrate being in the same plane as the second substrate. Ans. 4. The Examiner, however, does not explain how such an arrangement – that both laser sources are applied side by side as illustrated in the Examiner’s figure (id.) – could produce the recited coincident first and second lines of weakness. We accordingly do not sustain the rejection of claim 1 and its dependent claims based on Verboomen in view of Feinstein. Claim 1 (Mlinar in view of Feinstein) In rejecting claim 1 over Mlinar in view of Feinstein, the Examiner similarly acknowledges that Mlinar does not teach the first and second weaknesses being coincident and again cites Feinstein for the teaching. Final Act. 7. The Examiner finds that a skilled artisan would have duplicated Mlinar’s laser assembly to arrive at the recited coincident first and second lines of weakness. Id. Appeal 2019-004719 Application 15/158,656 5 The record before us, however, lacks evidentiary support that the duplication of the prior art method necessarily results in the recited coincident first and second lines of weakness. We accordingly do not sustain the rejection of claim 1 and its dependent claims based on Mlinar and Feinstein. Claim 1 (Nakakado, Verboomen, & Feinstein) As with the rejection of claim 1 based on Verboomen and Feinstein, the Examiner’s rejection of claim 1 based on Nakakado, Verboomen, and Feinstein is flawed in failing to show a teaching or suggestion of the recited coincident first and second lines of weakness. See Final Act 14. We accordingly do not sustain the rejection of claim 1 and its dependent claims based on Nakakado, Verboomen, and Feinstein. Claim 17 (Mlinar & Mlinar ’040) Independent claim 17 recites similar steps as claim 1 and the Examiner cites Mlinar ’040 at 6:66–7:5 for the teaching of a “second laser beam impart[ing] a second line of weakness onto [a] second substrate, wherein the second line of weakness is coincident with the first line of weakness.” Final Act. 20. The Examiner acknowledges that the cited portion of Mlinar ’040 describes applying two cutting assemblies on the same substrate to form one line of weakness but finds that a skilled artisan would have found it obvious to form the second line of weakness on another substrate. Ans. 8 (reasoning that doing so “would necessarily further reduce the tensile strength” of the material on which the line of weakness exists to achieve the objective of Mlinar ’040). The evidence, however, lacks a showing that the prior art teaches or suggests applying a cutting assembly to the recited first and Appeal 2019-004719 Application 15/158,656 6 second substrates on which the first and second lines of weakness are coincident. We accordingly do not sustain the rejection of claim 17 and its dependent claims based on Mlinar and Mlinar ’040. Claim 24 (Mlinar & Feinsten) Independent claim 24 is similar to claim 1 and recites “wherein the first line of weakness is coincident with the second line of weakness.” In rejecting claim 24 over Mlinar in view of Feinstein, the Examiner similarly acknowledges that Mlinar does not teach the first and second weaknesses being coincident and again cites Feinstein for the teaching. Final Act. 24–25. The Examiner finds that a skilled artisan would have duplicated Mlinar’s laser assembly to arrive at the recited coincident first and second lines of weakness. Id. The record before us, however, lacks evidentiary support that the duplication of the prior art method necessarily results in the recited coincident first and second lines of weakness. We accordingly do not sustain the rejection of claim 24 and its dependent claims based on Mlinar and Feinstein. Double Patenting Rejection In light of the foregoing, we decline to reach the double patenting rejection. We refer this back to the Examiner to determine the appropriateness of this rejection. See Ex parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). The Examiner should process the obviousness type double patenting rejection consistent with MPEP § 804 upon return of the present application to the jurisdiction of the Examiner. CONCLUSION The Examiner’s rejections are reversed. Appeal 2019-004719 Application 15/158,656 7 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5 Double patenting Not reached Not reached 1, 3, 6, 7 103 Verboomen, Feinstein 1, 3, 6, 7 1, 3–5, 8, 9, 11–16 103 Mlinar, Feinstein 1, 3–5, 8, 9, 11–16 1, 3–5, 8– 10, 13–16 103 Nakakado, Verboomen, Feinstein 1, 3–5, 8– 10, 13–16 17–22 103 Mlinar, Mlinar ’040 17–22 23 103 Mlinar, Mlinar ’040, Feinstein 23 24–28, 30– 31, 33–35 103 Mlinar, Feinstein 24–28, 30– 31, 33–35 29, 32 103 Mlinar, Feinstein, Nakakado 29, 32 Overall Outcome: 1, 3–35 REVERSED