Ex Parte Costea et al

Board of Patent Appeals and Interferences

May 24, 2012

10346898 (B.P.A.I. May. 24, 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.
10/346,898 01/17/2003 Helene Karin Costea CM2401MCQ 4682
27752 7590 05/24/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
KIDWELL, MICHELE M
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
05/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HELENE KARIN COSTEA, ROBERTO D'ADDARIO,
IVANO GAGLIARDI, KATHRIN PRETZ, and GIOVANNI CARLUCCI
____________

Appeal 2010-002653
Application 10/346,898
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010- 002653
Application 10/346,898

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-11 and 15. Claims 12-14 have been objected to
as being dependent upon a rejected base claim, but would be allowable if
rewritten in independent form including all of the limitations of the base
claim and any intervening claims. Ans. 7. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b). We REVERSE.

REJECTIONS
Claims 1-8, 11, and 15 are rejected under 35 U.S.C. § 102(b) as
anticipated by Visscher (US 5,261,899, issued Nov. 16, 1993).
Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Visscher and Sutton (US 6,264,640 B1, issued Jul. 24,
2001).

CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, is representative of
the subject matter on appeal, and with emphasis added, recites:
1. An absorbent article comprising an apertured
topsheet, an underlying layer visible through the
apertures of the topsheet and a backsheet, wherein
the topsheet and the underlying layer
independently have a L Hunter value of less than
about 60.

OPINION
Visscher’s disposable diaper 1 includes a topsheet 2, absorbent pad 3,
a backsheet 4, and side flaps 5. Col. 3, ll. 7-14, Fig. 1. Visscher’s Figure 3
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Application 10/346,898

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depicts “a cross-sectional view of a polymeric, multilayer film 120 which
can be used in making formed-film topsheets.” Col. 4, ll. 26-28. The
multilayer film 120 includes a central filler layer 124, between two outer
layers 122. Col. 4, ll. 30-36. Visscher further discloses that the thickness of
the outer layers 122 may be up to 75 percent of the total thickness of the
multilayer film 120. Col. 4, ll. 41-52. Additionally, Visscher discloses that
a plastic web 10 may be suitable as a topsheet 2, where the web 10 has
apertures 11. Col. 3, ll. 22-26, 34-39.
The Examiner finds that Visscher discloses:
an absorbent article 1 comprising an apertured
topsheet 124 (see column 3, line 35), backsheet 4
(see Fig. 4 [sic 1]), an absorbent core 3 (Fig. 4 [sic
1]) positioned between the topsheet 124 and
backsheet 4, and an underlying layer
(lower/bottom element 122) (Figs. 1-3, column 3,
lines 1-49).
Ans. 4. In other words, the Examiner finds that Visscher’s disposable diaper
1 includes a lower outer layer (lower bottom element) 122 that corresponds
to “an underlying layer visible through the apertures of the topsheet” as
recited in claim 1. See Ans. 4.
The Appellants contend that “EVEN IF the lower layer of the film of
Visscher’s topsheet were an underlying layer, it is still not the case that such
an underlying layer is visible through the apertures of the topsheet.” App.
Br. 6.1. Additionally, the Appellants also contend that “[i]t appears to be
impossible that the lowermost layer of the film of Visscher could be visible
through the apertures of the topsheet of Visscher.” App. Br. 6.

1 Citations to the Appeal Brief are directed to the Amended Appeal Brief,
filed April 2, 2009.
Appeal 2010- 002653
Application 10/346,898

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The Examiner determines that:
[T]he topsheet [124] is apertured (comprises
holes); holes in an item expose the interior surface
of the element as well as the surface of any
elements beneath the holes. As such visibility of
the interior surfaces of the topsheet [124] and
underlying layer [122] is considered to be an
inherent result. The desired degree of visibility of
such items is a completely different issue than
what has been claimed.
Ans. 8 (emphasis added).
In other words, the Examiner finds that the central filler layer 124 is
apertured. However, as we understand Visscher’s disclosure, since film 120
is described as a fluid permeable film and a “formed-film topsheet,” we find
that the apertures of central filler layer 124 extend through the entire
multilayer film 120, including outer layers 122. See e.g., Visscher, col. 3, ll.
8-9 and 32-33. Hence, at best, the only visible surface of the lower bottom
element 122 within the aperture is its side, which visibility depends largely
on the degree of thickness of the lower bottom element 122.
With respect to the Examiner's inherency position, we note that when
a reference is silent about an asserted inherent characteristic, it must be clear
that the missing descriptive matter is necessarily present in the thing
described in the reference. Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1268 (Fed. Cir. 1991). “The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999). In this case, although we appreciate that it is
plausible that the lower outer layer (lower bottom element) 122 can be
visible through the apertures of topsheet 124, depending on the dimensions
of the aperture and the degree of thickness of outer layers 122, the Examiner
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Application 10/346,898

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has not provided any persuasive evidence that such is necessarily the case in
Visscher. Hence, we find that the Examiner’s position is speculative and
untenable.
Thus, the Examiner’s rejection of claims 1-8, 11, and 15 under 35
U.S.C. § 102(b) as anticipated by Visscher is not sustained.
The remaining rejection based on Visscher in combination with
Sutton relies on the same erroneous finding regarding the disclosure in
Visscher as discussed above, i.e., that lower bottom element 122 correspond
to an underlying layer as recited in claim 1. Thus, the rejection under 35
U.S.C. § 103(a) of claims 9 and 10 as unpatentable over Visscher and Sutton
is not sustained.

DECISION
We REVERSE the rejections of claims 1-11 and 15.

REVERSED

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