Ex Parte DAHL et alDownload PDFPatent Trial and Appeal BoardMay 25, 201814646927 (P.T.A.B. May. 25, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/646,927 05/22/2015 105718 7590 05/30/2018 SCA Hygiene Products AB c/o Buchanan Ingersoll & Rooney, PC 1737 King Street, Suite 500 Alexandria, VA 22314 FIRST NAMED INVENTOR Dennis DAHL 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1018798-000816 1041 EXAMINER SASS,SARAA ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 05/30/2018 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): ADIPDOC 1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DENNIS DAHL and ANGELICA BURVALL 1 Appeal2018-002013 Application 14/646,927 Technology Center 3700 Before JOHN C. KERINS, MICHAEL L. HOELTER, and SEAN P. O'HANLON, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-7, 9-14, 16, 21, and 22, which constitute all the claims pending in this application. App. Br. 2. Claims 8 and 15 have been canceled while claims 17-20 have been withdrawn. App. Br. 2. Appellants' 1 Appellants identify the real party in interest as SCA HYGIENE PRODUCTS AB (which, we are informed, "is in the process of changing its name to ESSITY AB"). App. Br. 2. Appeal2018-002013 Application 14/646,927 counsel provided oral argument on May 15, 2018. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates to an absorbent article, such as an incontinence pad, a sanitary towel, a pantyliner or the like." Spec. 1 :5---6. Apparatus claim 1 is the sole independent claim, is illustrative of the claimed subject matter, and is reproduced below: 1. An absorbent article comprising; at least two stacked individual absorbent pads, wherein a first of said absorbent pads is configured for being releasably attached to an underwear of a user such that when the first absorbent pad is releasably attached to the underwear, the first absorbent pad is in direct contact with the underwear, and a bottom surface of a second of said absorbent pads is configured for being releasably attached to a top surface of said first absorbent pad via one of a pressure-sensitive adhesive, ultrasonic processing, hooks and loops, thermal bonding and mechanical bonding, wherein the second absorbent pad comprises at least one side portion which has been folded upwardly and inwardly along a substantially longitudinal fold line, such as to form a graspable gripping flap for manual handling of the second absorbent pad during removal thereof from the first absorbent pad, and wherein the gripping flap is not attached to the first absorbent pad. Roessler et al. Pateras et al. REFERENCES us 5,458,591 US 2007 /0078425 Al REJECTIONS ON APPEAL Oct. 17, 1995 Apr. 5, 2007 Claim 21 is rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2 Appeal2018-002013 Application 14/646,927 Claim 22 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claims 1-7, 9-14, 16, 21, and 22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Roessler and Pateras. ANALYSIS The rejection of claim 21 as failing to comply with the written description requirement Claim 21 recites first and second absorbent "cores" arranged to "overlap in a thickness direction." App. Br., Claims App'x 3. The Examiner contends that the limitation "'overlap in a thickness direction' is not recited in the Instant Specification and so presents new matter." Final Act. 3. Appellants reference the submitted Specification wherein "an absorbent core 6" is associated with "first absorbent pad 2." App. Br. 27; see also Spec. 11 :29-12:2. Appellants also identify where Appellants' Specification describes either "a relatively thin absorbent core" or "a relatively thick absorbent core" associated with "second absorbent pad 3." App. Br. 27-28; referencing Spec. 13:7-12. Nevertheless, Appellants' Figures 1 and 2 illustrate pads 2 and 3 stacked one atop the other but with the second absorbent pad 3 being illustrated "free from a separate absorbent core." Spec. 11 :24--12:4. However, as above, Appellants' Specification clearly states that second absorbent pad 3 may have either a thin or thick core. See also App. Br. 28 ("when the second absorbent pad 3 ... includes a second absorbent core and is stacked with the first absorbent pad 2 ... "). Accordingly, in view of the stacked relationship of the two pads depicted in Appellants' Figures, we do not agree with the Examiner's assessment that 3 Appeal2018-002013 Application 14/646,927 Appellants' Specification lacks written description support for their respective cores overlapping "in a thickness direction" as claimed. Consequently, and based on the record presented, we do not sustain the Examiner's rejection of claim 21 as failing to comply with the written description requirement. The rejection of claim 22 as being indefinite The Examiner states, "[t]he claim 22 term 'approximately equal' is indefinite since what is encompassed by a length being approximately equal could not be readily determined." Final Act. 3. Appellants disagree stating, "[i]t is well established that terms of degree are not necessarily indefinite." App. Br. 28 ( citations omitted). Appellants further contend that one skilled in the art would readily appreciate the three parts being "approximately equal" in "longitudinal extension" ( as claimed) was "intended to produce a small packaged absorbent article and that exact equality is not necessary to achieve the objective." App. Br. 29. The Examiner replies, "the three approximately equal parts indicated by Appellant are not equal in terms of surface area, nor perimeter, nor width, nor dimension." Ans. 18. However, as indicated above, the claims are directed only to approximate equality in "longitudinal extension," not to "surface area, nor perimeter, not width" as stated by the Examiner. See also Reply Br. 9. Further, because our reviewing court has rejected the proposition that claims involving terms of degree are inherently indefinite (see App. Br. 28), we are instructed, "a patentee need not define his invention with mathematical precision in order to comply with the definiteness requirement." Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005) (citation omitted). 4 Appeal2018-002013 Application 14/646,927 Accordingly, we agree with Appellants that one skilled in the art would understand this claim limitation. Hence, based on the record presented, we do not sustain the Examiner's rejection of claim 22 as being indefinite. The rejection of claims 1-7, 9-14, 16, 21, and 22 as being unpatentable over Roessler and Pateras Sole independent claim 1 is directed to a first absorbent pad ( of "at least two" pads) "configured for being releasably attached to an underwear of a user," and specifically, "the first absorbent pad is in direct contact with the underwear." App. Br., Claims App'x 1. The Examiner relies primarily on Roessler for disclosing "an absorbent article 20" having "at least two stacked individual absorbent pads 21, 25." Final Act. 5. However, the Examiner acknowledges, "Roessler fails to explicitly teach underwear"2 and relies on Pateras for such teaching. Final Act. 6 (referencing Pateras ,r 39); see also Ans. 10. The Examiner concludes that it would have been obvious to combine their teachings so that Pateras' "garment-attachment mechanism" would "help[] secure the article (Pateras 0072) and hold the article in place (Pateras 0074)." Final Act. 6; see also Ans. 11 (it would have been obvious "to add Roessler's absorbent article to the underwear taught by Pateras" to "hold Roessler's article securely in place"). Appellants contend the Examiner erred by "failing to provide a legally sufficient apparent reason for the proposed modification" of combining Roessler and Pateras so as to achieve an absorbent pad in direct contact with underwear. App. Br. 6. More specifically, Appellants contend, 2 Roessler teaches that the invention "may also be incorporated [] in absorbent articles such as adult incontinency garments, feminine napkins, children's training pants, or the like." Roessler 5:30-33. 5 Appeal2018-002013 Application 14/646,927 the Examiner "fail[ ed] to provide any factual finding that the fastening means of the Roessler diaper is insufficient and thus requires additional securement means, such as that described in Pateras." Reply Br. 2. It is clear that the Examiner is adding or combining Pateras' teaching of fastening Pateras' article 20 about the crotch region of an undergarment to Roessler's teaching of fastening a diaper to a user. Final Act. 6 (referencing Pateras ,r,r 72, 74; Fig. 2); Ans. 10-11. Appellants, however, contend that such a change to Roessler would render Roessler unsatisfactory for its intended purpose because including Pateras' underwear fasteners would compromise Roessler's seals about the legs of a user. App. Br. 10. Indeed, Roessler discloses "an absorbent article with improved leakage-resistance" and further that Roessler's diaper 20 "may include [] elastic members to conform the shape of the diaper to the wearer and minimize the potential for leakage." Roessler 3:21-22; 6:51-53; see also 6:66-7:2 (discussing "leg elastic members 33" that function to "form a seal" against the legs of a user). Hence, as per Appellants, changing Roessler to incorporate Pateras' undergarment fastening teachings would disrupt this leg seal (by extending Pateras' fasteners through the leg seal to the user's underwear) "thereby rendering [Roessler's] disposable diaper 20 unsatisfactory for the intended purpose in Roessler" (i.e., "improved leakage-resistance"). App. Br. 10. There is merit to Appellants' contention. The Examiner is clearly "add[ing] Roessler's absorbent article to the underwear taught by Pateras" while also relying on Pateras' underwear fasteners to further "hold Roessler's article securely in place." Ans. 11. The Examiner does not address the effect Pateras' "garment side attachment" would have in breaking or disturbing Roessler' s leg seal thereby permitting Roessler' s 6 Appeal2018-002013 Application 14/646,927 diaper to leak. Instead, the Examiner contends, "the elastic members in Roessler minimize the potential for leaking" (Ans. 11 ), but the Examiner does not explain how Pateras' fasteners, extending through Roessler's leg openings, would fail to disrupt the leg seal achieved by Roessler. Nor does the Examiner address the more basic reason why, if a user is already wearing a diaper, Pateras' additional underwear layer is warranted at all. Appellants also contend that even if an additional underwear layer is employed with Roessler's diaper, the result would still not achieve the limitation of a "first absorbent pad is in direct contact with the underwear" as recited. See App. Br. 11; see also Reply Br. 2. This is because Roessler discloses instead that liquid impervious backing "surface (24 []) would be in direct contact with the underwear, if present." App. Br. 11 (see also id. at 12); Reply Br. 2 (see also id. at 3); Roessler Figs. 4, 5. We are instructed that "rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, although the Examiner has made statements regarding the combination of Roessler and Pateras (Final Act. 6, Ans. 11 ), such statements lack the requisite articulated reasoning with rational underpinning ( as indicated above) necessary to support a conclusion that Roessler and Pateras, when combined as set forth by the Examiner, render claim 1 obvious. Accordingly, and based on the record presented, we do not sustain the Examiner's rejection of independent claim 1, and dependent claims 2-7, 9- 14, 16, 21, and 22, as being unpatentable over Roessler and Pateras. 7 Appeal2018-002013 Application 14/646,927 DECISION The Examiner's rejection of claim 21 as failing to comply with the written description requirement is reversed. The Examiner rejection of claim 22 as being indefinite is reversed. The Examiner's rejection of claims 1-7, 9-14, 16, 21, and 22 as being unpatentable over Roessler and Pateras is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation