Ex Parte Roe et al

Board of Patent Appeals and Interferences

May 23, 2012

10769493 (B.P.A.I. May. 23, 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.
10/769,493 01/29/2004 Donald Carroll Roe 5494CRD3 8899
27752 7590 05/23/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
ZALUKAEVA, TATYANA
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
05/23/2012 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 DONALD CARROLL ROE, LAURA GRAVES SPALDING
RIJSWIJCK, and JULIE CHARLENE RULE
__________

Appeal 2011-004399
Application 10/769,493
Technology Center 3700
__________

Before MELANIE L. MCCOLLUM, STEPHEN WALSH, and
ERICA A. FRANKLIN, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a feminine hygiene garment. The Patent Examiner
rejected the claims for anticipation and obviousness. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
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STATEMENT OF THE CASE
Claims 1, 3-7, 9-12, and 36-44 are on appeal. Claim 1 is
representative and reads as follows (emphasis added):
1. A feminine hygiene garment comprising:
A) a menses impervious backsheet;
B) a menses pervious top sheet joined to said backsheet, said
top sheet having an inner surface oriented toward the interior of said
garment and an outer surface oriented toward the skin of the wearer
when said garment is being worn, said top sheet outer surface
comprises a nonuniform pattern of a lotion coating which is semi-
solid or solid at 20°C and which is partially transferable to the
wearer's skin; and
C) an absorbent core for retaining menses, said absorbent core
positioned between said topsheet and said backsheet;
wherein said nonuniform pattern is comprised of applying said
lotion coating to said top sheet in the form of a plurality of stripes that
are separated by one or more stripes having no lotion.

The Examiner rejected the claims as follows:
 claims 1, 3-7, 9-12, and 36-44 under 35 U.S.C. § 102(b) as anticipated
by Duncan1 or, in the alternative under 35 U.S.C. § 103(a) as
unpatentable over Duncan (Ans. 5-11);
 claims 1, 3-7, 9-12, and 36-44 under 35 U.S.C. § 103(a) as
unpatentable over Duncan and Buchalter2 (Ans. 5-11);
 claims 1, 3-7, 9-12, and 36-44 under 35 U.S.C. § 103(a) as
unpatentable over Duncan, Weiss,3 and Coleman4 or, in the
alternative, Duncan, Buchalter, Weiss, and Coleman (Ans. 11-12).

1 R. C. Duncan et al., US 3,489,148, issued Jan. 13, 1970.
2 Gilbert Buchalter, US 3,896,807, issued July 29, 1975.
3 Felicia R. Weiss et al., US 3,814,096, issued June 4, 1974.
4 Michael G. Coleman et al., US 4,426,418, issued Jan. 17, 1984.
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Application 10/769,493

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ANTICIPATION
Findings of Fact
1. The Examiner’s findings concerning the scope and content of
Duncan’s disclosure may be found at Ans. 5-11.
2. The Examiner found that Duncan described a feminine hygiene
garment having a lotion pattern defined as in Appellants’ claim 1:
With regard to the last section of claim 1, see Claim Language
Interpretation section supra and Figures 1-2 and 3 of ‘148 [Duncan]
which show long and narrow sections formed by discontinuous film
14 and droplets 14a of lotion coating separated from each other by
long narrow areas of no lotion coating, i.e. differ from the stripes of
lotion they adjoin. Also note, e.g., that 14a are not uniform.

(Ans. 9.)
3. Duncan’s Figure 1 is reproduced here:

{“FIGURE 1 is a fragmentary perspective view illustrating a preferred
embodiment of a disposable diaper topsheet of the present
invention.” (Duncan, col. 2, ll. 56-58.)}

4. Duncan’s Figure 2 is reproduced here:
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{“FIGURE 2 shows fibers 12a of topsheet 12 coated completely with
a treating material 13 whereby droplets 14a of oleaginous moisture
barrier materials will not wet the surfaces of the fibers.”
(Id. at col. 8, ll. 5-9.)}

4. Duncan’s Figure 3 is reproduced here:

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{“FIGURE 3 is a fragmentary vertical sectional view of apparatus
adapted to apply a moisture barrier material to one face of a
disposable diaper topsheet.” (Id. at col. 2, ll. 64-66.)}

5. Duncan’s Figure 4 is reproduced here:

{“FIGURE 4 is a fragmentary sectional view of the apparatus of
FIGURE 3 taken along line 4-4 thereof.” (Id. at col. 2, ll. 67-68.)}

6. Duncan explained its lotion application process as follows:
Apparatus for applying the discontinuous film 14 of oleaginous
moisture barrier material is illustrated in FIGURES 3 and 4, in which
cylindrically-shaped screen member 16 is rotated through a pool 17 of
such material and delivers the material to an application position A at
a substantially constant rate. The screen member 16 comprises a
multiplicity of rings 18 which are axially aligned and spaced from one
another and has a covering of wire fabric 20 of about U.S. Standard
40 mesh. Preferably, the cross-section of the ring is as small as
possible while retaining sufficient rigidity to support the screen
member in a radial direction. In this connection, such rings 18
constructed of 20 gauge stainless steel can have a radial thickness of
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Application 10/769,493

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about 1/8" when the outside diameter of the member 16 is about 12".
The rings 18 and the fabric 20 are united, as by spot welding, whereby
to form an integral assembly having an axial length equal to the
desired width of film 14.

(Id. at col. 8, ll. 9-26.)

Principles of Law
The requirement for anticipation that the prior art elements themselves
be “arranged as in the claim” means that claims cannot be “treated ... as
mere catalogs of separate parts, in disregard of the part-to-part relationships
set forth in the claims and that give the claims their meaning.” Lindemann
Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1458-
59 (Fed. Cir. 1984).

Analysis
Claim 1 defines a product made by a process of applying a lotion
coating in the form of a plurality of stripes separated by one or more stripes
having no lotion. Duncan applied its lotion coating by rolling wire fabric 20
in a lotion bath and bringing the wire fabric into contact with diaper topsheet
material. (FF 6.) Duncan therefore did not describe applying lotion by the
claimed process of applying lotion in the form of a plurality of stripes. No
striping pattern is evident in Duncan’s product shown in Figure 1. (FF 3.)
Duncan therefore did not describe the claimed product, although made by a
different process. The Answer stated: “‘Stripe’ is defined as ‘a line or long
narrow section differing…from parts adjoining such. The terminology
‘long’ and ‘narrow’ is considered relative absent claiming of specific
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dimensions.” (Ans. 4.) Even under the Answer’s definition for stripe,
Duncan did not describe the claimed product.

OBVIOUSNESS
Principles of Law
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).
A rejection based on section 103 clearly must rest on a
factual basis . . . . In making this evaluation, all facts must be
considered. The Patent Office has the initial duty of supplying
the factual basis for its rejection. . . . To the extent the Patent
Office rulings are so supported, there is no basis for resolving
doubts against their correctness. Likewise, we may not resolve
doubts in favor of the Patent Office determination when there
are deficiencies in the record as to the necessary factual bases
supporting its legal conclusion of obviousness.
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).

Analysis
A. The rejection over Duncan alone, and the rejection over Duncan and
Buchalter.
Neither of these rejections addressed the claim limitation “wherein
said nonuniform pattern is comprised of applying said lotion coating to said
top sheet in the form of a plurality of stripes that are separated by one or
more stripes having no lotion.” (Ans. 5-11.) As the rejections did not
account for that limitation, they must be reversed.

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B. The rejection over Duncan, Weiss and Coleman, or in the alternative
Duncan, Buchalter, Weiss, and Coleman.
The rejection states that Duncan described “a nonuniform pattern of
coating, e.g. a central stripe of lotion coating separating stripes having no
lotion.” (Ans. 12.) The rejection concludes:
To make the nonuniform/discontinuous lotion coating of [Duncan] a
nonuniform pattern as claimed in the last section of claim 1 instead, if
not already, would be obvious to one of ordinary skill in the art in
view of the interchangeability as taught by [Coleman] and [Weiss] of
a nonuniform pattern having a central stripe of lotion coating
separating stripes having no lotion for one of a plurality of strips of
lotion coating separated by one or more strips having no lotion or in
view of the recognition that such pattern improves efficiency of
manufacture and/or use and/or the prevention of contacting surfaces
from sticking to each other and the desire by [Duncan] and/or in any
disposable article to be efficient to manufacture and use and not have
contacting surfaces, e.g. when folded, see [Duncan] at col. 9, lines 71-
74, stick together.

(Id.)
Appellants contend:
Both Weiss et al. and Coleman et al. are directed to facial tissue
products. There is no teaching or suggestion in Weiss et al. or
Coleman et al. of absorbent articles, such as feminine hygiene
garments as presently claimed. Appellants therefore submit that there
is no motivation to modify an absorbent article, especially a feminine
hygiene garment for absorbing menses based on the teachings of
Weiss et al. or Coleman et al.

(App. Br. 5.)
We agree with Appellants that the rejection did not explain why a person of
ordinary skill in the art would have thought the Weiss and Coleman descriptions of
facial tissues would have been applicable to Duncan or Buchalter’s products.
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SUMMARY
We reverse the rejection of claims 1, 3-7, 9-12, and 36-44 under
35 U.S.C. § 102(b) as anticipated by Duncan or, in the alternative under
35 U.S.C. § 103(a) as unpatentable over Duncan.
We reverse the rejection of claims 1, 3-7, 9-12, and 36-44 under
35 U.S.C. § 103(a) as unpatentable over Duncan and Buchalter.
We reverse the rejection of claims 1, 3-7, 9-12, and 36-44 under
35 U.S.C. § 103(a) as unpatentable over Duncan, Weiss, and Coleman or, in
the alternative Duncan, Buchalter, Weiss, and Coleman (Ans. 11-12).

REVERSED

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