Ex Parte Schneider

Board of Patent Appeals and Interferences

Feb 7, 2012

10995863 (B.P.A.I. Feb. 7, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/995,863 11/23/2004 Uwe Schneider 9840Q 7119
27752 7590 02/07/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
02/07/2012 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 UWE SCHNEIDER
__________

Appeal 2010-009779
Application 10/995,863
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a disposable
absorbent article, such as a disposable diaper, that has elastic elements with
de-elasticized sections. The Examiner entered a rejection for anticipation.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses that, while elastic members can give
disposable diapers a snugger fit, the elastic can create corrugations in
regions of the diaper, such as the waist, where corrugation would be
undesirable due to fit and aesthetic reasons (see Spec. 1-3). Appellant’s
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invention is thus directed to an absorbent article with elastic members
having at least one “heat deactivated zone” (id. at 7) in which the elasticity
in a region of the elastic member is removed by applying heat (see id. at 7-
8).
Claims 1-3, 5-10, 22, and 23 stand rejected and appealed (App. Br.
1).1 Appellant has not argued the claims separately, so they stand or fall
together. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 is representative and reads as follows:
1. A disposable absorbent article comprising:
a chassis having a first longitudinal edge, a second longitudinal
edge, a front waist edge, a rear waist edge, a front waist
region, a rear waist region, crotch region disposed
therebetween, a first lateral region, a second lateral
region, and a middle region between the first and second
lateral regions, the chassis further comprising:
a topsheet;
a backsheet joined to the topsheet; and
an absorbent core disposed between the topsheet
and the backsheet;
a first elastic member joined under tension to the chassis
proximate the first longitudinal edge;
a first heat deactivated zone overlapping the first elastic
member in at least a portion of the front waist region or
the rear waist region minimizing corrugations in the front
or rear waist region; and
an elastomeric first waist member joined under tension to at
least a portion of the front waist region of the chassis, the
elastomeric first waist member comprising a first waist
heat deactivated zone disposed in a portion of the
elastomeric first waist member minimizing corrugations
in the portion of the elastomeric first waist member, the

1 Appeal Brief entered November 20, 2009.
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portion of the elastomeric first waist member being
joined directly to the middle region of the chassis.

The sole rejection before us for review is the Examiner’s rejection of
claims 1-3, 5-10, 22, and 23 are rejected under 35 U.S.C. § 102(b) as
anticipated by Pieniak2 (Ans. 3-7).3
DISCUSSION
Appellant’s arguments do not persuade us that the Examiner erred in
finding that Pieniak anticipates claim 1.
Claim 1 recites a disposable absorbent article that has a chassis with,
among other features, first and second longitudinal edges, front and rear
waist edges, and a crotch region between the edges. Claim 1 also specifies
that the article has first and second lateral regions, with a middle region
between them.
Claim 1 further specifies that the article has a first elastic member
joined under tension to the chassis proximate the first longitudinal edge.
The first elastic member has a first heat deactivated zone which overlaps the
first member in at least a portion of the front or rear waist region, and which
minimizes corrugations in the front or rear waist region.
Claim 1 specifies further that the article has “an elastomeric first waist
member” joined under tension to at least a portion of the front waist region
of the chassis. The waist member must have, in one portion, a first heat
deactivated zone that minimizes corrugations in that portion of the waist
member. The portion of the waist member having the heat deactivated zone

2 U.S. Patent No. 4,450,026 (issued May 22, 1984).
3 The Examiner’s Answer inadvertently referred to claims 22 and 23 as
claims 12 and 13.
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and reduced corrugations must be joined directly to the middle region of the
chassis.
Pieniak discloses a disposable diaper that has elastic members
adjacent to the longitudinal edges of the chassis, the central portions, 23 and
24, of the longitudinal elastic members being elastic
to provide improved fit about baby’s thighs. At both ends of
each longitudinal side margins are non-elastic reinforced
corners 25, 26, 27, and 28. The elastic means in each of the
longitudinal side margins is a relatively wide, thin elastic film
ribbon. The film ribbon has been relaxed and its elasticity
removed, i.e. “killed”, at both ends of the ribbon to reinforce
the corners. . . .
. . . The end portions 43 are treated with heat, ultrasonics, or
similar energy inducing means, to remove the elasticity of the
film in those areas.

(Pieniak, col. 4, ll. 18-64; see also Fig. 1.)
In Figure 12 of Pieniak the elastic members adjacent to the
longitudinal margins are indicated by reference number 168 (id. at Figure
12). Pieniak describes the features of these elastic members as follows:
The elastic ribbons 168 are secured in a stretched state in the
central portion 172 and the rear portion 174. The elastic may or
may not be secured in the front portion 176 [of the diaper]. If
the elastic is secured in the front portion then both the front
portion 176 and the rear portion 174 of the elastic ribbons are
rendered relatively inelastic. The central portion 172 remains
elastic and thus gathers the edge of the diaper in the central
region. The secured inelastic regions provide reinforced corner
portions so that the tape tabs 178 and 180 do not easily tear
from the corner portions.

(Id. at col. 6, l. 65, through col. 7, l. 7.)
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Appellant contends that the Examiner erred in finding that Pieniak
anticipates claim 1 because, in concluding that elastic member 168 of
Pieniak has the features required of the claimed waist member, the Examiner
applied an unreasonable claim interpretation that was improperly
inconsistent with the Specification (App. Br. 4-11). Appellant’s arguments
do not persuade us, however, that the Examiner applied an unreasonable
claim interpretation.
Specifically, “while ‘the specification [should be used] to interpret the
meaning of a claim,’ courts must not ‘import[ ] limitations from the
specification into the claim.’ . . . [I]t is improper to ‘confin[e] the claims to
th[e] embodiments’ found in the specification . . . .” In re Trans Texas
Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (quoting Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005), citations omitted,
bracketed text in internal quotes in original).
As the Federal Circuit has explained, “during patent prosecution when
claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed.” In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989).
Here, we acknowledge, as Appellant argues, that the Specification
identifies the “elastomeric first waist member 301” as an elastomeric
member that is located adjacent or proximate to the “front waist edge 334”
(Spec. 12; see also Figures 2A, 2B), and that the waist member’s positioning
may be contrasted with the “first elastic member 122” which is located
proximate to the “first longitudinal edge 114 of the chassis” (Spec. 8; see
also Figure 1A).
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We also acknowledge that elements 168 of Pieniak are elastic
members which, like the longitudinal member of claim 1, are proximate
longitudinal edges of the chassis, as opposed to being proximate the front
waist edge of the diaper’s chassis (see Pieniak, Figure 12) .
However, unlike the first elastic member, which claim 1 expressly
states must be joined to the chassis “proximate the first longitudinal edge,”
claim 1 simply does not contain any language requiring the elastomeric first
waist member to be placed adjacent or proximate to the front waist edge in
the manner described in the Specification and depicted in Figure 2B.
Moreover, Appellant does not identify any explicit definition in the
Specification that limits the elastomeric first waist member to being so
located. Cf., In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004) (“[A]bsent
claim language carrying a narrow meaning, the PTO should only limit the
claim based on the specification . . . when [it] expressly disclaims the
broader definition.”).
Thus, in seeking to limit claim 1’s elastomeric first waist member to
elastic elements situated proximate the front waist edge, and thereby exclude
elements 168 of Pieniak, Appellant improperly imports features from the
Specification into the claims, in our view. We are therefore not persuaded
that the Examiner improperly interpreted claim 1.
Appellant argues that, even if elastic member 129 of Pieniak is
considered to correspond to Appellant’s waist member, that elastic member
“is elastic in the central portion and non-elastic at its two end portions for
reinforcement” (App. Br. 11). In other words, Appellant argues, “the elastic
Member 129 of Pieniak is configured exactly opposite of the elastomeric
first waist member recited in claim 1 of the present application” (id.).
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We are not persuaded. Appellant identifies “central portion 130”
(Pieniak, col. 6, l. 29; see also Fig. 10) of Pieniak as corresponding to the
claimed “middle region” of the chassis (App. Br. 11; see also id. at 8
(reproducing Pieniak Fig. 10)).
However, as explained in the Specification and seen in Appellant’s
Figure 2B, “middle region 376” includes essentially the entire chassis width,
with lateral regions 374 and 378 including only the ear panels 357, 359, 361,
and 363 (Spec. 12; see also Figure 2B). Thus, while it might be true that the
entire center-most portion of Pieniak’s waist elastic member is elasticized,
Appellant’s claimed “middle region” of the chassis encompasses a
significantly greater portion of the chassis than just the elasticized segment
of Pieniak’s waist member.
As seen in Pieniak’s Figure 10, the non-elastic portions 131 and 132
of Pieniak’s waist member 129 cover a significant portion of what
corresponds to the “middle region of the chassis” recited in claim 1, when
that term is viewed in light of the Specification. Similarly, Figure 4 of
Pieniak, repeatedly cited by the Examiner (see Ans. 3-4), shows an
elastomeric waist member with de-elasticized sections in a significant
portion of the chassis that corresponds to the claimed chassis middle region
(Pieniak, Fig. 4; see also id. at col. 5, ll. 8-16).
Thus, while it may be true that the center-most portions of the waist
members of Pieniak’s diapers are elastic, given the expanse of the claimed
“middle region of the chassis,” we are not persuaded that Pieniak fails to
describe an elastomeric first waist member that has a heat deactivated zone
joined directly to that region of the chassis.
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Finally, Appellant argues, even if one were to interpret the waist
member of claim 1 as encompassing element 168 of Pieniak, “Pieniak still
discloses that the central portion of this element is elastic and the end
portions are inelastic to gather the edge of the diaper in the central region
and provide reinforced corner portions” (App. Br. 11 (citing Pieniak, col. 7,
ll. 4 - 7)). Thus, Appellant contends, the “end portions of this element are
clearly disclosed as being bonded in the Edge Portion 131 of the diaper of
Pieniak, which is positioned analogously to the Lateral Region 378 of the
article depicted in [Appellant’s] figure 2B (i.e., not the middle region recited
in claims 1 and 23)” (id.).
We are not persuaded. The diaper shown in Figure 12 of Pieniak has
lateral tab or flap elements at each of the four corners, as well as lateral tape
tabs 178 and 180 (Pieniak, Fig. 12). Pieniak’s flap/tab elements correspond
to the elements appearing in the “lateral regions” recited in Appellant’s
claims (see elements 374 and 378 in Appellant’s Figure 2B, reproduced at
App. Br. 7).
In contrast, Pieniak’s elements 168 are located inward of the lateral
flap/tab elements, and are attached at their ends to the waist portion of
Pieniak’s diaper at a point that corresponds to the chassis middle region 376
shown in Appellant’s Figure 2B (see Pieniak, Fig. 12). Thus, when claim 1
is interpreted in light of the supporting disclosure, Appellant’s Figure 2B in
particular, we are not persuaded that elements 168 lack the claimed feature
of being bonded directly to the middle region of the chassis.
In sum, as Appellant’s arguments do not persuade us that the
Examiner erred in maintaining the anticipation rejection of claim 1 over
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Pieniak, we affirm the rejection. The remaining claims fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii).

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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