Ex Parte 5,745,922 et al

Patent Trial and Appeal Board

Dec 22, 2014

90012813 (P.T.A.B. Dec. 22, 2014)

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.
90/012,813 03/22/2013 5,745,922 34297-68 5221
7590 12/22/2014
DORITY & MANNING, P.A.
ONE LIBERTY SQUARE
55 BEATTIE PLACE, SUITE 1600
GREENVILLE, SC 29601
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/22/2014 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte KIMBERLY-CLARK WORLDWIDE, INC.
Appellant, Patent Owner
________________

Appeal 2014-007857
Reexamination Control 90/012,813
Patent No. US 5,745,9221
Technology Center 3900
________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued May 5, 1998 to Gregory John Rajala, Steven Craig Gehling
and Paul Daniel Suke (“the ’922 patent”). The ’922 patent issued from
Appl. 08/382,108, filed January 31, 1995. The ’922 patent has been the
subject of related reexamination proceedings and litigation as detailed on
pages 1–2 of Appellant’s Brief on Appeal dated March 24, 2014; and page 2
of the Reply Brief dated June 25, 2014.
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STATEMENT OF THE CASE 1
The Appellant/Patent Owner appeals under 35 U.S.C. § 134(b) and 35 2
U.S.C. § 306 from a final rejection of claims 1–4, 7, 8, 11, 13, 16, 17, 20 and 3
21 under 35 U.S.C. § 102(b) (2011) as being unpatentable over Nomura (US 4
5,055,103, issued Oct. 8, 1991). Claims 5, 6, 9, 10, 12, 14, 15, 18, 19 and 5
22–37 are not subject to reexamination. (“Appellant’s Brief on Appeal” 6
dated March 24, 2014 (“Appeal Brief” or “App. Br.”) 2). It does not appear 7
that any claims were added or amended during the reexamination 8
proceeding. (Id.) We have jurisdiction under § 134(b) and § 306. 9
We AFFIRM. 10
In addition to the Appeal Brief, the Patent Owner also relies on a 11
“Reply Brief” dated June 25, 2014 (“Reply Br.”). The Patent Owner also 12
relies on a Declaration of Brian Rhodes executed October 7, 2013 (“Rhodes 13
Declaration” or “Rhodes Decl.”), Appendix A to the Appeal Brief; and a 14
translation of the first full paragraph of page 3, column 2, of Nomura JP 15
’263 (JP H03-186263 A, publ. Aug. 14, 1991), Appendix B to the Appeal 16
Brief. 17
The ’922 patent teaches providing a garment blank subassembly for a 18
disposable garment including multiple leg elastics adhered sequentially to 19
edges surrounding the leg openings. (’922 patent, col. 6, ll. 37–39 and Fig. 20
1). The ’922 patent additionally teaches that “using multiple [leg] elastics 21
facilitates placing of the elastics on the outer cover layer 12 while 22
maintaining advantageous production speeds” as the garment blank 23
subassembly moves through a machine in a direction perpendicular to the 24
longitudinal centerline of the blank. (’922 patent, col. 12, ll. 59–61). 25
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Figure 1 of Nomura depicts a diaper 1. Figure 2 of Nomura is an 1
exploded view of a garment blank subassembly for assembly into the diaper 2
1. (See Nomura, col. 4, ll. 55–62 (describing how to assemble the garment 3
blank subassembly of Figure 2 into the diaper 1 of Figure 1); see also Ans. 4
3). The garment blank subassembly depicted in Figure 2 of Nomura 5
includes a topsheet 6 and a backsheet 7. Nomura teaches that “[f]ront and 6
rear sections 10, 11 of the top- and backsheets 6, 7 define between the front 7
and rear sections 10, 11 a crotch area 12 having opposite side edges formed 8
with identical notched edges 13, 14, respectively, so as to define the 9
respective leg openings 2” of the diaper 1 after assembly. (Nomura, col. 3, 10
ll. 8–13; see also Ans. 3). As depicted in Figure 2, the blank also includes 11
elastic means 4 adhered along opposite end sections to the region of the 12
backsheet 7 near notched openings 14 corresponding to leg openings in the 13
assembled diaper 1. (Nomura, col. 3, ll. 26–40; see also Ans. 4). Nomura 14
teaches adhering the elastic means 4 to the backsheet 7 as the garment blank 15
subassembly moves through a machine in a direction perpendicular to a 16
longitudinal centerline of the blank. (See Nomura, col. 3, l. 59 – col. 4, l. 6 17
and Fig. 3). 18
19
ISSUES 20
Claims 1 and 16 are independent, each claiming a garment blank 21
subassembly. Claim 1 is representative of claims 1–4, 11, 13, 16, 17, 20 and 22
21 for purposes of the rejection on appeal. Claim 7 depends from claim 1 23
via claims 2, 3 and 4. Claim 8 depends from claim 7. 24
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Only those arguments actually made by the Patent Owner have been 1
considered. Arguments that the Patent Owner could have made but chose 2
not to make have not been considered and are deemed to be waived. See 37 3
C.F.R. § 41.67(c)(1)(vii) (2011); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 4
2011). Three issues are dispositive of this appeal: 5
First, does Nomura describe a garment blank subassembly including: 6
[a] front body portion having first and second front 7
leg edge portions along the leg openings; . . . [a] 8
back body portion having first and second back leg 9
edge portions along the leg openings; . . . [and a] 10
crotch having first and second crotch edge portions 11
on opposing sides thereof along the leg openings 12
as recited in claims 1 and 16? (See App. Br. 6–15; Reply Br. 3–5). 13
Second, does Nomura describe a garment blank subassembly 14
including a first elastic having first, second and third sections, “wherein the 15
first and third sections of the first elastic are stretched and the second section 16
of the first elastic [is] substantially relaxed when the garment blank 17
subassembly is laid out flat” as recited in claim 1?2 (See App. Br. 16–20; 18
Reply Br. 6–11). 19
Third, does Nomura describe a garment blank subassembly “including 20
a third elastic attached to at least one of the first and second layers along the 21
first crotch edge portion and a fourth elastic attached to at least one of the 22
first and second layers along the second crotch edge portion” as recited in 23
claim 7? (See App. Br. 20–25; Reply Br. 11–13). 24

2 Claim 16 includes a nearly identical limitation: “wherein the first and
third sections of the first elastic are stretched when the garment blank
subassembly is laid out flat and the second section of the first elastic is
substantially relaxed when the garment blank subassembly is laid out flat.”
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CLAIM 1 1
Claim 1 is reproduced below in revised reformat: 2
1. A garment blank subassembly having a front 3
body portion, a back body portion, and a crotch 4
intermediate of and extending from the front body 5
portion to the back body portion and between a 6
pair of leg openings in a garment to be assembled 7
from the garment blank subassembly, 8
the front body portion having 9
first and second front leg edge 10
portions along the leg openings, 11
a front end opposite the first and 12
second front leg edge portions and 13
first and second front sides, 14
the back body portion having 15
first and second back leg edge 16
portions along the leg openings, 17
a back end opposite the first and 18
second back leg edge portions and 19
first and second back sides, 20
the crotch having first and second crotch 21
edge portions on opposing sides thereof 22
along the leg openings, 23
the garment blank subassembly having 24
a length extending between the front 25
and back ends, 26
width extending between the first and 27
second sides and 28
a longitudinal centerline between the 29
first and second front and back sides, 30
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each of the first and second back leg edge 1
portions having an angular portion 2
extending generally along a line forming an 3
acute angle with the longitudinal centerline 4
the garment blank subassembly, when laid 5
out flat, comprising: 6
(a) a first layer, extending from the first end 7
through the crotch to the second end; 8
(b) a first elastic attached to the first layer, and 9
extending from a first locus adjacent the first back 10
side, 11
as a first section of the first elastic, 12
along the width of the garment blank 13
assembly, toward the front end at an 14
acute angle with the longitudinal 15
centerline and generally following the 16
first back leg edge portion toward the 17
crotch, 18
as a second section of the first elastic 19
across the crotch, and 20
as a third section of the first elastic 21
away from the first end at an acute 22
angle with the longitudinal centerline 23
and generally following the second 24
back leg edge portion, to a second 25
locus adjacent the second back side, 26
wherein 27
the first and third sections of the first 28
elastic are stretched and 29
the second section of the first elastic 30
being substantially relaxed when the 31
garment blank subassembly is laid out 32
flat. 33
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OPINION 1
First Issue 2
Claim 1 recites a garment blank subassembly including: 3
[a] front body portion having first and second front 4
leg edge portions along the leg openings; . . . [a] 5
back body portion having first and second back leg 6
edge portions along the leg openings; . . . [and a] 7
crotch having first and second crotch edge portions 8
on opposing sides thereof along the leg openings 9
The Patent Owner argues that the terms “first and second front leg edge 10
portions;” “first and second back leg edge portions;” and “first and second 11
crotch edge portions” must be read onto distinct structures in the garment 12
blank subassembly. (App. Br. 16–18). Despite the Patent Owner’s assertion 13
to the contrary (see App. Br. 18–19), the garment blank subassembly 14
depicted in Figure 2 of Nomura includes distinct “first and second front leg 15
edge portions;” “first and second back leg edge portions;” and “first and 16
second crotch edge portions” (see Ans. 3). 17
As explained earlier, Figure 2 of Nomura depicts a blank subassembly 18
for assembling a diaper 1 that includes a front body portion, generally 19
designated by 10; a back body portion, generally designated by 11; and a 20
crotch, generally designated by 12. (See Ans. 3). The ’922 patent, of which 21
appealed claim 1 is a part, uses the term “crotch” broadly enough to 22
encompass a portion of a garment blank subassembly that does not include 23
the entire leg opening. (See, e.g., ’922 patent, col. 10, ll. 16–20 and Fig. 2 24
(depicting the edge 78 of the crotch portion 24 as having a length L7 parallel 25
to the longitudinal centerline A–A less than the length of the leg opening 44 26
when the garment blank subassembly 10 is laid flat)). Reading the term 27
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occupy the entireties of the notched edges 14; instead, both the first body 1
portion and the second body portion include portions of the notched edges 2
14. 3
Claim 1 recites distinct “first and second front leg edge portions;” 4
“first and second back leg edge portions;” and “first and second crotch edge 5
portions” rather than distinct edges. Claim 1 does not recite that the edge 6
portions are contiguous. One may define first and second front leg edge 7
portions extending from respective sides of the front body portion part of the 8
way toward the crotch. Depending on their length, these first and second 9
front leg edge portions will extend essentially perpendicular to a longitudinal 10
centerline of the garment blank subassembly. One may also define first and 11
second front leg edge portions extending from the crotch portion part of the 12
way toward the sides of the back body portion. As the Examiner correctly 13
finds, these first and second front leg edge portions will include an angular 14
portion extending generally along a (tangent) line forming an acute angle 15
with the longitudinal centerline. (See Ans. 4 and 8). As defined in this 16
manner, the first and second front leg edge portions; the first and second 17
back leg edge portions; and the first and second crotch edge portions are 18
distinct structures, that is, distinct portions of the two notched edges 13, 14. 19
Therefore, we find that Nomura describes a garment blank subassembly 20
including: 21
[a] front body portion having first and second front 22
leg edge portions along the leg openings; . . . [a] 23
back body portion having first and second back leg 24
edge portions along the leg openings; . . . [and a] 25
crotch having first and second crotch edge portions 26
on opposing sides thereof along the leg openings. 27
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as recited in claim 1. 1
2
Second Issue 3
Claim 1 also recites a garment blank subassembly including a first 4
elastic having first, second and third sections, “wherein the first and third 5
sections of the first elastic are stretched and the second section of the first 6
elastic [is] substantially relaxed when the garment blank subassembly is laid 7
out flat.” The Patent Owner does not appear to argue that the recitation 8
“wherein the first and third sections of the first elastic are stretched” 9
distinguishes the subject matter of claim 1 from the disclosure of Nomura. 10
We find that the garment blank subassembly depicted in Figure 2 of Nomura 11
includes elastic means 4 with a first elastic in the form of elastic members 12
4B having a second section 4B2 wherein “the second section of the first 13
elastic [is] substantially relaxed when the garment blank subassembly is laid 14
out flat.” 15
16
Findings of Fact 17
The garment blank subassembly as depicted in Figure 2 of Nomura 18
includes elastic means 4. The elastic means 4 includes elastic members 4A 19
positioned on a surface of the front body portion of the backsheet 7 and 20
elastic members 4B positioned on a surface of the back body portion of the 21
backsheet 7. The elastic members 4B define first and third sections 4B1 22
along with a second section 4B2. 23
Figure 2 depicts the first section 4B1 as extending generally over the 24
width of the blank from a first locus at the outer end of the first back leg 25
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edge portion toward the front body portion at an acute angle with the 1
longitudinal centerline. The first section 4B1 generally follows the edge of 2
one of the notch openings 14 toward the crotch 13. The second section 4B2 3
extends across the crotch 13. Finally, the third section (also labelled 4B1) 4
extends away from the front body portion at an acute angle with the 5
longitudinal centerline. The third section generally follows the edge of the 6
opposite notch opening 14 to a second locus at the outer end of the second 7
back leg edge portion. (See Nomura, col. 3, ll. 26–40 and Fig. 2; see also 8
Ans. 4–5). 9
As noted earlier, Nomura teaches adhering the elastic means 4 to the 10
backsheet 7 as the backsheet 7 moves through a machine in a direction 11
perpendicular to a longitudinal centerline of the blank. (See Nomura, col. 3, 12
l. 59 – col. 4, l. 6 and Fig. 3). As depicted in Figure 3 of Nomura, the 13
machine applies the elastic members 4B along a path that reciprocates along 14
the longitudinal centerline of the garment blank subassembly in a sinusoidal 15
fashion as the backsheet 7 moves through the machine. The internal tension 16
and the elongation percentage of the elastic members 4B increase as the 17
elastic members are pulled toward the front body portion of the backsheet 7 18
and away from the back body portion. (Nomura, col. 4, ll. 8–23). 19
Nomura teaches adhering the sections of the elastic members 4B 20
within elliptical regions 17′ surrounding the notched edges 14 to the 21
backsheet 7. (Cf. Nomura, col. 3, ll. 62–66 (describing the application of the 22
adhesive to the adhesive areas 17′)). The adhesion of the outer sections of 23
the elastic members 4B to the backsheet 7 defines the first and third sections 24
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4B1, which are stretched by the action of the adhesive against the internal 1
tension of the elastic members. (See Ans. 5). 2
Nomura also teaches that, after the respective extensions 4A1, 4B1 of 3
the first and second elastic members 4A, 4B are adhered to the backsheet 7: 4
The lengths (the intermediate parallel lengths 4A2, 5
4B2 in FIG. 2) of the first and second elastic 6
members 4A, 4B extending between each pair of 7
intersections 4C and being closely adjacent to each 8
other are loosened to be brought further close 9
together since the area of the backsheet 7 10
corresponding to these intermediate lengths 4A2, 11
4B2 carries no adhesive. 12
(Nomura, col. 4, ll. 39–45). The Patent Owner correctly points out that the 13
phrase “loosened to be brought further close together” may mean no more 14
than that the elastic sections 4A2, 4B2 are not adhered to the backsheet 7. 15
(See App. Br. 13–14). Nevertheless, even the Patent Owner’s expert, Brian 16
Rhodes, agrees that the loose, second sections 4A2, 4B2 of the elastic 17
members 4A, 4B will relax and move closer together once the force used to 18
reciprocate the elastic members 4A, 4B in the longitudinal direction during 19
application to the backsheet 7 is removed. (See Rhodes Decl., paragraph 7). 20
21
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Claim Interpretation 1
The Patent Owner argues that the garment blank subassembly 2
depicted in Figure 2 of Nomura does not satisfy the limitation wherein “the 3
second section of the first elastic [is] substantially relaxed when the garment 4
blank subassembly is laid out flat.” More specifically, the Patent Owner 5
argues that the “term ‘substantially relaxed’ [as used in claim 1] refers to a 6
section of an elastic that is under no substantial elongation, is not stretched, 7
and is not under tension.” (Reply Br. 6). As support for this argument, the 8
Patent Owner cites several passages of the written disclosure of the ’922 9
patent that mention the term “substantially relaxed.” (See App. Br. 7). 10
The word “relaxed” itself denotes that a section of elastic is not 11
elongated, stretched or tensioned, however. To define the term 12
“substantially relaxed” as referring to a section of elastic that is not stretched 13
and is not under tension is to render to modifier “substantially” superfluous. 14
To define the term “substantially relaxed” as referring to a section of elastic 15
that is “under no substantial elongation” is simply circular. Because our 16
reviewing court disfavors claim interpretations that fail to give weight to all 17
words in the claim, defining the term “substantially relaxed” as referring to 18
“a section of an elastic that is under no substantial elongation, is not 19
stretched, and is not under tension” is unreasonable. 20
The word “substantially” is a term of degree. The Patent Owner 21
correctly states the law regarding the interpretation of terms of degree: 22
As stated in Section 2111 of the Manual of Patent 23
Examining Procedure, a claim term is given its 24
broadest reasonable interpretation consistent with 25
the specification. Although it is improper to 26
import claim limitations from the specification, the 27
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Manual of Patent Examining Procedure makes 1
clear that when a claim term uses relative 2
terminology one “must look to the specification for 3
the meaning ascribed to that term by the inventor.” 4
Claim terms that are words of degree have no 5
ordinary meaning apart from “some standard for 6
measuring that degree” found in the specification. 7
See Exxon Research & Engineering Co. v. United 8
States, 265 F.3d 1371, 1381 (Fed. Cir. 2001). 9
(App. Br. 7). 10
The word “relaxed” appears with terms of degree in several passages 11
of the ’922 patent. In particular, column 3, line 63 through column 4, line 18 12
of the ’922 patent teaches a disposable garment assembly formed from a 13
garment blank subassembly. In this garment blank subassembly: 14
One or more continuous threads of elastic is 15
disposed between, and secured to, the first and 16
second layers. First and second sections of the 17
elastic extend along the first and second leg 18
openings, thereby to form puckers about the first 19
and second leg openings at edges thereof. A third 20
section of the elastic extends across the crotch in 21
an essentially relaxed state, such that the width of 22
the crotch portion in the assembly corresponds 23
generally to the width of the crotch portion when 24
the crotch portion is laid out flat. 25
(’922 patent, col. 4, ll. 9–18 (italics added for emphasis)). Although this 26
passage refers to an “essentially relaxed” state rather than a “substantially 27
relaxed” state, the passage provides a standard for measuring whether an 28
elastic member is in either an “essentially relaxed” state or a “substantially 29
relaxed” state. 30
The Patent Owner argues that passages of the ’922 patent, such as 31
those at column 2, lines 39–41; column 12, lines 18–24 and 39–45; and 32
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column 15, lines 29–32, contrast “substantially relaxed” elastic sections with 1
elastic sections that are stretched or under tension. (App. Br. 7). These 2
passages do not imply that a “substantially relaxed” elastic section exhibits 3
no elongation, stretch or tension. All that these passages imply is that the 4
“substantially relaxed” elastic sections appearing in the embodiments taught 5
by the ’922 patent exhibit less elongation, stretch or tension than the elastic 6
sections identified as being stretched or under tension.4 As such, these 7
passages do not provide a standard for measuring whether an elastic member 8
is in a “substantially relaxed” state. 9
Therefore, in order to give effect to the modifier “substantially,” we 10
conclude the term “substantially relaxed” means relaxed sufficiently such 11
that the width of the crotch portion in the assembly, that is, in the assembled 12
garment, corresponds generally to the width of the crotch portion when the 13
crotch portion is laid out flat. The Patent Owner points to nothing in the 14
disclosure of the ’922 patent inconsistent with this interpretation. 15
16
Analysis 17
Both the crotch of the backsheet 7 depicted in Figure 2 of Nomura and 18
the crotch of the diaper 1 depicted in Figure 1 of Nomura are shown lacking 19
puckering or gathers on the order of the puckering at the edges of the leg 20
openings when assembled. The absence of puckering in the crotch sections 21

4 Column 12, lines 22–23 state that the second section of the elastic for
a particular embodiment is “substantially relaxed, and under no substantial
elongation.” Column 12, lines 43–44 uses similar language. As noted
earlier, defining “substantially relaxed” as “under no substantial elongation”
is circular. As such, these passages provide no standard for measuring
whether an elastic member is substantially relaxed.
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depicted in Figures 1 and 2 implies that the second sections 4A2, 4B2 of the 1
elastic members 4A, 4B are substantially relaxed. (See ’922 patent, col. 4, ll. 2
9–18 (“A third section of the elastic extends across the crotch in an 3
essentially relaxed state, such that the width of the crotch portion in the 4
assembly corresponds generally to the width of the crotch portion when the 5
crotch portion is laid out flat.”)). 6
The Examiner correctly finds that the loose second sections 4A2, 4B2 7
of the elastic members 4A, 4B are depicted as curved even beyond the 8
adhesive areas 17′. (Ans. 7). This fact supports the finding that the second 9
sections 4A2, 4B2 of the elastic members 4A, 4B are substantially relaxed. 10
The Patent Owner points out Brian Rhodes’ testimony that, in his 11
opinion, “the intermediate parallel lengths [that is, second sections 4A2, 4B2 12
of Nomura’s elastic members 4A, 4B] may retract a minor amount during the 13
process of making the garment [that is, the diaper 1] but will still remain 14
under a great amount of tension, elongation and stretch in the final product.” 15
(Rhodes Decl., para. 7; see App. Br. 14–15; see also Reply Br. 11). We 16
agree that Mr. Rhodes’ testimony is evidence—technical experts may testify 17
in the form of opinions within the scope of their technical expertise. See 18
Manual of Patent Examining Procedure § 716.01(c) (9th edition, rev. 11, 19
2013). 20
Nevertheless, Mr. Rhodes’ opinion is based on his understanding 21
regarding the degree to which leg elastics typically are stretched in 22
commercially-available garments so as to cause the topsheet or backsheet of 23
the garment to gather. (See Rhodes Decl., para. 8). As the Examiner points 24
out, Mr. Rhodes does not cite any evidence or other testimony in support of 25
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his understanding. (See Ans. 8). Mr. Rhodes does not comment on the 1
degree to which the elastic sections 4A2, 4B2 are shortened as they retract 2
from a sinusoidal arc to a chord spanning that arc. We find the drawing 3
figures of Nomura, which are drawn to represent the particular diaper 1 4
described by Nomura and its predecessors, more persuasive as to the effect 5
of the tension in the elastic sections 4A2, 4B2 than the testimony of Mr. 6
Rhodes, which is not based on the specific properties of the diaper 1 of 7
Nomura. 8
Therefore, we find that Nomura anticipates claims 1–4, 11, 13, 16, 17, 9
20 and 21 of the ’922 patent. On this basis, we sustain the Examiner’s 10
rejection of these claims. 11
12
Third Issue 13
Claim 7 depends from claim 1 by way of claims 2, 3 and 4. Claim 7 14
additionally recites that the garment blank subassembly of claim 4 includes 15
“a third elastic attached to at least one of the first and second layers along 16
the first crotch edge portion and a fourth elastic attached to at least one of 17
the first and second layers along the second crotch edge portion.” The 18
Examiner finds that each of Nomura describes each of the elements 4A, 4B 19
as a “plurality of elastic members” bonded at least partially to the backsheet 20
7. (See Ans. 6; see also Nomura, col. 3, ll. 26–28). The Examiner 21
additionally finds that one or more, but not all, of the elastic members 4B 22
correspond to the “first elastic” recited in ultimate parent claim 1, while the 23
remainder of the elastic members 4B correspond to the “third elastic” and 24
“fourth elastic” specifically recited in claim 7. (Ans. 6 and 8). The Patent 25
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Patent No. US 5,745,922

18
Owner argues that the term “elastic” as used in claims 1 and 7 reads on the 1
elastic members 4B as a whole; and not on any individual elastic member or 2
proper subset of the elastic members 4B. As such, Nomura fails to describe 3
a garment blank subassembly including distinct first, third and fourth 4
elastics. (See App. Br. 22–25; Reply Br. 11–13). 5
A claim under examination is given its broadest reasonable 6
interpretation consistent with the underlying specification. In re Am. Acad. 7
of Sci. Tech. Ctrs., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of 8
an express definition of a claim term in the specification or a clear 9
disclaimer of scope, the claim term is interpreted as broadly as the ordinary 10
usage of the term by one of ordinary skill in the art reasonably would permit. 11
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In 12
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Properties of preferred 13
embodiments described in the specification that are not recited in a claim do 14
not limit the reasonable scope of the claim. E-Pass Techs., Inc. v. 3Com 15
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). 16
The ordinary usage of the term “elastic” describes each of the 17
individual elastic members making up the plurality of elastic members 4B. 18
Neither the Patent Owner nor the Patent Owner’s expert, Brian Rhodes, 19
suggests that the term “elastic” has a meaning within the pertinent art 20
different from its lay meaning. The Patent Owner does not identify any 21
formal definition or disclaimer that is persuasive of a usage in the ’922 22
patent narrower than the ordinary usage. In particular, in a passage cited on 23
page 22 of the Appeal Brief, the ’922 patent states at column 11, lines 7–9 24
that the “elastic may comprise threads, ribbons, a film or composite. The 25
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Patent No. US 5,745,922

19
threads, ribbons, etc., may be multiple and may be applied as a composite.” 1
(Emphasis added.) The fact that the threads or ribbons may be multiple 2
implies that the threads or ribbons may also be singular. While the ’922 3
patent describes elastics comprised of multiple threads, the ’922 patent does 4
not limit the term “elastic” in such a way as to exclude elastics composed of 5
only single threads. Neither does the ’922 patent limit the term elastics so as 6
to exclude elastics running parallel to one another over their lengths. 7
The Patent Owner points out that particular third and fourth elastics 8
taught in the ’922 patent facilitate the application of the first and second 9
elastics by a machine running in a direction perpendicular to the longitudinal 10
centerline of the garment blank subassembly. (See App. Br. 24, citing ’922 11
patent, col. 13, ll. 7–25). Nomura also teaches applying the pluralities of 12
elastic members 4A, 4B using a machine that runs in a direction 13
perpendicular to the longitudinal centerline of the garment blank 14
subassembly. (See Nomura, col. 3, l. 59 – col. 4, l. 6 and Fig. 3). While 15
Nomura does not teach applying the elastic members corresponding to the 16
third and fourth elastics in a separate operation, those elastic members could 17
be applied in a separate operation after the elastic members corresponding to 18
the first elastic were applied. Therefore, the Patent Owner’s functional 19
argument as to why the term “elastics” excludes individual elastic members 20
or a subset of the plurality of elastic members 4B described by Nomura is 21
not persuasive. 22
Therefore, Nomura describes a garment blank subassembly including 23
first, third and fourth elastics. We sustain the rejection of claims 7 and 8.24
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20
DECISION 1
We AFFIRM the Examiner’s decision rejecting claims 1–4, 7, 8, 11, 2
13, 16, 17, 20 and 21. 3
Requests for extensions of time in this ex parte reexamination 4
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f) 5
(2011). 6
7
AFFIRMED 8
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Patent Owner: 19
20
DORITY & MANNING, P.A. 21
ONE LIBERTY SQUARE 22
55 BEATTIE PLACE, SUITE 1600 23
GREENVILLE, SC 29601 24
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Third Party Requester: 26
27
AMSTER, ROTHSTEIN & EBENSTEIN LLP 28
90 PARK AVENUE 29
NEW YORK, NY 10016 30