Ex Parte Almberg et al

Board of Patent Appeals and Interferences

Mar 23, 2012

10684585 (B.P.A.I. Mar. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHRISTIAN ALMBERG and LUCAS BÄCK
__________

Appeal 2010-005008
Application 10/684,585
Technology Center 3700
__________

Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, 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 belted absorbent article. The Patent Examiner rejected
the claims for anticipation and obviousness. We have jurisdiction under
35 U.S.C. § 6(b). We affirm, and enter new grounds of rejection for
indefiniteness and double patenting.
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STATEMENT OF THE CASE
Claims 1-8 and 12-27 are on appeal. Claim 1 is representative and
reads as follows:
1. A belted absorbent article comprising:
an absorbent structure extending about a first longitudinal axis, said
absorbent structure including a top sheet, a backsheet and an absorbent batt
disposed between said top sheet and said backsheet, said absorbent structure
having a transverse axis dividing the absorbent structure into a front panel
terminating in a front end region and a rear panel terminating in a rear end
region, said absorbent structure being delimited by opposed longitudinal
edges and opposed transverse edges, and
a pair of opposed belt halves comprising nonwoven material attached
to said absorbent structure at said rear end region of said rear panel, each of
said belt halves being attached by a respective joint, each belt half extending
about a longitudinal axis of the belt such that each belt half extends
outwardly from a respective longitudinal edge of the absorbent structure,
wherein each of said joints between each said belt half and said
absorbent structure is such that when each said belt half is subjected to a
tension force of 35 N acting along said longitudinal axis of the belt, and said
longitudinal axis of the belt creates an angle (α) to said transverse axis of
said absorbent structure, the following minimum average release times (t) of
each said belt half from said absorbent structure are attained:
when α = 10°, t ≥720 seconds;
when α = 20°, t ≥330 seconds;
when α = 25°, t ≥240 seconds;
when α = 30°, t ≥180 seconds; and
when α = 40°, t ≥75 seconds.

The Examiner rejected the claims as follows:
 claims 1-6 and 12-27 under 35 U.S.C. § 102(b) as anticipated by, or in
the alternative under 35 U.S.C. § 103(a), as unpatentable over Ames;1
and

1 Kathleen Quinlan Ames et al., US SIR H1674, published Aug. 5, 1997.
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 claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Ames
and Leak.2

ANTICIPATION/OBVIOUSNESS
The Issues
The Examiner’s position is that “Ames teaches the present invention
substantially as claimed except Ames does not teach the claimed release
times.” (Ans. 4.) The Examiner found that Ames taught similar materials
and structure for the belt halves as Appellants disclose. (Id. at 5, comparing
Ames cols. 16-18 to Appellants’ Specification ¶¶ 36 and 40.) The Examiner
found this evidence sufficient to shift the burden to Appellants to prove that
Ames did not disclose the same invention. (Id.) According to the Examiner,
[e]ven though Ames does not disclose the release times, the claims are
structural claims and the belt halves of Ames have elastic capabilities
and can be subjected to a tension and provide a release time from that
tension. The release times are directed to an intended use of the
article. Intended use must result in a structural difference between the
claimed invention and the prior art in order to patentably distinguish
the claimed invention from the prior art. If the prior art structure is
capable of performing the intended use, then it meets the claim
limitations.

(Id. at 4-5, citation omitted.) Comparing Ames’ disclosure to Appellants’
Specification, the Examiner found that
Ames obviously includes belt halves capable of providing the claimed
release times. The belt halves of Ames have the same properties
(elasticity, attached along the longitudinal axis, extending outwardly
from a longitudinal edge) and is used in the same environment as
appellant's outer cover (a belt in an absorbent product). When the

2 A. Todd Leak et al., US 2003/0100878 A1, published May 29, 2003.
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structure recited in the reference is substantially identical to that of the
claims of the instant invention, claimed properties or functions are
presumed to be inherent.

(Id. at 5.)
Appellants contend that the rejection erred by ignoring structural
limitations in the claims. (App. Br. 16-19.) Specifically, the claims “recite
structural limitations in the form of conditions that must be fulfilled by the
claimed joints. For example, only joints that meet certain structural criteria
will satisfy the release times. . . . Applicants submit that the joints are
limited by the requirements of the releasing clause since only certain joints
will meet such requirements.” (Id. at 18.) Appellants first argue that the
Examiner’s characterization of the recited release times as “an intended use”
is erroneous. (App. Br. 16.) According to Appellants, the release times
functional limitations must be evaluated and considered like any other
limitation of a claim. (Id. at 17-19, citing MPEP 2173.05(g); In re Venezia,
530 F.2d 956 (CCPA 1976); Ex parte Leak, Appeal No. 2000-000921 (BPAI
2002); and In re Casey, 370 F.2d 576 (CCPA 1967).
Appellants next argue that the facts do not support an inherency
rejection. (Id. at 19.) Specifically, Appellants read Ames to say only that if
belt flaps are separate elements joined to the diaper, they can be joined “by
any means as known in the art.” According to Appellants “it must be
recognized that all “means as known in the art” will not necessarily satisfy
the requirement of the means for joining recited in claim 1, and in this
circumstance the test for inherency is not met. (Id.) Finally, Appellants
contend that the Almberg Declaration evidenced surprising and unexpected
results that were improperly dismissed by the Examiner. (Id. at 20.)
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The Examiner responds that Ames teaches joining at col. 17, ll. 50-57
(Ans. 8), that “[t]he structure that is provided in the claims is met by the
Ames reference,” and that the Examiner “cannot conduct tests on the
material provided in the prior art references to see if they meet the equations
provided by Appellant[s]” (id. at 9.)
Appellants reply that “the Examiner's allegations still fail to explain
why it should be that any and every construction of materials as described in
Ames would necessarily satisfy the structural requirements recited in the
present claims.” (Reply Br. 3.) According to Appellants, any presumption
of inherency has been rebutted by the Almberg Declaration. (Id. at 13)
The issues are:
whether the wherein clause is properly characterized as an “intended
use;”
whether the rejection properly considered the structural limitations;
whether the evidence supports the rejection’s inherency finding;
whether the rejection improperly dismissed evidence of surprising and
unexpected results in the Almberg Declaration;
whether “any and every” construction in Ames’ disclosure must
necessarily satisfy the release times in the claim to anticipate.

Findings of Fact
1. Appellants’ Specification states that the joint between the belt half and
the absorbent structure is preferably via “adhesive bond lines, though
any attachment methods, such as thermal or ultrasonic bonding, may
be employed.” (Spec. ¶ 40, last sentence.)

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2. Ames stated:
If the belt flaps 62 and 64 are separate elements joined to the diaper
20, they can be joined by any by any [sic] means as known in the art.
Examples of suitable attachment means include adhesive bonding,
heat bonding, pressure bonding, ultrasonic bonding, dynamic
mechanical bonding or a combination of any of these means or any
other means as are known in the art.

(Ames, col. 17, ll. 51-57.)
3. Ames stated: “In the belted configuration, the belt flaps 62 and 64
extend from the rear waist region 44 of the diaper 20 around the
wearer's hips where the belt flaps 62 and 64 are fastened together to
form a belt.” (Id. at col. 16, ll. 50-54.)
4. Ames disclosed that a laminate of coverstock layers of any nonwoven
material with an elastomeric synthetic rubber foam sandwiched
between them was especially suitable material for the belt flaps. (Id.
at col. 17, ll. 58-63.)
4. Appellants rely on the “Declaration of Christian Almberg Under
37 CFR 1.132” as evidence of unexpected results. (App. Br. 20.)
5. The Almberg Declaration states that trial samples of a new belted
product “were failing due to the belt-halves detaching from the
absorbent chassis.” (Almberg Decl. ¶ 3.)
6. According to the Declaration, Declarant Almberg and colleague Bäck
established “that there existed a surprising and unexpected
relationship for a given force between the angle at which the force
was applied and the time it took for the belt half to become detached
from the product. For a product to be sufficiently reliable in use, we
could ascertain for what minimum periods of time the joint between
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the belt half and the absorbent chassis would have to withstand a
particular force at a particular angle.” (Id. at ¶ 6.)
7. According to the Declaration, the problems of product failure in the
trail samples were resolved when the joint release times listed in claim
1 were attained. (Id. at ¶ 7.)
8. A tension force of 35 N is equivalent to about 7.8 pound-force.
(Reply Br. 5.)
Principles of Law
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Where . . . the claimed and prior art products . . . are produced
by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his
claimed product. . . . Whether the rejection is based on
“inherency” under 35 U.S.C. 102 on “prima facie obviousness”
under 35 U.S.C. 103, jointly or alternatively, the burden of
proof is the same.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (affirming rejection of claims
under § 102 or § 103).
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the
characteristic relied on.

Id., quoting In re Swinehart, 439 F.2d 210 (CCPA1971); see also, In re
Fitzgerald, 619 F.2d 67, 70 (CCPA 1980).
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“[A] reference may anticipate even when the relevant properties of the
thing disclosed were not appreciated at the time.” Abbott Labs. v. Baxter
Pharm. Products, Inc., 471 F.3d 1363, 1367 (Fed. Cir. 2006). “The general
principle that a newly-discovered property of the prior art cannot support a
patent on that same art is not avoided if the patentee explicitly claims that
property.” Id. at 1368. “[T]he discovery of a previously unappreciated
property of a prior art composition, or of a scientific explanation for the
prior art’s functioning, does not render the old composition patentably new
to the discoverer. . . .” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999). “An inherent structure, composition or function is
not necessarily known. . . . Insufficient prior understanding of the inherent
properties of a known composition does not defeat a finding of anticipation.”
Id. at 1348-49.
Analysis
A. Claim 1
The joint between a belt and the absorbent structure portion of a
diaper may fail. Appellants disclose a testing procedure that measures the
time to fail when a certain amount of force is applied to the joint at various
angles. According to Appellants’ findings for example, a diaper is
satisfactory if the minimum average release time is 12 minutes or more
when a force of 35 N (about 7.8 pound-force) is applied to the joint at an α
angle of 10°.
The rejection erroneously characterized the claimed release time
limitation as an “intended use.” The rejection, however, did not stop there,
and went on to correct that error by providing an analysis explaining how
Ames appeared to meet the claimed release time limitation. The limitation
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at issue is found in the wherein clause, which states “the following minimum
average release times (t) of each said belt half from said absorbent structure
are attained . . . .”
The structural evidence upon which the rejection was properly
founded is that Ames described joining a belt to a diaper by heat bonding or
by ultrasonic bonding. (FF 2.) The Examiner found that Appellants’ claim
covers joints made by thermal bonding or ultrasonic bonding (FF 1), and
there is no dispute that these two joining methods are the same as Ames’
heat bonding and ultrasonic bonding. Appellants argue that “any and every”
construction in Ames’ disclosure must necessarily satisfy the claimed release
times to anticipate by inherency. We disagree. If either of Ames’ heat
bonding or ultrasonic bonding joint method necessarily provided a joint with
a “minimum average release time” as recited in the claim, the claim is
anticipated. Thus, the question is whether the evidence is sufficient to find
that Ames’ heat bonded joints or ultrasonic bonded joints would necessarily
last, on average, for at least 12 minutes if a 7.8 pound force was applied to
the joint at an α angle = 10°, etc.
On this question, the Examiner’s position is more reasonable than
Appellants’position. The opposite finding would mean that, on average,
prior art diaper joints made by the same heat bonding or ultrasonic bonding
method failed in less than 12 minutes, etc. The bald argument that prior art
diaper belt joints generally failed in less than 12 minutes is not credible.
Under these circumstances, the rejection’s evidence is sufficient to shift the
burden to Appellants to prove the contrary. See e.g., Best, 562 F.2d at 1255.
The fact that Appellants may have devised a novel (on this record) quality
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control test does not mean that old products passing the test become
patentable to Appellants. See e.g., Abbott Labs., 471 F.3d at 1368.
The Almberg Declaration refers to “trial samples of new belted
product.” (FF 5.) The Declaration does not establish that its trial samples
had any relevance to Ames’ diaper joints because it lacks any structural
description of the diaper joints that it discusses. The Declaration fails to
provide evidence relevant to establishing novelty over Ames’ diaper with
heat bonded or ultrasonic bonded belt joints. Even if the Declaration
established surprising and unexpected results by comparison to the prior art
diaper joints, which it does not, the point would be irrelevant to anticipation.
For evidence of surprising and unexpected results to be persuasive of
nonobviousness over prior art articles, the comparison must be to the closest
prior art articles. The Almberg Declaration makes no attempt to relate the
articles tested or the results obtained to the Ames diaper joints.
Finally, Appellants contend that the result reached in Ex parte Leak
should also be reached here. We disagree because the facts are different.
For example, there is no evidence in this record that any of Ames’ heat
bonded joints or ultrasonic bonded joints ever failed in less than 12 minutes.
There is no evidence suggesting that a person of ordinary skill in the art
would jump to the conclusion that they must have failed just because no one
ever tested the joints at the various angles and force conditions recited in
Appellants’ claim. Unlike the Leak facts, the evidence here is that Ames
joints were made in exactly the same way as Appellants’ joints, although
never subjected to Appellants’ quality control test.
Claims 2-5, 13-18, 25, and 26 have not been argued separately and
therefore stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
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B. Claim 6 recites “wherein each said belt half is attached to said
absorbent structure at said rear end region between said top sheet and said
backsheet.” The Examiner found that Ames described this arrangement.
(Ans. 6, citing Ames col. 16, ll. 50-54.) Appellants contend that “Ames does
not state that the waist feature is between the topsheet and backsheet.”
(App. Br. 21.) Ames described belts attached at the rear, but did not state
that the belt is attached between the topsheet and backsheet. (FF 3.) The
rejection did not account for that feature and is therefore reversed.
C. Claim 19 recites “a pair of opposed belt halves comprising exclusively
nonwoven material.” Appellants contend that “claim 19 requires that the
belt halves are exclusively nonwoven,” but the Examiner did not address this
feature. (App. Br. 21.) The rejection cited Ames’ disclosure of materials at
col. 16, l. 41 – col. 18, l. 21. (Ans. 5.) Appellants’ argument is unpersuasive
because the cited passage in Ames described belt flaps of exclusively
nonwoven material. (FF 4.)
D. Claim 20 recites that “each joint between each said belt half and said
absorbent structure comprises means for joining.” According to Appellants,
the Examiner’s reference to Ames, col. 17, ll. 49-57, as teaching means for
joining belt halves failed to comply with USPTO guidelines for
implementing In re Donaldson and failed to address the features of the claim
20. (App. Br. 21.) We disagree. Under Donaldson, the structure disclosed
in the Specification corresponding to the claim language must be considered
when rendering a patentability determination. 16 F.3d 1189, 1194 (Fed. Cir.
1994). Appellants’ Specification describes joining the belt to the diaper by
thermal bonding or by ultrasonic bonding. (FF 1.) Ames explicitly
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disclosed heat bonding and ultrasonic bonding embodiments as ways to join
the belt halves to the diaper. (FF 2.) A person of ordinary skill in the art
would have found these two steps of joining to be the same, and would have
found they necessarily produce the same means, i.e., a thermally-formed
joint or an ultrasonically-formed joint. The rejection of claim 20 is therefore
affirmed.
E. Claim 21 recites “each of said joints between each said belt half and
said absorbent structure comprises means for joining.” According to
Appellants, the Examiner’s reference to Ames, col. 17, ll. 49-57, as teaching
means for joining belt halves failed to comply with USPTO guidelines for
implementing In re Donaldson and failed to address the features of the claim
20. (App. Br. 22.) This argument is unpersuasive for the reason the same
argument about claim 20 is unpersuasive. See part D, above. The rejection
of claim 21 is affirmed.
F. Claim 22 recites “each of said belt halves is attached to the absorbent
structure between said topsheet and said backsheet with the respective joints
each comprising one region of bonding between each said belt half and said
top sheet, and each of said joints is spaced from the longitudinal edge . . . .”
Appellants contend that the rejection did not address the features of the
claim, and that the Examiner’s interpretation of longitudinal edge is not
reasonable. (App. Br. 22.) We have already found the evidence insufficient
to support finding that Ames described attachment between the topsheet and
backsheet. See part B, above, reversing rejection of claim 6. The rejection
of claim 22 is reversed for the same reason.

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G. Claim 23 recites
each of said belt halves is attached to the absorbent structure between
said top sheet and said backsheet, and each of said joints includes a
region of attachment between the respective belt half and said
backsheet and a region of attachment between the respective belt half
and said topsheet.

Appellants contend that the Examiner did not address this feature. (App. Br.
23.) We have already found the evidence insufficient to support finding that
Ames described attachment between the topsheet and backsheet. See part B,
above, reversing rejection of claim 6. The rejection of claim 23 is reversed
for the same reason.
H. Claim 24 recites “said backsheet includes first and second spaced
substantially parallel lines of attachment between each respective belt half
and said backsheet.” Appellants contend that the Examiner referred to
Leak’s Figure 3 to meet this requirement. (App. Br. 23.) Claim 24, which is
dependent on claim 23, stands rejected only over Ames, not Leak. Although
Appellants have separately argued claim 24, we find that the rejection of
claim 24 did not make up for the deficiency in the rejection of claim 23.
Claim 24 will stand with claim 23, and the rejection of claim 24 is also
reversed. See part H, above.
I. Claim 27 recites “the respective joints each comprising means for
counteracting the shear force . . . .” The Examiner found that the means
were not defined in the Specification. Appellants contend that “support for a
means plus function element may be implicit or inherent in the specification.
It is only required that one skilled in the art will be able to determine what
structure performs the recited function.” (App. Br. 24.) According to
Appellants, “one skilled in the art would have no trouble identifying the
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structure that counteracts the shear force,” but Appellants do not identify the
means. (Id.)
We conclude it was not unreasonable for the Examiner to find that the
joints formed by Ames’ thermal bonding or ultrasonic bonding would have
inherently included whatever structure counteracts shear force in the thermal
bonded or ultrasonic bonded embodiments of Appellant’s joints. We
therefore affirm.
In the absence of an explicit identification of a structure that
counteracts shear force, and notwithstanding Appellants’ argument that the
structure was implicitly disclosed, we also conclude that claim 27 is prima
facie indefinite, and enter an additional, new, ground of rejection set out
below. Although there is precedent for reversing an obviousness rejection of
an indefinite claim, we deem it prudent under the circumstances where a
potential implicit disclosure is alleged, to affirm the obviousness rejection
and enter the new ground of rejection. Cf. In re Steele, 305 F.2d 859,
(CCPA 1962).

NEW GROUND OF REJECTION UNDER 37 CFR § 41.50(b)
DOUBLE PATENTING
A rejection based on double patenting of the “same invention” type
finds its support in the language of 35 U.S.C. § 101 which states that
“whoever invents or discovers any new and useful process... may obtain a
patent therefor . . . .” (Emphasis added). Thus, the term “same invention,” in
this context, means an invention drawn to identical subject matter. See
Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438
(CCPA 1970); and In re Ockert, 245 F.2d 467 (CCPA 1957).
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A statutory type (35 U.S.C. § 101) double patenting rejection can be
overcome by canceling or amending the conflicting claims so they are no
longer coextensive in scope. The filing of a terminal disclaimer cannot
overcome a double patenting rejection based upon 35 U.S.C. § 101.
Claims 1-8 are rejected under 35 U.S.C. § 101 as claiming the same
invention as that of claims 1-8 of prior Patent No. US 6,726,670 B2.
Findings of Fact
9. The present Application is a continuation of Application No.
09/902,656, filed by the same inventors, which issued as Patent No.
US 6,726,670 B2 (the ‘670 patent).
10. The wherein clause in appealed claim 1 reads:
wherein each of said joints between each said belt half and said
absorbent structure is such that when each said belt half is subjected to
a tension force of 35 N acting along said longitudinal axis of the belt,
and said longitudinal axis of the belt creates an angle (α) to said
transverse axis of said absorbent structure . . . .

11. The wherein clause in claim 1 of the ‘670 patent reads:
wherein each of said joints between each said belt half and said
absorbent structure is designed such that when each said belt half is
subjected to a tension force of 35 N acting along said longitudinal axis
of the belt and said longitudinal axis of the belt creates an angle (α) to
said transverse axis of said absorbent structure . . . .

12. The differences between appealed and patented claims 1 are that
appealed claim 1 deletes the word “designed” and inserts a comma.
Principles of Law
“If it is determined that the same invention is being claimed twice,
35 U.S.C. § 101 forbids the grant of the second patent, regardless of the
presence or absence of a terminal disclaimer.” In re Vogel, 422 F.2d 438,
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441 (CCPA 1970). “The first question in the analysis is: Is the same
invention being claimed twice? . . . ‘invention’ here means what is defined
by the claims. . . . claims may be differently worded and still define the
same invention. . . . A good test, and probably the only objective test, for
‘same invention,’ is whether one of the claims could be literally infringed
without literally infringing the other.” Id.
Analysis
Appealed and patented claims 1 define the same belted absorbent
article because their language compels a conclusion that they define the
same thing. The insertion of the comma in appealed claim 1 has no effect on
the article’s structure or properties to differentiate the article from the article
defined in patented claim 1. Removing the word “designed” also has no
effect on the article’s structure or properties to differentiate it from the
article defined in patented claim 1. The article has the structure and
properties listed, whether intended by design or not. Even if “designed” is
interpreted as an implicit or explicit process step in making the article
defined in patented claim 1, the absorbent article defined is the same as the
one defined in appealed claim 1, because, again, the article has the structure
and properties listed, whether or not a design step was used. “If the product
in a product-by-process claim is the same as or obvious from a product of
the prior art, the claim is unpatentable even though the prior product was
made by a different process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985). Put simply, the genus of articles defined in appealed claim 1 is the
same as the genus defined in patented claim 1.
A belted absorbent article that literally infringes appealed claim 1
would literally infringe claim 1 of the ‘670 patent, and vice versa. Neither
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of these claims could be literally infringed without literally infringing the
other. Appealed claims 2-6, all dependent on appealed claim 1, are
duplicates of claims 2-6 in the ‘670 patent, which are likewise dependent on
claim 1 in the ‘670 patent. Appealed claims 2-6 define the same invention
as the corresponding patented claims. None of these claims could be
literally infringed without literal infringement to its correspondingly
numbered double.
Appealed claim 7 defines the same subject matter as patented claim 7.
The superficial difference is that appealed claim 7 is presented as dependent,
via intervening claim 6, on claim 1, but patented claim 7 is written in
independent form. Patented claim 7 recites completely the subject matter
that appealed claim 7 incorporates from claims 6 and 1 by dependency,
without adding or deleting subject matter. Appealed claim 8, dependent on
appealed claim 7, likewise defines the same subject matter as patented claim
8, which depends on patented claim 7. Appealed and patented claims 7 and
8 could not be literally infringed without literal infringement to the other,
respectively.

INDEFINITENESS
Claim 27 is rejected under 35 U.S.C. § 112, ¶ 2. The claim recites
“the respective joints each comprising means for counteracting the shear
force . . . .” The Examiner found that the Specification did not disclose the
structure associated with performing this function. Appellants’ brief states
that “[e]xemplary structure, material, or acts described in the specification as
corresponding to the claimed function may be found at p. 7, l. 5 – p. 12, l. 19
and Fig. 3.” (App. Br. 15.) We find no mention of the function
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“counteracting the shear force,” or means to perform it, at the cited
Specification pages or in Figure 3. Appellants decline to say what structure
performs this function and argue that a person of skill in the art “would have
no trouble identifying the structure that counteracts the shear force.” (App.
Br. 24.)
The “duty to link or associate structure to function is the quid pro quo
for the convenience of employing § 112, ¶ 6.” B. Braun Medical, Inc. v.
Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). “Failure to describe
adequately the necessary structure . . . in the written description means that
the drafter has failed to comply with the mandate . . . that all claims must
particularly point out and distinctly claim the subject matter which the
applicant regards as his invention.” In re Dossel, 115 F.3d 942, 946 (Fed.
Cir. 1997).
Although Appellants argue that an implicit disclosure of structure
associated with performing a function may be permissible (App. Br. 24),
there is no evidence in this record identifying a permissible implicit
disclosure of the means for counteracting shear force. It is well settled that
argument by counsel is not an adequate substitute for evidence. See In re
Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997). Claim 27 is therefore prima
facie indefinite under Dossel.

37 CFR § 41.50(b)
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
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claims, this opinion contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR
§ 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Should the Appellants elect to prosecute further before the Examiner
pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellants elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.
Appeal 2010-005008
Application 10/684,585

20

SUMMARY
We affirm the rejection of claims 1-5, 12-21, and 25-27 under
35 U.S.C. § 102(b) as anticipated by, or in the alternative under 35 U.S.C.
§ 103(a) as unpatentable over, Ames.
We reverse the rejection of claims 6 and 22-24 under 35 U.S.C.
§ 102(b) as anticipated by, or in the alternative under 35 U.S.C. § 103(a) as
unpatentable over, Ames.
We affirm the rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as
unpatentable over Ames and Leak.
Claims 1-8 are newly rejected for double patenting over claims 1-8 of
US 6,726,670 B2.
Claim 27 is newly rejected under 35 U.S.C. § 112, ¶ 2.
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; 37 CFR § 41.50(b)

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