Ex Parte Carstens

Board of Patent Appeals and Interferences

Sep 7, 2012

11562977 (B.P.A.I. Sep. 7, 2012)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.
11/562,977 11/22/2006 JERRY EDWARD CARSTENS RUS-203

EXAMINER
Hasse & Nesbitt LLC
8837 Chapel Square Drive
Suite C
CINCINNATI, OH 45249
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE

09/07/2012 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.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JERRY EDWARD CARSTENS
__________

Appeal 2011-004169
Application 11/562,977
Technology Center 3700
__________

Before FRANCISCO C. PRATS, 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 system comprising a diaper and an absorbent article.
The Patent Examiner rejected the claims for indefiniteness, for failure to
comply with the written description requirement, for anticipation, and for
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appeal 2011-004169
Application 11/562,977

2
STATEMENT OF THE CASE
Claims 1-4, 9, 10, 12, and 13 are on appeal. Claim 1 is representative
and reads as follows:
1. A system comprising:
a) a diaper for holding an absorbent article in close bodily contact in a
crotch region of a wearer, said diaper having a longitudinal centerline
defining a longitudinal direction and a lateral centerline defining a lateral
direction, said diaper comprising:
1) a front region;
2) a crotch region attached to the front region, said crotch
region comprising elastic knit material suitable for use in a diaper, said
crotch region having high stretch in both the lateral and longitudinal
directions as measured by having a Crotch Holding Force (CHF-4.0) of
greater than about 0.1 kgf and a Crotch Holding Force (CHF-5.5) of less
than about 1.0 kgf; and
3) a rear region attached to the crotch region, said rear region
comprising at least two fastening systems that cooperate with the front
region to provide an adjustable waistband; and
b) an absorbent article capable of being held in close bodily contact in
the crotch region by said diaper, said absorbent article comprising a liquid
pervious side, a liquid impervious side opposite the liquid pervious side, and
an absorbent component between the liquid pervious side and the liquid
impervious side, wherein the liquid pervious side and the liquid impervious
side are arranged to form a unitary structure.

Claims 1-4, 9, 10, 12, and 13 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
because they recite new matter.
Claim 2 stands rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
Appeal 2011-004169
Application 11/562,977

3
Claims 1-4, 9, 10, 12, and 13 stand rejected under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Redwine1 and by incorporation, Carstens ‘411.2

I.
Issue
Has the Examiner established that the claims contain prohibited new
matter?

Findings of Fact
1. The Examiner found that the original Specification presented separate
embodiments in which the crotch region of the diaper was described
as having certain crotch holding forces. (Ans. 5.)
2. The Examiner found that the original Specification did not describe
the combination of a CHF-4.0 greater than about 0.1 kgf and CHF-5.5
less than about 1.0 kgf. (Id.)
3. The Specification defines Crotch Holding Force (CHF) as: “the force
exerted by a material when distending it with a force applied at right
angles to the plane of the material.” (Spec. 30, ¶ [0109].)
4. The Specification summarizes its CHF testing method as follows:
Summary of Test Method: Set up the tensile testing machine for
performing this test in accordance with both the manufacture[r]’s
instructions and procedures presented herein. A specimen of material
is securely clamped without tension within a “Ball Burst Test”
attachment. A force is exerted against the specimen by a polished,

1 Nona Jane Redwine et al., US 6,393,621 B1, May 28, 2002.
2 Jerry Edward Carstens et al., US 6,582,411 B1, June 24, 2003.
Appeal 2011-004169
Application 11/562,977

4
hardened steel ball attached to the tensile testing machine. Crotch
Holding Force (CHF) data are recorded as a function of extension
distance.

(Id. at 30, ¶ [0110].)
5. The Specification further explains:
- In the above method:
- CHF-0.0 is the force at 0 cm specimen elongation, i.e.,
the start of data collection.
CHF-0.0 should be 0 kgf at 0 cm elongation.
- CHF-2.0 is the force (kgf) at 2.0 cm Force Ball extension
distance.
- CHF-4.0 is the force (kgf) at 4.0 cm Force Ball extension
distance.
- CHF-5.5 is the force (kgf) at 5.5 cm Force Ball extension
distance.

(Id. at 31, ¶ [0113].)
6. The original Specification disclosed:
The crotch material typically has relatively low stretch modulus and
provides relatively high “available stretch” as worn. This high
available stretch in both the lateral and longitudinal directions,
combined with sufficient but relatively low holding force, helps to
maintain the article in close bodily contact across a range of body
sizes, article (e.g., pad) sizes, and body motions. The crotch region of
the diaper has a Crotch Holding Force (CHF-4.0) of greater than about
0.1 kgf, typically greater than about 0.2 kgf, as measured by the
Crotch Holding Force method presented herein. In one embodiment,
the crotch region has a Crotch Holding Force (CHF-5.5) of greater
than about 0.2 kgf, typically greater than about 0.3 kgf. The crotch
region also has a Crotch Holding Force (CHF-2.0) of less than about
1.0 kgf, typically less than about 0.8 kgf, more typically less than
about 0.6 kgf. In one embodiment, the crotch region has a Crotch
Holding Force (CHF-4.0) of less than about 1.0 kgf, typically less
than about 0.8 kgf, more typically less than about 0.6 kgf. In another
embodiment, the crotch region has a Crotch Holding Force (CHF-5.5)
Appeal 2011-004169
Application 11/562,977

5
of less than about 1.0 kgf, typically less than about 0.8 kgf. In yet
another embodiment, the crotch region has a Crotch Holding Force
(CHF-6.5) of less than about 1.4 kgf, typically less than about 1.2 kgf.

(Spec. 9, ¶ [0044].)

Analysis
The crotch region of Appellant’s diaper is defined as elastic knit
material having high stretch as measured by a CHF test. The test involves
clamping a specimen of knit material in an apparatus and applying force to
the material. (FF 4.) As applied force causes the material to become
distended, and when so distended the material itself exerts a force that can
be measured, i.e., the crotch holding force (CHF). (FF 3.) Distention is
measured in centimeters, and the CHF is measured in kgf units. (FF 5.) The
test method determines CHF at distention distances of 0, 2, 4, and 5.5 cm.
(FF 5.)
According to the original Specification, “The crotch region of the
diaper has a Crotch Holding Force (CHF-4.0) of greater than about 0.1 kgf.”
(FF 6.) The original Specification disclosed that “[i]n one embodiment,
CHF-5.5 may be greater than about 0.2 kgf, typically greater than about 0.3
kgf. . . . In another embodiment, the crotch region has a Crotch Holding
Force (CHF-5.5) of less than about 1.0 kgf, typically less than about 0.8
kgf.” (FF 6.) Thus, the original Specification disclosed that the crotch
region of the diaper may be made, for example, with (1) material having
CHF-4.0 greater than about 0.1 kgf, and CHF-5.5 greater than about 0.2 kgf;
or (2) material having CHF-4.0 greater than about 0.1 kgf, and CHF-5.5
greater than about 0.3 kgf; or (3) material having CHF-4.0 greater than about
Appeal 2011-004169
Application 11/562,977

6
0.1 kgf, and CHF-5.5 less than about 1.0 kgf; or (4) material having CHF-
4.0 greater than about 0.1 kgf, and CHF-5.5 less than about 0.8 kgf. This list
of four examples is not exhaustive because additional embodiments were
disclosed. The point is that example (3) supports the claims.
The Examiner appears to read the Specification’s references to CHF-
4.0 and CHF-5.5 as separate embodiments, and to read the claim as defining
a “combination” of separate embodiments. We disagree that two
measurements of a single piece of elastic material, taken when the material
is distended 4 and 5.5 cm, make the single piece of elastic material into
separate embodiments. To be sure, original paragraph 44 disclosed plural
example embodiments. But the material listed as example (3) above was
one of the explicitly disclosed embodiments. The new matter rejection is
reversed.
The Examiner objected to the Specification under 35 U.S.C. § 132(a)
on the ground that an amendment filed September 10, 2009, introduced new
matter. (Ans. 3, simply referring to the new matter rejection under § 112,
first paragraph.) Appellant contends that the objection is appealable. (App.
Br. 9, citing MPEP § 2163.06(II).) MPEP § 2163.06(II) provides: “If both
the claims and specification contain new matter either directly or indirectly,
and there has been both a rejection and objection by the examiner, the issue
becomes appealable and should not be decided by petition.” As the
Examiner simply directed attention to the written description rejection for an
explanation of new matter objection, and the written description rejection
has been reversed, there is no need to further discuss the issue.

II.
Appeal 2011-004169
Application 11/562,977

7
Issue
Has the Examiner established that claim 2 is indefinite?

Analysis
Claim 2 is dependent from claim 1. When the language of claim 1 is
combined with claim 2’s further limitation, paragraph “b)” of claim 2 reads:
b) an absorbent article capable of being held in close bodily
contact in the crotch region by said diaper, said absorbent article
comprising a liquid pervious side, a liquid impervious side opposite
the liquid pervious side, and an absorbent component between the
liquid pervious side and the liquid impervious side, wherein the liquid
pervious side and the liquid impervious side are arranged to form a
unitary structure,
wherein the absorbent article comprises a primary absorbent
core that has a width less than or equal to the width of the crotch
region of the diaper.

The rejection asks:
Is the primary absorbent core of claim 2 and the absorbent
component of claim 1 one and the same, i.e. how many absorbent
structures at a minimum are being claimed in claim 2?

(Ans. 4.)
Appellant answers the rejection’s first question by explaining that the
primary absorbent core and the absorbent component can be one and the
same, but it is not necessary that they be one and the same because the
absorbent component may comprise additional elements. (App. Br. 13.)
Appellant explains that in one embodiment “an ‘absorbent core’ is one
example of an ‘absorbent component,’” and they are one and the same. (Id.
at 14.) In another embodiment, “the ‘primary absorbent core’ is a specific
portion of the ‘absorbent component.’ The ‘absorbent component’ is not
Appeal 2011-004169
Application 11/562,977

8
limited to the ‘primary absorbent core’ and may comprise absorbent material
outside of the ‘primary absorbent core.’” (Id.) In this embodiment, the
absorbent component comprises more than the primary absorbent core and
they are not one and the same. Appellant’s response is consistent with the
usual meaning assigned to “comprising” and “comprises.” “The test for
definiteness is whether one skilled in the art would understand the bounds of
the claim when read in light of the specification.” Miles Laboratories Inc. v.
Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993). We conclude that a
person of ordinary skill in the art would reasonably answer the rejection’s
first question as Appellant does. The first question fails to show that claim 2
would be indefinite to a person of ordinary skill in the art.
The second question asks how many “absorbent structures” are
claimed. Claim 2 doesn’t use the term “absorbent structures” to define its
system, but the question may mean how many of the “absorbent article,”
“absorbent component,” and “primary absorbent core” are intended. Claim
2 defines a “system comprising . . . an absorbent article . . . comprising . . .
an absorbent component,” and “the absorbent article comprises a primary
absorbent core.” Usually, “an indefinite article ‘a’ or ‘an’ in patent parlance
carries the meaning of ‘one or more’ in open-ended claims containing the
transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc.,
223 F.3d 1351, 1356 (Fed. Cir. 2000). Applying the usual rules for
interpreting claims using “comprising,” “comprises,” and the indefinite
articles “an” and “a,” the system defined in claim 2 comprises at least one,
and may comprise more than one, of each of an absorbent article, absorbent
component, and primary absorbent core. The last “wherein” clause refers to
its antecedent absorbent article as “the” absorbent article, but that does not
Appeal 2011-004169
Application 11/562,977

9
change the analysis. Baldwin Graphic Systems, Inc. v. Siebert, Inc.,
512 F.3d 1338, 1342 (Fed. Cir. 2008) (“The subsequent use of definite
articles ‘the’ or ‘said’ in a claim to refer back to the same claim term does
not change the general plural rule, but simply reinvokes that non-singular
meaning”). The rejection’s second question fails to show that the claim
would be indefinite to a person of ordinary skill in the art.

III.
The Issue
The Examiner thoroughly reviewed Redwine’s disclosure and found
that “[w]hile the prior art teaches all the claimed structure as well as such
structure providing a holding force, it does not teach the claimed specific
dimensions measured by the same test as instantly disclosed.” (Ans. 8.)
Based on the evidence, and a comparison to Appellant’s disclosure, the
Examiner found “there is sufficient factual basis to conclude that the crotch
region of ‘621 would also inherently or also necessarily and inevitably
possesses the claimed specific dimensions, i.e. holding forces, when tested
in the same manner as that claimed,” and rejected the claims as anticipated.
(Id.)
In the alternative rejection for obviousness, the Examiner explained
that “even if the prior art does not include the exact holding force ranges, the
general conditions of the claim are disclosed thereby, e.g., biasing/holding
force in the crotch region and close but comfortable bodily contact when the
garment is worn, and it is not inventive, i.e. it would be obvious to one of
ordinary skill in the art, to discover the optimum or workable ranges, i.e.
Applicant's ranges of holding force, by routine experimentation.” (Id. at 9.)
Appeal 2011-004169
Application 11/562,977

10
Appellant contends that
the December 31, 2008 Declaration under 37 CFR 1.132, reproduced
in the Evidence Appendix, fully overcomes the above rejection under
35 U.S.C. 102(b) or 35 U.S.C. 103(a) because it establishes (1) that
none of the market samples tested by Appellant, including those
believed to be the closest prior art, had a Crotch Holding Force (CHF)
as in Claim 1 or Claim 10; (2) that Appellant is not aware of any
diaper-like undergarments that were marketed or otherwise publicly
disclosed prior to the filing of his patent application that had the
Crotch Holding Force properties of Claim 1 or Claim 10; (3) that the
Crotch Holding Force as claimed is not inherent in and would have
been obvious from the structure taught by the cited Redwine patent;
(4) that the claimed invention does not merely specify optimum or
workable ranges discoverable by routine experimentation because the
Redwine patent teaches away from the invention; and (5) that
prototypes made according to the Redwine patent have very high CHF
values at a given elongation compared to the diapers of the invention.

(App. Br. 20-21.) Appellant’s Brief presents and relies on the showings in
the Declaration. (Id. at 21-25.)
The Examiner responds that the Declaration and arguments are
unpersuasive because, among other reasons, (i) the CHF feature of claim 1
was not disclosed or did not inherently flow from the disclosure; (ii) the
showing is not commensurate in scope with the invention claimed; and
(iii) the precise specifics of the tested “Redwine prototypes” are unclear.
(Ans. 14-18.)
The issues to be decided are:
whether the Declaration provided evidence that Redwine’s diaper
system did not have the CHF properties of Appellant’s claims, and if so,
whether the evidence taken as a whole supports concluding that
Appellant’s system would have been obvious over the Redwine system.

Appeal 2011-004169
Application 11/562,977

11
Further Findings of Fact
8. The record contains a “Declaration Under 37 CFR 1.132,” executed
by Jerry E. Carstens, dated Dec. 23, 2008 (“Carstens Declaration”).
9. The Carstens Declaration contains “Attachment 2 – Crotch Holding
Force (CHF) Vs Elongation Data,” a graph in which the vertical axis
is labeled “Crotch Holding Force (kgf)” and the horizontal axis is
labeled “Ball Displacement (cm).”
10. Declarant Carstens states:
In fact, the diapers of my invention use a holding model that is
opposite the teachings of Redwine. Redwine teaches limiting the
stretch of the crotch region in both the longitudinal and the lateral
directions via the incorporation of “stretch control members” in the
crotch region. Redwine teaches using low stretch and high force (high
CHF values at a given elongation) to hold articles in close bodily
contact. In contrast, the diapers of my invention rely on high stretch
and low force (low CHF values at a given elongation) to securely but
comfortably hold articles in close bodily contact throughout a range of
wearer motions.

(Carstens Declaration 4, ¶ 13.)
11. Declarant Carstens states:
I had two “Redwine prototype” diaper-like undergannents made by a
person having ordinary skill in the art of making knit undergannents
using materials and processes such as described in Redwine. The
“Redwine prototypes” (hereinafter sometimes referred to as “Redwine
prototype I” and “Redwine prototype 2”) were made following the
teachings in Redwine, including the sections describing the Crotch
Region, the Stretch Control Members, and Forming the
Undergarment.

(Id., ¶ 14.)
12. Declarant Carstens states that both the “Redwine prototype 1” and
“Redwine prototype 2” had crotch fits as described in the Redwine
Appeal 2011-004169
Application 11/562,977

12
patent and tests confirmed they provided lift values similar to those
described in the patent. (Id., ¶ 15.)
13. Declarant Carstens states that CHF was measured for the “Redwine
prototype 1” and “Redwine prototype 2”, and compared to the diapers
of claim 1 and additional diapers of the invention designated “RUSL.”
(Id., ¶ 16.)
14. Declarant Carstens tabulates the results of the comparative testing as
follows:

* Off the scale of the graph. Actual force higher than could be
measured using equipment.

(Id.)

Analysis
Having reviewed the evidence and arguments, we find that Appellant
provided objective evidence that Redwine’s diaper system did not have a
CHF-5.5 less than about 1.0 kgf. The Examiner’s doubts about the
sufficiency, support for, and pertinence of the Declaration evidence are
inadequate as evidence to the contrary. Appellant’s evidence defeats the
anticipation rejection.
Declarant Carsten’s Exhibit 2 is a graphic demonstration that diapers
made according to Redwine’s instructions did not have CHF-5.5 less than
Appeal 2011-004169
Application 11/562,977

13
about 1.0 kgf. Exhibit 2’s plots also demonstrate that Redwine’s diapers did
not trend toward CHF-5.5 less than about 1.0 kgf, and that Redwine’s
teachings would not have led to CHF-5.5 less than about 1.0 kgf. Redwine
did not recognize CHF as a result effective variable. The obviousness
rejection must be reversed because it fails to give due weight to the Carstens
Declaration evidence.

SUMMARY
We reverse the rejection of claims 1-4, 9, 10, 12, and 13 under
35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement.
We reverse the rejection of claim 2 under 35 U.S.C. § 112, second
paragraph, as indefinite.
We reverse the rejection of claims 1-4, 9, 10, 12, and 13 under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over, Redwine and by incorporation Carstens ‘411.

REVERSED

dm