Ex Parte Digiacomantonio et al

Board of Patent Appeals and Interferences

Aug 15, 2012

10852629 (B.P.A.I. Aug. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/852,629 05/24/2004 Marco Digiacomantonio 9632 6714
27752 7590 08/16/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
HAND, MELANIE JO
ART UNIT PAPER NUMBER
3778
MAIL DATE DELIVERY MODE
08/16/2012 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 MARCO DIGIACOMANTONIO, EVELINA TORO,
GIOVANNI CARLUCCI, and REMO BELLUCCI
__________

Appeal 2011-007208
Application 10/852,629
Technology Center 3700
__________

Before DEMETRA J. MILLS, STEPHEN WALSH, and ULRIKE W.
JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims directed to a method of placing an absorbent
article in the crotch portion of a panty. We have jurisdiction under 35
U.S.C. § 6(b). We affirm in part, and designate the affirmance as a new
ground of rejection.
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Application 10/852,629

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STATEMENT OF THE CASE
The invention “relates to a method for placing and positioning a
disposable absorbent product, such as a sanitary napkin or pantiliner, in a
women’s undergarments.” (Spec. 1, ll. 9-10)
Claims 1-11 and 21-26 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief (App. Br. 6-9). Claims 1, 6, and 10 are
independent claims. Claim 1 is representative of the claims on appeal, and
reads as follows (emphasis added):
1. A method for correctly placing an absorbent article in the crotch
portion of a panty having a crotch portion bounded on opposite sides
by portions of curved leg openings, the method comprising the steps
of:
a. providing an absorbent article having at least one indicator
marker visible from a body-facing surface, said indicator
marker disposed to indicate proper alignment of said absorbent
article with respect to said curved leg openings of said panty
and shaped to overlay said curved leg openings;

b. positioning said absorbent article in said crotch portion of
said panty such that said at least one indicator marker overlays
at least one leg elastic of said curved leg openings of said
panty; and,

c. affixing said article to said crotch portion of said panty.

The following grounds of rejection are before us for review:
The Examiner has rejected claims 1-4, 6-8, 10, 11, and 21-26 under 35
U.S.C. § 103(a) as unpatentable over Fujita
1
in view of Fujioka.
2

1
Fujita et al., JP 2003-052743 A – translation,
http://www4.ipdl.inpit.go.jp/cgi-
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As Appellants do not argue the claims separately, we focus our
analysis on claim 1, and claims 2-4, 6-8, 10, 11, and 21-26 stand and fall
with that claim. 37 C.F.R. § 41.37 (c)(1)(vii).
The Examiner has rejected claims 5 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Fujita in view of Fujioka and further in view of Wada.
3

ISSUE
The Examiner takes the position that Fujita disclosed an “absorbent
article 1 having at least one indicator marker in the form of colored regions
A and B visible from the body-facing surface of the article.” (Ans. 4.)
Fujita disclosed positioning the absorbent article in the crotch portion of an
undergarment in such a way that “at least one indicator marker necessarily
overlays at least one leg opening and affixing said article to said crotch
portion of said undergarment.” (Ans. 5.)
Appellants assert that the colored regions A and B of the absorbent
article are “for providing the impression of leakage security, and not for
positioning the absorbent article in a crotch portion of a panty.” (App.
Br. 4.)
The issue is whether the references provide an indicator marker for
the placement of the absorbent article in the crotch portion of a panty?

bin/tran_web_cgLejje?atw_u=http%3A%2F%2Fwww4.i... (last visited
Nov. 10, 2008).
2
Fujioka et al., US 5,634,917, issued June 3, 1997.
3
Wada et al., US 2003/0078553 A1, published April 24, 2003.
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PRINCIPLES OF LAW
“The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not . . . resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies” in the cited references. In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). It is proper to “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” Id. at 418. See also id. at 421 (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”).

FINDINGS OF FACT
FF1. Fujita disclosed absorbent articles, such as sanitary napkins, having
wing like flaps and hip holds to “equip underwear with said sanitary napkin”
(Fujita 2, ¶ 0005).
FF2. The wing-like flaps were “made to stick on the crotch part outside
surface of underwear, involving in the Crotch portion of underwear” (Fujita
2, ¶ 0005). The wing-like flaps “twists around the Crotch portion of shorts,
and attaches firmly” to the outside of the undergarment (Fujita 2, ¶ 0023).
FF3. Fujita disclosed absorbent articles, such as sanitary napkins, that are
asymmetrical in shape. In Drawings 1 and 5 the portion of the sanitary
napkin below the wing-like structures is larger than the portion above the
wing-like structure. (Fujita Drawings 1 & 5.)
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FF4. Fujita disclosed flaps HF for the hip hold portion of the absorbent
article. (Fujita 2, ¶ 0023). Color region A and B were located on the skin
contact side of the flaps HF for hips hold. The color region was divided into
two or more regions A and B where whiteness differs. (Fujita 6, ¶ 0026.)
Drawing 1 depicts color marker B, shown as hatched lines, running along
the perimeter of the absorbent article and on the wing-like flaps. (Fujita
Drawing 1.)
FF5. Fujita disclosed positioning the absorbent article in an undergarment.
(Fujita 3, Drawing 7; 2, ¶ 0005.) Drawing 7 depicts color marker B with a
dotted line running along the perimeter of the absorbent article. (Fujita 3,
Drawing 7.) The leg opening of the undergarment is curved. (Id.)
FF6. The top sheet of the absorber can be embossed “for making it bulge
just and being able to confine the absorbed body fluid in the maintenance,
and surface side etc.” (Fujita 2, ¶ 0021). Embossed grove 6c of Drawing 1
is curved. (Fujita Drawing 1.)
FF7. Fujioka disclosed attaching an elastic member around the leg hole of a
disposable undergarment, in order to fit the edges around the wearer’s leg.
(Fujioka col. 1, ll. 8-12.)
FF10.
Even if the user's undergarment does not match exactly to the
indicator markers 34 provided, such a configuration provides a visual
signal of the central region of the absorbent pad anyway, and can be
used to place such a central region properly with respect to the crotch
portion 38 of an undergarment 39.

(Spec. 12, ll. 26-29.)
FF11. According to Appellants Specification, “[i]ndicator marks 34 can be
made by printing, stamping, embossing, folding or any other known process
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that makes a visual, or even tactile, impression that indicates proper
alignment for the user.” (Spec. 7, ll. 20-22.)

ANALYSIS
The Examiner’s statement of rejection may be found at pages 4-10 of
the Answer. The Examiner takes the position that Fujita disclosed “at least
one indicator marker in the form of colored regions A and B visible from the
body-facing surface of the article.” (Ans. 4.) The Examiner asserts that
Fujita disclosed positioning the absorbent article in the crotch of an
undergarment so that it “overlays at least one leg opening.” (Ans. 5.) The
Examiner acknowledged that Fujita did not disclose whether the leg opening
of the undergarment contained an elastic or a sewn hem. (Ans. 5, 8.)
Fujioka taught elasticized leg openings in an undergarment (FF7). The
Examiner asserts that it would have been obvious to modify the
undergarment of Fujita to have elasticized leg openings in order to “allow
improved fitting that lends comfort to the wearer.” (Ans. 5.)
Appellants contend that the “colored regions A and B of the absorbent
article of Fujita et al. are not indicator markers to indicate proper
alignment . . . [they] are designed to have differing levels of whiteness to
provide a sense of security to prevent leakage.” (App. Br. 4.) Appellants
assert that it is improper to combine Fujita with Fujioka because there is no
reason to combine two disposable articles to arrive at the present invention.
(App. Br. 4.)
We first address Appellants’ assertion that it is not proper to combine
Fujita with Fujioka. Both references are from the same field of endeavor
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and both are directed to disposable absorbent articles. There is no limitation
in the claims that would indicate the panty cannot be disposable. The
argument that one would not combine two absorbent articles is not
persuasive because the ordinary artisan would expect that adding an
additional absorbent product to the disposable underwear of Fujioka would
increase the amount of liquid that could be absorbed. The Examiner used
Fujioka to illustrate that placing an elastic member in the leg opening of an
undergarment is but one way of improving the fit and comfort of the
undergarment, and Appellants show no error in that finding.
We agree with the Examiner that Fujita disclosed an absorbent article
that meets the claim limitation of “at least one indicator marker visible from
a body-facing surface, said indicator marker disposed to indicate proper
alignment of said absorbent article with respect to said curved leg openings
of said panty and shaped to overlay said curved leg openings.” We find that
Fujita combines three indicator markers for the proper alignment of the
absorbent article in the crotch area of a panty. The indicator markers
included the wing-like structures (FF1, FF2), color marker B that runs along
the perimeter of the absorbent product (FF5), and the indicator markers A
and B of the hip fold (FF4).
The wing-like flaps serve as a guide for the user to position the article
in the crotch area of the panty. In the process of placing the absorbent
article into the underwear the wing-like structures are visible to a body-
facing surface. Once positioned, these structures fold over and are made to
stick on the crotch part outside surface of the underwear, at the curved leg
openings. (FF2, FF5.) Thus, the wing-like flaps provide a visual signal for
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proper alignment of the article with respect to the crotch area and the curved
leg openings of the panty.
Indicator marker B runs along the perimeter of the absorbent product
and on the wing-like flaps. “The indicator marker, i.e. colored area B, is
disposed to indicate proper alignment . . . inasmuch as the colored area B is
defined in part by the leg openings and runs along the leg opening.” (Ans.
4-5.) Color marker B in Drawing 7 is shown with a dotted line, and one can
see that color marker B overlays the curved leg opening of the panty. (FF5.)
Drawing 7 of Fujita shows that the edge of the absorbent article flanking the
wing-like structure is body-facing and overlays the leg opening of the
undergarment. (FF5.) Color marker B flanking the wing-like structure
serves to help position the article in the undergarment by providing a visual
signal to align the absorbent article with the leg opening of the
undergarment.
The Examiner takes the position that colored regions A and B serve as
indicator markers that are visible on the body facing surface of the article.
(Ans. 4.) “As can clearly be seen from the drawings in the Fujita reference
the article is sufficiently asymmetrical so as to make it clear that the article
can only have one proper orientation.” (Ans. 10.) “[T]he indicator markers,
by being placed in the wider hip region and by being a different color than
the core and providing a visible lateral boundary to the core, are fully
functional as indicator markers.” (Ans. 11.) We agree with the Examiner’s
finding that the colored region A and B serve as markers for the proper front
to back placement of the absorbent article in the underwear.
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Thus, the combination of indicator markers A and B serve as a visual
signal for the proper front to back placement of the absorbent article in the
panty, the wing-like structures serve to guide the article to the crotch area of
the panty, and the colored marker B flanking the wing-like structures serves
to align the absorbent product along the leg opening of the panty.
Embossed marks 6c (FF6) on Fujita’s article are indicators for proper
alignment of the absorbent product in the panty. As acknowledged by
Appellants indicator markers do not necessarily have to match with the
undergarment because they can still serve the function of a visual signal for
the placement of the article in the undergarment and indicator marks may be
embossed. (FF10, FF11.) Here the combination of indicator marker A and
B in the hip portion will guide the front to back placement of the article, the
wing-like structures indicate proper placement in the crotch area and the
embossed marks 6c provides a visual signal for the proper alignment with
respect to the leg openings.
We agree with the Examiner’s finding that Fujita provides indicator
markers that guide the proper placement of the absorbent article in the crotch
portion of a panty. Fujita disclosed undergarments having curved legs
openings. Fujita is silent with regard to the structure of the leg openings,
elasticized or hemmed. The addition of Fujioka serves to modify the
undergarment of Fujita to include an elastic member for the purpose of
improving the comfort and fit as noted by the Examiner (Ans. 5). We
conclude that the combination of Fujita and Fujioka render obvious the
method of claim 1. Because our analysis is different from the Examiner’s,
we designate the affirmance a new ground of rejection.
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CONCLUSION OF LAW
We conclude that the evidence of record supports the Examiner’s
conclusion that the combination of Fujita in view of Fujioka renders obvious
the method of placing an absorbent product in the crotch of a panty of
claim 1. The other independent claims (claims 6 and 10) are also directed to
a method for placing an absorbent product in the crotch of a panty. We
therefore affirm the rejection of claims 2-10, 11, 21, 22, 24, and 25 as well.
We conclude that the references do not teach or suggest the limitation
of a printed mark and we therefore reverse the rejection of claims 23 and 26.

37 C.F.R. § 41.50(b)
This decision 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 Appellant, 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. . . .

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

OBVIOUSNESS OVER FUJITA, FUJIOKA, AND FURTHER IN VIEW OF WADA
FINDINGS OF FACT
FF11. Wada disclosed choosing a different sized absorbent product
depending on how much liquid is expected to be absorbed. (Wada 1,
¶ 0004). “[S]anitary napkins are divided into "small", "medium" and "large"
depending on the length of the absorbent layer, and subdivided into "slim",
"normal" and "heavy" depending on the thickness of the absorbent layer.”
(Wada 6, ¶ 0088).

ANALYSIS
The Examiner takes the position that it would have been obvious to
modify the method of Fujita and Fujioka to include the additional step of
choosing the size of the absorbent article based on the size of the underwear.
(Ans. 9-10.)
Appellants assert that Wada does not rectify the deficiency of Fujita
and Fujioka. (App. Br. 4.)
Fujita and Fujioka as they apply to independent claim 1 were
discussed above. Claims 5 and 9 contain the additional limitation of
“choosing a size of said absorbent article from a selection of sizes based on a
size of said panty.” All three references are directed to disposable absorbent
articles. Wada disclosed that different sanitary napkins come in varying
sizes and absorption abilities and the product user would be able to select the
size depending on the flow. (FF9.) “A person of ordinary skill is also a
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person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007). We agree with the Examiner that Fujita and
Fujioka teach a method of positioning the absorbent article in the crotch
portion of the panty. Wada provides a teaching that selection of an
absorbent product based on size and need are within the grasp of the
ordinary artisan rendering obvious this additional step. We conclude that the
combination of references renders obvious the method of selecting the size
of an absorbent article based on the size of the panty and properly placing
the absorbent article in the crotch area of a panty.

SUMMARY
We affirm the rejection of claims 1-4, 6-8, 10, 11, 21, 22, 24, and 25
under 35 U.S.C. §103(a) as unpatentable over Fujita in view of Fujioka.
We reverse the rejection of claims 23 and 26 under 35 U.S.C. §103(a)
as unpatentable over Fujita in view of Fujioka because neither reference
disclosed printed marks.
We affirm the rejection of claims 5 and 9 under 35 U.S.C. §103(a) as
unpatentable over Fujita in view of Fujioka and further in view of Wada.

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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