Ex Parte Gannon et al

Board of Patent Appeals and Interferences

Aug 7, 2012

11769157 (B.P.A.I. Aug. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ELAINE M. GANNON, ANNEMARIE DEVINE JOSEPH,
and H. MICHAEL MOSCHEROSH
__________

Appeal 2011-009431
Application 11/769,157
Technology Center 3700
__________

Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
absorbent article application method. The Examiner has rejected the claims
as anticipated or obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
STATEMENT OF THE CASE
Claims 1-19 are pending and on appeal (App. Br. 2). Claims 1, 12,
and 13 are illustrative and read as follows:
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1. A method of applying a body-attachable absorbent article to the
body, comprising:
tactilely locating a tactile placement aid on a garment facing surface
of a body-attachable absorbent article, the tactile placement aid extending
outwardly relative to the garment facing surface of the article;
tactilely aligning the tactile placement aid with a vaginal opening of a
user; and
adhering the body-attachable absorbent article against a body of the
user so that said tactile placement aid is aligned with said vaginal opening of
said user.
12. The method according to claim 1, wherein said tactile placement
aid is formed by embossing said article.
13. The method according to claim 1, wherein said tactile placement
aid comprises at least one protuberance extending from said garment facing
surface.
Claims 1-4, 6, 11, and 17-19 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Hershberger et al. (US 6,045,544, Apr. 4, 2000) (Ans. 3).
Claims 8-10 and 13-16 stand rejected under 35 U.S.C. § 103(a) as
obvious over Hershberger (Ans. 12).
Claims 5, 7, and 12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Hershberger in view of Lassen et al. (US 4,673,403, Jun. 16,
1987) (Ans. 16).
I
The Examiner finds that Hershberger discloses the method of claim 1
(Ans. 4). In particular, the Examiner finds that “Hershberger discloses . . .
that the tactile placement aid 94 provides an indented portion that serves as a
finger gripping region for holding the device during insertion” (id.). The
Examiner finds that, “because an indented portion is an area on a surface
that is lower than the parts around, necessarily and inevitably, the portions
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surrounding the indent will be raised and thus extend outwardly relative to
the surface of the indented portion that comprises the garment facing surface
of the article” (id. at 7).
Appellants argue:
The Examiner appears to contend that the area surrounding the
“indentation” would extend outward from the garment facing
surface and thus function as a “tactile placement aid extending
outwardly relative to the garment facing surface.” It is
respectfully submitted that this conclusion is in error. If you
take an otherwise planar surface and make indentations in such
planar surface you will simply have a planar surface with
indentations, as is the case with Hershberger.
(App. Br. 7.)
Findings of Fact
1. Hershberger discloses an absorbent interlabial device having an
arcuate pattern of bonds 94 (Hershberger, col. 6, l. 10, & col. 9, ll. 51-52).
2. In particular, Hershberger discloses:
The arcuate pattern of bonds 94 shown in FIG. 2 can be used to
provide an absorbent interlabial device with an indication of
how the device should be held for placement during
application. The arcuate pattern of bonds 94 . . . provides a
relatively stiff region for gripping the device 20 for insertion.
The arcuate pattern of bonds 94 also provides a visual
indication of proper holding of the device 20 for insertion (i.e.
the wearer has visual feedback that the upper portion 26 should
be first and furthest inserted).
(Id. at col. 11, ll. 51-59.)
3. Hershberger also discloses:
FIG. 10 shows a particularly preferred bonding process. The
bonding process shown in the drawings penetrates through the
sliver of absorbent material 100 and autogenously bonds the
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first portion 102A of the cover material to the second
portion 102B of the cover material 102. . . . The bonding causes
portions of the cover material 102 that were on opposite sides
of the absorbent material 100 to contact each other, and draws
the cover material 102 tighter around these portions of the
sliver of absorbent material to shape the same.
(Id. at col. 21, l. 57, to col. 22, l. 16.)
Analysis
Hershberger discloses an arcuate pattern of bonds 94 (Findings of Fact
(FF) 1-2), which the Examiner acknowledges are indentations (Ans. 7; see
also FF 3). Although the parts of the article that are around the indents 94
may extend outwardly relative to the base of the indents (Ans. 7-8), we do
not agree with the Examiner that they “extend[] outwardly relative to the
garment facing surface of the article,” as required by claim 1. We therefore
reverse the anticipation rejection.
II
In rejecting claim 8-10 and 13-16, which depend from claim 1, the
Examiner concludes that the features of these dependent claims would have
been obvious in view of Hershberger (Ans. 12-16). In particular, the
Examiner argues:
Hershberger discloses a plurality of discrete bond sites 94
forming into the garment facing surface . . . , said plurality of
discrete bond sites 94 formed by relief pattern rolls 110, 112
having a plurality of protuberances 116 extending outwardly
from the surface 115 of the rolls 110 . . . , thus providing
motivation for a tactile placement aid comprising raised and
indented portions that extend from and into the garment facing
surface. Therefore it would have been obvious to one having
ordinary skill in the art at the time the invention was made to
provide the plurality of bond sites of Hershberger extending
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from the garment facing surface as protuberances as claimed or
extending into the garment facing surface as indents since both
configurations provide a tactile placement aid comprising raised
and recessed portions that are tactilely perceptible to a user.
(Id. at 15.)
Appellants argue:
the present invention is not obvious in view of [Hershberger]
because one of ordinary skill in the art would have to change
the orientation of the depressions to create raised portions,
determine suitable heights of the raised portions for them to be
perceptible from the tactile point of view, and envision the use
of the aids for placement of the device as opposed to how to
hold the device.
(App. Br. 10.)
Analysis
Hershberger discloses that its “pattern of bonds 94 . . . provides a
relatively stiff region for gripping the device 20 for insertion” and “a visual
indication of proper holding of the device 20 for insertion (i.e. the wearer
has visual feedback that the upper portion 26 should be first and furthest
inserted)” (FF 2). As they ultimately provide an indented region for
gripping the device (see FF 2), Hershberger’s bonds 94 may indeed be
tactilely perceptible to a user. However, given Hershberger’s explicit
teaching that the bonding 94 functions to draw central portions of the
absorbent material closer to each other (see FF 3), thus providing the
indented gripping region, the Examiner has not, in our view, provided an
adequate evidentiary basis explaining why an ordinary artisan would have
configured the bonds 94 to provide outward protrusions. We therefore
reverse the obviousness rejection over Hershberger.
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III
In rejecting claims 5, 7, and 12, which depend from claim 1, the
Examiner additionally relies on Lassen (Ans. 16-18). With regard to
claims 5 and 7, the Examiner concludes that it would have been obvious “to
provide the tactile placement aid of Hershberger in the claimed pattern(s) as
taught by Lassen since it has been held that mere changes in shape are not
sufficient to patentably distinguish a claimed invention over the prior art”
(id. at 17). With regard to claim 12, the Examiner concludes:
[I]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to provide the tactile
placement aid of Hershberger formed by embossing the article
as taught by Lassen because Hershberger discloses the material
of Hershberger comprising the tactile placement aid 94 is
suitable material for forming indented and raised surface
features by compression means, and Lassen states . . . that the
benefit of forming a tactile placement aid by embossing is that
it allows placement of the article by feel alone but does not
provide the article with projections that might by uncomfortable
to the wearer.
(Id. at 18.)
Findings of Fact
4. Lassen discloses “an incontinence device, feminine pad or
napkin having an indicator thereon to aid in proper placement of the pad
such that the indicator is in the area of greatest body exudate flow” (Lassen,
col. 1, ll. 63-66).
5. Lassen also discloses:
The means of indicating the target area 150 may be . . . any
suitable indicator that is not uncomfortable to the user. Typical
of such means are a colorant layer on the cover of the pad, a
colorant layer below the semitransparent cover of a pad on the
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absorbent, positioning of a removable indicator on the pad
perforation of the cover, or embossing. . . . Embossing allows
placing by feel alone but does not provide the pad with
projections that might be uncomfortable to the wearer.
(Id. at col. 14, ll. 22-45.)
Analysis
Lassen discloses using an embossment as a tactile placement aid
(FF 4-5). However, the Examiner has not adequately explained why the
combination would result in a tactile placement aid on a garment facing
surface that extends outwardly relative to the garment facing surface. As
discussed above, Hershberger discloses bonds 94, which the Examiner
acknowledges are indentations (Ans. 7). Whether or not it would have been
obvious to form these bonds by embossment, given that the bonds connect
opposite sides of the article (FF 3), the Examiner has not adequately
explained why it would have been obvious to instead form projections
extending outwardly relative to the garment facing surface. We are
therefore compelled to reverse the obviousness rejection over Hershberger in
view of Lassen.

REVERSED

cdc