10308703 (B.P.A.I. Mar. 11, 2012)

Ex Parte Hutson et al

Board of Patent Appeals and InterferencesMar 11, 2012

10308703 (B.P.A.I. Mar. 11, 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. 10/308,703 12/02/2002 Randell O. Hutson TRED63 (297 US) 3969 53476 7590 03/12/2012 Tessari Patent Law Group, PLLC 1 North Bacton Hill Road Suite 208 Frazer, PA 19355 EXAMINER STEPHENS, JACQUELINE F ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 03/12/2012 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 RANDELL O. HUTSON and ANDREW J. PEACOCK ____________________ Appeal 2010-004266 Application 10/308,703 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, LINDA E. HORNER, and WILLIAM V. SAINDON, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004266 Application 10/308,703 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 41-76. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Claim 41, reproduced below, is illustrative of the claimed subject matter. 41. An absorbent article having a composite, the composite comprising: a first broken non-elastic cloth-like material having a first elongation at break; a second broken non-elastic cloth-like material having a second elongation at break, wherein said second elongation at break is substantially different from said first elongation at break; and an elastic layer located between the first non-elastic cloth-like material and the second non-elastic cloth-like material, the elastic layer having an elongation at break of at least 50%. The Examiner makes the following rejections under 35 U.S.C. § 103(a): I. Claims 41-44, 50-54, 60-64, and 70-73 as unpatentable over Newkirk (US 5,921,973, iss. Jul. 13, 1999). II. Claims 45-49, 55-59, 65-69, and 74-76 as unpatentable over Newkirk and Morman (US 5,932,497, iss. Aug. 3, 1999). OPINION Appellants raise the dispositive issue of whether the Examiner erred in finding that Newkirk describes broken non-elastic materials as required by each independent claim. See Reply Br. 5-6. The Examiner’s finding is based on an interpretation of “broken” to mean either (1) the material is Appeal 2010-004266 Application 10/308,703 3 separated from a length of cloth during manufacture, or (2) the fabric comprises discrete, or broken, staple fibers. Ans. 5. Appellants argue that neither of these interpretations is reasonable. Reply Br. 5-6. The Specification uses the term “broken” in the context of something that happens to the material of the article upon stretching. Spec. 12:18 to 13:17, 15:20-23. The Specification similarly uses the term in the context of a property of the material, elongation (from stretching) at break. See, e.g., Spec. 17:5-7, Table 2. Newkirk also uses the term in a similar context: measuring tensile and peak elongation by breaking a sample strip of material. Newkirk, TABLE 1 at col. 9, n.1. The Examiner’s interpretation of the term “broken” (Ans. 5) as the source of the material (broken from a larger whole) or the fibers comprising the material (discrete staple fibers) is not consistent with the usage of the term in the Specification1 or the prior art2 before us. In addition, the Examiner has not shown, via reasoning or evidence, that one of ordinary skill in the art would nevertheless have understood the term “broken” as alleged by the Examiner. In view of the evidence, identified above, that “broken” has a particular interpretation to one of ordinary skill in the art that does not embrace the Examiner’s proposed interpretation, we cannot adopt the Examiner’s interpretation of “broken” nor the Examiner’s finding that 1 In re Prater, 415 F.2d 1393, 1404 (CCPA 1969) (“[C]laims yet unpatented are to be given the broadest reasonable interpretation consistent with the specification.”). 2 Claim terms are given “their broadest reasonable interpretation … consistent with the one that those skilled in the art would reach.” In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (citing In re Morris, 127 F.2d 1048, 1054 (Fed. Cir. 1997)). Appeal 2010-004266 Application 10/308,703 4 Newkirk teaches “broken” materials as required by the independent claims. Consequently, we do not sustain the Examiner’s rejection of claims 41-44, 50-54, 60-64, and 70-73. The Examiner’s rejection of claims 45-49, 55-59, 65-69, and 74-76 (which depend from independent claims 41, 52, 61, and 70) as unpatentable over Newkirk and Morman does not cure the underlying deficiency of the rejection of claims 41, 52, 61, and 70 and likewise is not sustained. DECISION We reverse the Examiner’s decision regarding claims 41-76. REVERSED hh