Ex Parte Lavash

Board of Patent Appeals and Interferences

Jan 26, 2012

10613296 (B.P.A.I. Jan. 26, 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.
10/613,296 07/03/2003 Bruce William Lavash 9322 3945
27752 7590 01/26/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
01/26/2012 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 BRUCE WILLIAM LAVASH
____________________

Appeal 2010-001355
Application 10/613,296
Technology Center 3700
____________________

Before: KEN B. BARRETT, PHILLIP J. KAUFFMAN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001355
Application 10/613,296
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 2, 5, and 10-15 under 35 U.S.C. § 102(a) as
anticipated by Chen (US 2003/0083631, pub. May 1, 2003). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND of REJECITION.
Claim 1, reproduced below with added emphasis, is illustrative of the
claimed subject matter.
1. An absorbent article having a longitudinal axis and a
periphery, the absorbent article comprising,
a. a fluid permeable facing layer, at least portions of
which having facing layer zones of enhanced extensibility;
b. a first absorbent layer joined to the facing layer, the
first absorbent layer comprising at least one first absorbent
layer zone of extensibility, the at least one first absorbent layer
zone of extensibility being a region of the first absorbent layer
of relatively higher extensibility than regions of the first
absorbent layer adjacent to the at least one first absorbent zone
of extensibility, the at least one first absorbent layer zone of
extensibility being in registry with the facing layer zones of
enhanced extensibility, wherein the joining of the facing layer
and the first absorbent layer is substantially limited to the
portions of the facing layer intermediate the at least one first
absorbent layer zone of enhanced extensibility;
c. a liquid impermeable backsheet joined to the facing
layer at the periphery, the liquid impermeable backsheet having
a garment facing surface;
d. fastening means disposed on at least a portion of the
garment facing surface of the liquid impermeable backsheet, the
fastening means defining attachment zones; and
e. wherein the at least one first absorbent layer zone of
extensibility is decoupled from the attachment zones of the
fluid impermeable backsheet.

Appeal 2010-001355
Application 10/613,296
3
OPINION
Claim 1 requires, in relevant part, a facing layer and a first absorbent
layer, wherein those layers are joined in substantially limited locations –
“intermediate … at least one … zone of enhanced extensibility.” The
Examiner found that Chen describes zones of enhanced extensibility at
certain crease lines. Ans. 5-6. The Examiner adds that these crease lines are
formed by bonding the top layer (facing layer) of Chen to the absorbent
member. Id. Accordingly, the Examiner’s position is that the zones of
enhanced extensibility (crease lines) are in the same location as where the
facing and absorbent layers are joined.
Appellants raise a dispositive issue of whether Chen describes the
facing layer and first absorbent layer joined in the required location. App.
Br. 5; Reply Br. 2.
If the layers are joined at the creases and the creases are the zones of
enhanced extensibility, as the Examiner found, then joining occurs at the
zones of enhanced extensibility. The claim, on the other hand, requires the
joining to be substantially limited to portions intermediate, i.e., between, the
“at least one … zone” of enhanced extensibility. Accordingly, the
Examiner’s rejection does not adequately explain how Chen’s disclosed
embodiment satisfies the limitation of claim 1 requiring “the joining of the
facing layer and the first absorbent layer is substantially limited to the
portions of the facing layer intermediate the at least one first absorbent layer
zone of enhanced extensibility.” The Examiner’s rejection of all of the
claims is predicated on this error. As such, we do not sustain the Examiner’s
anticipation rejection.
A claim requiring “at least one first absorbent layer zone of
extensibility” includes within its scope a single absorbent layer zone of
Appeal 2010-001355
Application 10/613,296
4
extensibility. Claim 1 requires that joins are “intermediate the at least one
first absorbent layer zone of enhanced[1] extensibility.” However, it is
impossible for a join to be “intermediate,” or between, one
zone. Consequently, claim 1, and claims 2, 5, and 10-15, which depend
therefrom, are indefinite. We enter a new ground of rejection under 35
U.S.C. § 112, second paragraph, for claims 1, 2, 5, and 10-15 accordingly.

DECISION
For the above reasons, we reverse the Examiner’s decision regarding
claims 1, 2, 5, and 10-15.
We enter a new ground of rejection for claims 1, 2, 5, and 10-15.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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.…

1 This limitation lacks strict antecedent basis because claim 1 instead
introduces “at least one first absorbent layer zone of extensibility” (without
“enhanced”). Only the facing layer in claim 1 has zones of “enhanced”
extensibility.
Appeal 2010-001355
Application 10/613,296
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(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.…
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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