Ex Parte Morman et al

Board of Patent Appeals and Interferences

Jun 18, 2012

10301664 (B.P.A.I. Jun. 18, 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.
10/301,664 11/21/2002 Michael T. Morman KCX-563 (18064) 8654
22827 7590 06/18/2012
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
ZALUKAEVA, TATYANA
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
06/18/2012 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 MICHAEL T. MORMAN, PATRICIA H. CALHOUN,
and JAMES M. CARR
__________

Appeal 2011-000032
Application 10/301,664
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2011-000032
Application 10/301,664

2
STATEMENT OF CASE

1. An absorbent article, comprising:
a chassis having a front waist region, a back waist region, and a crotch
region extending between said front and back waist regions;
an outer cover member extending longitudinally between said front
and back waist regions;
a bodyside liner extending longitudinally between said front and back
waist regions;
an absorbent body structure sandwiched between said outer cover
member and said bodyside liner;
said bodyside liner comprising a material having
a generally non-elastic base layer of a fluid permeable material;
first and second separate strips of elastomeric material attached
to said base layer material in a necked condition of said base layer material
with a space between said separate strips of elastomeric material to define
composite regions of said elastomeric material and said necked base layer
material, said space between said composite regions defining a center region
of said base layer material that has returned to generally its pre-necked
width, overlies said absorbent body structure, and is inherently less
extensible than said composite regions in a lateral direction of said
necked base layer material within said composite regions; and
wherein said center region of said base layer material remains
generally non-elastic and said composite regions are elastic and stretchable
in at least a lateral direction in use of said absorbent article.

Cited References

Serbiak et al. US 5,846,232 Dec. 8, 1998
Morman US 5,226,992 Jul. 13, 1993

Grounds of Rejection
Claims 1 and 36 are rejected under 35 U.S.C. § 102(b) as anticipated
by Serbiak.

Appeal 2011-000032
Application 10/301,664

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FINDINGS OF FACT
The Examiner‟s findings of fact are set forth in the Answer at pages 5-
9.

Discussion
ISSUE
The Examiner concludes that Serbiak teaches each element claimed,
particularly, through incorporation by reference to Morman, U.S. Patent No.
5,226,992. (Ans. 8.)
1

Appellants argue that Serbiak teaches a non-extensible layer, not first
and second separate strips of elastomeric material attached to a base layer
material in a necked condition of the base layer material. (App. Br. 6.)
The issue is: Has the Examiner set forth a prima facie case of
anticipation and pointed to disclosure of first and second separate strips of
elastomeric material attached to a base layer in the prior art to support an
anticipation rejection?

PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be

1
Morman „992 is also relied on in Appellants‟ Specification, page 8, for a
process of necking material.
Appeal 2011-000032
Application 10/301,664

4
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
The Federal Circuit has further indicated that an Examiner meets the
initial burden of establishing a prima facie case by “adequately explaining
the shortcomings it perceives so that the applicant is properly notified and
able to respond.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting
Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)).
When the examiner has required the applicant to elect single chemical
species for examination, the issue on appeal is the patentability of the single
elected species. It is appropriate to limit discussion to that single issue and
take no position respecting the patentability of the broader generic claims,
including the remaining, non-elected species. See Ex parte Ohsaka, 2
USPQ2d 1460, 1461 (BPAI 1987).

ANALYSIS
The Examiner indicates that there was an election of species of
Figures 2A, 4 and 4A of the Specification. (Ans. 7.) We limit our
discussion to that single issue and take no position respecting the
patentability of the broader generic claims, including the remaining, non-
elected species. Ex parte Ohsaka, 2 USPQ2d at 1461.
We do not find the Examiner has established a prima facie case of
anticipation of the elected species.
In the Answer, page 8, the Examiner acknowledges that Serbiak does
not explicitly set forth the claimed properties, but “at the very least it
discloses the claimed structure and/or disclosed materials and
processes/methods utilized.” However, we agree with Appellants that the
Appeal 2011-000032
Application 10/301,664

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Examiner has failed to set forth in the Answer where Serbiak discloses first
and second separate strips of elastomeric material attached to a base layer
material in a necked condition of the base layer material. Thus, the
Examiner has not adequately explained what portion of Serbiak is being
relied on for disclosure of the first and second separate strips of elastomeric
material attached to a base layer, so that the Appellants are “properly
notified and able to respond.” In re Jung, 637 F.3d at 1362.
For this reason, we are constrained to find that the Examiner has not
set forth a prima facie case of anticipation. The rejection is reversed.

CONCLUSION OF LAW
The Examiner has not established a prima facie case of anticipation.

REVERSED

cdc