Ex Parte Popp et al

Board of Patent Appeals and Interferences

Mar 5, 2012

11215865 (B.P.A.I. Mar. 5, 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.
11/215,865 08/30/2005 Robert L. Popp 21,247 5191
23556 7590 03/06/2012
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
KIDWELL, MICHELE M
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
03/06/2012 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 ROBERT L. POPP, WALTER A. MATTINGLY, and
THOMAS E. WILLIAMSON
____________________

Appeal 2010-004333
Application 11/215,865
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 2010-004333
Application 11/215,865
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-18 under 35 U.S.C. § 102(b) as anticipated by
Datta (US 2002/0165514 A1, pub. Nov. 7, 2002). We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.
Claim 1, reproduced below with added emphasis, is illustrative of the
claimed subject matter.
1. A prefastened article, comprising:
a chassis including a first waist region and a second waist
region, together defining a waist opening and first and second
leg openings;
a refastenable seam joining a first distal portion of the
first waist region to a first distal portion of the second waist
region, and including a first refastenable bond connecting the
first distal portion of the first waist region and the first distal
portion of the second waist region having a first refastenable
bond peel strength, the first distal portion of the first waist
region being folded and bonded to itself with a releasable
bond having a first releasable bond peel strength, wherein the
first refastenable bond peel strength is greater than the first
releasable bond peel strength.

OPINION
Appellants raise the issue of whether Datta describes a prefastened
article having the first distal portion of the first waist region folded and
bonded to itself. App. Br. 4.
The Examiner found that Datta describes a first distal portion of a first
waist region folded and bonded to itself with releasable bond 70. Ans. 3, 5-
6. Releasable bond 70 in Datta, however, bonds the front ear 106 and the
back ear 107. See Datta, fig. 6; see also id., para [0093] (“bonds 70 connect
the front waist region … to the back waist region”). Datta describes the ears
Appeal 2010-004333
Application 11/215,865
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106 and 107 for a given side of the diaper in figure 6 to correspond to the
front and back waist regions, respectively. Id., para. [0093]. Accordingly,
using the terminology of the claims, the first distal portion of the first waist
region (front ear 106) may be folded on itself but it is bonded, via bonds 70,
to the first distal portion of the second waist region (back ear 107). Outside
of evidence or technical analysis to support the Examiner’s interpretation of
back ear 107 as a part of the front region, it is, in our view, unreasonable to
interpret what the prior art considers belonging to the back region to be a
part of the front region. See Scripps Clinic & Research Found. v.
Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991) (“There must be no
difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention.”)
(emphasis added).
To the extent the Examiner is considering bond 70 to bond adjacent
portions of the ear 106 (see Ans. 5-6), we again consider this interpretation
unreasonable. Because the ear is a continuous piece of material, adjacent
portions along the ear may be, in some sense, “bonded,” but in this case, no
bond releasably bonds those adjacent portions of the ear as required by the
claims.
Consequently, the Examiner’s finding that Datta describes a first
distal portion of a first waist region folded and bonded to itself with
releasable bond is in error. The Examiner’s rejection of claims 1-18 relies
on this erroneous finding (Ans. 3-4), such that we cannot sustain the
rejection of claims 1-18.

REVERSED

Appeal 2010-004333
Application 11/215,865
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