Ex Parte Roe

Patent Trial and Appeal Board

Sep 21, 2017

13757031 (P.T.A.B. Sep. 21, 2017)

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.
13/757,031 02/01/2013 Donald Carroll Roe 10160C 4102
27752 7590 09/25/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
KID WELL, MICHELE M
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
09/25/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD CARROLL ROE
Appeal 2016-001676
Application 13/757,031
Technology Center 3700
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
ANTHONY KNIGHT, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Donald Carroll Roe and the Proctor & Gamble Company
(Appellants)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision, set forth in the Final Action (July 14, 2014, hereinafter “Final
Act.”), rejecting claims 1—12 under 35 U.S.C. § 103(a) as unpatentable over
Roe (US 5,554,145, issued Sept. 10, 1996).2 We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
1 The Proctor & Gamble Company is an applicant as provided in 37 C.F.R.
§ 1.46. The Appeal Brief (Dec. 15, 2014, hereinafter “Br.”), names the
Proctor & Gamble Company as the real party in interest. Br. 1.
2 In the Answer (Sept. 3, 2015, hereinafter “Ans.”), the Examiner withdrew
rejection of claims 1—12 under 35 U.S.C. § 112, second paragraph. Ans. 2.
Appeal 2016-001676
Application 13/757,031
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below from pages A-l—A-2 of the Claims
Appendix,3 with some minor formatting changes to enhance readability and
italics added to emphasize pertinent limitations, is the only independent
claim and is representative of the claimed subject matter.
1. A disposable absorbent article comprising:
a) a chassis having a front waist region with a front waist
edge, a rear waist region with a rear waist edge, a crotch region
between the front waist region and the rear waist region, left and
right longitudinal edges, and a longitudinal centerline dividing
left and right sides of the chassis, the chassis comprising:
i) a topsheet,
ii) a backsheet, and
iii) an absorbent core disposed between the
topsheet and backsheet;
b) left and right ears each having an upper lateral edge,
a proximal edge, and a distal edge, wherein the left and right ears
are joined respectively to the left and right sides of the chassis in
the rear waist region such that at least a portion of each respective
left or right ear extends laterally outward from the respective
left or right longitudinal edge; and
c) a fastening system comprising:
i) an engaging member disposed proximate to the
distal edge of each ear, the engaging member having
disposed thereon a rectangular engaging surface with
proximal and distal engaging surface edges parallel to the
longitudinal centerline, the engaging surface having a
center, and
ii) a rectangular receiving member disposed on
the chassis in the front waist region, the rectangular
receiving member having left and right receiving member
3 Citations to the “Claims Appendix” (hereinafter “Claims App.”) are to the
Claims Appendix submitted June 18, 2015, in response to the
“NOTIFICATION OF NON-COMPLIANT APPEAL BRIEF (37 C.F.R.
§41.37)” dated May 18, 2015.
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Appeal 2016-001676
Application 13/757,031
edges that are parallel to the longitudinal centerline, and
top and bottom receiving member edges that are
perpendicular to the longitudinal centerline, and a lateral
axis through a longitudinal midpoint thereof,
the receiving member being sized and positioned relative
the front waist edge, and each of the left and right ears and
engaging members being sized and positioned relative the rear
waist edge, such that when the engaging surface on the engaging
member of a left or right ear is placed with its center over the
lateral axis of the receiving member proximate the respective left
or right receiving member edge thereof, each ear has a Front
Edge Displacement and a Rear Edge Displacement such that a
sum of the Front Edge Displacement and the Rear Edge
Displacement is no greater than about 12 mm.
DISCUSSION
The objective of the arrangement set forth in the italicized limitations
of claim 1 is to provide the diaper with a “smooth, continuous,
circumferential waist edge without discontinuities or drops” so that the
diaper does “not appear diaper-like.” Spec. 3:12—16. This alleviates, for
children being toilet trained or incontinent youths or adults, the stigma
attached to having to wear a diaper. Id. at 3:9-11. Furthermore, the
arrangement helps “the diaper exhibit a line of tension, which is provided at
least in part by discrete ears, as close to the waist edge as possible.” Id. at
3:16-18.
Appellants argue that Roe does not teach a fastening system satisfying
the italicized limitations of claim 1. Br. 5. Moreover, Appellants contend
that the Examiner has not identified a reason that would have prompted a
person of ordinary skill in the art to modify Roe’s article in a manner that
would satisfy the italicized limitations. Id. at 6.
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Appeal 2016-001676
Application 13/757,031
The “Front Edge Displacement” and “Rear Edge Displacement” of the
ears are defined in Appellants’ Specification and depicted in Figure 3A.
Spec. 19:11—24. According to the Specification, “the Front Edge
Displacement A is the distance between the upper edge 43 c of the back ear
42 and the lateral edge 14 of the front waist region 3 [6]” and “the Rear Edge
Displacement C is the distance between the upper edge 44c of the back ear
42 and the longitudinal edge 14 of the rear waist region 38.” Id. 19:15—17,
22-24.
Figure 3 A is reproduced below.
Ksic. :SA
Figure 3A is a magnified planar side view of the diaper in a fastened
configuration as would be assumed during wear, with “A” denoting the
“Front Edge Displacement” and “C” denoting the “Rear Edge
Displacement.” Spec. 4:17—18, 21; 19:15—17,22—24.
The Examiner found that “each ear panel [of Roe] is flush with the
corresponding waist panel thereby providing a Rear Edge Displacement and
Front Edge Displacement of zero.” Final Act. 4. According to the
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Application 13/757,031
Examiner, “[t]he difference between Roe and claim 1 is the explicit
recitation that the sum of the front and rear displacement remains the same
when the engaging surface is placed upon the receiving member in a specific
position.” Id. The Examiner determined:
It would have been obvious to one of ordinary skill in the art to
continue to provide the claimed sum as desired because Roe
teaches that the side panels may have a number of different sizes
and shapes as set forth in col. 14, lines 54 - 55. As such, one of
ordinary skill in the art has been provided with the motivation
[to] alter the ear of Roe to continue to provide the claimed sum
of the front and rear edge displacement as claimed.
Id.
Appellants submit that “[t]his assertion does not identity any
suggestion or motivation within Roe ... for modifications to its article of a
nature that would bring it within the scope of [Appellants’] claim 1.” Br. 6.
Appellants allege that the Examiner has resorted to impermissible hindsight
in reaching the conclusion of obviousness. Id.
Roe discloses a disposable absorbent article (a diaper) provided with
a closure system for fastening the diaper on the wearer, wherein the closure
system comprises (i) a pair of engaging members (tape tabs 40) disposed on
left and right ears (side panels 36) extending laterally from central waistband
panel 34 of back waist feature 32 and (ii) a rectangular receiving member
(landing member/reinforcing strip 41) disposed on front waist panel 43.
Roe 5:26—33, Fig. 1. As depicted in Figure 1 of Roe, upper edges of side
panels 36 and tape tabs 40 are flush with the lateral edge of back waist
feature 32. Thus, the Examiner’s finding that Roe provides a Rear Edge
Displacement of zero when the diaper is fastened with the engaging surfaces
of tape tabs 40 placed with their centers over the lateral axis of landing
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Appeal 2016-001676
Application 13/757,031
member 41, as called for in claim 1, is correct. However, Roe’s Figure 1
depicts landing member 41 spaced longitudinally from the lateral edge (end
edge 48) of front waist panel 43. Roe gives no indication that Figure 1 is
drawn to scale. Thus, the spacing of landing member 41 from end edge 48,
and the relationship of this spacing to the longitudinal distance from the
center of tape tabs 40 to the upper edges of tape tabs 40 and side panels 36,
cannot be ascertained from Roe’s disclosure. As such, the Examiner’s
finding that Roe provides a Front Edge Displacement of zero (Final Act. 4),
when the diaper is fastened as called for in claim 1, is not supported by a
preponderance of the evidence. Any determination as to whether Roe’s
receiving member (landing member 41) is sized and positioned relative to
the front waist edge (end edge 48) and each of the ears (side panels 36) and
engaging members (tape tabs 40) is sized and positioned relative to the rear
waist edge (lateral edge of back waist feature 32), such that when the
engaging surface on each engaging member (tape tabs 40) is placed with its
center over the lateral axis of the receiving member (landing member 41),
each ear (side panel 36) has a Front Edge Displacement and a Rear Edge
Displacement summing no greater than about 12 mm, as required in claim 1,
would require speculation.
As pointed out by the Examiner (Final Act. 4; Ans. 4), Roe teaches
that “side panels 36 may have a number of different sizes and shapes.” Roe
14:54—55. The Examiner states that this teaching would have provided
motivation to size and position the ears such that when the engaging surface
on the engaging member (tape tabs 40) is placed with its center over the
lateral axis of the receiving member (landing member 41), each ear (side
panel 36) has a Front Edge Displacement and a Rear Edge Displacement
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Appeal 2016-001676
Application 13/757,031
summing no greater than about 12 mm, as required in claim 1. Final Act. 4;
see Ans. 4 (stating that the motivation to provide a specific ear (side panel)
size and, thus, a resulting position of the ears and/or engaging member as
claimed, “would be within . . . the level of ordinary skill in the art”).
However, we do not discern, nor does the Examiner adequately explain, why
Roe’s teaching that a number of different sizes and shapes of the side panels
is possible would provide such motivation. In other words, the Examiner
does not articulate sufficient reasoning explaining why, of all the possible
sizes and shapes of the side panels, a person having ordinary skill in the art
would have selected a size and shape resulting in a Front Edge Displacement
and a Rear Edge Displacement summing no greater than about 12 mm.
The Examiner states that “the lateral axis” in claim 1 over which the
center of the engaging members are placed to result in a Front Edge
Displacement and a Rear Edge Displacement summing no greater than about
12 mm “is simply any transverse axis throughout the receiving member.”
Ans. 3^4. This is not a correct interpretation of claim 1, which expressly
recites “a lateral axis through a longitudinal midpoint” of the receiving
member. Claims App. A-l. The recitation in claim 1, “such that when the
engaging surface on the engaging member of a left or right ear is placed with
its center over the lateral axis of the receiving member,” refers back to the
“lateral axis though a longitudinal midpoint” of the receiving member. Id. at
Al—A-2 (emphasis added). As such, the claimed Front Edge Displacement
and Rear Edge Displacement summing no greater than about 12 mm must be
achieved with the centers of the engaging members being placed over the
lateral axis through a longitudinal midpoint of the receiving member.
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Application 13/757,031
The Examiner also maintains:
There is no teaching or suggestion in Roe that the Front Edge
Displacement and the Rear Edge Displacement ever has a sum
of anything other than zero, because no matter where the wearer
decides [to] place the engaging member onto the receiving
member (41), the uppermost portions of the side panel/engaging
member (36) connected to the uppermost portion of the chassis
(32), will not be displaced. Therefore, the Front Edge
Displacement and the Rear Edge Displacement continue to be
zero.
Ans. 4. This position stems from the Examiner’s unsupported finding,
discussed above, that Roe teaches a Front Edge Displacement of zero.
For the above reasons, the Examiner fails to articulate a reason, with
rational underpinnings, supported by a preponderance of the evidence, that
the subject matter of claim 1 would have been obvious. Accordingly, we do
not sustain the rejection of claim 1, or its dependent claims 2—12, under
35 U.S.C. § 103(a) as unpatentable over Roe.
DECISION
The Examiner’s decision rejecting claims 2—12 is reversed.
REVERSED
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