Ex Parte Ruman et al

Board of Patent Appeals and Interferences

Jan 23, 2012

12020276 (B.P.A.I. Jan. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARCILLE F. RUMAN, LINDSAY C. SHELLEY,
and KATHLEEN I. RATLIFF
__________

Appeal 2010-009997
Application 12/020,276
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of securing an absorbent article. The Examiner rejected the claims as
nonenabled and anticipated. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

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Statement of the Case
The Claims
Claims 1-14 are on appeal. Claims 1 and 9 are representative and read
as follows:
1. A method of securing an absorbent article in a
fastened configuration for personal wear, said method
comprising:
forming an absorbent article to have a body
having first and second end regions, the body
comprising an inner layer for contact with a wearer‟s
skin wherein at least a portion of said inner layer is
liquid permeable, an outer layer in opposed relation
with the inner layer, and an absorbent layer disposed
between the inner layer and the outer layer;
positioning a mechanical fastening system on
the body, the mechanical fastening system comprising
a loop component and a hook component, the loop
component comprising an elastomeric laminate
including an elastomeric loop material and an
elastomeric substrate, the hook component being
fastenably engageable with the loop material of the
loop component;
stretching the laminate which includes
stretching both said loop material and said substrate;
engaging the hook component and the loop
component whereby the hook component fastenably
engages the loop material of the loop component; and
allowing the stretched laminate to retract which
includes retraction of said loop material and retraction
of said substrate.

9. A method for securing engagement between
fastening components of an article used for personal
wear, the fastening components comprising a hook
component and a loop component, the loop
component comprising a laminate formed by securing
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a stretchable loop material to a stretchable substrate,
the hook component being capable of fastening
engagement with the loop material of the loop
component, the method comprising the steps of:
arranging the fastening components in at least
partially opposed relationship with each other;
engaging the fastening components with each
other to define a refastenable seam whereby the hook
component fastenably engages the loop material of the
loop component; and
contracting said loop component relative to said
hook component at said refastenable seam following
engagement of the fastening components to thereby
move one fastening component relative to the other
fastening component at the refastenable seam to
promote increased engagement between the fastening
components at the refastenable seam, said contracting
including contracting the laminate which includes
contracting said stretchable loop material and
contracting said stretchable substrate.

The issues

A. The Examiner rejected claims 9 and 10 under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement (Ans. 4-7).
B. The Examiner rejected claims 1-14 under 35 U.S.C. § 102(b) as
anticipated by Kuen
1
(Ans. 7-15).
A. 35 U.S.C. § 112, first paragraph, enablement
The Examiner finds that the Specification “does not disclose/enable
contraction and stretching at the specific location of the seam as claimed, i.e.

1
Kuen et al., US 5,386,595, issued Feb. 7, 1995.
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discloses no more than pulling on the seam from outside such seam” (Ans.
7).
Appellants “respectfully submit that the location where pulling is
applied (i.e., at the refastenable seams) and the beneficial effects of the
pulling being applied at the refastenable seams are supported throughout
Appellants‟ specification” (App. Br. 9).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s finding that undue experimentation would have been
required to enable claims 9 and 10?
Findings of Fact
1. The Specification teaches that:
When the training pants 20, or other garment formed
in accordance with the present invention, are manually
formed into a three dimensional garment to fit a wearer . . .
by manual manipulation as the garment is being placed on
the wearer the fastening components 82 and 83 that contain
the loop material and rear side panels 134 are stretched
toward the front side panels 34 and then applied to the
respective hook material 84 and 85 on the front side panels
34.

(Spec. 25 ¶ 0089.)
2. The Specification teaches that the “loop material and side
panels are then released and allowed to contract on the hook material to
produce a mechanical fastener system which exhibits greater engagement
strength than conventional mechanical fastening systems” (Spec. 25 ¶ 0089).
3. The Specification teaches that the “loop material can be held
under tension and the hook material applied to it or any other means for
causing engagement between the hook and loop material while the loop
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material is in an extended or stretched state and then allowed to retract”
(Spec. 25 ¶ 0089).
Principles of Law
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial burden
of setting forth a reasonable explanation as to why it
believes that the scope of protection provided by that claim
is not adequately enabled by the description of the invention
provided in the specification of the application.

In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993). “[T]he question of
undue experimentation is a matter of degree. The fact that some
experimentation is necessary does not preclude enablement; what is required
is that the amount of experimentation „must not be unduly extensive.”‟ PPG
Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996).
Factors to be considered in determining whether a
disclosure would require undue experimentation … include
(1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence
or absence of working examples, (4) the nature of the
invention, (5) the state of the prior art, (6) the relative skill
of those in the art, (7) the predictability or unpredictability
of the art, and (8) the breadth of the claims.

In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Analysis
We appreciate that the Examiner‟s enablement rejection was
responsive to footnote 1 in Ex parte Ruman, 2007 WL 2211377 (BPAI
2007). The Specification clearly describes forming a refastenable seam by
fastenably engaging the hook component and the loop component (FF 1)
following which the material in the loop material is released and allowed to
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contract (FF 2-3). This reasonably provides descriptive support for the
limitations in claims 9 and 10.
With regard to enablement, the Examiner has provided no evidence
that any factor supports a conclusion of undue experimentation. There is no
teaching that any experimentation would be necessary to obtain the
refastenable seam of claim 9, nor is there any evidence that the refastenable
seam would be unpredictable in any way. The Specification provides
express guidance on forming the refastenable seam (FF 1-3). We therefore
conclude that the Examiner has not satisfied the burden of demonstrating
that undue experimentation would have been required to use the method of
claims 9 or 10.
Conclusion of Law
The evidence of record does not support the Examiner‟s finding that
undue experimentation would have been required to enable claims 9 and 10.
B. 35 U.S.C. § 102(b) over Kuen
The Examiner finds that Kuen teaches “an absorbent article for
personal use 70 formed to have a body 22 having first and second end
regions, 28, 29, and comprising an inner layer 25, an outer layer 24 and an
absorbent core 26” (Ans. 8). The Examiner finds that Kuen teaches “a
mechanical fastening system is positioned on the body 22 including a loop
component, e.g. 76, 78, 79, and a hook component, e.g. 72A-B, 74A-B,
which the hook component is fastenably engageable with the loop
component” (id.). The Examiner finds that Kuen teaches that “the entire
strap 76 can form the loop component and such strap, i.e. the entire strap,
can be formed of, e.g. the knitted elastic lock pile fabric . . . which includes a
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knitted elastic webbing, e.g. an elastic substrate/layer” (Ans. 9). The
Examiner finds that “there is sufficient factual basis to conclude the Kuen
device would inherently perform the claimed process” (id. at 11).
Appellants contend that “Kuen et al. fail to show or suggest a method
including 1) stretching the laminate which includes stretching both the loop
material and the substrate, and 2) allowing the stretched laminate to retract
which includes retraction of the loop material and retraction of the substrate”
(App. Br. 11).
Appellants contend that “the diaper disclosed by Kuen et al. does not
have side panels. Instead, the front and back of the diaper are connected
using straps. As a result, claims 6-8 are submitted to be further patentable
over Kuen” (id. at 14). Appellants contend that “Kuen et al. do not disclose
affixing the loop component on the body generally parallel to the
longitudinal axis of the body as recited in claim 11, or affixing the hook
component on the body generally parallel to the longitudinal axis of the
body as recited in claim 12” (id.). Appellants contend that in Kuen “the
straps are not stretched in a direction generally transverse to a longitudinal
axis of the body as recited in claim 13” (id. at 15). Appellants contend that
claim 14 “recites that positioning a mechanical fastening system on the body
comprises bonding the loop component and the hook component to the
body. In Kuen et al., only one of the fastening components are attached to
the body” (id.). Appellants contend that “Kuen et al. fail to show or suggest
a method including contracting a loop component relative to a hook
component including contracting the stretchable loop material and
contracting the stretchable substrate” as required by claim 9 (id. at 16).
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The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s finding that Kuen anticipates the claims?
Findings of Fact
4. The Specification teaches that “„Elastic,‟ „elasticized‟ and
„elasticity‟ mean that property of a material or composite by virtue of which
it tends to recover its original size and shape after removal of a force causing
a deformation” (Spec. 4 ¶ 0014).
5. Kuen teaches a
disposable absorbent garment 20 generally includes a
garment shell 22 that is adapted to be used in conjunction
with an attachment system. As shown, the shell 22 includes
a substantially liquid impermeable backing sheet 24, a
substantially liquid permeable bodyside liner 25, and an
absorbent core 26 sandwiched between the backing sheet
and the bodyside liner.

(Kuen, col. 4, ll. 22-28.)
6. Kuen teaches an attachment system where the “strap members
76 have a looped face 78 and an opposite face 79. The looped face 78 of
each strap member 76 is formed of a loop material, such as by attaching a
loop material to an elastic strap material” (Kuen, col. 14, ll. 43-45).
7. Kuen teaches that the “loop material may be attached only at
the forward and rearward end portions 53 and 54, or along the entire length
of the strap member” (Kuen, col. 14, ll. 45-48).
8. Kuen teaches that “the looped face 78 is separately stitched or
permanently and continuously formed lock-stitched into one side of a woven
or knit elastic material as it is woven or knitted. One particular material
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which has been found suitable as a strap member 76 is a knit material
identified as S-284” (Kuen, col. 14, ll. 48-53).
9. Kuen teaches that “the fit of the garment 70 may be adjusted by
attaching the strap members 76 to the hook patches 72 and 74 further from
or closer to the end portions 53 and 54” (Kuen, col. 15, ll. 2-5).
10. Figure 7 of Kuen is reproduced below:

“FIG. 7 is a perspective view of another alternate embodiment of a
disposable absorbent garment” (Kuen, col. 4, ll. 1-2).
Principles of Law
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“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994); see
Karsten Manufacturing Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001) (“Invalidity on the ground of „anticipation‟ requires lack of
novelty of the invention as claimed … that is, all of the elements and
limitations of the claim must be shown in a single prior reference, arranged
as in the claim.”).
Analysis
Claim 1
Kuen teaches a method of securing an absorbent article comprising
forming an absorbent article with an inner liquid permeable layer, an outer
layer, and an absorbent layer between the inner and outer layers (FF 5).
Kuen further teaches positioning a mechanical fastening system with a loop
and hook component where the “looped face 78 of each strap member 76 is
formed of a loop material, such as by attaching a loop material to an elastic
strap material” (Kuen, col. 14, ll. 43-45; FF 6). Kuen teaches that the
laminate may be stretched and that the “loop material may be attached only
at the forward and rearward end portions 53 and 54, or along the entire
length of the strap member” (Kuen, col. 14, ll. 45-48; FF 7).
Kuen teaches that “the fit of the garment 70 may be adjusted by
attaching the strap members 76 to the hook patches 72 and 74 further from
or closer to the end portions 53 and 54” (Kuen, col. 15, ll. 2-5; FF 9).

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We agree with the Examiner that the adjustable straps of Kuen satisfy
the requirement of claim 1 since the straps “return to their knitted shape and
size upon removal of stress, e.g. tension, they have undergone, i.e. change
shape and size when tension is applied . . . and such strap is tensioned by
stretching and relaxes, e.g. by release of tension, during use” (Ans. 9).
Appellants contend that “Kuen et al. fail to show or suggest a method
including 1) stretching the laminate which includes stretching both the loop
material and the substrate, and 2) allowing the stretched laminate to retract
which includes retraction of the loop material and retraction of the substrate”
(App. Br. 11).
We are not persuaded. Kuen expressly teaches a mechanical fastening
system with a loop and hook component where the “looped face 78 of each
strap member 76 is formed of a loop material, such as by attaching a loop
material to an elastic strap material” (Kuen, col. 14, ll. 43-45; FF 6). When
stretching the loop material for attachment, the elastic laminate will
necessarily stretch as well. Further, consistent with the definition of elastic
in the Specification (FF 4) and the teachings of Kuen (FF 9), the stretched
laminate will retract upon the removal of stress (FF 9; see Ans. 9).
Claims 6-8
The Examiner finds that the “body of the absorbent article includes
side panels, see CLI and, e.g., the panel/peripheral portion adjacent 30A-B
formed by the topsheet and backsheet, e.g. adjacent 44A-B in Figure 1 . . .
wherein positioning the mechanical fastening system on the body comprises
positioning the hook component” (Ans. 12).
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Appellants contend that “the diaper disclosed by Kuen et al. does not
have side panels. Instead, the front and back of the diaper are connected
using straps. As a result, claims 6-8 are submitted to be further patentable
over Kuen” (App. Br. 14).
We find that Appellants have the better position. As interpreted
reasonably, the diaper of Kuen does not include side panels. While side
panels may well have been obvious, the instant rejection over Kuen is an
anticipation rejection. See Kloster Speedsteel AB v. Crucible Inc., 793 F.2d
1565, 1571 (Fed. Cir. 1986) (“[A]bsence from the reference of any claimed
element negates anticipation.”)
Claims 11 and 12
The Examiner finds that Kuen teaches “the step of positioning a
mechanical fastening system on the body comprises affixing the loop
component on the body such that the loop component is generally parallel to
the longitudinal axis of the body alone” (Ans. 12-13). The Examiner finds
that “the claims do not set forth the claimed orientations/axes relative to any
specific reference structure of the components/laminate, e.g. relative to a
particular axis etc., and note that at least some structure of each of the hook
and loop component is generally parallel to „a‟ longitudinal axis of the
body” (id. at 20-21).
Appellants contend that “Kuen et al. do not disclose affixing the loop
component on the body generally parallel to the longitudinal axis of the
body as recited in claim 11, or affixing the hook component on the body
generally parallel to the longitudinal axis of the body as recited in claim 12”
(App. Br. 14).
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We find that Appellants have the better position. We interpret the
claims using the broadest reasonable interpretation. See, e.g., In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings,
claims are given their broadest reasonable interpretation consistent with the
specification.”). As seen in figure 7 (FF 10), the attachment sites 72A and
72B in Kuen are not reasonably interpreted as “generally parallel” and will
not reasonably result in loop components which are “generally parallel to the
longitudinal axis of the body” as required by claim 11. This is consistent
with the Specification, where the attachment sites, as shown in figure 2 of
the Specification, are reasonably viewed as “generally parallel.”
Claim 13
The Examiner finds that the “step of stretching the laminate comprises
stretching the laminate in a direction generally transverse to a longitudinal
axis of the body see CLI, the discussion of claim 1 and note that the laminate
includes some structure that is generally transverse to the longitudinal axis
of the body” (Ans. 13).
Appellants contend that in Kuen “the straps are not stretched in a
direction generally transverse to a longitudinal axis of the body as recited in
claim 13” (App. Br. 15).
We find that Appellants have the better position. We agree with
Appellants that the Examiner has not demonstrated that Kuen teaches “the
step of stretching the laminate comprises stretching the laminate in a
direction generally transverse to a longitudinal axis of the body” as required
by claim 13.

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Claim 14
The Examiner finds that the “step of positioning a mechanical
fastening system on the body comprises bonding the loop component and the
hook component to the body, see CLI, i.e. „bonding‟ does not require direct
bonding, can be indirect” (Ans. 13).
Appellants contend that claim 14 “recites that positioning a
mechanical fastening system on the body comprises bonding the loop
component and the hook component to the body. In Kuen et al., only one of
the fastening components are attached to the body” (App. Br. 15).
We agree with the Examiner. The claim does not require that both of
the fastening components are attached to the body, but simply requires
bonding at least one loop component and one hook component to the body.
Appellants acknowledge that in “Kuen et al., only one of the fastening
components are attached to the body” (id.). Thus, Kuen satisfies the
requirements of the claim 14. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) (“[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.”)
Claims 9 and 10
The Examiner finds that Kuen teaches “contracting the loop
component relative to the hook component at the seam following
engagement of the fastening components to thereby move one fastening
component relative to the other fastening component at the seam to promote
increased engagement between the fastening components at the seam” (Ans.
14).
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Appellants contend that “Kuen et al. fail to show or suggest a method
including contracting a loop component relative to a hook component
including contracting the stretchable loop material and contracting the
stretchable substrate” as required by claim 9 (App. Br. 16).
We find that the Examiner has the better position. As we discussed
previously regarding claim 1, Kuen teaches that “the fit of the garment 70
may be adjusted by attaching the strap members 76 to the hook patches 72
and 74 further from or closer to the end portions 53 and 54” (Kuen, col. 15,
ll. 2-5; FF 9). We agree with the Examiner that consistent with the definition
of elastic in the Specification (FF 4) and the teachings of Kuen (FF 9), the
stretched laminate will retract upon the removal of stress (FF 9; see Ans. 9).
Conclusions of Law
The evidence of record supports the Examiner‟s finding that Kuen
anticipates claims 1-5, 9, 10, and 14.
The evidence of record does not support the Examiner‟s finding that
Kuen anticipates claims 6-8 and 11-13.
SUMMARY
In summary, we reverse the rejection of claims 9 and 10 under 35
U.S.C. § 112, first paragraph as failing to comply with the enablement
requirement.
We affirm the rejection of claims 1, 9, 10, and 14 under 35 U.S.C. §
102(b) as anticipated by Kuen. Pursuant to 37 C.F.R. § 41.37(c)(1), we also
affirm the rejection of claim 2-5 as these claims were not argued separately.
We reverse the rejection of claims 6-8 and 11-13 under 35 U.S.C. §
102(b) as anticipated by Kuen.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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