Ex parte SANDERS et al.

Board of Patent Appeals and Interferences

Sep 22, 1998

08160460 (B.P.A.I. Sep. 22, 1998)

Application for patent filed December 1, 1993. According to1
appellants, this application is a continuation of Application 07/978,576,
filed November 19, 1992.
1
Paper No. 22
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte DONALD J. SANDERS,
MARK C. JACOBS, LISETTE M. CURTIN,
KEITH G. BELLIN, ROB D. EVERETT
and LEE P. GARVEY
______________
Appeal No. 96-3347
Application 08/160,4601
_______________
ON BRIEF
_______________
Before FRANKFORT, PATE and NASE, Administrative Patent Judges.
PATE, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 96-3347
Application 08/160,460
2
This is an appeal from the final rejection of claims 1,
2,
4 through 8, 10 through 15, 18, 19 and 21 through 28. These
are the only claims remaining in the application.
The claimed invention is directed to an apparatus for
enveloping the absorbent core of a disposable diaper or the
like. For a further understanding of the claimed subject
matter, reference is made to appealed claim 1, a copy of which
is appended to the appeal brief.
The references of record relied upon as evidence of
obviousness are:
Teed (‘272) 3,984,272 Oct. 5, 1976
Goodbar 4,259,958 Apr. 7, 1981
Teed (‘782) 4,261,782 Apr. 14, 1981
THE REJECTIONS
The following rejections are before us on appeal. Claims
1, 2, 4 through 8, 10 through 15, 18, 19 and 21 through 28
stand rejected under 35 U.S.C. § 103 as unpatentable over
Goodbar in view of Teed (‘272).
Appeal No. 96-3347
Application 08/160,460
3
Claims 12 through 14, 23 and 24 stand rejected under
35 U.S.C. § 103 as unpatentable over Goodbar in view of Teed
(‘272) and further in view of Teed (‘782).
OPINION
We have carefully reviewed the rejections on appeal in
light of the arguments of the appellants and the examiner. As
a result of this review, we have reached the conclusion that
the applied prior art does not establish a prima facie case of
obviousness with respect to the subject matter on appeal.
Accordingly, the rejections on appeal are reversed. Our
reasons follow.
Appellants argue correctly that neither of the cited
references of Goodbar and Teed (‘272) discloses or
contemplates the use of superabsorbent materials. We note
further that the examiner on page 4 of the examiner’s answer
states that superabsorbent materials are well-known and it
would have been within the purview of those having ordinary
skill to use such in the diaper of Goodbar as modified by
Teed. However, by the examiner’s failure to include any
Appeal No. 96-3347
Application 08/160,460
4
evidence regarding super- absorbent materials, at least the
applied prior art cannot provide evidence of the recognition
in the art of the problem of superabsorbent material
migration. We note that the recognition of the problem is
part of the subject matter as a whole which should always be
considered in determining the obviousness of an invention
under 35 U.S.C. § 103. In re Sponnoble, 405 F.2d 578, 585,
160 USPQ 237, 243 (CCPA 1969).
Secondly, means-plus-function language in a claim must be
construed by looking to the specification and interpreting the
language of the claim in light of the corresponding structure,
materials, or acts described in the specification. See In re
Donaldson Co., Inc., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848
(Fed. Cir. 1994). Therefore, it is clear that the sealing
means as claimed in claim 1, which is disclosed in the
specification as an adhesive or heat sealing means must be
interpreted as such when construing claim 1. Therefore, it
was incumbent on the examiner to make a factual finding that
the embossing means disclosed by Teed (‘272) is the same as or
Appeal No. 96-3347
Application 08/160,460
5
an equivalent of the heat sealing or adhesive means claimed in
claim 1. The examiner has made no such finding of either
structural similarity or equivalency. Therefore, the examiner
has not sustained his burden of presenting a prima facie case
of obviousness.
Thirdly, we note the examiner’s argument that although
the spacing between the adhesive strips 21 of Teed 1272 is not
a fully closed pattern, it would have been obvious to
substitute a single transverse adhesive strip for the strips
21. See page 4, examiner’s answer. We note that there is
absolutely no teaching for this change or substitution of the
adhesive configuration in Teed or in Goodbar as modified by
Teed. An obviousness rejection must be based on evidence.
Where it is not based on evidence, it cannot stand. See In re
GPAC, 57 F.3d 1573, 1582, 35 USPQ2d 1116, 1123 (Fed. Cir.
1995). For these reasons, the rejections of all claims on
appeal is reversed.
REVERSED
Appeal No. 96-3347
Application 08/160,460
6
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
WILLIAM F. PATE, III ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )

Appeal No. 96-3347
Application 08/160,460
7
Paul Yee
Kimberly-Clark Corp.
401 N. Lake Street
Neenah, WI 54956
WFP/cam