Ex Parte Sauer et al

Patent Trial and Appeal Board

Dec 22, 2014

12204858 (P.T.A.B. Dec. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ANDREW JAMES SAUER and
MICHAEL DALE TRENNEPOHL
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Appeal 2012-005691
Application 12/204,858
Technology Center 3700
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Before LORA M. GREEN, ULRIKE W. JENKS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 2, and 4–16. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is The Procter & Gamble Company (App. Br. 1).
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STATEMENT OF THE CASE
The claims are directed to disposable wearable absorbent articles
having anchoring subsystems. Claim 1, the only independent claim, reads as
follows (emphasis added):
1. A pant-type disposable wearable absorbent article comprising:
an absorbent core area;
a side; and
an anchoring subsystem contained within a particular, defined area of
the disposable wearable absorbent article, said defined area being the side;
where said anchoring subsystem includes exactly one side anchoring
member, wherein the entire side anchoring member is embedded in the side,
and wherein the side anchoring member includes:
a pathway;
a front end of the pathway disposed at a front end location at a front
end longitudinally outboard distance;
a back end of the pathway disposed at a back end location at a back
end longitudinally outboard distance; and
wherein:
at least one of the front end location and the back end location
is outside of the absorbent core area; and
the front end longitudinally outboard distance is about equal to
the back end longitudinally outboard distance.

Issue
The Examiner has rejected claims 1, 2, and 4–16 under 35 U.S.C.
§ 103(a) as obvious in view of Schaar2 (Ans. 5–8).
The issue presented is: Has the Examiner established by a
preponderance of the evidence that Schaar would have made obvious a
disposable wearable absorbent article comprising an anchoring subsystem
contained within a side of the article, “where said anchoring subsystem

2 Schaar, US 4,209,016, issued June 24, 1980.
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includes exactly one side anchoring member, [and] wherein the entire side
anchoring member is embedded in the side,” as required by claim 1?
Findings of Fact
FF1. The Specification discloses “disposable wearable absorbent
articles with anchoring subsystems” (Spec. 1:9–11).
FF2. The Specification discloses that “embodiments of the present
disclosure can help prevent disposable wearable absorbent articles from
sagging and/or slipping down on a wearer” (id. at 4:9–10).
FF3. The Specification discloses that an “anchoring subsystem can be
configured to collect loads acting upon a disposable wearable absorbent
article, to anchor itself to a body of a wearer, and to balance the collected
loads with holding forces obtained from the anchoring” (id. at 4:18–20).
FF4. The Specification discloses that, “[i]n order to collect loads,
anchor itself to a body of a wearer, and balance various forces, an anchoring
subsystem can be configured to include one or more anchoring subsystem
elements” (id. at 5:11–12).
FF5. The Specification discloses that “[o]ne kind of anchoring
subsystem element is a side anchoring member (SAM). A SAM is one or
more physical, tension-carrying elements and/or areas disposed along a
defined SAM pathway in an anchoring subsystem of a disposable wearable
absorbent article” (id. at 6:25–27).
FF6. The Specification discloses that a “SAM can be made from any
material suitable for carrying tensions in an anchoring system. Part or all of
a SAM can include one or more of various elastic, inelastic, extensible,
inextensible, stretchable, and/or non-stretchable material(s) and/or any other
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suitable material(s) and/or combinations of any of these materials” (id. at
8:5–8).
FF7. The Examiner finds that Schaar discloses an absorbent article
comprising a first half, a second half, and an absorbent core, “with a side ear
(34) connected to a first half and including a fastener and a side anchoring
subsystem . . . as set forth in annotated figure 14” (Ans. 5).
FF8. The Examiner provides the following annotated version of
Schaar’s Figure 14:

The annotated version of Figure 14 shows a diaper with a diaper fastener
that includes “a pair of tape strips 52 and 52’ on each of the diaper sides”
(Schaar, col. 5, ll. 18–20), and the Examiner has labeled Figure 14 to
indicate that a first tape strip is a “first side anchoring member” and that a
second tape strip is a “second side anchoring member” (Ans. 7).
FF9. Schaar discloses that “the diaper fastener has a pair of tape strips
52 and 52’ on each of the diaper sides” (Schaar, col. 5, ll. 18–20).

FF10. Schaar discloses that
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[i]n use . . . the larger tape strip 52 is utilized to secure the
diaper about an infant . . . . Next, the second tape strip 52’ may
be attached to a lower spaced portion of the diaper in order to
apply tension to this diaper portion after attachment, and secure
a snug fit of the lower diaper portion about the infant.

(Id. at col. 5, ll. 27–34.)
FF11. Schaar discloses that “[e]ach tape fastener has a tape strip 52
having a first end portion 68 attached by adhesive to the back surface of the
backing sheet adjacent the associated side edge 34, such that the first end
portion 68 defines a fixed end of the tape strip” (id., col. 5, l. 64–col. 6, l. 1).
FF12. The Examiner finds that the “difference between Schaar and
claim 1 is the provision that the entire side member is embedded in the side”
(Ans. 6).
FF13. The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to
provide an embedded side member as opposed to one that is
attached to the side of the article since it has been held that
forming in one piece an article which has formerly been formed
in two pieces and put together involves only routine skill in the
art.

(Id.)
FF14. The Examiner finds that “[n]o specific definition has been
provided [in the Specification] for the term ‘embedded’ . . . [and therefore]
this term is given its plain and ordinary meaning” (id.).
FF15. The Examiner finds that “Merriam-Webster defines
‘embedded’ as ‘to surround closely’” (id.).
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FF16. The Examiner finds that “Dictionary.com defines the term as
‘to fix in a surrounding mass’ or ‘to incorporate or contain as an essential
part or characteristic’” (id. at 6–7).
FF17. The Examiner finds that “Schaar provides a side anchoring
member that is surrounded closely by the areas to which it is attached” (id.
(citing Schaar, Fig. 18)).
FF18. The Examiner finds that Schaar’s “side anchoring member is
also fixed in the surrounding mass and/or incorporated or contained as an
essential part or characteristic” (id. (citing Schaar, col. 5, l. 64–col. 6, l. 1)).
FF19. The Examiner concludes that “the side anchoring member of
Schaar is still considered as being ‘embedded’ in the side as claimed” (id.).
Analysis
Appellants argue that Schaar would not have made obvious a
disposable wearable absorbent article comprising an anchoring subsystem
contained within a side of the article, wherein the anchoring subsystem
includes a side anchoring member such that “the entire side anchoring
member is embedded in the side” of the absorbent article, as required by
claim 1 (App. Br. 4). Appellants argue that Schaar “discloses a disposable
article with two fasteners that are tape strips . . . [wherein] the two tape strips
are utilized to secure the diaper about an infant” (id.). Appellants argue that
there is “no suggestion or motivation in Schaar to embed the two tape strips
in the side of the article, and would argue instead that Schaar teaches away
from embedding the tape strips in the side of the article” (id.).
The Examiner responds that Appellants’ “arguments are not
commensurate with the scope of the claims” (Ans. 10). The Examiner
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reasons that Appellants’ argument that there would be no way to fasten the
tape strips if they were embedded entirely within the side, with no part
protruding, “is more specific than the claim language” (id.). The Examiner
reasons that the “claim language requires the ent[i]r[e] side anchoring
member to be embedded in the side, not within the side with no part
protruding from the side” (id.).
We agree with Appellants that the Examiner has not adequately
explained how Schaar would have made obvious the absorbent article of
claim 1 with an entire side anchoring member embedded in the side of the
absorbent article. “In proceedings before the Patent and Trademark Office,
the Examiner bears the burden of establishing a prima facie case of
obviousness based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265
(Fed. Cir. 1992). That burden has not been carried here. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to modify Schaar’s tape fastener to be an embedded side member as opposed
to one that is attached to the side of the article because forming an article in
one piece, which has formerly been formed in two pieces, involves only
routine skill in the art (FF 13). This reasoning is not persuasive because,
even if the tape strips were formed integrally of the same material as the side
of the article, the Examiner has not explained how such a modification
would result in tape strips that are embedded in the side because the purpose
of the Schaar tape strips is to extend from one side and attach to the other
side. The Examiner’s reasoning that Schaar’s tape strips could still be
considered embedded in the side even if they were extending from the side,
as set forth above, is also not persuasive. We note that claim 1 requires that
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the “the entire side anchoring member is embedded in the side” (emphasis
added). According to the definitions provided by the Examiner, the term
embedded means “to surround closely” (FF 15) or “to fix in a surrounding
mass” (FF 16). The Examiner has not explained how tape strips that extend
from the side of an absorbent article would be entirely surrounded closely by
the side or fixed in the surrounding material of the side.
Thus, we reverse the rejection of independent claim 1 and dependent
claims 2 and 4–16 as being obvious in view of Schaar.
Conclusion of Law
The preponderance of the evidence does not support the Examiner’s
conclusion that Schaar would have made obvious a disposable wearable
absorbent article comprising an anchoring subsystem contained within a side
of the article, “where said anchoring subsystem includes exactly one side
anchoring member, [and] wherein the entire side anchoring member is
embedded in the side,” as required by claim 1.
SUMMARY
We reverse the rejection of claims 1, 2, and 4–16 under 35 U.S.C.
§ 103(a).
The claims of the instant Application also stand rejected on the
ground of non-statutory obviousness-type double patenting as follows:3

3 Claims 1, 2, and 4–16 were also provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1, 7, 9 and 14–25 of copending Application No. 11/899,656, which is
now abandoned. Therefore, this rejection is moot.
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claims 1, 2, and 4–16 are provisionally rejected as unpatentable over
claims 1–21 of copending Application No. 12/204,854 (Ans. 8);
claims 1, 2, and 4–16 are provisionally rejected as unpatentable over
claims 1–20 of copending Application No. 12/204,864 (Ans. 9).
Appellants do not traverse the double patenting rejections, but “defer
response until . . . claims in any of these applications may be allowed, and
the Office determines that grounds for an obviousness-type double-patenting
rejection remain” (App. Br. 5). Thus, we decline to reach the merits of these
rejections with the proviso set out in the following paragraph.
The instant ’858 application, the ’854 application, and the ’864
application were all filed on the same day. Pursuant to the Manual of Patent
Examining Procedure (MPEP) § 804 (8th Ed., Rev. 8, July 2010), when
applications subject to obviousness-type double patenting rejections are filed
on the same day, the rejection can be withdrawn from the application
claiming the “base invention” and maintained for the application claiming
the “improvement.” We leave it to the Examiner to determine whether the
obviousness-type double patenting rejections are still proper in light the
guidance provided in MPEP § 804. See Ex parte Moncla, 95 USPQ2d 1884
(BPAI 2010) (precedential).

REVERSED

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