Ex parte SERBIAK et al.

Board of Patent Appeals and Interferences

Feb 26, 1998

08218954 (B.P.A.I. Feb. 26, 1998)

Application for patent filed March 28, 1994. According to1
appellants, this application is a continuation of Application
No. 08/048,640, filed April 16, 1993, abandoned, which is a
continuation of Application No. 07/811,388,filed December 20,
1991, now U.S. Patent No. 5,219,341, issued March 28, 1995.
1
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(2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PAUL J. SERBIAK, ANNAMARIA CESCO-CANCIAN,
JULIE K. FREDRICK and ROBERT J. PEERENBOOM
__________
Appeal No. 97-1027
Application No. 08/218,9541
__________
ON BRIEF
__________
Before McCANDLISH Senior Administrative Patent Judge, and
McQUADE and NASE, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 30 and 32 through 42. No other claims are
Appeal No. 97-1027
Application 08/218,954
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pending in the application.
Despite the fact that claim 40 has been included in the
statement of the appealed claims in appellants’ notice of appeal
(paper No. 17), no specific rejection is found in the examination
of this application leading up to and including the final
rejection (paper No. 13) or in the examiner’s answer (paper No.
19). In short, no specific rejection of claim 40 appears to have
been made in the examination of this application. On the record
before us, we therefore dismiss the appeal as to claim 40 for
lack of jurisdiction inasmuch as no rejection or other adverse
decision of claim 40 is before us. See 35 U.S.C. § 7(b).
Appellants’ invention relates to an absorbent article and
more particularly to a sanitary napkin having first, second and
third absorbent layers (12, 13 and 15) disposed between a liquid
permeable cover (11) and a liquid impermeable baffle (14).
According to one feature of appellants’ invention, the third
layer (15), which lies between the first and second layers (12,
13), has a transverse wicking rate which is less than that of the
second layer (13), and the second layer (13) has a transverse
wicking rate which is greater than that of the first layer (12)
so that body fluid is transversely routed in the second layer
Appeal No. 97-1027
Application 08/218,954
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faster than in either the first or third layers to enable a user
to determine by observation if the napkin is approaching its
maximum fluid capacity. A copy of claim 32, which is exemplary of
the claimed subject matter, is appended to this decision.
The following references are relied upon by the examiner as
evidence of anticipation and obviousness in support of his
rejections under 35 U.S.C. §§ 102, 103:
Ness 4,880,419 Nov. 14, 1989
Osborn, III 4,950,264 Aug. 21, 1990
Claim 30 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Ness, claims 32, 33, 38 and 42 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Osborn and
claims 34 through 37, 39 and 41 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Osborn. Reference is made to the
final office action (paper No. 13) for details of these
rejections.
We have carefully considered the issues raised in this
appeal together with the examiner’s remarks and appellants’
arguments. As a result, we conclude that the rejections of
appealed claims 30, 32 through 39, 41 and 42 cannot be sustained.
Considering first the § 102(b) rejection of claims 32, 33,
38 and 42, it is well establish patent law that for a reference
Appeal No. 97-1027
Application 08/218,954
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to be properly anticipatory, each and every element of the
rejected claim must be found either expressly described or under
the principles of inherency in the applied reference. See, inter
alia, RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
In the present case, all three of the independent claims 32,
38, and 42 require in substance that the transverse wicking rate
of the second absorbent layer be higher than the transverse
wicking rates of the first and third absorbent layers thereby
enabling the absorbed body fluid to be transversely routed in the
second layer faster than in either the first or the third layer.
In support of his position that this limitation is met by the
Osborn patent, the examiner has made the following findings with
regard to this reference:
The embodiment of Figure 4 of Osborn comprises a
first absorbent layer 34; a second absorbent layer
28 with an oval configuration, a thickness less
than that of first absorbent layer 34 (Figure 2),
a greater transverse width, and a higher trans-
verse wicking rate (column 8, lines 29-36); a
third absorbent layer 31 with a transverse width
intermediate that of the first and second absorb-
ent layers; and attachment panels 71. That the
second absorbent layer 28 has a greater wicking
rate than the third absorbent layer 31 is evident
from discussion of the intended functioning of the
device (column 8), particularly in that layer 31
“improves lateral wicking” (column 8, lines 8-9)
Appeal No. 97-1027
Application 08/218,954
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whereas layer 28 “greatly improves lateral
wicking” (column 8, lines 32-33; emphasis added).
Contrary to the examiner’s position as quoted supra, the
mere disclosure in Osborn that the patentee’s wipe acquisition
sheet 28, which overlies the intermediate wet-laid tissue layer
31 and the lowermost laminate core 34 in Osborn’s sanitary
napkin, “greatly improves lateral wicking of exudates over the
absorbent core 34” does not necessarily mean that the transverse
wicking rate of sheet 28 is greater than the transverse wicking
rate of the underlying tissue layer 31. This part of the Osborn
specification merely states that the acquisition sheet greatly
improves lateral wicking with respect to lowermost core 34. It is
silent as to the relative transverse wicking rates of sheet 28
and the tissue layer 31.
As a result, it cannot be said that the claimed relationship
of the wicking rates for the second and third absorbent layers is
the necessary result flowing from Osborn’s disclosure that sheet
28 greatly improves the lateral wicking of exudates over the core
34. Therefore, the claimed relationship of the wicking rates for
the second and third absorbent layers is not expressly or
inherently met by Osborn. See In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981). It follows that Osborn is not a
Appeal No. 97-1027
Application 08/218,954
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proper anticipatory reference for claims 32, 33, 38 and 42.
For the foregoing reasons, we must reverse the § 102(b)
rejection of claims 32, 33, 38 and 42. We must also reverse the
§ 103 rejection of claims 34 through 37, 39 and 41 because we
find nothing that would have suggested the claimed relationship
of the transverse wicking rates for appellants’ second and third
absorbent layers.
With regard to the § 102(b) rejection of claim 30, this
claim requires that the transverse wicking rate of the second
absorbent layer be greater than the transverse wicking rate of
the first absorbent layer and further that transverse wicking
rate of the third absorbent layer be less than the transverse
wicking rate of the second absorbent layer. Contrary to the
examiner’s position, we find no disclosure in Ness which
expressly or inherently meets the claimed limitation pertaining
the relationship of the transverse wicking rates for the
absorbent layers. As a result the § 102(b) rejection of claim 30
also must be reversed. See RCA Corp. v. Applied Digital Data
Systems, Inc., 730 F.2d at 1444, 221 USPQ. at 388.
The examiner’s decision rejecting appealed claims 30, 32
through 39, 41 and 42 is reversed, and the appeal as to claim 40
is dismissed for lack of jurisdiction.
Appeal No. 97-1027
Application 08/218,954
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REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-1027
Application 08/218,954
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Thomas J. Connelly
Kimberley-Clark Corporation
Patent Department
401 North Lake Street
Neenah, WI 54956