In re Glaug

• Decision Date: 15 March 2002
• Docket Number: No. 00-1571.,No. 08/455,374.,00-1571.,08/455,374.
• Citation: 283 F.3d 1335
• Parties: In re Frank S. GLAUG, and Margaret A. Kato.
• Court: U.S. Court of Appeals — Federal Circuit

283 F.3d 1335

In re Frank S. GLAUG, and Margaret A. Kato.

No. 00-1571.

No. 08/455,374.

United States Court of Appeals, Federal Circuit.

DECIDED: March 15, 2002.

Meredith Martin Addy, Brinks, Hofer Gilson & Lione, of Chicago, IL, argued for appellants. With her on the brief were Robert N. Carpenter and Henry L. Brinks.

Linda Moncys Isacson, Associate Solicitor, Office of the Solicitor, Patent and Trademark Office, of Arlington, VA, argued for appellee. With her on the brief was John M. Whealan, Solicitor, and Mary Critharis, Associate Solicitor.

Before MAYER, Chief Judge, NEWMAN and MICHEL, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

Frank S. Glaug and Margaret A. Kato (herein "Glaug") appeal the decision of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office, rejecting all of the claims of patent application Serial No. 08/455,374 entitled "Process for Making a Training Pant Having a Unitary Waist Elastic System." The Board's decision is reversed.

The Glaug invention is a method of making disposable training pants. The pants are described as providing a more comfortable fit over a wider weight and size range as well as a longer useful life, as compared with known training pants, because the elasticity at the waist is preserved over a longer period of repeated cycles of elastic extension and contraction, such as when the child lowers and raises the pants. These benefits result from the manner in which the elastic is adhered at the waist, achieved by placing the adhesive that holds the elastic in spaced zones so that there are zones wherein the fabric is unadhered between the adhesive zones, and folding the edge of the fabric over the elastic. Claim 1, the broadest claim, is representative. Emphases have been added to the features asserted by Glaug to provide distinction from prior art processes:

1. A process having a machine direction and a cross direction for making disposable absorbent articles, comprising the steps of:

[a] continuously moving a base layer generally in a machine direction, the base layer comprising opposite edge portions generally extending in the machine direction,

[b] providing a plurality of absorbent structures having respective length dimensions greater than respective width dimensions,

[c] positioning the absorbent structure at spaced apart locations between the opposite edge portions of the base layer, such that the length dimensions of the absorbent structure are generally transverse to the machine direction,

[d] applying an adhesive, generally in the machine direction, at selected spaced apart zones of each edge portion, the zones of each edge portion being spaced apart in the machine direction,

[e] continuously delivering an elastic member generally in the machine direction onto each edge portion,

[f] folding each edge portion, generally in a cross direction, over the respective elastic member,

[g] joining together each folded edge portion and the elastic member,

[h] folding the continuously moving base layer along a fold line generally parallel to the machine direction, and

[i] forming a plurality of disposable absorbent articles having a respective plurality of closed-loop waist-elastic systems in which each waist elastic system has an average maximum magnitude of decay less than about 66.67 grams in an extension range of about 175 millimeters to about 300 millimeters over the first three cycles.

The placement of the adhesive is illustrated in the following diagram of the construction process:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Figure 4 shows a process for making one embodiment of the pant. As base layer 142 is continuously moved through the machine, absorbent structures 38 are attached and leg openings 116 are cut. To form the waist elastic system, adhesive is applied by means of patterned adhesive rolls 152 and 158. Glaug explains that different adhesive patterns are shown on rolls 152 and 158 to illustrate different possible patterns, but that generally the patterns are the same on both sides of the base layer. The adhesive 154 is thus applied in a pattern, which includes a plurality of distinct adhesive zones 156 and 162 which are spaced apart from one another. An elongate elastic member 140 is joined to the adhesive zones 156 and 162. The remaining adhesive, as at 154, serves to join the folded-over edge of the base layer 142 after it passes folding boards 164. The structure is then folded down its center cut at the leg openings, and sealed to form pants.

The PTO Proceedings

During patent examination the PTO bears the initial burden of presenting a prima facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.Cir.1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.Cir.1984). If the PTO fails to meet this burden, then the applicant is entitled to the patent. However, when a prima facie case is made, the burden shifts to the applicant to come forward with evidence and/or argument supporting patentability. Patentability vel non is then determined on the entirety of the record, by a preponderance of evidence and weight of argument. Id. As discussed in In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976), the prima facie case is not a stone wall against which rebuttal evidence is tested; patentability is determined by a preponderance of all the evidence. We review the Board's decision on the record, in accordance with the appellate criteria of the Administrative Procedure Act, 5 U.S.C. § 706. See Dickinson v. Zurko, 527 U.S. 150, 119 S.Ct. 1816, 144 L.Ed.2d 143, 50 USPQ2d 1930 (1999).

The examiner rejected all of the claims on the ground of obviousness, based on United States Patent No. 5,147,487 (Nomura) in view of United States Patent No. 3,225,765 (Magid). Both references relate to disposable baby pants. The Nomura reference shows a method having the steps of Glaug's claim 1 except for those shown supra in bold face. Magid shows a fold or hem of fabric over the elastic at the waist and legs of baby pants. The Board found that Nomura suggested "intermittent" spacing of the adhesive for the elastic waist, that the numerical magnitude of elastic decay as stated in claim 1 is inherent in the Glaug structure and thus not of patentable significance, and that it would have been obvious to place the Magid hem over the Nomura elastic. The Board held that a prima facie case of obviousness was made, and that Glaug's evidence of superior results was inadequate to rebut that conclusion.

Claim Clause [d] — The Spaced Apart Adhesive Zones

Claim clause [d] states that the adhesive is applied "generally in the machine direction" in "zones" that are "spaced apart." The specification explains that the adhesive may be placed only on the seams with the elastic secured when the halves of the folded-over pant are joined together, or may be spaced more closely along the elastic with as little as half-inch gaps between zones of adhesive. Nomura describes and illustrates, in the preferred embodiments, applying the adhesive to the pant edges in a continuous film. Nomura also states that "the adhesive zones may be applied with adhesive continuously extending overall on these zones, or in a plurality of dots, intermittent lines, or helical lines."

The Board held that this was a prima facie teaching of Glaug's "spaced apart" adhesive zones, in that Glaug's placement of adhesive in zones is taught by or would have been obvious from the Nomura reference. The Board pointed out that both Nomura and Glaug use the word "intermittent" in describing the adhesive.

Glaug argues that Nomura's illustrations do not show intermittent zones of adhesive, and that the only usage of "intermittent" by Nomura is in one broad catch-all sentence at the end of the description. Glaug argues that Nomura clearly did not contemplate spaced zone-type gaps in the adhesive placement in the machine direction. Glaug points to the following illustration from Nomura, and argues that Nomura does not show adhesive placed in zones that are separated by adhesive-free zones:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

In Nomura, the pants are formed by spreading adhesive upon a continuous web 26, formed of fibrous non-woven fabric, introducing elastic members (not shown) and bonding the arrangement to another continuous web, sandwiching absorbent material within. The diagram reproduced shows the placement of adhesive at 30b around the leg openings, at 32 along the waist, and at 31 extending from opposite sides of adhesive 30b to the adjacent lateral edges of the web 26.

Glaug also points out that Nomura adheres the elastic in an entirely different way from the Glaug process: Nomura stretches the elastic, and applies the adhesive to the fabric in a broad band in order to hold the elastic in the stretched position during the manufacturing process. Glaug points out that the Nomura adhesive must be placed so that it provides a large surface area and continuous attachment between the elastic and the fabric. In contrast, the Glaug specification is explicit that the adhesive is applied so as to reduce the area of attachment between the elastic and the fabric, so that zones of fabric are not adhered to the elastic and can bunch or stretch between the points of adhesion.

Glaug is correct that the Nomura usage of "intermittent" does not suggest the presence of zones entirely free of adhesive and disposed generally in the machine direction. Nomura's specification makes clear that his process requires broad contact between the elastic and the adhesive, with illustrations of continuous zones of adhesive that fix the fabric to the stretch elastic. In contrast, Glaug's specification uses "intermittent" to designate only distinct zones of adhesive spaced apart by zones free of adhesive. Typical descriptions from...