7 U.S.P.Q.2d 1818
`1988 WL 252372 (Bd.Pat.App. & Interf.), 7 U.S.P.Q.2d 1818
`(Cite as:7 U.S.P.Q.2d 1818)
`
`Page 1
`
`Ex parte Dussaud
`
`Patent and Trademark Office Board of Patent Appeals
`and Interferences
`No. 666-06
`
`Released June 9, 1988
`
`United States Patents Quarterly Headnotes
`
`PATENTS
`[1] Practice and procedure in U.S. Patent and Trade-
`mark Office -- Declaration/Affidavits (§ 110.0913)
`Examiner improperly held that declaration, which stated
`why artisan would not
`look to carpet manufacturing
`process and equipment field to solve problem in applic-
`ation of elastic to web in curvilinear pattern, was not
`persuasive on issue of whether particular reference con-
`stituted analogous prior art, since holding is improperly
`grounded on fact that declarant, though skilled in art of
`diaper manufacturing, is not expert on carpet making,
`and since examiner thus did not accord fair evidentiary
`weight to declarant's skepticism.
`
`PATENTS
`[2] Patentability/Validity -- Obviousness -- Relevant
`prior art (§ 115.0903)
`Examiner's characterization of problem addressed by
`applicants' claimed method of attaching elastic to dis-
`posable diapers as “the laminating of continuous run-
`ning sheets utilizing a hot melt adhesive” was broader
`than particular problem actually addressed by applic-
`ants, and resulted in consideration of prior art that is not
`truly analogous.
`
`PATENTS
`[3] Patentability/Validity -- Obviousness -- Combining
`references (§ 115.0905)
`Examiner erred in holding that applicants' invention was
`obvious in view of two prior art references in combina-
`tion, since there is no express or implied suggestion in
`teachings of two references which would have motiv-
`ated person of ordinary skill in art to combine them in
`manner proposed by examiner.
`
`Appeal from decision of Jerome Massey, primary exam-
`iner.
`
`Patent application of Jacques Dussaud and Raphael De
`Jonckheere, serial no. 605,970, filed May 1, 1984. From
`decision refusing allowance of claims 10 through 18
`and 21, applicants appeal. Reversed.
`
`I. William Millen and Millen & White, Arlington, Va.,
`for applicants.
`
`Before Milestone, Winters, and Skinner, examiners-
`in-chief.
`Winters, examiner-in-chief.
`
`Appeal from the examiner's decision refusing to allow
`claims 10 through 18 and 21, which are all the claims
`remaining in this application.
`
`Claim 10 is representative:
`10. A method of continuously attaching an elongated
`narrow elastic element to a moving flexible sheet mater-
`ial to be employed as an outer moisture impermeable
`envelope for receiving an absorbent pad of a disposable
`diaper, said elastic element fitting in a stretched condi-
`tion substantially along a curvilinear-shaped-cut-out of
`said envelope to allow a leg therethrough when said en-
`velope is constructed as a diaper, said method compris-
`ing the steps of:
`(a) passing an elongated narrow elastic element, along a
`longitudinal path of travel, in a stretched condition;
`(b) intermittently depositing liquid adhesive material at
`high temperature on said elastic element during said
`passing step (a);
`(c) passing said elastic element, with adhesive material
`thereon, over a fixed guide means;
`(d) passing said elastic element with adhesive material
`over a carriage means, arranged down-stream of the
`fixed guide means in the direction of travel, and capable
`of being moved intermittently in a transverse direction;
`(e) feeding said flexible sheet around the peripheral sur-
`face of a rotary drum such that the sheet remains in con-
`tact with said drum for about one-half the rotation of
`said drum, said drum having a smooth outer surface
`
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`

`

`7 U.S.P.Q.2d 1818
`1988 WL 252372 (Bd.Pat.App. & Interf.), 7 U.S.P.Q.2d 1818
`(Cite as:7 U.S.P.Q.2d 1818)
`
`Page 2
`
`which is maintained at a substantially constant temper-
`ature, said temperature being less than the temperature
`of said liquid adhesive, the difference between the tem-
`perature of the adhesive at the time of contact with said
`flexible sheet and the temperature of said peripheral
`surface of the drum being at least 20 degreesC; and
`(f) positioning said movable carriage immediately next
`to the periphery of said *1819 rotary drum at a location
`such that said carriage means and said drum are not in
`contact with each other and such that
`the adhesive
`coated elastic element contacts said flexible sheet sup-
`ported by said drum, and said sheet together with said
`elastic element remain in contact with said drum for at
`least a portion of the rotation of said rotary drum before
`leaving it, moving said carriage means intermittently in
`a direction transverse to the direction of rotation of said
`drum whereby said elastic element is laid-down on said
`
`Penman
`Bourgeois
`Buell
`Klasek et al. (Klasek)
`Teed
`
`3,150,023
`3,828,367
`4,081,301
`4,293,367
`4,405,397
`
`Claims 10 through 16 and 21 stand rejected under 35
`USC 103 as unpatentable over Klasek in view of the
`combined teachings of Buell, Penman, and Teed.
`Claims 17 and 18 stand rejected under the same stat-
`utory provision as unpatentable over the same combina-
`tion of references, further taken in view of Bourgeois.
`
`OPINION
`
`We shall not sustain these rejections.
`
`Initially, we consider the question whether the Penman
`reference is from a nonanalogous art. First, we find it
`clear that this reference is not within the field of appel-
`lants' endeavor. On the contrary, Penman relates to the
`art of carpet manufacture whereas appellants' field of
`endeavor is the art of manufacturing disposable diapers.
`Indeed, each of the patents issued to Klasek, Buell,
`Teed, and Bourgeois relates to the art of making di-
`apers, as does appellants' specification disclosure. Pen-
`
`drum in an oscillating path, and whereby said elastic
`element is intermittently attached in a stretched condi-
`tion along a curved-shaped line only by laying said
`elastic element on said flexible sheet due to the temper-
`ature difference between the drum and the adhesive ma-
`terial;
`and with the provision that steps (e) and (f) are conduc-
`ted on a single drum and said temperature difference is
`sufficient to lead to an immediate adhesion effect cap-
`able of withstanding the transverse forces to which said
`elastic element is subjected owing to the movement of
`said carriage means.
`
`The prior art references relied on by the examiner are:
`
`Sep. 22, 1964
`Aug. 13, 1974
`Mar. 28, 1978
`Oct. 06, 1981
`Sep. 20, 1983
`man, which stands apart, relates to the art of making
`carpets.
`
`[1] Second, it is our judgment that Penman is not reas-
`onably pertinent to the particular problem with which
`appellants were involved,
`i.e.,
`the application of an
`elastic strip to a web in a curvilinear pattern. In determ-
`ining this latter point, we have evaluated and weighed
`the Courtray declaration filed under Rule 132 wherein
`declarant sets forth reasons why the artisan “would not
`look to the carpet manufacturing process and equipment
`field to solve a problem in the application of elastic to a
`web in a curvilinear pattern”. See Paper No. 15, page 1.
`We note that the examiner entered and considered the
`declaration (see Paper Nos. 18 and 22) but found same
`“not persuasive” because, according to the examiner,
`declarant merely offers his opinion on the art of carpet
`making. The examiner discounted that opinion because
`declarant is not established as an expert in that art. We
`disagree with the examiner's analysis. The examiner
`does not deny that declarant is skilled in the art of man-
`
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`

`

`7 U.S.P.Q.2d 1818
`1988 WL 252372 (Bd.Pat.App. & Interf.), 7 U.S.P.Q.2d 1818
`(Cite as:7 U.S.P.Q.2d 1818)
`
`Page 3
`
`ufacturing diapers, although declarant does not claim to
`have the same level of skill in the art of making carpets.
`In this regard, we note that persons having ordinary
`skill “could not possibly be aware of every teaching in
`every art”.See In re Wood, 559 F.2d 1032, 202 USPQ
`171, 174 (CCPA 1979). Certainly, declarant expresses
`skepticism whether a person having ordinary skill in the
`art of manufacturing disposable diapers would consider
`the carpet manufacturing process and equipment filed as
`reasonably pertinent
`to the particular problem with
`which the appellants were involved. As stated in In re
`Dow Chemical Company, 837 F.2d 469, 5 USPQ2d
`1529 (Fed. Cir. 1988), skepticism expressed by an ex-
`pert in the art is entitled to fair evidentiary weight.
`
`[2] We also find that the examiner's characterization of
`the problem in Paper No. 22, i.e., “the laminating of
`continuous running sheets utilizing a hot melt adhes-
`ive”, is broader than the particular problem with which
`appellants were involved. Precise definition of the prob-
`lem is important in determining whether a reference is
`from a nonanalogous art. Defining the problem too nar-
`rowly may result in excluding consideration of relevant
`prior art. By the same token, defining the problem too
`broadly, as done here, may result in considering prior
`art as “analogous” which is inconsistent with real world
`considerations. See Panduit Corp. v. Dennison Mfg. Co
`., 774 F.2d 1082, 227 USPQ 337 (Fed. Cir. 1985), va-
`cated, 475 U.S. 809, 229 USPQ 478 (1986), aff'd on
`*1820 remand, 810 F.2d 1561, 1 USPQ2d 1593 (Fed.
`Cir. 1987).
`
`Having applied the two-fold test for determining wheth-
`er a reference is from a nonanalogous art, see In re
`Wood, supra, we hold that on the facts of this case the
`Penman reference constitutes nonanalogous art. It
`is
`therefore not available as a reference in evaluating the
`obviousness of appellants' claimed invention under 35
`USC 103.
`
`[3] Turning to a consideration of the Teed patent of re-
`cord, we find that Teed discloses a method for manufac-
`turing disposable diapers wherein elastic strips are ap-
`plied in a straight line. This is illustrated in Figure 8,
`note rectilinear elastic strips (16) therein. Klasek, on the
`other hand, discloses a method for manufacturing dis-
`
`posable diapers wherein the elastic strips are applied in
`a curvilinear profile, and Klasek requires that the web
`and elastic be secured together by a pair of juxtaposed
`rolls acting in concert. See particularly Klasek, Figures
`4 and 9. Certainly, Klasek's method involving a pair of
`rolls could be modified per the disclosure of Teed
`which appears to illustrate the use of a single roller. In
`our
`view,
`however,
`such
`proposed modification
`amounts to a hindsight reconstruction of the prior art
`patents in order
`to arrive at appellants'
`invention.
`Without having the benefit of appellants' disclosure, the
`artisan would view Klasek's pair of rolls as serving an
`important function in facilitating the application of
`elastic strips in a curvilinear profile. As discussed supra
`, the elastic strips in Teed are applied in a straight line
`and we disagree that the artisan would have found it ob-
`vious to substitute a single roller from Teed for a pair of
`rollers in Klasek, whose objective is to apply elastic
`strips in a curvilinear profile.
`
`The mere fact that the prior art could be modified in the
`manner proposed by the examiner would not have made
`the modification obvious unless the prior art suggested
`the desirability of the modification. See In re Gordon,
`733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) and
`cases cited therein. We have carefully reviewed the
`Klasek and Teed references in their entireties, and we
`find no express or implied suggestion in the collective
`teachings of these references which would have motiv-
`ated the artisan to combine them in the manner pro-
`posed.
`
`In conclusion, we hold that the Penman reference con-
`stitutes nonanalogous art and is therefore not available
`as a reference in evaluating the obviousness of appel-
`lants' claimed invention under 35 USC 103. With re-
`spect to the Teed patent of record, we conclude that
`Teed is not properly combinable with the “primary” ref-
`erence to Klasek in the manner proposed by the exam-
`iner. Penman and Teed are essential to the examiner's
`case of obviousness. The examiner does not contend,
`nor do we find, that the combination of Klasek and
`Buell or the combined teachings of Klasek, Buell and
`Bourgeois are sufficient to establish the obviousness of
`appellants' claimed invention. Accordingly, the exam-
`
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`

`

`7 U.S.P.Q.2d 1818
`1988 WL 252372 (Bd.Pat.App. & Interf.), 7 U.S.P.Q.2d 1818
`(Cite as:7 U.S.P.Q.2d 1818)
`
`Page 4
`
`iner's decision refusing to allow claims 10 through 18
`and 21 is reversed.
`
`REVERSED.
`
`P.T.O. Bd.Pat.App. & Int.
`Ex Parte Dussaud
`1988 WL 252372, 7 U.S.P.Q.2d 1818
`
`END OF DOCUMENT
`
`COPR. (C) 2013 The Bureau of National Affairs, Inc.
`
`