Board reverses when reference incorporates by reference but does not clearly identify feature relied upon

Takeaway: The Board reversed an anticipation rejection when the Examiner relied on a reference, incorporation of one reference into another. The appealed claims recited an "absorbent article comprising a pair of wings ... [each] provided with at least one region of transparency." The Examiner acknowledged that Hammons did not itself teach a transparent region of a wing, but asserted that Hammons incorporated Ahr, and that Ahr disclosed the use of a transparent material for a topsheet. The Board found that Hammons had incorporated the function and dimensions of Ahr's apertured film, but not the transparency characteristic. (Ex parte Carlucci, PTAB 2012.)

Details:

Ex parte Carlucci
Appeal 2010006603; Appl. No. 10/239,599; Tech. Center 3700
Decided:  September 28, 2012

The claims on appeal were directed to a sanitary napkin. A representative claim on appeal read:

     4. An absorbing article comprising
     a liquid pervious topsheet,
     a liquid impervious backsheet, and
     an absorbent structure intermediate said liquid pervious topsheet and liquid impervious backsheet,
     wherein said article is a sanitary napkin or a pantiliner for use in the crotch region of an undergarment,
     said absorbing article comprising a pair of wings intended for folding around the crotch portion of an undergarment,
     said wings are comprised of integral extensions of said topsheet and said backsheet,
wherein each of said wings are provided with at least one region of transparency.
(Emphasis added.)

During prosecution, the Examiner rejected the independent claim as being anticipated by Hammons. The Examiner acknowledged that Hammons did not itself disclose the "region of transparency" element, but noted that did Hammons did state that "a suitable topsheet can be formed from the web of Ahr et al." According to the Examiner, Ahr disclosed webs that were "completely transparent." Since Hammons incorporated Ahr by reference, Hammons anticipated the claim. 

The Applicant argued that Hammons use of Ahr's web resulted only in one layer of the claimed wing being transparent, rather than a wing that has a "region of transparency." According to the Applicant, the claim language required that "one can see through at least one region of the wing."

In an Advisory Action, the Examiner explained that he was interpreting "region of transparency" to be the topsheet, which Hammon disclosed to be made of Ahr's transparent web. Although the independent claims were rejected as anticipated, the Advisory Action went on to mention obviousness, asserting that "there is a teaching of the entire topsheet, or any region thereof, to be transparent, and therefore the modification of such would have been obvious of one of ordinary skill in the art since the general conditions of the claim have already been disclosed in the prior art."

On appeal, the Applicant argued the Examiner's claim construction was unreasonably broad. "The Examiner has taken the position that simply because the topsheet alone of the wing of Hammons can be transparent, this means that the wing has at least one region of transparency." (Emphasis in original.) Referring to several passages in the specification, the Applicant argued that the "clear scope of the claim ... [means] that one can see through at least one region of the wing, which must be both a topsheet and a backsheet." (Emphasis in original.)

In the Answer, the Examiner further explained his interpretation of the claim language at issue. Through the incorporation of Ahr, Hammons disclosed a transparent topsheet. Hammons also disclosed that the wings comprise extensions of the topsheet, such that each one of the pair of wings was transparent. "The Applicant arguments appear to be directed toward a totally transparent wing so that one can see through a region of the wing, however this argument is not commensurate with the scope of the claims."

The Board reversed the rejection. But before reaching the question of anticipation, the Board first considered whether Hammons effectively incorporated Ahrs by reference. The law required Hammons to “identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.’” Callaway Golf Co. v. Acushnet Co. , 576 F.3d 1331, 1346 (Fed. Cir. 2009).

The Board found that the "specific material" which Hammons attempted to incorporate was "the transparency of Ahr '045’s apertured film," but Hammons failed to clearly indicate where Ahr's transparency characteristic was found.

The Board first examined the actual incorporation language in Hammons, a blanket statement with no specificity: “[t]he disclosures of all patents . . . mentioned throughout this patent application are hereby incorporated by reference herein.”

The Board then examined two other, more specific, mentions of the teachings of Ahr:

      A preferred topsheet 38 comprises an apertured formed film. Apertured formed films are preferred for the topsheet because they are pervious to body exudates and yet non-absorbent and have a reduced tendency to allow liquids to pass back through and rewet the wearer's skin. Thus, the surface of the formed film which is in contact with the body remains dry, thereby reducing body soiling and creating a more comfortable feel for the wearer. Suitable formed films are described in . . . U.S. Pat. No. 4,463,045 issued to Ahr et al. on Jul. 31, 1984.     Preferably, the topsheet 38 has a plurality of apertures to permit liquids deposited thereon to pass through to the core 42. An apertured polyolefinic film topsheet 38 having about 5 to about 60 percent open area, typically about 25 percent open area, and a thickness of about 0.01 to about 0.05 millimeters prior to aperturing and about 0.42 to about 0.51 millimeters after aperturing is suitable. A particularly suitable topsheet 38 may be made in accordance with . . . U.S. Pat. No. 4,463,045 issued Jul. 31, 1984 to Ahr, et al.

The Board then concluded that Hammons did not effectively incorporate the relied-upon features of Ahr, which meant that the Examiner's anticipation findings were in error:

As such, Hammons’s disclosure is directed to the function and dimensions of Ahr '045’s apertured film. Accordingly, we do not find that Hammons incorporates by reference the transparent characteristic of Ahr '045’s apertured film. Hence, the Examiner’s finding that “Hammons discloses a transparent topsheet through incorporation of the Ahr ['045] reference” (Ans. 6) is incorrect.

The Board went on to find that under a proper claim construction, Hammons-using-Ahr did not anticipate. "[We] agree with the Appellants that a portion of both the topsheet and the backsheet is required to be transparent to find that a wing includes 'at least one region of transparency.' ” Yet the Examiner relied solely on Hammon's use of Ahr's transparent web in the topsheet. Even ignoring the improper incorporation by reference, the Board found that Hammons-using-Ahr did not disclose a transparent backsheet.

The rejection was therefore reversed.

My two cents: The Applicant didn't raise the issue of improper incorporation by reference, and the Board's reversal didn't rely on it. But I'm glad the Board discussed the issue, since it illustrates a possible weakness to look for when an Examiner relies on incorporation-by-reference in a reference.

Both the Applicant and the Examiner realized that claim construction of "region" was dispositive. The Applicant made explicit arguments about claim construction, and in the Answer, the Examiner explained his claim construction. In my view, the Board clearly found the Examiner's claim construction to be unreasonable, and used that as one of the grounds of reversal. Yet this was not crystal clear from the opinion. Many, if not most of the opinions written by the Board today, contain a lot of language about claim construction. Here, a less-than-careful reader might not realize that this decision was really about whether the broadest reasonable interpretation of "region" was "sheet".