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In re McNeil-PPC

April 19, 2000

IN RE MCNEIL-PPC, INC.


Before Mayer, Chief Judge, Michel and Gajarsa, Circuit Judges.

The opinion of the court was delivered by: Per Curiam

McNeil-PPC, Inc. ("McNeil") seeks review of the decision of the Patent and Trademark Office Board of Patent Appeals and Interferences, No. 90/003,637, affirming the final rejection of Claims 1-9, 18, 20, 30, 31, and 34-36 of United States Patent Number 4,900,320 ("'320 patent"), directed to a "Sanitary Napkin with Panty Gathering Flaps," in consolidated reexamination proceedings. See Ex parte McNeil-PPC, Inc., Appeal No. 98-1550 (Bd. Pat. App. & Int. Nov. 4, 1998). Because the board erred in construing the claims of the '320 patent and because, properly construed, the inventions of the subject claims are neither anticipated by nor obvious in light of the prior art cited by the board, we reverse.

We review the board's legal conclusions de novo. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976, 34 USPQ2d 1321, 1326 (Fed. Cir. 1995) (en banc), aff'd 116 S. Ct. 1384, 38 USPQ2d 1461 (1996). We uphold the board's factual findings unless they are arbitrary, capricious, an abuse of discretion, or unsupported by substantial evidence. See Dickinson v. Zurko, 527 U.S. 150, 119 S. Ct. 1816 (1999) (holding that scope of review of PTO's findings is subject to the Administrative Procedure Act ("APA"), 5 U.S.C. § 706). "Because our review of the Board's decision is confined to the factual record compiled by the Board . . . the `substantial evidence' standard is appropriate for our review of Board factfindings." In re Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed. Cir. 2000).

Claim interpretation is a question of law which is reviewed de novo. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454, 46 USPQ2d 1169, 1172 (Fed. Cir. 1998) (en banc). On reexamination, the broadest reasonable interpretation consistent with the specification should be applied to determine if the claims of the patent read on the prior art. See In re Hiniker Co., 150 F.3d 1362, 1368, 47 USPQ2d 1523, 1528 (Fed. Cir. 1998). The '320 patent discloses a sanitary napkin which protects the wearer's undergarments from wetting by attaching two flaps to the garment-facing side of the napkin so that they may encircle and gather the undergarment and use the garment-facing side of the napkin to shield the wearer's clothing from bodily fluid. See '320 patent, col. 2, ll. 41-60. The board construed the "improved sanitary napkin" of Claim 1 to comprise, "inter alia, a central absorbent element and two flaps." Ex parte McNeil, slip. op. at 8. Based on a conclusion that Claim 1 did not require the "longitudinally extending edges" of the sanitary napkin to be the longitudinally extending edges of the central absorbent element, the board found that the claimed "longitudinally extending edges" read on the outermost longitudinally extending edges of the flaps in United States Patent Number 4,589,876 to Van Tilburg ("Van Tilburg patent"). Id. at 8-9.

This construction is unreasonable because the claim language itself describes the napkin as "comprising a central absorbent element and having generally longitudinally extending edges, a body facing side and a garment facing side" and speaks of "provid[ing] said napkin with two flaps." '320 patent, col. 8, ll. 26-30 (emphasis added). This makes clear that the flaps are not to be considered part of the napkin as defined and that the "longitudinally extending edges" are those of the napkin and not those of the flaps. The board's construction improperly reads out the limitations, explicit in Claim 1, that the flaps be "affixed to the garment facing side of the napkin at an affixation point which is inward from the longitudinal edge of the napkin," whereby "the edges of the undergarment are gathered . . . and are shielded from body fluids by the garment facing side of the napkin." '320 patent, col. 8, ll. 26-45 (emphasis added). This causes the claims to read on any napkin that has flaps, including those attached at the longitudinal edge of the napkin, which the '320 patent specifically teaches away from. See '320 patent, col. 2, ll. 3-26. Properly construed, the term napkin does not include the flaps and the subject claims read only on those napkins with flaps attached to the garment facing side inward of the longitudinal edge of the napkin, so that the garment facing side protects the undergarments from body fluid when the flaps are affixed encircling the undergarments.

Anticipation is a question of fact. See In re Paulsen, 30 F.3d 1475, 1478, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994). We therefore review the board's findings of anticipation under the substantial evidence standard. See In re Gartside, 203 F.3d at 1315, 53 USPQ2d at 1775. The board determined that the inventions of claims 1-7, 9, 18, 20, 30, 31, and 34-36 of the '320 patent are anticipated under 35 U.S.C. § 102(e) by the Van Tilburg patent and that those of claims 1-4, 8, and 9 of the '320 patent are anticipated under 35 U.S.C. § 102(b) by United States Patent Number 3,397,697 to Rickard ("Rickard patent"). These determinations were based on an erroneous claim construction and are not supported by substantial evidence. The Van Tilburg patent appears to show in Figure 10 that the flaps are attached to the garment facing side but expressly discloses that the flaps extend from the longitudinal edge of the central absorbent pad. As shown in Figures 9 and 11, this structure would not satisfy the requirement of affixation inward of the longitudinal edge of the napkin and thus does not anticipate.

The Rickard patent discloses a sanitary napkin made in a unitary structure with flaps extending from the longitudinal edges of the central absorbent pad. Based on its erroneous claim construction, the board found this structure to anticipate the '320 patent even though the '320 patent specifically cited the Rickard patent in teaching away from the prior art. See '320 patent, col. 2, l. 3. The Rickard patent does not meet the requirement of affixation inward of the longitudinal edge of the napkin and thus does not anticipate.

Whether a reference or combination of references renders a claimed invention obvious under 35 U.S.C. § 103 is a question of law which we review de novo. See In re GPAC, Inc., 57 F.3d 1573, 1577, 35 USPQ2d 1116, 1119 (Fed. Cir. 1995). The board affirmed the examiner's rejection of Claims 18, 20, 30, 31, and 34-36 of the '320 patent as obvious over Rickard in view of United States Patent Number 4,608,047 to Mattingly ("Mattingly patent") and United States Patent Number 4,285,343 to McNair ("McNair patent"). This conclusion is incorrect because it depends on the same erroneous construction of the claims of the '320 patent. The Mattingly patent discloses a napkin with flaps extending from its lateral edges and specifically teaches away from gathering the edges of the undergarments. The McNair patent also discloses a napkin with flaps extending from its lateral edges and does not disclose using those flaps to encircle and gather the edges of the undergarments as required by the claims of the '320 patent. Properly construed, the claims of the '320 patent are not obvious over the Rickard patent in combination with the Mattingly and McNair patents.

20000419

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