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PTO “Stretched” Obviousness Rejection for Elastic-Waist Training Pants Invention

March 15, 2002

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Last Month at the Federal Circuit - April 2002


Mayer, Newman, Michel

In In re Glaug, No. 00-1571 (Fed. Cir. Mar. 15, 2002), the Federal Circuit vacated the Board’s obviousness rejection of claims for a method of making disposable training pants having elastic waistbands, concluding that the Board had not met its burden of showing a prima facie case of obviousness.

Frank S. Glaug and Margaret A. Kato (collectively “Glaug”) are the owners of the invention, which produces training pants having a more comfortable fit with a waistband maintaining its elasticity over a longer period of time. The invention achieves this, in part, by the way adhesive is placed on the fabric to form the elastic waistband. Specifically, in creating the waistband, Glaug’s method describes applying adhesive intermittently, i.e., in patterns spaced apart from one another to create areas where the elastic and fabric are not adhered to one another at all.

The Board deemed Glaug’s invention unpatentable because a prior patent (“Nomura”) rendered it obvious in light of a second patent. The Board found Glaug’s evidence of superior results, illustrated by numerical measurements, inadequate to rebut their finding. Also, the Board found that Glaug’s technical explanation of the invention further served as evidence of obviousness because the advantages Glaug describes in the application would be inherent in any system that intermittently spaced adhesive.

On appeal, the Federal Circuit reversed the Board’s decision, holding that the Board had not satisfied its burden to establish a prima facie case of obviousness in rejecting Glaug’s application. The Court held that although Nomura uses the word "intermittent” in a catchall statement at the end of its description, Nomura’s use differs from Glaug’s in that Nomura did not contemplate adhesive placement zones that are entirely separate from one another. By the Court’s reading of the Nomura reference, the specification states that its process requires broad areas of adhesive contact between the elastic and the fabric, and the figures depict continuous zones of adhesive. The Court stated that the word “intermittent” may have different interpretations, but in situations where words are susceptible to various meanings, the inventor’s lexicography must prevail. Therefore, because Nomura’s meaning does not suggest or contemplate adhesive-free zones, and Glaug’s meaning does, the Nomura reference does not render Glaug’s invention obvious.

As to Glaug’s numerical measurements, Glaug introduced this evidence to illustrate the advantages of the invention over the prior art. The Court stated that although measurements of a physical property usually do not make patentable otherwise unpatentable claims, a measured property is relevant to patentability when it calls out distinctions or advantages over the prior art.

The Federal Circuit also rejected the Board’s argument that Glaug’s explanation of the invention supported its obviousness finding. The Court reasoned that an inventor’s explanation of an invention and its advantages does not render it obvious when it otherwise is not. To that end, the Federal Circuit held that the prior art did not teach or suggest the features of Glaug’s method, so Glaug’s explanation of his invention and its advantages actually served as evidence supporting a finding of nonobviousness.