COMMISSIONER'S DECISION
OBVIOUSNESS: Baby Panty
Use of a transverse pleat to permit longitudinal expansion (pivotal
waist movement) is not shown in the prior art.
Final Action: Reversed
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This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated October 8, 1975, on applica-
tion 118,925 (Class 2-97). The application was filed on July 23, 1971,
and is entitled "Baby Panty." The Patent Appeal Board conducted a Hearing
on May 4, 1977, at which Mr. G.W. Hodson represented the applicant.
This application relates to a baby panty suitable as a disposable absorbent
pad or for use over a cloth diaper. A transverse pleat provides an expand-
ible construction to suit the body of the wearer. Figures 4 and 5 are
illustrative of the application
(See formula 1)
In the Final Action the examiner refused the application in view of the
following references and common general knowledge.
United States
318,141 May 19, 1885 Samuel
3,322,122 May 30, 1967 Daniel
The Samuel patent is for a diaper of triangular configuration in which
an impervious lining of a wax coated paper is placed on the inner surface
of a linen diaper, This allows the liner material to absorb the body
wastes and permits the linen diaper to be used again without having to
wash it. The paper liner is folded "to provide a fillness therein when
secured on the body, and thus prevent the paper from being torn apart."
Figures 1, 2 and 4 show the Samuel diaper.
(See formula 1)
Daniel relates to a diaper which is adjustable to accommodate various sized
babies. This adjustment is accomplished by a pleat or fold which extends
along the inner surface of the diaper from a point adjacent the front center
of the diaper to a point adjacent the rear centre of the diaper. Figures
4 and 5 are illustrative of Daniel:
(See formula 2)
In the Final Action the examiner stated (in part):
It is maintained that the pleated diaper of Daniel teaches all
of the critical subject matter disclosed in this application,
i.e. the provision of folds or tucks in a portion of an infants
diaper to provide an expandable area in the inner parts, and to
secure the tucks at the outer part to provide a pocket effect
and prevent unfolding of the outer edge.
While Daniel secures his tucks by stitching as opposed to heat
sealing as taught by applicant, this difference does not amount
to invention since heat bonding is so well known and widely
used to secure thermoplastic materials.
Samuels established the equivalency of providing, tucks or folds
in a diaper lining to provide for expansion and thus prevent
tearing in either the longitudinal or lateral sense, by providing
tucks in both directions, thus it is old to provide for either
lateral or longitudinal tucks in a diaper. Daniel chose tucks
oriented in the longitudinal sense and secured the ends of the tucks.
There is no invention in merely re-orienting the tucks of Daniel
to extend laterally as has been done in this application especially
since Samuel has already done this.
Reducing the width in the mid portion of the diaper by providing
arcuate side edges is also shown by Daniel and does not contribute
patentably to an old and obvious construction.
In his response the applicant stated (in part):
The applicant's invention relates to a "baby pant" and not a "diaper".
The applicant has clearly set forth the prior art as it relates to
"baby pants" in page 1 of the present application. As indicated in
the discussion of the conventional "rubber pant", the difficulty with
pant construction has been the provision of a degree of elasticity
around the baby's leg sufficient to prevent leakage without cutting
into or binding the skin. This has been a long-standing problem with
the conventional "rubber pant". It is not in itself a problem with
the conventional diaper. The applicant has successfully overcome
this difficulty in a pant construction by employing a structure in
which the side edges of the sheet have at least one tuck in the central
portion thereof, the tucks being substantially aligned with each
other and being retained so as to provide an expandable area extending
transversely of the sheet. The retention of the tucks ensures that
the pant will conform closely to the leg of the infant while the
required fullness is available between the retention points to permit
the baby to move freely.
With the applicant's construction, the pants may be arranged to fit
snugly about the waist while permitting the baby to move freely about
the waist. The fullness of the seat portion of the pant permits the
baby to lean forward when in a sitting position without the tendency
to pull the body outwardly from the waist band as is the case in a
conventional pant construction. Thus, the pants of the present
invention provide a solution to the problem of keeping an infant's
pants and diaper in place. This is a very real problem which is
familiar to all parents. The applicant's claimed invention provides
a solution to this long-standing problem which, despite its apparent
simplicity, has escaped those who have been striving for an answer for
a great many years.
...
In rejecting the claims the examiner has argued that "Daniel teaches
all of the critical subject matter disclosed in this application".
This rejection is respectfully traversed on the grounds that
Daniel does not disclose or suggest a baby pant construction which
has a transverse tuck and is, therefore, longitudinally extensible
while the ends of the tuck are secured to prevent the extension
occurring in the areas where the pant extends around the leg of
the baby, in use. Daniel does not teach a body portion which is
longitudinally extensible to prevent the pant from falling off as
a result of the body movements of the baby, in use, nor does Daniel
address the problem of a close fitting around the leg opening.
Consequently, Daniel cannot be said to teach "all the critical subject
matter disclosed in this application.
The examiner has argued that Samuel establishes the equivalency of
providing, tucks or folds in a diaper liner to provide for expansion
and thus prevent tearing. In this respect, as previously indicated,
Samuel does not seal the ends of the tucks. In fact, in order to
prevent tearing it would be much more desirable to leave the tucks un-
sealed at the ends so that they may fold out over their entire length
and this is, in fact, the structure which Samuel discloses. Without
the tucks claimed in the present invention, the applicant's pant
would not have the ability to form a tight seal about the leg of the
infant and could not function properly as a baby pant.
The question to be considered is whether the applicant has made a patentable
advance in the art. Claim 1 reads as follows:
A panty comprising a sheet of drapable, water-impervious material
having top, bottom and side edges, each of said side edges having
at least one tuck in the central portion of said sheet, said tucks
being in substantial alignment with each other and being retained so
as to provide an expandable area extending transversely of said
sheet.
The use of folds or tucks in a portion of the infant's diaper to provide an
expandable area is known in accordance with the teaching of the Daniel reference.
This reference uses the longitudinally extending pleat which is adapted to
expand in response to movement of the baby and the diaper conforms to the body
and does not rub its leg as it crawls. The patent also provides a diaper wherein
the bulk materials are positioned in proper location to facilitate body wastes
without interfering with the comfort of the baby.
At the Hearing Mr. Hodson emphasized that the applicant's transverse tuck
arrangement facilitates the longitudinal extension of the pant which will
prevent the tendency for the pant or diaper to fall off an active infant
because of the fact that the infant is repeatedly bending about the waist.
He also stressed that the transverse tuck will allow the pant to conform
closely to the infant's leg while the required fullness in the crotch area
permits the baby to move freely.
Samuels does show the use of both lateral and transverse tucks in a diaper
lining pad, but for a totally different purpose. This will be discussed
later. In the Final Action the examiner states that "Samuels established
the equivalency of providing tucks or folds in a diaper lining to provide
for expansion and thus prevent tearing in either the longitudinal or lateral
sense by providing tucks in both directions." We note that Samuels states
on page 1627 at lines 45 ff. "The paper lining is preferably folded as at
d, Figures 2 and 4, to provide a fulness therein when secured on the body,
and thus prevent the paper from being torn" (see Figures 2 and 4 supra).
Consequently, we agree with the examiner that Samuels does provide tucks in a
garment liner to prevent tearing of the paper, but we do not find any indication
of a lateral tuck in a body garment to provide for longitudinal expansion.
Another issue raised was that re-orienting the tucks of Daniel to extend
laterally is not inventive since Samuels teaches tucks both laterally and
longitudinally in a panty liner. The applicant maintains that the use of a
transverse tuck to allow for a snug fit, as well as permitting pivotal waist
movement without the loss of the garment, is not suggested in the cited prior
art. Samuels in 1885 used a folded paper diaper liner to provide a greater
thickness of absorbent material. Daniel uses a longitudinal fold which permits
lateral expansion giving a better fit and leg openings "which permit the
legs to project forwardly in a natural manner." We agree with the applicant
that there is no suggestion in the prior art to use a lateral tuck in a body
garment for longitudinal expansion. There is no means for securing the Samuel
tuck but it is merely a fold over arrangement in a liner for a body garment,
whereas the Daniel longitudinal tuck only permits the garment to expand
in the lateral direction.
At the Hearing the applicant maintained that his use of a lateral tuck in
a baby pant is a new concept. It is well established that the inventive step -
the merit, may be in the idea or concept. That is to say that the merit
of an invention may be in the recognition of the existence of a problem, or in
realizing some particular useful end to be obtained. It is also well
established that the recognition of the concept may well merit patent pro-
tection even though the means of realizing the concept are straightforward
given the concept.
A leading case on the matter of the "recognition of the idea or concept" is
Hickton's Patent Syndicate v. Patents and Machine Improvements Company Ltd.
(1909) 26 R.P.C. 339. At page 347, Fletcher Moulton L.J. set forth the
applicable law as follows:
The learned Judge says: 'An idea may be new and original and
very meritorious, but unless there is some invention necessary
for putting the idea into practice it is not patentable.' With
the greatest respect for the learned Judge, that, in my opinion, is
quite contrary to the principles of patent law, and would derive
of their reward a very large number of meritorious inventions that
have been made. I may say that this dictum is to the best of my
knowledge supported by no case, and no case has been quoted to
us which would justify it.... To say that the conception may
be meritorious and may involve invention and may be new and
original, and simply because when you have once got the idea it
is easy to carry it out, that that deprives it of the title of
being a new invention according to our patent law, is, I think,
an extremely dangerous principle and justified neither by
reason, nor authority.
...
In my opinion, invention may lie in the idea, and it may lie in
the way in which it is carried out, and it may lie in the combination
of the two.
Lindley, L.J. stated in the case of Fawcett v. Homan (1896) 13 R.P.C. 398
at 405:
The merit of an invention very often consists in clearly reali-
sing some particular useful end to be attained, or, to use
Dr. Hopkinson's language, 'in apprehending a desideratum'.
If an inventor does this, and also shows how to attain the
desired effect by some new contrivance, his invention is patent-
able....
These doctrines have been acknowledged to form part of the Canadian juris-
prudence. For example, consider the following language of Rinfret J. in
Electrolier Manufacturing Co. Ltd. v. Dominion Manufacturers Ltd. (1934)
S.C.R. 436 at 442:
The merit of Pahlow's patent is not so much in the means
of carrying out the idea as in conceiving the idea itself
(Fawcett v. Homan) , supra....
In summary, in view of the evidence before us, we agree with the applicant
that the cited art does not disclose the concept of a lateral tuck in a body
garment to permit longitudinal movement. We are therefore constrained to
conclude that there is "ingenuity in the invention" when we consider the
problem or the recognition of the problem and its consequent solution.
Considering the scope of monopoly covered by the claim we find that claim 1
specifies "at least one tuck .... to provide an expandable area extending
transversely of said sheet." In our view this is a distinctive feature,
serving to distinguish the applicants invention from the prior art.
We are satisfied that the applicant has made a patentable advance in the
art. We therefore recommend that the decision to refuse the application and
claims be withdrawn.
J.F. Hughes
Acting Chairman
Patent Appeal Board, Canada
I have studied the prosecution of this application and considered the
recommendation of the Patent Appeal Board. I have therefore decided to
withdraw the Final Action and return the application to the examiner for
resumption of prosecution.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 16th.day of June, 1977
Agent for Applicant
Fetherstonhaugh & Co.
500 University Avenue
Toronto, Ont.
M5G 1V7