PTAB fills-out diaper patent decision: written description and indefiniteness

by Dennis Crouch

Ex parte The Procter & Gamble Co., Appeal 2021-002928, APN. 16/388,898 (PTAB 2021) [2021002928_Mail_Decision]

The PTAB recently issued an odd opinion in this case focusing on the written description requirement.  The application is directed to a “package of absorbent articles.” I.e., a bag full of diapers.  These particular diapers are designed to include a higher percentage of “bio-based materials” and fewer petrochemicals. As such, the claims require that the bag contain “a plurality of absorbent articles … wherein the absorbent articles are devoid of lotion, fragrance or perfume, chlorine, and green number 7 dye.”

The patent examiner rejected the claims as obvious based upon several prior art references.  Those rejections were affirmed by the PTAB, but then the PTAB also added two new grounds of rejections: Indefiniteness and Failure of Written Description.   Basically, the PTAB was concerned with the claim limitation that the diapers are “devoid of … green number 7 dye.”

Appellant’s Specification is silent as to what, exactly, “green number 7 dye” is, or what “undesirable” materials or features it possesses that might warrant its absence from absorbent articles. . . . Further, there is no indication that “green number 7 dye” is a well-known dye, that it has a certain meaning in the industry, or that it falls within any of a number of classifications or descriptions by which dyes are often characterized.

In addition, the specification provided no criteria for determining why “green number 7 dye” is “undesirable.”  Based upon those perceived failures in the specification, the PTAB concluded that “the term ‘green number 7 dye’ … lacks adequate written description support and is indefinite.” Although I have no experience in this area, I did do a 2 minute Google search and found that Green No. 7 is a term of art for Phthalocyanine Green G.

Question: Did the applicant err by not including a better definition of Green No. 7 and by particularly explaining why it is undesirable? The decision here has clear errors, but it does beg the question of the extent that a patent specification needs to explain “why” the inventor made certain choices.  P&G sells diapers both with and without Green No. 7, and I expect that its reasoning is simply that some customers will pay more for the version without.