Ex Parte Ito et al

Board of Patent Appeals and Interferences

Sep 8, 2010

10833337 (B.P.A.I. Sep. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KYOKO ITO and KYOTA SAITO
____________________

Appeal 2009-009158
Application 10/833,337
Technology Center 3700
____________________

Before JENNIFER D. BAHR, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Kyoko Ito and Kyota Saito (Appellants) seek our review under
35 U.S.C. § 134 of the rejection of claims 1, 2, 4-7 and 9-25. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
We REVERSE.

THE INVENTION
Appellants’ claimed invention is directed to a disposable wearing
article having tape fasteners that are unfolded during actual use (Spec. 3:5-
10).
Claim 14, reproduced below, is representative of the subject matter on
appeal.
14. A disposable wearing article, comprising:
a main body having a front waist region, a rear waist
region and a crotch region extending in a longitudinal
direction of said main body between said front and rear
waist regions; and
a tape fastener attached to said main body;
wherein
said tape fastener comprises a first monolithic tape strip
and a second monolithic tape strip, each of said tape strips
having opposite first and second end zones, the second end
zones of said tape strips being adhesively connected to each
other, the first end zone of said second tape strip being
permanently directly attached to one of opposite surfaces of
said main body, said surface being adapted to face away
from a wearer's body, in use;
said tape fastener is in a folded state in which
entire said second tape strip is sandwiched between said
first tape strip and said surface of said main body,
the second end zone of said first tape strip has an
extension that is directly releasably attached to said surface
of said main body, and
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said second tape strip is directly releasably attached to
said first tape strip in a middle zone located between said
first and second end zones of said second tape strip;
said tape fastener is unfoldable from said folded state to
a unfolded state in which the second end zones of said tape
strips are free of direct attachment to said surface of said
main body while remaining connected to each other; and
in the folded state, an entirety of said second tape strip,
except the first end zone thereof, is free of direct attachment
to said surface of said main body so as to be liftable
upwardly off said surface of said main body when said tape
fastener is unfolded; and
in the folded state, the first end zone of said first tape
strip, which is a free end zone, has an outermost end edge
even with a longitudinal side edge of one of the waist
regions, and the first end zone of said second tape strip is
closer to said longitudinal side edge than the second end
zone of said second tape strip.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 1, 2, 4-7 and 9-25 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 14-17 and 19 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Johnson (4,670,012, issued Jun. 2, 1987).
3. Claims 1, 10 and 22 are rejected under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Johnson.
4. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Johnson.
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5. Claims 2, 4, 5, 9, 11-13, 18, 20, 21 and 23-25 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Johnson in view of
Matsuda (WO 01/13842 A1, published Mar. 1, 2001), and Hayase
(EPO 0623330 A2, published Nov. 9, 1994).

ISSUES
The issues before us are: (1) whether the Examiner erred in
concluding that claims 1, 2, 4-7 and 9-25 fail to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph (App. Br. 16);
(2) whether the Examiner erred in finding that Johnson describes the
limitation “in the folded state, the first end zone of said first tape strip . . .
has an outermost end edge even with a longitudinal side edge of one of the
waist regions,” as called for in independent claim 14 (App. Br. 19); (3)
whether the Examiner erred in finding that Johnson describes the limitation
“in the folded state, the. . . the second end zone of said second tape strip are
directly contactable with and free of direct attachment to said second
surface,” as called for in independent claim 1 (App. Br. 22), and in
concluding, in the alternative, that Johnson renders obvious said limitation
(App. Br. 23); and (4) whether the Examiner erred in finding that Johnson
describes the limitation “a third monolithic tape strip . . . which is directly
secured over substantially a full length thereof to said second surface,” as
called for in independent claim 2 (App. Br. 25-26), and in concluding, in the
alternative, that Johnson renders obvious said limitation (App. Br. 26-27).
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ANALYSIS
35 U.S.C. § 112, first paragraph, rejection
Appellants contend that the invention called for in independent claims
1, 2 and 14 finds support in the original disclosure, especially the original
drawings (App. Br. 16).
The Examiner found that amended claims 1, 2, 4-7 and 9-25 are not
supported by the original Specification, e.g., “claim 14 still claims a tape
fastener unfoldable from a folded state to an unfolded state, and claims 1, 2,
and 14 still claim certain end zones of the first and second strip being
connected to each other” (Ans. 3-5), and “claim 23 now requires an end edge
of the free end zone of each fastener be even with a side of the one of the
side edge portions of the one of the waist regions respectively” (Ans. 5).
“[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date. . . . This
inquiry, as we have long held, is a question of fact.” Ariad Pharm., Inc. v.
Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
“[D]rawings alone may be sufficient to provide the ‘written
description of the invention’ required by § 112, first paragraph.” Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991).
As set forth supra, it is the claimed subject matter that must have
support in the original disclosure.
As such, an Examiner, when alleging that language in amended claims
do not have support in the original disclosure, has the burden to specifically
set forth the exact claim language that is not supported by the original
disclosure. We find that in all of the instances that the Examiner alleges that
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the claims include language unsupported in the original disclosure, the
Examiner has not provided the exact unsupported claim language.
Moreover, we agree with Appellants (App. Br. 16-18) and find that
Figures 4-8 show the process in which the tape fastener is unfolded, e.g.,
Figure 4 shows the tape fastener in the folded state (solid lines in fig. 4) and
in the unfolded state (dotted lines in fig. 4). In addition, we agree with
Appellants (App. Br. 18) that Figure 4, which shows an end edge of free end
zone 37 of each tape fastener 30 is even with a side edge of one of the edge
portions 13, provides the support for the language called for in claim 23.
Accordingly, the Examiner’s rationale does not provide sufficient
basis to find that a person having ordinary skill in the art would not
understand that the inventor had possession of the claimed subject matter as
of the filing date.
We reverse the rejection of independent claims 1, 2 and 14 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Likewise, we reverse the rejection of claims 4-7, 9-
13, and 15-25, which depend from claims 1, 2 and 14, respectively.

Rejection of claims 14-17 and 19 under 35 U.S.C. § 102(b) over Johnson
Appellants contend that Johnson does not describe the limitation “in
the folded state, the first end zone of said first tape strip . . . has an outermost
end edge even with a longitudinal side edge of one of the waist regions,” as
called for in independent claim 14 (App. Br. 19).
The Examiner proffered two positions for how Johnson describes the
invention called for in independent claim 14, wherein the two positions are
based on column 4, lines 31-36 and Figure 10 of Johnson. In setting forth
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the two positions, the Examiner found that Johnson’s terminology “‘may’
also infers ‘may not’” and, that “[t]herefore, col. 4 teaches the end may not
project a short distance from the edge” (Ans. 8-9).
Appellants contend that column 4, lines 31-36 and Figure 10 of
Johnson does not describe the claimed feature (App. Br. 19).
We find the Examiner’s finding noted supra to be conclusory as the
Examiner has provided no basis or support for the finding.
Johnson describes in column 4, lines 31-36 that:
[t]he extreme end portion 46 of the tape 42, near the numeral 46
on FIGS. 9 and 10 may optionally be back-folded a short
distance to provide a convenient pull tab for ease of removal.
For the same reason, the end may be configured to project a
short distance from the edge of the diaper, as seen best in FIG.
10. (Emphasis added).
Johnson is silent as to the length of a short distance. As such, it
becomes incumbent upon the Examiner to provide a basis in fact and/or
technical reasoning that would support a finding as to the length of
Johnson’s short distance. However, the Examiner’s proffered rationale is
based on conjecture.
Further, Johnson shows in Figure 10 that in the folded state, the
outermost end is spaced from both backing sheet 14 and cover sheet 18 of
diaper 12.
Therefore, we agree with Appellants that Johnson does not describe,
in the folded state, an outermost end edge even with a longitudinal side edge
of one of the waist regions, as called for in independent claim 14.
We reverse the rejection of independent claim 14. Likewise, we
reverse the rejection of claims 15-17 and 19, which depend from claim 14.

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Rejection of claims 1, 10 and 22 under 35 U.S.C. § 102(b) or, in the
alternative, under 35 U.S.C. § 103(a) over Johnson
Appellants contend Johnson does not describe the limitation “in the
folded state, the. . . the second end zone of said second tape strip are
directly contactable with and free of direct attachment to said second
surface,” as called for in independent claim 1 (App. Br. 22).
The Examiner proffered two positions, a first based on anticipation
(Ans. 12-13) and a second based on obviousness (Ans. 13), for how Johnson
describes the invention called for in independent claim 1, wherein the two
positions are based on column 4, lines 1-6 and column 5, lines 10-41, and
Figures 9 and 10 of Johnson.
In the first position, the Examiner stated that “[t]herefore there is
sufficient factual basis to conclude that the function, capability and property
of such claimed structure is also inherent in the same structure of ‘012
[Johnson].”
Inherency may not be established by probabilities or possibilities. See
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). The mere fact that a certain
thing may result from a given set of circumstances is not sufficient. Id.
We find that Johnson does not describe that the second end zone of
said second tape strip is directly contactable with and free of direct
attachment to said second surface, as called for in independent claim 1.
In the second position, the Examiner proffered two alternatives in
support thereof (Ans. 13). We find that the Examiner’s conclusion of
obviousness is based on unsupported conclusory statements and faulty logic.
As such, the Examiner has not provided an adequate rationale as to why the
second end zone of said second tape strip being directly contactable with and
free of direct attachment to said second surface, as called for in claim 2,
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would have been obvious to a person having ordinary skill in the art. See
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”).
We reverse the anticipation and the obviousness rejections of
independent claim 1. Likewise, we reverse the anticipation and the
obviousness rejections of claims 10 and 22, which depend from claim 1.

Rejection of claims 6 and 7 under 35 U.S.C. § 103(a)
The Examiner’s conclusion of obviousness (Ans. 14) does not include
a rationale that would cure the deficiency in Johnson noted supra regarding
independent claim 1, from which claims 6 and 7 depend.
Thus, we reverse the rejection of dependent claims 6 and 7.

Rejection of claims claims 2, 4, 5, 9, 11-13, 18, 20, 21 and 23-25 under 35
U.S.C. § 103(a) over Johnson, and Matsuda and Hayase
Claims 2, 11-13 and 23
Appellants contend that Johnson does not describe the limitation “a
third monolithic tape strip . . . which is directly secured over substantially a
full length thereof to said second surface,” as called for in independent
claim 2 (App. Br. 25-26) (Emphasis added).
The Examiner found that Johnson describes a first surface (cover
sheet) 18 and a second surface (backing sheet) 14 (Ans. 10), and a third tape
strip (pressure sensitive tape) 32 (Ans. 17). The Examiner found “that the
terminology ‘substantially a full length’ does not require the length to be the
entire length of the tape” (Ans. 17-18).
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We find that as shown in Figure 9 of Johnson, the pressure sensitive
tape (third tape strip) 32 is connected to second surface (backing sheet) 14
for approximately half of its length.
The patent Specification does not assign or suggest a particular
definition to the term “substantially.” Therefore, in determining the ordinary
and customary meaning of the claim term “substantially” as viewed by a
person of ordinary skill in the art, it is appropriate to consult a general
dictionary definition of the word “substanially” for guidance. Comaper
Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010).
The ordinary meaning of the word “substantial” includes “being
largely but not wholly that which is specified.”2 A person having ordinary
skill in the art would not understand the phrase “substantially a full length,”
as called for in claim 2 and in light of the ordinary meanings of the words
used in the phrase, to refer to only half of a length.
Therefore, in Johnson, the pressure sensitive tape (third tape strip) 32
is not connected to second surface (backing sheet) 14 for substantially a full
length, as called for in claim 2.
The Examiner has not relied on Matsuda or Hayase for any teaching
that would remedy the deficiency in Johnson (Ans. 16).
We reverse the rejection of independent claim 2. Likewise, we
reverse the rejection of claims 11-13 and 23, which depend from claim 2.

Claims 4, 5, 9, 18, 20, 21, 24 and 25
The Examiner’s conclusion of obviousness (Ans. 15-18) does not
include a rationale that would cure the deficiency in Johnson noted supra

2 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1996).
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regarding independent claims 1 and 14, from which claims 4, 5, 9, 18, 20,
21, 24 and 25 depend.
Thus, we reverse the rejection of dependent claims 4, 5, 9, 18, 20, 21,
24 and 25.

CONCLUSIONS
The Examiner has erred in concluding that claims 1, 2, 4-7 and 9-25
fail to comply with the written description requirement of 35 U.S.C. § 112,
first paragraph.
The Examiner has erred in finding that Johnson describes the
limitation “in the folded state, the first end zone of said first tape strip . . .
has an outermost end edge even with a longitudinal side edge of one of the
waist regions,” as called for in independent claim 14.
The Examiner has erred in finding that Johnson describes the
limitation “in the folded state, the . . . the second end zone of said second
tape strip are directly contactable with and free of direct attachment to said
second surface,” as called for in independent claim 1, and in concluding, in
the alternative, that Johnson renders obvious said limitation.
The Examiner has erred in finding that Johnson describes the
limitation “a third monolithic tape strip . . . which is directly secured over
substantially a full length thereof to said second surface,” as called for in
independent claim 2, and in concluding, in the alternative, that Johnson
renders obvious said limitation.

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DECISION
The decision of the Examiner to reject claims 1, 2, 4-7 and 9-25 is
reversed.

REVERSED

Klh

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