Ex Parte Nakahata et al

Board of Patent Appeals and Interferences

Jun 7, 2012

10736282 (B.P.A.I. Jun. 7, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/736,282 12/15/2003 Hiroshi Nakahata AA556C 4285
27752 7590 06/07/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
HAND, MELANIE JO
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
06/07/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HIROSHI NAKAHATA, HONG LU,
KOUICHI MIYAMOTO, and TAKUYA SHIRAKAWA
__________

Appeal 2011-001301
Application 10/736,282
Technology Center 3700
__________

Before TONI R. SCHEINER, STEPHEN WALSH, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to
an absorbent article, such as a diaper, comprising an elastic waist band. The
Examiner has rejected the claims for lack of enablement and as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.

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STATEMENT OF THE CASE
The Specification describes an absorbent article, such as a diaper,
comprising different layers, regions and panels, including a chassis layer
formed on the exterior of the diaper. (Spec. 4.) The diaper includes a
plurality of small openings or “discontinuities” that extend through the
chassis layer and allow the chassis layer “to have extensibility when placed
under tension.” (Id. at 7, ll. 19-31.) The Specification teaches that the
“chassis layer of the waist panel is able to extend without breakage up to
20%” or a higher percentage. (Id. at 9, ll. 11-20.)
In this capacity, the diaper “comprises an extensibility controlling
means 70 to control the extensibility of the chassis layer 21,” where the
extensibility controlling means inhibits the chassis layer from “extending
beyond extensibility causing breakage of the chassis layer 21.” (Id. at 11, ll.
26-30; see also Figure 4.) Specifically, the extensibility controlling means
inhibits the chassis layer “from extending beyond 20 % at tension force of
125 grams/25mm, preferably at tension force of 500 grams/25mm, more
preferably 1000 grams/25mm.” (Id. at ll. 30-33.)
Claims 1, 2, 4, 5, and 7-18 are on appeal. Claim 1 is the only
independent claim, and is representative (emphasis added):
1. An absorbent article having a pair of longitudinal side edges and a
first end edge, a second end edge, a first waist panel adjacent to the
first end edge, a second waist panel adjacent to the second end edge, a
crotch panel positioned between the first and second waist panels, and
a side panel extending laterally outwardly from the first or second
waist panel, the absorbent article comprising a liquid pervious
topsheet, an absorbent core disposed underneath the topsheet, and a
chassis layer, wherein at least one of the first and second waist panels
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comprise a portion of the chassis layer, the chassis layer including an
inner sheet and an outer sheet joined to one another to form a
laminate, a plurality of spaced discontinuities regularly disposed in at
least a portion of the first or second waist panel such that when the
waist panel is subject to tension the discontinuities provide openings
that extend through the laminate of the chassis layer thereby providing
the chassis layer with extensibility in the transverse direction; and an
elastic waist band configured as an extensibility controlling means,
wherein the elastic waist band inhibits the chassis layer from
extending beyond 20% at a tension force of 125 grams/25mm.
The claims stand rejected as follows:
• Claims 1, 2, 4, 5, and 7-18 under 35 U.S.C. §112, first paragraph,
for lack of enablement.
• Claims 1, 2, 4, 5, and 7-18 under 35 U.S.C. §103(a) as obvious over
Nakahata (U.S. Patent No. 5,873,868, issued Feb. 23, 1999) in view of
Malowaniec (U.S. Patent No. 6,049,915, issued Apr. 18, 2000).
I.
Issue
Does the Examiner present a prima facie case of lack of enablement
with regard to claims 1, 2, 4, 5, and 7-18?
Principles of Law
To meet the enablement requirement, an applicant must describe the
claimed invention in sufficient detail to permit those skilled in the art to
make and use the invention without an undue amount of experimentation.
Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1253 (Fed. Cir. 2004). A
determination of what level of experimentation is “undue,” so as to render a
disclosure non-enabling, is made from the viewpoint of persons experienced
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in the field of the invention. Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d
1362, 1373-74 (Fed. Cir. 1999). Enablement typically is evaluated under
the eight “Wands” factors: (1) the quantity of experimentation necessary,
(2) the amount of direction or guidance presented, (3) the presence or
absence of working examples, (4) the nature of the invention, (5) the state of
the prior art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims. In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988).
The Examiner bears the initial burden of presenting a prima facie case
of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (1992). If the
Examiner meets that initial burden, the burden of coming forward with
evidence or argument shifts to the applicant. In re Rijckaert, 9 F.3d 1531,
1532 (Fed. Cir. 1993). If the Examiner fails to establish a prima facie case
of unpatentability in the first instance, however, the rejection is improper
and must be reversed. Oetiker, 977 F.2d at 1445; Rijckaert, 9 F.3d at 1532.
Analysis
The Examiner finds that the instant Specification fails to enable one of
skill in the art to make the article recited in the claims because the
Specification fails to disclose “a specific structure or material that inhibits
the chassis layer from extending beyond 20% at a tension force of 125
grams/25mm.” (Ans. 3.) Specifically, the Examiner finds that the
Specification discloses (1) “only large classes of materials” or “elastic and
inelastic materials” generally for the extensibility control means, “rendering
the breadth of the claim overly broad;” (2) that the type of material of the
extensibility control means and its structural relationship with other
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components impact the degree of extension and inhibit of the chassis layer;
and (3) no working examples. (Ans. 4, 10.) Thus, according to the
Examiner, “undue experimentation would be required to arrive at the precise
combination of materials and structural relationships for the extensibility
control means that would produce the recited elongation.” (Ans. 10.)
We find that the Examiner fails to present a prima facie case on this
issue. Although the Examiner correctly notes that the Specification
describes the components of an elastic band in relatively broad terms (Spec.
12, ll. 10-11, 21-22, 28-30), the Examiner does not sufficiently explain why
a skilled artisan would need additional information regarding structure or
material in order to make an elastic band having the recited extensibility.
Assuming one skilled in the art already knew how to make elastic bands for
diapers generally (and the Examiner does not suggest otherwise), the
question becomes whether one could identify an elastic band that “inhibits
the chassis layer from extending beyond 20% at a tension force of 125
grams/25mm” as recited in claim 1 without undue experimentation.
The Specification describes how to measure a tension force applied to
a chassis layer, for example using a commercially available tensile tester.
(Id. at 11, l. 34 – 12, l. 9.) The Specification describes how to assemble the
elastic band/extensibility control means with different parts of the diaper,
and also discusses how the elastic band/extensibility control means can
work. (Id. at ll. 10-27.) For example, “inelastic topsheet having pleats 24A
shown in Figure 10 may also serve as the extensibility controlling means,”
where “[t]he overall width of the inelastic topsheet when the pleats 24A are
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extended is limited below the extensibility causing breakage of the chassis
layer.” (Id. at ll. 23-27.)
The Examiner does not point to anything in the record indicating that
one would have had difficulty or would have needed to engage in undue
experimentation to make an elastic band that inhibited a chassis layer “from
extending beyond 20% at tension forces of 125 grams/25mm” (claim 1) as
measured using commercially available testers. A skilled artisan reading the
Specification, in light of what was known in the prior art, would have
understood how to make an elastic band (such as those already available in
the art), and then determine whether a chassis layer, assembled in a diaper
with the elastic band as disclosed in the Specification, had the recited
extensibility. The Examiner does not direct our attention to anything to the
contrary, or otherwise indicate why the described tensile testing would have
corresponded to undue experimentation to those skilled in the relevant art.
Conclusion of Law
We conclude that the Examiner does not present a prima facie case of
lack of enablement with regard to claims 1, 2, 4, 5, and 7-18.
II.
Issue
Does the Examiner present a prima facie case of obviousness of
claims 1, 2, 4, 5, and 7-18 over Nakahata or Malowaniec?
Principles of Law
The Board “determines the scope of claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
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broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004).
Analysis
Once again, the phrase “wherein the elastic waist band inhibits the
chassis layer from extending beyond 20% at a tension force of 125
grams/25mm” is at issue. In the obviousness rejection, the Examiner does
not suggest that either cited reference, Nakahata or Malowaniec, discloses
this element recited in claim 1. Rather, the Examiner finds that “Nakahata
teaches many materials for topsheet 24 that are identical to materials
disclosed by appellant for a topsheet that functions as an extensibility control
means.” (Ans. 7.) According to the Examiner, “it would be obvious to one
of ordinary skill in the art to modify the article of Nakahata as modified by
Malowaniec, such that the extensibility controlling means inhibits the
chassis layer from extending beyond 20% at a tension force of 125 g/25 mm
with a reasonable expectation of success to prevent breakage of the chassis
layer that would impair or destroy the function of the diaper.” (Id.)
To support this conclusion as it relates to the specific extensibility
recited in claim 1, however, the Examiner also assumes that “if the appellant
can and does broadly disclose that any elastic or inelastic material, alone or
attached to another elastic or inelastic material, can yield the recited
extension at the recited tension force, then the elastic material of Nakahata
can reasonably be expected to also have an extension force within the
claimed range.” (Id. at 11.) In other words, despite the fact that the
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Examiner “acknowledges that it is highly unlikely that any elastic or
inelastic material will always have an extension force within the claimed
range,” the Examiner concludes that the claim language at issue itself
dictates that it encompasses any and all prior art elastic bands comprising
elastic or inelastic material generally, as disclosed in Nakahata. (Id.)
We find the Examiner’s claim interpretation in this regard to be
unreasonably broad. The claim language here requires an elastic band that
controls extensibility of a chassis layer by a certain amount, which itself
limits the universe of relevant elastic bands. Moreover, the Specification
describes an extensibility controlling means to control the extensibility of a
chassis layer as recited in the claims, as well as how to measure extensibility
performance using a commercially available “tensile tester.” Thus, the
relevant claim language does not encompass any and all elastic bands
comprising elastic and/or inelastic material.
The Examiner does not cite to anything in Nakahata or Malowaniec
that would lead one to choose an elastic band, or pick materials to make an
elastic band, that inhibits a chassis layer “from extending beyond 20% at a
tension force of 125 grams/25mm” as recited in claim 1. The Examiner does
not refer to any suggestion in the prior art to look or test for a specific
extensibility of a chassis layer or any other part of an absorbent article.
Likewise, the Examiner cites no evidence indicating that a waist band
disclosed or suggested in the prior art inhibits extension of a chassis layer as
recited in claim 1. As such, the Examiner has not established a prima facie
case of obviousness based on the record before us.
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Conclusion of Law
We conclude that the Examiner does not present a prima facie case of
obviousness of claims 1, 2, 4, 5, and 7-18 over Nakahata or Malowaniec.

SUMMARY
We reverse the rejection of claims 1, 2, 4, 5, and 7-18 under 35 U.S.C.
§112, first paragraph, for lack of enablement. We also reverse the rejection
of claims 1, 2, 4, 5, and 7-18 under 35 U.S.C. §103(a) as obvious over
Nakahata in view of Malowaniec.

REVERSED

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