Ex Parte Shimada et al

Board of Patent Appeals and Interferences

Jul 12, 2012

10764589 (B.P.A.I. Jul. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/764,589 01/27/2004 Takaaki Shimada 2038-323 8968
22429 7590 07/12/2012
LOWE HAUPTMAN HAM & BERNER, LLP
1700 DIAGONAL ROAD
SUITE 300
ALEXANDRIA, VA 22314
EXAMINER
HAND, MELANIE JO
ART UNIT PAPER NUMBER
3778
MAIL DATE DELIVERY MODE
07/12/2012 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 TAKAAKI SHIMADA,
TAKAKO UOSAWA, and NAOKO TAKADA
____________

Appeal 2009-014730
Application 10/764,589
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
MICHAEL L. HOELTER, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Takaaki Shimada et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 4-6, 11-16, and 18-22.
Appellants cancelled claims 1-3, 7-10, and 17. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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The Claimed Subject Matter
The claimed subject matter is directed to “pants-type disposable
wearing articles for absorption and containment of bodily discharges.”
Spec. 1, ll. 4-6. Claims 4, 11, 13, and 18 are independent and claim 4,
reproduced below, with emphasis added, is illustrative of the subject matter
on appeal.
4. A pants-type disposable wearing article,
comprising:
a liquid-impervious base sheet defining front and rear
waist regions opposed to each other and a crotch region
extending in a longitudinal direction of said article between said
front and rear waist regions;
a liquid-absorbent panel extending over said crotch
region and further into said front and rear waist regions;
said base sheet having, in said front and rear waist
regions, a waist-surrounding end zone extending in a transverse
direction of said article, a pair of waist lateral zones extending
in the longitudinal direction and, in said crotch region, a pair of
crotch lateral zones extending in leg-surrounding directions,
respectively;
said base sheet being provided with
a waist-surrounding first elastic member
extending in the transverse direction along said
waist-surrounding end zone and being contractible
in said transverse direction,
a plurality of waist-surrounding second
elastic members lying below said first elastic
members and being contractible in said transverse
direction, and
a plurality of leg-surrounding elastic
members extending along said crotch lateral zones
in the leg-surrounding directions, respectively, and
being contractible in said leg-surrounding
directions, respectively;
said second elastic members being located in said crotch
region and at least one of said front and rear waist regions and
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spaced apart one from another by a predetermined interval in
said longitudinal direction; and
said waist lateral zones being connected together to form
a waist-hole and a pair of leg-holes;
wherein
each of said second elastic members has
fixed end portions secured to said waist
lateral zones and said crotch lateral zones in
vicinities of respective side edges of said lateral
zones, and
a free middle portion connecting and
extending between said fixed end portions across
said panel in said transverse direction and being
directly secured neither to said base sheet nor to
said panel; and
said free middle portions of said second elastic members
and said leg-surrounding elastic members cross, without
intersecting, one another in at least said crotch lateral zones and
are not secured together at their crossing points;
said base sheet comprises a first sheet and a second sheet,
said first sheet being sandwiched between said panel and said
second sheet; and
said first and second elastic members as well as said leg-
surrounding elastic members are interposed between said first
sheet and said second sheet.

The Rejections
The following Examiner’s rejections are before us for review.
Claims 4-6, 11-16, and 18-21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Okuda (JP 2001-157690 A, published Jun. 12, 2001) and
Hall (US 2004/0006323 A1, published Jan. 8, 2004). Ans. 4-15
Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Okuda, Hall, and Pozniak (US 6,045,543, issued Apr. 4, 2000). Ans. 15.

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OPINION
Obviousness based on Okuda and Hall
Independent claim 4 and dependent claims 5 and 6
The Examiner finds that Okuda’s “waistline elastic materials 21” (see
Okuda, p. 5, paragraph [0005], l. 3)1 constitute claim 4’s plurality of leg-
surrounding elastic members. Ans. 16.
Appellants assert that Okuda only discloses that the “elastic materials
21 are disposed on the dorsal portion A, i.e., the rear of the assembled diaper
and fails to disclose, teach, or suggest . . . elastic material 21 disposed on a
ventral portion B, i.e., the front of the diaper.” 1st Reply Br. 3 and 2nd Reply
Br. 2-3.2 Thus, Appellants contend that “[a]bsent elastic members 21 in the
ventral portion B, of the diaper, to complete at least the frontal portion of the
leg-surrounding member, Okuda cannot, and indeed does not, suggest a ‘leg-
surrounding’ elastic member.” 2nd Reply Br. 3.
We agree with Appellants. Okuda’s waistline elastic materials 21 do
not satisfy the claim terminology of being a “leg-surrounding” elastic
member as that term would be understood by one of ordinary skill in the art
in light of the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997) (In interpreting claim language, we apply the broadest reasonable
meaning of the words in their ordinary usage as they would be understood

1 All references to “Okuda” in this opinion are to the official English
translation of JP 2001-157690 A prepared by The McElroy Translation
Company in or about May 2008, which is of record in the file of the
underlying application.
2 All references to the “1st Reply Br.” are to the Reply Brief Appellants filed
on February 10, 2009 and all references to the “2nd Reply Br.” are to the
Reply Brief Appellants filed on June 24, 2009.

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by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description.). Indeed, the present Specification describes the leg-
surrounding elastic members 23 as including both leg-surrounding first
elastic members 23 and leg-surrounding second elastic members 23
extending from the front waist region 6 and the rear waist region 8,
respectively, toward the crotch region 7, generally describing a U-curve
relative to the longitudinal direction. Spec. 14, ll. 10-17. The present
Specification further describes each of the elastic members 23 as having
longitudinally opposite lateral portions 24 extending along the crotch lateral
zone 11 and a middle portion 25 extending between the lateral portions 24
across the crotch region 7 in the transverse direction L. See Spec. 14, ll. 17-
21; see also Spec. 10, l. 18, 19. Thus, one of ordinary skill in the art would
understand that the claim term “leg-surrounding elastic member” requires an
elastic member that is continuous around the circumference of the wearing
article 1A or 1B so as to surround the wearer’s legs. In other words, when
the left and right edges 12 of the front waist region 6 of Figures 2 and 8 are
joined to the left and right edges 12 of the rear waist region of Figures 2 and
8, respectively, to form the wearing articles shown in Figures 1 and 7, a leg-
surrounding elastic member 23 is created that extends continuously around
the circumference of the wearing article 1A or 1B. However, Okuda’s
disposable diaper 1 only has waistline elastic materials 21 in the back or
dorsal portion A and side lateral elastic parts 11. There are no waistline
elastic materials 21 in the front or ventral portion B of the absorbent article
(disposable diaper) 1 or in the center connenction part 12 of the absorbent
article (disposable diaper) 1. Thus, when the absorbent article (disposable
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diaper) 1 is placed around the wearer and held on the wearer by the fastening
tapes 71, the waistline elastic materials 21 do not extend continuously
around the circumference of the absorbent article (disposable diaper) 1 so as
to surround the wearer’s legs.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 4, and claims 5 and 6 dependent thereon, under 35 U.S.C.
§ 103(a) as unpatentable over Okuda and Hall.
Independent claims 11 and 18 and dependent claims 12 and 19-21
The Examiner finds that Okuda substantially discloses the subject
matter of independent claim 11, except that Okuda fails to disclose that the
first and second elastic members and the leg surrounding elastic members
“are interposed between said first sheet 3 and said second sheet 5.” Ans. 7-
8. The Examiner also finds that Okuda substantially discloses the subject
matter of independent claim 18, except that Okuda fails to disclose that “the
middle portions 12A of said second elastic members 21 cross over said third
elastic members 61 and are not secured to said third elastic members 61 at
crossover points of said second and third elastic members 21, 61.” Ans. 12-
13. To cure the deficiencies of Okuda, the Examiner turns to Hall to teach
“an elastomeric composite laminate 70 suitable for use as a base sheet in the
leg opening and waist opening areas.” Ans. 8 and 13. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
“to modify the article of Okuda by including the elastomeric composite of
Hall as an additional layer of the base sheet of Okuda in the leg and waist
areas to impart improved elastic behavior.” Ans. 8 and 13-14.
Appellants contend that “[i]ndependent claims 11 and 18 are similar
to claim 4 and are patentable at least based upon the argument presented
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above in regards to claim 4.” App. Br. 17. Appellants also contend that
neither Okuda nor Hall disclose “‘a plurality of third elastic members
extending along peripheral edges of said leg-holes.’” App. Br. 17-18.
We cannot agree with Appellants that claims 11 and 18 are similar to
claim 4, because neither of independent claims 11 and 18 recite “leg-
surrounding elastic members,” but rather, recite “third elastic members
extending along peripheral edges of said leg-holes.” The Examiner has
pointed to waistline elastic materials 21 of Okuda as constituting the third
elastic members and waistline elastic materials 21 of Okuda do extend along
peripheral edges of said leg-holes. Therefore, we are not persuaded that the
Examiner’s rejection is in error.
Appellants also contend that independent claims 11 and 18 are
“patentable based upon the improper combination of Okuda and Hall,
wherein the asserted combination of references present no apparent reason,
other than conclusions, to combine references or modify prior art to create
the Appellants’ allegedly obvious claim elements.” App. Br. 18.
However, we cannot agree with Appellants that the Examiner’s reason
for combining Okuda and Hall of “to impart improved elastic behavior”
lacks rational underpinning. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (holding that “rejections 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.”). Hall teaches that “[a]ny expandable areas of
the diaper 20 may utilize the elastic composites set forth herein for increased
functionality and aesthetics.” Hall, para. [0049], last sentence. Thus, since
Hall’s elastomeric composite laminate 70 has elastomeric reinforcing strands
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64 between facing sheets 72, 74 (see Hall’s Figure 5 and 6), the Examiner’s
determination that one of ordinary skill in the art would have modified
Okuda, in light of Hall’s teachings, so that Okuda’s waistline elastic
materials would be between first and second sheets 3, 5 in order “to impart
improved elastic behavior” is adequately supported with rational
underpinning.
Based on the foregoing, we sustain the Examiner’s rejection of
independent claims 11 and 18, and claims 12 and 19-21 dependent thereon,
under 35 U.S.C. § 103(a) as unpatentable over Okuda and Hall.
Independent claim 13 and dependent claims 14-16
Independent claim 13 is directed to a pants-type disposable wearing
article including, inter alia, a base sheet which further includes:
bonding spots joining said first and second sheets in regions
located between the middle portions of adjacent said second
elastic members, said bonding spots limiting displacement of
the middle portions of said second elastic members in the
longitudinal direction of said article without affecting
contraction of said middle portions in a transverse direction of
said article.
App. Br., Clms. App’x.
The Examiner finds that Okuda discloses the bonding spots as recited
in independent claim 13 and cites to Okuda’s paragraphs [0014] and [0015]
as support. Ans. 10.
Appellants contend that “independent claim 13 is allowable based
upon features neither disclosed, nor taught by Okuda and Hall,” because
“nowhere in the cited text [of paragraphs [0014] and [0015]] does Okuda
appear to disclose bonding spots, let alone bonding spots as claimed.” App.
Br. 18-19.
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In response, the Examiner further cites to Okuda’s paragraph [0023]
for its disclosure that first and second sheets 3, 5 are laminated, and Okuda’s
paragraph [0012], for its disclosure that “the elastic members 21 are fixed
between the first and second sheets only at the side edges and are not fixed
to those sheets at regions 21b,” which the Examiner considers to be middle
portions of the elastic. Ans. 17. The Examiner determines that “[s]ince
Okuda meets this limitation, the bonding sites causing lamination of the first
and second sheets in the locations surrounding the middle portions 21b will
necessarily limit displacement of the middle portions of second elastic
members 21 in the longitudinal direction of the diaper.” Id.
We agree with Appellants. First, based upon our review of
paragraphs [0014] and [0015] of Okuda, there is no disclosure that supports
the Examiner’s finding that Okuda discloses the “bonding spots” as recited
in claim 13. As far as we can understand, the only bonding disclosed in
these paragraphs appears to be “the outer edges 21a and 22a in the width
direction of the diaper 1 of both elastic materials 21 and 22, respectively,
and center portions 21c and 22c” which were stated to be fixed to diaper-
constituting materials in a stretched state. See Okuda, p. 9, para. [0014], first
sentence. We do not agree that the fixation being discussed in paragraphs
[0014] and [0015] meets the recited “bonding spots.”
Second, the Examiner cites to paragraph [0023] for lamination of first
and second sheets 3, 5. See Ans. 17. However, the only lamination being
discussed is that “the above sheet material [discussed in paragraph [0022]] is
a sheet material forming a portion of the dorsal area A, and it may be, for
example, the surface sheet 2, leak-proof sheet 3, outer layer sheet 5 or
laminated sheet of them in multiple layers.” See Okuda, p. 12, para. [0023],
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first sentence. This sentence does not specifically support a finding that first
and second sheets 3, 5 are laminated to each other. The Examiner also cites
to paragraph [0012] for teaching that “[t]he waistline elastic materials 21 and
21 are fixed in a tensile state between the leak-proof sheet 3 or outer layer
sheet 5 and an auxiliary sheet 23 in the lateral elastic parts 11.” See Okuda,
p. 8, para. [0012], first sentence. However, this disclosure does not support
a finding that Okuda discloses bonding spots as recited in claim 13, because
claim 13 requires the bonding spots to join the first and second sheets 3, 5
“in regions located between the middle portions of adjacent said second
elastic members.” The Examiner has failed to show how the disclosure in
paragraph [0012] supports that Okuda’s first and second sheets 3, 5 are
joined “in regions located between the middle portions of adjacent said
section elastic members,” which the Examiner found to be waistline elastic
materials 21.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 13, and claims 14-16 dependent thereon, under 35
U.S.C. § 103(a) as unpatentable over Okuda and Hall.
Obviousness based on Okuda, Hall, and Pozniak
Claim 22 depends indirectly from independent claim 4. The
Examiner’s rejection of claim 22 relies on the erroneous premise that Okuda
discloses “a plurality of leg-surrounding elastic members extending along
said crotch lateral zones in leg-surrounding directions.” Since we do not
agree that Okuda’s waistline elastic materials 21 constitute leg-surrounding
elastic members for the reasons discussed supra with respect to independent
claim 4, we do not sustain the Examiner’s rejection of claim 22 under 35
U.S.C. § 103(a) as unpatentable over Okuda, Hall, and Pozniak.
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DECISION
We affirm the Examiner’s decision to reject claims 11, 12, and 18-21.
We reverse the Examiner’s rejections of claims 4-6, 13-16, and 22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED-IN-PART

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