Ex parte FUJIOKA et al.

Board of Patent Appeals and Interferences

Apr 7, 1998

08105617 (B.P.A.I. Apr. 7, 1998)

1 Application for patent filed August 13, 1993.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte YOSHIHISA FUJIOKA
and HIROTOMO MUKAI
____________
Appeal No. 96-1366
Application 08/105,6171
____________
HEARD: March 5, 1998
____________
Before CALVERT, FRANKFORT and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
final rejection of claim 3. Claims 1 and 2 have been
Appeal No. 96-1366
Application 08/105,617
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canceled. Appellants’ claimed subject matter is disposable
absorbent pants.
Claim 3 recites:
3. Disposable absorbent pants comprising a front
body (2), a rear body (3) and a liquid absorbent panel (15)
disposed between said front body (2) and said rear body (3),
said pants having a waist opening, two leg openings (10) and a
crotch area extending between said leg openings (10),
(a) each said body (2, 3) consisting of a liquid-
permeable topsheet (4), a liquid-impermeable backsheet (5) and
a mass of absorbent material (6) sandwiched therebetween,
(b) each body (2, 3) having spaced apart side edges,
each side edge of said front body (2) being detachably joined
in overlapping relationship to a side edge of said rear body
(3) by a plurality of fastener means (13),
(c) each body (2, 3) having bottom edges, portions
of the bottom edges of said bodies (2,3) being spaced apart
from each other to form leg openings (10) and the remaining
portions of the bottom edges of said bodies (2,3) being bonded
together along a convexly curved welding line (8) to thereby
form a convexly curved crotch zone that extends between said
leg openings (10), said convexly curved crotch zone having an
apex (9) that is closer to said waist opening than are said
leg openings (10),
(d) said liquid-absorbent panel (15) having a
generally U-shaped configuration
(i) that is positioned in said crotch zone and
bonded to the interior surface of said pants,
(ii) the open ends of said U-shaped configuration
facing toward said waist opening,
Appeal No. 96-1366
Application 08/105,617
2 The examiner indicates in the answer that the obvious type double
patenting rejection is not before us because the copending
application has been abandoned (answer at page 2).
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(iii) the closed end of said U-shaped configuration
being mounted so as to float at a spaced distance of at least
10 mm away from said convexly curved welding line (8) of said
convexly curved crotch zone.
THE REFERENCES
The following references were relied on by the
examiner:
Glassman 4,022,210 May 10, 1977
Repke et al. (Repke) 4,205,679 Jun. 3, 1980
Karami et al. (Karami) 4,427,408 Jan. 24, 1984
THE REJECTION
Claim 3 stands rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
in which the applicants regard as the invention.
Claim 3 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Karami in view of Repke and Glassman.2
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Application 08/105,617
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Rather than reiterate the entire arguments of the
appellants and the examiner in support of their respective
positions, reference is made to appellants’ brief (Paper No.
11) and the examiner's answer (Paper No. 15) for the full
exposition thereof.
OPINION
In reaching our conclusions on the issues raised in
this appeal, we have carefully considered appellants’
specification and claims, the applied references and the
respective viewpoints advanced by the appellants and the
examiner. As a consequence of our review, we have made the
determination that the rejections of the examiner should be
sustained. Our reasons follow.
Turning first to the examiner’s rejection of claim 3
under 35 U.S.C. § 112, second paragraph, we initially note
that the purpose of the requirement stated in this paragraph
is to provide those who would endeavor in future enterprise to
approach the area circumscribed by the claims of the patent
with the adequate notice demanded by due process of law, so
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Application 08/105,617
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that they may more readily and accurately determine the
boundaries of protection involved and evaluate the possibility
of infringement and dominance. In re Hammack, 427 F.2d 1378,
166 USPQ 204 (CCPA 1970). The inquiry, as stated in In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971) is:
“...whether the claims do, in fact, set out
and circumscribe a particular area with a
reasonable degree of precision and
particularity.... [t]he definiteness of the
language employed must be analyzed--not in
a vacuum, but always in light of the
teachings of the prior art and of the
particular application disclosure as it
would be interpreted by one possessing the
ordinary level of skill in the pertinent
art.”
In the instant case, paragraph (a) of claim 3
recites:
each said body (2,3) consisting of a
liquid- permeable topsheet (4), a liquid-
impermeable backsheet (5) and a mass of
absorbent material (6) sandwiched
therebetween.
This paragraph, by its use of the phrase “consisting of”,
limits the structure of each body to a liquid-permeable
topsheet, a liquid-impermeable backsheet and a mass of
absorbent material sandwiched therebetween. See MPEP §
2111.03. However, the succeeding paragraphs of claim 3 recite
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Application 08/105,617
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that each body includes additional structure. For example,
paragraph (b) of claim 3 recites that each body also has a
plurality of fastener means and paragraph (c) recites that the
bottom edges of each body are bonded together along a convexly
curved welding line. These recitations of additional
structure are inconsistent with the recitation “consisting of”
in paragraph (a), and thus render indefinite the scope of
claim 3. We will therefore, sustain the examiner’s rejection
of claim 3 under 35 U.S.C. § 112, second paragraph.
We additionally note that, because of the use of
“consisting of” in paragraph (a), it is not clear from the
language of claim 3 whether the fastener means and the welding
line are included in the combination.
We turn next to the examiner’s rejection of claim 3
under 35 U.S.C. § 103 as being unpatentable over Karami in
view of Repke and Glassman. It is the examiner’s position
that Karami teaches all the claimed structure except for (1)
“each side edge of said front body... being detachably joined
in overlapping relationship to a side edge of said rear
body... by a plurality of fastener means” and (2) a “liquid-
absorbent panel” as set forth in subsection (d) of claim 3.
Appeal No. 96-1366
Application 08/105,617
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The examiner has cited Repke for teaching the
interchangability of detachably joined sides and seam sealed
sides. In regard to the recitation in claim 3 of a liquid
absorbent panel, the examiner states:
To employ an auxiliary pad as taught by
Glassman on the Karami et al device, if not
already, would be obvious to one of
ordinary skill in the art in view of the
recognition that such a feature would
provide easy removal but prevent
displacement during use and the
desirability of an insert pad in Karami et
al and such features in any disposable
absorbent article. [examiner’s answer pages
4-5].
The examiner further states that it would have been an obvious
matter of design choice to modify the Karami reference so that
the auxiliary panel floated at a “spaced distance of at least
10mm away from said convexly curved welding line.”
We agree with the analysis of the examiner and
further observe that an auxiliary panel placed in the pants
disclosed in Karami and depicted in Fig. 4 would inherently
float above welding line 32, as such auxiliary pad could not
be adhered directly to the welding line. In addition, Karami
discloses that the additional pads may be inserts (Col. 2,
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lines 62-63) which at least suggests that the additional pads
are not adhered to the welding line.
Appellants argue that there are advantages of the
floating panel design. We do not find this argument
persuasive because the advantages were not disclosed in
appellants’ disclosure. In fact appellants’ specification
states that it is also within the scope of the invention to
arrange the auxiliary panel so that the bottom of the panel is
in contact with the top surface of the diaper’s crotch zone
even in a curved state. (See specification at pages 6-7). In
addition, we agree with the examiner that the placement of the
auxiliary panel at a distance of at least 10 mm would have
been an obvious matter of design choice, as appellants’
specification attaches no particular significance to this
feature. Therefore, in our view the selection of a specific
distance at which the auxiliary panel floats above the welding
line is a matter of engineering design choice and does not
patentably distinguish the claimed invention over the prior
art. See In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA
1975).
The decision of the examiner is affirmed.
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Application 08/105,617
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No time period for taking subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-1366
Application 08/105,617
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FRED PHILPITT
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