Ex Parte Ishikawa

Board of Patent Appeals and Interferences

Jan 29, 2008

09864836 (B.P.A.I. Jan. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HIDEYUKI ISHIKAWA
__________

Appeal 2008-0027
Application 09/864,836
Technology Center 3700
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Decided: January 29, 2008
__________

Before ERIC GRIMES, NANCY J. LINCK, and JEFFREY N. FREDMAN,
Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
disposable diaper, which the Examiner has rejected under 35 U.S.C. §
102(b), 35 U.S.C. § 103(a) and 35 U.S.C. § 112, first paragraph. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2008-0027
Application 09/864,836

BACKGROUND
“The disposable diaper of prior art enables the topsheet and the
backsheet to be stretched so as to offer good fitness around the wearer's
waist as the diaper is put on the wearer's body” (Specification 1-2).
According to the Specification, due to stretching of the topsheet and
backsheet, “there is an anxiety that sideway leak of excretion might occur
along the elastic members associated with the leg-openings” (Specification
2).
Appellant teaches that it is “an object of this invention to provide[] a
disposable diaper designed so that the wearer's crotch and waist regions can
be covered by an elastically stretchable covering member without
deteriorating a desired effect of preventing excretion leakage from occurring
around wearer's leg” (Specification 2).
The Claims
Claims 1-6 and 8-9 are on appeal.
The claimed subject matter is reflected in representative claims 1, 5,
and 8, which read as follows:
1. A disposable diaper comprising:
an elastically stretchable covering member for covering a diaper
wearer's crotch and waist regions;
a liquid-pervious sheet having a skin contactable surface for
contacting with skin of said diaper wearer;
a liquid-absorbent core member sandwiched between said
liquid-pervious sheet and said covering member;
discrete elastic members provided along transverse side edges
of said diaper to extend circumferentially along leg-openings that are
defined when the diaper is put on the diaper wearer;
said covering member consisting of an elastically stretchable
first layer and an inelastically stretchable second layer formed of a
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plurality of continuous fibers, said continuous fibers being fixed to
said elastically stretchable first layer in bonding zones spaced apart
from each other so that a ratio of L1/D1, where L1 is a length of said
continuous fibers extending between a first pair of said bonding zones
in a centrally located first zone on said covering member and D1 is a
distance in a straight line between said first pair of bonding zones in
said first zone of said covering member is larger than a ratio of L2/D2,
where L2 is a length of said continuous fibers extending between a
second pair of said bonding zones in a second zone on said covering
member and D2 is a distance in a straight line between said second
pair of bonding zones in said second zone of said covering member,
whereby said covering member is more easily stretched in a direction
away from the skin contactable surface in said first zone than in said
second zone of said covering member, and said first zone being
adjacent said liquid-absorbent core member and at least substantially
coextensive with said liquid-absorbent core member, so that pressure
exerted on said covering member by said liquid-absorbent core
member will stretch the first zone in said direction of the skin
contactable surface without exerting any pressure on said discrete
elastic members.

5. The diaper according to Claim 1, wherein said elastically
stretchable first layer is formed from a liquid-impervious sheet and
lies inside said second layer.

8. The diaper according to Claim 1, wherein said elastically
stretchable first layer is formed of a nonwoven fabric made of
crimped fibers.

The Issues
The Examiner relies on the following prior art references to show
unpatentability:
Divo et al., European Patent 650,714, May 3, 1995 (hereafter “Divo”).
Serbiak et al., U.S. Patent 5,846,232, December 8, 1998 (hereafter
“Serbiak”).
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Morman et al., U.S. Patent 4,655,760, April 7, 1987 (hereafter
“Morman”).
Estey et al., U.S. Patent 5,853,881, December 29, 1998 (hereafter
“Estey”).
The rejections as presented by the Examiner are as follows:
A. Claims 1-6 and 8-9 stand rejected under 35 U.S.C. § 112, first paragraph
as failing to comply with the written description requirement.
B. Claims 1-3 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Divo. Claims 1-3, 5, and 6 stand rejected as obvious under 35 U.S.C. §
103(a) over Divo, Serbiak and Morman.
C. Claims 4 and 8-9 stand rejected under 35 U.S.C. § 103(a), as being
obvious over Divo, Serbiak, Morman and Estey.

Appellant has provided separate arguments for claims 1, 5, and 8.
Accordingly, we limit our discussion to claims 1, 5, and 8. Pursuant to 37
C.F.R. § 41.37(c)(1)(vii)(2006), claims 2-4 and 9 will stand or fall with
claim 1 and claim 6 will stand or fall with claim 5.
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A. § 112, first paragraph rejection of claims 1-6, 8 and 9
The Examiner argues that the “last three lines of claim 1 claim the
exact opposite of what is originally described, i.e. claims stretching toward
the skin contactable surface rather than away therefrom” (Answer 7).
The claim as presented in Appellant’s appeal brief states “so that
pressure exerted on said covering member by said liquid-absorbent core
member will stretch the first zone in said direction of the skin contactable
surface” (Claim 1).
Appellant argues that the claim was amended to recite “in said
direction away from the skin contactable surface” (App. Br. 7, underlining in
original).
It is clear that the Examiner and Appellant agree that the claim should
read differently than “in said direction of the skin contactable surface” and
the issue is whether Appellant has amended the claim to include the “away
from” language. The April 24, 2006 amendment was not entered by the
Examiner as noted in the May 9, 2006 advisory action and therefore the
claim is presented before us without the amendment.
Since the Appellant has not challenged the merits of the 35 U.S.C. §
112, first paragraph rejection, we affirm this rejection.

B. § 102(b) over Divo or § 103(a) over Divo, Serbiak and Morman
The Examiner’s position is that Divo discloses a disposable diaper
that has all of the required elements of claim 1 (see Answer 7). In particular,
the Examiner notes that Divo teaches a “backsheet consisting of the
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composite elastic member wherein only parts of the composite are activated
or extensible while others are not” (Answer 8).
Appellant contends that unlike “appellant's invention which requires
the centrally located range A (first zone) to be have a larger L/D ratio that
range B (second zone), Divo et al. depicts attaching the composite elastic
member 37 to waist regions 34 and/or the areas 27 defining the leg openings
(Col. 17, lines 31-35)” (App. Br. 10).
The Examiner also argues that Divo teaches providing elasticity to the
back sheet and that Serbiak and Mormon disclose that “it is known in the
diaper art to provide elasticity to a backsheet consisting of a composite
elastic member wherein only the transverse middle zone part is extensible
while the remainder is not. Such structure is for the purposes of better fit and
comfort” (Answer 8).
Appellant responds that “the characteristics and nature of the
extensible and stretchable composite sheets of Serbiak et al. and Morman et
al. are taught as being such that any force or pressure applied to the
respective absorbent core would affect force or pressure on any adjacent leg
elastic members” (App. Br. 13). Appellant argues that this interaction fails
to comply with claim 1, which requires that stretching occur “without
exerting any pressure on said discrete elastic members”.
In view of these conflicting positions, we frame the issue before us as
follows:
(1) At the time the invention was made, would Divo alone have
taught one of ordinary skill in the art elastic panels that stretch more easily
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in a direction away from the skin contacting surface without exerting
pressure on the leg elastic members?
(2) At the time the invention was made, would the combination of
Divo, Serbiak and Morman have taught or suggested to one of ordinary skill
in the art elastic panels that stretch more easily in a direction away from the
skin contacting surface without exerting pressure on the leg elastic
members1?
Findings of Fact
1. Divo disclosed a disposable diaper with an elastic waist (see
Divo, col. 16, ll. 5-19).
2. Divo discloses a backsheet which may comprise a composite
elastic member (see Divo, col. 6, ll. 31-39).
3. Divo teaches that the backsheet 26 covers the crotch region
(Divo, figure 13).
4. Divo teaches “an absorbent core 28 positioned between the
topsheet 24 and the backsheet 26” (Divo, col. 12, ll. 30-31).
5. Divo discloses elastic side members including side cuffs and
side panels (see Divo, col. 15, ll. 42-58 and col. 17, lines 19-30).
6. Divo teaches that the covering member can be composed of
elastic and nonelastic layers fixed to one another (Divo, col. 3, ll. 29-45).
7. Divo teaches that the “topsheet or backsheet comprising or
consisting of a composite elastic member according to the invention, can be
provided with regions of different extensibility by selectively activating

1 We note that Appellant and the Examiner agree that the claim contains an
error as discussed in the written description rejection (supra at p. 5).
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parts of the topsheet and/or backsheet while leaving other parts un-activated
and hence unelongatable” (Divo, col. 6, ll. 32-39).
8. Divo teaches that the backsheet can be “elasticated in specific
areas” (Divo, col. 18, l. 6).
9. Divo teaches
a training pants, which comprises the composite
elastic member 37 in side panels 53, 55, around the
margins of the leg openings 61, 63, in the crotch area
59 and in the waist region 65. The amount of
extensibility and the elasticity in the different
elasticated areas of training pants 50 can easily be
adjusted by varying the number and/or spacing of the
parallel activation lines.

(Divo, col. 17, ll. 36-44.)

10. Serbiak teaches that “any embodiment shown may include
extensible zones 30 with an elastic layer 28 and/or extensible zones 30
without an elastic layer 28” (Serbiak, col. 12, ll. 27-30).
11. Serbiak teaches multilayer materials for the outer cover which
comprise elastic films (Serbiak, col. 6, ll. 44-67).
12. Serbiak teaches elastic films in the outer cover that are
impervious to liquids (Serbiak, col. 7, ll. 18-20).
13. Morman suggests that the absorbent pad should “permit
expansion and contraction of the latter to provide a smooth and comfortable
fit on the wearer” (Morman, col. 8, ll. 44-46).
14. Morman teaches an elastic region located in the transverse
middle of the disposable diaper (Morman, figure 4).
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15. Morman teaches that the stretch may occur in only one
direction (Morman, col. 9, ll. 59-65).

Discussion of Claim 1 - § 102(b) over Divo
In analyzing claim 1, we must first interpret the meaning of the
limitation
said elastically stretchable first layer in bonding zones
spaced apart from each other so that a ratio of L1/D1, where
L1 is a length of said continuous fibers extending between a
first pair of said bonding zones in a centrally located first
zone on said covering member and D1 is a distance in a
straight line between said first pair of bonding zones in said
first zone of said covering member is larger than a ratio of
L2/D2, where L2 is a length of said continuous fibers
extending between a second pair of said bonding zones in a
second zone on said covering member and D2 is a distance
in a straight line between said second pair of bonding zones
in said second zone of said covering member.

(Claim 1.) This limitation only requires that the L1/D1 ratio is larger than the
L2/D2 ratio. However, no specific lengths or distances for L1, D1, L2, or D2
are required by claim 1. In fact, no specific orientation is required for these
elements in claim 1, so they may be vertical, horizontal or any other
orientation. The Specification does not impose any specific orientation or
structural requirements to these ratios (see Specification 9).
We therefore interpret this comparison of the L1/D1 ratio to the L2/D2
ratio as requiring that the elastically stretchable layer achieve the claim goal
of a covering member that “is more easily stretched in a direction away from
the skin contactable surface in said first zone than in said second zone of
said covering member . . . without exerting any pressure on said discrete
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elastic members” (Claim 1). See, e.g., In re Hyatt, 211 F.3d 1367, 1372
(Fed. Cir. 2000) (“[D]uring examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification.”).
We find that Divo teaches a disposable diaper comprising all of the
required elements of claim 1 including the stretching away from the skin
contactable surface (see FF 1-9). In particular, Divo teaches a disposable
diaper that has selectively activatable elastic regions meeting the ratio
requirements of claim 1 (FF 7-8). Divo specifically discloses a composite
elastic member in the crotch area, which will result in stretching away from
the skin contactable surface without exerting pressure on the leg elastic
members (see FF 9).
We reject Appellant’s argument that Divo does not teach the structure
of claim 1. As we discussed above, no specific structure is required by
claim 1. Appellant argues the “configuration of the first and second zones
and their particular L/D ratios and stretchabilities in relationship to the
discrete elastic members that are provided adjacent the leg-opening provides
a unique, structurally-related function in appellant's invention” (App. Br.
10). We are not persuaded, because the particular L/D ratios and their
stretchabilities do not require any specific structure other than the region of
different extensibility, an element taught by Divo (see FF 7-9).

Discussion of Claims 1 and 5 - § 103(a) over Divo, Serbiak, and Morman
Having found Divo anticipates claim 1, we turn to the next rejection
of the Examiner: obviousness of claims 1 and 5 over Divo, Serbiak, and
Morman.
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On this record, Appellant has modified the backsheet of a disposable
diaper to permit a region of selective extensibility that is taught by Divo (see
FF 1-9). The Examiner indicates that while Divo teaches a region of
selective extensibility in the backsheet, Divo does not specifically place this
region in the transverse middle part (see Answer 8). The Examiner relies
upon Serbiak and Morman to suggest the desirability of placing a selectively
extensible region in the middle of the diaper (Answer 8, FF 10, 13-15).
Morman teaches the placement of extensible layers in the middle of a
disposable diaper (FF 14-15). Morman provides a specific reason for
incorporating elastic materials into the disposable diaper (FF 13). On this
record, Morman and Serbiak provide additional teachings which, when
combined with Divo, independently render the claim obvious (see FF 1-15).
Such a combination is merely a “predictable use of prior art elements
according to their established functions.” KSR, 127 S. Ct. at 1740.
Accordingly, we find no error in the Examiner’s prima facie case of
obviousness, and conclude that claim 1 would have been obvious to an
artisan of ordinary skill in the art at the time the invention was made in view
of the combination of Divo, Serbiak and Morman (see FF 1-15).
We reject Appellant’s arguments that Serbiak and Morman are
insufficient because they “are taught as being such that any force or pressure
applied to the respective absorbent core would affect force or pressure on
any adjacent leg elastic members” (App. Br. 15). Divo teaches this element
as discussed above (see FF 7-9). Therefore, in combination of Divo, Serbiak
and Morman render this element obvious.
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With regard to the obviousness of claim 5, which requires that the
covering member consists of a liquid impervious, elastically stretchable
layer inside an inelastically stretchable layer, the Examiner notes that Divo
“only discloses such elastic layer as being elastic films or nonwovens and
coextensive with the second layer initially and the desire that the backsheet
be liquid impervious and have a clothlike appearance” (Answer 10). The
Examiner notes that Serbiak teaches multilayer outer covers with elastic that
is impervious to liquid (Answer 10, FF 11-12).
When there is motivation
to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good
reason to pursue the known options within his or her
technical grasp. If this leads to anticipated success, it is
likely the product not of innovation but of ordinary skill and
common sense. In that instance the fact that a combination
was obvious to try might show that it was obvious under
§ 103.
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007). This reasoning
is applicable here. The skilled artisan would have had reason to apply the
solution of Serbiak in optimizing the outer cover of the disposable diapers of
Divo (see FF 1-12).
For the foregoing reasons, we affirm the rejection of claims 1 and 5
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Divo, Serbiak and Morman. Claims 2, 3, and 6 fall together with claims 1
and 5.

C. § 103(a) over Divo, Serbiak, Morman, and Estey
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The Examiner’s position is that Estey teaches crimped nonwoven
fibers and that there is “interchangeability of elastic films and nonwovens of
noncrimped fibers with elastic nonwoven webs of crimped fibers and the
interchangeability of polyethylene nonwoven nonelastic for polypropylene
or propylene copolymer nonelastic nonwovens” (Answer 9).
Appellant argues that the crimping of Estey “is not at all related to the
crimping taught by Divo” (App. Br. 16). Appellant also argues that
“crimping the fibers to bulk the composite members of Divo et al. would
hinder the desire to impart elastical elongatability inasmuch as if the
individual crimped fibers were stretched to become uncrimped or less
crimped or deformed, they would not be effectively activated as required by
Divo” (App. Br. 16).
In view of these conflicting positions, we frame the issue before us as
follows:
Would the ordinary artisan have considered it obvious to interchange
crimped fibers as taught by Estey for the uncrimped fibers of Divo?
Findings of Fact
16. Estey teaches “[n]onelastic materials 12 used in this invention
may be microfiber webs, such as those made by spunbound and meltblown
processes and the microfibers may be crimped or uncrimped” (Estey, col. 8,
ll. 37-41).
17. Estey teaches “[e]lastic materials used in this invention may be
microfiber webs, such as nonwoven webs made by the spunbound and
meltblown processes and the microfibers may be crimped or uncrimped”
(Estey, col. 9, ll. 22-26).
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Discussion
In KSR, the Supreme Court reasoned that
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability.

KSR v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007).
Applying the KSR standard of obviousness to the Examiner’s findings
and our findings of fact, we conclude that the substitution of crimped fibers
in nonwoven fabric represents a “simple substitution of one known element
for another.” KSR, 127 S. Ct. at 1740. We find express discussion of their
equivalence in Estey, who notes “microfibers may be crimped or
uncrimped” (Estey, col. 9, ll. 26, FF 16-17).
Appellant has not provided any evidence to rebut the Estey evidence
of equivalence but simply argues that the reasons for crimping differ from
those of Divo. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney's argument in a brief cannot take the place of evidence.”)
We also reject Appellant’s argument that “crimping the fibers to bulk
the composite members of Divo et al would hinder the desire to impart
elastical elongability” (App. Br. 16). There is no language in Divo which
directly or indirectly states or indicates that crimping is undesirable. There
is express teaching in Estey that elastic fibers can be crimped (FF 17). Like
our appellate reviewing court, “[w]e will not read into a reference a teaching
away from a process where no such language exists.” DyStar Textilfarben
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GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364
(Fed. Cir. 2006).
For the foregoing reasons, we affirm the rejection of claim 8 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Divo,
Serbiak, Morman, and Estey. Claims 4 and 9 fall together with claim 8.

SUMMARY
We affirm the rejection of claim 1 as anticipated by Divo; the
rejection of claims 1 and 5 as obvious in view of Divo, Serbiak and
Morman; and the rejection of claim 8 as obvious in view of Divo, Serbiak,
Morman and Estey. Pursuant to § 41.37(c)(1)(vii)(2006), we also affirm the
35 U.S.C. § 103(a) rejection of claims 2-4, 6 and 9, as these claims were not
argued separately. We also affirm the 35 U.S.C. § 112, first paragraph,
rejection of claims 1-6, 8 and 9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

AFFIRMED

dm

Michael S. Gzybowski
Butzel Long
350 Main Street
Ste 300
Ann Arbor, MI 48104
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