Ex Parte Matsuda et alDownload PDFBoard of Patent Appeals and InterferencesMar 5, 200910985402 (B.P.A.I. Mar. 5, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte TOSHIYUKI MATSUDA, KENJI FUJIMOTO, and HIROSHI NAKAHATA __________ Appeal 2008-49801 Application 10/985,402 Technology Center 3700 __________ Decided:2 March 5, 2009 __________ Before TONI R. SCHEINER, DEMETRA J. MILLS, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. 1 Oral Hearing held February 12, 2009. 2 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-4980 Application 10/985,402 DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to disposable diapers. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Statement of the Case Background “Many pull-on diapers use elastic elements secured in an elastically contractible condition in the waist and leg openings” (Spec. 1, ll. 17-18). The Specification notes that “in order to insure full elastic fit about the leg and the waist such as is provided with durable undergarments, the leg openings and waist opening are encircled with elasticized bands of rubber or other materials positioned along the curve of the opening” (Spec. 1, ll. 18- 21). The Specification teaches that “[w]hile trimming the longitudinal side of the exterior member allows [one] to form a desired shape of curved leg opening, it requires an additional process for trimming and wastes raw materials” (Spec. 1, ll. 28-30). The Claims Claims 1-4 and 5-10 are on appeal. We will focus on claims 1, 6, and 7, which are representative and read as follows: 1. A disposable pull-on garment comprising: an absorbent main body comprising a liquid pervious topsheet, a liquid impervious backsheet and an absorbent core disposed therebetween, and having longitudinal side edges, transverse end edges, a front waist panel, a back waist panel and a crotch panel between the front waist panel and the back waist panel; and a ring-like elastic belt joined to the backsheet in the front waist panel and the back waist panel of the absorbent 2 Appeal 2008-4980 Application 10/985,402 main body to form one waist opening and two leg openings, the ring-like elastic belt not extending into the crotch panel of the absorbent main body, wherein the ring-like elastic belt comprises a front belt and a back belt each having laterally opposing side panels, a central panel between the side panels, a transverse waist border, and a longitudinally opposing transverse abdomen border, the waist border being disposed longitudinally beyond the respective end edge of the absorbent main body, each of the front belt and the back belt comprises a belt layer and a belt elastic material joined to the belt layer, the belt elastic material comprising a transverse waist elastic material disposed adjacent to the waist border and a transverse side elastic material disposed only in each of the side panels adjacent to the abdomen border laterally outboard of the respective waist panel of the absorbent main body and not overlapping the respective waist panel, the respective waist panel not being overlapped by any transverse elastic material between the side elastic material disposed in the side panels, the waist elastic material of the back belt comprising a transverse waist border elastic material disposed between the waist border of the back belt and the transverse end edge of the absorbent main body adjacent to the back belt, and the belt elastic material is provided with the belt layer such that a leg opening angle formed by the transverse abdomen border and each of the longitudinal side edges of the absorbent main body is greater when the disposable pull- on garment is in a contracted configuration than when the disposable pull-on garment is in an uncontracted configuration. 6. The disposable pull-on garment of Claim 2 wherein the belt elastic material is provided with the belt layer such that a leg opening angle formed by the side elastic material and the 3 Appeal 2008-4980 Application 10/985,402 respective leg elastic material is greater when the disposable pull-on garment is in the contracted configuration than when the disposable pull-on garment is in the uncontracted configuration. 7. The disposable pull-on garment of Claim 6 wherein the side elastic material is disposed to extend generally in the transverse direction and the leg elastic material is disposed to extend generally in the longitudinal direction when the disposable pull-on garment is in the uncontracted configuration. The prior art The Examiner relies on the following prior art references to show unpatentability: Yeater et al. U.S. 2002/0138065 A1 Sep. 26, 2002 Rollag WO 94/09736 May 11, 1994 The issues A. The Examiner rejected claims 1-4 and 6-10 under 35 U.S.C. § 112, second paragraph as indefinite (Ans. 4). B. The Examiner rejected claims 1-4, 6, and 7 under 35 U.S.C. § 102(b) as being anticipated by Yeater (Ans. 4-8). C. The Examiner rejected claims 8-10 under 35 U.S.C. § 103(a) as being obvious over Yeater and Rollag (Ans. 8-10). D. The Examiner rejected claims 1-4 and 6-10 under the judicially created doctrine of obviousness type double patenting over copending Application 10/833,574 and Yeater (Ans. 10-11). 4 Appeal 2008-4980 Application 10/985,402 A. 35 U.S.C. § 112, second paragraph rejection The Examiner finds that a “positive structural antecedent basis for ‘side panels adjacent the abdomen border laterally outboard of the respective waist panel’ on lines 25-27 [of claim 1] should be defined” (Ans. 4). Appellants contend that “the referenced recitation is actually a description of the disposition of the transverse side elastic material 100 comprised by each of the front belt 84 and the back belt 86, not an introduction of a new structural element” (App. Br. 4). Appellants contend that “it is completely clear that the referenced recitation is not an introduction of any new structural element, such as non-existent side panels different from the side panels 82 introduced previously. Instead, it is a description of the disposition of the transverse side elastic material” (App. Br. 4). In view of these conflicting positions, we frame the definiteness issue before us as follows: Did the Examiner err in finding that the phrase “side panels adjacent to the abdomen border laterally outboard of the respective waist panel” was indefinite? Findings of Fact (FF) 1. Claim 1 states that the disposable garment comprises a “ring- like elastic belt comprises a front belt and a back belt each having laterally opposing side panels” (Claim 1). 2. Claim 1 further defines the side panels, stating that “transverse side elastic material disposed only in each of the side panels adjacent to the 5 Appeal 2008-4980 Application 10/985,402 abdomen border laterally outboard of the respective waist panel of the absorbent main body” (Claim 1). Principles of Law The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). In Miyazaki, the Board stated that rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite. Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008). Analysis We agree with Appellants that the recitation of “side panels adjacent to the abdomen border laterally outboard of the respective waist panel of the absorbent main body” (Claim 1) is definite. In the Answer, the Examiner appears to require antecedent basis for the entire phrase describing the side panels (see Ans. 11). While we apply a lower standard than that of the courts regarding indefiniteness, there is specific antecedent basis for the recitation of “side panels adjacent to the abdomen border laterally outboard of the respective waist panel of the absorbent main body” in the earlier claimed “ring-like 6 Appeal 2008-4980 Application 10/985,402 elastic belt comprises a front belt and a back belt each having laterally opposing side panels” (Claim 1). The Examiner has not identified multiple plausible claim constructions or other indicia of indefiniteness (see Ans. 4, 11). Conclusion of Law The Examiner erred in finding that the phrase “side panels adjacent to the abdomen border laterally outboard of the respective waist panel” was indefinite. B. 35 U.S.C. § 102(b) rejection over Yeater The Examiner finds that Yeater teaches a disposable garment as claimed, including the limitation of different leg opening angles when the disposable garment is contracted or uncontracted (see Ans. 4-5). Regarding the leg opening angle, the Examiner finds that Yeater teaches a belt layer such that a leg opening angle is formed by the transverse abdomen border of the side panel and each of the longitudinal side edges of the absorbent main body when the disposable pull-on garment is in a contracted configuration and when the disposable pull-on garment is in an uncontracted configuration (Ans. 5-6). Alternatively, the Examiner finds that “the transverse waist border/waist elastic material is contracted more or tightened more by the elastic material then the transverse abdomen border/side elastic material to create the claimed angles in the two configurations” (Ans. 6). Appellants contend that “there is no evidence that any of Yeater's figures show Yeater's garment 10 in a contracted configuration. There is likewise no evidence that two different configurations relative to contraction 7 Appeal 2008-4980 Application 10/985,402 are shown in the Yeater's figures” (App. Br. 6). Regarding the Examiner’s alternative position, Appellants contend that “Yeater's description of the relative resistance to extension that was referenced in the Final Office Action is not indicative of a difference in leg opening angles in the contracted and uncontracted conditions” (App. Br. 9). In view of these conflicting positions, we frame the anticipation issue before us as follows: Did the Examiner err in finding that Yeater teaches a disposable garment where the “leg opening angle formed by the transverse abdomen border and each of the longitudinal side edges of the absorbent main body is greater when the disposable pull-on garment is in a contracted configuration than when the disposable pull-on garment is in an uncontracted configuration”? Findings of Fact 3. The Examiner finds that Yeater teaches a disposable garment 10 [which] has an absorbent main body, i.e. at least the portion of 12 coextensive with 32 . . . and a ring-like elastic belt 14, 16 wherein the absorbent main body comprises a liquid pervious topsheet, i.e. at least the portion of 34 coextensive with 32, a liquid impervious backsheet, i.e. at least the portion of 36 coextensive with 32, and an absorbent core 32 disposed therebetween, longitudinal side edges, e.g. the portions of 12 coextensive with the longitudinal side edges of 32 . . . transverse end edges, i.e. at least a portion of 18 and the edge adjacent 40, a front waist panel adjacent 14, a back waist panel adjacent 16 and a crotch panel therebetween. The belt is “joined” . . . to the backsheet of the front waist panel and the back waist panel of the absorbent main body adjacent 14 and 16 to form a waist opening between 14 and 16 and two leg openings 8 Appeal 2008-4980 Application 10/985,402 between 14, 16 and 12 and does not extend into the crotch panel of the absorbent main body. The ring-like elastic belt includes a front belt 14 and a back belt 16 each having side panels adjacent 22 and a central panel therebetween and each having a transverse waist border 26 or 24 and a transverse abdomen border 30 or 28 and the waist border being disposed longitudinally beyond the respective end edge of the respective waist panel . . . . Each of the belts includes a belt layer, at least one of 34, 36, and belt elastic material, 44, 46 or 48, 50. The belt elastic material includes transverse waist elastic material disposed adjacent to the waist border 44, 48 and transverse side elastic material 46, 50 disposed only in the side panels adjacent the abdomen border 28, 30 laterally outboard of the respective waist panel and not overlapping such panel, see Figure 9. The respective waist panel is also not overlapped by any transverse material between the side elastic material disposed in the side panels of the respective belt. The waist elastic material of both belts comprises waist border elastic material, i.e. at least the elastic member closest to edge 24, 26 of members collectively referred to as 44 or 48, and that of the back belt is disposed between the waist border thereof and the end edge of the absorbent main body adjacent thereto (Ans. 4-5). 4. The Examiner finds that Yeater teaches that the belt elastic material is provided with the belt layer such that a leg opening angle is formed by the transverse abdomen border of the side panel and each of the longitudinal side edges of the absorbent main body when the disposable pull- on garment is in a contracted configuration and when the disposable pull-on garment is in an uncontracted configuration, see Figures 1, and 7-9. (Ans. 5-6.) 9 Appeal 2008-4980 Application 10/985,402 5. Figure 11 of the Specification is reproduced below: “Figure 11 is a schematic front view of the pull-on garment in its contracted condition for comparison” (Spec. 3, ll. 31-32). 6. The Specification teaches regarding figure 11 that when rectangular members are used in construction of the disposable garment, the “angular appearance of the garment is primarily caused by the transverse abdomen border 90 extending transversely straight and the leg opening angle 130 being a right angle even after the garment is contracted” (Spec. 11, ll. 5- 7). 7. Figure 10 of the Specification is reproduced below: 10 Appeal 2008-4980 Application 10/985,402 “Figure 10 is a schematic top plan view of the pull-on diaper 20 in its flat uncontracted condition” (Spec. 10, ll. 24-25). 8. The Specification teaches that the transverse abdomen border 90 of the side panel 82 inclines with respect to the transverse direction such that the leg opening angle 130 formed by the transverse abdomen border 90 and the longitudinal side portion 114 is greater when the diaper 20 is in a contracted configuration as shown in Figure 12 than when the diaper 20 is in an uncontracted configuration as shown in Figure 10. (Spec. 11, ll. 13-17.) 11 Appeal 2008-4980 Application 10/985,402 9. Figure 12 of the Specification is reproduced below: “Figure 12 shows a front view of the pull-on diaper 20 . . . in its contracted configuration” (Spec. 11, ll. 12-13). 10. The Specification teaches that the “seam 32 is inclined with respect to the longitudinal direction and the transverse waist border 88 is curved when the diaper 20 is contracted. These shape the front and back belt 84, 86 to increase a real garment-like appearance when the diaper 20 is contracted” (Spec. 11, ll. 22-24). 11. The Specification teaches that the “difference of the leg opening angle 130 between when the diaper is uncontracted and when the diaper is contracted may be between 10 degree and 50 degree and preferably between 20 degree and 40 degree” (Spec. 11, ll. 26-29). 12 Appeal 2008-4980 Application 10/985,402 12. Figure 1 of Yeater is reproduced below: “FIG. 1 is a partially cut-away view . . . with a two-piece construction, with the crotch fully flattened and the waist band and waist region separated” (Yeater 2 ¶ 0020). 13. Figure 8 of Yeater is reproduced below: “FIG. 8 is a planar view . . . in the fully-flattened position” (Yeater 2 ¶ 0027). 14. Yeater teaches that “the stomach elastics 46, 50 may resist extension of the front and rear waist bands 16, 14 less than the waist elastics 13 Appeal 2008-4980 Application 10/985,402 44, 48 . . . Providing different stretch properties between the waist elastics 44, 48 and stomach elastics 46, 50 may be done by using materials with different spring constants” (Yeater 4-5, ¶ 0056). Principles of Law “A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference.” In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994); see Karsten Manufacturing Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001) (“Invalidity on the ground of ‘anticipation’ requires lack of novelty of the invention as claimed ... that is, all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.”). Claim terms are interpreted using the broadest reasonable interpretation in light of the Specification. 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.”). Also see In re Morris, 127 F.3d 1048, 1054-56 (Fed. Cir. 1997). (“Absent an express definition in their specification, the fact that appellants can point to definitions or usages that conform to their interpretation does not make the PTO's definition unreasonable when the PTO can point to other sources that support its interpretation.”). Analysis Yeater teaches a disposable garment with an absorbent main body, liquid pervious topsheet, liquid impervious backsheet, absorbent core, and ring-like elastic belt (FF 3). We apply the broadest reasonable interpretation 14 Appeal 2008-4980 Application 10/985,402 consistent with the Specification to the terms “contracted configuration” and “uncontracted configuration.” Hyatt, 211 F.3d at 1372. As shown in figure 10 of the Specification, the phrase “uncontracted configuration” is reasonably interpreted as a configuration of the disposable garment in a flat, planar arrangement (FF 7, 8). As shown in figure 12 of the Specification, the phrase “contracted configuration” is reasonably interpreted as a configuration of the disposable garment while being worn or in an opened configuration (FF 9-11). The evidence does not demonstrate that Yeater expressly or inherently teaches a leg opening angle formed by the transverse abdomen border and the side edges which is greater when the garment is in a contracted configuration than an uncontracted configuration (FF 12-14). In arguing that Yeater expressly teaches the required leg opening angle, the Examiner relies upon the disclosure in figures 1 and 8 of Yeater (see FF 12-13). There is no dispute that figure 8 shows a 90 degree angle and that figure 8 represents the disposable garment “in the fully-flattened position” which would represent the “uncontracted configuration” of claim 1 (Yeater 2 ¶ 0027; FF 13). However, the reliance on figure 1 (or equivalent figure 9) is misplaced since figure 1 is not in the “contracted configuration” as Yeater notes that “FIG. 1 is a partially cut-away view . . . with the crotch fully-flattened and the waist band and waist regions separated” (Yeater 2 ¶ 0020; FF 12). Thus, figure 1 does not reasonably satisfy the “contracted configuration” requirement of claim 1 since the crotch is fully flattened, unlike the “contracted configuration” where the crotch would be opened to permit entry of the wearer’s body (FF 9-11). 15 Appeal 2008-4980 Application 10/985,402 Additionally, while the figure 8 of Yeater reasonably shows a 90 degree leg opening angle, since figure 1 of Yeater is an angled view, the figures do not clearly show whether the leg opening angle in figure 1 of Yeater is greater than the leg opening angle in figure 8 of Yeater (FF 12-14). Thus, even if we accept the Examiner’s interpretation of figure 1 of Yeater as showing something other than a “fully contracted state” (Ans. 13), the disclosure of Yeater is insufficient to demonstrate that the leg opening angle in figure 1 is greater than the leg opening angle in figure 8 of Yeater. In arguing that Yeater inherently teaches the required leg opening angle, the Examiner contends that “there is sufficient factual evidence to conclude that the claimed function . . . of the claimed belt layer . . . [that] a greater angle is created in the contracted configuration than in the uncontracted configuration, would also be inherent in the belt layer/combination” of Yeater (Ans. 6). The Examiner relies upon Yeater’s statement that the stomach and waist elastics may have different stretch properties (FF 14). We agree with Appellants that simply because Yeater discloses stomach and waist elastics which have different stretch properties, this description “does not reveal their respective uncontracted dimensions, their respective contracted dimensions, or their respective changes in dimension when contracting from an uncontracted configuration to a contracted configuration” (Reply Br. 10). There is no evidence which reasonably demonstrates that the different stretch properties of the elastic bands of Yeater necessarily result in different leg opening angles. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (“Inherency, however, may not be 16 Appeal 2008-4980 Application 10/985,402 established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). Conclusions of Law The Examiner erred in finding that Yeater teaches a disposable garment where the “leg opening angle formed by the transverse abdomen border and each of the longitudinal side edges of the absorbent main body is greater when the disposable pull-on garment is in a contracted configuration than when the disposable pull-on garment is in an uncontracted configuration.” C. 35 U.S.C. § 103(a) over Yeater and Rollag The Examiner rejected claims 8-10 under 35 U.S.C. § 103(a) as obvious over Yeater and Rollag (Ans. 8-10). We reversed the anticipation rejection of claim 1 over Yeater. Since claims 8-10 are dependent upon claim 1, and therefore incorporate the limitations of claim 1, we reverse the rejection of claims 8-10 over Yeater and Rollag as the Examiner did not explain how the additional references compensated for the deficiencies in Yeater. D. Obviousness Double Patenting over copending application 10/833,574 and Yeater The Examiner rejected claims 1-4 and 6-10 under the judicially created doctrine of obviousness type double patenting over copending Application 10/833,574 and Yeater (Ans. 10-11). We reversed the anticipation rejection of claim 1 over Yeater. Since the double patenting rejection over copending application 10/833,754 relies upon the inherency argument which was not found persuasive with regard to 17 Appeal 2008-4980 Application 10/985,402 the Yeater anticipation rejection, we also reverse the double patenting rejection. SUMMARY In summary, we reverse the rejection of claims 1-4 and 6-10 under 35 U.S.C. § 112, second paragraph, as being indefinite. We reverse the rejection of claims 1-4, 6, and 7 under 35 U.S.C. § 102(b) as being anticipated by Yeater. We reverse the rejection of claims 8-10 under 35 U.S.C. § 103(a) as obvious over Yeater and Rollag. We reverse the rejection of claims 1-4 and 6-10 under the judicially created doctrine of obviousness type double patenting over copending Application 10/833,574 and Yeater. REVERSED cdc THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI OH 45202 18 Copy with citationCopy as parenthetical citation