Ex Parte Matsuda et al

Board of Patent Appeals and Interferences

Mar 5, 2009

10985402 (B.P.A.I. Mar. 5, 2009)

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
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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
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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).
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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
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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
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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
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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
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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.)
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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:
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“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.)
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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).
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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
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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
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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).
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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
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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
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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

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