Ex Parte MuraiDownload PDFPatent Trial and Appeal BoardJun 16, 201612452302 (P.T.A.B. Jun. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/452,302 12/23/2009 3713 7590 DLA PIPER LLP US 2000 A venue of the Stars Suite 400 North Tower 06/20/2016 LOS ANGELES, CA 90067-4704 FIRST NAMED INVENTOR Kosuke Murai 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 374955-000027 6588 EXAMINER HAIRELL, AUNDRIA C ART UNIT PAPER NUMBER 3778 NOTIFICATION DATE DELIVERY MODE 06/20/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): cliff.keyner@dlapiper.com laccusptomail@dlapiper.com reynaldo.gallardo@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KOSUKE MURAI Appeal2014-007146 Application 12/452,302 Technology Center 3700 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and JACQUELINE T. HARLOW, Administrative Patent Judges. PER CURIAM DECISION ON APPEAL 1 This Appeal under 35 U.S.C. § 134(a) involves claims 1-18 (App. Br. 1). Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellant identifies the Real Party in Interest as Daio Paper Corporation (App. Br. 2). Appeal2014-007146 Application 12/452,302 STATEMENT OF THE CASE Appellant's invention "relates to disposable diapers" that purport to be "for infants who produce watery or soft stool" (Spec. i-fi-f l, 23). Independent claims 1 and 16 are representative and reproduced in the Claims Appendix of Appellant's Appeal Brief. Claims 1--4 and 7-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination2 of Ebitsuka3 and Arteman. 4 Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Ebitsuka, Arteman, and Gubemick. 5 Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Ebitsuka, Arteman, and Daniels. 6 Claims 13-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Ebitsuka, Arteman, and Crecia. 7 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? 2 Examiner refers to Ebitsuka as the English equivalent of JP 2006/346209 A, published Dec. 28, 2006 (referred to by Examiner as "Daio" (Final Act. 3)). 3 Ebitsuka et al., US 2009/0131896 Al, published May 21, 2009. 4 Arteman et al., US 5,986, 167, issued Nov. 16, 1999. 5 Gubemick et al., US 2003/0125687 Al, published July 3, 2003. 6 Daniels et al., US 6,652,500 B2, issued Nov. 25, 2003. 7 Toyoyuki et al., JP 2002/291796, published Aug. 10, 2002 (hereinafter, and referred to by Examiner as "Crecia" (Final Act. 14)). 2 Appeal2014-007146 Application 12/452,302 FACTUAL FINDINGS (FF) We adopt Examiner's findings concerning the scope and content of the prior art (Final Act. 3-19), and repeat the following findings for emphasis. FF 1. Ebitsuka's Figure 1 is reproduced below: Figure 1 shows The absorbent article is sequentially provided with a surface sheet (1) facing the skin, allowing excremental liquid to permeate through it and constructed from a perforated sheet, a permeation sheet (2) allowing the excremental liquid to permeate through it, and an absorbent element (3) located on the rear surface side of the permeation sheet (2) and containing cotton- like pulp for holding the excremental liquid. Soft feces permeation speed Sl of the surface sheet (1) is higher than soft feces permeation speed S2 of the permeation sheet (2). Permeation apertures for excremental liquid are formed at least 3 Appeal2014-007146 Application 12/452,302 that portion of the apertured surface sheet (1) which faces an excretion section for receiving the excremental liquid and also formed at an excretion region including the portion. In the permeation apertures, an effective opening area of a single permeation aperture (H) is 3-7 5 mm2 and an opening area ratio is 10---80%. Further, a cotton-like pulp layer of the absorbent element (3) is exposed to the use surface side, and the absorbent element (3) is directly adjacent to and between the surface sheet (1), the permeation sheet (2), and the cotton-like pulp layer. (Ebitsuka Abstract; see also Final Act. 3--4.) FF 2. Ebitsuka's Figure 6 is reproduced below: Figure 6 shows The pattern of the fusion sections m, m . . . can be appropriately determined, but for example, a pattern in which 4 Appeal2014-007146 Application 12/452,302 multiple groups of fusion sections compnsmg a plurality of fusion sections m, m ... arranged in a V-shaped line, at different locations in the anteroposterior direction as well as in the width direction, are provided in parallel along the anteroposterior direction. (Ebitsuka if 96; see also Final Act. 3--4.) FF 3. Arteman suggests absorbent pads, and methods for fabricating absorbent pads, having improved fluid intake and preferential wicking in the longitudinal direction. The absorbent pads have patterns of apertures which encourage the preferential wicking. The apertures are characterized by size, spacing from each other, and depth of penetration into the absorbent pad, such that fluid intake rate is increased and distribution of fluid in the longitudinal direction is improved. Apertures are preferably spaced close enough to each other that aqueous liquid is preferentially transferred from aperture to aperture by capillary effect, along the length of the absorbent pad. Preferential wicking between apertures in the longitudinal direction increases the overall effective liquid absorption rate of the absorbent pad, thereby increasing overall effective liquid capacity of the respective absorbent article. (Arteman Abstract; see also Final Act. 5.) 5 Appeal2014-007146 Application 12/452,302 FF 4. Arteman's Figure 6 is reproduced below: i /:iO rj ·------' FlG, 6 Figure 6 shov"/S a serpentine pattern of apertures 20 extending along the length of pad 10. Four rows of apertures 20 are shown, each extending along a serpentine path. The pattern of apertures 20 shown in FIG. 6 thus resembles four alternating sine waves. Adjacent paths of apertures 20 alternate between repeating maximum distances "MXW" and repeating minimum distances "MW" between successive apertures in the respective adjacent paths. (Arteman 8: 11-18; see also Final Act. 5.) FF 5. Arteman suggests that "[t]he pattern of apertures 20 thus provides a path for enhanced wicking and distributing fluid in the longitudinal direction" (Arteman 10: 10-12; see also Final Act. 5). 6 Appeal2014-007146 Application 12/452,302 ANALYSIS The combination of Ebitsuka and Arteman: Appellant's independent claim 1, requires, inter alia, a large number of permeation holes are formed at predetermined intervals in the widthwise central region at least at an entire widthwise section in a front-back direction corresponding to the intergluteal cleft; in the left-side region at least at an entire widthwise section in the front-back direction corresponding to a section located on a left side of the top of the left gluteal region in the width direction; and in the right-side region at least at an entire widthwise section in the front-back direction corresponding to a section located on a right side of the top of the right gluteal region in the width direction, and no permeation hole is formed in the left-side intermediate region at least at a section corresponding to the top of the left gluteal region and in the right-side intermediate region at least in a section corresponding to the top of the right gluteal region. (See Appellant's claim 1.) Based on the combination of Ebitsuka and Arteman, Examiner concludes that, at the time of Appellant's invention was made, it would have been obvious to "arrange the apertures of Ebitsuka in the pattern taught by Arteman, because the pattern provided a path for enhanced wicking and distributing of fluid (Arteman, col[.]10, ln[.] 10-12)" (Ans. 5). We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Final Act. 3-19; Ans. 2-5; FF 1-5) and agree that the claims are obvious over Ebitsuka and Arteman. We address Appellant's arguments below. We recognize, but are not persuaded by Appellant's contention that the apertures 20 of Arteman are in the absorbent pad while the apertures "H" of the present invention are not in the absorbent pad at all but in the top sheet 30. Further and [i]mportantly, and 7 Appeal2014-007146 Application 12/452,302 as shown in Fig. 7, the so-called "apertures" 20 of Arteman do not extend completely through the absorbent pad. (App. Br. 15; see also Reply Br. 7-9.) Appellant also contends that "Arteman[] also teaches, at col. 6, lines 5-10, that apertures extending all the way through the absorbent pad are generally disfavored" and that "Arteman also clearly implies that a substantial number of through holes may destroy the utility of the absorbent pad" (App. Br. 16). Appellant argues that "in fact, Arteman[] is best understood as teaching away from the present claim 1" (id. at 18). Appellant contends that "[ t ]he resulting combination of Ebitsuka and Artem[]an would thus include a first pattern of apertures in the topsheet (Ebitsuka) and another pattern in the absorbent pad (Arteman[]). Thus, the combin[ation] does not arrive at the present invention at all" (id. at 17). As Examiner explains, "Examiner has combined the teaching of the pattern of Arteman and the topsheet holes already present in Ebitsuka. The structure of the holes of Arteman is not relevant in this case as only the pattern is being used" (Ans. 2; see also Ans. 3; FF 1-5). Examiner also explains that "the combination of Ebitsuka in view of Arteman as set forth by Examiner does not result in any holes placed through the absorbent pad" (Ans. 3). Moreover, Ebitsuka does not discredit, criticize, or disparage, using a pattern of holes as taught by Arteman (FF 1-2). 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 GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). We recognize, but are not persuaded by Appellant's contention that the "patter[n] of 'apertures' in Arteman are in a Serpentine pattern as shown in Arteman, Fig. 6; however, no such Se[r]pentine pattern is required by the 8 Appeal2014-007146 Application 12/452,302 present invention" (App. Br. 15-16; see also Reply Br. 10). Appellant's claims do not exclude a Serpentine pattern. Therefore, we agree with Examiner that "while the pattern present in Arteman may not match the pattern as shown in Applicant's figures, Arteman's pattern meets the claim language as set forth by Applicant" (Ans. 3). "[L ]imitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). See also In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims."). We recognize, but are not persuaded by Appellant's contention that "[f]urther, there would have been no motivation to combine Arteman with Ebitsuka in the manner suggested by the Office" (App. Br. 18; see also Reply Br. 10). We agree with Examiner that "[i]n this case, it would have been obvious to one skilled in the art to arrange the apertures of Ebitsuka in the pattern taught by Arteman, because the pattern provided a path for enhanced wicking and distributing of fluid (Arteman, col[.] 10, ln[.] 10-12)" (Ans. 4). "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious." KSR Int 'l Co. v. Teleflex Inc., 550 U.S 398, 417 (2007). We recognize, but are not persuaded by Appellant's contention that Those ordinarily skilled in the art understand that absorbent pads and top sheets have completely different structures with completely different functions and requiring different operating characteristics. As such, one of ordinary skill in the art would not conclude that structures and inventions relating absorbent pads necessarily apply to top sheets. (App. Br. 18; see also Reply Br. 10-13.) Appellant argues that 9 Appeal2014-007146 Application 12/452,302 In Arteman[], the effect of wicking is to "generally promote wicking of fluid in the longitudinal direction, by preferentially passing liquid from the one aperture to the second aperture by a capillary effect." The purpose of the top sheet is to pass material through the apertures and not to pass liquid from one aperture to another as taught by Arteman[]. Indeed, the permeation holes of the present invention are intended to allow watery stools to pass through, and one of ordinary skill would not wish to design a diaper in which watery stools are passed in a longitudinal direction from one aperture to another, thereby increasing contact of watery stools with the wearer[.] Properly viewed, Arteman[] actually teaches away from the claimed invention. (App. Br. 21.) As Examiner explains, "Examiner agrees that a topsheet and absorbent layers can have different purposes within a[ n] absorbent article. However, in this case, it is known in the art that preferential wicking in the longitudinal direction of a topsheet is a desired effect" (Ans. 4). Further, Examiner explains previously, "Examiner has combined the teaching of the pattern of Arteman and the topsheet holes already present in Ebitsuka. The structure of the holes of Arteman is not relevant in this case as only the pattern is being used" (id. at 2; see also Ans. 3; FF 1-5), and that "the combination of Ebitsuka in view of Arteman as set forth by Examiner does not result in any holes placed through the absorbent pad" (Ans. 3). Therefore, we are not persuaded by Appellant's contention that Arteman teaches away from the claimed invention because the Examiner does not modify Arteman based on Ebitsuka's teachings. See Medichem, S.A. v. Rolabo, S.L. 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("[O]bviousness must be determined in light of all the facts, and there is no rule that a single reference that teaches away will mandate a finding of nonobviousness. Likewise, a given course of action often has simultaneous advantages and disadvantages, 10 Appeal2014-007146 Application 12/452,302 and this does not necessarily obviate motivation to combine.") A combination of references may be obvious even if the combination eliminates a benefit of one of the references. See In re Urbanski, 809 F.3d 1237, 1242 (Fed. Cir. 2016). See also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ("[A]ttomey argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness"). Appellant contends that "[t]he areas of the disposable diaper identified in claim 1, such as 'corresponding to the right gluteal region' based on the state the product is suitably fitted to human body based on the designed size of the disposable diaper" (App. Br. 22; see also Reply Br. 14). We agree with Examiner that the combination of Ebitsuka in view of Arteman would result in the claimed structure. Especially in view of the fact that, as disclosed by Applicant, sizing of the diaper and the wearer will vary, obviously resulting in a certain number of wearer's buttocks aligning with the diaper in the manner claimed during (Ans. 4--5.) See also In re Van Geuns, 988 F.2d at 1184 and In re Self, 671 F.2d at 1348. The combination of Ebitsuka, Arteman, and Gubernick: Regarding the rejection of claims 5 and 6, Appellant contends that "Gubemick does not cure the deficiencies of already noted with respect to Ebitsuka and Arteman" (App. Br. 23). Having found no deficiency in the combination of Ebitsuka and Arteman as it relates to Appellant's claim 1, we are not persuaded by Appellant's contention to the contrary. The combination of Ebitsuka, Arteman, and Daniels: Regarding the rejection of claims 10-12, Appellant contends that "Daniels does not cure the deficiencies of already noted with respect to 11 Appeal2014-007146 Application 12/452,302 Ebitsuka and Arteman" (id. at 24 ). Having found no deficiency in the combination of Ebitsuka and Arteman as it relates to Appellant's claim 1, we are not persuaded by Appellant's contention to the contrary. The combination of Ebitsuka, Arteman, and Crecia: Regarding the rejection of claims 13-18, Appellant contends that "Crecia does not cure the deficiencies of already noted with respect to Ebitsuka and Arteman" (id.). Appellant also contends that As with claim 1, Claim 16 requires " ... a large number of permeation holes are formed at predetermined intervals ... and no permeation hole is formed in the left-side intermediate region at least at a section corresponding to the top of the left gluteal region and in the right-side intermediate region at least in a section corresponding to the top of the right gluteal region" as required by claim 1. (Id.) Having found no deficiency in the combination of Ebitsuka and Arteman of as it relates to Appellant's claim 1, we are not persuaded by Appellant's contention to the contrary. CONCLUSION OF LAW The preponderance of the evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over the combination of Ebitsuka and Arteman is affirmed. Claims 2--4 and 7-9 fall with claim 1. The rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over the combination of Ebitsuka, Arteman, and Gubemick is affirmed. 12 Appeal2014-007146 Application 12/452,302 The rejection of claims 10-12 under 35 U.S.C. § 103(a) as unpatentable over the combination of Ebitsuka, Arteman, and Daniels is affirmed. The rejection of claims 13-16 under 35 U.S.C. § 103(a) as unpatentable over the combination of Ebitsuka, Arteman, and Crecia is affirmed. Because they were not separately argued, claims 17 and 18 fall with claim 16. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 13 Copy with citationCopy as parenthetical citation