Ex Parte Nakakado et al

Board of Patent Appeals and Interferences

Aug 24, 2010

11180170 (B.P.A.I. Aug. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MASAKI NAKAKADO, YUZO ICHIURA,
SATOSHI TANAKA, and IKUO TACHIBANA
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Appeal 2009-012613
Application 11/180,170
Technology Center 1700
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Before CHUNG K. PAK, TERRY J. OWENS, and KAREN M. HASTINGS
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 5-20. Claims 1-4, which are all of the other pending
claims, stand withdrawn from consideration by the Examiner. We have
jurisdiction under 35 U.S.C. § 6(b).

The Invention

Appeal 2009-012613
Application 11/180,170

The Appellants claim a method for making a disposable worn article
such as a diaper. Claims 5 and 12 are illustrative:
5. A method for producing a disposable worn article, comprising
the steps of: forming a slack portion in a web; placing at least one elastic
member so that the elastic member extends in a running direction of the web
and across the slack portion, and fixing at least a portion of the elastic
member; cutting off the elastic member at the slack portion; and attaching an
absorbent to the web at the slack portion.

12. A method for producing a disposable worn article, comprising
the steps of: forming a slack portion in a web while rotating the web with a
plurality of movable sections, the plurality of movable sections guided
circumferentially by a guide member; placing at least one elastic member so
that the elastic member extends in a running direction of the web and across
the slack portion, and fixing at least a portion of the elastic member; and
cutting off the elastic member at the slack portion.

The References
Hirsch 4,171,239 Oct. 16, 1979
Tachibana 2002/0046802 A1 Apr. 25, 2002
Umebayashi 6,554,815 B1 Apr. 29, 2003
Sanders 6,730,188 B2 May 4, 2004
Schmitz EP 0 974 323 A1 Jan. 26, 2000
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 5
and 9 over Schmitz in view of Sanders; claims 6, 7, 10, 11 and 19 over
Schmitz in view of Sanders and Umebayashi; claim 8 over Schmitz in view
of Sanders, Umebayashi and Tachibana; claims 12, 16 and 20 over Schmitz
in view of Hirsch; claims 13, 14, 17 and 18 over Schmitz in view of Hirsch
and Umebayashi; and claim 15 over Schmitz in view of Hirsch, Umebayashi
and Tachibana.
OPINION
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Appeal 2009-012613
Application 11/180,170

We reverse the rejections.
Claims 5-11 and 19
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, attaching an absorbent to a web at
a slack portion?
Findings of Fact
Schmitz forms a continuous web having adhered discrete lengths of
elastic by applying a pair of elastic strips (200) to a web (100) at application
points (104), forming slack portions (web loops 101) in the web (100), and
cutting the elastic strips (200) at a cutting station (106) adjacent to each web
loop (101) (¶ 0017; Fig. 3). Schmitz describes a typical disposable diaper
structure and discloses that discrete strips of elastic on a web can be used to
form diaper elastic leg cuffs (¶¶ 0002, 0012).
Sanders discloses an absorbent (50) in the crotch portion (312) of a
disposable diaper (col. 17, ll. 29, 41-44; Fig. 2).1
Analysis
The Appellants argue that “Schmitz merely refers to forming web
loops 101 (e.g., slack portions), and there is no mention of what portion of
the finished article the web loops 101 comprise” (Br. 10) and that “there is
nothing in either reference that provides any indication that the slack region
of Schmitz would be the crotch region of a finished diaper.” See id. The

1 We need not address the other references because they are not relied upon
by the Examiner for any disclosure that pertains to the above-stated issue
(Ans. 6-7, 9-10).
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Appeal 2009-012613
Application 11/180,170

Appellants provide a sketch of a diaper wherein an absorbent has on each of
its lengthwise side’s one of Schmitz’s lengths of elastic (Fig.5) which
appears to correspond to a leg elastic (Br. 12; Reply Br. 4).
The Examiner argues (Ans. 12):
The location of the absorbent in Sanders is the crotch portion for
collecting waste. This portion is found in the areas of the web
between leg elastics. As shown in Figure 5, it is also the location of
the slack portion of Schmitz. Therefore, one of ordinary skill in the
art would recognize by the teachings in Sanders that the placement of
the absorbent for forming an absorbent article, would correspond to
the same area between elastic members, which is also the slack
portion of Schmitz.

Schmitz’s slack portion is between the rear end of one length of
elastic and the front end of the next length of elastic (Fig. 5). If an absorbent
were placed in that slack portion the result would not be Sanders’ structure
(Fig. 2). Each length of elastic would be pointing away from the absorbent
and would not appear to correspond to any portion of a diaper. It appears
that to obtain Sanders’ structure (Fig. 2) one of Schmitz’s lengths of elastic
(Fig. 5) would have to be placed along each lengthwise edge of the
absorbent as shown in the Appellants’ sketch (Br. 12).
Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, attaching an absorbent to a web at
a slack portion.

Claims 12-18 and 20
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Appeal 2009-012613
Application 11/180,170

Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, forming a slack portion in a web
while rotating the web with a plurality of movable sections guided
circumferentially by a guide member?
Findings of Fact
Hirsch discloses adhesive tape strips (25) comprising substantially flat
wings (32, 33) which are folded into a U shape about a hinge line (34)
(col. 2, ll. 28, 40-42; Fig. 7). A release tape liner strip (41) is applied to the
adhesive surface of one of the wings (33) and is held against a drum (18, 19)
by vacuum (col. 3, ll. 54-57; Figs. 1, 12). The strips (25) are cut by a
knife (51) to form diaper tape segments (17) (col. 3, ll. 47, 49-51). Due to
the resilience of the tape segment (17) at the hinge line (34), once a tape
segment (17) has left contact with the knife (51) the tape wing (32) that is
not held against the drum (18, 19) by vacuum tends to undesirably spring
away from the drum (18, 19) (col. 3, ll. 54-60). A hollow guide tube (72) for
each drum (18, 19) is used to keep the wings (32, 33) together until the tape
segment (17) has been pressed against the underside of a pad web (15)
(col. 4, ll. 26-44; Fig. 1).2

Analysis

2 We need not address the other references because they are not relied upon
by the Examiner for any disclosure that pertains to the above-stated issue
(Ans. 8-11).
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Appeal 2009-012613
Application 11/180,170

The Appellants argue that Hirsch’s guide tube (72) which acts to keep
tape pieces in a folded state has no relevance to Schmitz’s continuous
web (100) (Br. 14-15).
The Examiner argues that one of ordinary skill in the art would have
used Hirsch’s hollow guide tube (72) to prevent Schmitz’s web from being
removed from the web support plates (20; ¶ 0013; Fig. 1) (Ans. 13-14).
Establishing a prima facie case of obviousness of an invention
comprising a combination of known elements requires “an apparent reason
to combine the known elements in the fashion claimed.” KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner has provided a
reason why one of ordinary skill in the art would have used Hirsch’s guide
tubes (72) to hold Schmitz’s web (100) onto the web support plates (20), but
the Examiner has not established that the reason would have been apparent
to one of ordinary skill in the art from the applied prior art. Hirsch uses
vacuum to prevent each tape segment (17) from separating from the
drum (18, 19) (col. 3, ll. 1-9, 49-51) and uses the hollow guide tubes (72)
only to prevent the tape segment (17)’s wing (32) that is not held by vacuum
to the drum (18, 19) from springing away from the lined wing (33) that is
held by vacuum to the drum (18, 19) (col. 4, ll. 22-34). It appears that what
would have been apparent to one of ordinary skill in the art from the
references would have been to hold Schmitz’s web (100) onto the support
plates (20) by use of Hirsch’s technique for holding the lined wing (33) onto
the drum (18, 19), i.e., vacuum, not by use of Hirsch’s technique for
preventing the other wing (32) from springing away from the lined
wing (33).
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Appeal 2009-012613
Application 11/180,170

Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, forming a slack portion in a web
while rotating the web with a plurality of movable sections guided
circumferentially by a guide member.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 5 and 9 over Schmitz
in view of Sanders, claims 6, 7, 10, 11 and 19 over Schmitz in view of
Sanders and Umebayashi, claim 8 over Schmitz in view of Sanders,
Umebayashi and Tachibana, claims 12, 16 and 20 over Schmitz in view of
Hirsch, claims 13, 14, 17 and 18 over Schmitz in view of Hirsch and
Umebayashi, and claim 15 over Schmitz in view of Hirsch, Umebayashi and
Tachibana are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

tc

MARK D. SARALINO (GENERAL)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE, NINETEENTH FLOOR
CLEVELAND, OH 44115-2191
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