Ex Parte Suzuki et al

Board of Patent Appeals and Interferences

Sep 27, 2011

11315278 (B.P.A.I. Sep. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/315,278 12/23/2005 Sachiyo Suzuki 2038-396 1542
22429 7590 09/27/2011
LOWE HAUPTMAN HAM & BERNER, LLP
1700 DIAGONAL ROAD
SUITE 300
ALEXANDRIA, VA 22314
EXAMINER
ZALUKAEVA, TATYANA
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
09/27/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SACHIYO SUZUKI
and YOSHITAKA MISHIMA
____________________

Appeal 2010-001714
Application 11/315,278
Technology Center 3700
____________________

Before JAMESON LEE, MICHAEL P. TIERNEY, and
JOSIAH C. COCKS, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001714
Application 11/315,278

2
A. STATEMENT OF THE CASE
The real party in interest UNI-CHARM Corporation (“Uni-Charm”)
appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 5, 7,
8, 12, 13, and 20-23. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

References Relied on by the Examiner
Lawson 4,695,278 Sep. 22, 1987
Foreman 4,738,677 Apr. 19, 1988
Huffman et al. (“Huffman”) 5,275,590 Jan. 4, 1994
Roe et al. (“Roe”) 5,653,703 Aug. 5, 1997
Coles et al. (“Coles”) 6,103,952 Aug. 15, 2000

EP 0 955 028 (“EP ‘028”) Nov. 10, 1999

The Rejections on Appeal
The Examiner rejected claims 1, 2, 5, 7, 8, 12, 13, and 20-23 under 35
U.S.C. § 103(a) as unpatentable over EP ‘028 and Foreman or alternatively
over EP ‘028, Roe, and Foreman.
The Examiner rejected claims 1, 2, 5, 7, 8, 12, 13, and 20-23 under 35
U.S.C. § 103(a) as unpatentable over Coles, Foreman, Huffman, and
Lawson.1

1 The Examiner’s Answer does not cite Lawson in the statement of the
grounds of rejection appearing on page 14. However, it is apparent from the
substantive content of the rejection that the Examiner also relies on the
teachings of Lawson in supporting the rejection.
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01714
/315,278
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01714
/315,278
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Appeal 2010-001714
Application 11/315,278

5

a front waist region;

a rear waist region;

a crotch region extending between said waist regions;

a pair of longitudinally opposite ends extending in a transverse
direction of said article;

a pair of transversely opposite lateral margins extending in a
longitudinal direction of said article;

opposite body-side and garment-side surfaces;

a liquid-absorbent core at least in said crotch region for
absorption and containment of bodily fluids, said core being
sandwiched between the body-side surface and the garment-side
surface;

a pair of liquid-impervious barrier sheets laid on the body-side
surface in at least said crotch region among said front and rear waist
regions and said crotch region, said barrier sheets comprising (a)
proximal zones lying along said lateral margins of said article so as to
extend in the longitudinal direction, (b) elasticized distal zones
extending in the longitudinal direction and normally biased to rise up
above said body-side surface, and (c) longitudinally opposite front and
rear ends bonded to said body-side surface; and

an elasticized end sheet positioned toward said rear ends and
between said distal zones, and adapted to pull said distal zones closer
to each other, wherein said end sheet comprises (1) opposite lateral
segments that are directly bonded to said distal zones when said
elasticized end sheet is being stretched in the transverse direction so
that said distal zones are pulled towards each other in the transverse
direction by the so bonded elasticized end sheet and (2) an
intermediate segment extending in the transverse direction between
said opposite lateral segments and being free of direct attachment to
said barrier sheets;
Appeal 2010-001714
Application 11/315,278

6

wherein a dimension, by which distal edges of said distal zones
are spaced from each other in the transverse direction, increases
gradually in a direction from said rear ends toward said front ends of
said liquid-barrier sheets; and

wherein said end sheet extends in the transverse direction
without obstructing, in use, movement of body discharges on the
body-side surface in the longitudinal direction from said crotch region
to the front waist region, and further comprises:

a rear portion which, in a region rearward of said core
and along a rear end of said rear waist region, is sandwiched
between and bonded directly to (i) the rear ends of the barrier
sheets and (ii) a top sheet defining said body-side surface; and

a front portion which spans a gap between the distal
edges of said distal zones and defines, together with the distal
zones of the barrier sheets, a top wall of a pocket that opens
forwardly for receiving fecal material in use.
B. ISSUE
Did the Examiner correctly determine that the prior art of record
teaches a disposable wearing article including an elasticized end sheet which
is positioned between separated barrier sheets and operates to draw the
sheets toward one another such that the barrier sheets and end sheet form a
forwardly open pocket at the rear of the article?
C. FINDINGS AND ANALYSIS
The Examiner rejected claims 1, 2, 5, 7, 8, 12, 13, and 20-23 over EP
‘028 taken with Foreman alone or alternatively over EP ‘028 taken with Roe
and Foreman. The Examiner also rejected those claims over Coles,
Foreman, Huffman, and Lawson. Claim 1 and 21 are independent claims.
The remaining claims on appeal are ultimately dependent on one of those
Appeal 2010-001714
Application 11/315,278

7
independent claims. Each of claims 1 and 21 is drawn to a wearing article
and include features that track those discussed above in connection with
Uni-Charm’s Figures 1 and 2. We focus on the claim features directed to the
configuration and operation of an elasticized end sheet and distal zones of
separated barrier sheets in forming a forwardly open pocket beneath the end
sheet for receiving discharged fecal material.
The rejections based on EP ‘028
The Examiner relied on EP’028 as disclosing a wearing article 1 with
“an elasticized end sheet, e.g. 21.” (Ans. 6:19.) EP ‘028 discloses a diaper 1
which includes a “plurality of protuberances” 21 extending transversely
across a base structure 5 of the diaper. (EP ‘028 col. 2, ll. 33-37.)
Uni-Charm argues that protuberances 21 lack multiple features and
characteristics of the elasticized end sheet required in its claims 1 and 21. In
particular, Uni-Charm contends that the protuberances: (1) are not an “end”
sheet as they are positioned at a middle portion of diaper 1 and not at its end
(App. Br. 12:20-24); (2) fail to extend in a transverse direction “without
obstructing, in use, movement of body discharges on the body-side surface
in the longitudinal direction” as claimed (id. at 12:25-28); (3) are not
disclosed as being “elasticized” for pulling distal zones of separated barrier
sheets towards one another (id. at 13:9-12; 14:20-22); (4) do not include a
rear portion that is “sandwiched between and bonded directly to (i) the rear
ends of the barrier sheets and (ii) a topsheet defining said body-side surface”
(id. at 13:18-23); and, finally, (5) do not include a front portion that together
with the barrier sheets forms “a top wall of a pocket that opens forwardly for
receiving fecal material in use” (id. at 14:6-8).
Appeal 2010-001714
Application 11/315,278

8
We agree with Uni-Charm that the record does not support the
Examiner’s position that protuberances 21 constitute the claimed elasticized
end sheet. With respect to Uni-Charm’s first numbered contention noted
above, as shown in Figure 1 of EP ‘028, the protuberances are arranged
towards the middle portion of diaper 1. The protuberances are thus not
reasonably viewed as a sheet positioned at an “end” of the diaper.
With respect to the second numbered contention noted above, the
disclosed purpose of the protuberances is to “prevent loose fecal material
from flowing forward.” (EP ‘028 Abstract.) That disclosure runs counter to
the requirement of the claims that the end sheet operates “without
obstructing” movement of body discharges contained in the disposable
wearing article.
With respect to the third numbered contention noted above, while
some portions of EP ‘028’s diaper is described as elastic, the Examiner has
not directed us to any portion of that reference establishing that the
protuberances 21 are “elasticized” structures. The purpose of those
protuberances is to inhibit movement of fecal material in the diaper. It is not
evident that that purpose requires the protuberances necessarily be made of
elastic material or include elastic components.
With respect to the fourth numbered contention noted above, although
EP’028 discloses separated “barrier cuffs 22” (id. at col. 2, ll. 41-43), as seen
in Figure 1, protuberances 21 are clearly spaced from the rear ends of those
cuffs. The protuberances are not reasonably viewed as being “sandwiched
between and bonded directly to” a top sheet and the rear ends of barrier
sheets.
Appeal 2010-001714
Application 11/315,278

9
Lastly, with respect to the fifth numbered contention noted above, EP
‘028 does disclose a space beneath barrier cuffs 22 in which protuberances
21 reside. However, the Examiner does not explain how those
protuberances can reasonably be viewed as operating in conjunction with the
barrier cuffs to draw the cuffs together and form a top wall of a resulting
pocket that opens forwardly.
We have carefully reviewed the Examiner’s Answer and the
Examiner’s reliance on the teachings of Foreman and Roe. We do not see
that the additional teachings of those references account for the deficiencies
discussed above. On this record, it is not apparent that the combined
teachings of EP ‘028, Foreman, and Roe render the subject matter of claims
1 and 21 obvious. For the foregoing reasons, we do not sustain the rejection
of claims 1 and 21 as unpatentable over EP ‘028 and Foreman or EP ‘028,
Roe and Foreman.
Claims 2, 5, 7, 8, 12, 13, 20, 22, and 23 are ultimately dependent on,
and include all the limitations of, one of claims 1 and 21. We also do not
sustain the rejection of the dependent claims.
The rejection based on Coles
As with the rejection discussed above, the claimed characteristics,
arrangement, and function of the elasticized end sheet is at issue in the
Examiner’s rejection involving Coles. Coles discloses an absorbent article,
which, in one embodiment, includes an “elasticized stand-up barrier cuff
39.” (Coles 10:52-54.) The Examiner equated that cuff with the claimed
elasticized end sheet. (Ans. 15:12.) Uni-Charm urges that even if Coles’
elasticized cuff 39 generally forms an elasticized sheet, that cuff in Coles is
App
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Coles de
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01714
/315,278
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Appeal 2010-001714
Application 11/315,278

11
spaces or pockets for receiving bodily discharges. The references also
generally show the use of elastic elements. However, in none of the
references is the pocket formed and defined by the particular positioning of
an elasticized end sheet at a rear portion of an absorbent article and which
draws together distal ends of spaced barrier sheets.
A patent examiner assessing the patentability of a claimed invention
must take care when considering the teachings of the prior art to refrain from
impermissible reliance on hindsight using the inventor’s own disclosure in
concluding obviousness. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992).
We have fully considered the Examiner’s proposed rejection but are not
persuaded that the teachings of Coles, Foreman, Huffman, and Lawson
adequately establish the obviousness of claims 1, 2, 5, 7, 8, 12, 13, and 20-
23. We do not sustain the Examiner’s rejection.
D. CONCLUSION
The Examiner incorrectly determined that the prior art of record
teaches a disposable wearing article including an elasticized end sheet which
is positioned between separated barrier sheets and operates to draw the
sheets toward one another such that the barrier sheets and end sheet form a
forwardly open pocket at the rear of the article.
E. ORDER
The rejection of claims 1, 2, 5, 7, 8, 12, 13, and 20-23 under 35 U.S.C.
§ 103(a) as unpatentable over EP ‘028 and Foreman or alternatively over EP
‘028, Roe, and Foreman is reversed.
Appeal 2010-001714
Application 11/315,278

12
The rejection of claims 1, 2, 5, 7, 8, 12, 13, and 20-23 under 35 U.S.C.
§ 103(a) as unpatentable over Coles, Foreman, Huffman, and Lawson is
reversed.

REVERSED