Ex Parte Suzuki et alDownload PDFBoard of Patent Appeals and InterferencesSep 27, 201111315278 (B.P.A.I. Sep. 27, 2011) Copy Citation 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. App App whic 1:4-6 Char eal 2010-0 lication 11 The inve h is adapte .) Figure m’s inven 01714 /315,278 ntion relat d for abso 1 (reprodu tion. Figure 1 d The es to a dis rption and ced below epicts a d 3 Invention posable w containm ) illustrate isposable earing arti ent of urin s an embo wearing a cle, e.g., a e and fece diment of rticle. diaper, s. (Spec. Uni- App App a fro 12:3 artic laid wais dista sepa (Id. a elast zone 15:2 end recei Figu Claim 2 Augu eal 2010-0 lication 11 As show nt waist re -6.) A liqu le. (Id. at over topsh t regions. l zones 40 ration dim t 14:12-15 ic member s 40 and o 0-16:2.) A sheet 45, d ving space re 2 (repro Fi of Claim 1 s App’x) 1. A Figure 2 st 14, 200 01714 /315,278 n in the fi gion 21, a id-perviou 12:13-15.) eet 29 and (Id. at 13 with dista ension gra :14.) The 48 which perates to s a result istal zones with a po duced bel gure 2 de the dispo is represen : disposabl is reprodu 7. gure above crotch reg s topshee A pair of extend wi :10-13.) T l edges 43 dually inc article fur is directly pull those of the con 40 rise up cket form ow2) illust picts a pa sable wea tative and e wearing ced from 4 , disposab ion 22, an t 29 define liquid- im thin the fr he barrier separated reases from ther inclu bonded to distal zon figuration above top ed between rates the fo rtially cut ring artic reproduce article, com the replace le wearing d a rear w s a body-s pervious b ont waist, sheets ea from one rear end des an end rear end es toward and operat sheet 29 the topsh rmed spa away sect le shown d below ( prising: ment draw article 20 aist region ide surfac arrier she crotch, an ch include another su 42 to fron sheet 45 c 42 and als one anothe ion of elas so as to for eet and en ce 46 and p ional view in Figure App. Br. 2 ing sheet A include 23. (Id. a e 27 of the ets 34 are d rear elasticize ch that the t end 41. ontaining o to distal r. (Id. at ticized m a feces d sheet 45 ocket 52. 1. 4-25 filed s t d . 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 App not c shee below barri back conf migr that toge the d 16-1 or sh eal 2010-0 lication 11 onfigured ts together We agre and show er cuff 39 Coles de sheet 26 (F iguration, ating to ba its absorbe ther by the The Exa esirability 7.) Those eets of the 01714 /315,278 or positio to form th e with Uni the emb . The f views scribes tha ig. 9) or t the cuff fo ck waist e nt articles barrier cu miner poin of formin references articles th ned so as t e pocket r -Charm. C odiments o igures abo of an abs t its barrie opsheet 24 rms a barr dge 40. (I include an ff to form ts to Fore g pockets generally at are sep 10 o draw po equired by oles’ Fig f its absor ve depict orbent ar r cuff may (Fig. 10) ier to prev d.) Coles y separate a pocket. man, Huff or pouche describe a arated from rtions of se its claims ures 9 and bent articl cross-sec ticle. be attach . (Coles 1 ent liquid , however, d barrier s man and L s in absorb rticles wh one anot parated b . (App. B 10 are rep e which in tional ed either t 1:1-22.) I or solid w does not d heets that awson as ent article ich includ her which arrier r. 19-20.) roduced corporate o n each aste from isclose are drawn teaching s. (Ans. e portions forms 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 Copy with citationCopy as parenthetical citation