Ex Parte Tani

Board of Patent Appeals and Interferences

Jan 19, 2011

10673258 (B.P.A.I. Jan. 19, 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.
10/673,258 09/30/2003 Koichiro Tani 4635-002 2067
22429 7590 01/19/2011
LOWE HAUPTMAN HAM & BERNER, LLP
1700 DIAGONAL ROAD
SUITE 300
ALEXANDRIA, VA 22314
EXAMINER
HAND, MELANIE JO
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
01/19/2011 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 KOICHIRO TANI
____________________

Appeal 2009-007488
Application 10/673,258
Technology Center 3700
____________________

Before JENNIFER D. BAHR, LINDA E. HORNER and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007488
Application 10/673,258

2
The Appellant appeals under 35 U.S.C. § 134 from the decision of the 1
Examiner finally rejecting claims 1, 3-5, 7-10, 12, 13, 15, 17, 19, 20 and 22-2
26. The Examiner rejects each of these claims under 35 U.S.C. § 103(a) as 3
being unpatentable over Robles (US 6,004,306, issued Dec. 21, 1999). We 4
have jurisdiction under 35 U.S.C. § 6(b). 5
We REVERSE. 6
Claims 1 and 24 are independent. Claim 1 recites: 7
1. A disposable diaper, comprising: 8
a diaper body having a top sheet, a back 9
sheet, and an absorbent body enclosed between the 10
top sheet and the back sheet; 11
a pair of side flaps fixed to the diaper body; 12
and 13
a pair of fasteners; 14
wherein the diaper body further has a pair of 15
side edges extending in a longitudinal direction of 16
the diaper body; 17
wherein each of the side flaps extends in a 18
width direction of the diaper body and has an inner 19
end being disposed inboard of a respective one of 20
the side edges of the diaper body and an outer end 21
being disposed outboard of the respective side 22
edge of the diaper body, and each of the fasteners 23
is fixed to the outer end of one of the side flaps; 24
and 25
wherein each of the side flaps is fixed to the 26
diaper body at 27
a fixing part being arranged adjacent 28
and along an inner edge of the inner end of 29
the respective side flap, 30
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Application 10/673,258

3
a first joint part located at an upper 1
part of the inner end of the respective side 2
flap, and 3
a second joint part located at a lower 4
part of the inner end of the respective side 5
flap, the lower part being spaced in the 6
longitudinal direction from the upper part, 7
and the fixing part being spaced, in the 8
width direction of the diaper body, from the 9
joint parts by a bonding-free region in which 10
the side flap is free of direct attachment to 11
the diaper body; and 12
wherein a pulling force, which occurs when 13
the fastener fixed to each of the side flaps is pulled 14
transversely outwardly in use, is dispersed into 15
first and second tensile forces directed towards the 16
first and second joint parts, respectively, and 17
concentrated around leg and waist openings of the 18
diaper for enhanced fit of the diaper on a wearer in 19
use. 20
Claim 24 also recites a disposable diaper including side flaps. Each of 21
the side flaps is fixed to the diaper body at a fixing part being arranged 22
adjacent and along an inner edge of the inner end of the respective side flap, 23
a first joint part located at an upper part of the inner end of the respective 24
side flap, and a second joint part located at a lower part of the inner end of 25
the respective side flap. The fixing part is spaced, in the width direction of 26
the diaper body, inwardly from the joint parts by a bonding-free region in 27
which the side flap is free of direct attachment to the diaper body. 28
Claims 15 and 17 each recite methods of adjusting fitting of a 29
disposable diaper about a waist and legs of a wearer. The preambles of 30
claims 15 and 17 recite performing the methods on diapers “wherein an 31
inner end of the side flap is fixed to an inner portion of the diaper body, and 32
Appeal 2009-007488
Application 10/673,258

4
either or both of a side edge upper end area and a side edge lower end area 1
of the side flap are joined to the diaper body at an outer portion of the diaper 2
body, the outer portion being spaced in a width direction of the diaper body 3
from the inner portion.” 4
Ordinarily, all words in a claim must be considered in determining 5
whether the subject matter of the claim would have been obvious. In re 6
Wilson, 424 F.2d 1382, 1385 (CCPA 1970). “Where a patentee defines a 7
structurally complete invention in the claim body and uses the preamble only 8
to state a purpose or intended use for the invention,” however, the preamble 9
may not limit the claim. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 10
289 F.3d 801, 808 (Fed. Cir. 2002)(quoting Rowe v. Dror, 112 F.3d 473, 11
478 (Fed. Cir. 1997)). Claims 15 and 17 each use both their preamble and 12
their claim body to define their respective methods. The body of each claim 13
includes steps expressly performed on the side flaps, first joint part and 14
second joint part recited in that claim’s preamble. Since the structural 15
language in the preamble of claim 15 and claim 17 is “necessary to give 16
meaning to the claim and properly define” the claimed subject matter, claims 17
15 and 17 are limited to methods performed on the structures recited in their 18
preambles. See Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 19
896 (Fed. Cir. 1984). 20
Robles discloses a disposable diaper. (Robles, col. 4, ll. 9-11.) 21
Robles’ disposable diaper includes side flaps or extensible side panels 30. 22
Each of Robles’ side panels 30 includes a waist panel 36 and a thigh panel 23
38. (Robles, col. 4, ll. 49-53; col. 12, ll. 21-31; and fig. 1.) Robles describes 24
the waist panels 36 as providing “tension around the wearer’s waist” and the 25
Appeal 2009-007488
Application 10/673,258

5
thigh panels 38 as maintaining “a dynamic fit around the leg of the wearer.” 1
(Robles, Abstract.) 2
Robles further describes the extensible side panels 30 as being 3
disposed adjacent one longitudinal edge 56 of the diaper body or 4
containment assembly 22. (Robles, col. 12, ll. 53-55.). Proximal edges 80 5
of the side panels 30 are joined to either the top sheet 24 of the diaper body; 6
the back sheet 26 of the diaper body; or both. (Robles, col. 12, ll. 55-67.) 7
Robles describes side panels 30 as being joined to the diaper body 20 by 8
attachment means including intermittent bonding using adhesive, dynamic 9
mechanical bonding or other known methods. (Robles, col. 13, ll. 4-13.) 10
Neither the Examiner nor the Appellant appear to identify any further 11
relevant description by Robles of the bonds formed between the extensible 12
side panels 30 and the diaper body 22. 13
The Examiner finds that the bonds formed between the extensible side 14
panels 30 and the diaper body 22 described by Robles constitute at least first 15
and second joint parts recited in the independent claims. (Ans. 3.) The 16
Examiner concedes that Robles does not explicitly teach side flap fixing 17
parts separate from the first and second joint parts recited in the claims. 18
(Ans. 4). Nevertheless, the Examiner concludes that the combination of the 19
side flap fixing part, the first joint part and the second joint part recited in 20
the independent claims fails to patentably distinguish the claimed subject 21
matter from the intermittent bonds taught by Robles. (Ans. 10.) 22
Alternatively, the Examiner concludes that it would have been obvious “to 23
place one of the fixing part and joint part inwardly of the other,” based on a 24
finding that “Robles teaches varying the positions and dimensions of the 25
bonding areas so as to effect a different fit for the user.” (Ans. 4.) 26
Appeal 2009-007488
Application 10/673,258

6
The passages cited by the Examiner do not support the Examiner’s 1
finding that “Robles teaches varying the positions and dimensions of the 2
bonding areas so as to effect a different fit for the user.” (Ans. 4.) Column 3
12, lines 24-31 and column 23, lines 32-43 of Robles do not support the 4
Examiner’s finding that Robles teaches varying the positions and dimensions 5
of the bonding areas. Column 12, lines 24-31 do not address the bonding of 6
the extensible side panels 30 to the diaper body 22. Column 23, lines 24-31 7
addresses bonds formed within the waist panels 36 and the thigh panels 38 8
of the side panels 30 rather than bonds formed between the extensible side 9
panels 30 and the diaper body 22. Even assuming that the general teaching 10
found by the Examiner would imply the obviousness of the particular 11
arrangement of fixing and joint parts recited in claims 1 and 16, the 12
Examiner has not adequately shown that Robles made such a teaching. 13
Robles’ description of the side panels 30 as being joined to the diaper 14
body 20 by attachment means including intermittent bonding (Robles, col. 15
13, ll. 4-13) does not imply that any part of any intermittent bond formed 16
between any side panel 30 and the diaper body 22 is spaced in a width 17
direction of the diaper body relative to any other part of the intermittent 18
bond. The Examiner has not articulated a rational underpinning for the 19
conclusion that the structure limiting independent claims 1, 15, 17 and 24 as 20
a whole would have been obvious. We do not sustain the rejection of claims 21
1, 3-5, 7-10, 12, 13, 15, 17, 19, 20 and 22-26 under § 103(a) as being 22
unpatentable over Robles. 23
Appeal 2009-007488
Application 10/673,258

7
DECISION 1
We REVERSE the Examiner’s decision rejecting claims 1, 3-5, 7-10, 2
12, 13, 15, 17, 19, 20 and 22-26. 3
4
REVERSED 5
6
7
8
Klh 9
10
11
LOWE HAUPTMAN HAM & BERNER, LLP 12
1700 DIAGONAL ROAD 13
SUITE 300 14
ALEXANDRIA, VA 22314 15