Ex parte Toyoda

Board of Patent Appeals and Interferences

Mar 31, 2000

08550521 (B.P.A.I. Mar. 31, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HARUMITSU TOYODA
__________
Appeal No. 1998-2818
Application 08/550,521
___________
HEARD: January 27, 2000
___________
Before STAAB, NASE and GONZALES, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1-14, all the claims in the application.
The Invention
Appellant’s invention pertains to a pull-on type
disposable diaper. Independent claim 1, a copy of which is
found in an appendix to appellant’s brief, is illustrative of
Appeal No. 1998-2818
Application 08/550,521

Our understanding of the Japanese language patent1
documents relied upon by the examiner in support of the
appealed rejections is derived from translations prepared on
behalf of the PTO, copies of which are attached to this
opinion.
2
the appealed subject matter.
The Applied Prior Art
The references of record relied upon by the examiner in
support of rejections under 35 U.S.C. § 103 are:1
Robertson et al. (Robertson) 4,963,140 Oct. 16, 1990
Buell et al. (Buell) 5,151,092 Sep. 29, 1992
Daio, (Daio ‘051) 3,176,051 Jul. 31, 1991
Japanese application
Daio, (Daio ‘052) 3,176,052 Jul. 31, 1991
Japanese application
Uni-Charm Corp. (Uni-Charm) 4,371,148 Dec. 24, 1992
Japanese application
Kao Corp (Kao) 5,192,366 Aug. 3, 1993
Japanese application
The Rejections
Claims 1, 3, 4 and 9-12 stand rejected under 35 U.S.C. §
103 as being unpatentable over Uni-Charm or Kao, or, in the
alternative, as being unpatentable over Uni-Charm or Kao in
view of Buell.
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Application 08/550,521

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Claims 2, 5-7, 13 and 14 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Uni-Charm, or, in the
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Application 08/550,521

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alternative, as being unpatentable over Uni-Charm in view of
Buell.
Claim 8 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Uni-Charm or Kao in view of Daio ‘051, Daio
‘052 and Robertson, or, in the alternative, as being
unpatentable over Uni-Charm or Kao in view of Daio ‘051, Daio
‘052 and Robertson, and further in view of Buell.
Preliminary Matters
The “Grounds of Rejection” section of the answer (pages 5
and 6) refers us back to Paper No. 17 (the final rejection in
the present application) and “a previous Office Action, Paper
No. 2” (the initial office action in the parent application)
for statements of the rejections. In addition, the “Response
to Argument” section of the answer (pages 6-9) for the most
part consists of merely cross referencing various pages and
lines of papers filed by appellant (Paper Nos. 13 and 16) to
various pages and lines of previous office actions (Paper Nos.
14 and 17). These previous office actions in turn refer to
other office actions.
MPEP § 1208, in pertinent part, reads as follows:
Appeal No. 1998-2818
Application 08/550,521

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Examiners may incorporate in the answer their
statement of the grounds of rejection merely by
reference to the final rejection (or a single other
action on which it is based, MPEP § 706.07). Only
those statements of grounds of rejection as appear
in a single prior action may be incorporated by
reference. An examiner’s answer should not refer,
either directly or indirectly, to more than one
prior Office action. Statements of grounds of
rejection appearing in actions other than the
aforementioned single prior action should be quoted
in the answer. The page and paragraph of the final
action or other single prior action which it is
desired to incorporate by reference should be
explicitly identified. [Emphasis added.]
As is clear from the above, the examiner’s answer in this
application does not comply with, inter alia, the requirement
of MPEP § 1208 that only those statements of grounds of
rejection as appear in a single prior action may be
incorporated by reference, and the requirement of MPEP § 1208
that an examiner’s answer should not refer, either directly or
indirectly, to more than one prior office action. We should
not have to continually refer to appellant’s brief, previous
office actions, and papers previously filed by appellant in
order to determine the examiner’s position with respect to the
obviousness issues raised in this appeal. In the interest of
judicial economy, we shall, in this instance, proceed to
Appeal No. 1998-2818
Application 08/550,521

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decide the appeal on the merits notwithstanding the examiner’s
clear disregard for established office procedure in
formulating her answer.
Opinion
With reference to Figures 1 and 2, claim 1, the only
independent claim on appeal, calls for a pull-on disposable
diaper comprising a rectangular body (10), a first pair of
expansible side panels (20, 20) and a second pair of
expansible side panels (20’, 20’). The side panels are
separately formed of a material different from the material of
the topsheet (11) of the body. Affixing means are provided
for affixing the side panels to longitudinal sides of the body
means. In addition, the side panels are joined to each other
to define a waist opening portion (15), a pair of leg openings
(17, 17’), and a body-surrounding portion (E). Claim 1 also
calls for first elastic members (23, 23’) arranged on an area
(D) adjacent the waist opening portion and second elastic
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Application 08/550,521

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members (21, 21’) arranged on stomach-side and back-side
portions of the diaper, with each of the first and second
elastic members having opposing ends that terminate within the
rectangular body.
We take up first for consideration the § 103 rejections
which do not rely in part on Buell. These include the
rejection of claim 1, 3, 4 and 9-12 as being unpatentable over
Uni-Charm or Kao, the rejection of claims 2, 5-7, 13 and 14 as
being unpatentable over Uni-Charm, and the rejection of claim
8 as being unpatentable over Uni-Charm or Kao in view of Daio
‘051, Daio ‘052 and Robertson.
Uni-Charm and Kao, the examiner’s primary references,
each pertain to a pull-on diaper comprising a layered body
defining a waist opening portion, a pair of leg openings, and
a body-surrounding portion. As can be readily discerned upon
review of Figure 2 of Uni-Charm and Figures 1, 2, 4 and 5 of
Kao, in each reference the body of the diaper includes
unitarily formed ear portions that are joined together at
their edges to form the waist opening and leg openings. In
addition, each diaper includes elastic members arranged in
areas adjacent the waist opening, which elastic members
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terminate at the edges of the unitarily formed ear portions.
In rejecting claim 1 as being unpatentable over Uni-Charm
or Kao, the examiner considers that the ear portions of the
diapers of Uni-Charm and Kao correspond to the claimed side
panel portions. The examiner concedes on page 3 of the final
rejection that these ear portions are not separately formed
apart from their respective body portions and then affixed
thereto. The examiner takes the position, however, that
appellant does not disclose the criticality of this form of
construction and that, accordingly, it have been would an
obvious matter of design choice to separately form the side
panels of Uni-Charm or Kao since such modification would have
involved a mere change from unitarily formed to separately
formed parts “which is recognized by case law as being
generally within the level of ordinary skill. . . . In the
instant, crowded and commercially viable diaper art such
changes would likewise be recognized as being within the level
of ordinary skill in the art” (answer, page 4).
We will not support this rationale. In rejecting claims
under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. In re
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Application 08/550,521

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Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1990). In order to establish a prima facie case of
obviousness, the prior art teachings must be sufficient to
suggest to one of ordinary skill in the art making the
modification needed to arrive at the claimed invention. See,
for example, In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257,
1258 (Fed. Cir. 1984). Here, the examiner tacitly admits that
neither Uni-Charm nor Kao provides a teaching or suggestion of
forming the side panels separately from the body of the
diaper. The examiner seeks to overcome this deficiency in
Uni-Charm and Kao by stating that the differences between the
claimed subject matter and the prior art references are
obvious matters of design choice, without providing any
evidence as to why this might be the case. However, the
subjective opinion of the examiner without evidence in support
thereof does not provide a factual basis upon which the legal
conclusion of obviousness may be reached. See In re GPAC
Inc., 57 F.3d 1573, 1582, 35 USPQ2d 1116, 1123 (Fed. Cir.
Appeal No. 1998-2818
Application 08/550,521

10
1995) and In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). In short,
Uni-Charm and Kao, when taken alone, do not provide the
factual basis necessary to support the examiner’s conclusion
of obviousness.
Concerning the examiner’s position that appellant has not
established the criticality of forming the side panels
separately, we observe that criticality is not a requirement
of patentability. See W.L. Gore & Assocs. v. Garlock, Inc.,
721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984). We also note the examiner’s
position that appellant’s specification does not mention the
advantage of allowing the use of one size body for wearers of
different waist sizes asserted by appellant on page 4 of the
brief as flowing from the use of separately formed side
panels. The examiner implies that this is significant.
Assuming for the sake of argument that the examiner’s position
that the asserted advantage of the claimed arrangement is not
found in the specification, simply because an argument
asserting an advantage of the claimed invention over the prior
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Application 08/550,521

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art is not included in the specification does not mean that
such argument may be dismissed, as the examiner appears to
believe. See In re Chu, 66 F.3d 292, 298, 36 USPQ2d 1089,
1094 (Fed. Cir. 1995) (held, in case where examiner and Board
alleged that difference between prior art and appealed claim
was “design choice,” that there is no basis supporting
position that a patent applicant’s evidence or argument
traversing rejection must be contained within specification in
order to be considered).
On pages 7 and 8 of the answer, the examiner, citing 37
CFR § 1.111 and MPEP § 714.02, states that some of the
arguments advanced in appellant’s brief are untimely because
they were not previously presented. Suffice to say that this
viewpoint finds no support in 37 CFR § 1.111, MPEP § 714.02 or
any other provision of PTO practice.
In light of the foregoing, we will not sustain the
examiner’s rejection of claim 1, or claims 3, 4 and 9-12 that
depend therefrom, as being unpatentable over Uni-Charm or Kao.
We also will not sustain the examiner’s rejection of claims 2,
5-7, 13 and 14, which depend from claim 1, as being
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Application 08/550,521

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unpatentable over Uni-Charm. Concerning the rejection of
dependent claim 8 as being unpatentable over Uni-Charm or Kao
in view of Daio ‘051, Daio ‘052 and Robertson, we have
carefully reviewed each of the additionally cited references
relied upon in this rejection but find nothing therein that
makes up for the deficiencies of Uni-Charm and Kao noted above
in our discussion of claim 1. Therefore, we also will not
sustain the rejection of claim 8 as being unpatentable over
Uni-Charm or Kao in view of Daio ‘051, Daio ‘052 and
Robertson.
We now turn to the § 103 rejections that rely in part on
Buell. These include the rejection of claims 1, 3, 4 and 9-12
as being unpatentable over Uni-Charm or Kao in view of Buell,
the rejection of claims 2, 5-7, 13 and 14 as being
unpatentable over Uni-Charm in view of Buell, and the
rejection of claim 8 as being unpatentable over Uni-Charm or
Kao in view of Daio ‘051, Daio ‘052 and Robertson, and further
in view of Buell.
The examiner alternatively contends that it would have
been obvious to separately form the ear or side panel portions
of the diapers of Uni-Charm and/or Kao in view of the
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Application 08/550,521

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teachings of Buell. We agree. Buell pertains to a flat-type
diaper having elasticized side panels 30 that provide a more
comfortable and contoured fit and that allow the diaper to
“self-adjust” during wear (column 33, lines 61-67; column 34,
lines 12-20). The elasticized side panels 30 may be disposed
on the back-side waist portion 58, the stomach-side waist
portion 56, or both (column 34, lines 17-22). Further, the
elasticized side panels 30 may be formed as a unitary
structures with the other elements of the diaper, or as
separate and discrete elements joined thereto (column 33,
lines 54-61; column 34, lines 47-56). In light of these
teachings, we share the examiner’s view that it would have
been obvious to one of ordinary skill in the art at the time
of appellant’s invention to separately form the side panels or
ears of the diapers of Uni-Charm and/or Kao as an alternative
way of making the diapers of the primary references,
suggestion being found in Buell’s teachings in this regard.
Claim 1 also calls for the side panels to be formed of a
material “different from” the material of the topsheet of the
body of the diaper. The examiner has found (final rejection,
page 4, lines 17-19), and appellant has not disputed (brief,
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Application 08/550,521

In any event, appellant’s specification does not2
disclose in what way the material of the side panels differs
from the material of the topsheet. Accordingly, giving this
claim language it broadest reasonable meaning (see, for
example, In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989)), the material of the side panels may differ
from the material of the topsheet in any number of ways and
still fall within the scope of the claims. For example, the
rather broad language of claim 1 in this regard covers diaper
elements that are made from laminates that differ as to one or
more of their constituent layers, such as disclosed by Buell
at side panels 30 comprising panel members 90 versus topsheet
24 that does not include such panel members. The broad
language of claim 1 also covers diaper elements that are made
of the same starting material and thereafter processed
differently to obtain different properties, such as disclosed
by Buell at side panels 30 that are subjected to mechanical
stretching to provide a “zero strain” stretch laminate in to
improve their stretchability (column 11, lines 21-34). Thus,
the side panels 30 of Buell are considered to be made from a
material that differs from the material of the topsheet.
14
page 16), that Buell teaches “discreet [sic, discrete] but
affixed ear flaps of different materials.” Thus, on the
record before us, we will accept the examiner’s unchallenged
finding that Buell discloses side panels made of a material
that is different from the material of the topsheet of the
diaper. Based on these teachings, we conclude that in2
separately forming the side panels of Uni-Charm and/or Kao, it
would have been further obvious to carry forward Buell’s
teaching of making the side panels and topsheet of different
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materials, suggestion being found in the self evident
advantage of more easily adapting each of these components to
its intended purpose (e.g., stretchability of side panels
versus liquid permeability of the topsheet).
Claim 1 additionally requires that the ends of the first
and second elastic members provided in the diaper terminate
within the diaper body. This construction is shown in Buell,
wherein the diaper may have elastomeric members 76 and
resilient members 77 in the area around the waist opening that
terminal short of the elasticized side panels 30. In our
opinion, it would follow from both the teachings of Buell and
as a matter of common sense that the elastic members 9a, 9b of
Uni-Charm and/or the elastic members 10, 14 of Kao should be
terminated within the body of the diaper upon forming the side
panels of the primary references separately from the body in
order to more easily adapt each of the diaper components to
its intended purpose.
In light of the above, we will sustain the examiner’s
rejection of claim 1 as being unpatentable over Uni-Charm or
Kao in view of Buell.
Appellant’s argument (brief, pages 15-19) directed to the
Appeal No. 1998-2818
Application 08/550,521

U.S. Patent 4,938,753 to Van Gumpel, mentioned in Buell3
at column 34, lines 47-58, and in particular the Figure 5A
embodiment thereof, would appear to be closer to the claimed
subject matter of the present application than either Uni-
Charm, Kao, or Buell. In the event of further prosecution,
the examiner may wish to consider the patentability of the
claims in light of this prior art reference.
16
rejection of claim 1 further in view of Buell have been
considered. Our views with respect to the majority of these
arguments should be clear from our discussion above. In
addition, we do not agree with appellant that the ordinarily
skilled artisan would not turn to Buell’s flat-type diaper for
a suggestion to modify the pull-on type diapers of Uni-Charm
and/or Kao. In particular, Buell’s reference at column 34,
lines 23-47, to the side panels of a particular prior art
pull-on diaper as an example of the type of side panels that
may be utilized in Buell shows a recognition of the fact that,
generally speaking, features of pull-on diapers may be
incorporated into flat-type diapers, and vice versa.3
We will also sustain the examiner’s rejection of claim 9
as being unpatentable over Uni-Charm or Kao in view of Buell.
Claim 9 additionally calls for the absorbent core of the body
to be rectangular. To provide an absorbent core of various
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shapes, including rectangular, is well known in the art, as
shown by Buell at column 8, lines 57-59. The incorporation of
a rectangular absorbent core in Uni-Charm or Kao would have
been further obvious in view of such a showing.
The rejection of claims 10-12 as being unpatentable over
Uni-Charm or Kao in view of Buell likewise will be sustained.
Each of these claims specifies a particular affixing means for
joining the separately formed side panels to the diaper body.
Buell teaches that each one of the specified affixing means is
a generally accepted way of joining together components of
disposable diapers. See, for example, column 9, lines 37-44
and lines 62-66; column 21, lines 46-51; and column 42, lines
42-48 of Buell. It would have been obvious to one of ordinary
skill in the art to join the separately formed side panels of
Uni-Charm or Kao in any of ways called for in claims 10-12 in
view of Buell’s teaching in this regard.
Claim 8 depends from claim 1 and further calls for a
discarding tape provided on the backsheet for securing a
rolled-up diaper for disposable, a feature shown to be
conventional by Daio ‘051 at element 32, by Daio ‘052 at
element 32, and by Robertson at element 868. The
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Application 08/550,521

Consistent with appellant’s disclosure, we consider the4
longitudinal direction of the side panels to be parallel to
18
incorporation of this feature into either one of Uni-Charm or
Kao as a further enhancement thereof would have been obvious
to one of ordinary skill in the art in view of these
teachings. It follows that we also will sustain the
examiner’s rejection of 8 as being unpatentable over Uni-Charm
or Kao in view of Daio ‘051, by Daio ‘052 and by Robertson,
and further in view of Buell.
We will not sustain the rejection of claims 2, 5-7, 13
and 14 as being unpatentable over Uni-Charm in view of Buell,
or the rejection of claims 3 and 4 as being unpatentable over
Uni-Charm or Kao in view of Buell. Claim 2 calls for the
first elastic members to be arranged substantially parallel to
the peripheral edge of the waist opening and for the second
elastic members to cooperatively form loops. Claims 3, 4, 13
and 14, in one form or another, call for the first and second
elastic members to possess different elastic properties.
Claims 5-7 set forth that the side panels are formed of
longitudinally arranged alternating expansible and non-
expansible portions. The examiner has not indicated, and it4
Appeal No. 1998-2818
Application 08/550,521

the opposed longitudinal sides of the rectangular body, as set
forth in claim 1.
19
is not apparent to us, where these features are taught in the
references cited against the claims. Accordingly, the
examiner has failed to meet her initial burden of establishing
a prima facie case of obviousness of these claims.
Summary
The rejection of claims 1, 3, 4 and 9-12 as being
unpatentable over Uni-Charm or Kao is reversed.
The rejection of claims 2, 5-7, 13 and 14 as being
unpatentable over Uni-Charm is reversed.
The rejection of claim 8 as being unpatentable over Uni-
Charm or Kao in view of Daio ‘051, Daio ‘052 and Robertson is
reversed.
The rejection of claims 1, 3, 4 and 9-12 as being
unpatentable over Uni-Charm or Kao in view of Buell is
affirmed as to claims 1 and 9-12, but is reversed as to claims
3 and 4.
The rejection of claims 2, 5-7, 13 and 14 as being
unpatentable over Uni-Charm in view of Buell is reversed.
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The rejection of claim 8 as being unpatentable over Uni-
Charm or Kao in view of Daio ‘051, Daio ‘052 and Robertson,
and further in view of Buell is affirmed.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JEFFREY V. NASE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN F. GONZALES )
Administrative Patent Judge )
Birch, Stewart, Kolasch and Birch
P. O. Box 747
Falls Church, VA 22040-0747
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LJS:CAW