Ex Parte Ukegawa

Board of Patent Appeals and Interferences

Jan 3, 2011

11209781 (B.P.A.I. Jan. 3, 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.
11/209,781 08/24/2005 Kazuo Ukegawa 2038-389 3108
22429 7590 01/03/2011
LOWE HAUPTMAN HAM & BERNER, LLP
1700 DIAGONAL ROAD
SUITE 300
ALEXANDRIA, VA 22314
EXAMINER
CAILLOUET, CHRISTOPHER C
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
01/03/2011 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 KAZUO UKEGAWA
____________

Appeal 2010-000858
Application 11/209,781
Technology Center 1700
____________

Before CHUNG K. PAK, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

GAUDETTE, 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 2010-000858
Application 11/209,781

2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-3, 12, 13, 15, 17-21, and 23-29.2, 3 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention is directed to a method of making pull-on disposable
wearing articles, such as diapers. Independent claim 17 is representative of
the invention and is reproduced below from the Claims Appendix to the
Appeal Brief:
17. A method of continuously making pull-on disposable
wearing articles, said method comprising:
feeding a web in a machine direction, said web having
opposite first and second surfaces and opposite first and second
side edges that extend in said machine direction,
folding said web in two in a cross direction orthogonal to
said machine direction while feeding said web, and
severing said folded web along cut lines, which extend in
said cross direction, into individual pull-on disposable wearing
articles each having a waist-hole and a pair of leg-holes so that

2 Reply Brief filed Aug. 7, 2009 (“Rep. Br.”), p. 2 (revising the status of
claims listed in the Appeal Brief filed Apr. 17, 2009 (“App. Br.”) in view of
the Examiner’s indication of allowability as to claims 16, 22 and 30, see
infra note 3).
3 Claims 1-3 and 12-30 were finally rejected in the Office Action mailed
Oct. 14, 2008 (“Final”). In response to Appellant’s arguments in the Appeal
Brief, the Examiner withdrew the rejection of claims 16, 22 and 30.
(Examiner’s Answer mailed Jun. 23, 2009 (“Ans.”), p. 8 (10).) Claims 16,
22, and 30 now stand objected to as dependent on a rejected base claim.
(Ans. 2(3); see also, Advisory Action mailed Oct. 19, 2009.) Claim 14 was
cancelled in an Amendment after Final. (See App. Br. 6; Advisory Action
mailed Oct. 19, 2009.)
Appeal 2010-000858
Application 11/209,781

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these pull-on disposable wearing articles are successively
arranged side by side in said machine direction,
said method further comprising:
attaching a pair of first fastener elements to the first
surface of said web on opposite sides, as viewed in said
machine direction, of each region in which one of said cut lines
is to be formed, wherein each of said first fastener elements has
an outer end adjacent the first side edge and an opposite, inner
end located inwardly in the cross direction from the outer end;
forming a pair of continuous slits in said web on opposite
sides, as viewed in said machine direction, of said region,
wherein each of said continuous slits is located between said
region and one of said first fastener elements, and extends
continuously in said cross direction from a first end located
adjacent the first side edge to a second end located inwardly of
the inner ends of said first fastener elements;
attaching a fastener base sheet to said web so that the
fastener base sheet extends in said machine direction across
said region and said slits, wherein the fastener base sheet has
thereon a pair of second fastener elements each releasably
engaged with one of said first fastener elements and is attached
to said web through releasable engagement of respective said
second fastener elements with respective said first fastener
elements;
forming, for each pair of said slits, a single notch in said
web so that the notch extends from the first side edge to the first
ends of both said slits;
forming, in said web and along the cut line to be form, a
middle opening which defines the leg holes of the adjacent pull-
on disposable wearing articles to be made;
folding said web in two in said cross direction with said
second surface inside so that an area of said web adjacent the
second side edge overlays said region;
Appeal 2010-000858
Application 11/209,781

4
bonding said area to said fastener base sheet; and
after said bonding, severing said web together with said
fastener base sheet along said cut line;
wherein
a peripheral edge of said middle opening intersects the
slits in vicinity of the second ends of the slits to define a cut-
away piece of said web,
said cut-away piece corresponds to said region and is
surrounded by the slits, the notches at the first ends of the slits,
and the peripheral edge of said middle opening.
The claims stand rejected as follows:
1. claims 1, 2, 12, 13, 15, 17, 18, 20, 21, 24-26, and 29 under 35
U.S.C. § 103(a) as unpatentable over Popp4 in view of French5, Heller6, and
Wagner7 (see Ans. 3-7; Paper 20090724 mailed Jul. 31, 2009 (correcting the
statement of the rejection)); and
2. claims 3, 19, 23, 27, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Popp in view of French, Heller, and Wagner as applied to
claims 1, 17, 20, and 25, and further in view of Otsubo8 (see Ans. 7-8).
Appellant presents separate arguments in support of patentability of
each of dependent claims 12, 15, 21, 23, 28, and 29. Appellant relies on
arguments advanced in support of patentability of independent claims 1, 17,
and 25 with respect to the remaining rejected claims.

4 US 6,432,248 B1, issued Aug. 13, 2002.
5 US 6,830,153 B2, issued Dec. 14, 2004.
6 US 2002/0148557 A1, published Oct. 17, 2002.
7 US 2004/0182502 A1, published Sept. 23, 2004.
8 US 7,189,301 B2, issued Mar. 13, 2007.
Appeal 2010-000858
Application 11/209,781

5
Appellant’s arguments are based on his contention that the Examiner
erred in finding:
(1) the applied prior art suggests forming a cut-away piece as
recited in the wherein clauses of each of the independent claims (App. Br.
15-17 (as to claim 1), App. Br. 19-20 (as to claim 17), App Br. 21 (as to
claim 25));
(2) the applied prior art suggests attaching Popp’s fastener base
sheet 84 before forming notches (App. Br. 17 (as to claim 12)) and before
forming gap 79 (App. Br. 18 (as to claim 13), App. Br. 18-19 (as to claim
15), App. Br. 20 (as to claim 21), App. Br. 21-22 (as to claim 29));
(3) the applied prior art suggests forming notches in the specific
locations recited in the claims (App. Br. 17 (as to claim 12), App. Br. 19-20
(as to claim 17), App. Br. 21 (as to claim 25)); and
(4) one of ordinary skill in the art would have been motivated to
attach elastic members in a stretched state to the leg opening 52 of Popp’s
web prior to formation of the opening (App. Br. 22-23 (as to claims 23 and
28)).
For the reasons explained in the Examiner’s Answer, which we
discuss in further detail below, we are not persuaded the Examiner
reversibly erred in making the above-stated findings. In our view, the facts
and reasons relied on by the Examiner in the Answer support a prima facie
case of obviousness as to claims 1-3, 12, 13, 15, 17-21, and 23-29.
Accordingly, we adopt the Examiner’s fact finding and reasoning in
sustaining both grounds of rejection.
FIG. 6 of Appellant’s Specification is reproduced below:
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Specification FIG. 6 is a diagram partially illustrating a process for making a
diaper. (Spec. 24:3-4.) First center line 111 is an imaginary line (Spec.
25:18) which corresponds to a cut line in step XI (Spec. 26:2-3) whereby
individual diapers are formed (Spec. 30:7-11). In step II, a first composite
sheet 103 is formed by bonding together first and second continuous sheets
101, 102. (Spec. 25:1-8.) In step III, a pair of hook members 116 are
attached to the outer surface of the first continuous sheet 101. (Spec. 26:4-
6.) In step V, linear slits 121 are formed in the cross direction CD through
the first composite sheet 103 between the center line 111 and the respective
hook member 116 adjacent this first center line 111 (Spec. 27:3-6), followed
by, in step VI, attachment of a loop member 122 (comprising a pair of loop
arrays 124 on a base sheet 123) to hook members 116, so as to extend across
first center line 111 and a pair of slits 121 (see Spec. 27:10-19). In step VIII,
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Application 11/209,781

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an annular notch 131 is formed symmetrically about the center line 111; the
annular notch 131 intersects a pair of slits 121 on either side of the first
center line 111 (Spec. 28:17-20) and defines the side edges of the crotch
region of the diaper (Spec. 31:14-16). The region surrounded by the annular
notch and the pair of slits 121 is then cut away as a sheet piece 136 to form a
gap 137 on the composite sheet 103, exposing the base sheet 123 for the
loop member 122. (Spec. 28:22-29:7.) Because the base sheet 123 extends
across gap 137, it restrains contraction of elastic members 105 in the waist
region of the diaper (see Spec. 31:16-17 and Fig. 1) and ensures that the first
composite sheet 103 is evenly subjected to tensile force along opposite side
edges 103a, 103b. (Spec. 32:19-33:1.)
Popp “is directed to a process for making a pant-like absorbent
garment.” (Col. 5, ll. 66-67.) Popp FIG. 4 is reproduced below:

Appeal 2010-000858
Application 11/209,781

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Popp FIG. 4 is a plan view of a cross direction assembly for producing
the absorbent garment. (Col. 2, ll. 25-26.) According to Popp’s method, a
section of material is cut out to create a gap 79 extending from a top edge to
the leg opening 52. (Col. 12, ll. 63-69.) Once formed, gap 79 is then
covered by placing fastening component 84 over two adjacent fastening
components 82 positioned on opposite sides of the gap prior to further
processing. (See col. 13, ll. 1-5.)
The Examiner concedes that Popp does not elaborate on how the
section of material is cut away to create gap 79. (Ans. 4-5.) However, the
Examiner maintains it would have been obvious to have formed slits as
claimed based on the teachings of French and Heller. (Ans. 5.)
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Application 11/209,781

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Appellant does not dispute the Examiner’s finding that French
discloses the use of perforations to define tear lines facilitating removal of a
section of material (Ans. 5 (citing French col. 4, ll. 53-56 and col. 6, ll. 43-
48)). (Cf. App. Br. 16.) Nor does Appellant dispute the Examiner’s finding
that Heller discloses that slits are functional equivalents of perforated tear
lines (Ans. 5 (citing Heller para. [0055]9)). (Cf. App. Br. 16.) In addition,
Appellant does not dispute the Examiner’s finding that Wagner teaches
forming notches at the upper ends of perforation lines to facilitate tearing.
(Ans. 6 (citing Wagner para. [0024])). (Cf. App. Br. 16.)
The Examiner concedes that Popp does not teach attachment of the
fastening component 84 (fastener base sheet) prior to creation of gap 79.
(Cf. Ans. 6.) However the Examiner finds:
[t]here are only two ways to expose the area of the fastener base
sheet to be bonded: (1) remove the cut away piece prior to
attachment of the base sheet as Popp discloses or (2) attach the
base sheet to the web and subsequently remove the cut away
piece to expose the area of the base sheet to be bonded in the
folding step; either could be implemented with a reasonable
expectation of success. Therefore, it would have been obvious
to a person of ordinary skill in the art at the time of the
invention to try the second method of exposing the base sheet
for attachment because a person with ordinary skill has good
reason to pursue the known option within his or her technical
grasp.

9 “Fault line,” as used in the discussion of FIG. 1A,
includes a wide variety of structures which substantially
weaken the machine direction strength of the web at the fault
line, and can include, for example, a line of perforations, a cut
line bounded on opposing ends by perforations, and/or a cut
line bounded on opposing ends by uncut material.
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Application 11/209,781

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(Ans. 10.) The Examiner’s finding is reasonable and supported by the
following disclosure in Heller which identifies an advantage of attaching the
fastening component prior to cutting the web:
Generally, where elastics in an elasticized web are stretched in
the machine direction, and the stretched web is severed across
the transverse width of the web thus to create a transversely
extending free edge, the web tends to retract when such
severance takes place. When such severance occurs before e.g.
the fastening area material or tab components can be attached,
the resulting retraction increases the complexity of making such
attachments.

(Heller para. [0058].)
The Examiner further concedes that Popp only discloses forming leg
opening 52 prior to forming gap 79. (See Ans. 7.) The Examiner maintains
that
[t]he removal of the leg hole and cut away piece of the web in
order to form the disposable garment of Popp may be done in a
finite number of ways: removing the leg hole and then the cut
away piece; removing the cut away piece and then the leg hole;
or simultaneously removing the cut away piece and the leg
hole. It is the position of the examiner that it would be obvious
to one of ordinary skill that reversing the order in which the
pieces could be removed would be within his/her technical
grasp.

(Ans. 7.)
The Examiner concedes that the combination of Popp, French, Heller,
and Wagner fails to disclose attachment of elastic members in a stretched
state to the web. (Ans. 7.) The Examiner finds that Otsubo teaches
attachment of elastic members in a stretched state in the leg area so that the
elastic members may stretch or contract as needed. (Ans. 8.) The Examiner
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Application 11/209,781

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concludes “it would have been obvious for one of ordinary skill in the art at
the time of the invention, to have modified the disposable diaper production
method of Popp to include the improvements taught by Otsubo . . . in order
for the diaper to stretch or contract.” (Ans. 8.)
Otsubo teaches that attachment of the elastic members 19 may occur
at any number of points during manufacture of the diaper including during
the initial steps of assembling the diapers. (Col. 7, ll. 51-64.)
As correctly observed by the Examiner, the ordering of known
process steps is generally obvious in the absence of unexpected results.
(Ans. 7 (citing In re Burhans, 154 F.2d 690 (CCPA 1946).) In reaching his
conclusion of obviousness, the Examiner (as did the court in Burhans)
properly took into account the knowledge and skill level of the ordinary
artisan (see Ans. 10-11 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007)
(When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.)).

Appellant essentially argues that if the identically disclosed method
steps of the references were combined, the claimed method would not result.
As such, Appellant’s arguments are unpersuasive because they fail to
address the Examiner’s findings as to the modifications the ordinary artisan
would have made to these explicitly disclosed method steps which would
result in Appellant’s claimed method.
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For example, Appellant concedes the applied prior art discloses
forming slits, but contends the art fails to teach forming slits which would
intersect the edge of Popp’s leg opening 52. (See e.g. App. Br. 16.)
However, Appellant does not address the Examiner’s findings that in Popp
Fig. 4, leg opening 52 and gap 79 do intersect, and because there are a
limited number of ways in which this opening/gap could have been formed,
it would have been obvious to have first formed a cutaway piece as recited
in the wherein clauses of the independent claims.
Appellant argues Popp only teaches attaching a fastener base sheet
after cutting away the web to form a gap 79 and, as such, it would be
impossible, e.g., to simultaneously form notches both in the web and
fastener base sheet as required by claim 12 or to expose an underlying
section of the fastener base sheet after removing the cut-away piece as
required by claim 15. (See App. Br. 17-19.) However, Appellant has not
explained why the Examiner erred in determining that it would have been
obvious to have attached the fastener base sheet prior to cutting the web.
Appellant argues Wagner does not teach forming notches in all
locations recited in the claims (see e.g. App. Br. 19-20), but does not explain
why the Examiner erred in determining that it would have been obvious to
form notches at other locations in Popp’s garment to facilitate tearing of the
web (see Ans. 6). Appellant asserts that Otsubo only discloses embodiments
wherein elastic members are attached after formation of a leg opening 34.
(See App. Br. and Rep. Br. 10-11.) However, Otsubo clearly teaches that the
elastic members may be attached at a number of different stages in the
manufacturing process, and Appellant has not explained why the Examiner
erred in determining that, based on this teaching, it would have been obvious
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Application 11/209,781

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to have attached elastic members in Popp’s process in the manner recited in
appealed claims 23 and 28.
In conclusion, for the reasons stated in the Answer and in the above
discussion, Appellant has not persuaded us that the facts and reasons relied
on by the Examiner are insufficient to establish a prima facie case of
obviousness as to appealed claims 1-3, 12, 13, 15, 17-21, and 23-29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

bar

LOWE HAUPTMAN HAM & BERNER, LLP
1700 DIAGONAL ROAD
SUITE 300
ALEXANDRIA, VA 22314