Kikuo YAMADA

Patent Trials and Appeals Board

Nov 18, 2021

2021003713 (P.T.A.B. Nov. 18, 2021)

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.
15/168,624 05/31/2016 Kikuo YAMADA 471441US 2126
22850 7590 11/18/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
WORRELL, KEVIN
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
11/18/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KIKUO YAMADA
____________

Appeal 2021-003713
Application 15/168,624
Technology Center 1700
____________

Before JAMES C. HOUSEL, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Office Action, dated October 31, 2019, rejecting claims 1–7, 10–18, and 20–
24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Applicant/Inventor Kikuo Yamada as the real party in interest.
Appeal Br. 1.
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Claim 1 is illustrative of the subject matter on appeal and is
reproduced below (formatting added):
1. A base fabric for a disposable textile product,
comprising:
a laminated sheet comprising a first fibrous sheet, a
second fibrous sheet, and a fiber material interposed between
the first fibrous sheet and the second fibrous sheet; and
an elastic member laminated together with the laminated
sheet,
wherein
the first and second fibrous sheets have air permeability,
the fiber material has liquid diffusibility,
the laminated sheet forms a composite layer in which a
fiber layer having the air permeability and a fiber layer having
the liquid diffusibility are laminated,
the elastic member comprises a plurality of linear elastic
bodies and is laminated such that the elastic member imparts
elasticity to the laminated sheet,
the elastic member is provided over an entire region
inside the laminated sheet, and
the composite layer has an uneven surface formed by a
shrinkage stress of the elastic member, the uneven surface
forming a plurality of shirring portions in the base fabric such
that the shirring portions extend in a direction perpendicular to
a longitudinal direction of the linear elastic bodies in a non-
tensioned state, that the shirring portions have a uniform shape
of protrusions and depressions, and that, when the linear elastic
bodies are in the non-tensioned state, a pitch interval between
adjacent shirring rows of the shirring portions is between 2 mm
and 3 mm.
Appeal Br. 12 (Claims App.).
Appellant requests review of the Examiner’s decision to reject claims
1–7, 10–18, and 20–24 under 35 U.S.C. § 103 as unpatentable over Thomas
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(US 2014/0171895 A1, published June 19, 2014) and Een (WO
2014/098683 A1, published June 26, 2014). Final Act. 3.
Appellant presents arguments for independent claim 1 and dependent
claims 23 and 24. See generally Appeal Br. Accordingly, we select claim 1
as representative of the subject matter claimed and decide the appeal based
principally on the arguments made by Appellant in support of its
patentability. To the extent that Appellant presents arguments for claims 23
and 24, we address these arguments separately.
OPINION
After review of the respective positions provided by Appellant in the
Appeal and Reply Briefs and the Examiner in the Final Action and the
Answer, we affirm the Examiner’s prior art rejection of claims 1–7, 10–18,
and 20–24 for the reasons the Examiner presents.
Claim 1
Claim 1 recites a base fabric comprising (1) an elastic layer including
a plurality of linear elastic bodies and (2) shirring portions extending in a
direction perpendicular to a longitudinal direction of the linear elastic bodies
in a non-tensioned state.
The Examiner finds that Thomas discloses a base fabric that differs
from the claimed invention in that Thomas does not disclose the base fabric
as having an elastic layer comprising a plurality of linear elastic bodies or
that the shirring portions extend in a direction perpendicular to a longitudinal
direction of the linear elastic bodies in a non-tensioned state. Final Act.
Ans. 3–4; Thomas Abstr., ¶¶ 2, 27, 45–47, 80, 81, 83, 86, 101, 122, 123,
134, 145, 151 and Figs. 5–6. The Examiner turns to Een for the missing
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features. Final Act. 4–5; Een Abstr., 3, 15 and Fig. 7. The Examiner
determines that it would have been obvious to one having ordinary skill in
the art prior to have substituted the elastic layer(s) of Thomas’s base fabric
with a pattern of adhesive-coated elastic strands arranged at intervals
between the layers of the laminate, as claimed, and with the formation of a
corrugation pattern that crosses the direction of the elastic strands at an angle
of 90°, to obtain an elastic laminate having improved smoothness, softness,
flexibility, and breathability as taught by Een. Final Act. 5; Een 2.
Appellant argues Thomas’s laminate does not include a plurality of
linear elastic bodies as recited in claim 1, where the plurality of linear elastic
bodies stretch in a longitudinal direction of the linear elastic bodies. Appeal
Br. 6. According to Appellant, Thomas’s laminate includes an elastic film
or an elastic nonwoven web that can be stretched in multiple directions.
Appeal Br. 6; Thomas ¶ 56. Appellant contends Thomas forms lines of
separation in a frangible layer so that the frangible layer decouples at the
lines of separation and that the elastic film or web can be freely stretched
without being bound by the stretch limitations of the frangible layer. Appeal
Br. 6; Thomas ¶ 21.
Appellant’s arguments do not identify reversible error in the
Examiner’s determination of obviousness.
As the Examiner explains in the Answer, while Thomas exemplifies
embodiments comprising extensible laminates that extend in multiple
directions, Thomas also contemplates embodiments where the extensible
laminate can stretch in a single direction. Ans. 9; Thomas ¶¶ 42 (“The
extensible laminate can also be elastic meaning that the laminate has stretch
and recovery properties in at least one direction.”), 49, 52. It is well settled
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that a reference may be relied upon for all that it discloses and not merely
the preferred embodiments. See Merck & Co., Inc. v. Biocraft Labs., Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll disclosures of the prior art,
including unpreferred embodiments, must be considered.”) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also In re Fracalossi, 681
F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art reference’s
disclosure is not limited to its examples). The disclosed examples and
preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971). Therefore, we decline to limit Thomas’s teachings and
suggestions to the exemplary embodiments comprising extensible laminates
that extend in multiple directions. We note that Appellant does not address
this finding by the Examiner in the Reply Brief. See generally Reply Br.
Appellant argues the Examiner’s proposed modification of Thomas’s
laminate in view of Een’s teachings would limit the stretchability of
Thomas’s laminate. Appeal Br. 7. According to Appellant, unlike Thomas’s
elastic film or web that can be stretched in multiple directions, Een’s elastic
strands would be stretched only in a longitudinal direction of the elastic
strands. Appeal Br. 7. Appellant contends one of ordinary skill in the art
would not modify the elastic film or web in Thomas’s laminate by
substituting them with Een’s elastic strands for that reason. Appeal Br. 7.
Appellant further contends, even if the substitution is made, the cited art
does not teach or suggest forming shirring portions having a uniform shape
of protrusions and depressions. Appeal Br. 7. Thus, Appellant asserts that
Thomas teaches away from using elastic strands such as Een. Appeal Br. 7–
8; Thomas ¶ 4.
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These arguments are also unpersuasive of reversible error in the
Examiner’s conclusion of obviousness because, as the Examiner explains
and we note above, Thomas contemplates embodiments where the extensible
laminate can stretch in a single direction. Ans. 9; Thomas ¶ 42. Given this
disclosure, Appellant fails to explain adequately why the use of Een’s elastic
strands in Thomas’s laminate would limit the stretchability of this laminate.
Further, given the above noted disclosure, Appellant fails to provide a
technical explanation why Een’s elastic strands would not be suitable for
Thomas’s laminate comprising an elastic that stretches in a single direction.
Appellant argues Thomas criticizes a laminate having a gathered layer
that forms shirring portions on the laminate and, thus, one of ordinary skill
in the art would not have been led to modify Thomas to use stretched elastic
strands, as described in Een, to arrive at a base fabric having shirring
portions of a uniform shape of protrusions and depressions as claimed.
Appeal Br. 7. Instead, Appellant contends Thomas uses a frangible material
to increase the lofty feel, softness, and comfort of the laminate without
forming a gather. Appeal Br. 7–8; Thomas ¶ 4. Appellant further contends
neither reference discloses a base fabric having shirring portions of a
uniform shape of protrusions and depressions. Appeal Br. 7. Thus,
Appellant asserts that it would be contradictory to modify Thomas in light of
Een’s teaching. Appeal Br. 8. That is, Appellant asserts that Thomas
teaches away from a base fabric having shirring portions of a uniform shape
of protrusions and depressions as claimed.
These arguments do not persuade us of reversible error in the
Examiner’s determination of obviousness for the reasons presented by the
Examiner. Ans. 10. A reference may be said to teach away when a person
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of ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant. In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994).
As the Examiner notes, Thomas teaches that the extensible layer can
be in a stretched state when attached to other layers in the laminate. Ans.
10; Thomas ¶¶ 27, 122. The Examiner also explains Thomas discloses an
embodiment where one of the layers is a necked layer when the laminate is
constructed and stretching the nonwoven web to have a necked width that is
less than the starting width of the material. Ans. 10; Thomas ¶ 122. In
addition, the Examiner notes Een attaches elastic bodies in a stretched state
to nonwoven layers that are then relaxed to create a laminate having uniform
corrugation patterns (shirring portions). Ans. 10; Een Abstr., Fig. 11.
Therefore, one skilled in the art would have reasonably expected that an
uneven surface comprising shirring portions would form upon release of the
nonwoven web as claimed. Ans. 10; In re O’Farrell, 853 F.2d 894, 904
(Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a
reasonable expectation of success.”).
Moreover, Appellant has not adequately established that Thomas
criticizes Een’s teachings because Een, like Thomas, addresses issues with
respect to the prior art use of elastic strands in laminates. Thomas ¶¶ 2, 4;
Een 1–2. Further, both Thomas and Een are directed to disposable products.
Thomas ¶ 135; Een 21.
Given the noted disclosures, Appellant has not persuasively explained
why one skilled in the art would not look at alternate elastic materials, such
as Een’s elastic strands, for use in Thomas’s base material for disposable
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products.
Appellant argues neither Thomas nor Een teaches or suggests setting a
pitch interval of the shirring portions to be 2–3 mm as recited in claim 1.
Appeal Br. 8. According to Appellant, Thomas provides no guidance for
forming shirring rows, if any, with a relatively small pitch interval of 2–3
mm. Appeal Br. 8. Appellant further contends that the pitch interval of
shirring rows cannot be determined solely based on the distance and length
of bonding points as the Examiner reasons because other factors need to be
considered that affect the structure or shape of the corrugations (shirring
rows). Appeal Br. 9. Appellant lists these other factors as including
characteristics and properties of the layers, elastic strands, and adhesive, as
well as the degree or amount in which the elastic strands are stretched when
being bonded to the nonwoven layers. Appeal Br. 9.
With respect to the Examiner’s calculations that the corrugations of
Een’s laminate would be within the range of 1–7 mm, Appellant asserts a
skilled artisan would not have been led to the claimed pitch interval of
corrugations (shirring rows) by employing appropriate materials and/or
methods for forming a laminate absent guidance from the cited art. Appeal
Br. 9.
Appellant’s arguments fail to persuade us of reversible error. “[T]he
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007);
see also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (holding that
a reference stands for all of the specific teachings thereof as well as the
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inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom). Further, a modification is obvious if “it is
likely the product not of innovation but of ordinary skill and common
sense.” KSR, 550 U.S. at 421.
The Examiner finds Thomas and Een disclose laminates comprising
shirring portions. Ans. 10. In the Answer, the Examiner also provides a
technical explanation for why Een would have led one skilled in the art to
make laminates comprising shirring portions having a pitch interval range
that encompasses the claimed pitch interval range of 2–3 mm. Ans. 11–12.
Appellant’s arguments do not adequately address the Examiner’s
explanation.
While Appellant points to other factors that may impact the pitch
interval of the shirring portions, claim 1 does not recite the other factors
considered to arrive at the claimed pitch interval range of 2–3 mm. Nor does
Appellant provide any evidence of criticality for the claimed pitch range of
2–3 mm. Thus, Appellant has not distinguished the claimed invention from
the teachings of the cited art.
Claims 23 and 24
Claims 23 and 34 both recite a disposable undergarment consisting of
the base fabric according to claim 1.
The Examiner determines that the combined teachings of Thomas and
Een meet the limitations of these claims. Final Act. 7.
Appellant argues Thomas and Een do not teach or suggest a
disposable undergarment consisting only of a certain base fabric. Appeal Br.
9–10.

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Appellant’s argument does not identify reversible error in the
Examiner’s determination of obviousness.
As the Examiner explains, the language “consisting of” in claims 23
and 24 does not affect the subject matter claim 1 recites because claim 1 is
drafted using the open transitional language “comprising,” which does not
exclude other components or features from being part of the base material
from which the disposable undergarment of claims 23 and 24 is made from.
We find no reversible error in the Examiner’s analysis because Appellant
does not explain how the transitional language “consisting of” in these
claims further limits “the base fabric according to claim 1.”
Accordingly, we affirm the Examiner’s prior art rejection of claims
1–7, 10–18, and 20–24 for the reasons the Examiner presents and we give
above.

CONCLUSION
The Examiner’s prior art rejection of claims 1–7, 10–18, and 20–24
under 35 U.S.C. § 103 is affirmed.

DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 10–18,
20–24
103 Thomas, Een 1–7, 10–18,
20–24

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TIME PERIOD
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