Ota, Yoshihisa et al.

Patent Trials and Appeals Board

Nov 20, 2019

14391051 - (D) (P.T.A.B. Nov. 20, 2019)

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.
14/391,051 10/07/2014 Yoshihisa Ota P24915US00 2151
38834 7590 11/20/2019
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 LEESBURG PIKE
SUITE 7500
TYSONS, VA 22182
EXAMINER
KIDWELL, MICHELE M
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
11/20/2019 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte YOSHIHISA OTA and EMI AMANO

Appeal 2019-002003
Application 14/391,051
Technology Center 3700

BEFORE STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE the Examiner’s rejection of claims 1–20 and enter a
NEW GROUND OF REJECTION for claims 15–17 pursuant to our
authority under 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant, Livedo Corporation, identifies itself as the sole
real party in. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to “a technique for improving condensation on
absorbent articles.” Spec. ¶ 1. Claims 1 and 13 are the independent claims
on appeal. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An outer absorbent article combined with an inner
absorbent article, comprising an absorbent body composed of at
least one absorption layer, wherein the absorbent body includes
a water-absorbent resin powder satisfying following
requirements of (a) to (d),
(a) Specific surface area measured by BET multipoint
method: 0.040 m2/g to 0.200 m2/g;
(b) Vapor blocking ratio: 0% to 0.90%,
(c) Absorption ratio: 30 g/g to 70 g/g, and
(d) Water retention amount: 20 g/g to 60 g/g;
when (b) the vapor blocking ratio is measured as follows:
10g of the water-absorbent resin powder is
uniformly placed in a 5 cm-diameter plate made of aluminum,
and left still for 2 hours in a constant temperature-and-humidity
chamber of 50 degrees centigrade at a relative humidity of 80%
RH, afterward the mass (TOT) of the measuring sample is
measured, and the measuring sample is gently sieved using a
12-mesh wire net, the mass (ON) of a powdered object of the
measuring sample that has not passed the 12-mesh wire net due
to blocking caused by moisture absorption is measured, and the
vapor blocking ratio (%) is obtained according to the formula,
Vapor blocking ratio (%) = ON x 100 / TOT,
when (c) the absorption ratio is measured as follows:
1g of the water-absorbent resin powder is placed in
a bag-form tea bag (10 cm x 20 cm) made of a nylon textile
having a sieve-opening of 57 micrometers (255-mesh), and the
opening of the tea bag is heat sealed, next, 1 liter of 0.9 mass%
saline solution is poured into a beaker having a capacity of 1
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liter, and the tea bag is immersed therein for 1 hour, after the
immersion, the tea bag is hung for 10 minutes to remove
excessive water, and the total weight (F1) is measured, and as a
blank, the weight (F0) of a tea bag not having placed therein the
water-absorbent resin and having performed thereon the same
operation is measured, the absorption ratio (g/g) of the water-
absorbent resin powder is obtained according to the following
formula,
Absorption ratio (g/g) = (F1-F0) / Sample mass,
when (d) the water retention amount is measured as
follows:
1g of the water-absorbent resin powder is placed in
a bag-form tea bag (10 cm x 20 cm) made of a nylon textile
having a sieve-opening of 57 micrometers (255-mesh), and the
opening of the tea bag is heat sealed, next, 1 liter of 0.9 mass%
saline solution is poured into a beaker having a capacity of 1
liter, and the tea bag is immersed therein for 1 hour, after the
immersion, the tea bag is hung for 10 minutes to remove
excessive water, the tea bag obtained is placed in a basket type
centrifugal dehydrator having a diameter of 30 cm, dehydrated
at 1000 rpm (centrifugal force: 167 G) for 90 seconds, and then
its total weight (R1) is measured, and as a blank, the weight
(R0) of a tea bag not having placed therein the water-absorbent
resin and having performed thereon the same operation is
measured, the water retention amount (g/g) of the water-
absorbent resin is obtained according to the formula,
Water retention amount (g/g) = (R1 – R0 – Sample mass)
/ Sample mass.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Tomes US 8,388,585 B2 Mar. 5, 2013
Nawata EP 1 291 368 A1 Mar. 12, 2003
Ishizaki WO 2005/092955 A1 Oct. 6, 2005

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REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Tomes, Ishizaki, and Nawata.
OPINION
Independent claims 1 and 13, and claims 2–12, 14, and 18–20 depending
therefrom
Regarding independent claims 1 and 13, the Examiner finds that
Tomes discloses an absorbent body composed of at least one absorbent layer
including a water-absorbent resin powder, as claimed. Final Act. 3 (citing
Tomes 3:43–46). The Examiner relies on Nawata for disclosing claim
requirement (a) and on Ishizaki for disclosing a water-absorbent resin
powder meeting the claim requirements (b) to (d). Id. at 3–5. Regarding
Nawata and claim requirement (a), the Examiner reasons that it would have
been obvious “to provide the absorber of Tomes[, as modified by Ishizaki,]
with the specific surface area as taught by Nawata because such a specific
surface area is particularly good at absorbing polymer containing viscous
liquids for successful use in absorbent articles.” Id. at 4 (Nawata, Abstract,
¶ 1); Ans. 8.
Appellant argues that Tomes’ shell 30, which corresponds to the
claimed outer absorbent article, “does not include the required water
absorbent resin.” Appeal Br. 7. Appellant submits that Tomes discloses
“‘absorbent pad 20 may also comprise one or more intermediate layers 42
having one or more absorbent materials 44,” which “may comprise
superabsorbent polymer particles containing water-absorbing resins.’”
Id. (citing Tomes 3:41–46). Appellant concludes that “a constituent member
including the absorbent material 44 is ‘the absorbent pad 20,’ not ‘the shell
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30’” and that “there is no disclosure that ‘the shell 30’ includes absorbent
material 44.” Id. Appellant maintains that the claims require “the outer
absorbent article includes the specific water-absorbent resin powder
satisfying requirements (a) to (d).” Id.; see also Reply Br. 2 (“the absorbent
body is a part of the claimed outer absorbent article, so that the outer
absorbent article and the absorbent body should not be considered
separately” and “the water absorbent resin powder is a part of the claimed
outer absorbent article”).
The Examiner correctly responds that Appellant’s argument “is not
commensurate with the scope of the claim[s],” in that “[c]ontrary to
Appellant’s assertion, the shell is not required to include a water absorbent
resin powder.” Ans. 4–5.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). A
claim construction analysis begins with, and is centered on, the claim
language itself. See Interactive Gift Express, Inc. v. Compuserve, Inc., 256
F.3d 1323, 1331 (Fed. Cir. 2001). “While we read claims in view of the
specification, of which they are a part, we do not read limitations from the
embodiments in the specification into the claims.” Hill-Rom Servs., Inc. v.
Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). Finally, construing
claims broadly during prosecution is not unfair to the applicant, because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage. Am. Acad., 367 F.3d at 1364.
Claims 1 and 13 recite, as the preamble: “[a]n outer absorbent article
combined with an inner absorbent article.” Appeal Br. 16, 19 (Claims
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App.). Claims 1 and 13 further recite that the article recited in the preamble
comprises “an absorbent body.” Id. The Specification discloses that “[a]s
absorbent articles represented by disposable diapers, there are known
absorbent articles in which an inner absorbent article such as a urine
absorption pad is attached to an outer absorbent article such as a diaper outer
body.” Spec. ¶ 2. Thus, the article recited in the preamble of claims 1 and
13, namely, “[a]n outer absorbent article combined with an inner absorbent
article,” as claimed, may be a disposable diaper including a urine absorption
pad attached to a diaper outer body. In comparison to known absorbent
articles, the Specification discloses that the claimed improvement involves
“an outer absorbent article having an absorbent body composed of at least
one absorption layer, wherein the absorbent body includes a water-absorbent
resin powder satisfying [certain conditions].” Id. ¶ 8 (emphasis added). In
other words, the Specification discloses that the intended claimed
improvement to known disposable diapers is to include within the outer
absorbent article an absorbent body composed of water-absorbent resin
powder.
We determine, however, that the preamble of claims 1 and 13, as
written, recite “[a]n outer absorbent article combined with an inner absorbent
article” (emphasis added), such that the combination of the outer and inner
absorbent articles must somehow comprise or include the absorbent body as
claimed. In other words, contrary to Appellant’s interpretation, we do not
construe the preamble of claims 1 and 13 to mean that the outer absorbent
article alone must comprise the claimed absorbent body, as may have been
intended.
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Thus, although Appellant’s argument that the water-absorbing resin
powder disclosed in Tomes is located within layers of 42 of absorbent pad
20, which is attached to outer shell 30, claims 1 and 13 read on Tomes,
wherein the combination of Tomes’ pad 20 and shell 30 comprise an
absorbent body composed of a layer including water-absorbent resin
powder. See, e.g., Tomes 3:30–48, Fig. 3.
Notwithstanding, we are persuaded by Appellant’s argument that the
Examiner’s reason for modifying Tomes’ disposable urine collector to have
water-absorbing resin powder with a specific surface area in the claimed
range, in view of Nawata, lacks rational underpinning. As set forth supra,
the Examiner’s reasoning is that such a modification would have been
obvious to a skilled artisan “because such a specific surface area is
particularly good at absorbing polymer containing viscous liquids for
successful use in absorbent articles.” Final Act. 4.
In particular, Appellant correctly submits that “the absorbent article
disclosed in Nawata is limited to sanitary napkins and disposable diapers
for newborns, and does not include disposable diapers for adults for mainly
absorbing urine,” such that “one skilled in the art would not be motivated to
select the properties of the water-absorbent resin that is suitable for
absorbing polymer-containing viscous liquids, instead of urine disclosed in
Nawata, to the water-absorbent resin in outer absorbent articles used mainly
for absorbing urine.” Appeal Br. 13. Appellant also correctly submits that
the inventive object of Nawata is to provide a water-absorbent
resin suitable for absorbing polymer-containing viscous liquids
such as blood, blood-containing body fluid, stool and other
types of fecal matter, and to provide an absorbent core and an
absorbent article using the same, and clearly discloses . . . that
the watery stool is the watery stool of a newborn or an infant
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whose staple food is milk. Nawata further clearly discloses . . .
the water retention capacity of the water-absorbent resin is kept
lower in relation to the level considered optimal for absorbing
human urine.
Reply Br. 7 (citing Nawata ¶¶ 1, 2, 8, 19).
Indeed, Tomes discloses a “disposable urine collection device” for
urine (Tomes, Abstract), a fluid which Nawata specifically distinguishes
from the viscous liquid absorbed by the water-absorbing resin particles used
in Nawata’s absorbent article (see, e.g., Nawata, Abstract). Specifically,
Nawata distinguishes viscous liquid from urine, as follows:
[I]t was discovered that polymer-containing viscous liquids can
be absorbed with exceptional efficiency by a water-absorbent
resin whose properties are controlled such that the specific
surface area of the water-absorbent resin is kept higher and the
water retention capacity is kept lower in relation to the level
considered optimal for absorbing water or human urine.
Id. ¶ 19 (emphasis added). Thus, the Examiner’s proposed modification to
Tomes’ water-absorbing resin powder for absorbing urine, in view of
Nawata’s teachings regarding viscous liquids other than urine, lacks rational
underpinning.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 13, and independent claims 1 and 13, and claims
2–12, 14, and 18–20 depending therefrom.

Dependent claims 15–17
Claim 15, which depends from independent claim 6, recites, in
relevant part, “wherein the absorbent article is an adult diaper outer body.”
Appeal Br. 21 (Claims App.) (emphasis added). Independent claim 6 recites
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“[a]n absorbent article comprising the outer absorbent article according to
claim 1”—which is, according to our claim construction supra, in relevant
part, the “outer absorbent article combined with an inner absorbent article”
(emphasis added), the combination “comprising an absorbent body,” and
further according to claim 6, “wherein the inner absorbent article is attached
to an inner side of the outer absorbent article.” Id. at 18 (Claims App.).
Thus, claim 6 recites a new article, namely, “[a]n absorbent article,”
wherein the inner absorbent article of claim 1 is further attached to an inner
side of the outer absorbent article of claim 1. Claim 15 further limits the
absorbent article of claim 6 by requiring the absorbent article to be further
combined with “an inner absorbent article,” which lacks antecedent basis,
and claim 15 also requires the absorbent article of claim 6—which
comprises an outer absorbent article attached to an inner absorbent article, as
well as a possible additional inner absorbent article—to be an adult diaper
outer body. The Specification discloses that “the present invention is
described based on one embodiment of a diaper outer body (outer absorbent
article) to which a urine absorption pad is attached as an inner absorbent
article for use.” Spec. ¶ 104. In other words, the Specification describes the
outer absorbent article as a diaper outer body, and not including the inner
absorbent article. As such, it is unclear which structures are intended to
comprise the outer body of an adult diaper pursuant to claim 15.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014).
Accordingly, we enter a NEW GROUND OF REJECTION for claim
15, and claims 16 and 17 based on their dependency from claim 15, under
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35 U.S.C. § 112, second paragraph. Because we have concluded that claims
15–17 are indefinite, the prior art rejection of claims 15–17 must fall
because it is necessarily based on a speculative assumption as to the
meaning of the claims. In re Steele, 305 F.2d 859, 862 (CCPA 1962).
Accordingly, we do not sustain the Examiner’s rejection of claims 15–17
under 35 U.S.C. § 103(a) as unpatentable over Tomes, Nawata, and Ishizaki.
CONCLUSION
The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 103(a) is
REVERSED.
We enter a NEW GROUND OF REJECTION of claims 15–17 under
35 U.S.C. § 112, second paragraph, as indefinite.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed New
Ground
1–20 103(a) Tomes, Nawata,
Ishizaki
1–20
15–17 112,
second
paragraph
15–17
Overall
Outcome
1–20 15–17
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

REVERSED; 37 C.F.R. § 41.50(b)