Dieter Homoelle et al.Download PDFPatent Trials and Appeals BoardApr 27, 202015385090 - (D) (P.T.A.B. Apr. 27, 2020) Copy Citation 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. 15/385,090 12/20/2016 Dieter HOMOELLE 31130 4129 535 7590 04/27/2020 KF ROSS PC 311 E York St Savannah, GA 31401-3814 EXAMINER HOOVER, MATTHEW ART UNIT PAPER NUMBER 1748 NOTIFICATION DATE DELIVERY MODE 04/27/2020 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): savannah@kfrpc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DIETER HOMOELLE and MARCUS SCHOENBECK Appeal 2019-002568 Application 15/385,090 Technology Center 1700 Before KAREN M. HASTINGS, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–10. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In our Decision, we refer to the Specification (“Spec.”) of Application 15/385,090 filed Dec. 20, 2016; the Final Office Action dated June 13, 2018 (“Final Act.”); the Appeal Brief filed Sept. 24, 2018 (“Appeal Br.”); the Examiner’s Answer dated Dec. 14, 2018 (“Ans.”); and the Reply Brief filed Jan. 13, 2019 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Mondi Gronau GmbH. Appeal Br. 1. Appeal 2019-002568 Application 15/385,090 2 CLAIMED SUBJECT MATTER The invention is drawn to methods of making printed elastic laminates. Spec. 1, ll. 8–9. The Specification describes a preferred embodiment in which the elastic film is stretched transversely of the direct of the web before the printing process, then printed after elastic relaxation, and subsequently cut into strips. Spec. 5, ll. 5–8. According to the Specification, the stretching of the elastic film constitutes a mechanical preactivation of a layer of the laminate and results in improved stretching behavior of the laminate. Spec. 5, ll. 8–11. The preactivation of the elastic film provides easy stretching action of the laminate over a large area, and at an expansion limit that is determined by the preactivation, and after which the expansion resistance increases strongly. Spec. 5, ll.11–16. The return behavior of the laminate after tension is removed can be improved if the elastic film is preactivated by transverse stretching before laminating it into the laminate. Spec. 5, ll. 16–18. After preactivation and printing, the elastic film is cut into strips which are laminated between textile surface webs. Spec. 6, ll. 26–29. The claims are directed to methods of making a printed, elastic laminate. See, e.g., claims 1, 28, and 34. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of making a printed, elastic laminate, the method comprising the steps of: transversely stretching a longitudinally elongated elastic film; transversely elastically relaxing the transversely stretched film; Appeal 2019-002568 Application 15/385,090 3 printing a motif on the relaxed film; cutting the relaxed and printed elastic film into longitudinally extending strips; bonding the strips of relaxed and printed film transversely next to each other between two surface webs through at least one of which the motif is visible to form a laminate; and transversely stretching the laminate at least at the strips. Appeal Br. 11 (Claims Appendix). REFERENCES The Examiner relies on the following prior art in rejecting the claims: Name Reference Date Shimada US 7,169,137 B2 Jan. 30, 2007 Baldauf et al. (“Baldauf”) US 7,470,340 B2 Dec. 30, 2008 Bishop et al. (“Bishop”) US 2011/0092943 A1 Apr. 21, 2011 REJECTION The Examiner maintains the rejection of claims 1–10 under 35 U.S.C. § 103 as being unpatentable over Baldauf in view of Bishop and further in view of Shimada. Final Act. 3–7. OPINION Appellant does not present separate arguments for the claims covered by this rejection. Appeal Br. 5–9. We select independent claim 1 as representative of the group. Claims 2–10 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). With regard to claim 1, the Examiner finds that Baldauf teaches a method of making an elastic laminate usable in diaper constructions in which an elastic film is cut into longitudinally extending strips which are Appeal 2019-002568 Application 15/385,090 4 bonded transversely next to each other between two surface webs, and then the resulting laminate is transversely stretched. Final Act. 3 (citing Baldauf col. 2, ll. 52–64). The Examiner acknowledges that Baldauf does not teach transversely stretching and relaxing the elastic film prior to laminating to two surface webs, or printing a motif on the elastic material with the motif visible after the elastic material is bonded to a surface web. Id. The Examiner finds that Bishop teaches printed elastic laminates for diapers in which an elastic film can be stretched and relaxed in any direction (including transversely), and that the film may be prestretched and relaxed prior to lamination. Final Act. 3; Ans. 8. The Examiner finds that Bishop describes printing an elastic core or elastic layer with a graphic and subsequently attaching the elastic printed layer to a chassis outer web by lamination. Final Act. 3; Ans. 8, 9–10. The Examiner concludes that stretching and relaxing the elastic film at any point in the process would have been obvious to one of ordinary skill in the art at the time of the invention because it would allow the user to control the amount of tension on the film. Final Act. 3(citing Bishop ¶¶ 17 and 76). The Examiner also determines that the skilled artisan would have found it obvious to modify Baldauf such that the elastic film layer has a printed graphic as taught by Bishop because such modification would allow the user to provide designs and lines at any position of the device to make it more visually appealing. Id. at 4. The Examiner relies on Shimada for disclosing printed elastic laminates for absorbent articles, wherein an image printed on a core layer attached to a chassis outer layer is visible through the chassis outer layer. Id. The Examiner concludes that one of ordinary skill in the art would have Appeal 2019-002568 Application 15/385,090 5 found it obvious to modify Baldauf (as modified by Bishop) such that the printed image is visible when applied between surface web layers, allowing the user to see the printed image, and making the article more visually appealing. Id. Appellant argues that the claimed steps must be performed in the specific sequence given in claim 1. Appeal Br. 6; Reply Br. 2. Appellant contends that, although it is known to make a printed elastic laminate, in general the printed motif is unsatisfactory because it is blurred or deformed by subsequent treatment steps. Appeal Br. 5. Specifically, Appellant argues that “the subsequent stretching/activation distorts the printed image or motif.” Id. at 6. Appellant further argues that each of the cited prior art references fails to teach specific elements of claim 1. See id. at 7–9. With regard to Baldauf, Appellant argues that the reference does not disclose transversely stretching the film, then transversely relaxing it, then printing it, then cutting it, then bonding the elastic strips into a laminate. Id. at 7. Appellant argues that Baldauf’s core is not printable, stretchable, or relaxable. Id. at 7–8. Appellant contends that Bishop teaches an elastic panel that is only partly an elastic film, and the meltblown facing portion of the elastic panel is printed. Id. at 8. Appellant argues, therefore, that the step of “printing a motif on the relaxed film” is not taught in Bishop. Id. Shimada, Appellant argues, fails to disclose printing on an elastic core layer after it has been transversely stretched and relaxed. Id. at 9. Appellant does not identify reversible error in the Examiner’s rejection of claim 1 as obvious. Appeal 2019-002568 Application 15/385,090 6 The Examiner does not dispute Appellant’s contention that the claimed steps must be performed in the specific sequence provided. See generally Final Act. Rather, the Examiner finds that each of the steps is disclosed in the prior art, and that the performance of those steps in the order claimed is obvious. See id. at 3–4. The selection of any order for performing known process steps is obvious in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 692 (CCPA 1946) (finding the claimed order of steps to process flour obvious where the record lacked proof of new and unexpected results). Appellant fails to provide evidence of new or unexpected results in comparison to the disclosures of the prior art. Even if Appellant’s method produces “a markedly superior product” (Appeal Br. 6) in comparison to products in which an elastic film is first printed, then stretched (causing blurred or deformed images), Appellant’s contention fails in consideration of Bishop, which discloses biaxially stretching/relaxing the elastic film prior to printing on the peaks made by the relaxed elastic film/meltblown facing. The image produced on the peaks in Bishop would not suffer distortion or blurring. Consequently, Appellant does not rebut the Examiner’s conclusion that the claimed order of steps would have been obvious to one of ordinary skill in the art. Appellant’s attacks on the references individually (Appeal Br. 7–9) also fail to persuade us of reversible error in the Examiner’s rejection. Pointing out that each reference does not disclose an element of the claim is not helpful in identifying reversible error by the Examiner when the Examiner is not relying on the reference for teaching that claim element. One cannot show nonobviousness by attacking references individually when Appeal 2019-002568 Application 15/385,090 7 the rejection is based on a combination of references. In re Keller, 642 F.2d 413, 425 (CCPA). Each reference must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus, Appellant’s arguments as to what each individual reference fails to teach does not address the Examiner’s findings regarding the combined teachings of these references where the rejection does not rely on any single reference to teach all of these steps. Appellant’s argument that Baldauf does not disclose transversely stretching the film, then transversely relaxing it, then printing it, then cutting it, then bonding the elastic strips into a laminate (Appeal Br. 7) is unpersuasive of reversible error because the Examiner does not rely on Baldauf to teach all of these elements, but instead relies on the combination of references for these discloses (see Final Act. 3–4). The rejection is not erroneous if Baldauf’s core is not printable, stretchable, or relaxable—or if Shamada fails to disclose stretching, then relaxing, then printing on an elastic core (see Appeal Br. 7–8)—because the Examiner relies on Bishop to teach these limitations (Final Act. 3–4). We note that Appellant does not challenge the Examiner’s motivation to combine the references. See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) for the proposition that the Board may treat arguments appellant failed to make as waived). Also unavailing is Appellant’s argument that Bishop fails to the step of “printing a motif on the relaxed film” because Bishop teaches that the printing occurs directly on the meltblown facing of an elastic panel. See Appeal 2019-002568 Application 15/385,090 8 Appeal Br. 8. Bishop discloses that elastic panels can be constructed from an elastic laminate that is a composite that includes an elastic film laminated to a meltblown facing. Bishop ¶ 48. Bishop teaches For a[n elastic] laminate having a cross section defined by the y- z plane, where the material is elastically functional along the y axis, and x-y plane defines the printable surface of the laminate, the corrugations formed by the retracted facing in the y-z plane have descriptive values similar to those of a wave. Whereas a wave has a frequency, wavelength, and amplitude, the corrugations of the facings have a corrugation density, a corrugation spacing, and a corrugation height. It is both the magnitude and variability of these values that determine the resulting smoothness or texture of the material. The regularity of the corrugation height determines the uniformity and thus smoothness of the retracted surface. For a laminate having a cross section in the y-z plane, and a printable surface in the x-y plane, the regularity of corrugation height measured on the z axis determines the consistency of laminate look and feel. . . . The magnitude of corrugation density determines the surface area available on the elastic laminate. . . . [T]he [elastic] film is under tension in the machine direction during lamination. Subsequent to lamination, however, the film is retracted so that the facing retracts toward its original machine direction length, thereby gathering and forming pleats. [T]hese pleats have a relatively small amplitude (height), as well as a substantially uniform frequency across the surface of the facts [which] improves the ability to transfer an ink to the ‘peaks’ of the pleats, thereby improving the print quality and uniformity. Bishop ¶¶ 49–51, 55. Thus, Bishop teaches a stretched and relaxed elastic laminate providing improved print quality and uniformity. The question, Appeal 2019-002568 Application 15/385,090 9 then, is whether printing on Bishop’s “elastic laminate” meets the claim limitation of “printing a motif on the relaxed film.” We find that it does. During prosecution, absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); see also TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016) (“Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification and prosecution history.”); see also In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989) (“During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow. When the applicant states the meaning that the claim terms are intended to have, the claims are examined with that meaning, in order to achieve a complete exploration of the applicant’s invention and its relation to the prior art.” (citing In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969) (before the application is granted, there is no reason to read into the claim the limitations of the specification)). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Our reviewing court has repeated warned against confining claims to the embodiments in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). The “broadest reasonable interpretation” standard does not prejudice the applicant, who has the ability to correct errors in claim Appeal 2019-002568 Application 15/385,090 10 language and to adjust the scope of claim protection as needed during prosecution by amending the claims. In re Yamamoto, 740 F.2d 1569, 1571–72 (Fed. Cir. 1984). Claim 1 contains the open transitional term “comprising,” which permits elements in addition to those specified to be included in the composition of the claim. In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004): “[I]t is well-established that ‘[c]omprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.’ Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.Cir.1997).” What a reference—here, the Specification—teaches, i.e., what it would have meant to a person having ordinary skill in the art, is a question of fact. In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992) (“What a reference teaches is a question of fact.”). Nothing in claim 1 (or the Specification) requires that a motif be printed directly on the relaxed film. Bishop teaches that an elastic film is stretched, a meltblown facing is applied, print is applied to the meltblown facing, the film and facing (denominated “elastic laminate” in Bishop) are retracted. See Bishop ¶¶ 17, 55. Appellant argues that Bishop contains no suggestion to print before laminating. Reply Br. 3. However, the Examiner uses Bishop to teach that the stretching and relaxation is done first, and afterward the image is printed. Ans. 9. The Examiner uses Baldauf to teach that an elastic laminate layer is pulled off a roll, cut into strips, and then laminated between two webs. Id. Thus, the combined references disclose an elastic film that stretched, retracted, printed, cut into strips and bonded between two surface webs. Appeal 2019-002568 Application 15/385,090 11 Appellant fails to show reversible error in the Examiner’s conclusion that claim 1 is obvious over Baldauf in view of Bishop and further in view of Shimada. We sustain the Examiner’s rejection of claim 1. For the same reasons given above, we sustain the rejection of claims 2–10. CONCLUSION The Examiner’s decision to reject claims 1–10 is affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–10 103 Baldauf, Bishop, Shimada 1–10 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation