Ex Parte Belau et al

Board of Patent Appeals and Interferences

May 18, 2010

10452033 (B.P.A.I. May. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOM RUSSELL BELAU, ROBERT DAVID FORRESTER,
MICHAEL JOHN FLATTUM, PAULA CARDINAHL WINKEL, and
BERNHARDT EDWARD KRESSNER
____________

Appeal 2009-006786
Application 10/452,033
Technology Center 3700
____________

Decided: May 18, 2010
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Tom Russell Belau et al. (Appellants) appeal under 35 U.S.C. § 134
(2002) from the Examiner’s decision rejecting claims 1-6, 12, 26, and 28-41.
Claims 7-11, 13-25, and 27 have been cancelled. We have jurisdiction over
this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellants’ invention relates to a disposable absorbent article
including one or more discrete components, i.e., the outer cover, the
absorbent core, the bodyside liner, the fasteners, and the ears. Spec. 3, ll.
27-30. The material of the discrete component includes a printed block
having a Printed Block Sensor Value that is 3.25 times greater than a
Background Sensor Value of the material of the discrete component. Spec.
4, ll. 4-16.
Claim 1, is representative of the claimed invention and reads as
follows:
1. A disposable absorbent article having a longitudinal direction
and a lateral direction, further comprising:

a discrete component, wherein the discrete component is part of
the absorbent article;

wherein the discrete component is an outercover which includes
a material and the material is a necked bonded laminate material
having a Surface Topographic Variance value of at least 125
micrometers;

wherein the material includes a printed block and a printed
picture, the printed block being located in a longitudinal position on
the discrete component and in a lateral position on the discrete
component; and
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wherein the printed block has a Printed Block Sensor Value and
the material has a Background Sensor Value at the same lateral
position as the printed block and the ratio of the Printed Block Sensor
Value to the Background Sensor Value is at least 3.25 to 1[.]

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ungpiyakul US 5,235,515 Aug. 10, 1993
Hasse US 5,575,782 Nov. 19, 1996
Suprise US 5,853,405 Dec. 29, 1998
Weber US 6,352,528 B1 Mar. 5, 2002

The following rejections are before us for review:
1. The Examiner rejected claims 1-5 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Suprise and Hasse.
2. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Suprise, Hasse, and Ungpiyakul.
3. The Examiner rejected claims 26 and 28-33 under 35 U.S.C. § 103(a)
as unpatentable over Suprise and Weber.
4. The Examiner rejected claims 34-40 under 35 U.S.C. § 103(a) as
unpatentable over Suprise, Weber, and Ungpiyakul.
5. The Examiner rejected claim 41 under 35 U.S.C. § 103(a) as
unpatentable over Suprise, Ungpiyakul, and Weber.

THE ISSUES
Appellants argue that the Examiner has failed to show that the
combined teachings of Suprise and Hass “recognized any effect between the
insignias 15 of Hasse and a Printed Block Sensor Value.” App. Br. 6.
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Appellants also argue that the Examiner has failed to provide any evidence
that the combination of Suprise and Weber has “recognized any effect
between the hidden graphics of Weber and a Printed Block Sensor Value.”
App. Br. 9. In response, the Examiner takes the position that “[t]he
properties of [the] Printed Block Sensor Value and [the] Background Sensor
Value are result-effective variables, subject to experimentation and testing”
that “affect[] how readily a position on an absorbent article can be detected,
transduced or ‘registered’ by automated manufacturing equipment.” Ans. 5.
See also Ans. 9 and 17-20.
As such, the first issue presented for our consideration in the instant
appeal is whether the evidence of record establishes that Printed Block
Sensor Value and the Background Sensor Value are art-recognized result-
effective variables, or, more particularly, whether the ratio between them is
an art-recognized result-effective variable.
Appellants further argue that Ungpiyakul does not disclose a
“masking block,” as required by each of claims 6 and 34-39. Pointing to
Page 23, lines 12-14 of Appellants’ Specification that describes a “masking
block” as “a space or area of the discrete component for which the
ultraviolet (or other type of) fluorescence is covered up or ‘masked,’”
Appellants specifically argue that Ungpiyakul does not disclose an “area that
covers up or masks the ultraviolet fluorescence.” App. Br. 8. The Examiner
responds that the term “‘masking’ is interpreted broadly as a practice of
placing (or printing) a substance that changes the background UV
fluorescence as detected by a sensor.” Ans. 19.
Accordingly, the second issue presented for our consideration in the
instant appeal is whether Ungpiyakul discloses a “masking block,” as
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required by each of claims 6 and 34-39. The issue turns on whether the
Examiner’s interpretation of the term “masking” is unreasonably broad.

SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

PRINCIPLES OF LAW
A particular parameter must first be recognized as a result-effective
variable, i.e., a variable which achieves a recognized result, before the
determination of the optimum or workable ranges of said variable might be
characterized as routine experimentation. In re Antonie, 559 F.2d 618, 620
(CCPA 1977).
OPINION
Issue (1)
Claims 1-5, 12, 26, and 28-33
At the outset, we agree with the Examiner that Suprise discloses all
the features of independent claims 1 and 26 with the exception of a printed
block and a printed picture. Ans. 5 and 9. We further agree with the
Examiner that both Hasse and Weber disclose a printed block and a printed
picture. Id. However, like Appellants, we find that neither Hasse nor Weber
discloses any relationship between a printed Block Sensor Value and a
Background Sensor Value. We could not find any teaching in either Hasse
or Weber, and the Examiner has not provided any evidence, that would have
led a person of ordinary skill in the art to a relationship between the Printed
Block Sensor Value and the Background Sensor Value, moreover, to a
specific relationship where the Printed Block Sensor Value is 3.25 times
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greater than the Background Sensor Value, as called for by each of
independent claims 1 and 26. In other words, the Examiner has not provided
any evidence to establish that changes in the ratio of the Printed Block
Sensor Value and the Background Sensor Value were known to change the
ability of automated manufacturing equipment to detect or register an
absorbent article during manufacturing.
Since the Examiner has not provided any evidence to establish that the
ratio of the Printed Block Sensor Value and the Background Sensor Value
was known to be a result-effective variable, it amounts to speculation and
conjecture to conclude that discovering the optimum ratio was the product of
routine experimentation. Since speculation and conjecture cannot form the
basis for concluding obviousness, the rejections of independent claims 1 and
26 and dependent claims 2-5, 12, and 28-33 cannot be sustained. See In re
Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent claim is
nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is
nonobvious).

Claim 41
Appellants argue that because the Examiner has failed to provide any
evidence that the combined teachings of Suprise and Weber “recognized that
the ratio of the attachment panel Printed Block Sensor Value to the
attachment panel Background Sensor Value affected any result of which
they [Surprise and Weber] were concerned,” these parameters are not result-
effective variables App. Br. 10. However, in rejecting claim 41, the
Examiner used the teachings of Ungpiyakul in addition to the teachings of
Suprise and Weber.
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It is our finding that Ungpiyakul discloses a method and device for
cutting and placing onto a moving substrate layer a discrete patch of web
material. Ungpiyakul, col. 1, ll. 10-13. In order to provide proper
registration and controlled cutting of web material 22, Ungpiyakul discloses
reference markers 26. Ungpiyakul, col. 8, ll. 63-66 and fig. 6. The reference
marker 26 can be an ultraviolet sensitive optical brightener that absorbs
ultraviolet radiation and then emits visible light detectable by an optical
sensor 24 positioned adjacent to web material 22 so as to direct ultraviolet
radiation toward the moving web and to receive the visible light signals
generated by particular web components. Ungpiyakul, col. 9, ll. 30-34 and
57-62 and col. 10, ll. 11-14. As the web material 22 passes sensor 24, the
sensor can detect the edges (leading and trailing edges) of reference marker
26. Ungpiyakul, col. 10, ll. 15-17. Hence, we find that in order for the
sensor 24 of Ungpiyakul to be able to differentiate between the reference
marker 26 and the web material 22, the visible light signals generated by the
reference marker 26 (Printed Block Sensor Value) and the web material 22
(Background Sensor Value) must be different, that is, must form a ratio. We
agree with the Examiner that, “a sufficient ratio between these values is
required to allow automated detection.” Ans. 20. As such, a person of
ordinary skill in the art would have readily recognized that changes in the
ratio of the Printed Block Sensor Value and the Background Sensor Value in
the system of Ungpiyakul would also change the ability of the automated
manufacturing equipment to detect or register an absorbent article during
manufacturing.
In conclusion, because Ungpiyakul discloses that changes in the ratio
of the Printed Block Sensor Value and the Background Sensor Value were
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known to change the ability of an automated manufacturing equipment to
detect or register an absorbent article during manufacturing, we agree with
the Examiner that the Printed Block Sensor Value and the Background
Sensor Value are art-recognized result-effective variables. Although the
combined teachings of Suprise, Ungpiyakul, and Weber do not disclose a
specific ratio where the Printed Block Sensor Value is 3.25 times greater
than the Background Sensor Value, it is well-established that, “the discovery
of an optimum value of a variable in a known process is normally obvious.”
In re Antonie, 559 F.2d at 620. Accordingly, the rejection of claim 41 under
35 U.S.C. § 103(a) over the combined teachings of Suprise, Ungpiyakul, and
Weber is sustained.

Issue (2)
Claims 6 and 34-39
At the outset, we note that the Examiner has not used the teachings of
Ungpiyakul to remedy the deficiencies of Suprise and Hasse and Suprise and
Weber, respectively, as discussed above, but merely to provide evidence of a
continuous detector material and a masking block. Ans. 8 and 12.
Like Appellants, we find that an ordinary and customary meaning of
the term “masking” that is most consistent with the Specification and the
understanding of those of ordinary skill in the art is “to cover up.” MERRIAM
WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). As such, it is our
finding that the reference marker 26 of Ungpiyakul is merely an ultraviolet
sensitive optical brightener that absorbs ultraviolet radiation and then emits
visible light detectable by an optical sensor. Ungpiyakul, col. 9, ll. 30-34
and 57-62. Hence, not only does the reference marker 26 of Ungpiyakul not
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constitute an area where the ultraviolet fluorescence is “covered up,” but
rather, in contrast, constitutes an area where the ultraviolet fluorescence is
uncovered (exposed) so as to be detected by a sensor. As such, we conclude
that the Examiner’s interpretation of the term “mask” is inconsistent with the
Specification as it would have been interpreted by a person of ordinary skill
in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Hence, Ungpiyakul does not disclose a “masking block,” as
required by each of claims 6 and 34-39.
In conclusion, we agree with Appellants that the combined teachings
of Suprise, Hasse, and Ungpiyakul do not disclose all the limitations of
claim 6. Likewise, we agree with Appellants that the combined teachings of
Suprise, Weber, and Ungpiyakul do not disclose all the limitations of claims
34-39. Accordingly, the rejection of claims 6 and 34-39 under 35 U.S.C. §
103(a) likewise cannot be sustained.

Claim 40
Claim 40, which depends from independent claim 26, is rejected by
the Examiner over the combined teachings of Suprise, Weber, and
Ungpiyakul. However, the Examiner has not used the teachings of
Ungpiyakul to remedy the deficiencies of Suprise and Weber, as discussed
above, but merely to provide evidence of multiple printed blocks. Ans. 14.
Accordingly, based on its dependency on claim 26, the rejection of claim 40
likewise cannot be sustained.

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NEW GROUND OF REJECTION
Claims 1 and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Suprise, Weber, and Ungpiyakul.
As noted above, we agree with the Examiner that Suprise discloses all
the features of independent claims 1 and 26 with the exception of (1) a
printed block and a printed picture and (2) a ratio of the Printed Block
Sensor Value to the Background Sensor Value of at least 3.25 to 1. Ans. 5
and 9. We further agree with the Examiner that Weber discloses an
absorbent article including a printed block and a printed picture. Ans. 9.
Hence, like the Examiner, we conclude that it would have been obvious for a
person of ordinary skill in the art to modify the disposable absorbent article
of Surprise with the printed block of Weber in order to encourage interaction
between a child and a caregiver. See Ans. 9.
Furthermore, for the reasons discussed above, it is our finding, based
on the record before us, that the Printed Block Sensor Value and the
Background Sensor Value, and the ratio between them, are art-recognized
result-effective variables because Ungpiyakul discloses that changes in the
ratio of the Printed Block Sensor Value and the Background Sensor Value
were known to change the ability of an automated manufacturing equipment
to detect or register an absorbent article during manufacturing. Therefore, it
would have been obvious for a person of ordinary skill in the art to provide
for a ratio of the Printed Block Sensor Value and the Background Sensor
Value as taught by Ungpiyakul in order to signal an automated
manufacturing equipment to detect or register the absorbent article of
Suprise and Weber during manufacturing. Lastly, although the combined
teachings of Suprise, Weber, and Ungpiyakul do not disclose a specific ratio
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of 3.25 to 1, where "general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Accordingly, claims 1 and 26 are unpatentable under 35 U.S.C. §
103(a) over the combined teachings of Suprise, Weber, and Ungpiyakul.
With respect to claims 2-5, 12, 28-33, and 40, although we decline to
reject every claim under our discretionary authority under 37 C.F.R. §
41.50(b), we emphasize that our decision does not mean the remaining
claims are patentable. Rather, we merely leave the patentability
determination of these claims to the Examiner. See MPEP § 1213.02.

DECISION
The Examiner’s decision is reversed as to claims 1-6, 12, 26, and 28-
40 and affirmed as to claim 41.
We enter a new ground of rejection of claims 1 and 26 under 35
U.S.C. § 103(a) as unpatentable over Suprise, Weber, and Ungpiyakul.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b)(2007). 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."
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
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both, and have the matter reconsidered by the
examiner, in which event the proceeding 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. . . .

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

mls

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