Ex Parte Berba et al

Board of Patent Appeals and Interferences

Nov 10, 2009

11262048 (B.P.A.I. Nov. 10, 2009)

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.
11/262,048 10/28/2005 Maria Luisa M. Berba PPC-5131-USNP 8329
27777 7590 11/10/2009
PHILIP S. JOHNSON
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
11/10/2009 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 MARIA LUISA M. BERBA,
ANA MARIA R. MARCELO, MARIA SOCORRO MEDINA,
PAULO ROBERTO SERRA, JENNY G. DU, TARUN K. ARORA,
LUIZ HENRIQUE RACHID, and FRANCISCO ANTONIO RIMOLI
__________

Appeal 2009-007899
Application 11/262,048
Technology Center 3700
__________

Decided: November 10, 2009
__________

Before ERIC GRIMES, LORA M. GREEN, and FRANCISCO C. PRATS,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-18. We have jurisdiction under 35
U.S.C. § 6(b).
Appeal 2009-007899
Application 11/262,048

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STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. An absorbent article comprising: a first layer having an internal
surface and an external surface; a second layer having an internal surface
and an external surface; indicia arranged on at least one of said internal
surfaces of said first layer or on said internal surface of said second layer;
wherein at least one of said first layer or said second layer has a light
transmittance of at least 45%, wherein said indicia is viewable over the
entire surface from at least one of said external surfaces.

The Examiner relies on the following evidence:
Miura US 2004/0015145 A1 Jan. 22, 2004
Collando US 2003/0114822 A1 Jun. 19, 2003

We affirm.

ISSUE
The Examiner finds that claim 1 is anticipated by Miura.
Appellants assert that Miura does not teach an absorbent article
wherein the indicia is viewable over the entire surface from at least one of
said external surfaces, as required by claim 1.
Thus, the issue on appeal is: Have Appellants demonstrated that the
Examiner erred in finding that Miura teaches an absorbent article wherein
the indicia is viewable over the entire surface from at least one of said
external surfaces, as required by claim 1?

Appeal 2009-007899
Application 11/262,048

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FINDINGS OF FACT
FF1 According to the Specification, “the present invention relates to an
absorbent article having indicia printed on an internal surface of the article,
the indicia being substantially viewable through an entire outer surface of
the article.” (Spec. 1.)
FF2 The Specification teaches:
When the terminology “viewable over the entire external
surface” or the like is used herein it does not require that the
indicia or the like be printed over an entire internal surface of
the article. Rather, this terminology means that the article does
not contain any structure that would prevent the indicia from
being viewed from the external surface of the article if indicia
was printed on an internal surface in such area of the article.
Stated another way the material(s) of the article arranged
between the indicia and the relevant outer surface of the article
from which the indicia is being viewed has a light transmittance
of at least 45% over the material’s entire surface area. In this
manner, no matter where the indicia is arranged, the material
located between the indicia and the external surface of the
article being viewed will not prevent the indicia from being
readily visible.

(Id. at 7.)
FF3 The Examiner rejects claims 1-5, 10, 11, 16, and 18 under 35 U.S.C.
§ 102(b) as being anticipated by Miura (Ans. 4). As Appellants do not argue
the claims separately, we focus our analysis on claim 1, and claims 2-5, 10,
11, 16, and 18 stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii).
FF4 The Examiner finds:
Miura describes an absorbent article having a graphic 65
printed on the liquid impermeable barrier garment contacting
layer on the body facing surface or in the alternative printed on
the liquid permeable body contacting layer on the garment
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facing surface, where at least one layer has a light transmittance
of 45-100%, which is within the claimed range, where the
graphic is viewable from the entire external surface.

(Ans. 4.)
FF5 Miura teaches an absorbent article with a visible graphic, wherein the
absorbent article is preferably a sanitary napkin or pantiliner, wherein the
absorbent article comprises a body contacting layer, a garment contacting
layer, and an absorbent core disposed between body contacting layer and the
garment contacting layer (Miura ¶7).
FF6 Figure 2 of Miura is reproduced below:

Figure 2 is a cross-sectional view of one embodiment of a sanitary napkin of
Miura (id. at ¶15).
FF7 Miura teaches that a graphic may be printed on graphic layer 60, and
may be printed on the whole body facing surface 22 of the garment
contacting layer 40 (id. at ¶35).
FF8 More specifically, Miura teaches:
In one embodiment, the garment contacting layer 40 includes
two layer materials, i.e., a graphic layer 60 (or a substrate layer
for the graphic 65) and a liquid impermeable layer 42 as shown
in FIGS. 2 and 4. The graphic layer 60 having the graphic 65
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printed is disposed on the body facing surface 22 of the liquid
impermeable layer 42 at least in the outer region 26, preferably
in both the core region 25 and the outer region 26 as shown in
FIGS. 2 and 4. Preferred materials for the graphic layer 60
include, but [are] not limited to, a thin plastic film, a nonwoven
web and a tissue wherein the graphic 65 is printed on its body
facing surface 22. The graphic layer 60 is disposed at least in
the outer region 26, preferably in both the core region 25 and
the outer region 26 (in that embodiment, the whole body facing
surface 22 of the liquid impermeable layer 42 is covered by the
graphic layer 60).

(Id. at ¶37.)
FF9 Miura teaches that the body contacting layer 30 has a light
transmittance (LT1) such that “the graphic 65 printed on the body facing
surface 22 of the garment contacting layer 40 (or on the garment facing
surface 24 of the graphic protection layer 34) can be seen through the body
contacting layer 30 in the outer region 26.” (Id. at ¶41.)
FF10 Miura teaches further that LT1 is preferably about 45%, but that it is
preferred that the light transmittance of the body contacting layer 30 is less
than 80%, preferably less than 70%, in the core region 25 to prevent
absorbed body fluids from being seen through the body contacting layer 30
(id.).
FF11 As to the garment facing layer, Miura teaches:
the garment contacting layer 40 preferably has a second light
transmittance (LT2) so that the graphic 65 on the body facing
surface 22 (or on the garment facing surface 24 of the graphic
protection layer 34) can also be seen through the garment
contacting layer 40. In order to further effectively affect
women’s mood in the menstruation period, the material used
for the garment contacting layer 40 needs to have an
appropriate range of light transmittance. In a preferred
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embodiment, the second light transmittance (LT2) is at least
about 10%, preferably about 45% (i.e., in a range of about 45-
100%), and more preferably about 85% (i.e., in a range of about
85-100%).

(Id. at ¶43.)
FF12 According to Miura, in the above embodiment, “since users can
additionally see the graphic 65 through the garment contacting layer 40, the
sanitary napkin 20 can additionally provide an emotional benefit to women,
and thus decrease women's melancholic mood.” (Id. at ¶44.)
FF13 The Examiner rejects claims 6 and 12 under 35 U.S.C. § 103(a) as
being rendered obvious by Miura (Ans. 5).
FF14 The Examiner also rejects claims 7-9, 13-15, and 17 under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Miura and
Collando (id.).

PRINCIPLES OF LAW
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). Moreover, a reference need not have described an actual reduction to
practice of an invention in order to serve as an anticipatory reference. In re
Sivaramakrishnan, 673 F.2d 1383, 1384 (CCPA 1982); In re Donohue, 766
F.2d 531, 533 (Fed. Cir. 1985).

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ANALYSIS
Appellants argue that while Miura teaches that for the simplicity of
manufacture the graphic may be printed over the entire body facing surface
22, Miura does not disclose “that the indicia is viewable over the entire
surface.” (App. Br. 6.) Appellants assert that every figure of Miura only
shows that the indicia 65 is shown within the outer region 26, and not the
entire surface, and Miura only emphasizes the light transmittance of the
outer region 26 (id. (citing Miura, ¶40)). Appellants argue further “that
Miura suggests that the body contacting layer 30 have limited light
transmittance in the core region 25 to thereby limit the visibility of
menstrual fluid absorbed by the core 50,” thus, Appellants assert, “[if] the
cover functions to block the visibility of menstrual fluid absorbed by the
core 50 it is not seen how it could be possible at the same time to permit the
visibility of graphic 65 printed on a layer below the very same core 50.” (Id.
at 7.)
Appellants’ arguments have been considered, but are not convincing.
The Specification teaches that the terminology “viewable over the entire
external surface” or the like as used herein does not require that the indicia
or the like be printed over an entire internal surface of the article, but only
that the relevant outer surface of the article from which the indicia is being
viewed has a light transmittance of at least 45% over the material’s entire
surface area.
Miura specifically teaches that the body contacting layer 30 has a light
transmittance of at least 45%. While Miura does teach that the light
transmittance of the body contacting layer 30 is different in the core region
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25 to prevent absorbed body fluids from being seen through the body
contacting layer 30, Miura teaches that the light transmittance of the body
contacting layer 30 is less than 80%, preferably less than 70%. Thus, Miura
teaches that even the core region has a light transmittance greater than 45%,
and thus meets the limitations of claim 1.
Moreover, claim 1 does not specify which external surface over which
the indicia is viewable over the entire surface. Miura teaches that the
garment contacting layer 40 preferably has a second light transmittance
(LT2) so that the graphic 65 on the body facing surface 22 (or on the
garment facing surface 24 of the graphic protection layer 34) can also be
seen through the garment contacting layer 40, and that in a preferred
embodiment, the second light transmittance (LT2) is at least about 10%,
preferably about 45%. Thus, Miura also teaches that the indicia is viewable
over the entire garment contacting layer within the meaning of the
Specification.
As to the rejection of claims 6 and 12 under 35 U.S.C. § 103(a) as
being rendered obvious by Miura, and the rejection of claims 7-9, 13-15, and
17 under 35 U.S.C. § 103(a) as being rendered obvious by the combination
of Miura and Collando, Appellants argue only that the rejections do not
overcome the deficiencies of the anticipation rejection (App. Br. 7). Those
arguments are not found to be convincing for the reasons set forth above
with respect to the anticipation rejection.

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CONCLUSION OF LAW
We find that Appellants have not demonstrated that the Examiner
erred in finding that Miura teaches an absorbent article wherein the indicia is
viewable over the entire surface from at least one of said external surfaces,
as required by claim 1.
We thus affirm the rejection of:
Claims 1-5, 10, 11, 16, and 18 under 35 U.S.C. § 102(b) as being
anticipated by Miura;
Claims 6 and 12 under 35 U.S.C. § 103(a) as being rendered obvious
by Miura; and
Claims 7-9, 13-15, and 17 under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of Miura and Collando.

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).

AFFIRMED

Appeal 2009-007899
Application 11/262,048

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lp

PHILIP S. JOHNSON
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK NJ 08933-7003