Ex Parte Daskal

Board of Patent Appeals and Interferences

Jun 14, 2011

09489655 (B.P.A.I. Jun. 14, 2011)

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.
09/489,655 01/24/2000 Bernard Daskal 28951/3 6092
7590 06/15/2011
Charles R Macedo
Amster Rothstein & Ebenstein
90 Park Avenue
21st Floor
New York, NY 10016
EXAMINER
ANDERSON, CATHARINE L
ART UNIT PAPER NUMBER
3764
MAIL DATE DELIVERY MODE
06/15/2011 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 BERNARD DASKAL
____________________

Appeal 2011-003946
Application 09/489,655
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
ANTON W. FETTING, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003946
Application 09/489,655
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STATEMENT OF CASE
Bernard Daskal (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s rejections of claims 1 and 5-7 under 35 U.S.C. § 103(a) as being
unpatentable over Van Iten (US 5,188,625, iss. Feb. 23, 1993) and,
alternatively, as being unpatentable over Datta (US 4,801,494, iss. Jan. 31,
1989). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

The Invention
The claims are directed to a feminine hygiene pad comprising a
topsheet having a dark color, such as black, brown, or red. Claim 1,
reproduced below, is illustrative of the claimed subject matter:1
1. A feminine hygiene pad that is worn in the crotch portion of
an undergarment, said feminine hygiene pad comprising:
a central body fluid absorbent core having a body facing
side and an undergarment facing side;
a fluid permeable topsheet overlaid on said body facing
side of said central body fluid absorbent core and having a
dark color; and
a fluid impermeable backsheet overlaid on said
undergarment facing side of said central body fluid
absorbent core and placed in register with said fluid
permeable topsheet.

1 Claims 5-7 differ from claim 1 in that they specifically call for the topsheet
to be “black,” “brown,” and “red,” respectively, rather than having a dark
color.
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OPINION
The rejection based on Van Iten
The Examiner found that Van Iten describes a sanitary napkin
satisfying all of the limitations of claims 1 and 5-7, with the exception of the
color of the topsheet (cover 184). See Ans. 3. In particular, the Examiner
correctly found that Van Iten’s sanitary napkin comprises a cover 184 that
may be selectively colored, in order to mask stains caused by menstrual
fluids, with preferred colors including blue or green. See id.; Van Iten, col.
11, ll. 6-23. Appellant does not dispute these findings.
The Examiner reasoned that because the cover colors disclosed by
Van Iten perform the same purpose as the dark colors of the claimed
invention, it would have been obvious to one of ordinary skill in the art to
make Van Iten’s cover in any of the colors called for in Appellant’s claims.
Ans. 4. According to the Examiner, the person of ordinary skill in the art
“would have readily recognized that many different colors could be selected
and utilized to satisfy the desired result of visual masking of stains during
the use of the sanitary product.” Id.
The Examiner’s reasoning has rational underpinning. Van Iten’s
disclosure of adding colorants to the cover for the purpose of visually
masking or attenuating “the typical red menstrual stain observable during
use” (col. 11, ll. 6-13) would have prompted a person of ordinary skill in the
art to use any color capable of masking typical red menstrual stains for the
cover, including a dark color (as called for in claim 1), such as black, brown,
or red (as called for in claims 5-7, respectively).
Appellant argues that Van Iten’s teaching of blue, blue-green, or green
colors for the cover would not have suggested the use of dark colors, such as
those called for in Appellant’s claims. App. Br. 10. This argument does not
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Application 09/489,655
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point to error in the rejection, because the Supreme Court has stated that a
rigid insistence on teaching, suggestion, or motivation is incompatible with
its precedent concerning obviousness. KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 419 (2007). Rejections on obviousness grounds must be
supported by “some articulated reasoning with some rational underpinning”
to combine the known elements in the manner required in the claim at issue.
Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
However, “the 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, 550 U.S. at 418. Further, while Van Iten describes
colors in the blue, blue-green, and green areas of the visual light spectrum as
being preferred colors for performing the masking, Van Iten also broadly
teaches using colors that would attenuate the typical red menstrual stains
observable during use of the sanitary napkin. These broader teachings of
Van Iten must be considered as well. A reference is not limited to its
preferred embodiment, but must be evaluated for all of its teachings,
including its teachings of non-preferred embodiments. In re Burckel, 592
F.2d 1175, 1179 (CCPA 1979).
Appellant argues that “dark colors have been shown in practice to be
ineffective in masking, for example, light, non-menstrual stains such as
leukorrhea.” App. Br. 10; Reply Br. 5; see also Daskal Decl., para. 5. Even
assuming this argument to be correct, this in no way suggests that dark
colors would not be suitable for the purpose prescribed by Van Iten, namely,
visually masking or attenuating “typical red menstrual stain[s].”
Appellant additionally argues that Van Iten teaches away from the
claimed invention because the colors (blue, blue-green, and green)
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Application 09/489,655
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specifically mentioned by Van Iten “are not ‘colored’ surfaces for the
purposes of the Rabbinic Decree,” and thus would be unacceptable for the
purposes disclosed in Appellant’s Specification. App. Br. 11. While this
line of reasoning presents an appealing argument as to why it might not have
been obvious to use the preferred colors of Van Iten for the purpose
disclosed in Appellant’s Specification, it is not particularly relevant to the
modification proposed by the Examiner, namely, making Van Iten’s cover a
dark color, such as red, black, or brown, to achieve Van Iten’s stated purpose
of masking typical red menstrual stains. While Van Iten discloses preferred
colors in the blue, blue-green, and green areas of the color spectrum, Van
Iten in no way disparages or discourages the use of other colors that would
mask typical red menstrual stains, and thus does not teach away from the
claimed invention.2
Appellant’s argument on page 11 of the Appeal Brief that the
Examiner failed to address claims 5-7 is not accurate. The Examiner does
not, as Appellant contends, address only “dark” colors. The Examiner’s
rejection specifically points out that Van Iten’s preferred colors “effectively
perform the same purpose as the dark colors of the claimed invention.” Ans.
4 (emphasis ours). Further, the rejection proposes making Van Iten’s color
“in the colors of the instant claims.” Id. (emphasis ours). Inasmuch as
Appellant’s claims recite black, brown, and red, the Examiner’s reference to
“dark colors of the claimed invention” and “colors of the instant claims”
covers these colors.

2 Prior art does not teach away from claimed subject matter merely by
disclosing a different solution to a similar problem unless the prior art also
criticizes, discredits or otherwise discourages the solution claimed. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
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Appellant argues that the Neiman Declaration “makes clear that the
present invention provides a long-felt need to the Jewish community.”
Reply Br. 6; see Neiman Decl., para. 9.
Establishing long-felt need requires objective evidence that an
art-recognized problem existed in the art for a long period of time without
solution. In particular, the evidence must show that the need was a
persistent one that was recognized by those of ordinary skill in the art. In re
Gershon, 372 F.2d 535, 539 (CCPA 1967). An argument based upon long-
felt need must be accompanied by evidence that demonstrates the existence
of a problem which was of concern in the industry and has remained
unsolved over a long period of time. See Vandenberg v. Dairy Equip. Co.,
740 F.2d 1560, 1567 (Fed. Cir. 1984). This can be accomplished, for
example, by the testimony of experts in the industry, or publications and the
like, which speak to the duration and extent of the problem, and of the
substantial effort and resources which had been expended during that time in
attempts to solve the problem. See Railroad Dynamics, Inc. v. Stuki Co.,
579 F. Supp. 353, 363 (E.D. Pa. 1983), aff'd 727 F.2d 1506 (Fed. Cir. 1984),
cert. denied 105 U.S. 220 (1984). Once the long-felt need has been
established, it must further be shown that the invention satisfied that need.
See In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). This can be
demonstrated, for example, by evidence establishing commercial success
and that the industry purchased the claimed invention because it satisfied the
long-felt need. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d
1540, 1555 (Fed. Cir. 1983).
The Neiman Declaration states that there has been a long-felt need in
the Jewish community for a feminine hygiene pad which would preclude the
circumstance of non-menstrual stains raising the question of whether a
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Application 09/489,655
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woman is a Niddah. Neiman Decl., para. 9. The Neiman Declaration does
not provide any evidence of any efforts or resources expended by others to
solve this problem, and Appellant does not point to any such evidence, to
show that the problem was a persistent one that was recognized by those of
ordinary skill in the art and went unsolved for a long period of time.
After reviewing all of the evidence before us, including the Neiman
and Daskal Declarations, we conclude that the evidence of obviousness
outweighs the evidence of nonobviousness. Accordingly, the Examiner did
not err in rejecting claims 1 and 5-7 as being unpatentable over Van Iten.
We sustain the rejection.
The rejection based on Datta
We need not address this rejection, because our decision affirming the
rejection based on Van Iten is dispositive as to all claims on appeal.

DECISION
For the above reasons, the Examiner’s decision is affirmed.
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)(iv).

AFFIRMED

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