Ex Parte Erdman

Board of Patent Appeals and Interferences

Dec 12, 2007

10255108 (B.P.A.I. Dec. 12, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CAROL L. ERDMAN
__________

Appeal 2007-2612
Application 10/255,108
Technology Center 3700
__________

Decided: December 12, 2007
__________

Before DONALD E. ADAMS, NANCY J. LINCK, and FRANCISCO C.
PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
absorbent article having wetness and dryness indicators. The Examiner has
rejected the claims as anticipated and obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
THE INVENTION
“Training pants today are being designed to include a number of
different types of graphics in an attempt to train the child to go to the
Appeal 2007-2612
Application 10/255,108

bathroom on the toilet, and to persuade a child to wear conventional
undergarments” (Spec. 2). The Specification discloses “an absorbent article
that includes at least one disappearing graphic and at least one appearing
graphic that disappear and appear respectively, when the absorbent article is
insulted with an average insult amount of urine” (id. at 4).
Claims 1-7, 9-20, and 22-26 are pending and on appeal (Br. 2). Claim
1 is representative and reads as follows:
1. An absorbent article comprising:
a top sheet;
a back sheet;
an absorbent core disposed at least partially between the
top sheet and the back sheet; and
at least one disappearing graphic and at least one
appearing graphic that disappear and appear respectively, when
the absorbent article is insulted with an average insult amount
of urine,
wherein the at least one disappearing graphic is a positive
graphic, and the at least one appearing graphic is a negative
graphic.

THE REJECTIONS
The Examiner applies the following document in rejecting the claims:
Olson US 6,297,424 B1 Oct. 2, 2001

The following rejections are before us for review:
Claims 1-5, 9-12, 14-18, and 22-24 stand rejected under 35 U.S.C. §
102(e) as anticipated by Olson (Ans. 3).
Claims 6, 7, 13, 14, 19, 20, 25, and 26 stand rejected under 35 U.S.C.
§ 103(a) as obvious in view of Olson (Ans. 3-4).

2
Appeal 2007-2612
Application 10/255,108

THE ANTICPATION REJECTION
ISSUE
Appellant contends that “Olson does not disclose each and every
element recited in the pending claims, because Olson fails to disclose an
absorbent article having both a positive disappearing graphic and a negative
appearing graphic” (App. Br. 9). Specifically, Appellant argues, Olson
“fails to disclose an absorbent article having a negative appearing graphic —
in fact, none of the active graphics (appearing or disappearing) disclosed in
Olson is a negative graphic” as required by claim 1(id. at 10; see also 14-15
(“The Olson patent fails to disclose an absorbent article having a positive
disappearing graphic, and a negative appearing graphic because Olson
wholly fails to disclose any image that, by itself, is negative.”)).
The Examiner contends that, when the claims are given their broadest
reasonable interpretation in light of the Specification, the appearing graphics
disclosed by Olson can be considered negative graphics because “an image
not recognized as negative by one person may still connote a negative image
to another, and thus fulfill the definition of a negative graphic as described
in the Appellant's Specification” (Ans. 5).
The issue with respect to this rejection, therefore, is whether the
Examiner erred in finding that Olson describes an absorbent article having a
graphic that appears when exposed to urine, in which “the . . . appearing
graphic is a negative graphic,” as required by claim 1.
FINDINGS OF FACT
1. Claim 1 recites an absorbent article having the following elements:
(a) a top sheet, (b) a back sheet, (c) a graphic that disappears when insulted
3
Appeal 2007-2612
Application 10/255,108

with an average insult amount of urine, and (d) a graphic that appears when
insulted with an average insult amount of urine.
2. Olson describes “an absorbent article having an absorbent assembly
44 sandwiched between an outer cover 40 and a bodyside liner 42” (Olson,
col. 15, ll. 41-43; see also Figure 7A). Olson therefore meets the limitations
in claim 1 requiring the article to be absorbent and have a top and back
sheet.
3. Olson discloses that its absorbent garment “includes a permanent
character graphic and an active object graphic that are disposed on the outer
cover, with the permanent character graphic being interactively interrelated
with the active object graphic” (Olson, col. 1, l. 66, through col. 2, l. 2).
4. Olson states that the “term ‘active graphic’ . . . refers to an appearing
graphic, a fading graphic, or a combination of appearing and fading
graphics. The term ‘appearing graphic’ . . . refer[s] to a graphic that
becomes visible or becomes significantly more visible when exposed to
urine” (Olson, col. 2, ll. 3-8). Olson states that “the term ‘fading graphic’
. . . refer[s] to a graphic that becomes invisible or significantly less visible
when exposed to urine” (id. at col. 2, ll. 10-13).
5. Claim 1 limits the absorbent article to one in which “the at least one
disappearing graphic is a positive graphic.”
6. The Specification states:
The term “positive” as it is used herein to refer to a positive
disappearing graphic denotes any type of graphic that generally
connotes a positive or sanguine image to a viewer. It is to be
understood that not all viewers need to recognize the graphic as
positive or sanguine, only that the graphic generally connote a
sanguine image. While not intending to be limited to any
4
Appeal 2007-2612
Application 10/255,108

specific examples of positive graphics, suitable positive
graphics include smiling animals, people, anthropomorphic
characters, sunny days, cartoons and cartoon characters,
peaceful settings such as sunsets, oceans, lakes, waves, streams,
living animals and other creatures, sporting events, flowers,
gardens, angelic and other heavenly or religious images, and the
like. Positive images also may include words that connote a
positive spirit such as “dry,” “good boy,” “good girl,” “big
boy,” “big girl,” “happy,” “smile” and other words and phrases.

(Spec. 9.)

7. Olson discloses the following disappearing graphics that are positive
graphics:
(a) yellow fish that disappear into a background of blue water or green
weeds,
(b) pink flowers that fade into a background such as a green lawn,
(c) lavender sand toys that fade into a background of tan sand, and
(d) pink sea shells that fade into a background of tan sand.
(Olson, col. 2, ll. 50-60).
8. Claim 1 limits the absorbent article to one in which “the at least one
appearing graphic is a negative graphic.”
9. The Specification states:
The term “negative” as it is used herein to refer to a negative
appearing graphic denotes any type of graphic that generally
connotes a negative or disapproving or depressing image to a
viewer. It is to be understood that not all viewers need to
recognize the graphic as negative, disapproving, or depressing,
only that the graphic generally connote a negative image.
While not intending to be limited to any specific examples of
negative graphics, suitable negative graphics include sad or
crying animals, people, or anthropomorphic characters, gloomy
5
Appeal 2007-2612
Application 10/255,108

days, cloudy days, unsettling settings such as dungeons,
darkness, graveyards, mean cartoon characters, floods, fires,
lightning, dead people, animals or other creatures, satanic
characters, and the like. Negative graphics also may include
words and phrases that connote a negative image, such as
“oops,” “wet,” “bad boy,” “cry,” “sad,” and other words and
phrases.

(Spec. 10.)
10. Olson discloses that the appearing graphic on its absorbent garment
can . . . change color to a brighter and/or darker color. By way
of illustration, a teddy bear outlined and colored very pale, such
as yellow or tan, can when in contact with urine turn into bright
reds, greens, and/or blues. Alternatively, only the outline of the
active graphic can be present and a pattern or solid color can
appear over time or when in contact with urine. For example,
the active graphic can include an outline of a fire truck, which
fills in to become a solid color when urine comes in contact
with the truck.

(Olson, col. 7, ll. 39-48.)
PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). During examination, the
PTO must interpret terms in a claim using “the broadest reasonable meaning
of the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
6
Appeal 2007-2612
Application 10/255,108

However, while the specification may properly be used to interpret the
meaning of language in a claim, “this is not to be confused with adding an
extraneous limitation appearing in the specification, which is improper. By
‘extraneous,’ we mean a limitation read into a claim from the specification
wholly apart from any need to interpret . . . particular words or phrases in the
claim.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting E.I. Du
Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433
(Fed. Cir. 1988). Moreover, “[a]lthough an inventor is indeed free to define
the specific terms used to describe his or her invention, this must be done
with reasonable clarity, deliberateness, and precision.” Paulsen, 30 F.3d at
1480 (holding that specification generally describing desirable features and
capabilities of a portable computer did not establish a specific definition for
the term “computer” different from the ordinary and accustomed meaning).
ANALYSIS
We agree with the Examiner that Olson discloses the limitations in
claim 1 requiring the article to be absorbent and have a top and bottom sheet.
See Findings of Fact 1 and 2, supra. We also agree with the Examiner that
Olson’s absorbent article has a disappearing graphic that is a positive
graphic. See Findings of Fact 6 and 7, supra.
With respect to the disputed limitation, we agree with the Examiner
that Olson’s appearing graphic meets the limitation in claim 1 requiring the
appearing graphic to be a negative graphic. Specifically, Olson discloses
that the appearing graphic “can . . . change . . . to a . . . darker color” (Olson,
col. 7, ll. 39-40). One example of a negative appearing graphic listed in
Appellant’s Specification is “[an] unsettling setting[] . . . such as . . .
7
Appeal 2007-2612
Application 10/255,108

darkness” (Specification 10). Thus, because Olson discloses a graphic that
darkens as it appears, one of ordinary skill could reasonably conclude that
Olson discloses a negative graphic.
Also, because it indicates that the child has experienced an accident, a
suddenly darkening graphic on Olson’s child training pant could reasonably
be considered by one of ordinary skill to “generally connote a negative or
disapproving . . . image to a viewer” (Specification 10), thereby meeting the
Specification’s criteria for a negative graphic. Moreover, one of ordinary
skill could also reasonably consider Olson’s example of a light colored teddy
bear that changes to a bright red or blue (Olson, col. 7, ll. 40-43) to be a
negative graphic. Specifically, a viewer could consider the suddenly
appearing red color to have a general negative connotation (blushing or
embarrassment), as well as the blue color (sadness).
Appellant argues that Olson’s appearing graphics are distinguishable
from the negative graphic recited in claim 1, when viewed with its
supporting disclosure on page 10 of the Specification, because “the graphic
itself is a positive image or negative image, regardless of its appearance or
disappearance upon wetting, and regardless of its relationship in context to
other graphical elements” (App. Br. 10). In Olson, Appellant argues, “[i]t is
only the relationship between the character graphic and the active object
graphic that provides a positive or negative connotation necessary for
motivation for toilet training” (id. at 13).
Appellant argues that “in the present claims it is the nature of the
positive graphic itself and the negative graphic itself that provide the
encouragement for toilet training — not their contextual meaning based on
8
Appeal 2007-2612
Application 10/255,108

their appearance or disappearance relative to other characters or graphics”
(id.). Appellant also urges that, based on the dictionary definition of the
term “generally,” claim 1 encompasses only those negative graphics that the
general population would consider to be negative (App. Br. 11) (citing
Merriam Webster’s Collegiate Dictionary (10th ed. 1997)).
We are not persuaded by these arguments. Regarding the appearing
graphic, claim 1 states only that “the at least one appearing graphic is a
negative graphic.” The Specification states that “[t]he term ‘negative’ as it
is used herein to refer to a negative appearing graphic denotes any type of
graphic that generally connotes a negative or disapproving or depressing
image to a viewer” (Spec. 10, emphasis added). The Specification
emphasizes that every viewer need not view the image negatively: “It is to
be understood that not all viewers need to recognize the graphic as negative,
disapproving, or depressing, only that the graphic generally connote a
negative image” (id.).
Thus, when given its broadest reasonable interpretation consistent
with the Specification, the term “negative graphic” in claim 1 encompasses
any graphic that “a viewer,” i.e. one single viewer, would find to “generally
connote[] a negative or disapproving or depressing image” (Spec. 10)
(emphases added). Claim 1 and its supporting disclosure therefore focus on
the connotations drawn by “a viewer,” rather than those of the general
population. Moreover, claim 1 and its supporting disclosure do not contain
any specific language requiring the viewer’s negativity, disapproval, or
depression to be elicited by the graphic in and of itself. Claim 1 and its
9
Appeal 2007-2612
Application 10/255,108

supporting disclosure simply do not place any contextual limitation on the
viewer.
Claim 1 therefore encompasses a graphic that a viewer, aware that the
appearing graphic indicates the occurrence of an accident, would consider to
be negative. As noted above, because a suddenly darkening graphic on
Olson’s child training pant (see Olson, col. 7, ll. 39-47) indicates that the
child has experienced an accident, one of ordinary skill could reasonably
consider the graphic to “generally connote[] a negative or disapproving . . .
image to a viewer” (Specification 10). We therefore agree with the
Examiner that Olson’s appearing graphic is encompassed by claim 1.
Appellant urges that, because it provides negative reinforcement in the
context of potty training, “the present invention provides a significant
advantage over the Olson patent” (App. Br. 14).
We are not persuaded by this argument. The fact that the claimed
invention may be advantageous when compared to Olson is irrelevant to
whether Olson anticipates claim 1. See In re Paulsen, 30 F.3d 1475, 1482
n.11 (Fed. Cir. 1994) (“[E]vidence of nonobviousness is irrelevant for
patentability purposes when an invention is anticipated under section 102.”).

Appellant argues that, rather than being mere recitations of intended
use, the graphics in claim 1 are functionally related to the claimed subject
matter, analogous to the situation in In re Gulack, 703 F.2d 1381 (Fed. Cir.
1983) (App. Br. 15-16). Thus, Appellants argue, “analysis of this situation
under the Federal Circuit guidelines in Gulack provides further support to
Appellant's assertion that the pending claims are not anticipated by Olson”
(id. at 16).
10
Appeal 2007-2612
Application 10/255,108

We are not persuaded by this argument. For the reasons discussed
above, we agree with the Examiner that Olson meets the limitation requiring
the absorbent article to have a negative appearing graphic. Because we
agree with the Examiner that Olson anticipates claim 1 when the graphics
are given full patentable weight, we need not address the issue of whether
the graphics recited in claim 1 are functionally related to the claimed subject
matter.
Appellant argues that the graphics described at column 7, lines 39-47
of Olson are not negative graphics (Reply Br. 2). Specifically, Appellant
urges that
[N]o adult who has ever experienced a fire in their home or
business would view a fire truck negatively. Certainly, the
Board will take judicial notice that children also do not view
fire trucks or fire fighters in a negative way. Fire trucks are
frequently featured in parades, which obviously connote a
positive and happy image to a child. A negative image would
be a fire per se, or a burning building, for instance, which fire
trucks are designed to prevent.

(Id.) Appellant further urges that “the Board will take judicial notice that the
words ‘positive’ and ‘negative’ are sufficiently well understood, particularly
in the context of this invention, to be clear and lacking in any ambiguity,”
particularly when viewed in light of the supporting disclosures in the
Specification (id.).
We are not persuaded by these arguments. As discussed above, when
given its broadest reasonable interpretation consistent with the Specification,
the term “negative graphic” in claim 1 encompasses any graphic that “a
viewer,” i.e. one single viewer, would find to “generally connote[] a
11
Appeal 2007-2612
Application 10/255,108

negative or disapproving or depressing image” (Spec. 10) (emphases added).
Because a suddenly darkening fire truck on Olson’s child training pant (see
Olson, col. 7, ll. 39-47) indicates that the child has experienced an accident,
one of ordinary skill could reasonably consider the graphic to “generally
connote[] a negative or disapproving . . . image to a viewer,” which is all
that the Specification requires (see Spec. 10). Moreover, because one of
ordinary skill could reasonably consider a suddenly darkening fire truck on
Olson’s child training pant to generally connote an emergency, and therefore
negative situation, we agree with the Examiner that Olson’s graphic meets
the limitation in claim requiring the appearing graphic to be negative.
In summary, because we agree with the Examiner that Olson meets all
of the limitations of claim 1, we affirm the Examiner’s anticipation rejection
of claim 1. Because claims 2-5, 9-12, 14-18, and 22-24 were not argued
separately, they fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
THE OBVIOUSNESS REJECTION
ISSUE
Stating that Olson is “silent as to the placement of the appearing and
disappearing graphics,” the Examiner contends that claims 6, 7, 13, 14, 19,
20, 25, and 26 would nonetheless have been obvious to one of ordinary skill
because it “would have been an obvious matter of design choice to place the
graphics on the same surface or on opposing surfaces of the web, since the
applicant has not shown that the placement of the graphics would serve any
particular purpose or solve any stated problem” (Ans. 4). The Examiner
further contends that the claims would have been obvious to one of ordinary
12
Appeal 2007-2612
Application 10/255,108

skill since “it appears the invention would perform equally well with the
graphics on the same surface or opposing surfaces” (id.).
Appellant does not dispute the Examiner’s conclusions regarding
placement of the graphics. Rather, Appellant contends that Olson does not
render claims 6, 7, 13, 14, 19, 20, 25, and 26 obvious because Olson does
not “teach an absorbent article having a negative appearing graphic. In
addition, Olson lacks any suggestion or motivation to alter the disclosed
invention to include a negative appearing graphic — in fact, Olson clearly
teaches away from the use of negative graphical images to provide
discouragement during the toilet training process” (App. Br. 17).
The issue with respect to this rejection, therefore, is whether one of
ordinary skill in the art would have considered an absorbent article, having a
negative graphic that appears when exposed to urine, obvious in view of
Olson.
FINDINGS OF FACT
11. Claim 6 reads as follows:
6. The absorbent article as claimed in claim 5, wherein the
at least one disappearing graphic and at least one appearing
graphic are printed on the same surface of the web.

Claim 5 reads as follows:
5. The absorbent article as claimed in claim 1, further
comprising a web disposed at least partially between the
absorbent core and the back sheet, and in fluid communication
with the absorbent core, the web having printed thereon the at
least one disappearing graphic and at least one appearing
graphic.

13
Appeal 2007-2612
Application 10/255,108

Thus, claim 6 limits the absorbent article of claim 1 to one having a
web between the absorbent core and back sheet, with the disappearing and
appearing graphics being printed on the same surface of the web.
Moreover, because claim 6 ultimately depends on claim 1, the
absorbent article recited in claim 6 must have a negative graphic that appears
when exposed to urine.
12. Olson discloses that, in a multi-layer absorbent article, the active
graphics can be placed in a number of locations, including
[T]he outer cover 40, which includes specific locations such as
on the exterior surface 110, on the interior surface 112, on
either surface of the substrate 124 that is placed with or placed
near the outer cover, between the substrate 124 and the outer
cover, on the surface of the liquid storage layer 120 that faces
the outer cover, or between the liquid storage layer and the
substrate 124.

(Olson, col. 16, ll. 17-25 (emphasis added); see also Figure 7C.)

PRINCIPLES OF LAW
“[O]bviousness requires a suggestion of all limitations in a claim.”
CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). “[W]hen a patent
‘simply arranges old elements with each performing the same function it had
been known to perform’ and yields no more than one would expect from
such an arrangement, the combination is obvious.” KSR Int'l v. Teleflex
Inc., 127 S. Ct. 1727, 1740 (2007) (quoting Sakraida v. AG Pro, Inc., 425
U.S. 273 (1976)).
Moreover, the analysis under 35 U.S.C. § 103 “need not seek out
precise teachings directed to the specific subject matter of the challenged
14
Appeal 2007-2612
Application 10/255,108

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, 127 S. Ct. at 1741.
Thus, “[a] person of ordinary skill is . . . a person of ordinary creativity, not
an automaton.” Id. at 1742.
ANALYSIS
Appellant argues that Olson does not teach an absorbent article having
a negative graphic that appears when exposed to urine because Olson
discloses only neutral graphics, and because “in Olson it is only the act of an
image coming into view or fading from view that provokes a negative
feeling, not the nature of the image itself” (App. Br. 17). Thus, argues
Appellant, in Olson “[i]t is only the relationship between the character
graphic and the active object graphic that provides a positive or negative
connotation necessary for motivation for toilet training” (id.). Appellant
urges that “[i]n contrast, in the present claims it is the nature of the positive
graphic and the negative graphic itself that provides the encouragement for
toilet training — not the contextual meaning based on the appearance or
disappearance of the images relative to other characters or graphics” (id. at
18).
We are not persuaded by these arguments. For the reasons discussed
above, we agree with the Examiner that Olson discloses an absorbent article
having a graphic that a viewer would generally connote as being negative
when it appears in response to urine exposure.
Appellant argues that Olson teaches away from using a negative
graphic because Olson discusses using “nonthreatening” and “gentle
communications between the child and caregiver” during potty training
15
Appeal 2007-2612
Application 10/255,108

(App. Br. 18) (quoting Olson, col. 4, ll. 10-23). Thus, Appellant argues, “it
would be improper to modify Olson’s wetness indicator graphics to be a
negative graphic, because to do so would contradict Olson’s indirect and
non-confrontational method of toilet training” (id.). Appellant urges that “a
direct and confrontational method of toilet training can be effective, and is
effectuated by providing wetness/dryness indicators that consist of both a
positive disappearing graphic and a negative appearing graphic, as recited in
the pending claims” (id.).
We are not persuaded by this argument. As discussed above, we
agree with the Examiner that Olson discloses an absorbent article having a
graphic that a viewer would generally connote as being negative when it
appears in response to urine exposure. Because Olson discloses a negative
graphic encompassed by claim 1, and therefore claim 6, Olson does not
teach away from practicing the subject matter recited in claim 6.
Moreover, given Olson’s disclosure that the graphics can be placed in
a variety of suitable locations (see Olson, col. 16, ll. 17-25), we agree with
the Examiner that one of ordinary skill, being a person of ordinary creativity,
would have considered it obvious to place the graphics in the configuration
recited in claim 6. We therefore affirm the Examiner’s obviousness
rejection of claim 6. Because they were not argued separately, claims 7, 13,
14, 19, 20, 25, and 26 fall with claim 6. 37 C.F.R. § 41.37(c)(1)(vii).
SUMMARY
We affirm the Examiner’s rejection of claims 1-5, 9-12, 14-18, and
22-24 under 35 U.S.C. § 102(e) as anticipated by Olson.
16
Appeal 2007-2612
Application 10/255,108

We affirm the Examiner’s rejection of claims 6, 7, 13, 14, 19, 20, 25,
and 26 under 35 U.S.C. § 103(a) as obvious in view of Olson.
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

Ssc:

FULBRIGHT & JAWORSKI L.L.P.
600 CONGRESS AVENUE
SUITE 2400
AUSTIN, TX 78701
17