Ex Parte Ng et alDownload PDFPatent Trial and Appeal BoardDec 22, 201613185151 (P.T.A.B. Dec. 22, 2016) 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. 13/185,151 07/18/2011 Wing-Chak Ng 64693465US01 1771 23556 7590 12/23/2016 KIMBERLY-CLARK WORLDWIDE, INC. Patent Docketing 2300 Winchester Rd. NEENAH, WI54956 EXAMINER RUMMEL, IAN A ART UNIT PAPER NUMBER 1785 MAIL DATE DELIVERY MODE 12/23/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte WING-CHAK NG,1 Jose Augusto Vidal de Siqueira, Lawrence H. Sawyer, and Charles W. Colman Appeal 2015-003840 Application 13/185,151 Technology Center 1700 Before PETER F. KRATZ, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Wing-Chak Ng, Jose Augusto Vidal de Siqueira, Lawrence H. Sawyer, and Charles W. Colman (“Ngâ€) timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1—3, 5—15, and 17—20, which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6. We reverse. 1 The real party in interest is identified as Kimberly-Clark Worldwide, Inc. (Appeal Brief, filed 26 August 2014 (“Br.â€), 1.) 2 Office action mailed 26 March 2014 (“Final Rejectionâ€; cited as “FRâ€). Appeal 2015-003840 Application 13/185,151 OPINION A. Introduction3 The subject matter on appeal relates to an extensible (roughly, stretchable4 5) sheet material having two indicator zones that become visible at different degrees of extension. The ’151 Specification discloses that such materials are useful as parts of absorbent articles such as diapers so a caregiver has a visual indication of when the elastic components have been extended the proper amount when putting the article on the wearer. (Spec. 1,11. 17—25.) Figure 1, below, shows a garment 20s with zones 91 (light shading added) and 92 (dark shading added). 20v. (Fig. 1 shows a garment with indicator zones 91, 92 (shading added)} 3 Application 13/185,151, Extensible sheet material with visual stretch indicator, filed 18 July 2011. We refer to the “’151 Specification,†which we cite as “Spec.†4 The Specification provides definitions at 4—5, but, as they are not disputed substantively, we need not discuss them here. 5 Throughout this Opinion, for clarity, labels to elements are presented in bold font, regardless of their presentation in the original document. 2 Appeal 2015-003840 Application 13/185,151 An embodiment of the claimed extensible sheet material with the required indicator zones is illustrated in Figs. 5A—5D, reproduced below right. Differently patterned zones 103, 104, are provided on elastic layer 102, which is overlain by stretchable layer 100. Stretchable layer 100 has slits 105 that are more densely populated in zone 91, in front of zone 103, and less densely populated in zone 92, in front of zone 104. The slits in zone 91 open more easily (e.g., because they are longer, or slit more deeply (Spec. 14, 11. 10-19), or because zones 91, 92 have different stretch properties (id. at 11. 10— 29)). As shown in Fig. 5C, slits 105 in first zone 91 open at a first extension, while as shown in Fig. 5D, slits 105 in second zone 92 only open at a larger extension. 103 90 93— -102 -100 91 FIG. 5A ----- 102 100 '"'9i FIG. 5B 105 \ 105 -102 (Figs 5A—5D show zones 102 and 103 becoming visible at two different extensions} Sole independent claim 1 is representative and reads: An extensible sheet material comprising an elastic layer and at least one facing layer, the elastic layer including 3 Appeal 2015-003840 Application 13/185,151 a first color or pattern and a second color or pattern, the extensible sheet material comprising first and second zones, wherein the second zone is separate from the first zone and the first zone corresponds to the first color or pattern and the second zone corresponds to the second color or pattern, and wherein the first zone exposes the first color or pattern when the extensible sheet material is stretched beyond a first percentage, and further wherein the second zone exposes the second color or pattern when the extensible sheet material is stretched beyond a second percentage greater than the first percentage. (Claims App., Br. 11; indentation, paragraphing,6 and emphasis added.) The Examiner maintains the following grounds of rejection7: A. Claims 1—3, 7—9, 13—15, and 18—20 stand rejected under 35 U.S.C. § 103(a) in view of Krueger.8 Al. Claim 5 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Krueger and Olson.9 A2. Claims 5, 6, and 15—18 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Krueger and Hughes.10 6 In compliance with 37 C.F.R. §1.75(i) (2014): “Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.†7 Examiner’s Answer mailed 17 December 2014 (“Ans.â€). 8 Jeffrey Jennings Krueger, Films and articles with reversible opacity change upon stretching, and methods of making and using same, U.S. Patent Application Publication 2008/0233418 Al (2008). 9 Christopher Peter Olson et al., U.S. Patent Application Publication 2006/0068168 Al (2006). 4 Appeal 2015-003840 Application 13/185,151 A3. Claims 10-12 stand rejected under 35 U.S.C. § 103(a) in view of Krueger, Hughes, and Tesch.* 11 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Ng urges the Examiner erred harmfully by failing to find evidence in the prior art reference Krueger supporting the conclusion that it would have been obvious to provide two zones, one that becomes visible at a first extension, and a second that becomes visible at a larger extension. (Br. 5.) The Examiner finds that Krueger describes color-changing extensible materials that indicate that an article is too loose (so it needs further tightening) or too tight (so it must be loosened). (FR 2,11. 16—19, citing Krueger, 6 [0060]—[0061].) Although, the Examiner finds, “Krueger does not specifically teach an example of both features combined into one article,†the Examiner concludes that it would have been obvious “to combine both features into a single product, as doing so would allow a user to both tell whether the product was too tight and whether the product was not sufficiently tight, especially as Krueger explicitly teaches each feature to be desirable for such a product.†(FR 2,1. 19, to 3,1. 7.) Krueger, in paragraphs [0060] and [0061], describes a bandage and a diaper, respectively, that may be fitted by stretching, and that a graphic design may become visible to indicate that the bandage or diaper is too tight, 10 Janis Wilson Hughes et al., U.S. Patent Application Publication 2006/0246802 Al (2006). 11 Guenter Horst Tesch, U.S. Patent No. 3,764,450 (1973). 5 Appeal 2015-003840 Application 13/185,151 and must be loosened to allow sufficient blood circulation or comfort, or that the bandage or diaper is tight enough to prevent bleeding or leaking. This section of Krueger describes a single transition, from opaque (graphic design not visible) to transparent (graphic design visible). This corresponds to either the first zone becoming visible or to the second zone becoming visible. The Examiner has not, however, directed our attention to a teaching in Krueger suggesting that two distinct transitions be provided, in different areas or zones of the bandage or diaper, indicating different degrees of extension. As “elementary†as the difference may seem, the law of obviousness requires some evidence in the prior art indicating that the particular solution claimed by an inventor would have been suggested to the artisan. Moreover, we do not find the Examiner’s characterization of Krueger’s teachings entirely accurate. Krueger provides examples showing either of two possibilities: “too tight, loosenâ€; or “tight enough.†The caregiver then takes appropriate action (loosen; or don’t tighten further). As our reviewing court stated recently, This statement of the problem represents a form of prohibited reliance on hindsight. . . . Often the inventive contribution lies in defining the problem in a new revelatory way. In other words, when someone is presented with the identical problem and told to make the patented invention, it often becomes virtually certain that the artisan will succeed in making the invention. Mintzv. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012). The Examiner makes no findings regarding the additional references that cure this fundamental defect in the rejection of the sole independent claim. 6 Appeal 2015-003840 Application 13/185,151 Accordingly, we are persuaded of harmful error in the appealed rejections, and we reverse. C. Order It is ORDERED that the rejection of claims 1—3, 5—15, and 17—20 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation