Ex Parte Olson

Board of Patent Appeals and Interferences

May 17, 2012

10953973 (B.P.A.I. May. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHRISTOPHER P. OLSON
__________

Appeal 2011-000138
Application 10/953,973
Technology Center 3700
__________

Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a component of
an absorbent article, such as a diaper. The component is an apertured
substrate that has an active graphic, such as a graphic that disappears upon
insult by liquid, printed on its surface. The Examiner entered rejections for
anticipation and obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
STATEMENT OF THE CASE
While it can be desirable to place graphics on substrates used in
absorbent articles such as diapers, “when printing on liquid permeable
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substrates, such as in flexographic printing process, there is a risk that upon
application of ink to the substrate some of the ink will undesirably strike
through the liquid permeable substrate and onto the printing drum of the
printer” (Spec. [0006]). To address this issue, Appellant invented a process
in which the graphic “is applied to the substrate . . . while the substrate is
substantially liquid impermeable” (id. at [0078]), after which the substrate is
elongated, thereby allowing apertures to form in weakened portions of the
substrate “to render the substrate liquid permeable” (id. at [0081]).
Claims 31 and 33-58 stand rejected and appealed (App. Br. 1-2).
Claims 31, 42, 49, and 58, the independent claims, illustrate the appealed
subject matter and read as follows:
31. An absorbent article component, said component
comprising a substrate having apertures formed therein and being
liquid permeable, and an active graphic responsive to liquid contact
therewith, wherein said substrate has a first surface and a second
surface opposite the first surface, said apertures extending from the
first surface to the second surface, said active graphic being applied to
one of said surfaces of the substrate such that the apertures are
disposed in at least a portion of the graphic.

42. An absorbent article comprising:
a liquid permeable topsheet;
a backsheet;
an absorbent structure disposed between the topsheet and the
backsheet; and
a substrate disposed between the topsheet and the absorbent
structure, said substrate having apertures formed therein and being
liquid permeable, said substrate having an active graphic applied
thereto.

49. An absorbent article having an inner surface arranged for
facing a wearer of the article and an outer surface opposite said inner
surface, said article comprising:
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a backsheet at least in part defining the outer surface of the
article;
a topsheet in opposed relationship with the backsheet and at
least in part defining the inner surface of the article; and
a component disposed between the backsheet and the topsheet,
said component comprising a substrate having a graphic thereon
visible from the inner surface of the article, said substrate having
apertures therein and being liquid permeable, wherein the graphic is
configurable from a foreshortened configuration to an
unforeshortened configuration.

58. An absorbent article component, said component
comprising a substrate having apertures formed therein and being
liquid permeable, and a graphic applied to the substrate at the
apertures such that the apertures are disposed in at least a portion of
the graphic, the graphic having a length and width, the graphic being
configurable from a foreshortened configuration to an
unforeshortened configuration wherein at least one of the length and
the width of the graphic are greater in the unforeshortened
configuration than in the foreshortened configuration.

The following rejections are before us for review:
(1) Claim 58, under 35 U.S.C. § 102(e) as anticipated by Driskell
1

(Ans. 3-4);
(2) Claims 31 and 33-39, under 35 U.S.C. § 103(a) as obvious over
Cammarota
2
and Ahr
3
(Ans. 4-7);
(3) Claims 31 and 41, under 35 U.S.C. § 103(a) as obvious over
Cammarota and Thompson
4
(Ans. 7-9);

1
U.S. Patent App. Pub. No. 2005/0065489 A1 (filed September 24, 2003).
2
U.S. Patent App. Pub. No. 2002/0007162 A1 (published January 17, 2002).
3
U.S. Patent No. 4,323,069 (issued April 6, 1982).
4
U.S. Patent No. 3,929,135 (issued December 30, 1975).
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(4) Claim 40, under 35 U.S.C. § 103(a) as obvious over Cammarota,
Ahr, and Thompson (Ans. 9);
(5) Claims 42-48, under 35 U.S.C. § 103(a) as obvious over Driskell
and Thompson (Ans. 9-12); and
(6) Claims 49-57, under 35 U.S.C. § 103(a) as obvious over Driskell,
Thompson, and Erdman
5
(Ans. 12-15).
ANTICIPATION – DRISKELL
In an anticipation rejection, “it is not enough that the prior art
reference . . . includes multiple, distinct teachings that [an ordinary] artisan
might somehow combine to achieve the claimed invention.” NetMoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Rather, the reference “must clearly and unequivocally disclose the
claimed [invention] or direct those skilled in the art to the [invention]
without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference.” Id.
(quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)). Thus, while
“[s]uch picking and choosing may be entirely proper in the making of a [§]
103, obviousness rejection, . . . it has no place in the making of a [§] 102,
anticipation rejection.” Arkley, 455 F.2d at 587-88.
Here, claim 58 recites an absorbent article component. The
component is a liquid permeable substrate that has apertures formed in it.
The substrate has a graphic applied to it such that the apertures are disposed
in at least a portion of the graphic.

5
U.S. Patent App. Pub. No. 2004/0064113 A1 (published April 1, 2004).
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Claim 58 recites that the graphic is “configurable from a
foreshortened configuration to an unforeshortened configuration wherein at
least one of the length and the width of the graphic are greater in the
unforeshortened configuration than in the foreshortened configuration.”
Thus, despite Appellant’s arguments to the contrary (App. Br. 9),
claim 58 merely recites a stretchable apertured substrate that has a graphic
printed thereon, in which at least a plurality of apertures is disposed within
the graphic. Nonetheless, we are not persuaded that the Examiner has
adequately explained how or why Driskell describes such a product within
the meaning of 35 U.S.C. § 102.
Driskell discloses an absorbent article, such as a diaper, that has a
wetness-indicating graphic that can “disappear (or appear) when the article
is wetted. The wetness indicators preferably allow a caregiver to interact
with a child to promote toilet training” (Driskell [0002]).
The Examiner found that Driskell disclosed printing the wetness-
indicating graphics on any of the diaper’s layers, including the skin-facing
topsheet layer (see Ans. 4 (citing Driskell [0018])). The Examiner found
that Driskell’s moisture-pervious topsheet inherently included apertures,
which would necessarily be within the graphic when printed on the topsheet
(see Ans. 4 (citing Driskell [0061])).
The Examiner thus reasoned that the “[topsheet] substrate 14 is an
elastomeric apertured web comprised of polypropylene and the wetness
indicator is imprinted thereon” (id.). Therefore, the Examiner found, “when
the substrate stretches during wear, a teaching that flows inherently and
necessarily from the teachings of Driskell, the graphic is configurable from a
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foreshortened configuration to an unforeshortened configuration as claimed”
(id.).
We are not persuaded. We first note, as discussed above, that rather
than reciting a product that actually stretches, claim 58 merely recites a
stretchable apertured substrate that has a graphic printed thereon, in which at
least a plurality of apertures is disposed within the graphic.
Moreover, paragraph [0018] of Driskell states that “[t]he absorbent
article may include any number of layers in addition to the back sheet, top
sheet and absorbent core, and the wetness indicators may be imprinted or
otherwise positioned on the same or different ones of these layers” (Driskell
[0018] (emphasis added)). Thus, in our view, a careful reading of this
somewhat ambiguous passage indicates that, rather than the top sheet having
a graphic printed on it, the graphic may be printed on one of the layers “in
addition to the back sheet, top sheet, and absorbent core” (see id.).
Appellant, on the other hand, provides an incomplete characterization
of Driskell. As Appellant argues, Driskell focuses primarily on graphics that
are visible from the diaper’s exterior, and are therefore placed either on the
inner surface of backsheet, or on a web composed of a polyolefin film or
nonwoven material placed adjacent to the backsheet (see, e.g., Driskell
[0094]-[0097]). Contrary to Appellant’s arguments, however, Driskell also
explicitly discloses that “the wetness indicator graphics may be disposed
such that they are visible through the inner lining, as viewed from the inside
of the absorbent article” (id. at [0044]).
Thus, as Appellant concedes, Driskell describes printing its graphics
on a substrate, in the form of a web composed of a polyolefin film or
nonwoven material that is placed between the diaper’s top sheet and back
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sheet (Driskell [0094]-[0097]). Nonetheless, as noted above, the Examiner
does not rely on the intervening layers of material as the anticipating
structure, but instead contends that Driskell anticipates claim 58 because it
describes printing the graphics on the topsheet (see Ans. 3-4).
However, as also noted above, we are not persuaded that Driskell
unambiguously describes placing its graphics on the topsheet. Moreover,
the Examiner has not provided any specific evidence showing that any of the
materials onto which Driskell’s graphics are printed are in fact stretchable
and thereby able to satisfy the claim requirement of being configurable from
a foreshortened configuration to an unforeshortened configuration. We are
thus constrained to reverse the Examiner’s rejection of claim 58 as
anticipated by Driskell.
OBVIOUSNESS – CAMMAROTA AND AHR
In rejecting claims 31 and 33-39 as obvious over Cammarota and Ahr,
the Examiner found that Cammarota described applying an active graphic to
the inner surface of a diaper’s outer covering (Ans. 5). The Examiner
conceded that Cammarota did not teach that “the liquid permeable outer
layer of the outer cover 40 has apertures formed therein, wherein the
apertures extend from a first surface of the substrate to a second surface”
(id.).
The Examiner found, however, that Ahr described an absorbent article
that used an apertured substrate that imparted “improved cleanliness and
stain resistance” to the article, and reasoned that an ordinary artisan would
have considered it obvious to “modify the article of Cammarota such that the
liquid permeable outer layer of the outer cover has apertures that extend
from a first surface to a second surface of the substrate as disclosed by Ahr
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with a reasonable expectation of success to impart improved cleanliness and
stain resistance” (id.).
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992).
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), while the
Supreme Court emphasized “an expansive and flexible approach” to the
obviousness question, it also reaffirmed the importance of determining
“whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” Id. at 418 (emphasis added).
Thus, “[o]bviousness requires more than a mere showing that the prior
art includes separate references covering each separate limitation in a claim
under examination.” Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d
1352, 1360 (Fed. Cir. 2011).
Instead, “[i]n determining whether obviousness is established by
combining the teachings of the prior art, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal
quotations omitted).
We agree with Appellant that the Examiner has not made out a prima
facie case of obviousness as to claim 31.
Specifically, claim 31 recites an absorbent article component in the
form of a liquid permeable substrate having apertures that extend from one
surface of the substrate to the other. The substrate also has an active graphic
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that is responsive to liquid contact applied to one of its surfaces, such that
the apertures are disposed in at least a portion of the graphic.
As the Examiner points out, Cammarota discloses a diaper that
includes an active graphic that changes appearance when insulted with
liquid, the graphic being “located on the interior surface of the outer cover”
(Cammarota [0050]). While Cammarota discloses that its outer cover can
include a cloth-like partially liquid permeable material as its outermost layer
(see id. at [0074]), the inner layer of the outer cover must be liquid
impermeable, so as to “prevent[] waste material from wetting articles, such
as bedsheets and clothing, as well as the wearer and caregiver” (id. at
[0075]).
Thus, while we acknowledge Ahr’s disclosure that using its apertured
material as the topsheet (body-facing layer) of a catamenial pad imparts
“improved surface cleanliness and stain resistance in use” (Ahr, col. 7, ll.
56-57), we are not persuaded that an ordinary artisan would have been
prompted to use that material as Cammarota’s outer covering, because doing
so would have defeated the purpose of having an impermeable outer
covering that keeps waste inside the diaper. Even if the graphic were placed
at other locations suggested by Cammarota such as the liquid storage layer
120, the placement of apertures in this layer would again have defeated the
purpose of keeping the waste inside. As we are not convinced that the
Examiner has adequately explained why Cammarota and Ahr would have
suggested the component recited in claim 31, which has apertures disposed
in at least a portion of the graphic, to an ordinary artisan, we reverse the
Examiner’s obviousness rejection of that claim, and its dependent claims 33-
39, over those references.
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OBVIOUSNESS – CAMMAROTA AND THOMPSON
In rejecting claims 31 and 41 as obvious over Cammarota and
Thompson, the Examiner relied on Thompson as describing a film material
with apertures in the form of tapered capillaries, the material having a cloth-
like pleasing feel (Ans. 8). Based on these teachings, the Examiner reasoned
that an ordinary artisan would have considered it obvious to “modify the
article of Cammarota by replacing the liquid permeable substrate with the
substrate disclosed by Thompson to provide a clothlike and pleasant feel to
the user” (id.).
We will reverse this rejection as well. As noted above, claim 31
requires the apertures of the claimed substrate to be disposed in at least a
portion of the graphic.
Thus, even if Thompson’s material would have imparted a pleasant
cloth-like feel to the outer covering of Cammarota’s article, by extending the
apertures through to the inner surface of the outer covering so that they
would be disposed in the graphic, the outer covering would be rendered
incapable of containing the waste material. Therefore, as we are not
persuaded that Cammarota and Thompson would have suggested a substrate
having the configuration required by claim 31 to an ordinary artisan, we
reverse the Examiner’s obviousness rejection of that claim, and its
dependent claim 41, over those references.
OBVIOUSNESS –
CAMMAROTA, AHR, AND THOMPSON
Claim 40 depends ultimately from claim 31, and recites that “the
apertures are each sized in the range of about 1 mm to about 2.5 mm” (App.
Br. 27).
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In rejecting claim 40 as obvious over Cammarota, Ahr, and
Thompson, the Examiner relied on Thompson as suggesting the use of
material with the claimed aperture size as the outer covering of Cammarota’s
diaper (see Ans. 9). However, as the Examiner’s rejection does not address
the references’ failure, discussed above, to suggest a substrate in which the
apertures are disposed in the graphic, we reverse this rejection as well.
OBVIOUSNESS – DRISKELL AND THOMPSON
In rejecting claims 42-48 as obvious over Driskell and Thompson, the
Examiner found that Driskell disclosed a diaper that included substrate
layers on which active graphics were applied, the substrate layers being
disposed between the top sheet (inner skin-facing layer), bottom sheet (outer
covering), and absorbent core (Ans. 10). Based on this finding, the
Examiner reasoned:
[O]ne of ordinary skill in the art would reasonably expect that
certain of the additional physically separate layers from the
topsheet and core would be disposed between said topsheet and
said core, and it would be obvious to one of ordinary skill in the
art to modify the graphic such that the [sic] is between the
topsheet and core with a reasonable expectation of success to
ensure that the graphic remains in liquid communication with
the topsheet where insult is received and the core where the
dissolved ink of the graphic can be absorbed.

(Id.)
Similar to the rejections above, the Examiner also reasoned that an
ordinary artisan would have considered it obvious to “modify the article of
Driskell by replacing the liquid permeable substrate with the substrate
disclosed by Thompson to provide a clothlike and pleasant feel to the user”
(id.).
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We select claim 42 as representative of the rejected claims. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellant’s arguments do not persuade us that the Examiner erred in
concluding that claim 42 would have been obvious to an ordinary artisan in
view of Driskell and Thompson.
Claim 42 recites an absorbent article that has a liquid permeable
topsheet, a backsheet, an absorbent structure disposed between the topsheet
and the backsheet, and a liquid permeable substrate disposed between the
topsheet and the absorbent structure. Claim 42 requires the substrate to have
apertures and an active graphic applied to it.
As noted above, Driskell discloses that its diaper’s active wetness-
indicating graphics can be placed on layers which may be positioned
between the top sheet, back sheet, and absorbent core, and that those layers
can be in the form of polyolefin webs or nonwoven material (Driskell
[0018], [0044], [0094]). As also noted above, Driskell discloses that “the
wetness indicator graphics may be disposed such that they are visible
through the inner lining, as viewed from the inside of the absorbent article”
(id. at [0044]).
Thus, it may be true, as Appellant argues, that Driskell focuses
primarily on graphics that are visible from the diaper’s exterior. However,
given Driskell’s explicit teaching that the active wetness-indicating graphics
can be positioned so that they are visible from inside the diaper, we are not
persuaded that Driskell would have failed to prompt an ordinary artisan to
place the active graphic-carrying layer between the top sheet and absorbent
core, as claim 42 requires. As Appellant’s arguments therefore do not
persuade us that the Examiner erred in concluding that claim 42 would have
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been obvious to an ordinary artisan in view of Driskell and Thompson, we
affirm the Examiner’s rejection of that claim over those references.
Claims 43-48 fall with claim 42 as they were not argued separately.
See 37 C.F.R. § 41.37(c)(1)(vii).
OBVIOUSNESS –
DRISKELL, THOMPSON, AND ERDMAN
In rejecting claims 49-57 as obvious over Driskell, Thompson, and
Erdman, the Examiner again relied on Thompson as suggesting the use of an
apertured film as the graphics-carrying layer of Driskell’s diaper (Ans. 13).
The Examiner further relied on Erdman as evidence that an ordinary artisan
would have considered it obvious to “modify the article of Driskell such that
the graphic on the substrate is visible through an inner lining when viewed
from the inside of the article with a reasonable expectation of success to alert
the user or caregiver that the absorbent article is wet” (id. (citing Erdman
[0034])).
We agree with Appellant that the Examiner has not made out a prima
facie case of obviousness as to claim 49.
Claim 49 recites an absorbent article that has a backsheet, a topsheet
in opposed relationship with the backsheet, and a component disposed
between the backsheet and the topsheet. The component is in the form of an
apertured liquid permeable substrate, and has a graphic thereon visible from
the inner surface of the article.
Claim 49 also requires the graphic to be “configurable from a
foreshortened configuration to an unforeshortened configuration.” As noted
above regarding the foreshortened/unforeshortened configurability of the
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graphic, we interpret this feature as simply requiring the graphic to be placed
on a stretchable substrate.
Among other arguments, Appellant disputes the Examiner’s finding
that the materials to which Driskell applies its graphics are inherently
stretchable (see App. Br. 23).
While the Examiner urges that Driskell’s materials are in fact
stretchable (Ans. 16), the Examiner has not advanced any specific evidence
suggesting that any of the materials described in Driskell, Thompson, or
Erdman that might be used as the intervening graphics-carrying layers are
necessarily stretchable, nor has the Examiner adequately explained why an
ordinary artisan would have been prompted to use a stretchable apertured
material as the graphics-carrying substrate in Driskell’s diaper. Thus, as a
preponderance of the evidence does not support the Examiner’s finding that
Driskell, Thompson, and Erdman would have suggested an article having a
stretchable substrate as required by claim 49 to an ordinary artisan, we
reverse the Examiner’s obviousness rejection of that claim, and its
dependents, over those references.
SUMMARY
We reverse the Examiner’s rejection of claim 58 as anticipated by
Driskell.
We also reverse the Examiner’s rejection of claims 31 and 33-39 as
obvious over Cammarota and Ahr.
We also reverse the Examiner’s obviousness rejection of claims 31
and 41 over Cammarota and Thompson.
We also reverse the Examiner’s obviousness rejection of claim 40
over Cammarota, Ahr, and Thompson.
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However, we affirm the Examiner’s rejection of claims 42-48 as
obvious over Driskell and Thompson.
We also reverse the Examiner’s obviousness rejection of claims 49-57
over Driskell, Thompson, and Erdman.

TIME PERIOD
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-IN-PART

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