Ex Parte Olson et al

Board of Patent Appeals and Interferences

Aug 27, 2007

10651354 (B.P.A.I. Aug. 27, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER PETER OLSON,
KATHLEEN IRENE RATLIFF, and SHIRLEE ANN WEBER
____________

Appeal 2007-0714
Application 10/651,3541
Technology Center 3700
____________

Decided: August 27, 2007
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Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
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, 6-12, 17, 18, 20, 26, 27, and 29-35.
We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is representative of
the claims on appeal, and reads as follows:

1 Kimberly-Clark Worldwide Inc. is the real party in interest (Br. 1).
Appeal 2007-0714
Application 10/651,354

1. An absorbent article defining a longitudinal centerline, a transverse
centerline, opposite first and second waist regions, and a crotch region
disposed between and interconnecting the first and second waist regions,
comprising:
an outer cover having an interior surface and an opposite exterior
surface;
an absorbent assembly disposed on the interior surface;
a permanent character graphic disposed on the outer cover in the first
waist region;
an active object graphic disposed on the outer cover in the crotch
region;
wherein the permanent character graphic is interactively interrelated
with the active object graphic.

The Examiner relies on the following references:
Timmons US 4,022,211 May 10, 1977
Howell US 5,389,093 Feb. 14, 1995
We affirm.

DISCUSSION
Claims 1, 6, 10, 12, 17, 26, 27, 30, 31, and 33 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Timmons.2 As Appellants do not
argue the claims separately, we focus our analysis on independent claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2006).
According to the Examiner,
Timmons discloses an absorbent article, as shown in
figure 1, comprising an outer cover 14 having interior and
exterior surfaces, and an absorbent assembly 12. A permanent
character graphic 22 and an active object graphic 16b are
disposed on the outer cover 14, as shown in figure 5, and are

2 The Examiner also included claim 16 in this ground of rejection (Answer
3) but that claim has been cancelled (Br. 2).
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Application 10/651,354

interactively interrelated as components of an alphabet block.
At least one permanent character graphic 22 is disposed in the
waist region of the article, and at least one active object graphic
is disposed in the crotch region of the article, as shown in figure
5.

(Answer 3.)
It is axiomatic that in order for a prior art reference to serve as an
anticipatory reference, it must disclose every limitation of the claimed
invention, either explicitly or inherently. See In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).
Appellants argue that the rejection should be reversed because
Timmons does not disclose a “character graphic” as defined in the
Specification, and that each rejected claim requires a permanent character
graphic (Br. 7). Appellants assert that character graphic as defined by the
Specification is “a graphic containing an anthropomorphous image, and in
particular an image having or suggesting human form or appearance which
ascribes human motivations, characteristics or behavior to inanimate objects,
animals, natural phenomena, cartoon characters, or the like.” (Br. 7-8;
Specification 5.) According to Appellants, neither the blocks nor the
alphabet letters of the Timmons patent represents an anthropomorphous
image, as they do not have or suggest a human form or appearance (Br. 8).
We agree with Appellants that Timmons does not teach a character
graphic as defined by the Specification. We do find, however, that Timmons
anticipates the absorbent article of claim 1, and we thus affirm the rejection.
But as our reasoning differs from that of the Examiner, we designate the
affirmance as a new ground of rejection.
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Application 10/651,354

Claim 1 requires a permanent character graphic disposed on the outer
cover in the first waist region; and an active object graphic disposed on the
outer cover in the crotch region; wherein the permanent character graphic is
interactively interrelated with the active object graphic. Both the character
graphic and the active object graphic are printed matter.
We recognize that “[t]he Patent and Trademark Office (PTO) must
consider all claim limitations when determining patentability of an invention
over the prior art,” and “may not disregard claim limitations comprised of
printed matter.” In re Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1031, 1034
(Fed. Cir. 1994) (citations omitted). In determining whether the printed
matter imparts patentability to a claimed invention, however, “the critical
question is whether there exists any new and unobvious functional
relationship between the printed matter and the substrate.” In re Gulack,
703 F.2d 1381, 1386, 217 USPQ 401, 404 (Fed. Cir. 1983). The following
cases are illustrative.
In In re Miller, 418 F.2d 1392 (CCPA 1969), the claims were drawn
to measuring utensils, such as a cup or a measuring spoon, that had a legend
on them that automatically performed the calculation if a cook wished to
make a fractional portion of a recipe. Id. at 1393-94. While the Solicitor of
the Patent Office argued that the legends were printed matter, and thus
should be ignored, the court reversed the rejection, finding that there was “a
new and unobvious functional relationship between a measuring receptacle,
volumetric indicia thereon indicating volume in a certain ratio to actual
volume, and a legend indicating the ratio.” Id. at 1396.
At issue in In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983), was a claim
requiring a band, ring, or set of concentric rings; a plurality of digits
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Appeal 2007-0714
Application 10/651,354

imprinted on the band at regularly spaced intervals; and an algorithm by
which the appropriate digits were developed. Id. at 1382. The court found
that there was a functional relationship between the printed matter and the
substrate that was different than that disclosed by the prior art, and reversed
the Board’s conclusion to the contrary. Id. at 1387.
The claims in In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994), were drawn
to a memory containing a stored data structure comprising a plurality of
attribute data objects (ADOs). Id. at 1580-81. The Board analogized the
ADO’s to printed matter, and determined that there was no functional
relationship between the printed matter, the ADOs, and the substrate, i.e., the
memory. Id. at 1582. The court reversed, finding that the data structures
were not analogous to printed matter, but instead defined functional
characteristics of the memory. Id. at 1583. Moreover, the court noted that
even if the data structures were analogous to printed matter, the “PTO did
not establish that the ADO’s, within the context of the entire claims, lack a
new and unobvious functional relationship with the memory.” Id. at 1584.
Finally, in In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004), at issue was a
claim to a kit containing a buffer agent and instructions, with the only
difference being the content of the instructions. Id. at 1338. The court
distinguished its finding in Gulack, finding that the “addition of a new set of
instructions into a known kit does not interact with the kit in the same way
as the numbers interrelated with the band [in Gulack].” Id. at 1339.
Using the above cases as the framework to guide our analysis, we find
that there does not exist a new and unobvious relationship between the
printed matter, i.e., the character graphic and the active graphic, and the
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Appeal 2007-0714
Application 10/651,354

substrate, i.e., the diaper, when the limitations of claim 1 are compared to
the teachings of the prior art, i.e., Timmons.
The absorbent article of claim 1 requires a permanent character
graphic and an active object graphic, wherein the active graphic fades or
appears when exposed to urine (Specification 2-3). Timmons teaches an
absorbent article having a wetness indicator, such that when the article is dry
it shows a decorative or printed pattern, but when the diaper is wet the
pattern or color quickly fades (col. 1, ll. 42-46). Moreover, according to
Timmons, the coloring agent may be applied in an “unlimited variety of
decorative patterns,” with a portion of the pattern consisting of a permanent
coloring agent and a portion consisting of a water-dispersible coloring agent
(col. 3, ll. 57-61).
The absorbent article of claim 1 and that taught by Timmons have the
same relationship between the printed matter and the substrate. Part of the
printed matter, the character graphic of claim 1, and the permanent coloring
agent of Timmons, remains visible at all times. The other part of the printed
matter, the active graphic of claim 1, and the water dispersible coloring
agent of Timmons, indicates when the absorbent article, i.e., a diaper, has
been exposed to urine. Thus, the character graphic and the active graphic of
claim 1, i.e., the printed matter, do not have a new and unobvious
relationship with the substrate, i.e., the diaper, as the printed matter in
Timmons, and the printed matter of claim 1 both serve the function of
indicating when the diaper has been wet.
In addition, claims 7-9 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Timmons and Howell; claim 11
stands rejected under 35 U.S.C. § 103(a) as being obvious over Timmons;
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Application 10/651,354

claims 18, 29, 32, 34, and 35 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Timmons; and claim 20 stands rejected under 35 U.S.C.
§ 103(a) as being obvious over Timmons.
As Appellants merely reiterate their arguments as to the rejection of
claims 1, 6, 10, 12, 17, 26, 27, 30, 31, and 33 under 35 U.S.C. § 102(b) as
being anticipated by Timmons (Br. 10), the rejection of these claims is
affirmed for the reasons set forth above.
CONCLUSION
In summary, we find that Timmons anticipates, either alone or in
combination with the other cited reference, renders obvious the subject
matter of the claims on appeal, i.e., claims 1, 6-12, 17, 18, 20, 26, 27, and
29-35. Because our reasoning differs from that of the Examiner, we
designate our affirmance as a new ground of rejection.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."

37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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Appeal 2007-0714
Application 10/651,354

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) (2006).

AFFIRMED; 37 C.F.R. § 41.50

lbg

KIMBERLY-CLARK WORLDWIDE, INC,
CATHERINE E. WOLF
401 NORTH LAKE STREET
NEENAH WI 54956

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