Ex Parte Roe et al

Patent Trial and Appeal Board

Aug 19, 2013

11133973 (P.T.A.B. Aug. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DONALD CARROLL ROE and CYNTHIA JEAN PANNING
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Appeal 2011-008558
Application 11/133,973
Technology Center 3700
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Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1, 5-16, 18-24, 26, and 27. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm the decision of the Examiner.

CLAIMED SUBJECT MATTER
The claimed subject matter relates generally to absorbent articles,
such as diapers, training pants, incontinence briefs, incontinence
undergarments, and the like, and particularly to absorbent articles having
combinations of features suited for toilet training and “teaching of dressing.”
Spec., p. 1, ll. 4-8. Claims 1 and 27 are independent claims. Claim 1 is
illustrative of the subject matter on appeal, and recites:
1. An absorbent article comprising:
a front waist region having first and second
longitudinal sides, a rear waist region having first and
second longitudinal sides, and a crotch region
connecting said front waist region and said rear waist
region, first and second front side panels extending
outwardly from each of said longitudinal sides of said
front waist region, first and second rear side panels
extending outwardly from each of said longitudinal
sides of said rear waist region, wherein the first front
side panel is connected with the first rear side panel
along a first side seam disposed between the first
longitudinal side of the front waist region and the first
longitudinal side of the rear waist region and wherein
the second front side panel is connected with the
second rear side panel along a second side seam
disposed between the second longitudinal side of the
front waist region and the second longitudinal side of
the rear waist region so as to form a pant-like garment
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having a waist opening and a pair of leg openings, said
absorbent article comprising at least one application or
removal aid comprising an informational image feature
located on one of the front side panels and the rear side
panels, wherein the informational image feature
communicates a pulling location in which to grip the
article and is visible when the first front side panel is
connected with the first rear side panel along the first
side seam and when the second front side panel is
connected with the second rear side panel along the
second side seam, said absorbent article further
comprising at least one sensory feedback feature
comprising a wetness sensation member that provides
a tactile sensation of wetness to a wearer of the
absorbent article.

REFERENCES
The Examiner relied upon the following prior art references:

REJECTIONS
The following rejections are before us for review:
1. Claims 1, 5-16, 18, 19, 26, and 27 as unpatentable under 35 U.S.C.
§ 103(a) based on Klemp and Roe; and
2. Claims 20-24 as unpatentable under 35 U.S.C. § 103(a) based on
Klemp, Roe, and Olson.
ANALYSIS
Concerning Rejection 1, Appellants argue claims 1, 5-16, 18, 19, 26,
and 27 as a group. App. Br. 3, 6. We choose claim 1 as representative. 37
Olson US 6,297,424 B1 Oct. 2, 2001
Roe US 6,642,427 B2 Nov. 4, 2003
Klemp US 6,702,795 B2 Mar. 9, 2004
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C.F.R. § 41.37(c)(1)(vii)(2011). Accordingly, claims 5-16, 18, 19, 26, and
27 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Concerning rejection 2, Appellants argue that Olson does not cure the
deficiencies of Klemp and Roe, and thus claims 20-24 are patentable for the
same reasons as claim 1. App. Br. 6. Thus, the patentability of all the
claims on appeal, including claims 20-24, depends on the outcome of our
decision on claim 1.
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims …. The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
Thus, we turn to claim 1 and its interpretation.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted).
In relevant part to the issues and errors asserted by Appellants, claim
1 calls for the claimed absorbent article to have “an informational image
feature” that “communicates a pulling location in which to grip the article.”
The Specification states that the informational image may be “any
visual representation suitable for communicating information regarding the
use of article 20 to a user.” Spec. 46, ll. 11-12. The Specification lists
numerous examples of an informational image. These examples include
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“pictorial symbols, photographs, drawings, cartoons, and logos.” Id. at ll.
12-14. The examples specifically list “cartoon characters or brand logos” as
examples of an informational image. Id. at ll. 16-17. Appellants do not
point us to any disclosure in the Specification or other evidence or argument
that a cartoon character or brand logo provides information about a “pulling
location in which to grip the article,” as called for in the claims, other than
its location on the absorbent article.
The Specification also defines the word “communicate.” Spec. 43, ll.
21-28. As defined, the term “communicate” refers to “the ability of the
informational image to impress an idea or message upon, or trigger a
cognitive response within, a user.” Id. Thus, according to the Specification,
placement on the article of “any visual representation,” including a brand
logo, is capable of communicating a pulling location by triggering a
cognitive response to grip and pull, as called for in claim 1. Spec. 46, ll. 11-
12.
Therefore, the informational image feature of claim 1 is any visual
representation that communicates, by its location on the article, a pulling
location in which to grip the article (i.e., on one of the front side panels or
rear side panels).
In relevant part, the Examiner found that instructional printing 66
disclosed in Klemp is “located at an area that is to be gripped by a user.”
Ans. 3. The Examiner also found that “the informational image feature of
Klemp is located on the waistband of the article proximal the side seam,
which is the same location as the informational image feature of the present
invention (see element 120 of figure 1A of the present specification).” Ans.
6. Additionally, the Examiner found instructional printing 66 of Klemp is
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located on the stretchable member 46, a pulling location in which to grip the
article. Id. Based on these findings, the Examiner determined that Klemp
discloses an informational image feature that communicates a pulling
location in which to grip the article as claimed.
Klemp refers to image feature 66 as “decorative or instructional
printing 66.” Klemp, col. 10, l. 23. In Figure 6 of Klemp, the decorative or
instructional printing 66 is shown as the word “Back,” but the Klemp
disclosure does not limit the instructional printing 66 to any specific words,
images, or logos.
Since, as discussed above, any visual representation, including a brand
logo, is capable of communicating a pulling location in which to grip the
article, by triggering a cognitive response to grip and pull, the Examiner’s
rejection is supported by a preponderance of the evidence.
Appellants argue that:
(1) “The printing 66 of Klemp does not communicate a location in
which to grip an absorbent article” and “simply recites the word ‘Back’”
(App. Br. 4); and
(2) “the claimed informational image feature is functionally related to
the article by communicating a pulling location in which to grip the article”
(id. at 5).
Instructional Printing/Informational Image
There can be no legitimate dispute that, as found by the Examiner,
Klemp discloses use of an “informational image feature 66,” specifically
designated “instructional printing 66.” Ans. 3; Klemp, col. 10, l. 23.
Appellants provide no evidence or persuasive argument that the
“instructional printing” disclosed in Klemp is any different from the
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“informational image” recited in the claims. In fact, the Specification states
that the claimed informational image may provide “instructional”
information, using the exact same word that Klemp uses to describe printing
66. Spec., p. 43, l. 20.
Appellants argue that instructional printing 66 “simply recites the
word ‘Back.’” App. Br. 4. Appellants’ focus on the word “Back” in Figure
6 of Klemp is misplaced and ignores the Klemp specification. Figure 6
shows an example of an instructional printing 66. Appellants do not cite any
evidence or disclosure from Klemp that limits instructional printing 66 to the
word “Back.”
“The use of patents as references is not limited to what the patentees
describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they
contain.” In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 1983) (quoting In
re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). “[T]he question under 35
U.S.C. § 103 is not merely what the references expressly teach but what they
would have suggested to one of ordinary skill in the art at the time the
invention was made.” In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
Appellants also do not cite any evidence or provide any persuasive
argument that establishes or suggests that it would not have been obvious to
a person of ordinary skill in the relevant technology, based on Klemp, to use
a different word, image, or logo as the instructional printing than the word
shown in Figure 6 of Klemp. A person of ordinary skill, who also is a
person of ordinary creativity, not an automaton,1 may decide to use an

1 “A person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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instructional printing, such as the word “open,” “close,” “pull,” or “grip,” or
any other visual representation capable of communicating a pulling location
by triggering a cognitive response to grip and pull, if that is the instruction
intended to be communicated. Appellants’ argument concerning the word
“Back” is not persuasive of error by the Examiner.
Also, Appellants do not point to any evidence or provide any
persuasive argument to support their apparent position that any visual
representation, including a brand logo, is capable of communicating a
pulling location, and is therefore an informational image feature as claimed,
but the instructional printing in Klemp is not.
Functionally Related
Appellants argue that the Examiner erred “by excising claim
limitations.” App. Br. 5. Appellants also argue that “the claimed
informational image feature is functionally related to the article by
communicating a pulling location in which to grip the article.” Id.
“Differences between an invention and the prior art cited against it
cannot be ignored merely because those differences reside in the content of
the printed matter. Under section 103, the [Examiner] cannot dissect a
claim, excise the printed matter from it, and declare the remaining portion of
the mutilated claim to be unpatentable. The claim must be read as a whole.”
In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). However, patentable
weight is not given to printed matter absent a new and unobvious functional
relationship between the printed matter and the substrate. Id. (“Where the
printed matter is not functionally related to the substrate, the printed matter
will not distinguish the invention from the prior art in terms of patentability.
Although the printed matter must be considered, in that situation it may not
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be entitled to patentable weight.”); see also In re Lowry, 32 F.3d 1579,
1583-84 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338-39 (Fed. Cir.
2004).
While Appellant’s substrate (the absorbent article) supports the indicia
(informational image feature) by virtue of the indicia being printed on the
substrate, this is true of any substrate having indicia printed on it, and this
fact alone is insufficient to demonstrate a new and unobvious functional
relationship between the printed matter and the substrate under the guidance
provided by our reviewing court.
Appellant’s evidence and arguments fail to establish how the indicia
of claim 1 exploits Appellant’s substrate. The informational image feature is
essentially instructions, namely, this is a pulling location in which to grip the
article. These instructions need not be on the substrate in order for the
absorbent article to be gripped as claimed. For example, a user may be able
to pull in the claimed location without the indicia (perhaps from prior
experience), or the indicia might be printed on a substrate other than the
absorbent article (e.g., separate instructions on the articles packaging).
Here the absorbent article does not depend on the indicia
(informational image feature) to achieve the desired result of gripping the
claimed portion of the absorbent article. In contrast, “[i]n Gulack, the
printed matter would not achieve its educational purposes without the band,
and the band without the printed matter would similarly be unable to
produce the desired result.” In re Ngai, 367 F.3d at 1339 (distinguishing the
functional relationship in Gulack from the nonfunctional relationship
between a kit and its instructions where “the printed matter [instructions] in
no way depends on the kit, and the kit does not depend on the printed
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matter.”). Therefore, the claimed indicia is not functionally related to the
substrate and thus will not distinguish the invention from the prior art in
terms of patentability. See In re Ngai, 367 F.3d at 1339.
There is no evidence that the Examiner excised or ignored any
limitation. Here, the Examiner found that even giving the informational
image patentable weight, the functional relationship asserted by Appellants
does not provide a new or nonobvious relationship with the article that
patentably distinguishes over Klemp. Ans. 7. The preponderance of the
evidence supports the Examiner’s position.
Appellants’ evidence and arguments fail to apprise us of any error in
the Examiner’s findings and conclusions.
Claims 5-16, 18, 19, 26, and 27 fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
Additionally, based on our decision regarding claim 1, we affirm the
Examiner’s decision to reject claims 20-24. 37 C.F.R. § 41.37(c)(1)(vii).
DECISION
Upon consideration of the record as a whole in light of Appellants’
contentions and the preponderance of relevant evidence we affirm the
Examiner’s decision rejecting claims 1, 5-16, 18-24, 26, and 27.
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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