Ex Parte Roe et al

Patent Trial and Appeal Board

Aug 13, 2013

11724713 (P.T.A.B. Aug. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________________

Ex parte DONALD CARROLL ROE,
JENNIFER JOAN NANDREA, and
MASAHARU NISHIKAWA
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Appeal 2012-000725
Application 11/724,713
Technology Center 3700
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Before: JENNIFER D. BAHR, FRANCISCO C. PRATS, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000725
Application 11/724,713

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STATEMENT OF THE CASE
Donald Carroll Roe et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-9, 11-28, 42, and 44-60.
We have jurisdiction under 35 U.S.C. § 6(b). Appellants canceled claims
10, 29-41, and 43.
We REVERSE.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An absorbent article for wearing about the lower torso of a
wearer said absorbent article comprising:
a first waist region, a second waist region disposed
opposite said first waist region, a crotch region connecting said
first waist region and said second waist region,
an outer cover, a water-permeable topsheet attached to
said outer cover and having a body-facing surface;
an absorbent core disposed between said outer cover and
said topsheet; and
a sensory element member at least partially disposed in
said crotch region of said absorbent article, said sensory
element member providing a feedback response to said wearer
upon a urination event, said feedback response occurring within
about 60 seconds of said urination event, said sensory element
providing said feedback response for a duration of no longer
than about 10 minutes beyond said urination event, said sensory
element member comprising a body contacting portion; and
wherein said feedback response provided by said sensory
element member is selected from the group consisting of
elements providing a tactile temperature change sensation, a
tactile coolness sensation, and combinations thereof.

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Application 11/724,713

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Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Rosch
Remsburg
Schulte
Roe
Olson
US 4,585,450
US 5,959,535
US 6,166,285
US 6,627,786 B2
US 6,635,797 B2
Apr. 29, 1986
Sep. 28, 1999
Dec. 26, 2000
Sep. 30, 2003
Oct. 21, 2003
Rejections
Appellants request our review of the following rejections under 35
U.S.C. § 103(a):
I. Claims 1-9, 12-14, 16-18, 22, 24-28, 42, 44-51, and 53-60 as being
unpatentable over Roe;
II. Claim 11 as being unpatentable over Roe and Schulte;
III. Claims 19-21 and 52 as being unpatentable over Roe and Olson;
IV. Claim 23 as being unpatentable over Roe and Remsburg; and
V. Claim 15 as being unpatentable over Roe and Rosch.

OPINION
The issue raised in this appeal is whether the Examiner established a
sound basis to support the finding that Roe’s wetness sensation member 50,
as described at column 5, lines 9-20, is a member providing a tactile
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temperature change sensation,1 as called for in each of Appellants’
independent claims 1, 42, and 54. Ans. 5, 12; App. Br. 6.
Roe’s wetness sensation member 50 comprises a permeable body
facing upper layer 52 and a liquid impermeable lower layer 54 opposite the
body facing layer. Col. 5, ll. 1-8. According to Roe, the permeable layer 52
allows urine to penetrate in the z-direction and flow in the x-y plane via
wicking, and the impermeable layer 54 supports liquid flow between the
permeable and impermeable layers and retains the liquid to thereby expand
the wetted area of the wetness sensation member, which is held in as close
and continuous contact with the user’s skin as possible. Col. 5, ll. 9-20.
The Examiner found that since Roe’s wetness sensation member is
“substantially identical to” the wetness sensation member described in the
second paragraph on page 21 of Appellants’ Specification, it therefore is
“fully capable of performing the claimed function.” Ans. 5 (citing para.
[0100] of US 2007/0287971 A1).
The paragraph of Appellant’s Specification cited by the Examiner
reads as follows:
During insults of urine, the layer 90 allows urine to
penetrate in the z-direction and also provides a medium for the
flow of urine in the x-y plane via wicking. The layer 90 and/or
the 10 coating may enhance the movement of the passage of the
urine in the x-y plane, thereby expanding the wetted area of the
sensory element member, which preferably is held in contact

1 Claim 1 calls for a sensory element member “selected from the group
consisting of elements providing a tactile temperature change sensation, a
tactile coolness sensation, and combinations thereof.” Since a “coolness
sensation” is a particular type of temperature change sensation (i.e., the
sensation of a decrease in temperature relative to a baseline temperature
prior to the temperature response), claim 1 requires a tactile temperature
change sensation. See Spec. 15, ll. 14-24.
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with the wearer's skin. The wicking in the x-y plane causes the
urine to spread out and effectively wet a large area before being
absorbed into the absorbent assembly, thereby maximizing the
wetness signal experienced by the wearer.
Spec. 21, ll. 8-14.
Appellants’ “fourth variation” includes an embodiment of Appellants’
invention that is the same as Roe’s wetness sensation member 50. See Spec.
20, ll. 9-13 (describing a sensation member comprising a hydrophilic
support layer 90 and a hydrophobic coating disposed at 100b on the surface
of the layer 90 further from the wearer’s skin). “According to this variation,
the hydrophilic coating and/or temperature response element may or may not
be included.” Id. at 20, ll. 11-12. However, Appellants’ Specification does
not characterize all of the disclosed variations of their invention as providing
a tactile temperature change sensation. Rather, the disclosed variations,
more broadly, are variations of sensory element member 80. Id. at 16, l. 25;
17, l. 27; 18, l. 12; 20, l. 9. As explained in Appellants’ Specification, the
“sensory elements (incorporated into sensory element members) of the
present invention” may provide feedback that may vary, but may include a
wetness sensation response or a temperature response. Id. at 15, ll. 11-14.
Appellants’ Specification states that a “temperature response” could
include one or both of an actual temperature change or a sensation of
warmness or coolness produced without an actual temperature change, and
uses the terminology “coolness [or temperature change] sensation” to refer
to a response which produces a sensation of warmness or coolness, relative
to a baseline temperature prior to onset of the response, without an actual
corresponding temperature change. Id. at 15, ll. 14-16. Appellants’
Specification does not characterize hydrophilic or hydrophobic layers or
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coatings as temperature response elements. In fact, the Specification’s
description of a temperature response element that may be disposed on the
support layer 90 in place of, in conjunction with, or combined with a
hydrophilic coating and of a “temperature response element being
combinable with either the hydrophilic or hydrophobic agent” strongly
conveys that hydrophilic coatings/layers and hydrophobic coatings/layers are
not temperature response elements, and thus do not provide a “temperature
change sensation” as that terminology is used in the present application. See
Spec. 18, ll. 17-19; 20, ll. 11-13.
For the above reasons, although Roe’s wetness sensation member 50
may be substantially the same as one of Appellants’ disclosed embodiments
of the sensory element 80, that particular embodiment is not one which
provides a temperature change sensation. Thus, the Examiner did not
establish a sound basis to support the finding that Roe’s wetness sensation
member 50, as described at column 5, lines 9-20, is a member providing a
tactile temperature change sensation, as called for in each of Appellants’
independent claims 1, 42, and 54. Accordingly, we do not sustain the
Examiner’s rejections, all of which are predicated on that finding.

DECISION
The Examiner’s decision rejecting claims 1-9, 11-28, 42, and 44-60 is
reversed.
REVERSED

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