Ex Parte Ruman et alDownload PDFPatent Trial and Appeal BoardDec 9, 201612976734 (P.T.A.B. Dec. 9, 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. 12/976,734 12/22/2010 Marcille Faye Ruman KCX-1681 (64671537US01) 8002 22827 7590 12/12/2016 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER VASAT, PETER S ART UNIT PAPER NUMBER 3778 MAIL DATE DELIVERY MODE 12/12/2016 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 MARCILLE FAYE RUMAN, SHANNON K. MELIUS, MARY L. SCHWER, ROBERT E. MACDONALD, ERIC DONALD JOHNSON, THOMAS MICHAEL ALES, JENNIFER LEIGH SKABROUD MISEK, TERRI LYNN MEISEL, and TAMI L. KURTZ Appeal 2015-001576 Application 12/976,734 Technology Center 3700 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and TIMOTHY G. MAJORS, Administrative Patent Judges. PER CURIAM DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to an absorbent article with multiple active graphics. The Examiner rejected the claims on the grounds of anticipation and obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as Kimberly-Clark Worldwide, Inc. (see App. Br. 1). Appeal 2015-001576 Application 12/976,734 Statement of the Case Background Appellants’ invention relates to “absorbent articles having active graphics. The active graphics are graphics that change or are activated when contacted with an activation agent” (Spec. 2:11—13). The Claims Claims 1—31 are on appeal. Independent claim 1 is representative and reads as follows (emphasis added): 1. An absorbent article comprising: an outer cover having an interior surface and an exterior surface; an absorbent structure positioned adjacent the interior surface of the outer cover; and graphics incorporated into the absorbent article such that the graphics are visible from a surface of the absorbent article, the graphics depicting a scene on the absorbent article, the graphics including a permanent graphic, a first active graphic, and a second active graphic, wherein the first active graphic comprises a disappearing graphic and the second active graphic comprising an appearing graphic, and wherein the permanent graphic is interrelated to the first active graphic and the second active graphic. The Issues A. The Examiner rejected claims 1, 2, 5, 18, 19, 22, 26—29, and 31 under 35 U.S.C. § 102(b) as being anticipated by Olson ’424* 2 (Final Act. 2-4). B. The Examiner rejected claims 3, 4, 6—17, 20, 21, 24, 25, and 30 under 35 U.S.C. § 103(a) as obvious over Olson ’424 (Final Act. 5—12). 2 Olson et al., US 6,297,424 Bl, issued Oct. 2, 2001. 2 Appeal 2015-001576 Application 12/976,734 C. The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as obvious over Olson ’424 and Olson ’333* 3 (Final Act. 12—13). A. 35 U.S.C. § 102(b) over Olson ’424 Because Appellants do not argue the claims separately, we select claim 1 as representative. The Examiner finds that Olson ’424 teaches an absorbent article comprising: . . . graphics incorporated into the absorbent article such that the graphics are visible from a surface of the absorbent article, the graphics depicting a scene on the absorbent article, the graphics including a permanent graphic, a first active graphic, and a second active graphic, wherein the first active graphic comprises a disappearing graphic and the second active graphic comprising an appearing graphic, and wherein the permanent graphic is interrelated to the first active graphic and the second active graphic (col. 1,11. 66 —col. 2,11. 15; col. 6,11. 31—49; col. 9,11. 3-24). (Final Act. 2—3.) The issue with respect to this rejection is: Does the evidence of record support the Examiner’s findings that Olson ’424 anticipates Appellants’ claimed invention? Findings of Fact 1. The Specification teaches that “the ‘background’ of a scene is the surface against which represented objects and forms are perceived or depicted” (Spec. 9:24—26; see also App. Br. 8). 2. Olson ’424 teaches A disposable absorbent article such as a training pant includes wetness indicating graphics that provide an 3 Olson, US 2006/0004333 Al, published Jan. 5, 2006. 3 Appeal 2015-001576 Application 12/976,734 interactive training aid. The interactive graphics can include a permanent character graphic and one or more active object graphics, which “appear” or “disappear” from view in response to exposure to urine or the environment. The interactive graphics can also include a story line in which the permanent character graphic is illustrated performing an activity involving the active object graphic. The wetness indicating feature and the graphic story line allow the caregiver to interact with the child in an educational and motivational manner to enhance the toilet training process. (Olson ’424 Abstract; see also Final Act. 2—3.) 3. Olson ’424 teaches that [t]he absorbent article also includes a permanent character graphic and an active object graphic that are disposed on the outer cover, with the permanent character graphic being interactively interrelated with the active object graphic. The term “active graphic” as used herein refers to an appearing graphic, a fading graphic, or a combination of appearing and fading graphics. The term “appearing graphic” is used herein to refer to a graphic that becomes visible or becomes significantly more visible when exposed to urine, or that becomes visible or becomes significantly more visible with the passage of time when exposed to the environment but not exposed to urine. Conversely, the term “fading graphic” is used herein to refer to a graphic that becomes invisible or significantly less visible when exposed to urine, or that becomes invisible or significantly less visible with the passage of time when exposed to the environment but not exposed to urine. (Olson ’424 1:66—2:15; see also Final Act. 2—3.) 4. Olson ’424 teaches that “the graphics of the absorbent article can include a permanent character graphic, one or more permanent object graphics, and one or more active object graphics, all of which are related by a common story line, which would be generally known through books, 4 Appeal 2015-001576 Application 12/976,734 movies, or other media sources” (Olson ’424 6:31—37; see also Final Act. 2— 3). 5. Figures 1 and 4 of Olsen ’424 are reproduced below: “FIG. 1 illustrates a front perspective view of a training pant incorporating the principles of the present invention, showing both permanent graphics and active graphics” (Olsen ’424 10:37—39). Figure 4 shows the “situation where the active object graphics 78 [in Figure 1] disappear upon contact with urine. The front view of FIG. 4 shows that the active object graphics 78 are no longer present. Where appearing graphics are employed, the situation would work in reverse” (Olsen ’424 13:35—45). Principles of Law A prior art reference can only anticipate a claim if it discloses all the claimed limitations “arranged or combined in the same way as in the claim.” Wm. Wrigley Jr. Co. v. Cadbury Adams USALLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012). 5 Appeal 2015-001576 Application 12/976,734 Analysis We adopt the Examiner’s findings of fact and reasoning regarding the scope and content of the prior art (Final Act. 2—13; Ans. 2—8; FF 1—5) and agree that claims 1 and 26 are anticipated by Olson ’424. We address below Appellants’ arguments. Appellants contend that “Olson et al. fails to disclose a permanent graphic interrelated to a first active graphic (a disappearing graphic) and a second active graphic (an appearing graphic), the graphics depicting a scene,” and that “[njowhere is it taught that both an active appearing graphic and an active disappearing graphic may both be included” (App. Br. 6). We are not persuaded. Olson ’424 teaches that “[t]he term ‘active graphic’ as used herein refers to an appearing graphic, a fading graphic, or a combination of appearing and fading graphics’ '' (FF 2 (emphasis added); see also FF 1,3, Ans. 2-4). Olsen ’424’s teaching of a “combination” of both appearing and fading graphics is a disclosure that anticipates the requirement of claim 1 for “a first active graphic, and a second active graphic, wherein the first active graphic comprises a disappearing graphic and the second active graphic comprising an appearing graphic.” Moreover, a disclosure that allows one skilled in the art to “at once envisage each member of [a] limited class” describes each member of the class “as if [the reference] had . . . written each name.” In re Petering, 301 F.2d 676, 681-82, (CCPA 1962). Accordingly, even if Olsen ’424’s teaching were not express, the disclosure of the small genus of Olson ’424 (an appearing graphic, a fading graphic, or a combination of appearing and fading graphics) reasonably anticipates a claim directed to any single member of the genus (the combination of appearing and fading graphics). 6 Appeal 2015-001576 Application 12/976,734 We further agree with the Examiner that the concept of “a scene” is extremely broad and dependent upon the viewer. It is also helpful to refer to the excerpt above which discloses placing “a permanent character graphic and an active object graphic [. . .] with the permanent character graphic being interactively interrelated with the active object graphic” on the outer cover of an absorbent article. Olson’s disclosure fulfills the requirement of instant claim 1 of “graphics depicting a scene”. The “permanent character graphic” and the “active object graphic” comprise a scene because they appear on a surface of the outer cover. Since the “permanent character graphic” and the “active object graphic” appear together on the outer cover of the absorbent article they necessarily form a scene. (Ans. 3—4.) B. 35 U.S.C. § 103(a) over Olson ’424 Claim 8 Claim 8 requires “wherein the scene created by the graphics include a background scene and wherein the first active graphic and the second active graphic cause the background scene to change into a different background scene when the absorbent article is contacted with the activation agent.” The Examiner acknowledges that Olson ’424 “is silent as to whether the scene created by the graphics include a background scene and wherein the first active graphic and the second active graphic cause the background scene to change into a different background scene when the absorbent article is contacted with the activation agent” (Final Act. 6). The Examiner concludes that it would have been obvious to modify Olson with the scene created by the graphics include a background scene and wherein the first active graphic and the second active graphic cause the background scene to change into a different background scene when the absorbent 7 Appeal 2015-001576 Application 12/976,734 article is contacted with the activation agent, because said modification is an aesthetic design change relating to ornamentation only or simple rearrangement of printed matter parts disclosed by Olson. (Id. at 6—7.) Appellants contend that the required absorbent article wherein the first active graphic and the second active graphic cause the background scene to change into a different background scene when the absorbent article is contacted with the activation agent is not merely ornamentation. Such a limitation serves a distinct mechanical function of alerting a wearer or caregiver that an activation even has occurred .... Accordingly, Appellant respectfully submits that the Examiner has incorrectly concluded that the limitations of dependent claim 8 relate solely to ornamentation and serve no mechanical function whatsoever. (App. Br. 10-11; see also Reply Br. 2—3.) Appellants further argue that the Examiner in the present matter has not presented any evidence whatsoever to support the conclusion that it would have been obvious to modify as a rearrangement of parts. Quite to the contrary, Appellant submits that Olson et al. is directed to relatively small graphics with thin lines and limited positions in an attempt to promote rapid fading, and therefore are not of the kind that would easily lend themselves to positioning in the background of a scene on the article in order to change the background scene when activated. (Id. at 11-12.) These arguments are not persuasive. “All the disclosures in a reference must be evaluated, including nonpreferred embodiments.” In re Mills, 470 F.2d 649 (CCPA 1972). Olsen ’424 exemplifies changes such as an image with a fisherman and fish that changes to an image showing the fisherman but not the fish (FF 5). While Olson ’424 does not exemplify a 8 Appeal 2015-001576 Application 12/976,734 background change in the drawings with both appearing and disappearing graphics, we agree with the Examiner that the invention of claim 8 does not function differently than the prior art disclosure of Olson. Additionally, the active graphics disclosed by Olson will be perceived as the background scene depending upon the perception of the viewer. Thus, this is matter of aesthetic design change that relates to ornamentation only—necessarily dependent upon the viewer’s perception of the “background scene”—having no additional or different function than the prior art disclosure. (Ans. 6.) Selection of the “combination of appearing and fading graphics” taught by Olsen ’424 (FF 3), in a utility patent application, does not patentably distinguish the claimed subject matter from a diaper with the same ornamentation arranged in different pictorial representations. To hold otherwise would permit the patenting of absorbent articles indefinitely so long as the images used on the diapers are changed. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Claim 10 Claim 10 requires “wherein the first active graphic and the second active graphic cause a complete scene change to occur when the active graphics are activated.” The Examiner acknowledges that Olson ’424 “is silent as to whether the first active graphic and the second active graphic cause a complete scene change to occur when the active graphics are activated” (Final Act. 7). The Examiner concludes that it would have been obvious to “modify Olson with the first active graphic and the second active graphic [to] cause a complete scene change to occur when the active graphics are activated, because said modification is an aesthetic design change relating to 9 Appeal 2015-001576 Application 12/976,734 ornamentation only or simple rearrangement of printed matter parts disclosed by Olson” {id. at 7—8). Appellants argue that “[a]s discussed in the Present Application: ‘[A] complete scene change occurs when the focal images in the scene change in conjunction with changes in the background and/or the foreground’” (App. Br. 12). Appellants also contend that “Appellant disagrees for at least the reasons discussed in Part 4.C, supra, with respect to dependent claim 8” {id.). Accordingly, we are not persuaded for the reasons discussed above. We further agree with the Examiner that “Appellant is importing elements from the specification into the claims since claim 10 does not recite a ‘focal image’” (Ans. 6). “[L]imitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). See also In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[Appellant’s arguments fail from the outset because ... they are not based on limitations appearing in the claims.”). Claim 11 Claim 11 requires wherein the first active graphic depicts a first image and the second active graphic depicts a second image, the first image and the second image being of an object in the scene and wherein, when the active graphics are activated and the first active graphic disappears and the second active graphic appears, an illusion of movement of the object occurs. The Examiner acknowledges that Olson ’424 “is silent as to whether . . . an illusion of movement of the object occurs” (Final Act. 8). 10 Appeal 2015-001576 Application 12/976,734 The Examiner concludes that it would have been obvious to modify Olson with the first active graphic depicting] a first image and the second active graphic depicting] a second image, the first image and the second image being of an object in the scene and wherein, when the active graphics are activated and the first active graphic disappears and the second active graphic appears, an illusion of movement of the object occurs, because said modification is an aesthetic design change relating to ornamentation only or simple rearrangement of printed matter parts disclosed by Olson. (Id.) Appellants argue that inclusion of a first active graphic and a second active graphic, each depicting an object, wherein the first and second active graphics cause an illusion of movement of the object when activated serves a distinct and real mechanical function of more effectively alerting a wearer or caregiver that an activation even has occurred. (App. Br. 16; see also Reply Br. 3—4.) Appellants also contend that the Examiner in the present matter has not presented any evidence whatsoever to support the conclusion that it would have been obvious to modify the prior art as a rearrangement of parts to arrive at claim 11. Moreover, Appellant is aware of no articulated reason or motivation outside of the Present Application for rearranging the elements of Olson et al. as suggested by the Examiner in the Final Office Action. (App. Br. 17.) These arguments are unpersuasive. As the Examiner explains, “Appellants’ claim an ‘illusion of movement’ that is dependent upon the viewer’s perception” (Ans. 7). The Examiner further explains that 11 Appeal 2015-001576 Application 12/976,734 Olson’s active graphic is a combination of appearing and fading graphics. When a graphic disappears from the outer cover of the diaper, an “illusion of movement” has occurred because the graphic has moved out of view. Similarly, when a graphic appears on the outer cover of the diaper, an “illusion of movement” has occurred because the graphic has move into view. (Id.) “[Cjlaims in an application are to be given their broadest reasonable interpretation consistent with the specification and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). We further agree with the Examiner that the The active graphics disclosed by Olson appear and disappear from the outer cover of the diaper. The appearance or disappearance will be perceived as an “illusion of movement” by the viewer. Thus, this is a matter of aesthetic design change that relates to ornamentation only-necessarily dependent upon the viewer’s perception of an “illusion of movement”— having no additional or different function than the prior art disclosure. (Ans. 7—8.) See In reNgai, 367 F.3d at 1339. C. 35 U.S.C. § 103(a) over Olson ’424 and Olson ’333 Appellants rely on the arguments presented for independent claim 1. Having affirmed the anticipation rejection of claim 1 over Olson ’424 for the reasons given above, we therefore affirm the rejection of claim 23. 12 Appeal 2015-001576 Application 12/976,734 SUMMARY In summary, we affirm the rejection of claims 1 and 26 under 35 U.S.C. § 102(b) as being anticipated by Olson ’424. Claims 2, 5, 18, 19, and 22 fall with claim 1, and claims 27—29 and 31 fall with claim 26. We affirm the rejection of claims 3, 4, 6—17, 20, 21, 24, 25, and 30 under 35 U.S.C. § 103(a) as obvious over Olson ’424. We affirm the rejection of claim 23 under 35 U.S.C. § 103(a) as obvious over Olson ’424 and Olson ’333. 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 13 Copy with citationCopy as parenthetical citation