Ex Parte Schnabel et al

Patent Trial and Appeal Board

Jul 18, 2013

10730438 (P.T.A.B. Jul. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARTIN SCHNABEL, RADHAKRISHNAN JANARDANAN
NAIR, and KESYIN FUGGER HSUEH
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Appeal 2011-012674
Application 10/730,438
Technology Center 3700
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Before DONALD E. ADAMS, LORA M. GREEN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1-11 (App. Br. 4).
Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The claims are directed to a disposable article. Claim 1 is
representative and is reproduced in the Claims Appendix of Appellants’
Brief.

1 The Real Party in Interest is The Procter & Gamble Company of
Cincinnati, Ohio (App. Br. 2).
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Application 10/730,438

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Claims 1, 3, 4, 7, 10, and 11 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Schleinz2 and Costolow.3,4
Claims 2, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Schleinz, Costolow, and McCormack.5
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Schleinz, Costolow, and McFarland.6
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Schleinz suggests a disposable article comprising at least one
polymeric film and at least one nonwoven web formed of fibers (Ans. 5).
FF 2. Schleinz suggests that “[p]olyolefin-based webs include …
nonwoven materials … which employ polyolefin-based polymers[, such as]
… polypropylene” (Schleinz, col. 7, ll. 26-30).
FF 3. Schleinz suggests that at least one of the polymeric film or polymeric
nonwoven web material: (1) is color-pigmented by one or more pigments
and (2) has visually discernible printed designs (Ans. 5).
FF 4. Schleinz suggests the use of, inter alia, inorganic pigments including
titanium dioxide (white), carbon black (black), iron oxides (red, yellow, and

2 Schleinz et al., US 5,458,590, issued October 17, 1995.
3 Costolow, US 3,972,854, issued August 3, 1976.
4 Claim 7 is not listed among the rejected claims in Examiner’s statement of
the rejection (Ans. 4). Examiner, however, discussed the rejection of claim
7 as part of this rejection (id. at 8). Therefore, we find Examiner’s failure to
list claim 7 in the statement of rejection to represent a harmless
typographical error.
5 McCormack et al., US 6,719,742 B1, issued April 13, 2004.
6 McFarland et al., US 6,096,412, issued August 1, 2000.
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brown), ferric oxide black (black), chromium oxide (green), and ferric
ammonium ferrocyanide (blue) (Schleinz, col. 6, ll. 11-17; see Ans. 7).
FF 5. Examiner finds that Schleinz fails to suggest an L Hunter value of
the Hunter scale for darkness/lightness-appearance from 10 to 75, an a value
for red/green-appearance from about -50.0 to about +50.0 and a b value for
yellow/blue-appearance from about -50.0 to about +50.0 in the areas outside
the printed designs (Ans. 6 (“Schleinz … is silent regarding the L*a*b*
values of unprinted material”); Cf. Claim 1).
FF 6. Examiner finds that Costolow suggests a method of controlling the
color of fiber-grade polypropylene compositions (Costolow, col. 1, ll. 2-5;
Ans. 6).
FF 7. Costolow suggests that
In producing the pelleted fiber-grade polypropylene
compositions of … [Costolow’s] invention, it is desired that
such compositions have a color content such that the Hunter
value A (gree-red) is in the range of -14 to -10 and the Hunter
value B (blue-yellow) is in the range of +13 to +16, while the
Hunter value L (lightness) is maintained essentially constant,
i.e., in the range of 50 to 60.

(Costolow, col. 1, l. 66 - col. 2, l. 5 (emphasis added).)
FF 8. Schleinz suggests that
[A]dhesives, waxes, flow modifiers, processing aids and other
additives may be used during the formation of the fibers and
webs. In addition, pigments may be added to the fibers to
change their color and other additives may be incorporated into
the compositions to make the fibers and/or webs elastic. Lastly,
blends of fibers, as well as straight and biocomponent fibers,
may be combined to form nonwoven webs suitable for use with
the present invention.

(Schleinz, col. 7, ll. 58-67; see Ans. 5.)
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FF 9. Examiner relies on McCormack to suggest “a personal care product
including diapers … that has opacity from about 55% to 100% in areas
outside printed designs” (Ans. 9).
FF 10. Examiner relies on McFarland to suggest “a process of printing
absorbent articles with a half-toning printing process” (Ans. 10).
ANALYSIS
Based on the combination of Schleinz and Costolow, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious “to modify the invention of … [Schleinz] with the
fiber-grade polypropylene of Costolow in order to provide an opaque
material for printing images as called for by Schleinz” (Ans. 7). We are not
persuaded.
Examiner fails to identify an evidentiary basis on this record to
suggest that Schleinz was concerned with the opacity of the material (see
Ans. 7 (“Schleinz calls for adding inorganic pigments that increase opacity
(col. 6, lines 11-17, especially lines 11-12, titanium dioxide and pigment
white 6”); Cf. FF4; Reply Br. 4 (“Examiner has provided no factual support
for this assertion”)).
Further, as Examiner recognizes, Schleinz fails to suggest Hunter L, a,
or b values for the polymeric film and/or nonwoven web (FF 5). We are not
persuaded that Examiner’s reliance on Costolow makes up for the foregoing
deficiency in Schleinz. Notwithstanding Examiner’s contention to the
contrary, Costolow suggests Hunter L, a, and b values for a pelleted
polymeric composition (FF 7; see also Reply Br. 4 (“Examiner has not
explained … how particular L*a*b* values of polypropylene resin pellets as
taught by Costolow result in ‘high opacity’ of backsheet material, which
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would be a substantial physical transformation of such resin, at a
minimum”)). Examiner failed to establish that, even if Costolow’s pelleted
polymeric composition was used according to the method suggested by
Schleinz, the Hunter L, a, and b values suggested by Costolow would have
been retained in Schleinz’s final polymeric film and/or nonwoven web (Cf.
FF 7-8). “Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Examiner failed to explain how McCormack’s suggestion of “a
personal care product including diapers … that has opacity from about 55%
to 100% in areas outside printed designs” makes up for the foregoing
deficiency in the combination of Schleinz and Costolow (see FF 9). As
Appellants explain, “[c]olor (reflected by L*a*b* values) and opacity are
differing properties” (Reply Br. 4).
Examiner also failed to explain how McFarland’s suggestion of “a
process of printing absorbent articles with a half-toning printing process”
makes up for the foregoing deficiency in the combination of Schleinz and
Costolow (see FF 10).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1, 3, 4, 7, 10, and 11 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Schleinz and Costolow is reversed.
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The rejection of claims 2, 5, and 6 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Schleinz, Costolow, and McCormack
is reversed.
The rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Schleinz, Costolow, and McFarland is
reversed.

REVERSED

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