Ex Parte Warner

Patent Trial and Appeal Board

Feb 24, 2015

11703947 (P.T.A.B. Feb. 24, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ALRICK VINCENT WARNER
1

__________

Appeal 2012-005904
Application 11/703,947
Technology Center 3700
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC B.
GRIMES, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1
The real party in interest is the Procter & Gamble Company of Cincinnati,
Ohio. (Appeal Brief 1.)
Appeal No 2012-005904
Application 11/703,947

2
STATEMENT OF CASE
The following claim is representative.
1. A disposable absorbent article comprising:
a) a liquid pervious topsheet;
b) a backsheet that is at least partially joined to the
topsheet;
c) an absorbent core disposed at least partially between
the topsheet and the backsheet;
d) a first cuff along a longitudinal edge of the topsheet;
and
e) a graphic disposed on a surface of said topsheet or
backsheet wherein said graphic comprises a photochromic ink
composition that becomes visible to the naked human eye upon
exposure to ultraviolet light.

Cited References

Olson et al. US 6,635,797 B2 Oct. 21, 2003
Aziz et al. US 4,808,178 Feb. 28, 1989
Amon et al. US 5,630,869 May 20, 1997
Rosch et al. US 4,585,450 Apr. 29, 1986
Cahill WO 2007/020418 A1 Feb. 22, 2007
Appeal 2012-005904
Application 11/703,947

3
Grounds of Rejection
1. Claims 1–9 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Olson in view of Cahill.
2. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Olson in view of Cahill and Rosch.
3. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Olson in view of Cahill and Aziz.
4. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Olson in view of Cahill and Amon.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages
4–10. The following facts are highlighted.
1. Figure 1 of the Specification is reproduced below.

Figure 1 of the Specification shows,

diaper(s) 20, which comprise a liquid pervious topsheet 10, a
backsheet 12 that is at least partially joined to the topsheet 10,
an absorbent core 18 disposed at least partially between the top
Appeal 2012-005904
Application 11/703,947

4
sheet 10 and the backsheet 12, a first cuff 16 along a
longitudinal edge 22 of the topsheet 10, and a graphic 14
disposed on a surface 24 (here, the surface is wearing facing) of
said topsheet 10 or backsheet 12 wherein said graphic
comprises a photochromic ink composition that becomes visible
to the naked human eye upon exposure to ultraviolet light.

(Spec. 5, 15–21.)

2. According to the Specification it is well known that

[t]here are a variety of graphic types that have been used in the
disposable absorbent article setting. First, there are those graphics
that are permanent. That is, these graphics remain unchanged on the
article despite the environmental conditions. Next, there are
disappearing graphics that become invisible when exposed to certain
environmental changes like wetting. Then, there are appearing
graphics that tend to reveal themselves when exposed to certain
environmental changes like wetting.
(Spec. 1, ll. 26–31.)

3. Olson discloses a disposable absorbent article, comprising inter
alia, an interactive graphic that appears or disappears from view in
response to exposure to urine or the environment (Olson,
Abstract). In addition, Olson suggests
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.

Appeal 2012-005904
Application 11/703,947

5
(Col. 2, ll. 11–24.)

4. Cahill discloses a toy having an article to which a photochromic
ink or dye is applied. (Page 16, ll. 5–6.)

5. In the doll of Cahill,

the light source is connected via hidden cable 74 to the doll’s
mouth 76 such that the placing of an article such as a bottle 78 or
spoon 80 into the mouth 76 causes a switch at the dolls [sic] mouth
to be activated which, in turn, activates light source 72 and causes
light to be shone onto the portion 68 of the article worn on the doll
which causes the same to change colour due to the change in
condition of the polychromic ink or dye. Additionally there can be
provided two light sources to separately light different portions of
the diaper 66 to selectively light different coloured areas and to
represent imaginary food or fluids that would have passed through
the doll.
(Page 16, ll. 4–21; emphasis added.)

Discussion
ISSUE
The issue is: Does the cited prior art support the Examiner’s finding
that the claimed subject matter is obvious?

PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office). The Board “determines the scope of claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction ‘in light of the specification as
Appeal 2012-005904
Application 11/703,947

6
it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellant’s arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to the
Examiner’s argument and responses set forth in the Answer.
With respect to claim interpretation, claim 1 recites that the absorbent
article has “a graphic disposed on a surface of said topsheet or backsheet
wherein said graphic comprises a photochromic ink composition that
Appeal 2012-005904
Application 11/703,947

7
becomes visible to the naked human eye upon exposure to ultraviolet light.”
There is no requirement in this claim limitation that the graphic changes
upon exposure to a fluid such as urine. We further agree with the Examiner
that, “[t]here is nothing in the instant claims that identify the position of UV
light source, nor there is an evidence that the source of UV light is a
structural unit of the claimed device.” (Ans. 11.)
Appellant argues that there is no motivation to combine Olson with
Cahill as they solve different problems. (Br. 4–5.) Appellant argues that
One skilled in the art would not look to Cahill’s teaching
of toys incorporating photochromic inks to change the
condition of the inks through a controlled light source in order
to solve the problem of forming images on a disposable
absorbent article to provide educational and motivational
mechanisms to facilitate the toilet training process. Thus,
Cahill and the present invention do not belong to the same
problem solving area.

(Br. 4.)

We are not persuaded. We agree with the Examiner’s response to this
argument on page 10 of the Answer, and that both Olson and Cahill belong
to the same field of endeavor, indicators for a diaper. Further, Olson
encompasses an embodiment in which the graphic becomes visible or
becomes significantly more visible with the passage of time when exposed
to the environment but not exposed to urine (FF 3). This is the same
environment addressed by Cahill, and encompassed by the language of the
present claim 1.
Appellant presents similar arguments for the rejections of claims 10–
13 in the Appeal Brief, pages 5–8 and asserts that Rosch, Aziz, and Amon
fails to make up for the deficiencies in the combination of Olson and Cahill.
Appeal 2012-005904
Application 11/703,947

8
Having found no deficiency in the combination of Olson and Cahill, we are
not persadued by Appellant’s contention to the contrary. For the reasons of
record, these rejections are also affirmed.

CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejections,
which are affirmed.
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
dm