Ex Parte Weber et al

Patent Trial and Appeal Board

Oct 17, 2012

11682518 (P.T.A.B. Oct. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte SHIRLEE A. WEBER, CHRISTOPHER P. OLSON,
and ANDREW M. LONG
____________________

Appeal 2010-005438
Application 11/682,518
Technology Center 3700
____________________

Before: NEAL E. ABRAMS, CHARLES N. GREENHUT, and
REMY J. VANOPHEM, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005438
Application 11/682,518
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
15. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to an absorbent article including a temperature
change member. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An absorbent article having, in an unfolded, laid flat
configuration of the absorbent article, a front region, a rear
region, and a crotch region extending longitudinally between
and interconnecting the front and rear regions, the absorbent
article comprising:
a liquid impermeable outercover;
a liquid permeable bodyside liner;
an absorbent assembly having a front portion, a rear
portion, and a central portion extending longitudinally between
and interconnecting the front portion and rear portion, the
central portion having an opening therein to define a gap
extending longitudinally between the front portion and the rear
portion in the unfolded, laid flat configuration of the absorbent
article;
the absorbent assembly front portion being disposed
intermediate the outercover and the liner in the front region of
the article;
the absorbent assembly rear portion being disposed
intermediate the outercover and the liner in the rear region of
the article; and
a temperature change member containing a temperature
change substance, said temperature change substance being
disposed in the opening of the central portion of the assembly in
the unfolded, laid flat configuration of the absorbent article.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Van Gompel
Glaug
Rabin
Williams
US 4,940,464
US 5,649,914
US 6,284,942 B1
US 6,506,958 B2
Jul. 10, 1990
Jul. 22, 1997
Sep. 4, 2001
Jan. 14, 2003
Stenberg
Olson
Smith
US 2002/0016579 A1
US 2003/0125682 A1
US 2005/0165370 A1
Feb. 7, 2002
Jul. 3, 2003
Jul. 28, 2005

REJECTIONS
Claims 1-15 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention. Ans. 3.
Claims 1-15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rabin, Glaug , Williams, Stenberg and Smith. Ans. 4.
Claims 1, 2 and 4-15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Olson and Glaug. Ans. 9.
Claims 1-15 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over the claims of
copending Application Number 10/462,166 (Notice of Allowance Mailed
Aug. 20, 2012) in view of Rabin and Olson. Ans. 12.
Claims 1-15 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1, 3-15
and 17-20 of copending Application Number 11/539,267 (Notice of
Abandonment Mailed Apr. 29, 2011) in view of Rabin. Ans. 13.

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OPINION
The rejection of claims 1-15 under 35 U.S.C. § 112, second paragraph, as
being indefinite is reversed.
Regarding the rejection under 35 U.S.C. § 112, second paragraph, the
Examiner takes the position that claim 1 is paradoxical because once a
member is located within a “gap” or “opening” there ceases to be such a
“gap” or “opening.” However, Appellants correctly point out that:
One of ordinary skill in the art, when reading claims 1-15
in light of the specification, would understand that the
gap/opening is defined by the distance between the front and
rear portions of the absorbent assembly and that the distance
does not change if the temperature change member is disposed
between the front and rear portions (i.e., the presence of the gap
does not depend on the presence or absence of the temperature
change substance).
App. Br. 5. The terms of the claim must be read in context. The “opening
defining a gap,” as recited in claim 1, requires some absence of the
absorbent assembly “between the [front and rear portions thereof].” See, e.g.,
Application figs. 2, 7. This requirement is in no way negated by the presence
of a temperature change member in the opening. Accordingly, this rejection
cannot be sustained.

The rejections under 35 U.S.C. § 103(a) are affirmed.
In arguing each of the Examiner’s rejections based on prior art
Appellants only present arguments concerning independent claim 1. Thus,
the dependent claims will stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
Regarding the rejection based on the combination of Rabin, Glaug,
Williams, Stenberg and Smith, there does not appear to be any disagreement
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that the embodiment depicted in Figure 3 of Rabin discloses the basic
structure defined by the claim, but with color change indicators 120, 130,
140 instead of Appellants’ temperature change member. Ans. 5; see, e.g.,
Application figs. 2, 7 (temperature change member 12). The Examiner
correctly found that it was known in the art to use temperature change
members as indicators to provide a wearer with feedback regarding wetness.
See Glaug col. 2, ll. 21-31; Williams col. 1, ll. 51-53; Smith p. 1, para.
[0006]; see also Spec. pp. 1-2, para. [0004]. The Examiner also correctly
found that temperature change indicators were art-recognized alternatives
for performing essentially the same function, albeit in a different way, as
color-change indicators. See Williams col. 3, l. 59 – col. 4, l. 9, col. 4, ll. 23-
28; Stenberg pp. 1 and 2, paras. [0002], [0032]. The Examiner concluded
that, because the claimed subject matter results from the pursuit of known
alternatives, it would have been obvious to one having ordinary skill in the
art. Ans. 6. We agree.
Appellants take issue with the fact that the Examiner apparently
proposed to supplement as opposed to substitute Rabin’s wetness indicator
with a temperature change indicator. App. Br. 8. Appellants contend that
“supplementing the color change components of Rabin with a temperature
change member would render Rabin useless for one of its intended purposes.
That is, the wearer would not be able to quantify the amount of urine that
was discharged.” App. Br. 8. Appellants do not apprise us of, and we are
unable to ascertain, the factual basis for this allegation. First, the absorption
or release of heat by a temperature change wetness indicator is generally a
result of dissolution, swelling, or reaction. Glaug col. 8, ll. 41-54. It is
unclear why Appellants believe this response is not, like Rabin’s color
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change wetness indicator, gradational in response to the quantity of bodily
fluid released.
Appellants’ argument concerning the ability to wear Rabin for an
entire work day (App. Br. 9) appears to be based upon a benefit of Rabin’s
device perceived by Appellants as opposed to any specific disclosure in
Rabin. While a visual indicator may not provide feedback to a user until a
visual inspection or the completion of a wearing session, in light of the
record before us, we cannot agree that one of ordinary skill in the art would
understand feedback provided concurrently with an insult of bodily fluid to
be undesirable.
Appellants correctly point out that the inclusion of a temperature
change member may affect the amount of urine available for quantifying by
the color change component of Rabin. App. Br. 9. But the fact that a
particular detail of construction must be worked out in order to effectuate the
Examiner’s proposed combination does not demonstrate nonobviousness of
that proposed combination. The fact that judgment and mechanical skill may
be required to arrive at a particular combination does not necessarily mean
that particular combination constitutes a nonobvious invention. Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 10-12 (1966) (discussing
Hotchkiss v. Greenwood, 11 How. 248 (1851)). Even if, as Appellants
suggest, some of the urine used for providing a temperature change
indication is unavailable for use to provide a color change indication, there is
no reason why one of ordinary skill in the art could not take that into account
when selecting the indicator that will be used, for example by adjusting the
anticipated volume (cc) of urine reaching the color change indicators. See
Rabin col. 3, l. 33 – col. 5, l. 6, col. 5, ll. 54-61. When incorporating the
prior art teachings regarding temperature change indicators into Rabin’s
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device, one of ordinary skill in the art could work out the details of
construction necessary to arrive at a properly functioning device. See, e.g.,
In re Spence, 261 F.2d 244, 246 (CCPA 1958). “Combining the teachings of
references does not involve an ability to combine their specific structures.”
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973); see also In re Wood, 599
F.2d 1032, 1037 (CCPA 1979).
Appellants’ final argument regarding this rejection, that there is no
reason for the Examiner’s proposed combination (App. Br. 11), appears to
be premised on the arguments rejected above. In any case, “[w]hen there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp. If
this leads to the anticipated success, it is likely the product not of innovation
but of ordinary skill and common sense.” KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007).
We turn next to the rejection based upon the combination of Olson
and Glaug. The sole issue raised by Appellants concerning this rejection is
Olson’s alleged lack of an opening defining a gap according to claim 1. App.
Br. 13; Reply Br. 2. While Appellants do not appear to have fully
appreciated the Examiner’s position, unlike Appellants, we discern no
inconsistency in that position. Contra Reply Br. 1; cf Ans. 9 and Final Rej.
10. During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). As discussed above the
“opening defining a gap,” as recited in claim 1, requires some absence of the
absorbent assembly “between the [front and rear portions thereof].” See, e.g.,
Application figs. 2, 7. While Olson’s absorbent bodies provide the wetness
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indication they are also absorbent. P. 3, para. [0032]. Appellants have not
apprised us of any reason why it is unreasonable to interpret the absorbent
body 55 closest to the front 33 of Olson’s pants 21 as the front portion of an
absorbent assembly, and the absorbent body 55 closest to the back 35 of the
pants as the rear portion, while interpreting the space occupied by all of the
other absorbent bodies 55 and seams 77 as an opening defining a gap
extending therebetween.

We do not reach the merits of the provisional rejections.
Appellants have not presented the Examiner’s double patenting
rejection for our review under 37 C.F.R. §§ 41.37(c)(1)(vi) and (vii). “Once
the provisional rejection has been made, there is nothing the examiner and
the applicant must do until the other application issues.” In re Mott, 539 F.2d
1291, 1295-6 (CCPA 1976); see also MPEP § 804(I)1. At this time
Application Number 11/539,267 appears to be abandoned. Thus, the issue of
double patenting involving Application Number 11/539,267 appears to be
moot. General Foods Corp. v. Studiengesellschaft Kohle, 972 F.2d 1272,
1277 (Fed. Cir. 1992)(Double patenting is a matter of what is claimed).
Since we do not have the benefit of any discussion by Appellants regarding
the merits of the provisional rejection based on Application Number
10/462,166, we do not reach the merits of this rejection at this time. See In
re Mott, 539 F.2d at 1296 (“By making the rejection final the PTO has
‘jumped the gun[]’”).

1 “The merits of such a provisional rejection can be addressed by both the
applicant and the examiner without waiting for the first patent to issue.”
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DECISION
The rejection of claims 1-15 under 35 U.S.C. § 112, second
paragraph, as being indefinite is reversed.
The rejection of claims 1-15 under 35 U.S.C. § 103(a) as being
unpatentable over Rabin, Glaug , Williams, Stenberg and Smith is affirmed.
The rejection of claims 1, 2 and 4-15 under 35 U.S.C. § 103(a) as
being unpatentable over Olson and Glaug is affirmed.
We do not reach the merits of the provisional rejections.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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