Ex Parte Zander et al

Board of Patent Appeals and Interferences

Aug 31, 2011

11025645 (B.P.A.I. Aug. 31, 2011)

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.
11/025,645 12/28/2004 Teresa Marie Zander 19996.1 4109
23556 7590 09/01/2011
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
09/01/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TERESA MARIE ZANDER, KRISTI JO BRYANT,
DEBRA A. HAASE, SHEILA MARIE HEYRMAN, KIM HOERTSCH,
ADRIENNE RAE LOYD, WILLIAM GROVER REEVES,
GARRY ROLAND WOLTMAN, THEODORE T. TOWER,
JENNIFER POZNIAK, ANGELA RAE HECK,
and RICHARD JOSEPH HANTKE
____________

Appeal 2009-012836
Application 11/025,645
Technology Center 3700
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Teresa Marie Zander et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s rejection of claims 1-40 and 42. We have
jurisdiction under 35 U.S.C. § 6(b).

The Invention
The claims on appeal relate to a visually coordinated absorbent
product. Claims 1 and 8, reproduced below, are illustrative of the subject
matter on appeal.
1. A visually coordinated absorbent product
comprising at least a first element and a second
element, each element comprises at least a first and
second visual characteristic, wherein the first and
second visual characteristics are different from
each other and the first and second visual
characteristic of the first element are matched to
the first and second visual characteristics of the
second element.

8. A visually coordinated absorbent product
comprising:
an absorbent article component comprising a
garment side outer cover and an absorbent core
adjacent said garment side outer cover, wherein
said article component has at least a first and
second visual characteristic, wherein said first
visual characteristic is different than said second
visual characteristic; and
a packaging component comprising at least a
first and second visual characteristics, wherein first
and second visual characteristics of the absorbent
article are coordinated to the first and second
visual characteristics of the packaging component
and wherein said article component is disposed in
said packaging component.
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Independent claim 5 is similar to claim 1, but recites first,
second, and third elements, with the first element having first and
second visual characteristics, and each of the second and third
elements has at least one visual characteristic that is matched to one of
the first and second visual characteristics of the first element.
Independent claim 42 is similar to claim 8, except the
packaging component does not have first and second visual
characteristics, but rather is transparent or translucent so that the first
and second visual characteristics of the absorbent article component
are visible through the packaging component making the packaging
component appear to have the first and second visual characteristics
on the surface thereof.

The Rejections
The following Examiner’s rejections are before us for review:
Claims1-7 are rejected under 35 U.S.C. § 102(a) as being anticipated
by Batra (U.S. Patent No. 6,520,330 B1, issued Feb. 18, 2003).
Claims 8-40 and 42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Batra.1

SUMMARY OF DECISION
We AFFIRM-IN-PART and, pursuant to our authority under 37
C.F.R. § 41.50(b), enter a NEW GROUND OR REJECTION for claim 8.

1 On page 4, the Examiner’s Answer lists claims 8-42 as being rejected
under 35 U.S.C. § 103(a) as unpatentable over Batra; however, it is clear that
claim 41 is not being rejected by the Examiner.
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OPINION
Anticipation based upon Batra
The Examiner finds that claims 1-7 are anticipated by Batra. Ans. 3.
The Examiner finds that Batra discloses an absorbent product and a package
both having indicia 15, wherein the indicia 15 include elements 18 and
markings 24, 26. Id. The Examiner cites to Batra’s column 6, lines 41-56
and column 8, lines 50-62, which state, in pertinent part, as follows:
An alternative, although not necessarily preferred,
method of determining whether or not first and second indicia
15 are matched is to ascertain the number of steps needed to
convert the first indicia 15 into the second indicia 15, or vice
versa. . . .
. . . .
Of course, it is to be recognized that a plurality of
corresponding indicia 15 may be utilized with the consumer
products and packaging of the present invention. For example,
differing tissues 10 within the package may have different
corresponding indicia 15. The indicia 15 may correspond to
those of other tissues 10 in the package as well as correspond
to indicia 15 on the package itself. Furthermore, many
consumer products are sold in multiple packages. An outer
package may have a first indicia 15 and an inner package may
have a second indicia 15 while the consumer products have
third, and possibly more, indicia 15. All of these indicia 15 may
be made to aesthetically correspond as well. (Emphasis added).

Appellants contend that, at column 8, line 62, Batra teaches the first
and second indicia are not identical and thus, the part of Batra which the
Examiner relies upon actually teaches away from the subject matter of
claims 1-7. Br. 4.
The question of whether a prior art reference “teaches away” from the
claimed subject matter is irrelevant to an anticipation analysis. See Celeritas
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Technologies Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir.
1998) (“A reference is no less anticipatory if, after disclosing the invention,
the reference then disparages it. Thus, the question whether a reference
‘teaches away’ from the invention is inapplicable to an anticipation
analysis.”) (Citations omitted). To the extent Appellants’ contend that Batra
does not disclose first and second elements with each element comprising
first and second visual characteristics that are different from each other, and
wherein the first and second visual characteristics of the first element are
matched to the first and second visual characteristics of the second element,
we disagree. From the disclosure of Batra, a person of ordinary skill in the
art would understand that Batra teaches an absorbent article (tissue 10
discussed at column 3, lines 43-44) having first and second visual
characteristics that are different from each other (indicia 15 comprising
latticework 18 and markings 24, 26 discussed at column 5, lines 31-52) and
that correspond to or match the first and second visual characteristics on a
package in which the absorbent article 10 is situated. The fact that Batra
teaches an embodiment in which the indicia disposed on the tissue and the
indicia disposed on the packaging are different from one another does not
detract from the additional disclosure in Batra, relied upon by the Examiner,
of another embodiment in which the indicia on the tissue and the indicia on
the package are matched.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1-7 under 35 U.S.C. § 102(b) as anticipated by Batra.
Obviousness based upon Batra
The Examiner finds that Batra substantially discloses the subject
matter of claims 8-40 and 42, except that Batra “does not specifically
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disclose indicia for [an] outer cover, [an] absorbent [core] and [a] peel strip.”
Ans. 4. However, the Examiner concludes that it would have been an
obvious matter of design choice to provide indicia on the components as
claimed on an absorbent article, because “[m]atters relating to ornamentation
only, which have not [sic] mechanical function cannot be relied upon to
patentably distinguish the claimed invention from the prior art.”2 Ans. 4-5.
Appellants contend that that “Batra does not teach absorbent articles
having an outer cover and an absorbent layer, which are placed in a
packaging component.” Br. 6.
We agree with Appellants that Batra fails to render claims 8-40 and 42
unpatentable under 35 U.S.C. § 103(a). Each of claims 8-40 and 42 recite
“an absorbent article component comprising a garment side outer cover and
an absorbent core adjacent said garment side outer cover.” Br., Claims
Appd’x. The Examiner has failed to adequately explain what would have
prompted one of ordinary skill in the art to apply the indicia as taught in
Batra to an absorbent article component comprising a garment side outer
cover and an absorbent core, as called for in claims 8-40 and 42. Thus, we
do not sustain the Examiner’s rejection of claims 8-40 and 42 under 35
U.S.C. § 103(a) as unpatentable over Batra.

REJECTION OF CLAIM 8 UNDER 35 U.S.C. § 102(b) PURSUANT TO
OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b)
Based upon our consideration of the claimed visually coordinated
absorbent product taken as a whole, claim 8 is rejected under 35 U.S.C.

2 The Examiner cites to In re Seid, 161 F.2d 229 (CCPA 1947) for this
proposition.
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§ 102(b) as being anticipated by Appellants’ admitted prior art (herein after
“AAPA”) disclosed in the Specification at page 2, paragraph number [5].
Our reasons follow.
The first sentence of paragraph number [5] on page 2 of the present
Specification states that a typical or prior art absorbent article, such as a pad
or a pantiliner, includes one or more elements, such as an outer cover,
absorbent core, a body side liner, and a peel strip. Thus, Appellants admit
that the structure of the absorbent article component, i.e., a garment side
outer cover and an absorbent core adjacent the garment side outer cover, as
is recited in the first paragraph of the body of independent claim 8, was
known in the art.
The second and third sentences of paragraph number [5] on page 2 of
the present Specification state that the known absorbent articles are often
wrapped in individual pouches or wrappers and a plurality of the absorbent
articles, whether individually wrapped or not, are often sold in bulk
packaging, such as a bag or box. Thus, Appellants admit that the structure
of a packaging component and the article component disposed in the
packaging component, as is recited in the second paragraph of the body of
independent claim 8, was known in the art.
The fifth, sixth, and seventh sentences of paragraph number [5] on
page 2 of the present Specification state that the known absorbent articles
contain visual characteristics including color3 and stripes, and the known
packaging have visual characteristics including color. Thus, Appellants
admit that the structure of an absorbent component having visual

3 Appellants’ Specification defines “visual characteristic” to include “color,
texture, pattern, form and the like.” Spec. 7, para. [42].
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characteristics and a packaging component having visual characteristics was
known in the art.
All that remains to be addressed in claim 8 is the recitation in the first
paragraph of the body that the article component has “at least a first and
second visual characteristic, wherein said first visual characteristic is
different than said second visual characteristic” and the recitation in the
second paragraph of the body that the packaging component includes “at
least a first and second visual characteristics, wherein first and second visual
characteristics of the absorbent article are coordinated to the first and second
visual characteristics of the packaging component.” Thus, the only
difference between the AAPA and the subject matter of independent claim 8
is the content of the claimed first and second visual characteristics. The
content of the first and second visual characteristics constitute descriptive
material. Descriptive material can be characterized as either “functional
descriptive material” or “nonfunctional descriptive material.” Where the
descriptive material is functionally related to the substrate, then that
descriptive material is “functional descriptive material.” In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983). Conversely, where the descriptive
material is not functionally related to the substrate, then that descriptive
material is nonfunctional descriptive material. Id.
Here, the substrate is both the absorbent article component and the
packaging component. Appellants’ Specification states that the purpose of
the coordination or matching of the first and second visual characteristics on
the absorbent article component and the packaging component is to instill
confidence in the consumer or user of the absorbent article component that
the absorbent article component and the packaging component were
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designed together and are of high quality. Spec. p. 2, para. [5]. However,
such coordination or matching of the first and second visual characteristics
on the absorbent article component and the packaging component does not
alter the functional relationship between the substrate, i.e., the absorbent
article component and the packaging component, and the descriptive
material, i.e., the first and second visual characteristics. The mere support
by the substrate, i.e., the absorbent article component and the packaging
component, of the descriptive material, i.e., the first and second visual
characteristics, is an insufficient functional relationship to impart a
patentable distinction between the AAPA and the claimed invention. Thus,
the first and second visual characteristics constitute non-functional
descriptive material.
Non-functional descriptive material may only patentably distinguish a
claimed invention from the prior art when the critical question of whether
there is a new and unobvious functional relationship between the non-
functional descriptive material and the substrate is answered in the
affirmative. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). To show
a new and unobvious functional relationship, it must be shown that the non-
functional descriptive material would not achieve its purpose without the
substrate and the substrate without the non-functional descriptive material
would similarly be unable to produce the desired result. Id. at 1339. Since
the first and second visual characteristics would still achieve their purpose
without the absorbent article component and the packaging component4, and

4 For instance, the first and second visual characteristics placed on a
different consumer good/package combination other than the absorbent
article/package combination of the present claimed subject matter, such as
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the absorbent article component and the packaging component without the
first and second visual characteristics would similarly be able to produce the
desired result5, there is no new or unobvious functional relationship between
the first and second visual characteristics and the absorbent article
component and the packaging component. Thus, the first and second visual
characteristics do not patentably distinguish the claimed subject matter of
the visually coordinated absorbent product from the absorbent product of the
AAPA.
In view of the foregoing, the AAPA anticipates claim 8 under 35
U.S.C. § 102(b).
As a board of appeal, we are primarily a tribunal of review, and, as
such, we have not considered the patentability of the dependent claims in
view of the art of record. We leave it to the discretion of the Examiner to
reconsider the patentability of the dependent claims in light of the prior art
and this new ground of rejection.

DECISION
We affirm the Examiner’s rejection of claims 1-7 under 35 U.S.C.
§ 102(b) as anticipated by Batra.
We reverse the Examiner’s rejection of claims 8-40 and 42 under
35 U.S.C. § 103(a) as unpatentable over Batra.

the tissue/package combination of Batra, would still instill confidence in the
consumer that the consumer good/package combination was designed
together and is of high quality. See Batra, col. 1, ll. 29-45.
5 For instance, the absorbent article and the packaging of the present claimed
subject matter would still work for their intended purpose to be an absorbent
article sealed within a package, without having the first and second visual
characteristics on either the absorbent article or the package.
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We enter a NEW GROUND OF REJECTION of claim 8 under
35 U.S.C. § 102(b) pursuant to our authority under 37 C.F.R. § 41.50(b).

FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the Examiner . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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-IN-PART; 37 C.F.R. § 41.50(b)

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