Dieter Homoelle et al.

Patent Trials and Appeals Board

Apr 27, 2020

15385090 - (D) (P.T.A.B. Apr. 27, 2020)

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.
15/385,090 12/20/2016 Dieter HOMOELLE 31130 4129
535 7590 04/27/2020
KF ROSS PC
311 E York St
Savannah, GA 31401-3814
EXAMINER
HOOVER, MATTHEW
ART UNIT PAPER NUMBER
1748
NOTIFICATION DATE DELIVERY MODE
04/27/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
savannah@kfrpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIETER HOMOELLE and MARCUS SCHOENBECK
Appeal 2019-002568
Application 15/385,090
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–10. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In our Decision, we refer to the Specification (“Spec.”) of Application
15/385,090 filed Dec. 20, 2016; the Final Office Action dated June 13, 2018
(“Final Act.”); the Appeal Brief filed Sept. 24, 2018 (“Appeal Br.”); the
Examiner’s Answer dated Dec. 14, 2018 (“Ans.”); and the Reply Brief filed
Jan. 13, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Mondi
Gronau GmbH. Appeal Br. 1.
Appeal 2019-002568
Application 15/385,090

2
CLAIMED SUBJECT MATTER
The invention is drawn to methods of making printed elastic
laminates. Spec. 1, ll. 8–9. The Specification describes a preferred
embodiment in which the elastic film is stretched transversely of the direct
of the web before the printing process, then printed after elastic relaxation,
and subsequently cut into strips. Spec. 5, ll. 5–8. According to the
Specification, the stretching of the elastic film constitutes a mechanical
preactivation of a layer of the laminate and results in improved stretching
behavior of the laminate. Spec. 5, ll. 8–11. The preactivation of the elastic
film provides easy stretching action of the laminate over a large area, and at
an expansion limit that is determined by the preactivation, and after which
the expansion resistance increases strongly. Spec. 5, ll.11–16. The return
behavior of the laminate after tension is removed can be improved if the
elastic film is preactivated by transverse stretching before laminating it into
the laminate. Spec. 5, ll. 16–18. After preactivation and printing, the elastic
film is cut into strips which are laminated between textile surface webs.
Spec. 6, ll. 26–29.
The claims are directed to methods of making a printed, elastic
laminate. See, e.g., claims 1, 28, and 34.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of making a printed, elastic laminate, the
method comprising the steps of:
transversely stretching a longitudinally elongated elastic
film;
transversely elastically relaxing the transversely stretched
film;
Appeal 2019-002568
Application 15/385,090

3
printing a motif on the relaxed film;
cutting the relaxed and printed elastic film into
longitudinally extending strips;
bonding the strips of relaxed and printed film
transversely next to each other between two surface webs
through at least one of which the motif is visible to form a
laminate; and
transversely stretching the laminate at least at the strips.
Appeal Br. 11 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims:
Name Reference Date
Shimada US 7,169,137 B2 Jan. 30, 2007
Baldauf et al. (“Baldauf”) US 7,470,340 B2 Dec. 30, 2008
Bishop et al. (“Bishop”) US 2011/0092943 A1 Apr. 21, 2011
REJECTION
The Examiner maintains the rejection of claims 1–10 under 35 U.S.C.
§ 103 as being unpatentable over Baldauf in view of Bishop and further in
view of Shimada. Final Act. 3–7.
OPINION
Appellant does not present separate arguments for the claims covered
by this rejection. Appeal Br. 5–9. We select independent claim 1 as
representative of the group. Claims 2–10 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(iv).
With regard to claim 1, the Examiner finds that Baldauf teaches a
method of making an elastic laminate usable in diaper constructions in
which an elastic film is cut into longitudinally extending strips which are
Appeal 2019-002568
Application 15/385,090

4
bonded transversely next to each other between two surface webs, and then
the resulting laminate is transversely stretched. Final Act. 3 (citing Baldauf
col. 2, ll. 52–64). The Examiner acknowledges that Baldauf does not teach
transversely stretching and relaxing the elastic film prior to laminating to
two surface webs, or printing a motif on the elastic material with the motif
visible after the elastic material is bonded to a surface web. Id.
The Examiner finds that Bishop teaches printed elastic laminates for
diapers in which an elastic film can be stretched and relaxed in any direction
(including transversely), and that the film may be prestretched and relaxed
prior to lamination. Final Act. 3; Ans. 8. The Examiner finds that Bishop
describes printing an elastic core or elastic layer with a graphic and
subsequently attaching the elastic printed layer to a chassis outer web by
lamination. Final Act. 3; Ans. 8, 9–10. The Examiner concludes that
stretching and relaxing the elastic film at any point in the process would
have been obvious to one of ordinary skill in the art at the time of the
invention because it would allow the user to control the amount of tension
on the film. Final Act. 3(citing Bishop ¶¶ 17 and 76). The Examiner also
determines that the skilled artisan would have found it obvious to modify
Baldauf such that the elastic film layer has a printed graphic as taught by
Bishop because such modification would allow the user to provide designs
and lines at any position of the device to make it more visually appealing.
Id. at 4.
The Examiner relies on Shimada for disclosing printed elastic
laminates for absorbent articles, wherein an image printed on a core layer
attached to a chassis outer layer is visible through the chassis outer layer. Id.
The Examiner concludes that one of ordinary skill in the art would have
Appeal 2019-002568
Application 15/385,090

5
found it obvious to modify Baldauf (as modified by Bishop) such that the
printed image is visible when applied between surface web layers, allowing
the user to see the printed image, and making the article more visually
appealing. Id.
Appellant argues that the claimed steps must be performed in the
specific sequence given in claim 1. Appeal Br. 6; Reply Br. 2. Appellant
contends that, although it is known to make a printed elastic laminate, in
general the printed motif is unsatisfactory because it is blurred or deformed
by subsequent treatment steps. Appeal Br. 5. Specifically, Appellant argues
that “the subsequent stretching/activation distorts the printed image or
motif.” Id. at 6.
Appellant further argues that each of the cited prior art references fails
to teach specific elements of claim 1. See id. at 7–9.
With regard to Baldauf, Appellant argues that the reference does not
disclose transversely stretching the film, then transversely relaxing it, then
printing it, then cutting it, then bonding the elastic strips into a laminate. Id.
at 7. Appellant argues that Baldauf’s core is not printable, stretchable, or
relaxable. Id. at 7–8.
Appellant contends that Bishop teaches an elastic panel that is only
partly an elastic film, and the meltblown facing portion of the elastic panel is
printed. Id. at 8. Appellant argues, therefore, that the step of “printing a
motif on the relaxed film” is not taught in Bishop. Id.
Shimada, Appellant argues, fails to disclose printing on an elastic core
layer after it has been transversely stretched and relaxed. Id. at 9.
Appellant does not identify reversible error in the Examiner’s
rejection of claim 1 as obvious.
Appeal 2019-002568
Application 15/385,090

6
The Examiner does not dispute Appellant’s contention that the
claimed steps must be performed in the specific sequence provided. See
generally Final Act. Rather, the Examiner finds that each of the steps is
disclosed in the prior art, and that the performance of those steps in the order
claimed is obvious. See id. at 3–4.
The selection of any order for performing known process steps is
obvious in the absence of new or unexpected results. See In re Burhans, 154
F.2d 690, 692 (CCPA 1946) (finding the claimed order of steps to process
flour obvious where the record lacked proof of new and unexpected results).
Appellant fails to provide evidence of new or unexpected results in
comparison to the disclosures of the prior art. Even if Appellant’s method
produces “a markedly superior product” (Appeal Br. 6) in comparison to
products in which an elastic film is first printed, then stretched (causing
blurred or deformed images), Appellant’s contention fails in consideration of
Bishop, which discloses biaxially stretching/relaxing the elastic film prior to
printing on the peaks made by the relaxed elastic film/meltblown facing.
The image produced on the peaks in Bishop would not suffer distortion or
blurring. Consequently, Appellant does not rebut the Examiner’s conclusion
that the claimed order of steps would have been obvious to one of ordinary
skill in the art.
Appellant’s attacks on the references individually (Appeal Br. 7–9)
also fail to persuade us of reversible error in the Examiner’s rejection.
Pointing out that each reference does not disclose an element of the claim is
not helpful in identifying reversible error by the Examiner when the
Examiner is not relying on the reference for teaching that claim element.
One cannot show nonobviousness by attacking references individually when
Appeal 2019-002568
Application 15/385,090

7
the rejection is based on a combination of references. In re Keller, 642 F.2d
413, 425 (CCPA). Each reference must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus, Appellant’s
arguments as to what each individual reference fails to teach does not
address the Examiner’s findings regarding the combined teachings of these
references where the rejection does not rely on any single reference to teach
all of these steps.
Appellant’s argument that Baldauf does not disclose transversely
stretching the film, then transversely relaxing it, then printing it, then cutting
it, then bonding the elastic strips into a laminate (Appeal Br. 7) is
unpersuasive of reversible error because the Examiner does not rely on
Baldauf to teach all of these elements, but instead relies on the combination
of references for these discloses (see Final Act. 3–4). The rejection is not
erroneous if Baldauf’s core is not printable, stretchable, or relaxable—or if
Shamada fails to disclose stretching, then relaxing, then printing on an
elastic core (see Appeal Br. 7–8)—because the Examiner relies on Bishop to
teach these limitations (Final Act. 3–4).
We note that Appellant does not challenge the Examiner’s motivation
to combine the references. See Ex Parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential) (citing Hyatt v. Dudas, 551 F.3d 1307, 1313-14
(Fed. Cir. 2008) for the proposition that the Board may treat arguments
appellant failed to make as waived).
Also unavailing is Appellant’s argument that Bishop fails to the step
of “printing a motif on the relaxed film” because Bishop teaches that the
printing occurs directly on the meltblown facing of an elastic panel. See
Appeal 2019-002568
Application 15/385,090

8
Appeal Br. 8. Bishop discloses that elastic panels can be constructed from
an elastic laminate that is a composite that includes an elastic film laminated
to a meltblown facing. Bishop ¶ 48. Bishop teaches
For a[n elastic] laminate having a cross section defined by the y-
z plane, where the material is elastically functional along the y
axis, and x-y plane defines the printable surface of the laminate,
the corrugations formed by the retracted facing in the y-z plane
have descriptive values similar to those of a wave. Whereas a
wave has a frequency, wavelength, and amplitude, the
corrugations of the facings have a corrugation density, a
corrugation spacing, and a corrugation height. It is both the
magnitude and variability of these values that determine the
resulting smoothness or texture of the material.
The regularity of the corrugation height determines the
uniformity and thus smoothness of the retracted surface. For a
laminate having a cross section in the y-z plane, and a printable
surface in the x-y plane, the regularity of corrugation height
measured on the z axis determines the consistency of laminate
look and feel.
. . .
The magnitude of corrugation density determines the surface
area available on the elastic laminate.
. . .
[T]he [elastic] film is under tension in the machine direction
during lamination. Subsequent to lamination, however, the film
is retracted so that the facing retracts toward its original machine
direction length, thereby gathering and forming pleats. [T]hese
pleats have a relatively small amplitude (height), as well as a
substantially uniform frequency across the surface of the facts
[which] improves the ability to transfer an ink to the ‘peaks’ of
the pleats, thereby improving the print quality and uniformity.
Bishop ¶¶ 49–51, 55. Thus, Bishop teaches a stretched and relaxed elastic
laminate providing improved print quality and uniformity. The question,
Appeal 2019-002568
Application 15/385,090

9
then, is whether printing on Bishop’s “elastic laminate” meets the claim
limitation of “printing a motif on the relaxed film.” We find that it does.
During prosecution, absent any special definitions, we give claim
terms their ordinary and customary meaning, as would be understood by one
of ordinary skill in the art at the time of the invention. In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); see also TriVascular, Inc.
v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016) (“Under a broadest
reasonable interpretation, words of the claim must be given their plain
meaning, unless such meaning is inconsistent with the specification and
prosecution history.”); see also In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir.
1989) (“During patent examination the pending claims must be interpreted
as broadly as their terms reasonably allow. When the applicant states the
meaning that the claim terms are intended to have, the claims are examined
with that meaning, in order to achieve a complete exploration of the
applicant’s invention and its relation to the prior art.” (citing In re Prater,
415 F.2d 1393, 1404-05 (CCPA 1969) (before the application is granted,
there is no reason to read into the claim the limitations of the specification)).
Any special definitions for claim terms must be set forth with reasonable
clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994). Our reviewing court has repeated warned against
confining claims to the embodiments in the specification. Phillips v. AWH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those
embodiments.”). The “broadest reasonable interpretation” standard does not
prejudice the applicant, who has the ability to correct errors in claim
Appeal 2019-002568
Application 15/385,090

10
language and to adjust the scope of claim protection as needed during
prosecution by amending the claims. In re Yamamoto, 740 F.2d 1569,
1571–72 (Fed. Cir. 1984).
Claim 1 contains the open transitional term “comprising,” which
permits elements in addition to those specified to be included in the
composition of the claim. In re Crish, 393 F.3d 1253, 1257 (Fed. Cir.
2004): “[I]t is well-established that ‘[c]omprising’ is a term of art used in
claim language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim.’ Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.Cir.1997).”
What a reference—here, the Specification—teaches, i.e., what it would have
meant to a person having ordinary skill in the art, is a question of fact. In re
Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992) (“What a reference teaches is
a question of fact.”). Nothing in claim 1 (or the Specification) requires that
a motif be printed directly on the relaxed film.
Bishop teaches that an elastic film is stretched, a meltblown facing is
applied, print is applied to the meltblown facing, the film and facing
(denominated “elastic laminate” in Bishop) are retracted. See Bishop ¶¶ 17,
55. Appellant argues that Bishop contains no suggestion to print before
laminating. Reply Br. 3. However, the Examiner uses Bishop to teach that
the stretching and relaxation is done first, and afterward the image is printed.
Ans. 9. The Examiner uses Baldauf to teach that an elastic laminate layer is
pulled off a roll, cut into strips, and then laminated between two webs. Id.
Thus, the combined references disclose an elastic film that stretched,
retracted, printed, cut into strips and bonded between two surface webs.
Appeal 2019-002568
Application 15/385,090

11
Appellant fails to show reversible error in the Examiner’s conclusion
that claim 1 is obvious over Baldauf in view of Bishop and further in view of
Shimada. We sustain the Examiner’s rejection of claim 1. For the same
reasons given above, we sustain the rejection of claims 2–10.
CONCLUSION
The Examiner’s decision to reject claims 1–10 is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10 103 Baldauf, Bishop,
Shimada
1–10
TIME PERIOD FOR RESPONSE
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