Ex Parte Ales et al

Patent Trial and Appeal Board

Aug 22, 2013

11540423 (P.T.A.B. Aug. 22, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/540,423 09/29/2006 Thomas M. Ales III 64049976US01 9593
23556 7590 08/22/2013
KIMBERLY-CLARK WORLDWIDE, INC.
Tammi Langin
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
ANDERSON, CATHARINE L
ART UNIT PAPER NUMBER
3778
MAIL DATE DELIVERY MODE
08/22/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS M. ALES III, SHIRLEE A. WEBER,
ANDREW M. LONG, CHRISTOPHER P. OLSON,
ANSLEY ALLEN, and JASON C. COHEN
____________________

Appeal 2011-007305
Application 11/540,423
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007305
Application 11/540,423

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
The Office Action that is the subject of this appeal included the
rejection of claims 7-11 as unpatentable over Johnson. Office Action dated
May 10, 2010, at 2. In the Examiner’s Answer, as a new ground of rejection
approved by a Technology Center Director, the Examiner rejected claims 7
and 10 as unpatentable over Johnson and Randall, and claims 8, 9, and 11 as
unpatentable over Johnson, Randall, and Dreyer. Ans. 5-6, 8, 13. “[T]o
avoid sua sponte dismissal of the appeal as to the claims subject to the new
ground of rejection,” Appellants were required to respond to the new
grounds within two months by either reopening prosecution, or maintaining
the appeal by filing a reply brief as set forth in 37 C.F.R. § 41.41. See 37
C.F.R. § 41.39(a)(2)(b); Ans. 11-12. On the record before us, Appellants did
not exercise either option. Accordingly, the appeal as to claims 7-11 stands
dismissed.
We affirm-in-part.

The Invention
Appellants’ claimed invention relates to toilet training. Spec. 1:26-30.
Claims 1, 17, and 27 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for effectively toilet training a subject, the method
comprising:
providing a disposable absorbent article and an
informational item to a caregiver, wherein the absorbent article
includes a wetness sensor having a signaling device, wherein
the signaling device includes a current source and is adapted to
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be reusable with more than one disposable article, and wherein
the signaling device provides to the caregiver a feedback mode
of an insult contemporaneous with the insult, and wherein the
feedback mode is a sound, verbal, lighting, or wireless signal
cue; and
teaching the caregiver an appropriate response to the
feedback mode as a training opportunity, wherein teaching
employs the informational item.

Evidence Relied Upon
Johnson US 5,838,240 Nov. 17, 1998
Dreyer
Carter
Randall
US 2002/0021220 A1
US 2003/0123330 A1
US 7,443,306 B2
Feb. 21, 2002
Jul. 3, 2003
Oct. 28, 2008

The Rejections1
The following rejections are before us on appeal:
I. Claims 1, 2, 12-14, and 27 under 35 U.S.C. § 103(a) as unpatentable
over Johnson.
II. Claim 3 under 35 U.S.C. § 103(a) as unpatentable over Johnson and
Carter.
III. Claims 4-6, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over
Johnson and Randall.
IV. Claims 17-23 under 35 U.S.C. § 103(a) as unpatentable over Dreyer
and Johnson.
V. Claims 24-26 under 35 U.S.C. § 103(a) as unpatentable over Dreyer,
Johnson, and Carter.

1 These rejections reflect the dismissal of claims 7-11 as explained, supra.
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OPINION
I. Obviousness over Johnson
Claims 1, 2, and 272
The Examiner found that Johnson discloses the method as claimed,
except that Johnson does not disclose providing an informational item to the
caregiver. Ans. 3. Specifically, the Examiner found that Johnson discloses,
inter alia, that when the feedback mode from a wetness sensor indicates
there has been a contemporaneous insult, a caregiver is prompted to make an
appropriate response (i.e., taking the infant (subject) to a toilet immediately).
Ans. 3-4. The Examiner found that it is commonly known in the art that an
informational item can provide information to a user on implementation of
that article. Ans. 4. The Examiner concluded that it would have been
obvious to modify Johnson’s method to provide an informational item, in the
form of printed instructions, to instruct the caregiver on how to engage a
child in the process of toilet training, “to achieve the predictable result of
showing the caregiver the proper way to implement the signaling device.”
Ans. 4, 9-10.
Appellants present four arguments against the rejection of claim 1.
First, Appellants argue that, “[l]imiting the definition of informational item
to something that instructs a caregiver to take a child to a toilet is
inconsistent with the definition of informational item provided in the present
application.” Br. 7-8.
Claim 1 is directed to a method of effectively toilet training a subject
that includes the steps of providing an informational item to a caregiver, and

2 Appellants argue claims 1, 2, and 27 as a group, and we select claim 1 as
representative. Br. 7-8; see 37 C.F.R. § 41.37(c)(1)(vii)(2011).
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teaching the caregiver an appropriate response to the feedback mode where
that teaching employs the informational item.
The Specification defines informational items as “objects that are
provided in addition to wetness sensing absorbent articles, are adapted to
communicate information to the user and/or consumer of the wetness
sensing absorbent article, and are associated with individual components of
the wetness sensing system 120.” Spec. 20:16-20. The Specification
provides examples of informational items as “cards, paper, electronic media,
printing on the packaging, or other suitable media capable of storing and
conveying information.” Spec. 20:20-22.
The informational item of claim 1 must be employed to teach the
caregiver an “appropriate response” to the feedback mode of the wetness
sensor. Appellants’ Specification states that appropriate responses include,
inter alia, “taking the subject to a bathroom.”3 Spec. 2:29-32.
Therefore, an informational item, as called for in claim 1, is any
media capable of storing and conveying information (e.g., cards, paper,
electronic media, printing on packaging) that is associated with the
individual components of the wetness sensing system and is employable to
teach the caregiver an appropriate response to the feedback mode (e.g.,
taking the subject to a bathroom). Contrary to Appellants’ assertion, the
Examiner did not limit the informational item to something that instructs a
caregiver to take a child to the bathroom. See Br. 7-8. Rather, the Examiner
correctly interpreted that such was one example of an informational item as
claimed. See Ans. 3-4.

3 Further supporting this claim interpretation, claim 2 depends from claim 1
and further limits the appropriate response to one of, inter alia, “taking the
subject to a bathroom.”
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Second, Appellants argue that there is no suggestion in Johnson of a
need for any additional information or a need for an informational item. Br.
8. To the extent that Appellants argue that Johnson must show a need for
additional information, such contention does not address the rejection as
articulated by the Examiner. The Examiner did not propose to add to
Johnson’s information; rather, the Examiner proposed to take Johnson’s
information and put it in the form of printed instructions. See Ans. 4.
Additionally, such argument is ineffective because the suggestion need not
be found explicitly in the reference. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (rejecting the rigid requirement of a teaching,
suggestion or motivation to combine known elements in order to show
obviousness). Appellants’ argument also fails to cogently address the
rationale provided by the Examiner, namely, that changing Johnson’s
instructions to be in the form of printed instructions would show the
caregiver the proper way to implement the signaling device. See Ans. 4.
Third, Appellants argue that “[e]ven if individual components might
be known, their combination is not obvious if the flaws of the prior art that
had prompted the modification had not been recognized in the prior art.” Br.
8 (citing In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir.
2008), and identifying the problem solved by Appellants as disclosed in the
Specification at page 1, lines 9-23). For the reasons that follow, this
contention is unpersuasive.
The cited portion of the Specification describes that prior art training
aids are deficient in that: (1) they do not vary or adjust feedback as a
function of training time or as a function of training needs based on trending
success or failure, and (2) the feedback is constant (e.g., always a musical
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tone). However, claim 1 does not call for varying the feedback mode of the
wetness sensor as a function of training time or training needs based on
trending success or failure.4 Nor does claim 1 call for varying the feedback
mode.5 Therefore, the subject matter of claim 1 is not directed to solving the
problems Appellants argue were not recognized by the prior art. Appellants’
assertion is not persuasive because it is not commensurate in scope with
claim 1.
Further, Appellants’ characterization of In re Omeprazole Patent
Litigation implies that the lack of recognition in the prior art of the flaws of
the prior art that prompted the modification is sufficient to demonstrate the
nonobviousness of the modification. Such is not the law. See KSR, 550
U.S. at 420 (it is error to “hold[] that courts and patent examiners should
look only to the problem the patentee was trying to solve.”). Rather,
“[u]nder the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.” KSR, 550 U.S.
at 420. Further, the court in Omeprazole identified other factors beyond the
lack of recognition in the prior art. For example, the court found that the
proposed modification of adding the subcoating would not have been
expected to confer any particular desirable property to the final product;
rather, the final product obtained according to the proposed modifications
would merely have been expected to have the same functional properties as

4 See, e.g., claim 3, which depends from claim 1, and calls for the caregiver
to assess toilet training progress.
5 See, e.g., claim 4, which depends from claim 1, and calls for the signaling
device to include a plurality of feedback modes.
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the prior art product. In re Omeprazole Patent Litigation, 536 F.3d at 1380-
81. Therefore, Appellants’ reliance on Omeprazole is misplaced.
Fourth, Appellants argue that “[t]here is no evidence in the record that
an informational item of the present application was ‘commonly known’ or
even known in any manner.” Br. 8. This argument does not address the
rejection as articulated by the Examiner. The Examiner did not find that the
claimed informational item was known. Rather, the Examiner found that
taking information on the use of an item, such as disclosed in Johnson, and
putting that information in the form of printed instructions, was known.
Ans. 4.
Accordingly, we sustain the rejection of claims 1, 2, and 27.
Claims 12-14
Regarding claims 12-14, the Examiner found that Johnson’s absence
of sound is an indication that an insult has not occurred which provides
encouragement to the subject. Ans. 4, 10.
Claims 12, 13, and 14 each depend from independent claim 1, which
calls for the feedback mode to be “a sound, verbal, lighting, or wireless
signal cue.” Contrary to the Examiner’s finding, the absence of sound is not
a sound, verbal, lighting, or wireless cue, and therefore does not correspond
to a feedback mode as claimed. Consequently, we cannot sustain the
rejection of claims 12-14.

II. Obviousness over Johnson and Carter
Claim 3 depends from independent claim 1, and recites, “further
comprising instructing the caregiver to track and assess toilet training
progress, wherein instructing employs the informational item.”
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The Examiner found that Johnson discloses all aspects of the subject
matter of claim 3 with the exception of storing and tracking data. Ans. 4.
The Examiner makes no findings related to the steps of providing an
informational item, and instructing the caregiver, via employing the
informational item, to track and assess toilet training progress.
Appellants correctly note that the informational item is absent from
this rejection. Br. 10; see also Ans. 4-5.
In response, the Examiner states that Appellants’ arguments related to
the informational item were previously addressed. Ans. 10. Such is not the
case. Even after the shortcoming was identified by Appellants, this rejection
does not include findings related to the steps of providing an informational
item and instructing the caregiver, via employing the informational item.
Therefore, we do not sustain the rejection of claim 3.

III. Obviousness over Johnson and Randall
Claim 4 depends from claim 3 and recites, “wherein the signaling
device includes a plurality of feedback modes, and wherein caregiver is
further instructed to select between the plurality of feedback modes if toilet
training does not show progress.”
Claim 5 depends from claim 3 and recites, “wherein the signaling
device includes a plurality of feedback modes, and wherein caregiver is
further instructed to combine feedback modes from the plurality of
indications if toilet training does not show progress.” Claim 6 depends from
claim 5.
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Claim 15 depends from independent claim 1 and recites, “wherein the
signaling device includes a plurality of feedback modes, and wherein the
caregiver selects a feedback mode.”
Claim 16 depends from claim 1 and recites, “wherein the signaling
device includes a plurality of feedback modes, and wherein a dynamic
feedback mode system selects a feedback mode.”
The rejection of claims 4, 5, 15, and 16 relies upon the Examiner’s
finding that Randall discloses a signaling device for use during toilet training
comprising a plurality of feedback modes, and the conclusion that providing
instructions to the caregiver on the use of the product would have been
obvious. Ans. 5, 11.
The rejection makes no finding regarding the steps of: instructing
when toilet training does not show progress (claims 4 and 5), the caregiver
selecting a feedback mode (claim 15), or a dynamic feedback mode system
selecting the feedback mode (claim 16). We agree with Appellants that the
Examiner has not fully addressed the limitations at issue.6 Br. 10-12.
Accordingly, we do not sustain the rejection of claims 4, 5, 15, and
16.

IV. Obviousness over Dreyer and Johnson
Independent claim 17 calls for the steps of: providing an informational
item and an insult indicator, indicating to the caregiver the occurrence of an
insult, and “instructing the caregiver to immediately intervene to teach the

6 We note that this rejection, like Rejection II, suffers from the absence of
findings regarding the steps related to the claimed informational item. See
Ans. 5, 11.
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subject about the physical sensations experienced by the subject prior to and
during the insult, wherein instructing employs the informational item.”
The Examiner found that Johnson discloses “a method of toilet
training including instructing a caregiver to respond to an indicator and
provide encouragement that supports the message of the indicator, as
disclosed in 4, lines 27-33.” Ans. 7. The Examiner makes no finding
related to the steps of providing an informational item and instructing the
caregiver, via employing the informational item, to teach the subject about
physical sensations experienced by the subject prior to and during the insult,
as claimed.
Appellants correctly note that the informational item is absent from
this rejection. Br. 10; see also Ans. 4-5.
In response, the Examiner again fails to make a finding regarding the
steps related to the informational item. Ans. 11.
Accordingly, we do not sustain the rejection of independent claim 17,
or its dependent claims 18-23.

V. Obviousness over Dreyer, Johnson, and Carter
Claims 24-26 depend, directly or indirectly, from independent claim
17.
The Examiner does not rely upon Carter to correct the shortcoming of
the combination of Dreyer and Johnson (Rejection IV) as explained, supra.
See Ans. 8, 11.
Consequently, we do not sustain the rejection of claims 24-26.

Appeal 2011-007305
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DECISION
I. We affirm the Examiner’s decision to reject claims 1, 2, and 27, and
reverse with respect to claims 12-14, under 35 U.S.C. § 103(a) as
unpatentable over Johnson.
II. We reverse the Examiner’s decision to reject claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Johnson and Carter.
III. We reverse the Examiner’s decision to reject claim 15 and we reverse
with respect to claims 4-6, and 16, under 35 U.S.C. § 103(a) as unpatentable
over Johnson and Randall.
IV. We reverse the Examiner’s decision to reject claims 17-23 under 35
U.S.C. § 103(a) as unpatentable over Dreyer and Johnson.
V. We reverse the Examiner’s decision to reject claims 24-26 under 35
U.S.C. § 103(a) as unpatentable over Dreyer, Johnson, and Carter.
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

mp/rvb