Ex Parte Weber et al

Patent Trial and Appeal Board

Oct 22, 2013

11897645 (P.T.A.B. Oct. 22, 2013)

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.
11/897,645 08/30/2007 Shirlee Ann Weber 64342968US01 5590
23556 7590 10/22/2013
KIMBERLY-CLARK WORLDWIDE, INC.
Tammi Langin
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
GRABOWSKI, KYLE ROBERT
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
10/22/2013 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 SHIRLEE ANN WEBER and
ANDREW MARK LONG
____________________

Appeal 2011-010515
Application 11/897,645
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, MICHAEL C. ASTORINO, and
ADAM V. FLOYD, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010515
Application 11/897,645

2
STATEMENT OF THE CASE
Shirlee Ann Weber and Andrew Mark Long (Appellants) appeal
under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-27.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A recording tool for tracking absorbent article use, the tool
comprising:
an ordinal number for each absorbent article for a given
day;
associated with each absorbent article, a non-
alphanumeric health condition graphical representation of
whether the absorbent article indicates the health condition,
wherein the health condition graphical representation is
thematically related to the health condition; and
associated with the given day, a health condition
assessment summarizing the absorbent articles indicating the
health condition.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Robertson US 4,979,901 Dec. 25, 1990
Rejections
Appellants request our review of the following rejections:
(1) claims 1-27 under 35 U.S.C. § 101 as being drawn to non-
statutory subject matter;1

1 This was a new ground of rejection entered in the Examiner’s Answer.
Appeal 2011-010515
Application 11/897,645

3
(2) claims 1-25 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellants regard as the
invention; and
(3) claims 1-27 under 35 U.S.C. § 102(b) as being anticipated by
Robertson.
OPINION
Rejection (1) – patentability under 35 U.S.C. § 101
An invention is patent-eligible if it meets the requirements of
35 U.S.C. § 101, which states, “[w]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefore, subject to the
conditions and requirements of this title.”
The Examiner determined that claims 1-27 are not drawn to patent-
eligible subject matter, because the “recording tool” recited in these claims
is not a process, a machine, an article of manufacture, or a composition.
Ans. 3.
Appellants argue that “one skilled in the art could easily manufacture
the tool as a printed sheet, a smartphone app, a computer program, a web-
based application, or any of a number of other potential manifestations. In
any of these manifestations, the claimed subject matter is an article of
manufacture.” Reply Br. 4.
An “article of manufacture” in accordance with 35 U.S.C. § 101 is a
tangible substance or commodity resulting from the process of manufacture,
that is, from a process wherein raw or prepared materials are given “new
forms, qualities, properties, or combinations, whether by hand-labor or by
Appeal 2011-010515
Application 11/897,645

4
machinery.” In re Nuijten, 500 F.3d 1346, 1356 (Fed. Cir. 2007) (quoting
Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)).
Claims 1 and 26 are not drawn to an article of manufacture, as
provided in 35 U.S.C. § 101, because these claims do not recite any tangible
articles, substances, or commodities. Appellants’ Specification does not
define the term “tool” and does not describe any tangible structure to
comprise the tool. While the Appeal Brief cites examples of potential
manifestations of the tool of their invention, Appellants’ Specification does
not describe any such manifestations. An ordinary and customary meaning
of the term “tool” is “anything used as a means of performing an operation
or achieving an end: he used his boss’s absence as a tool for gaining
influence.”2 This definition is consistent with Appellants’ acknowledgement
of the essentially limitless manifestations of the tool. The fact that a person
of ordinary skill in the art could easily manufacture a tool having the
features described in Appellants’ Specification and claimed in claims 1 and
26, as asserted by Appellants, does not restrict the claimed “tool” to an
article of manufacture. Moreover, even the potential manifestations of a tool
cited in the Appeal Brief are not necessarily articles of manufacture as
Appellants assert. Cf., Nuijten, 500 F.3d at 1356 (holding that a transient
electric or electromagnetic transmission, while being man-made and
physical (existing in the real world and having tangible causes and effects) is
not an “article of manufacture” under 35 U.S.C. § 101).
Further, the additional claim limitations (i.e., an ordinal number,
graphical representation(s), health condition assessment, and wetness total

2 tool. (2000). In Collins English Dictionary. Retrieved from
http://www.credoreference.com/entry/hcengdict/tool.
Appeal 2011-010515
Application 11/897,645

5
indication) recited in claims 1 and 26 do not require tangible articles,
substances, or commodities resulting from the process of manufacture.
Appellants do not allege that claims 1 and 26 are drawn to subject
matter falling into any of the other three statutory categories. Nevertheless,
for completeness, we consider these categories as well.
Appellants’ claims 1 and 26 are not directed to a process, because the
claims do not set forth an act, or series of acts, performed upon subject
matter to be transformed into a different state or thing. See Gottschalk v.
Benson, 409 U.S. 63, 70 (1972) (“A process is a mode of treatment of
certain materials to produce a given result. It is an act, or a series of acts,
performed upon the subject-matter to be transformed and reduced to a
different state or thing.”).
Appellants’ claims 1 and 26 also are not directed to a machine,
because, as noted above and as pointed out by the Examiner (Ans. 4), the
claims do not recite any concrete structure. See Nuijten, 500 F.3d at 1355
(stating, “[t]he Supreme Court has defined the term ‘machine’ as ‘a concrete
thing, consisting of parts, or of certain devices and combination of devices.’”
(quoting Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863))).
For similar reasons, Appellants’ claims 1 and 26 also do not fall into
the final category, i.e., composition of matter. “[T]he Supreme Court has
defined ‘composition of matter’ to mean ‘all compositions of two or more
substances and all composite articles, whether they be the results of
chemical union, or of mechanical mixture, or whether they be gases, fluids,
powders or solids.’” Nuijten, 500 F.3d at 1357 (quoting Chakrabarty, 447
U.S. at 308). As discussed above, the term “tool” has an ordinary and
customary meaning that does not require physical substances of any kind,
Appeal 2011-010515
Application 11/897,645

6
and Appellants’ Specification does not define the term “tool” as any physical
structure or substance, much less two or more substances. Further, the
additional limitations (i.e., an ordinal number, graphical representation(s),
health condition assessment, and wetness total indication) recited in claims 1
and 26 do not require any physical substances.
For the above reasons, we affirm the Examiner’s rejection of claims 1
and 26, and of their dependent claims 2-25 and 27, for which Appellants do
not assert any separate arguments, under 35 U.S.C. § 101 as not being drawn
to patent-eligible subject matter.
Rejection (2) – indefiniteness
The basis of the Examiner’s rejection under 35 U.S.C. § 112, second
paragraph, is that “the nature of the geographical representation of a ‘health
condition assessment’ is unclear.” Ans. 4. In an attempt to further clarify
the basis of the rejection, the Examiner explains that “it is unclear what
constitutes a ‘health condition assessment[,’] nonetheless. The claimed
subject matter is drawn to indicia on a structurally devoid ‘recording tool[,’]
so it is unclear whether a ‘health condition assessment’ is printed indicia
(inherently, a ‘graphical representation’), intended use, or functional
limitation.” Ans. 6.
According to Appellants’ Specification, “[a] health condition as used
herein is the presence of a body fluid in the absorbent article.” Spec. 4.
Appellants’ Specification goes on to list examples of health conditions that
may be indicated through the use of an absorbent article. Spec. 4-5.
The Examiner’s determination of indefiniteness ostensibly stems from
the Examiner’s assumption that claim 1 is directed to an article or structure.
However, as discussed above, and as appreciated by the Examiner, claim 1
Appeal 2011-010515
Application 11/897,645

7
does not recite any structure, and further does not require the “health
condition graphical representation” to take any particular physical form,
aside from being “non-alphanumeric.” In essence, the limitation with
respect to the graphical representation is extremely broad in scope. Merely
that a claim is broad does not mean that it is indefinite. See In re Johnson,
558 F.2d 1008, 1016 n.17 (CCPA 1977).
We therefore do not sustain the Examiner’s rejection of claims 1-25
under 35 U.S.C. § 112, second paragraph.
Rejection (3) – anticipation
The Examiner found that Robertson discloses all features of
Appellants’ claim 1. Ans. 5 (citing Robertson, fig. 1, Abstract).
Appellants’ arguments on pages 4-10 are not convincing. See Ans. 6-
8. We thus sustain the rejection of claim 1 and of claims 2-27, for which
Appellants do not present any separate arguments for patentability apart
from claim 1, as anticipated by Robertson.
DECISION
The Examiner’s decision rejecting claims 1-27 is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

hh