Ex Parte 7222732 et al

Board of Patent Appeals and Interferences

Jul 27, 2012

90011177 (B.P.A.I. Jul. 27, 2012)

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.
90/011,177 08/29/2010 7222732 151980-002 RE 3253
27752 7590 07/27/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
GELLNER, JEFFREY L
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/27/2012 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 The Procter & Gamble Company,
Patent Owner and Appellant
____________________

Appeal 2012-005319
Reexamination control 90/011,177
Patent US 7,222,732 B2
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, RAE LYNN P. GUEST, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

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Patent US 7,222,732 B2

2
I. STATEMENT OF CASE
The Procter & Gamble Company (hereinafter “Appellant”), the real party in
interest1 of Patent 7,222,7322 (hereinafter the “'732 patent”), appeals under 35
U.S.C. §§ 134(b) and 306 from the Examiner’s decision to reject claims 1-26 and
28-563 under 35 U.S.C. § 103(a) as unpatentable over Miller4 in view of the
Huggies Ad5, either alone or further in view of additional prior art of record (Final
Office Action, mailed May 10, 2011 (hereinafter “Final Office Action”), pages 3-
28).
This reexamination proceeding arose from a third-party request for ex parte
reexamination filed by Carlos R. Villamar of The Villamar Firm, PLLC (Request
for Ex Parte Reexamination, filed August 24, 2010).
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. An oral hearing
occurred on June 6, 2012. The oral hearing transcript will be made of record in
due course.6

1 See Appellant’s Appeal Brief filed October 7, 2011 (hereinafter “App. Br.”) at 1.

2 US 7,222,732 B2 was issued to Karl P. Ronn, et al., on May 29, 2007.

3 Claim 27 was cancelled in an Amendment filed July 8, 2011 (App. Br. 2).

4 US 5,865,322, issued February 2, 1999 to Carolyn Jeanne Miller (hereinafter
“Miller”).

5 An Advertisement for “New Huggies Baby Steps,” which is said to be published
in 1991 (hereinafter the “Huggies Ad”). Appellant does not dispute that the
Huggies Ad is a printed publication and prior art under 35 U.S.C. § 102(b). (See
generally App. Br.; Appellant’s Information Disclosure Statement filed April 1,
2011; Final Office Action at 2-3.)

6 The oral hearing transcript will hereinafter be referred to as “Tr.”.
Appeal
Reexam
Patent U

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configu
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2012-0053
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he '732 pa
rations, na
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distinguish
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he '732 pa
for specif
ent also de
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ment. The
reference n
ecessary

igure 1 of
tations of
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19
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32 B2
.
tent relate
mely dispo
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, ll. 12-15
able char
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(id., col. 3
tent includ
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scribes in
onfigurati
various in
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for our dis
the '732 p
absorbent
ges of dev
11,177
II. Th
s to an arra
sable diap
icia) corre
). The '73
acteristics
ent” (id.,
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dividual i
, l. 65-col
es exampl
f developm
dicia exhib
ons fitted t
dicia from
dentifying
cussion an

atent depic
article con
elopment”
3
e '732 Pate
y of dispo
ers having
sponding
2 patent de
comprisin
col. 4, ll. 2
f emotiona
ncluding l
. 4, l. 2).
es of “abs
ent (id., c
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Fig. 1 of
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ts “indicia
figuration
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sable abso
different
to wearers
scribes th
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8-31). Th
l and cogn
ocomotion
orbent arti
ol. 4, ll. 3
rial repres
at corresp
the '732 p
s indicia a
n remove

exhibiting
s fitted to
nt, col. 3,
rbent artic
features, c
’ stages o
at “each c
l differenc
e '732 pat
itive matu
, mobility
cle config
2 to col. 5
entations
onding sta
atent are r
nd the pro
d for conv
pictorial
wearer’s [
ll. 1-3).
le
omprising
f developm
onfiguratio
es addres
ent define
rity and/o
, motor ski
urations”
, l. 12). T
of the
ges of
eproduced
duct name
enience).
sic] at
a
ent
n
sing
s
r
lls
he

s

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Patent US 7,222,732 B2

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Representative claim 1 on appeal reads as follows (Claims App’x, App. Br.
17-18) (underlining has been removed and bracketed information has been deleted
to reflect claims as presently amended):
1. An array of absorbent article packages for multiple stages of
development displayed via a merchandise display system, said array
comprising:
a first package comprising a first absorbent article appropriate for a first
stage of development for newborns, infants, or toddlers, the first absorbent
article comprising a first absorbent article configuration to accommodate the
newborns', infants', or toddlers' emotional maturity, cognitive maturity,
and/or physical abilities, wherein said first absorbent article configuration
comprises a narrow crotch, said first package comprising:
a first indicia illustrating the first absorbent article on a first wearer
representative of the first stage of development on said first package;
a second package comprising a second absorbent article appropriate
for the second stage of development for newborns, infants, or toddlers, the
second absorbent article comprising a second absorbent article configuration
to accommodate the newborns', infants', or toddlers' emotional maturity,
cognitive maturity, and/or physical abilities, wherein said second absorbent
article configuration comprises stretch sides, said second package
comprising:
a second indicia illustrating the second absorbent article on a second
wearer representative of the second stage of development on said second
package;
wherein said first and second absorbent articles comprise different
absorbent article configurations;
wherein said first stage of development and said second stage of
development are different;
wherein the first wearer and the second wearer are in different poses;
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wherein said first package comprises a first size range and wherein
said second package comprises a second size range, wherein said first and
second size ranges overlap, at least in part; and
wherein a stage of development is the level of emotional and
cognitive maturity and/or physical abilities of an individual including,
locomotion, mobility, motor skills and coordination.
III. REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1-8, 10-15, 17-26, 287-36, 38-42, and 45-56 under 35 U.S.C. § 103
(a) as unpatentable over Miller in view of the Huggies Ad;
2. Claims 2, 3, 10, 30, 31, and 38 under 35 U.S.C. § 103 (a) as unpatentable
over Miller, the Huggies Ad, and Mehta8;
3. Claims 4, 5, 32, and 33 under 35 U.S.C. § 103 (a) as unpatentable over
Miller, the Huggies Ad, and Johns9;
4. Claims 6, 15, and 34 under 35 U.S.C. § 103 (a) as unpatentable over Miller,
the Huggies Ad, and Clear10;

7 Although claims 25, 28, 38-42, and 45-56 are not listed as being rejected as
obvious over Miller and the Huggies Ad in the Final Office Action (see Final
Office Action 3), the Examiner provides a rationale for such rejection (Final Office
Action 8, 9, and 12-14), and the claims are specifically recited in the Answer (see
Ans. 5). Appellant acknowledges the rejection of claims 25, 28, 38-42, and 45-56
over Miller and the Huggies Ad (App. Br. 1 and 14). Accordingly, we consider the
lack of recitation of these claims in the Final Office Action as a harmless error.

8 US 4,230,113, issued October 28, 1980 to Khusal Mehta (hereinafter “Mehta”).

9 US 3,815,602, issued June 11, 1974 to Johns et al. (hereinafter “Johns”).

10 US 5,575,783, issued November 19, 1996 to Clear et al. (hereinafter “Clear”).

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5. Claims 7, 14, 17, 35, 42, 45, and 53 under 35 U.S.C. § 103 (a) as
unpatentable over Miller, the Huggies Ad, and Cronkrite11;
6. Claims 8 and 36 under 35 U.S.C. § 103 (a) as unpatentable over Miller, the
Huggies Ad, and Gilmer12;
7. Claims 9, 16, 37, and 44 under 35 U.S.C. § 103 (a) as unpatentable over
Miller, the Huggies Ad, and Lu13;
8. Claims 11-13, 39-41 under 35 U.S.C. § 103 (a) as unpatentable over Miller,
the Huggies Ad, Mehta, and Johns;
9. Claims 16 and 44 under 35 U.S.C. § 103 (a) as unpatentable over Miller, the
Huggies Ad, Gilmer, and Lu;
10. Claims 19, 20, 47, and 48 under 35 U.S.C. § 103 (a) as unpatentable over
Miller, the Huggies Ad, and Underhill14;
11. Claim 25 under 35 U.S.C. § 103 (a) as unpatentable over Miller, the Huggies
Ad, Cronkrite, and Underhill; and
12. Claim 43 under 35 U.S.C. § 103 (a) as unpatentable over Miller, the Huggies
Ad, Lu, and Clear.
The Huggies Ad is reproduced below in its entirety.

11 US 4,299,223, issued November 10, 1981 to William E. Cronkrite (hereinafter
“Cronkrite”).

12 US 6,195,800 B1, issued March 6, 2001 to Gilmer et al. (hereinafter “Gilmer”).

13 US 5,395,358, issued March 7, 1995 to Chin B. Lu (hereinafter “Lu”).

14 US 6,612,846 B1, issued September 2, 2003 to Underhill et al. (hereinafter
“Underhill”).

Appeal
Reexam
Patent U

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array of
The Exa
each for
an illust
the vari

15 Altho

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th

2012-0053
ination co
S 7,222,7
enerally, t
absorbent
miner find
a specific
ration of t
ous stages

ugh not th
onsiders th
lated to th
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ifferences
e claimed
19
ntrol 90/0
32 B2
he Examin
articles, in
s that the
stage of d
he various
of develop

e basis for
e indicia d
e claimed
on how to
in indicia
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11,177
er finds th
cluding d
Huggies A
evelopme
diapers on
ment (An
any speci
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array of p
or when t
between th
infra will
7
at Miller d
iapers (An
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wearers i
s. 6-7; see
fic rejectio
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roducts be
o use the p
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not impart
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s multiple
ckage com
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cause the
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packages
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miner furt
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Thus, any
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Examiner
her:
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n
0).

ely,
e of

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also finds that the Huggies Ad describes particular diaper configurations suitable
for each stage of development (Ans. 6).
The Examiner finds that the particular configurations of a “narrow crotch”
and “stretch sides” are impliedly disclosed in the Huggies Ad from the picture of
the package (Ans. 6). The Examiner finds that additional configuration features
recited in various dependent claims, such as umbilical cord notch, blanket like feel,
stretchable back region, etc., are impliedly disclosed from the picture on the
package by the indication that the diaper is for a particular stage or, in some cases,
is expressly disclosed by the description of the article in the text of the Huggies Ad
(Ans. 7-12 and 13-17).
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art at the time of the invention “to modify the array of Miller by
dispensing the diapers of [the Huggies Ad] so as to allow individuals to select
absorbent articles having different characteristics” (Ans. 7).
With respect to claim 29, which recites a second and fourth indicia
specifically illustrating the absorbent article configuration (i.e., the diaper
features), the Examiner finds that the diaper features are disclosed in that the baby
is shown wearing the article in a picture on the package (Ans. 12).
With respect to the remaining rejections, the Examiner relies on the
teachings of Mehta, Johns, Clear, Cronkrite, Glimer, Lu, and Underhill to
demonstrate that particular diaper features are well known in the art, which
Appellant does not dispute (Ans. 35-36; App. Br. 16).
Appellant initially presents general arguments with respect to independent
claims 1 and 29 and separate arguments with respect to claim 29 (App. Br. 4-12).

(Final Office Action 3; Ans. 32) (citing In re Ngai, 367 F.3d 1336 (Fed. Cir.
2004)).
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We address claims 1 and 29 separately below. Appellant also presents separate
arguments with respect to various groups of dependent claims, which we address
below (App. Br. 13-16).
IV. NON-FUNCTIONAL DESCRIPTIVE MATERIAL
Each of the claims of the '732 patent recites indicia illustrating absorbent
articles on wearers representative of particular stages of development in different
poses on different packages (see independent claims 1 and 29). Claim 29 further
recites indicia illustrating the claimed absorbent article configurations (see claim
29).
The Examiner has made specific findings, discussed in detail below, that the
identified prior art expressly discloses the recited indicia. However, in addition,
the Examiner states generally that the indicia recited in the claims are non-
functional descriptive material that does not impart patentability. The Examiner
reasons that the claimed packages of absorbent articles could function without the
indicia and that the indicia are not necessary for purchase or use of the packages,
akin to the instructions provided in the kit of In re Ngai, 367 F.3d 1336, 1339 (Fed.
Cir. 2004). (Final Office Action 3; Ans. 32.)
Appellant argues that the indicia are functional “by the simple fact that the
caregiver cannot know what absorbent article configurations the packaged articles
have unless indicia on the package illustrates this” (App. Br. 6). Further, Appellant
argues that the indicia function to designate that the product is appropriate for a
child’s stage of development (App. Br. 7).
The Specification describes the indicia as illustrating the position of the
baby, i.e., “the indicia for the first absorbent article configuration 10 might display
an infant cradled in a mother’s arms,” “crawling,” being changed, pulling up a
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diaper, or “undergoing toilet training” (col. 5, ll. 33-44). The Specification states
that “[b]y matching the stage of development of a wearer with the stage of
development exhibited by the indicia, the consumer can choose the right product
configuration for their particular wearer” (col. 5, ll. 45-48). Thus, the indicia are
provided so that a purchaser can correlate a particular wearer’s stage of
development with the stage of development for which the diaper is suitable.
It has long been recognized that if there is a “functional relationship”
between the printed matter and its substrate, the printed matter may serve to
distinguish the invention from the prior art. See In re Miller, 418 F.2d 1392, 1396
(CCPA 1969); In re Gulack, 703 F.2d 1381, 1385–87 (Fed. Cir. 1983). However,
we agree with the Examiner that the claimed indicia, namely an illustration of the
absorbent article on a wearer and the absorbent article configuration, are not
functionally related to the array of diaper packages themselves. There have been
several cases directed to instructions provided with a product. In Ngai, the only
distinction between the claimed kit and the prior art kit was a set of claimed
instructions for using the kit. The Federal Circuit reasoned that “the printed matter
in no way depends on the kit, and the kit does not depend on the printed matter.
All that the printed matter does is teach a new use for an existing product.” Ngai,
367 F.3d at 1339. Likewise, in AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042,
1065 (Fed. Cir. 2010), the Federal Circuit determined that a label with drug-taking
instructions was not functionally related to the drug claimed. The court reasoned
that “the instructions do nothing more than explain how to use the known drug.
Our decision in Ngai foreclosed the argument that simply adding new instructions
to a known product creates the functional relationship necessary to distinguish the
product from the prior art.” Id.
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The instructions added to the packaging recited in the present claims, in the
form of an image of an absorbent article configuration, do no more than explain
what is contained in the packages and how to use known packages of absorbent
articles, as explained by Appellants (App. Br. 6-7). Accordingly, based on the
same reasoning in Ngai and AstraZeneca, we conclude that the indicia are non-
function descriptive material and not entitled to patentable weight. We take
instruction from the teachings of Ngai that “[i]f we were to adopt [the applicant's]
position, anyone could continue patenting a product indefinitely provided that they
add a new instruction sheet to the product.”). Ngai, 367 F.3d at 1339. Here, we
determine that if we were to adopt Appellant’s position, anyone could continue
patenting the packages of the claimed invention indefinitely merely by changing
the way the features of the articles inside the packages are described on the outside
of the package, while the product packages themselves are not changed. We note
that it is well known in the art to describe the contents of packaging thereon to
inform the consumer of the features therein. A difference in the way this
information is conveyed is not a proper basis for asserting patentability over the
prior art.
Thus, we agree with the Examiner that the indicia recited in the claims
constitute non-function descriptive material that does not patentably distinguish the
claimed products from the prior art. If the only distinction between the prior art
packages and the claimed packages are the recited indicia, the claims will not be
patentable over the prior art.
Even if the claimed indicia were considered to be functionally related,
however, the Examiner’s particular findings relating indicia disclosed in the prior
art to the patent claims are discussed in detail below.
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V. CLAIM 1
A. ISSUES ON APPEAL
Appellant argues that the Huggies Ad fails to describe or suggest packages
of absorbent articles which display images of an absorbent article comprising a
“narrow crotch” and “stretch sides” because the packages displayed in the Huggies
Ad feature only “a generally generic-looking white diaper” on an image of a baby
and that there is no mention of a “narrow crotch” or “stretch sides” (App. Br. 8-9).
Appellant further argues that in light of the teachings of each reference, the
Examiner’s rejection fails to provide a sufficient reason for using Miller’s display
system to sell the diaper packages of the Huggies Ad (App. Br. 11-12).
Accordingly, the issues on appeal are:
(1) Whether a preponderance of the evidence supports the Examiner’s
finding that the Huggies Ad describes the claimed features of a “narrow crotch”
and “stretch sides,” as recited in claim 1?
(2) Whether a preponderance of the evidence supports the Examiner’s
conclusion that one of ordinary skill in the art would have modified the array of
Miller by dispensing the diapers of the Huggies Ad?
We answer both questions in the affirmative.

B. DISCUSSION
We adopt the Examiner’s findings in the Answer as our own and add any
additional findings of fact appearing below for emphasis.
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i.
Implied in Appellant’s arguments is that claim 1 requires that the first
indicia includes an image of an absorbent article that specifically features a
“narrow crotch” and the second indicia includes a second image of an absorbent
article that features “stretch sides” (see App. Br. 8-9; Reply Br. 3-4). Accordingly,
we begin by interpreting claim 1.
During reexamination, “claims . . . are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language should be
read in light of the specification as it would be interpreted by one of ordinary skill
in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
Appellant’s arguments, suggesting that the packages must include an image
of a diaper in which the features of a “narrow crotch” and “stretch sides” are
visible in the image itself, are contrary to the plain language of claim 1.
Claim 1 recites “a first package comprising a first absorbent article . . .
comprising a first absorbent article configuration . . . , wherein said first absorbent
article configuration comprises a narrow crotch” and “a second package
comprising a second absorbent article . . . comprising a second absorbent article
configuration . . . , wherein said second absorbent article configuration comprises
stretch sides” (Claim 1).
The above portion of claim 1 requires only that the absorbent articles in the
packages (and not the package indicia) have the particular absorbent article
configurations of a “narrow crotch” and “stretch sides.”
Claim 1 further recites “a first indicia illustrating the first absorbent article
on a first wearer representative of the first stage of development on said first
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package” and “a second indicia illustrating the second absorbent article on a
second wearer representative of the second stage of development on said second
package” (Claim 1).
When asked about the meaning of claim 1 during oral argument, counsel for
Appellant appeared to suggest that the fact that the indicia required an illustration
of “the first absorbent article” meant that the features of “the first absorbent
article” recited in claim 1 must also be illustrated (see Tr. 4:21-5:5). We disagree
with counsel’s interpretation.
While we agree that the plain language of claim 1 requires that the indicia
illustrate “the first absorbent article” and “the second absorbent article,” we discern
no requirement in claim 1 that the features of the absorbent articles (i.e., “the
absorbent article configurations”) recited in the claim must be visible in the
illustration.
In light of the above interpretation, we agree with the Examiner that the
indicia disclosed in the Huggies Ad meets the requirements of claim 1 in that the
packages disclose an image of a baby wearing an absorbent article. One of
ordinary skill in the art would have understood that the absorbent article in this
image is implied to be the absorbent article contained in the package and having
the features demonstrated in other parts of the Huggies Ad. There is no
requirement that the image on the packages visibly display the features of the
diaper to meet the requirements of claim 1.
ii.
Claim 1 recites “a first package comprising a first absorbent article . . .
comprising a first absorbent article configuration . . . , wherein said first absorbent
article configuration comprises a narrow crotch” and “a second package
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15
comprising a second absorbent article . . . comprising a second absorbent article
configuration . . . , wherein said second absorbent article configuration comprises
stretch sides” (Claim 1).
Regarding the meaning of the term “narrow crotch,” the Examiner reasons
that “the Step 1 article of [the Huggies Ad] would impliedly have absorbent
articles with a narrow crotch because when compared to either the other steps or to
other undergarments for adults Step 1 garments are designed for the smaller
individuals.” The Examiner continues, “Since the pictured individuals are the
smallest, they would have narrow crotches compared to other individuals and
would meet the claim language” (Ans. 32-33). We agree with the Examiner’s
rationale and this interpretation of the term “narrow crotch.”
The Specification of the '732 patent provides no express definition of the
term “narrow crotch” (see generally '732 patent) and although it describes “a
relatively narrow crotch region” ('732 patent, col. 4, l. 65), it does not describe a
basis of comparison against which to determine whether the described crotch
region is narrow or not. To the extent that the '732 patent is describing features of
diapers at various stages of development, it is reasonable to conclude that the
crotch of a smaller diaper for a first stage infant necessarily would be narrower
than the crotch of larger diaper for a child of an older stage of development.
Counsel for Appellant asserts that one of ordinary skill in the art would
understand a “relatively narrow crotch,” as described in the Specification, to mean
relative in size to the rest of the same diaper (see Tr. 6:14-8:6). However, the
language of claim 1 does not use the term “relatively” to describe the recited
“narrow crotch.” Moreover, Appellant has pointed to no evidence in the record as
to how one of ordinary skill in the art would interpret the term “relatively narrow
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crotch” in support of Appellant’s contention. Thus, we are not persuaded by
Appellant’s unsupported attorney arguments as to the meaning of the term. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (holding that attorney arguments
cannot take the place of evidence in the record.).
Regarding the meaning of the term “stretch sides,” the Examiner reasons
that “the Step 4 article of [the Huggies Ad] would impliedly have absorbent
articles with stretch sides because all of this type of absorbent articles (diapers) are
considered to possess some ability to stretch and would meet the claim language”
(Ans. 33).
The Specification of the '732 patent provides no definition of the terms
“stretch sides” (see generally '732 patent). Although the '732 patent describes
“high stretch sides to facilitate easy, struggle-free changes of a toddler in a
standing or lying position” ('732 patent, col. 5, ll.2-3), claim 1 requires no
particular degree of stretching. Moreover, Appellant has directed us to no
evidence in the record that would support the conclusion that the Examiner’s
interpretation is unreasonably broad, inconsistent with the Specification of the '732
patent, or contrary to a skilled artisan’s understanding of the term.
In light of the Examiner’s reasonable interpretation of the terms “narrow
crotch” and “stretch sides,” we agree with the Examiner that the Huggies Ad
discloses these features of claim 1 on the packaging described therein. One of
ordinary skill in the art would have understood that the absorbent article on the
smallest child in the Huggies Ad would have had a narrower crotch than the
absorbent article on, for example, the largest child in the Huggies Ad.16 Likewise,

16 Moreover, we note that the description for the Step 4 diaper is described as
having a “trimmer fit between the legs” which we find necessarily reads on a
“narrow crotch” even under Appellant’s more narrow interpretation, i.e., narrower
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one of ordinary skill in the art would have understood that diapers as described in
the Huggies Ad would have had at least some degree of stretch, even if very little,
in the sides, considering what one of ordinary skill in the art would have known
about the materials from which these diapers are generally made. See In re
Jacoby, 309 F.2d 513, 516 (CCPA 1962) (an artisan having ordinary skill is
presumed to know something about the art apart from what the references
disclose).
iii.
Appellant contends that one of ordinary skill in the art would not have used
the diaper packaging of the Huggies Ad in the display system of Miller because the
types of product for which the Miller display was intended are different than the
diaper product of the Huggies Ad (App. Br. 11). Appellant explains that the
catamenial products of Miller are not sold in the same way as diapers, in that a
purchaser of catamenial products may buy more than one absorbency size at a
time, while a baby would need only one absorbency (or one size diaper) at a time
(id.; Reply Br. 4)
We do not find Appellant’s arguments to be persuasive of non-obviousness.
Miller expressly teaches that the display system is contemplated for use with
diapers (Miller, col. 4, ll. 44-51). Appellant’s argument does not address the direct
teaching in Miller. Thus, contrary to Appellant’s argument, Miller provides
sufficient evidence that one of ordinary skill in the art would have used the display

than the rest of the diaper. Although Appellant argues that a “trimmer fit” does not
constitute “stretch sides” (App. Br. 9), Appellant does not explain why this feature
would not constitute “a narrow crotch.”

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system of Miller with diaper packaging, even if the diaper packages were sold only
one absorbency at a time.
Appellant further argues that Miller does not teach the problem solved by
Appellant’s invention, i.e., addressing different physiological needs (App. Br. 12).
We are not persuaded by Appellant’s argument.
The Examiner is relying on the teachings of the Huggies Ad, not Miller, as
addressing different physiological needs of babies at different stages. Miller is
relied upon only for its teaching of a display for diapers. The Court of Appeals for
the Federal Circuit has determined that one cannot show nonobviousness by
attacking references individually where the rejections are based on combinations of
those references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Moreover, “[a]s long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not require
that the references be combined for the reasons contemplated by the inventor.” In
re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). “[A]ny 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 Int'l.
Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). The Examiner has provided a
sufficient reason, based on the teachings of Miller, as to why the skilled artisan
would have used the display of Miller with the diaper packages taught by the
Huggies Ad, namely, dispensing the diapers of the Huggies Ad so as to allow
individuals to select absorbent articles having different characteristics.
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
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VI. CLAIM 29
A. ISSUES ON APPEAL
Claim 29 recites:
(1) “a first indicia illustrating the first absorbent article on a first wearer
representative of the first stage of development on said first package;”
(2) “a second indicia illustrating the first absorbent article configuration [i.e.,
a narrow crotch];”
(3) “a third indicia illustrating the second absorbent article on a second
wearer on said second package;” and
(4) “a fourth indicia illustrating the second absorbent article configuration
[i.e., stretch sides].” (App. Br., Claim App’x 22.)
Appellant argues that the Huggies Ad includes only generic-looking white
diapers that cannot be differentiated from one another (App. Br. 10; Reply Br. 4).
Appellant thus contends that “one is not able to detect ‘absorbent article
configurations,’ even impliedly, from the Huggies packages” (id.).
Accordingly, the issue on appeal is: Whether a preponderance of the
evidence supports the Examiner’s finding that the Huggies Ad describes indicia
illustrating a “narrow crotch” and “stretch sides,” as recited in claim 29?
We answer this question in the affirmative.
B. DISCUSSION
Based on the reasoning discussed above, the Examiner finds that “the indicia
[in the Huggies Ad] is considered to show both the absorbent article and its
structural difference.” (Ans. 33).
Based on our discussion above and our conclusions as to the broadest
reasonable meaning provided to the terms “narrow crotch” and “stretch sides,” we
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agree with the Examiner that the image of babies on the packages in the Huggies
Ad illustrates these features in illustrating diapers of different sizes and by the
degree of stretch in diapers of the type illustrated that would be understood by the
skilled artisan. We agree with the Examiner that these structural differences are
illustrated on the package and thus the indicia on the packaging meet the
requirements of claim 29.

VII. CLAIMS DEPENDING FROM CLAIM 1 AND 29
A. ISSUES ON APPEAL
Appellant argues that the Huggies Ad fails to disclose: an “umbilical cord
notch” as recited in claims 2 and 30, “fasteners,” particularly flexible fasteners as
recited in claims 7, 14, 17, 35, 42, and 45, “stretch sides” as recited in claims 8 and
36, a “narrow crotch” as recited in claims 13 and 41, a “stretchable back region” as
recited in claims 6, 15, 34, and 43, size ranges in the form of weight ranges as
recited in claims 28 and 56 and overlapping weight ranges as recited in claims 2717
and 55, a chassis in the form of a tape-style diaper as recited in claims 25 and 53
and in the form of a “pull-on” training pant as recited in claims 19, 25, and 47, and
third and fourth absorbent article configurations as recited in claims 18 and 46
(App. Br. 13-16). Appellant again argues that the images display only generic-
looking diapers and do not clearly exhibit these features (id.).
Moreover, Appellant contends that the only relevant portion of the Huggies
Ad is the diaper packaging, as that is the only portion of the Huggies Ad that
would be displayed on a shelf (id.). In other words, Appellant argues that any

17 Appellant presents arguments directed to claim 27 despite the fact that Appellant
identifies claim 27 as being cancelled (App. Br. 1).

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guidance from the text of the Huggies Ad that is not provided on the packages
displayed therein should be ignored.
Appellant further argues that the claimed indicia has a function relationship
to the packaging, and thus imparts patentability to the claimed subject matter (App.
Br. 5-7).
With regard to the obviousness rejections which combine the teachings of
the Huggies Ad with additional prior art references, Appellant does not contest the
Examiner’s findings that the particular diaper configurations were well known in
the art. Rather, Appellant argues that the “invention is not about a new umbilical
cord notch or a new feature that provides for a blanket-like feel, etc . . . .[but] to an
array of absorbent article packages comprising indicia such that the caregiver can
choose the right absorbent article for her baby amongst a myriad of size ranges and
absorbent article configurations – i.e., such that the care giver chooses an article
that is appropriate for her baby’s stage of development” (App. Br. 16).
Accordingly, the issues on appeal are:
(1) Whether a preponderance of the evidence supports the Examiner’s
conclusion that an array of absorbent article packages comprising diaper
configurations recited in each of claims 2, 6, 7, 14, 15, 17-19, 25, 46, 47, 53, 55,
and 56 would have been obvious to one of ordinary skill in the art from the
teachings of Miller and the Huggies Ad?
(2) Whether a preponderance of the evidence supports the Examiner’s
conclusion that indicia illustrating the diaper configurations recited in each of
claims 30, 34-36, 41-43, and 45 would have been obvious to one of ordinary skill
in the art from the teachings of Miller and the Huggies Ad?
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(3) Whether a preponderance of the evidence supports the Examiner’s
conclusion that an array of absorbent article packages comprising the particular
diaper configurations recited in dependent claims 2-17, 19, 20, 25, 30-45, 47, 48,
and 53 would have been obvious to one of ordinary skill in the art from the
teachings of Miller, the Huggies Ad, and cited prior art references identifying that
the claims diaper configurations were well known in the prior art?
We answer these questions in the affirmative.

B. DISCUSSION
Initially, we summarily affirm the Examiner’s rejection of dependent claims
3-5, 8, 10-13, 20-24, 26, 29, 31-33, 36, 38-41, 48-52 and 54 under 35 U.S.C. §
103(a) as unpatentable over Miller in view of the Huggies Ad, since no arguments
are presented by the Appellant to apprise us of any error in the Examiner's
rejection of these claims (App. Br. 13-16). See Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (On appeal, the Board “reviews the obviousness
rejection for error based upon the issues identified by appellant, and in light of the
arguments and evidence produced thereon.”). Accordingly, we limit our
discussion of Miller in view of the Huggies Ad to only the claims specifically
addressed by Appellant.
i.
Claims 2, 6, 7, 14, 15, 17-19, and 25 each depend from claim 1 and recite
particular “absorbent article configurations.” As with claim 1, these claims only
require that the absorbent articles in the packages have the particular absorbent
article configurations and do not require the indicia to illustrate the particular
features of the included diapers.
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Claims 46, 47, 53, 55, and 56 depend from claim 29, but add a third package
including a third absorbent article configuration and “indicia illustrating the third
absorbent article on a third wearer.” However, these claims do not expressly
require that the third indicia illustrate the third “configuration.” As with claim 1,
there is no requirement that the features of the absorbent articles (i.e., “the third
absorbent article configuration”) recited in the claims be visible in the illustration.
Moreover, claims 25 and 53 recite that the “absorbent articles chassis are
tape-style,” claims 19, 25, and 47 recite that the “absorbent articles chassis is a pull
on chassis,” claim 55 recites that packages comprise overlapping size ranges, and
claims 28 and 56 recite that size ranges in the form of weight ranges. Claims 19,
25, 28, 47, 53, 55, and 56 are not directed towards package indicia or particular
“absorbent article configurations,” but merely to the packaged product.
Thus, for the above identified claims, we need only address whether the
Huggies Ad would have rendered obvious packaging absorbent articles having the
recited configurations. Accordingly, we disagree with Appellant’s argument that
the text of the Huggies Ad is not instructive as to what one of ordinary skill in the
art would have considered as features of the packaged absorbent articles. A
reference stands for all of its specific teachings, as well as the inferences one of
ordinary skill in this art would have reasonably been expected to draw therefrom.
In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992) (“It is well settled that a
prior art reference is relevant for all that it teaches to those of ordinary skill in the
art.”). One of ordinary skill in the art would have perceived the articles within the
displayed packaging to have included the features described in the Huggies Ad, as
further explained below.
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With respect to an “umbilical cord notch” of claim 2, the Examiner finds
that the Huggies Ad discloses “umbilical cord protection” for step 1 (Ans. 35).
We agree with the Appellant that the Huggies Ad only refers to a “fold-down
feature” and not to a “notch” (i.e., a cut out) as claimed (App. Br. 13; Huggies Ad,
text associated with Baby Steps 1). An interpretation of the term “notch” would
not reasonably encompass a folded down diaper. Accordingly, the Examiner has
not shown that the Huggies Ad alone would have instructed the skilled artisan to
include a “notch” for umbilical cord protection in a diaper.
With respect to the “fastener” feature recited in claims 7, 14, and 17, the
Examiner finds that the Huggies Ad impliedly teaches fasteners because
“absorbent articles, or diapers, have fasteners” (Ans. 35). Appellant’s arguments
are directed to the fact that the images disclose only “generic-looking white
diapers” and that “fasteners are not readily decipherable” (App. Br. 13). The
Examiner’s finding is reasonable and not adequately disputed by the Appellant’s
arguments. We agree that even generic diapers are understood to include fasteners,
and we agree that such fasteners are at least impliedly disclosed in the Huggies Ad.
We discuss above in details our determination that the Huggies Ad
adequately discloses “stretch sides” and a “narrow crotch” under the broadest
reasonable interpretation of the phrases.
With respect to the “stretchable back region” of claims 6 and 15, the
Examiner finds that the Huggies Ad impliedly teaches a back region that is
“stretchable” from the fact that diapers have stretchable back regions. As with the
term “stretch sides” discussed above, we find that neither the claims nor the
Specification of the'732 patent requires a particular degree of stretchability. In light
of the Examiner’s reasonable interpretation of the phrase “stretchable back region,”
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we agree with the Examiner that the Huggies Ad impliedly discloses this feature,
even in the “generic-looking” diapers shown on the packaging therein. One of
ordinary skill in the art would have understood that diapers as described in the
Huggies Ad would have had a back region with at least some degree of stretch,
even if very little, considering what one of ordinary skill in the art would have
known about the materials from which these diapers are generally made.18 See
Jacoby, 309 F.2d at 516.
With respect to the overlapping weight ranges of claims 28, 55, and 56, the
Examiner finds that the Huggies Ad teaches separating packages by overlapping
weight ranges by virtue of the “lbs” text for each step of the Huggies Ad (Ans. 35).
Appellant’s arguments are directed only to the Huggies package images (App. Br.
14 and 15), and fail to address what the skilled artisan would have understood
about the diapers from the general teachings of the Huggies Ad. See In re Fritch,
972 F.2d at 1264-65.
With respect to the tape-style chassis of claims 25 and 53, the “Examiner
considers the absorbent articles of the Steps shown in [the Huggies Ad] to have
these characteristic” (Ans. 35-36). Appellant argues only that the fasteners are not
illustrated. We are not persuaded by Appellant’s argument. We agree with the
Examiner that even generic diapers would have been known the skilled artisan to
have a tape-style chassis. See Jacoby, 309 F.2d at 516.

18 Moreover, we note that the images for the Step 3 appear to display gathering in
the diaper at a waistband region, which we take judicial notice of as generally
being characteristic of stretchiness in a diaper. While Appellant argues that it is
not clear if this waistband area is a back or front of the diaper (App. Br. 14), we
find the teaching of a stretchable waistband would have instructed the skilled
artisan to apply the teaching to either the back or front of the waistband.
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With respect to the “third absorbent article configuration” of claims 18 and
46, the Examiner finds that the absorbent articles described for each of the steps of
the Huggies Ad would have different configurations (Ans. 36). We agree, and note
that the Huggies Ad lists different features for the diapers associated with each of
the steps (see the Huggies Ad, text). Appellant’s arguments are directed toward
the images not illustrating the various configurations but only showing “generic-
looking diapers.” As discussed above, claims 18 and 46 do not require the indicia
to illustrate the features of the diapers, only a wearer wearing the diapers.
With respect to the pull-on-type chassis of claims 19, 25, and 47, the
“Examiner considers these type of absorbent articles to be pull-on” (Ans. 36).
Appellant contends that the Huggies Ad does not teach, even impliedly, a pull on
chassis and notes that, even regarding Step 5, there appears to be only a “generic-
looking diaper” that is not described as a pull-on type (App. Br. 15-16). We agree
with Appellant that the Examiner has not shown that the Huggies Ad alone would
have instructed the skilled artisan to include a pull-up style chassis in a diaper.
ii.
Claims 30, 34-36, 41-43, and 45 depend from claim 29 and add further
features to the first and/or second absorbent article configurations recited in claim
29. Considering the language of claim 29, the “indicia illustrating the first [or
second] absorbent article configuration” must also illustrate the additionally
claimed features of the first and second absorbent article configurations.
For the same reasons discussed above, the generic-looking diapers on the
infants of the Huggies Ad are understood to at least impliedly meet the “stretchable
back region” of claims 34 and 43, the “fastener” limitations of claims 35, 42, and
45, the “stretch sides” of claim 36, and the “narrow crotch region” of claim 41,
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under the broadest reasonably interpretation of those terms. Accordingly, we also
agree with the Examiner that the Huggies Ad expressly discloses images
illustrating these features.
However, claim 30 recites that “said first absorbent article configuration
comprises an umbilical cord notch.” (App. Br. 23, Claim App’x). We interpret
claim 30 as requiring that the indicia include an illustration of both a “narrow
crotch” and “an umbilical cord notch.” As we discuss above, the Huggies Ad does
not expressly or impliedly disclose an “umbilical cord notch.” Further, we agree
with Appellant that the generic diaper of the Huggies Ad does not reasonably
disclose indicia illustrating this feature (App. Br. 13).
Accordingly, with the exception of claims 2, 19, 25, 30, and 47, we affirm
the Examiner’s rejection of the dependent claims under 35 U.S.C. § 103(a) as
unpatentable over Miller in view of the Huggies Ad.
iii.
The Examiner has meticulously demonstrated that the particular claimed
absorbent article configurations and chassis styles are well known diaper features
in the art (see Ans. 17-30). The Examiner’s has provided detailed reasons as to
why the skilled artisan would have included each of the claimed configurations in
the diapers of the Huggies Ad, citing the benefits of the particular diaper features
disclosed in prior art (id.). Appellant has not disputed the Examiner’s reasons and
has indicated the inventive feature of the claimed invention is not the particular
absorbent article configurations (App. Br. 16). Rather, Appellant contends that the
inventive aspect is “an array of absorbent article packages comprising indicia such
that the caregiver can choose the right absorbent article for her baby amongst a
myriad size ranges and absorbent article configurations” (id.). We are not
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persuaded by Appellant’s arguments against the Examiner’s reasoned conclusion
of obviousness, which is based on evidence in the record.
In particular, we agree with the Examiner that one of one of ordinary skill in
the art would have included a diaper with a pull-on-style chassis, as recited in
claims 19, 20, 25, 47, and 48 in an absorbent article that is packaged as taught by
the Huggies Ad based on the teachings of Underhill (see Ans. 28-30).
We also agree with the Examiner that one of ordinary skill in the art would
have included an umbilical cord notch, as recited in claims 2, 3, 10, 30, 31, and 38
in an absorbent article that is packaged as taught by the Huggies Ad based on the
teachings of Mehta (see Ans. 17-19). However, we cannot agree that either the
Huggies Ad or Mehta expressly teaches indicia including the “umbilical cord
notch,” which we have determined relevant only to claim 30. Nonetheless, we
affirm the rejection of claim 30 based on our above discussion that such recited
indicia constitute non-functional descriptive material such that the difference
between the claimed indicia and the prior art indicia is not a patentable distinction.
Accordingly, we affirm the rejections of all the dependent claims under 35
U.S.C. § 103(a) as unpatentable over Miller in view of the Huggies Ad and the
additional prior art of record.
VIII. CONCLUSION
On the record before us, we affirm the following rejections maintained by
the Examiner:
1. Claims 1, 3-8, 10-15, 18-24, 26, 28, 29, 31-36, 38-42, 45, 46 and 48-56
under 35 U.S.C. § 103 (a) as unpatentable over Miller in view of the Huggies Ad;
2. Claims 2, 3, 10, 30, 31, 38 under 35 U.S.C. § 103 (a) as unpatentable over
Miller, the Huggies Ad, and Mehta;
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3. Claims 4, 5, 32, 33 under 35 U.S.C. § 103 (a) as unpatentable over Miller,
the Huggies Ad, and Johns;
4. Claims 6, 15, 34 under 35 U.S.C. § 103 (a) as unpatentable over Miller, the
Huggies Ad, and Clear;
5. Claims 7, 14, 17, 35, 42, 45, 53 under 35 U.S.C. § 103 (a) as unpatentable
over Miller, the Huggies Ad, and Cronkrite;
6. Claims 8 and 36 under 35 U.S.C. § 103 (a) as unpatentable over Miller, the
Huggies Ad, and Gilmer;
7. Claims 9, 16, 37, 44 under 35 U.S.C. § 103 (a) as unpatentable over Miller,
the Huggies Ad, and Lu;
8. Claims 11-13, 39-41 under 35 U.S.C. § 103 (a) as unpatentable over Miller,
the Huggies Ad, Mehta, and Johns;
9. Claims 16 and 44 under 35 U.S.C. § 103 (a) as unpatentable over Miller, the
Huggies Ad, Gilmer, and Lu;
10. Claims 19, 20, 47, 48 under 35 U.S.C. § 103 (a) as unpatentable over Miller,
the Huggies Ad, and Underhill;
11. Claim 25 under 35 U.S.C. § 103 (a) as unpatentable over Miller, the Huggies
Ad, Cronkrite, and Underhill; and
12. Claim 43 under 35 U.S.C. § 103 (a) as unpatentable over Miller, the Huggies
Ad, Lu, and Clear.
We reverse the Examiner’s rejection of claims 2, 19, 30, and 47, under 35
U.S.C. § 103 (a) as unpatentable over Miller in view of the Huggies Ad.
IX. 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).
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AFFIRMED

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