Ex Parte Bogdanova et al

Patent Trial and Appeal Board

Mar 31, 2017

12186890 (P.T.A.B. Mar. 31, 2017)

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.
12/186,890 08/06/2008 Jenny BOGDANOVA 49121-0007 (425842) 1992
105855 7590 04/04/2017
Drinker Biddle & Reath LLP
1500 K Street NW, Suite 1100
Washington, DC 20005
EXAMINER
PHILIPS, BRADLEY H
ART UNIT PAPER NUMBER
3778
NOTIFICATION DATE DELIVERY MODE
04/04/2017 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):
DB RIPDocket @ dbr. com
penelope. mongelluzzo @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNY BOGDANOVA,
MARIA GUSTIN BERGSTROM, and EMILIA KOVACIC
Appeal 2014-003883
Application 12/186,890
Technology Center 3700
Before ANNETTE R. REIMERS, JILL D. HILL, and
LISA M. GUIJT, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jenny Bogdanova et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject under 35 U.S.C. § 103(a) claims 1, 2,
6, 10—16, 20, 24—28, 42, and 44 as unpatentable over Ronnberg (US
6,500,163 B2, iss. Dec. 31, 2002), Ishikawa (JP 2002-291786 A, pub. Oct. 8,
2002)1, Weber (US 6,352,528 Bl, iss. Mar. 5, 2002), and Niedermeyer (US
6,540,730 Bl, iss. Apr. 1, 2003). Appellants present additional evidence in
1 We derive our understanding of this reference from an English translation,
which is available in the electronic file wrapper of the underlying application.
All references to the text of Ishikawa are to portions of the translation.
Appeal 2014-003883
Application 12/186,890
the Declaration of Beata Ivarsson (hereinafter the “Ivarsson Declaration”)
filed under 37 C.F.R. § 1.132 on Feb. 17, 2012. Claims 3—5, 7—9, 17—19,
21—23, 29-41, 43, and 45 have been withdrawn from consideration. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to providing instructions to a user
on how to apply [an absorbent garment].” Spec. 11, Figs. 2A—2C. Claims 1
and 15 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A method of producing an absorbent article, comprising:
providing a garment including an absorbent section, the
absorbent section having a first and second end,
attaching a separate waist belt to the first end of the
absorbent section, the waist belt having first and second belt
portions extending on each side of the first end of the absorbent
section for securing to each other around a wearer of the garment,
providing the second end of the absorbent section with a
fastening device for securing the second end of the absorbent
section to the waist belt; and
affixing instructions of application of the garment onto the
garment, wherein the instructions contain more than one step in
a specified order.
ANALYSIS
Appellants do not offer arguments in favor of independent claim 15 or
dependent claims 2, 6, 10-14, 16, 20, 24—28, 42, and 44 separate from those
presented for claim 1. See Appeal Br. 4—13. We select claim 1 as the
representative claim, and claims 2, 6, 10—16, 20, 24—28, 42, and 44 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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Claim Interpretation
Independent claim 1 recites “[a] method of producing an absorbent
article” including the step of “affixing instructions of application of the
garment onto the garment, wherein the instructions contain more than one
step in a specified order.” Appeal Br. A-1, Claims App. We construe the
relevant claim language at the outset to serve as a basis for our review of the
rejection.
Regarding the phrase “affixing instructions . . . onto the garment,”
Appellants’ Specification describes that
[t]he instructions may be placed on the product in various ways.
In particular, the instructions 20 may be directly printed on the
product 1, as shown for example with respect to FIG. 5, or they
may be included on a separate sheet of material 22, and then
affixed to the product 1, as shown for example with respect to
FIG. 3. The separate sheet 22 may be permanently affixed, or
removably affixed.
Spec. 130 (emphasis added), Figs. 3,5. In other words, under the broadest
reasonable interpretation consistent with the Specification, “affixing
instructions . . . onto the garment” as recited in claim 1 can be interpreted as
instructions that are (1) “directly affixed” on the garment, (2) “permanently
affixed” via “a separate sheet” to the garment, or (3) “removably affixed”
via “a separate sheet” to the garment.
Regarding the term “instructions,” Appellants’ Specification discloses
that the instructions may be (1) “pictorial instructions” or (2) “written
instructions alone or written instructions together with pictorial
instructions.” See Spec, 22, 23, 24, Figs. 2A—2C. In other words, under
the broadest reasonable interpretation consistent with the Specification, the
term “instructions” as recited in claim 1 can be interpreted to mean (1)
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pictorial instructions, (2) written instructions, or (3) written and pictorial
instructions.
Regarding the phrase “the instructions [of application of the garment
being] in a specified order,” we note that other than being recited in claim 1,
the term “specified order” is not disclosed in the Specification. Appellants
direct us to paragraph 22 of the Specification to support the limitation. See
Appeal Br. 1—2. Paragraph 22 of the Specification merely states, “pictorial
instructions are preferably provided that easily instruct a user or caregiver on
how to apply the product to a user.” (emphasis added). In other words,
paragraph 22 of the Specification merely describes preferable instructions on
how to apply the product to a user but fails to describe that the “pictorial
representations” of Figures 2 A and 2B are representative of the product
being applied “in a specified order.” Paragraph 23 of the Specification
states, “[optionally, the pictorial representations shown in 2A-2C may also
include a reference number or character to indicate the sequence in which
the belt is to be fastened.” (emphasis added). However, the pictorial
representations shown in Figures 2A—2C of the Specification are merely an
“example” sequence of how the belt is to be fastened, not an indication of
the sequence of “application of the garment” “in a specified order.” Spec.
123. Moreover, we note that the Specification describes that “the
instructions may change depending on the particular structure and
application of the garment.” Spec. 124 (emphasis added).
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Application 12/186,890
Obviousness over Ronnberg, Ishikawa, Weber, and Niedermeyer
The Examiner finds that Ronnberg discloses the “method of
producing an absorbent article” substantially as claimed except Ronnberg
“does not explicitly disclose affixing instructions of application of the
garment onto the garment.” Non-Final Act. 2—3, Ans. 2—3. The Examiner
finds that Ishikawa discloses “a method of providing a diaper” and “affixing
instructions of application of the garment onto the garment.” Non-Final Act.
3, Ans. 3 (both citing Ishikawa Tflf 6, 7, 13, 15, 18, 24, 27, Figs. 1, 4, 5, 6).
The Examiner concludes that it would have been obvious to modify the
method of Ronnberg by “affix[ing] the orientation instructions of
Ishikawa to the diaper of Ronnberg” “for the benefit of proper orientation.”
Non-Final Act. 3, Ans. 3 (both citing Ishikawa 6, 7, 27).
The Examiner finds that the combined teachings of Ronnberg and
Ishikawa “do[] not disclose that the instructions contain more than one step.”
Non-Final Act. 3, Ans. 3. The Examiner finds that Weber “discloses a
diaper garment with refastenable seams having instructions of application of
the garment onto the garment.” Non-Final Act. 3—4, Ans. 3 (both citing
Weber, Figs. 9, 10). The Examiner concludes that it would have been
obvious to modify Ronnberg and Ishikawa with the “attachment instructions
of Weber” “to improve the speed and quality of fastening a diaper.” Non-
Final Act. 4, Ans. 3 (both citing Weber 3:10-30)2; see also id. at 10.
The Examiner further finds that the combined teachings of Ronnberg,
Ishikawa, and Weber “do[] not explicitly disclose that the instructions
2 The Examiner cites Weber 3:25—20. We consider this a typographical error.
See Ans. 10 (“The attachment instructions [of Weber] thus improve fastening
speed and quality.”) (citing Weber 3:10-30).
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contain more than one step in a specified order.” Non-Final Act. 4, Ans. 4.
The Examiner finds that Niedermeyer discloses “a method of applying a
diaper following [steps in a specified] order.” Non-Final Act. 4, Ans. 4
(both citing Niedermeyer 2:1—15). The Examiner provides two
interpretations for combining the teachings of Niedermeyer with Ronnberg,
Ishikawa, and Weber. Specifically, the Examiner states that
[i]n a first interpretation, Neidermeyer evidences that the
directions of [Ronnberg] in view of Ishikawa in view of Weber,
while absent numbering, follow a specified order. In a second
interpretation, taken in combination, [Ronnberg] in view of
Ishikawa in view of Weber in view Neidermeyer discloses
instructions that contain more than one step in a specified order.
Non-Final Act. 4, Ans. 4. The Examiner concludes that it would have been
obvious “to number the steps of [Ronnberg] in view of Ishikawa in view of
Weber according to the steps of Neidermeyer.” Non-Final Act. 4, Ans. 4.
Appellants contend that the combined teachings of Ronnberg,
Ishikawa, Weber, and Neidermeyer fail to “suggest affixing instructions
containing multiple steps in a specified order.” Appeal Br. 4—5. In
particular, Appellants contend that
Both Ishikawa and Weber disclose markings on garments
to show a particular direction or location for attaching different
elements. Such marks are not instructions of application of the
garment, and certainly not instructions containing more than one
step in a specified order. Marking the front or back provides
someone who already knows how to apply the garment,
indications to assist in performing the already known method of
application. Similarly, marking where different elements should
be combined provides someone who already knows how to apply
the garment with indications to assist in performing the already
known method of application. Neither the front/back indications
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nor the locations for combining elements provide instructions
that include a specified order of multiple steps.3 4 5
Appeal Br. 5; see also id. at 6.
Appellants’ contentions are not persuasive because nonobviousness
cannot be established by attacking the applied references individually when
the rejection is predicated upon a combination of prior art disclosures. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). At the outset,
Appellants do not direct us to any discussion in either Ishikawa or Weber
disclosing that the “markings on [the] garments” are for “someone who
already knows how to apply the garment” as opposed to “first time users . . .
applying the garment.” Appeal Br. 5—64,5; see also Reply Br. 3; In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”). Further, the Examiner relies on
3 We note that claim 1 recites that the instructions contain “more than one
step” not “multiple steps.” Appeal Br. A-l, Claims App.
4 Appellants contend that “the most important part of application of the belted
garment is that the belt is attached first.” Appeal Br. 6 (citing Spec. 1 5).
However, claim 1 merely recites “instructions of application of the garment.”
Appeal Br. A-l, Claims App. Claim 1 recites nothing regarding “the belt
[being] attached first.” See id. We note that the same holds true for
independent claim 15. See id. at A-3 (“instructions provided on the garment
for describing how the garment should be applied.”). See also In re Self, 671
F.2d 1344,1348 (CCPA 1982) (Limitations not appearing in the claims cannot
be relied upon for patentability).
5 Appellants appear to present a similar argument for Niedermeyer in the
Reply Brief. See Reply Br. 3 (“one having [prior] knowledge of diaper
attachment.”). Similar to that discussed above for Ishikawa and Weber,
Appellants do not direct us to any discussion in Niedermeyer disclosing that
application of the diaper of Niedermeyer is for someone “having [prior]
knowledge of diaper attachment” as opposed to “first time users . . . applying
the garment.” See id.', see also Appeal Br. 5—6; In re Pearson, 494 F.2d at
1405.
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Application 12/186,890
Neidermeyer for disclosing “instructions that contain more than one step in a
specified order.” Non-Final Act. 4; see also Ans. 4.
In this case, Ishikawa discloses that (1) by “printing the order notation
[direction instruction marks] to the armor sheet itself,” it is possible to
distinguish “the front and back [of the absorbent article] at a glance” and (2)
“direction instruction marks such as an arrow or a triangle” serve as an easy
intuitive way to understand the direction indication of the absorbent article.
Ishikawa ^fl[ 7, 15; see also Non-Final Act. 3; Ans. 3. Additionally, Weber
discloses that (1) “[t]o facilitate fastening and refastening of the fastening
system, the fastening components of the absorbent article can comprise text
messages or pictorial images that indicate where to attach the fasteners [i.e.,
text messages or pictorial images that denotes proper attachment zones]”
(Weber 4:16—27 (emphasis added)); and (2) “[a]s shown in FIGS. 1 and 2,
the training pant 20 and in particular the outer cover 40 desirably comprises
one or more appearance-related components. Examples of appearance-
related components include, but are not limited to, graphics6. . . and
registering written instructions at a desired location in the product” (Id. at
12:40-54 (emphasis added)). See Non-Final Act. 4; see also Ans. 4, 10—11.
Under the broadest reasonable interpretation consistent with the
Specification, we agree with the Examiner that Ishikawa and Weber disclose
the step of “affixing instructions of application of [a] garment onto the
garment.” See Non-Final Act. 3-A\ see also Ans. 3—4, 10-11; Spec. ^fl[ 22—
6 Weber defines “graphics” to mean “any design, pattern, or the like that is
visible on an absorbent article, and specifically includes text messages and
pictorial images.” Weber 7:43^45.
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24, 30. Additionally, Appellants do not apprise us of error in the Examiner’s
reasoning for combining the teachings of Ronnberg, Ishikawa, and Weber.
Appellants contend that “the method [of Niedermeyer] is not in the
form of instructions, and Niedermeyer fails to disclose any desire to have the
method steps in the form of instructions to accompany the diaper.” Appeal
Br. 4; see also id. at 5—6.
Again, Appellants appear to be attacking the references individually
rather than the combined teachings of Ronnberg, Ishikawa, Weber, and
Niedermeyer, as proposed by the Examiner. In this case, as discussed
above, the Examiner relies on Ishikawa and Weber for disclosing the step of
“affixing instructions of application of [a] garment onto the garment.” See
Non-Final Act. 3^4; see also Ans. 3^4. The Examiner relies on
Niedermeyer for disclosing “instructions that contain more than one step in a
specified order.” See Non-Final Act. 4; see also Ans. 4. Further, under the
broadest reasonable interpretation consistent with the Specification, we
agree with the Examiner that Niedermeyer discloses “instructions” of more
than one step in a “specified order” for applying a diaper. See Non-Final
Act. 4; see also Ans. 4; Niedermeyer 2:4—11; Reply Br. 3. Moreover, as
discussed above, other than being recited in claim 1, the term “specified
order” is not disclosed in the Specification, and Appellants acknowledge that
Niedermeyer “teaches that it is known that multiple steps are required to put
a diaper on [apply a garment to] a person.” Appeal Br. 5; see also Spec.
|| 22—24. Additionally, Appellants do not apprise us of error in the
Examiner’s reasoning for combining the teachings of Ronnberg, Ishikawa,
Weber, and Niedermeyer.
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Appellants contend that “[wjhether there is a functional relationship
between the garment and the instructions is not germane to whether
patentable weight should be given to a method step [as in the method of
claim 1].” Appeal Br. 13; see also id. at 6—11; Reply Br. 4—5. We
acknowledge Appellants’ contention; however, as discussed above, the
Examiner “gives patentable weight” to the method step of “affixing
instructions of application of the garment onto the garment, wherein the
instructions contain more than one step in a specified order.” Non-Final
Act. 3^4; see also Ans. 3—4, 10-12.7 As further discussed above, the
Examiner establishes that the combined teachings of Ronnberg, Ishikawa,
Weber, and Niedermeyer render obvious the method of claim 1. Appellants
do not provide any persuasive evidence or argument apprising us of
Examiner error.
The court in King Pharmaceuticals stated that the rationale behind
“printed matter” cases, viz, preventing the indefinite patenting of known
products by the simple inclusion of novel, yet functionally unrelated
limitations, extends to the situation wherein an instructional limitation is
added to a method, as opposed to a product, known in the art. See King
Pharms, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
(holding that an otherwise anticipated method claim does not become
7 We note that claim 1 does not recite “affixing instructions directly on the
absorbent article.” See Appeal Br. 8; see also id. at A-l, Claims App.
Moreover, as discussed above, based on Appellants’ disclosure, the phrase
“affixing instructions . . . onto the garment,” as recited in claim 1, can be
interpreted as instructions that are (1) “directly affixed” on the garment, (2)
“permanently affixed” via “a separate sheet” to the garment, or (3)
“removably affixed” via “a separate sheet” to the garment. See Spec. 130.
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patentable because it includes a step of “informing” someone about the
existence of an inherent property of that method). The court added that “the
relevant inquiry here is whether the additional instruction limitation . . . has
a ‘new and unobvious functional relationship’ with the known method . . .
Id. (citations omitted). In this case, the garment instructions do not have a
new and unobvious functional relationship with the method steps of
producing the absorbent article. As such, the combined disclosures of
Ronnberg, Ishikawa, Weber, and Niedermeyer render unpatentable the
claimed method of producing the absorbent article as called for in claim 1,
and the specific content of the printed matter claimed to be affixed onto the
garment cannot be relied upon to patentably distinguish the claimed method
over the prior art.8
8 Regarding device claim 15, the Examiner “gives patentable weight” to the
limitation of “instructions provided on the garment for describing how the
garment should be applied, wherein the instructions contain more than one
step in a specified order.” See Non-Final Act. 5—7; see also Ans. 5—7, 10—12;
see also Appeal Br. A-3, Claims App. Similar to that discussed above for
claim 1, the Examiner establishes that the combined teachings of Ronnberg,
Ishikawa, Weber, and Niedermeyer render obvious the device of claim 15.
See Non-Final Act. 5—7; see also Ans. 5—7, 10-12. Appellants do not provide
any persuasive evidence or argument apprising us of Examiner error. See
Appeal Br. 5—6; see also Reply Br. 2—3. Additionally, the instructions are not
functionally related to the substrate on which they are printed. In other words,
the absorbable article would still be able to be used as a garment without the
printed matter and the instructions would still be able to achieve their
educational purpose without the absorbable article. As a result, the garment
instructions do not distinguish the claimed invention from Ronnberg, as
modified by Ishikawa, Weber, and Niedermeyer. In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (“Where the printed matter is not functionally
related to the substrate, the printed matter will not distinguish the invention
from the prior art in terms of patentability.”). In this case, all that the printed
matter does is provide information for use with a known device. See In re
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Appellants present additional evidence via the Ivarsson Declaration
regarding “long felt need.” See Appeal Br. 11—13. In this case, the
arguments presented in the Ivarsson Declaration appear to be in view of
Ronnberg, which is not commensurate with the Examiner’s proposed
rejection before us of the combined teachings of Ronnberg, Ishikawa,
Weber, and Niedermeyer. See, e.g., Ivarsson Declaration 4, 6. Therefore,
the arguments presented in the Ivarsson Declaration are moot.
Moreover, to establish long-felt need, Appellants must present
affidavits or other factual evidence showing “a failure of others to provide a
feasible solution to [a] long-standing problem.” See In re Piasecki, 745 F.2d
1468, 1475 (Fed. Cir. 1984). Appellants have not provided factual evidence
showing a failure of others to provide a feasible solution to the problem of
effectively instructing users on how to apply the absorbent article. The
Ivarsson Declaration merely states that “[o]ver the ensuing years, potential
solutions to this problem were attempted” and “SCA discovered that the
instruction was needed in immediate proximity to the procedure of applying
the absorbent article.” Ivarsson Declaration || 9, 10; see also Appeal Br.
12. Indeed, the combined teachings of Ronnberg, Ishikawa, Weber, and
Niedermeyer are evidence of a successful resolution to such a problem.
Further, Appellants have not established that “the potential or marketability
of the waist belted garment was clearly appreciated” due to “many failed
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (distinguishing the patentable
printed band of Gulack and holding that a printed set of instructions cannot be
relied on to patentably distinguish a known kit from the prior art or else
“anyone could continue patenting a product indefinitely provided that they
add a new instruction sheet to the product.”).
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attempts to solve the need.” See Appeal Br. 13; see also Ivarsson
Declaration, 9, 10; Non-Final Act. 13; Ans. 17.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 1 as unpatentable over Ronnberg, Ishikawa, Weber, and
Niedermeyer. We further sustain the rejection of claims 2, 6, 10—16, 20, 24—
28, 42, and 44, which fall with claim 1.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 2, 6, 10—
16, 20, 24—28, 42, and 44 as unpatentable over Ronnberg, Ishikawa, Weber,
and Niedermeyer.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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