Ex Parte Cole et al

Board of Patent Appeals and Interferences

Jun 9, 2009

10668297 (B.P.A.I. Jun. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROBERT T. COLE and PRELO M. HOOD
__________

Appeal 2009-0019521
Application 10/668,297
Technology Center 3700
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Decided:2June 9, 2009
__________

Before DONALD E. ADAMS, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

1 Tyco Healthcare Retail Services AG is the real party in interest (App. Br.
1).
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001952
Application 10/668,297

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a visual
identification device for absorbent products. The Examiner has rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification discloses “a visual identification device, such as one
that may be displayed on a package or display of absorbent articles, that
identifies one or more absorbent products that are part of a product line that
encompasses a range of sizes and absorbencies” (Spec. 1). Thus, “[a] user
may use the device to select an absorbent product that is predicted to meet
the user’s size and absorbency needs” (id.).
Claims 1, 2, 5, 6, 8-16, 18-22, 25, 27-31, 34, 35, and 37-45 stand
rejected and are on appeal (App. Br. 1). Claims 1, 14, 22, 30, 40, and 43
illustrate the appealed subject matter and read as follows:
1. A visual identification device for absorbent products, the
device comprising:
two or more size designations;
two or more absorbency designations;
two or more absorbent product designations;
an association between each of the two or more absorbent
product designations and a combination of one of the size
designations and one of the absorbency designations,
wherein the association identifies one or more absorbent
product designations that are predicted to satisfy a user’s
fit and absorbency requirements; and
wherein the association identifies at least two absorbent
product designations that correspond to one of the two or
more size designations.

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14. A graphical representation for absorbent products, the
graphical representation comprising:
a chart having a size axis and an absorbency axis, the size
axis corresponding to size designations, and the
absorbency axis corresponding to absorbency
designations;
two or more absorbent product designations located on
the chart; and
an association between each of the two or more absorbent
product designations and a combination of one of the size
designations and one of the absorbency designations;
wherein the association identifies one or more absorbent
product designations that are predicted to satisfy a user’s
fit and absorbency requirements; and wherein the
association identifies at least two absorbent product
designations that correspond to one of the two or more
size designations.

22. A method for marking an absorbent article package, the
method comprising:
marking two or more absorbent product designations;
marking two or more absorbency designations, wherein
each absorbent product designation is associated with one
or more absorbency designations;
marking two or more size designations, wherein each
absorbent product designation is associated with one or
more size designations, and at least one size designation
is associated with two or more absorbent product
designations associated with different absorbency
designations.

30. A package for containing absorbent products comprising:
two or more size designations;
two or more absorbency designations;
two or more absorbent product designations;
an association between each of the two or more absorbent
product designations and a combination of one of the size
designations and one of the absorbency designations,
wherein the association identifies one or more absorbent
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product designations that are predicted to satisfy a user’s
fit and absorbency requirements; and
wherein the association identifies at least two absorbent
product designations that correspond to one of the two or
more size designations.

40. An absorbent product line comprising:
two or more absorbent products, whereby each of the two
or more absorbent products is characterized by a
combination of an absorbency designation and a size
designation, and
each of the two or more absorbent products are
characterized by a different combination of absorbency
designation and size designation, and
at least two of the two or more absorbent products are
characterized by the same absorbency designation and
different size designations.

43. An absorbent product line comprising:
a plurality of packages; and
a plurality of products having a similar construction, each
of the products having a size designation and an
absorbency designation;
wherein each of the packages contains products having
the same size designation and the same absorbency
designation; and
wherein each of the packages has the same size
designation and absorbency designation as the products it
contains; and
wherein at least two of the packages in the product line
have the same size designation and different absorbency
designations.

The Examiner cites the following documents as evidence of
unpatentability:
Glaug US 5,649,914 Jul. 22, 1997
Ronn US 6,648,864 B2 Nov. 18, 2003
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The following rejection is before us for review:
Claims 1, 2, 5, 6, 8-16, 18-22, 25, 27-31, 34, 35, and 37-45 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Ronn (Ans. 3-
5).
OBVIOUSNESS
ISSUE
The Examiner cites Ronn as disclosing a visual identification device
for absorbent articles, the device having “two or more size designations and
two or more product designations” (Ans. 4). The Examiner concedes that
Ronn “does not specifically disclose two or more absorbency designations”
(id.).
However, the Examiner contends, “because the display designates
different sizes and different stages of development, it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to inform the consumer about different absorbencies” (id.). The Examiner
reasons that including absorbency designations on Ronn’s device would
have been obvious “since the general concept is to provide a fit appropriate
for the child’s state of development and it is considered obvious that
different sizes and particularly different stages of development, such as a
training pant, has different levels of absorbency” (id.). As an example, the
Examiner cites Glaug as disclosing “a toilet training aid with a low
absorbency” (id.).
With respect to claim 1:
It is Appellant’s position that Ronn et al. fail to teach or
suggest “absorbency designations” or “at least two absorbent
product designations that correspond to one of the two or more
size designations,” in which there is “an association between
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each of the two or more absorbent product designations and a
combination of one of the size designations and one of the
absorbency designations.”

(App. Br. 9.)
Specifically, Appellants argue, the Examiner’s rejection is based on
the erroneous assumption that a child’s size and state of development are
necessarily linked to the absorbency of the worn articles (id.). The
Examiner’s assumption is incorrect, Appellants urge, because, “[f]or
example, some users may require a small size absorbent article but at the
same time have higher absorbency needs” (id. at 10). Also, Appellants urge,
“[i]n the context of the ‘stages of development’ designation described in
Ronn et al., diapers of different sizes might be expected to inherently have
different levels of absorbency, but diapers configured for different stages of
development would not necessarily be expected to require different levels of
absorbency” (id.).
Appellants further contend that, “[w]ith perhaps the sole exception of
training pants (which deliberately have less than the ‘required’ absorbency),
. . . the same size child is typically expected to require the same level of
absorbency without regard to stage of development (absent unusual
circumstances, such as perhaps a medical condition)” (id.). Thus,
Appellants argue, adding absorbency designations to Ronn’s system “would
seem to add unnecessary complexity, and may even make that system
confusing, because there is no necessary correlation between absorbency and
the other designations” (id.).
Ultimately, Appellants argue, “[n]either size nor different stages of
development have any necessary correlation to absorbency in the context of
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that system, such that the addition of absorbency designations would serve
no useful purpose” (id.). Appellants conclude, therefore, that “apart from
Appellant's own disclosure, there is no teaching or suggestion to modify
Ronn et al. in the manner suggested by the Examiner to include absorbency
designations and to correlate such absorbency designations with either the
size or stage of development designations” (id.).
Appellants apply the same reasoning in arguing that independent
claims 14, 22, 30, 40, 42, 43, and 45 would have been unobvious to an
ordinary artisan (see App. Br. 11-16).
In view of the positions advanced by Appellants and the Examiner,
the issue with respect to this rejection is whether the Examiner erred in
concluding that a person of ordinary skill in the art, advised by Ronn of the
desirability of applying designations relating to the size and stage of
development of the child wearers of absorbent articles in a product line,
would have considered it obvious to also apply, to the articles or their
packaging or the accompanying merchandising materials, designations
relating to the articles’ absorbency.
FINDINGS OF FACT (“FF”)
1. Ronn discloses “an array of disposable absorbent article
configurations comprising a sequence of designs corresponding to a wearer’s
stages of development and a merchandising system for identifying the
configuration of absorbent article which matches a wearer’s stage of
development” (Ronn, col. 3, ll. 31-36).
Thus, “the array may include a first absorbent article configuration
designed for newborns and immobile infants, a second absorbent article
configuration designed for a toddler in the crawling stage, and/or other
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absorbent article configurations designed for subsequent stages of
development” (id. at col. 3, ll. 36-41).
2. Ronn discloses that the merchandising system includes indicia in the
form of “pictorial representations of the absorbent article configurations
fitted to wearers at respective stages of development enabling a consumer to
identify the appropriate configuration that matches a particular wearer’s
stage of development. The system is particularly useful for merchandising
multiple absorbent article configurations that are available in overlapping
size ranges” (Ronn, col. 3, ll. 42-49).
3. Figure 1 of Ronn is reproduced below:

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Figure 1 shows “indicia exhibiting pictorial representations of
absorbent article configurations fitted to wearer’s [sic] at corresponding
stages of development” (Ronn, col. 2, ll. 58-60).
4. Thus, “[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” (Ronn, col. 5, ll. 36-
39).
Ronn discloses that the “indicia may be provided on a display panel
disposed above the store shelves on which the absorbent article
configurations are displayed for sale. Alternatively, the indicia may be
disposed on packaging for the different absorbent article configurations or in
advertisements disseminated to the public” (id. at col. 5, ll. 39-44).
5. Ron discloses that its merchandising system may also use different
product names that associate each product “with the particular stage of
development for which the product is designed. For instance, the first
absorbent article configuration could be named Swaddlers 20, while the
second, third, fourth, and fifth product configurations could be named
Cruisers 22, Change & Go 24, Easy Ups 26 and Train-Me Pants 28,
respectively” (Ronn, col. 5, ll. 47-53).
6. Figure 2a of Ronn is reproduced below:

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Figure 2a “illustrates a store display of absorbent article
configurations having chassis designed to match a wearer’s stage of
development comprising a vertical arrangement where each shelf carries a
different stage of development” (Ronn, col. 2, ll. 61-64).
7. As seen in Figure 2a of Ronn, in addition to displaying the pictorial
representations of the wearers’ stages of development, “sizes for each of the
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absorbent article configurations, [designated by the numbers 1 through 6,]
are arranged horizontally in the second sequential order with increasing sizes
progressing from left to right” (Ronn, col. 6, ll. 6-9).
As also seen in Figure 2a, the size 6 article is available in both the
toilet training pant, and the fourth stage easy pull-up chassis.
8. Figure 4a of Ronn is reproduced below:

Figure 4a shows “a rotary cylinder type selection device used to
facilitate a consumer's selection of the appropriate absorbent article
configuration matching a particular wearer’s stage of development” (Ronn,
col. 3, ll. 9-12).
As seen in Figure 4a, the device shows not only the stage of
development of the wearer, but also the wearer’s weight and corresponding
diaper size.
9. Glaug discloses that attempts at toilet training children have included
training pants “with a bodyside liner material that retains moisture. These so
called ‘wet liners’ provide the child with a damp sensation which is thought
to be noticeable” (Glaug, col. 1, ll. 33-36).
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10. Glaug discloses a toilet training aid “in the form of a pad that creates a
noticeable, distinct feeling during urination. In particular embodiments, the
pad may provide the wearer with a temperature change sensation, a wet
sensation, a dimensional change sensation, or some combination thereof to
signal that urination is occurring” (Glaug, abstract (emphasis added)).
PRINCIPLES OF LAW
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court reaffirmed that it is obvious to choose from among known solutions to
a problem:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

Id. at 421.
The Court also recognized:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does . . . because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

Id. at 418-419 (emphasis added); see also id. at 418 (requiring a
determination of “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue”) (emphasis
added).
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While holding that some rationale must be supplied for a conclusion
of obviousness, the Supreme Court nonetheless rejected a “rigid approach”
to the obviousness question, and instead emphasized that “[t]hroughout this
Court’s engagement with the question of obviousness, our cases have set
forth an expansive and flexible approach . . . .” KSR, 550 U.S. at 415. The
Court also rejected the use of “rigid and mandatory formulas” as being
“incompatible with our precedents.” Id. at 419; see also id. at 421 (“Rigid
preventative rules that deny factfinders recourse to common sense, however,
are neither necessary under our case law nor consistent with it.”).
The Court thus reasoned that the analysis under 35 U.S.C. § 103 “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. at 418; see
also id. at 421 (“A person of ordinary skill is . . . a person of ordinary
creativity, not an automaton.”).
ANALYSIS
Appellants’ arguments do not persuade us that the Examiner erred in
concluding that a person of ordinary skill in the art, advised by Ronn of the
desirability of applying designations relating to the size and stage of
development of the intended wearers of absorbent articles in a product line,
would have considered it obvious to also apply, to the articles or their
packaging or the accompanying merchandising materials, designations
relating to the articles’ absorbency.
It may be true that Ronn does not explicitly disclose that the articles in
its product line have different absorbencies. However, as disclosed by
Glaug, one method of toilet training children is to provide training pants that
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give the wearer a wet sensation upon urination (FF 9, 10). Thus, as the
Examiner argues (Ans. 5), and Appellants concede (App. Br. 10), a person
of ordinary skill in the art would have reasonably inferred that toilet training
pants, including the training pants in Ronn’s product line, would be less
absorbent than other absorbent articles in a diaper product line.
Ronn also discloses that the training pants can be the same size as the
pull-ups provided to children in the developmental stage preceding toilet
training (FF 6, 7). Because an ordinary artisan would have understood that
training pants require less absorbency than pull-ups, it would have been
reasonable to infer that, despite their identical size, Ronn’s same-sized
training pants and pull-ups would have required different absorbencies.
Because a person of ordinary skill in the art would have reasonably
inferred that articles in Ronn’s product line would have different
absorbencies, despite identical sizing, we agree with the Examiner that an
ordinary artisan would have considered it desirable to put absorbency-related
indicia on Ronn’s products or packaging or merchandising material, so as to
inform the consumer of the articles’ absorbency. We therefore also agree
with the Examiner that the device of claim 1, the graphical representation of
claim 14, method of claim 22, packaging of claim 30, and product lines of
claims 40 and 43, would have been obvious to a person of ordinary skill in
the art.
It may be true, as Appellants argue, that the absorbency of an article is
not necessarily related to its size, or the stage of development or level of
activity of the intended wearer. However, even assuming for argument’s
sake that smaller articles of the type disclosed by Ronn might be made more
absorbent by using materials with higher absorbency, and that larger articles
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might be made less absorbent, we do not agree that this demonstrates the
unobviousness of the claimed subject matter.
Rather, in our view, a person of ordinary skill in the art, being a
person of ordinary creativity and common sense, KSR, 550 U.S. at 418, 421,
aware of the lack of relationship between diaper absorbency and diaper size,
would have reasoned that it would be desirable to place indicia relating to
absorbency on the diapers or their related merchandising materials so as to
inform the consumer whether the product possessed the properties the
consumer desired.
Moreover, we do not agree that an ordinary artisan would have
inferred that simply adding absorbency-related indicia to Ronn’s product
line would make the product line so complex as to render it undesirable to
consumers. We are therefore not persuaded that Ronn teaches away from
the claimed subject matter.
In sum, we agree with the Examiner that a person of ordinary skill in
the art would have considered it desirable to put absorbency-related indicia
on Ronn’s products or packaging or merchandising material, so as to inform
the consumer of the articles’ absorbency. Appellants’ arguments therefore
do not persuade us that the Examiner’s conclusion of obviousness with
respect to claims 1, 14, 22, 30, 40, and 43 is erroneous, and we affirm the
Examiner’s rejection of those claims.
Because the remaining claims subject to this ground of rejection were
not argued separately, they fall with claims 1, 14, 22, 30, 40, and 43. See 37
C.F.R. § 41.37(c)(1)(vii).
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SUMMARY
We affirm the Examiner’s rejection of claims 1, 2, 5, 6, 8-16, 18-22,
25, 27-31, 34, 35, and 37-45 under 35 U.S.C. § 103(a) as being unpatentable
over Ronn.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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