Ex Parte Horn et al

Board of Patent Appeals and Interferences

Jun 21, 2012

10967730 (B.P.A.I. Jun. 21, 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.
10/967,730 10/18/2004 Thomas Alexander Horn 9796Q 9262
27752 7590 06/22/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
COLE, ELIZABETH M
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
06/22/2012 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 THOMAS ALEXANDER HORN, MARK JAMES KLINE,
and GEORG BALDAUF
____________
Appeal 2011-001453
Application 10/967,730
Technology Center 1700
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appeal 2011-001453
Application 10/967,730

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-7 and 10-20 under 35 U.S.C. § 103(a) as unpatentable
over Goulait (US 5,407,439, issued Apr. 18, 1995), as well as the rejection
of these same claims as unpatentable over Dutta (US 5,660,918, issued Aug.
26, 1997) in view of Veiga (US 2002/0187696 A1, pub. Dec. 12, 2002).1
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ claim 1 is unpatentable. We sustain the above rejections based
on the findings of fact, conclusions of law, and rebuttals to arguments2
expressed by the Examiner in the Answer. We add the following for
emphasis.
Appellants’ contention that the Examiner is improperly relying upon
inherency (Br. 7,8) is not persuasive since the Examiner explicitly states that
“the examiner is not stating that the pattern is inherent, but rather that since
the general configuration of the lines and employing wavy lines is taught [in
Goulait], the person of ordinary skill would have been able [and led] to
select the particular design” as claimed by following the teachings of Goulait
while using no more than routine experimentation (Ans. 7; no Reply Brief
has been filed; see also Goulait, Fig.4B and col. 20, ll. 4-10).

1 Appellants present the same arguments directed to the features of the
independent claims 1, and 14 (Br. 4-10). The features of the dependent
claims have not been separately argued (id.). To the extent that Appellants’
arguments relate to any limitations of the dependent claims, we adopt the
Examiner’s rationale expressed in the Answer.
2 No Reply Brief has been filed.
Appeal 2011-001453
Application 10/967,730

3
Likewise, the Examiner relies upon Viega’s disclosure of using
particular adhesive patterns, including the use of wavy lines or straight lines
(Ans. 5, 8; Viega para. [0028]), to modify Dutta’s exemplified grid-like
pattern (Dutta, Figs. 1, 2; e.g., Ans. 8).
As pointed out by the Examiner, Appellants have not directed us to
any criticality or particular functionality from the claimed adhesive pattern
(Ans. 7, 8; generally Br.).
Accordingly, a preponderance of the evidence support the conclusion
that one of ordinary skill in that art, using no more than ordinary creativity,
would have readily arrived at the “dog-bone shaped tessellating pattern
elements” recited in claim 1 based on the applied prior art as explained by
the Examiner. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
(“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). It is also well established that the obviousness analysis need
not seek out precise teachings directed to the specific subject matter of the
claim, for it is proper to take account of the inferences and creative steps that
a person of ordinary skill in the art would employ. KSR, 550 U.S. at 418.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

ssl