Ex Parte Johnson et al

Board of Patent Appeals and Interferences

May 8, 2012

11506356 (B.P.A.I. May. 8, 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.
11/506,356 08/17/2006 Eric D. Johnson 64048953US01 8163
23556 7590 05/09/2012
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
05/09/2012 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 ERIC D. JOHNSON and JASON C. COHEN
__________

Appeal 2011-001457
Application 11/506,356
Technology Center 3700
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 1-43. We have jurisdiction under 35 U.S.C.
§ 6(b).
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STATEMENT OF THE CASE
According to the Specification, an “uncomfortable sensation of heat is
elicited within an individual when the individual touches interlaced warm
and cool bars with their skin” (Spec. 1). The Specification teaches that a
“thermal grill is a device that includes interlaced or alternating warm and
cool portions that are able to cause discomfort and even pain to an individual
without causing physiological damage when the individual touched the
interlaced warm and cool portions” (id. at 1; see also id. at 6). The
Specification teaches further that the invention “relates to a training system
for delivering a unique sensation without causing physiological damage,”
wherein the system includes a thermal grill (id. at 3).

Claim 1 is representative of the claims on appeal, and reads as
follows:
1. An aid for use with a wearer‟s garment, the aid comprising:
a structural layer having a skin-facing side, wherein the
structural layer is adapted to be positioned within the garment such
that the skin-facing side is in at least partial skin contact with the
wearer; and
a thermal grill disposed on the structural layer.

The following grounds of rejection are before us for review:

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I. Claims 1-22, 23, 24, 29, and 34-431 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Roe
2
(Ans. 4).
II. Claims 25-28 and 30-33 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by Roe (Ans. 5).
We reverse.

ANALYSIS
As an initial matter, we agree with Appellants (App. Br. 4-5) that the
term “thermal grill” should be interpreted in light of how it is defined in the
Specification. That is, we interpret “thermal grill” as requiring a device that
includes interlaced or alternating warm and cool portions. In addition, all of
the independent claims on appeal, that is, claims 1, 30, 34, 36, 37, and 42,
require a thermal grill.
As to the anticipation rejection, the Examiner finds that element 56 of
Roe reads on the thermal grill required by the independent claims on appeal
(Ans. 4). As found by the Examiner, Roe teaches “a temperature change
substance that results in a decrease/increase in the temperature of urine,
which teaches the claimed warm and cool functions” (id. at 6 (citing Roe,
col. 6, ll. 28-30)). The Examiner further finds that “Roe teaches absorption
or release of heat to change the temperature of the surroundings to a point

1
The Examiner‟s statement of the rejection only included claims 1-22 (Ans.
4). Appellants note that it appears from the text of the rejection that claims
23, 24, 29, and 34-43 should be included based on the text of the rejection
(App. Br. 3), thus we view their exclusion in the statement of the rejection as
a typographical error.
2
Roe et al., US 6,642,427 B2, issued Nov. 4, 2003.
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Application 11/506,356

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noticeable to the wearer” (id. (citing Roe, col. 6, ll. 52-65)). The Examiner
further finds that Roe “teaches a variety of configurations for the
temperature change element and a plurality of temperature change elements”
(id. at 6 (citing Roe, col. 9, ll. 35-40)).
As to the obviousness rejection, the Examiner finds that “Roe teaches
endothermic and exothermic materials” but notes that Roe “does not teach
an alternating pattern of endothermic and exothermic materials” (id. at 5).
The Examiner concludes that “[i]t would have been a matter of design
choice to provide the article of Roe with an alternating pattern of
endothermic and exothermic material” as Roe teaches the use of both
materials and it would serve the same purpose as a training tool (id.).
Roe is drawn to “training pants [for] facilitating the toilet training
process” (Roe, col. 1, ll. 8-10). Roe places a “temperature change substance,
such as an endothermic salt, . . . between the permeable layer and the
impermeable layer” (id. at col. 2, ll. 32-34). Roe disposes the temperature
change substance, element 56 of Roe, on the permeable layer of the training
pant (id. at col. 5, ll. 60-64). Roe teaches that when insulted by urine, the
“urine dissolves the temperature change substance resulting in a significant
decrease/increase in the temperature of the urine” (id. at col. 6, ll. 28-30).
Roe teaches further that the “temperature change may involve either
absorption or release of heat to change the temperature of the surroundings
to a point noticeable to the wearer” (id. at col. 6, ll. 52-54). Roe teaches the
“temperature change substance is responsive to contact with an aqueous
solution such as urine to either absorb or release heat” (id. at col. 6, l. 66-col.
7, l. 1). Roe also teaches that the temperature change element “may be
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arranged . . . in a variety of configurations,” and “may include a single
temperature change element or a plurality of temperature change elements”
(id. at col. 9, ll. 35-39). According to Roe:
While a wide variety of substances may result in a
temperature change when contacted with an aqueous solution,
the selection of a particular temperature change substance and
the determination of the amount to be used should be based in
part on the desired temperature change. While the temperature
change substance disposed in the temperature change element
may be an endothermic or exothermic, an endothermic
substance is preferred in certain embodiments as it more closely
simulates the cooling signal delivered to the wearer by
traditional cotton training pants. In addition, exothermic
substances do not provide as good a signal since the wearer is
generally used to the warm environment provided by the diaper.
Further, a heated environment promotes bacterial growth and
the corresponding diaper rash attributed to bacteria and fungi.

(Id. at col. 7, ll. 11-25 (emphasis added).)
Appellants argue that the Examiner relies on “Roe‟s element 56, a
temperature change substance, as a thermal grill, without explaining how a
temperature change substance is a thermal grill of the present application”
(App. Br. 4). Appellants assert that element 56 of Roe “is merely a single
temperature change substance that involves „either absorption or release of
heat to change the temperature of the surroundings to a point noticeable to
the wearer‟” (id. at 5 (quoting Roe, col. 6, ll. 52-54)).
Appellants argue as to the obviousness rejection that “[t]here is
nothing in Roe that discloses, teaches, or suggests using both warm and cool
portions in the same article, much less a plurality of each disposed in an
alternating pattern” (id. at 7).
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We agree with Appellants. It is axiomatic that to anticipate, every
element and limitation of the claimed invention must be found in a single
prior art reference, arranged as in the claim. Karsten Mfg. Corp. v.
Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Roe teaches the
use of exothermic or endothermic materials, but does not teach a device that
includes interlaced or alternating warm and cool portions, as required by the
use of the term “thermal grill” in the claim. While we acknowledge that Roe
teaches that multiple temperature change elements may be arranged in a
variety of configurations, Roe also teaches that the temperature change
element may be endothermic or exothermic (and consistently states that it
absorbs or releases heat), and the Examiner has pointed to no teaching in
Roe that teaches or suggests using a interlaced or an alternating warm and
cool portions. Thus, we are compelled to reverse the anticipation rejection.
Similarly, as to the obviousness rejection, the Examiner only sets forth
a conclusory statement that it would have been a matter of design choice to
provide an alternating pattern of endothermic and exothermic materials to
provide a thermal grill as required by the claims, without providing a reason
as why the ordinary artisan would have done so in view of Roe‟s teaching of
using an exothermic or endothermic material. “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417-18 (2007). We are thus also compelled to reverse the
obviousness rejection.
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SUMMARY
The rejections on appeal are reversed.

REVERSED

cdc