Ex Parte Klofta et al

Board of Patent Appeals and Interferences

Jan 26, 2012

11880312 (B.P.A.I. Jan. 26, 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.
11/880,312 07/20/2007 Thomas James Klofta 10505 5877
27752 7590 01/26/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
ANDERSON, CATHARINE L
ART UNIT PAPER NUMBER
3764
MAIL DATE DELIVERY MODE
01/26/2012 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 JAMES KLOFTA,
ROBIN LYNN MCKIERNAN, and EDWARD LAWRENCE SCHMIDT
__________

Appeal 2010-009077
Application 11/880,312
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
disposable absorbent article, a kit comprising the disposable absorbent
article, and a method of visually detecting health-related conditions of a
wearer of the disposable absorbent article. The Patent Examiner rejected the
claims as obvious and provisionally on the ground of non-statutory
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.
Appeal 2010-009077
Application 11/880,312

2
STATEMENT OF THE CASE
Claims 1 and 3-13 are on appeal. Claim 1 is representative and reads
as follows:
1. A disposable absorbent article suitable adapted to be worn about a
wearer's lower torso, for receiving and containing bodily exudates and
for visually detecting health-related conditions of the wearer, said
article comprising:

a front region, a back region and a crotch region disposed between
said front and back region, each region having two opposing
longitudinal edges;

a window on anyone of said regions; and

a removable sensor placed adjacent to and facing said window, the
sensor selected from the group consisting of a thermochromic
temperature sensor adapted to undergo a change of appearance from a
first appearance at a temperature lower than about 99.5°F to 102°F to
a second appearance at a temperature higher than about 99.5°F to
102°F, a urinalysis test strip, a feces analysis test strip, and
combinations thereof.

The Examiner rejected the claims as follows:
• claims 1 and 5-13 under 35 U.S.C. § 103(a) as unpatentable over
Bobadilla;1
• claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over
Bobadilla and Flam;2

1 Patent Application Publication No. US 2004/0087922 A 1 by Tory Leigh
Bobadilla, published May 6, 2004.
2 US Patent No. 5,181,905 issued to Eric Flam, Jan. 26, 1993.
Appeal 2010-009077
Application 11/880,312

3
• claims 1-13, provisionally, on the ground of nonstatutory
obviousness-type double patenting over claims 1-13 of co-pending
Application No. 11/880,414; and
• claims 1 and 5-13, provisionally, on the ground of nonstatutory
obviousness-type double patenting over claims 1 and 7-16 of co-pending
Application No. 10/880,413.

OBVIOUSNESS
The Issues
The same issues are dispositive for both of the obviousness rejections,
therefore we consider the rejections together.
The Examiner’s position is that “Bobadilla disclose[d] all aspects of
the claimed invention with the exception of the temperature at which the
thermochromic ink changes appearance.” (Ans. 3.) However, the Examiner
found that Bobadilla disclosed that the thermochromic ink is intended to
change color when exposed to urine. (Id. at 4.) According to the Examiner,
“[s]ince urine has a temperature when leaving the body in the range of 99.5-
102°F,” it would have been obvious to skilled artisan at the time of the
invention “to provide the thermochromic temperature sensor of Bobadilla
with a thermochromic ink that undergoes a change in appearance in the
range of 99.5-102°F, so the ink will change color when exposed to urine.”
(Fin. Rej. 3.)
Additionally, the Examiner found that Bobadilla disclosed using
leucodye as the thermochromic ink, which is also described in the present
Specification as a suitable thermochromic ink for use in the claimed
invention. (Ans. 4.) According to the Examiner, since Bobadilla disclosed
Appeal 2010-009077
Application 11/880,312

4
the same type of thermochromic ink as used in the claimed invention,
Bobadilla’s thermochromic ink would inherently exhibit a change in
appearance within the claimed temperature range because the physical
properties of the ink are inherent to its composition. (Id.) Alternatively, the
Examiner reasoned that “one skilled in the art would have reasonably
expected the same thermochromic ink [in the] Bobadilla reference to exhibit
the same temperature change by the virtue of being the same compound.”
(Id.)
The Examiner further noted in the response “that in a different
embodiment, Bobadilla disclose[d] using litmus paper to indicate a change
in pH when the litmus paper is contacted by urine.” (Id. at 6.) According to
the Examiner, Bobadilla’s use of litmus paper fulfills the Markush group
element of a urinalysis test strip, as recited in claim 1, because the litmus
paper indicates the pH of the urine. (Id.)
Appellants contend that the Examiner has not provided evidence that
“‘urine has a temperature when leaving the body in the range of 99.5-102°
F.’” (App. Br. 6.) Further, Appellants assert that if Bobadilla’s article is
modified to include a thermochromic ink adapted to undergo a change of
appearance in the recited temperature range, such modification would render
the article “unreliable, or even non-functional, for Bobadilla’s stated
purpose of providing an externally visible signal of urination.” (Id. at 8.) In
particular, Appellants assert that when the wearer does not have a fever, the
urine would either not cause a color change at all, or at best, only change
color fleetingly. (Id.)
Appellants also contend “that thermochromic inks based on leucodyes
come in a variety of formulations and may be selected so as to change
Appeal 2010-009077
Application 11/880,312

5
appearance at a variety of temperatures. See http://www.dyespigments.com
/leuco-dye.html.” (Reply Br. 2.) According to Appellants, Bobadilla used
leucodye, but did not describe selecting a “particular” leucodye or
temperature range for a color change. (Id.) Appellants assert that the
Examiner did not provide any evidence that “the thermochromic ink taught
by Bobadilla will inherently change appearance within the temperature range
recited in the Applicants’ claims.” (Id.)
Further, Appellants assert that the Examiner “has not demonstrated
why the claim term ‘urinalysis test strip’ may be read so broadly as to cover
litmus paper taught by Bobadilla.” (Id. at 4.)
The issues are:
(a) whether the preponderance of the evidence supports the
Examiner’s conclusion that it would have been obvious to provide the
thermochromic temperature sensor of Bobadilla with a thermochromic ink
adapted to undergo a change in appearance at a temperature higher than
about 99.5-102°F, and/or
(b) whether the preponderance of the evidence supports the
Examiner’s finding that Bobadilla’s thermochromic ink would inherently
undergo a change in appearance at a temperature higher than about 99.5-
102°F, and/or
(c) whether the preponderance of the evidence supports the
Examiner’s finding that Bobadilla’s litmus paper is a urinalysis test strip.
Findings of Fact
1. Bobadilla disclosed an early indicator color changing diaper or
training pant comprising a litmus paper or a color changing ink, such as a
thermochromic printing ink. (Bobadilla Abstract; [0007].)
Appeal 2010-009077
Application 11/880,312

6
2. Bobadilla disclosed that “the litmus paper will change colors when it
becomes wet with urine notifying the changer that the diaper is wet.” (Id. at
[0006].)
3. Bobadilla disclosed that “[t]he color of the thermochromic printing
ink will change colors or leave a message when the urine changes the
temperature of the ink.” (Id. at [0008].)
4. Bobadilla states “[t]he inks will change temperature when the urine
comes in contact with it.” (Id. at [0016].)
5. Bobadilla disclosed that “[t]here are primarily two types of color
changing or thermo chromic inks[:] liquid crystals and leucodye.” (Id.)
6. Appellants’ Specification states that “thermochromic dyes that can
change color are called leuco dyes … and are commercially available….”
(Spec. 15, ll. 18-20.)
7. Appellants provided evidence that leucodyes are available in a broad
range of temperatures. (Reply Br. 2, citing http://www.dyespigments.com
/leuco-dye.html.)
8. Appellants’ Specification states:
Alternatively, urinalysis test strips may be used since they give
a quick reading of various constituents in urine. The Combur-
Test ™ urinalysis test strips marketed by Roche (Geneva) can
test for leukocytes, pH, bilirubin, blood, specific gravity, and
other analytes in urine. These test strips have been found useful
for the early diagnosis of kidney and liver diseases, as well as in
the early detection of diabetes, urinary tract infections, and even
dehydration. An exemplary pH indicator is a laboratory pH test
strip made by Roche Chemicals (Abilene, TX).

(Spec. 16-17.)
Appeal 2010-009077
Application 11/880,312

7
Principles of Law
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).
“Inherency … may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” MEHL/Biophile Int'l. Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578,
581 (CCPA 1981)).
Analysis
Bobadilla disclosed that when urine comes into contact with its
thermochromic ink, the temperature of the ink will change causing the color
of the ink to change. (FF-3, 4.) The Examiner acknowledged that Bobadilla
did not disclose the temperature at which its thermochromic ink changes
appearance. (Ans. 3.) According to the Examiner, “[s]ince urine has a
temperature when leaving the body in the range of 99.5-102° F,” it would
have been obvious to skilled artisan at the time of the invention “to provide
the thermochromic temperature sensor of Bobadilla with a thermochromic
ink that undergoes a change in appearance in the range of 99.5-102° F, so
the ink will change color when exposed to urine.” (Fin. Rej. 3.) However,
as Appellants have asserted, the Examiner has not provided evidence that
“urine has a temperature when leaving the body in the range of 99.5-102° F”
(App. Br. 6) or more accurately, “higher than” this range, as recited in claim
1. (App. Br. A-1.) In other words, what is missing from the Examiner’s
rejection is some evidence that any urine exiting the body necessarily will
have a temperature sufficient to cause a color change in a thermochromic ink
Appeal 2010-009077
Application 11/880,312

8
adapted to undergo a change of appearance when exposed to a temperature
higher than about 99.5-102°F, such that the presence of the urine will be
indicated, as taught by Bobadilla. See Rijckaert, 9 F.3d at 1532.
The Examiner also reasoned (Ans. 4) that Bobadilla’s thermochromic
ink would inherently exhibit a change in appearance within the claimed
temperature range because Bobadilla disclosed using leucodye, the same
type of thermochromic ink described in the Specification (see FF-6).
However, in the Reply, Appellants provided evidence that leucodyes are
available in a broad range of temperatures (FF-7) and correctly assert that
Bobadilla did not teach or suggest selecting a “particular” leucodye or
temperature range for a color change. (Reply Br. 2.) Consequently, our
analysis convinces us that Appellants have met the burden of rebutting the
Examiner’s reasonable assertion of inherency. See Mehl, 192 F.2d at 1365.
Further, regarding claims 1, 3, 4, 9, 10, 12 and 13 for which the sensor
selected may be a urinalysis test strip (see App. Br. A-1) the Examiner’s
position is that Bobadilla’s litmus paper fulfills this element (Ans. 6.).
Appellants argue that the Examiner “has not demonstrated why the claim
term ‘urinalysis test strip’ may be read so broadly as to cover litmus paper as
taught by Bobadilla.” (Reply Br. 4.) Appellants do not assert a definition
for the claim term, but instead refer to the Specification discussion of
urinalysis test strips. (Id. at 3.) The portion of the Specification cited by
Appellants states that “urinalysis test strips may be used since they give a
quick reading of various constituents in urine” and describes a particular test
strip that can test for constituents including pH, as well as another test strip
that is a pH indicator. (See FF-8.) The Examiner explained that Bobadilla’s
litmus paper satisfied the urinalysis test strip element “because the litmus
Appeal 2010-009077
Application 11/880,312

9
paper indicates the pH of the urine.” (Ans. 6.) This articulated reasoning is
sound and supported by the Specification discussion of urinalysis test strips
as including testing and identification of pH. Appellants have not argued or
established otherwise with persuasive evidence.
Accordingly, we reverse the Examiner’s obviousness rejections of
claims 5-8 and 11, and affirm the obviousness rejections of claims 1, 3, 4, 9,
10, 12 and 13.

OBVIOUSNESS-TYPE DOUBLE PATENTING
Appellants do not contest either of the provisional rejections. (See
App. Br. 3-4.) We therefore summarily affirm these rejections. See
MANUAL OF PATENT EXAMINING PROCEDURE § 1205.02 (“If a
ground of rejection stated by the examiner is not addressed in the appellant's
brief, that ground of rejection will be summarily sustained by the Board.”).

CONCLUSIONS OF LAW
The preponderance of the evidence does not support the Examiner’s
conclusion that it would have been obvious to provide the thermochromic
temperature sensor of Bobadilla with a thermochromic ink adapted to
undergo a change in appearance at a temperature higher than about 99.5-
102°F.
The preponderance of the evidence does not support the Examiner’s
finding that Bobadilla’s thermochromic ink would inherently undergo a
change in appearance at a temperature higher than about 99.5-102°F.
The preponderance of the evidence supports the Examiner’s finding
that Bobadilla’s litmus paper is a urinalysis test strip.
Appeal 2010-009077
Application 11/880,312

10
SUMMARY
We affirm the rejection of claims 1, 9, 10, 12 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Bobadilla;
we reverse the rejection of claims 5-8 and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Bobadilla;
we affirm the rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Bobadilla and Flam;
we affirm the provisional rejection of claims 1-13, on the ground of
nonstatutory obviousness-type double patenting over claims 1-13 of co-
pending Application No. 11/880,414; and
we affirm the provisional rejection of claims 1 and 5-13, on the
ground of nonstatutory obviousness-type double patenting over claims 1 and
7-16 of co-pending Application No. 10/880,413.

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-IN-PART

lp