Ex Parte Long et al

Board of Patent Appeals and Interferences

Aug 30, 2012

11897579 (B.P.A.I. Aug. 30, 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.
11/897,579 08/30/2007 Andrew Mark Long 64351124US01 5624
23556 7590 08/31/2012
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
CRAIG, PAULA L
ART UNIT PAPER NUMBER
3778
MAIL DATE DELIVERY MODE
08/31/2012 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 ANDREW MARK LONG, SHIRLEE ANN WEBER,
JESSICA SARA VAN HANDEL, BROOKE ASHLEY ZIMMER,
DAVIS-DANG NHAN, and DAROLD DEAN TIPPEY
____________

Appeal 2011-008414
Application 11/897,579
Technology Center 3700
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1-4, 6, 9-14, 19,
and 20 (App. Br. 1; Ans. 2).
1
We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to an absorbent article. Claims 1 and 19 are
representative and are reproduced in the Claims Appendix of Appellants‟
Brief.

1
Pending claims 5, 7, and 15-18 stand withdrawn from consideration (App.
Br. 1).
Appeal 2011-008414
Application 11/897,579

2

Claim 19 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Sosalla.
2

Claim 20 stands rejected under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Sosalla.
Claims 1-4, 6, and 9-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Wang
3
and Sosalla.
We affirm-in-part.

The rejections over Sosalla alone:
ISSUE
For claim 19: Does the preponderance of evidence on this record
support Examiner‟s finding that Sosalla teaches Appellants‟ claimed
invention?
For claim 20: Does the preponderance of evidence on this record
support Examiner‟s finding that Sosalla teaches Appellants‟ claimed
invention, or in the alternative renders Appellants‟ claimed invention prima
facie obvious?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Sosalla teaches an absorbent article as set forth
in Appellants‟ claimed invention that includes (a) a liner, (b) a tissue layer,
(c) an absorbent structure, and (d) a film layer (Ans. 4).

2
Sosalla et al., US 2005/0148961 A1, published July 7, 2005.
3
Wang, US 3,759,261, issued Sept. 18, 1973.
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FF 2. Sosalla‟s Figure 5c is reproduced below:

FIG. 5C illustrates a partial sectional view of Sosalla‟s absorbent article (i.e.
training pants), wherein
[A]bsorbent body 44 [is] sandwiched between an outercover 40
and a bodyside liner 42. The pant 20 also includes an interior
graphic layer 98 sandwiched between the absorbent body 44
and the liner 42. The … outercover 40 is a two-layer composite
comprising an outercover outer layer 78 and an outercover
inner layer 76, but could alternatively be a single layer. … In
addition, the illustrated liner 42 is a single layer having an
exterior liner surface 96 and an interior liner surface 94, which
also may provide at least a portion of the interior article surface
28. The interior graphics 90 can be disposed on the liner 42,
which includes either surface 94 or 96 of the liner, on the
surface of the absorbent body 44 that faces the liner 42, or
between the absorbent body 44 and the liner 42. The internal
graphic 90 could also be disposed on either surface of the
interior graphic layer 98 that is placed with or placed near the
liner 42, between the interior graphic layer 98 and the liner 42
or between the interior graphic layer 98 and the absorbent body
44. Various other locations for the interior graphics can be
suitable where different configurations of the absorbent body
44 and liner 42 are employed, including but not limited to
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within a layer of the absorbent body 44, liner 42, or interior
graphic layer 98.

(see Sosalla 1: ¶ [0015] and ¶ [0001]; 6: ¶ [0048] (emphasis added)).
FF 3. Sosalla‟s bodyside liner 42 can be (1) manufactured from aperture
plastic films and (2) surface treated with a surfactant that is applied by any
conventional means, such as spraying, printing, brush coating or the like, to
the entire bodyside liner or to particular sections of the bodyside liner
(Sosalla 3: ¶ [0029]; Ans. 4 (Sosalla “teaches a film layer positioned
between the liner and the tissue layer (liner includes interior liner surface 94;
exterior liner surface 96 may include a film layer and is between interior
liner surface 94 and interior graphic layer 98…)”) (emphasis added)).
FF 4. Examiner finds that Sosalla‟s surfactant “treatment means that
interior liner surface 94 of Sosalla is not simply an undifferentiated surface
of bodyside liner 42, but differs from the rest of bodyside liner 42 by having
a sprayed-on, printed-on, or brushed-on surface treatment [and] Sosalla
expressly states that the surface treatment may be a coating” (Ans. 13; id.
(“[t]he surface treatment on [Sosalla‟s] interior liner surface 94 is the
claimed liner; the remainder of the bodyside liner 42, including exterior liner
surface 96, is the claimed film layer”); see FF 3).
FF 5. Sosalla teaches a “wetness indicator including a tissue layer having a
liner-facing side and an absorbent-structure-facing side … [that is] in liquid
communication with the absorbent structure” (Ans. 4; Sosalla 5: ¶ [0044]
(“[T]he interior graphic layer may be a substrate associated with the
absorbent body 44, such as … a tissue layer”)).
FF 6. “Sosalla teaches an indicator material disposed between the
absorbent-facing side of the tissue layer and the absorbent structure (… note
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that interior graphics 90 may be disposed between interior graphic layer 98
and absorbent body 44)” (Ans. 4).
ANALYSIS
Claim 19:
Examiner reasons that since Sosalla teaches that all or a part (e.g.,
surface 94 or 96) of the liner may comprise a surfactant coating, Sosalla‟s
single layer liner can be interpreted as comprising more than one layer (see
generally Ans. 4 and 13-14). We are not persuaded (see App. Br. 5
(“[T]here is nothing in Sosalla that discloses, teaches, or suggests the liner
… is more than one layer”)). Sosalla makes a very clear distinction between
a “layer” and a “surface”, as well as, when a particular component consists
of more than one “layer” (e.g., the outercover 40) and when a component is
a “single layer” (e.g., the liner 42) (see FF 2 (the “outercover 40 is a two-
layer composite comprising an outercover outer layer 78 and an outercover
inner layer 76, but could alternatively be a single layer. … [T]he illustrated
liner 42 is a single layer having an exterior liner surface 96 and an interior
liner surface 94”)). Examiner failed to identify an evidentiary basis in
Sosalla or Appellants‟ Specification that supports a conclusion that a person
of ordinary skill in this art would have interpreted Sosalla‟s surface coating
as a separate layer, or more specifically a “film layer” as required by
Appellants‟ claimed invention. Accordingly, we are compelled to agree
with Appellants‟ contention that Sosalla fails to teach an absorbent article
that has the same structure as is required by Appellants‟ claim 19 (see App.
Br. 4-5).
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Claim 20:
Claim 20 depends from claim 19. Accordingly, for the foregoing
reasons, we find that Examiner failed to establish that Sosalla anticipates the
subject matter of Appellants‟ claim 20. We recognize Examiner‟s
alternative rejection of claim 20 under obviousness (Ans. 5). According to
Examiner “it would have been obvious to one of ordinary skill in the art to
modify Sosalla to include the tissue material being hydrophanous” (id.).
Examiner, however, failed to establish an evidentiary basis on this art to
support a conclusion that Sosalla suggests an absorbent article having the
structure set forth in Appellants‟ claim 20.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner‟s finding that Sosalla teaches Appellants‟ claimed invention. The
rejection of claims 19 and 20 under 35 U.S.C. § 102(b) as being anticipated
by Sosalla is reversed.
The preponderance of evidence on this record also fails to support a
conclusion of obviousness. The rejection of claim 20 under 35 U.S.C.
§ 103(a) as unpatentable over Sosalla is reversed.

The rejection over the combination of Wang and Sosalla:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
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FACTUAL FINDINGS (FF)
FF 7. Wang‟s Fig. 2 is reproduced below:

“FIG. 2 is an enlarged perspective view of [Wang‟s diaper] … with layers of
the diaper peeled away to expose printed matter on one layer” (Wang, col. 1,
ll. 43-46).
FF 8. Wang‟s diaper comprises “a carrier layer of material 14 …
superimposed on the absorbent layer 13, and a pattern 15 … imprinted on
the carrier layer 14” (Wang, col. 2, ll. 10-13; Ans. 6).
FF 9. Wang suggests that in order to
[M]ask the printed pattern 15 when the diaper … is dry, while
permitting the printed matter 15 to appear when the diaper … is
wet, at least one outer layer 16 and preferably a plurality of
layers or sheets of loose and light cloth, paper, or paper like
material 16 and 17 … covers the carrier layer 14 and conceals
the pattern 15.

(Id. at col. 2, ll. 21-28; Ans. 6).
FF 10. Wang suggests that
[T]he outer layers 16 and 17 prevent the printed pattern 15 from
being visible from the top or outside of the diaper … when the
diaper … is dry; however, the layers 16 and 17 permit the
pattern 15 to be readily visible from outside the diaper when the
diaper … and particularly the outer layers 16 and 17 are wet.
Accordingly, an adult is able to determine whether or not the
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diaper … needs to be changed simply by inspecting the diaper
without disturbing the baby.

(Id. at ll. 36-44; Ans. 6-7.)
FF 11. Examiner finds that Wang fails to expressly suggest a
“hydrophanous layer including tissue” (Ans. 7).
FF 12. Examiner finds that Wang fails to suggest “visibility of the indicator
material through the liner when the article is wetted” (id.).
FF 13. Sosalla suggests an absorbent article, wherein “a wetness signal [is
provided] on the interior article surface [to] help[] in toilet training by
notifying the wearer of any accidents” (id.; Sosalla 7: ¶ [0055]).
FF 14. Examiner finds that Wang fails to suggest “a first film layer disposed
between the absorbent structure and the liner” (Ans. 8).
ANALYSIS
Appellants provide separate arguments for the following groups of
claims: (I) claims 1, 6, and 9-14; (II) claims 2 and 4; and (III) claim 3.
Claims 1, 2, and 3 are representative. 37 C.F.R. § 41.37(c)(1)(vii).

Claim 1:
Based on the combination of Wang and Sosalla, Examiner concludes
that at the time of Appellants‟ claimed invention a person of ordinary skill in
this art would have found it prima facie obvious to:
1. “[I]nclude tissue in the hydrophanous layer” “[i]n light of Wang‟s
teaching of the hydrophanous layer having a layer or sheet of loose and light
paper or paper like material” (Ans. 7; FF 9; Cf. FF 11). Appellants concede
that Wang suggests a “diaper[ ] … including, inter alia, a wetness indicator
… including a hydrophanous tissue layer” (App. Br. 7). Accordingly, we
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find no error in Examiner‟s finding that Wang suggests a hydrophanous
layer composed of tissue.
2. “[T]o modify Wang to include visibility of the indicator material
through a liner when the article is wetted, as taught by Sosalla …, to help in
toilet training by notifying the wearer of any accidents” (Ans. 8). We find
no error in Examiner‟s prima facie case. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).
We recognize Appellants‟ contention that Wang‟s article is
configured to permit the visualization of the printed indicia through the outer
layer of the article (App. Br. 8-9). However, for the reasons set forth by
Examiner, we disagree with Appellants‟ contention that “Sosalla does not
correct the deficiencies of Wang” (App. Br. 9; Ans. 15 (“The motivation to
„flip‟ the printed pattern 15 of Wang so that it is visible though the liner
rather than through the outer cover is found primarily in Sosalla, rather than
in Wang”)).
We are not persuaded by Appellants‟ contention that Examiner‟s
modification of Wang “would eviscerate the stated purpose of Wang, to
„provide a diaper having novel means for providing a readily visible
indication when wet so that an adult can tell whether or not the diaper needs
to be changed without disturbing a baby wearing the diaper” (App. Br. 9
(emphasis omitted)). Wang suggests an article that permits visualization of
printed indicia on the outside of the article (FF 7-10). Sosalla suggests an
article that permits visualization of printed indicia on the inside of the article
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(FF 13). Taking Wang and Sosalla in combination, are relied upon by
Examiner, we find no error in Examiner‟s prima facie case of obviousness.
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.

KSR, 550 U.S. at 417.

Claims 2-4:
For claims 2-4, Examiner finds that “Wang does not teach a first film
layer disposed between the absorbent structure and the liner” (FF 14). For
the reasons set forth above with respect to the anticipation rejection,
Examiner fails to establish an evidentiary basis on this record to support a
conclusion that Sosalla suggests a “film layer”. Accordingly, we are not
persuaded by Examiner‟s conclusion of obviousness with regard to claims 2-
4.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Wang and Sosalla is
affirmed. Because they are not separately argued claims 6 and 9-14 fall
together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). The rejection of claims
2-4 under 35 U.S.C. § 103(a) as unpatentable over the combination of Wang
and Sosalla is reversed.

Appeal 2011-008414
Application 11/897,579

11
TIME PERIOD FOR RESPONSE
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

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