Ex Parte Markovich et al

Board of Patent Appeals and Interferences

Sep 16, 2010

11020482 (B.P.A.I. Sep. 16, 2010)

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.
11/020,482 12/22/2004 Stacy N. Markovich 20678 8564
23556 7590 09/16/2010
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
CRAIG, PAULA L
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
09/16/2010 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 STACY N. MARKOVICH,
SUZANNE M. SCHMOKER, and JEFFERY M. TABOR
__________

Appeal 2009-013650
Application 11/020,482
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and JEFFREY N. FREDMAN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on appeal under 35 U.S.C. § 134 from the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/020,482

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Examiner’s rejection of claims 8, 9, 14, 16, 17, and 19.2 We have
jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 8 is representative of the claims on appeal, and reads as
follows:
8. [An absorbent garment comprising:
a body panel having a crotch edge and a waist edge and comprising
first and second portions separated by at least one longitudinally extending
line of weakness, wherein said line of weakness extends between said waist
and crotch edges, wherein said line of weakness is integrally formed in said
body panel such that said first and second portions separated by said line of
weakness do not overlap;
a fastener member releasably engaging said body panel on at least one
side of said line of weakness, said fastener member moveable between an
engaged position, wherein said fastener member bridges said line of
weakness and is engaged with said body panel one [sic] said at least one side
of said line of weakness, and a released position, wherein said fastener

2 The Examiner maintains the rejections of claims 1-22, but Appellants
appeal only the rejection of claims 8, 9, 14, 16, 17, and 19 (Reply Br. at 2)
(“Applicants confirm that claims 8, 9, 14, 17, and 19 are on Appeal”). Note
that the Reply Brief does not state that claim 16 is being appealed, but the
Appeal Brief includes claim 16 (App. Br. 2), and both the Appeal Brief and
the Reply Brief argue the merits of the rejection of claim 16, and thus we
address the merits of the rejection of claim 16. The Board, however, does
not have jurisdiction as to the non-appealed claims, and the Examiner's
action as to the non-appealed claims became an unappealable final agency
action. See Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008). Under
these circumstances, upon return of the application to the jurisdiction of the
Examiner, the Examiner should cancel claims 1-7, 10-13, 15, 18, and 20-22,
incorporating the subject matter of cancelled independent claims into the
remaining dependent claims as appropriate. Id.
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Application 11/020,482

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member is disengaged from said body panel on said at least one side of said
line of weakness; and
at least one sensory cue directed at said line of weakness, wherein said
sensory cue is separate from and does not form any part of said fastener
member, wherein said at least one sensory cue provides indicia as to the
location of said line of weakness at least when said fastener member is in
said disengaged position, and wherein said sensory cue is separate from and
does not form any part of said line of weakness]
wherein said sensory cue is more pronounced at a waist edge of said
body panel.

The following grounds of rejection are before us for review.
I. Claims 8, 9, 14, 17, and 193 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Sanders4
and Burton.5 (Ans. 5.)
II. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Sanders, Burton, and
Kido.6 (Ans. 16.)
We affirm.
ISSUE
Has the Examiner established by a preponderance of evidence of
record that it would have been obvious to provide a sensory cue, such as that
taught by Burton, for a line of weakness on an absorbent garment, such as

3 The statement of the rejection by the Examiner refers to claims 1-14 and
17-22, but as noted above, Appellants are only appealing the rejection of
claims 8, 9, 14, 17, and 19.
4 Sanders, US 2003/0055389 A1, published March 20, 2003.
5 Burton, U.S. Patent No. 4,238,541, issued December 9, 1980.
6 Kido, U.S. Patent No. 5,897,546, issued April 27, 1999.
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Application 11/020,482

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that taught by Sanders, wherein the sensory cue is more pronounced at the
waist region of the garment?

FINDINGS OF FACT
FF1 The Examiner’s statement of the rejection over the combination of
Sanders and Burton may be found at pages 5-15 of the Answer.7
FF2 Specifically, the Examiner finds that Sanders teaches an absorbent
garment that has a body panel. (Ans. 5.)
FF3 The Examiner finds further that Sanders teaches that the “body panel
has first and second portions separated by at least one longitudinally
extending line of weakness . . . [that extends] between the waist and crotch
edges.” (Id. (citing Sanders, Fig. 2; ¶¶51-53).)
FF4 The Examiner also finds that Sanders provides a sensory cue directed
at the line of weakness, noting that the sensory cue includes tab member 47.
(Id. (citing ¶¶51, 52, 55, 56, and 60-64 of Sanders).)
FF5 The Examiner notes that Sanders “does not teach a sensory cue which
is separate from and does not form any part of the fastener member.” (Ans.
6.)
FF6 The Examiner finds, however, that “[s]ensory cues such as graphics
which indicate a line of weakness and which are not part of a fastener, are
also known in the art.” (Id.)

7 The Examiner cites Roberts (U.S. Patent No. 4,619,649, issued Oct. 28,
1986) in the response to arguments. (See Ans. 19.) As it was not relied on
in the statement of the rejection and appears to have been cited for the first
time in the Answer, we have not relied upon Roberts in deciding the merits
of this appeal.
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FF7 The Examiner cites Burton for teaching “a sensory cue indicating a
line of weakness which is not a part of the fastener.” (Id. (citing Burton,
Figs. 1-3; col. 1, ll. 5-10 and 54-60).)
FF8 Specifically, Burton is drawn to “means for identifying spaced apart
lines of tear perforations formed in rolled paper webs,” such as paper towels
and bathroom toilet tissue. (Burton, col. 1, ll. 8-15.)
FF9 Burton teaches that it is an object of the invention to allow for easy
identification of tear perforations where there is little or limited light, or to
persons of limited vision. (Id. at col. 1, ll. 25-35.)
FF10 Burton teaches that a marking, such as an arrow, may be located at
each end of the perforation, which clearly identifies the perforations, so that
the paper may be easily torn along the perforations and into individual
panels. (Id. at col. 1, l. 59-col. 2, l4.)
FF11 Burton teaches further that an identifying strip may be superimposed
on the tear perforation, or may be embossed identifying marks that cover the
full width of the paper where tear perforations are contained. (Id. at col. 2,
ll. 5-20.)
FF12 The Examiner thus concludes it would have been obvious to include a
sensory cue that is not part of the line of weakness as taught by Burton and
which is not part of the fastener member to identify the lines of weakness in
the absorbent garment of Sanders. (Ans. 6-7.)
FF13 As to claims 8 and 14, the Examiner notes that Sanders “does not
expressly teach the sensory cue being more pronounced at a waist edge of
the body panel, or located only adjacent the waist edge.” (Ans. 11.)
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FF14 The Examiner finds that “Burton teaches a sensory cue which is
located at, or more pronounced at, a point from which tearing of a line of
weakness is intended to begin,” as “such a pattern assists in tearing along the
line of weakness in low light conditions or by visually handicapped
individuals.” (Id. (citing Burton, Figs. 1-3; claims 1-3).)
FF15 The Examiner notes further that “[t]earing a line of weakness of an
absorbent garment beginning at a waist edge is also well known in the art.”
(Ans. 11.)
FF16 As to claim 9, the Examiner finds that Burton teaches a pattern, i.e.,
an arrow, which is directed away from the edge to be torn. (Ans. 12.)
FF17 As to the term pattern, the Specification teaches:
The term “directed at” does not require that the sensory cue
necessarily contact, overlap or run all of the way to the line of
weakness . . . . In one embodiment, the sensory cue comprises
a visual cue. The visual cue can take many forms, and can
include one or more colors, shapes, graphics, text, alpha-
numeric characters, and/or patterns, including indicia formed by
dying, printing and/or embossing, or by otherwise altering the
relative texture of the body panel. . . .
For example, . . . the visual cue 110 . . . is configured as
various decorative patterns applied along the entirety of the line
of weakness . . . between the terminal crotch and waist edges . .
. . In one suitable embodiment, the pattern is formed by
repeating pictorials. Of course, it should be understood that the
pattern can be any combination of repeating pictorials, lines,
shapes, characters, etc.

(Spec. 7.)
FF18 The Examiner concludes “[i]t would have been obvious to one of
ordinary skill in the art at the time of invention to modify Sanders . . . to
include a pattern directed away from an edge to be torn, as taught by Burton,
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to assist in tearing along the line of weakness in low light conditions or by
visually handicapped individuals, as taught by Burton.” (Ans. 12.)
FF19 As to claim 19, the Examiner notes that Sanders “does not expressly
teach the sensory cue being located adjacent the waist edge and not
extending past a midpoint of the line of weakness between the waist and
crotch edges.” (Id. at 14.)
FF20 The Examiner finds that “Burton teaches a sensory cue which is
located at a point from which tearing of a line of weakness is intended to
begin.” (Id. at 15.)
FF21 The Examiner thus concludes that it would have been obvious to
locate a sensory cue adjacent to the line of weakness as taught by Burton
along the line of weakness in the absorbent garment of Sanders to assist in
tearing along the line of weakness in, for example, low light conditions.
(Id.)
FF22 The Examiner’s statement of the rejection of claim 16 over the
combination of Sanders, Burton, and Kido may be found at pages 16-17 of
the Answer.
FF23 The Examiner notes that “Sanders does not teach the sensory cue
including a visual cue applied to an interior surface of at least one of the
inner and outer layers between the inner and outer layers, with the outer
layer being sufficiently transparent such that the sensory cue is visible to the
user.” (Ans. 16.)
FF24 The Examiner cites Kido for teaching “a visual cue applied to an
interior surface of at least one of the inner and outer layers,” and that such an
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“arrangement is useful as a positioning indicator while preventing ink from
contacting the wearer’s hand and mouth.” (Id. at 17.)
FF25 The Examiner concludes that it would have been obvious at the time
of invention to place the sensory cue at the line of weakness as taught by the
combination of Sanders and Burton and apply it to at least one of the interior
surfaces between the inner and outer layers as taught by Kido as Kido
teaches such a placement prevents the ink from contacting the wearer’s
hands and mouth. (Id.)

PRINCIPLES OF LAW
“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).
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.

Id. at 417. It is proper to “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 also a person of ordinary creativity,
not an automaton.”). Moreover, “[r]igid preventative rules that deny fact
finders recourse to common sense . . . are neither necessary under our case
law nor consistent with it.” (Id.) Thus, “the legal determination of
obviousness may include recourse to logic, judgement, and common sense.”
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Wyers v. Master Lock Co., —F.3d—, 95 USPQ2d 1525, 1532 (Fed. Cir. July
22, 2010).

ANALYSIS
As to claims 8 and 14, Appellants argue that the Examiner finds that
the tab member 47 of Sanders serves as a sensory cue. (App. Br. 6.)
Appellants assert that tab 47, however, forms part of the fastener member
42. (Id. (citing Sanders, ¶60).)
Appellants argue further that “[n]either Burton nor Sanders, however,
discloses a ‘sensory cue [that] is more pronounced at a waist edge of said
body panel’ as recited in claim 8, or ‘located only adjacent a waist edge of
said body panel’ as recited in claim 14.” (Id. at 7 (alteration in original).)
Specifically, Appellants assert that “Burton discloses . . . a sensory cue [that
is] more pronounced at both edges, or where the tearing is intended to
begin.” (Id. (citing Burton, Fig. 1).) According to Appellants, Burton
teaches the use of rolled paper webs to identify tear perforations, and as the
rolls are intended for both right and left handed users, “there is no
suggestion that the marking, such as arrow 16, be directed at only one edge.”
(App. Br. 7.) Appellants assert that because the rolls are intended for both
right and left handed users, Burton in fact teaches away from making the
arrow more pronounced at one edge, “as it would lead to confusion and
inoperability for various users.” (Id.)
Appellants’ arguments have been carefully considered, but are not
found to be convincing. As found by the Examiner, and not disputed by
Appellants, Sanders teaches all of the limitations of claims 8 and 14 (which
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are dependent on claim 1, the rejection of which is not being appealed),
except for teaching a sensory cue for the line(s) of weakness that is not part
of the fastener member, wherein the sensory cue is more pronounced at a
waist edge of the body panel (claim 8) or is located only adjacent a waist
edge of said body panel. As found by the Examiner and evidenced by
Burton, it was known in the art to use a sensory cue, that is not part of a
fastener, to make the line of weakness easier to find. The Examiner also
finds, and we agree, that it was known in the art to begin tearing a line of
weakness of an absorbent article, such as that taught by Sanders, at the
waist. Thus, we agree with the Examiner that it would have been obvious to
the ordinary artisan to use one of the sensory cues as taught by Burton,
wherein the sensory cue is more pronounced at the waist or located only
adjacent the waist, to make the line of weakness easier to find at the waist
portion of the absorbent garment.
We conclude further that Burton does not teach away from such a
combination. Burton is drawn to a rolled paper web having lines of
weakness, such as paper towels or bathroom toilet paper. The ordinary
artisan would understand that in that situation both ends of the line of
weakness are the same. The ordinary artisan would also understand that
with an absorbent garment such as that taught by Sanders it was well known
and routine to begin tearing the line of weakness from the waist rather than
down by the crotch region of the garment. Thus it would have been well
within the level of skill of the ordinary artisan to place the sensory cue only
at the waist portion, or to make it more pronounced at the waist edge.
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As to claim 9, Appellants argue that the claim requires “that the
‘sensory cue comprises a pattern directed away from said waist edge.’”
(App. Br. 8.) According to Appellants, “Burton discloses indicia at the
opposite edges, or a pattern extending along the perforation, but does not
disclose or suggest a marking more pronounced at a waist edge and
including a pattern directed away from the edge.” (Id.)
Appellants further argue that the Specification teaches that “a
‘pattern’ refers to a combination of ‘repeating pictorials, lines, shapes,
characters, etc.’” and thus interpreting “pattern” to encompass the single
arrow of Burton is giving the term “pattern” too broad of an interpretation.
(Reply Br. 6 (citing Spec. 7, ll. 22-31).)
We agree with the Examiner that giving the term “pattern” its
broadest reasonable interpretation when read in light of the Specification,
that it encompasses the arrow of Burton. That is, while the Specification
states that “[i]n one suitable embodiment, the pattern is formed by repeating
pictorials . . . . [, and that] it should be understood that the pattern can be any
combination of repeating pictorials, lines, shapes, characters” [FF17] it does
not specifically define the claim term “pattern” as excluding a single shape.
Moreover, Burton teaches the use of different kinds of sensory cues, and it
would have been obvious to the ordinary artisan to use any desired pattern as
the sensory cue.
As to claim 17, Appellants essentially reiterate the arguments made as
to claims 8 and 14. (App. Br. 9.) Thus, those arguments are not found to be
convincing for the reasons set forth above with respect to claims 8 and 14.
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As to claim 19, Appellants argue that the claim “recites that the
‘sensory cue is located adjacent said waist edge and does not extend past a
midpoint of said line of weakness between said waist and crotch edges.’”
(App. Br. 9.) Appellants reiterate their argument that Burton teaches a
sensory cue at both ends of the perforation or along the whole perforation,
and thus “teaches away from making the marking ‘one-sided.’” (Id.)
Appellants further assert that Sanders “does not disclose or suggest that the
line of weakness is preferably opened from only one edge, and the Examiner
has not made any such assertion.” (Id.)
We do not find Appellants’ arguments convincing for the same
reasons as set forth above with respect to claims 8 and 14. Specifically, the
Examiner did find that it is known in the art to begin tearing a line of
weakness of an absorbent article, such as that taught by Sanders, at the
waist. Thus, we agree with the Examiner that it would have been obvious to
place the sensory cue, such as the arrow specifically exemplified by Burton,
at the waist edge, and such an arrow would not extend beyond a midpoint of
said line of weakness between said waist and crotch edges.
As to claim 16, Appellants argue that “Kido emphasizes a dual
functionality of adhering two sheets with an adhesive while providing
informational indicia with the adhesive.” (App. Br. 8.) Thus, Appellants
assert, providing such adhesive at a line of weakness “would tend to
strengthen such a location, not weaken it.” (Id. at 8-9.) Appellants therefore
argue that “such divergent functions preclude any rational[e] or reason to try
such a modification.” (Id. at 9.)
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Again, Appellants’ arguments are not convincing. The ordinary
artisan would understand that one would have to keep the layers of the
absorbent garment of Sanders together, such as through the use of an
adhesive, even when the absorbent article is designed to be torn at a line of
weakness. Moreover, Appellants have not demonstrated that it would have
been beyond the level of skill of the ordinary artisan to place the adhesive in
such a manner that it serves as an indicator as to the location of the line of
weakness while still allowing the garment to be torn at the line of weakness.

CONCLUSION OF LAW
We conclude that the Examiner has established by a preponderance of
evidence of record that it would have been obvious to provide a sensory cue,
such as that taught by Burton, for a line of weakness on an absorbent
garment, such as that taught by Sanders, wherein the sensory cue is more
pronounced at the waist region of the garment.
We thus affirm the rejection of Claims 8, 9, 14, 17, and 19 under 35
U.S.C. § 103(a) as being rendered obvious by the combination of Sanders
and Burton, as well as the rejection of claim 16 under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Sanders, Burton, and Kido.

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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)(1)(iv)(2006).

AFFIRMED

dm

KIMBERLY-CLARK WORLDWIDE, INC.
TARA POHLKOTTE
2300 WINCHESTER RD.
NEENAH WI 54956