12580765 (P.T.A.B. Mar. 31, 2016)

Ex Parte Misek et al

Patent Trial and Appeal BoardMar 31, 2016

12580765 (P.T.A.B. Mar. 31, 2016)

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. 12/580,765 10/16/2009 Jennifer Leigh Skabroud Misek 64536327US01 1066 23556 7590 03/31/2016 KIMBERLY-CLARK WORLDWIDE, INC. Patent Docketing 2300 Winchester Rd. NEENAH, WI 54956 EXAMINER KOCH, GEORGE R ART UNIT PAPER NUMBER 1745 MAIL DATE DELIVERY MODE 03/31/2016 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JENNIFER LEIGH SKABROUD MISEK, BRIAN KEITH RHODES, TERRI LYNN MEISEL, COLE WILLIAM POOLE, SHANNON KATHLEEN MELIUS, and NATHAN ALLEN GENKE1 ____________ Appeal 2014-006868 Application 12/580,765 Technology Center 1700 ____________ Before CHUNG K. PAK, MICHAEL P. COLAIANNI, and JEFFREY W. ABRAHAM, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the decision of the Examiner finally rejecting claims 1–14. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We reverse. 1 According to the Appeal Brief, the Real Party in Interest is Kimberly-Clark Worldwide, Inc. Br. 1. Appeal 2014-006868 Application 12/580,765 2 BACKGROUND Appellants’ claimed invention relates to disposable absorbent articles having a printed graphic, wherein the ink used to print the graphic does not include carbon black colorant. Abstract. Claim 13 is the only independent claim at issue on appeal, and is reproduced below from the Claims Appendix (Br. 12): 13. A disposable absorbent article having multiple components, the article comprising a printed graphic including ink having no carbon black colorant such that the printed graphic is substantially transparent to infrared radiation, wherein the printed graphic has a CIELab L* less than 80 and a CIELab C* greater than 1.5. The Examiner maintains2 and Appellants appeal the rejection of claims 13 and 14 as unpatentable under 35 U.S.C. § 103(a) over Koele (US 2003/0169433 A1, published Sept. 11, 2003), Krutak (US 6,174,400 B1, issued Jan. 16, 2001), and Song (US 2006/0021536 A1, published Feb. 2, 2006). OPINION The Examiner finds that Koele discloses a disposable absorbent article having multiple components and a printed graphic, but does not disclose that the printed graphic has “no carbon black colorant such that the printed graphic is substantially transparent to infrared radiation.” Ans. 2. The 2 In the Answer, the Examiner withdrew the rejections of claims 1–12 as unpatentable under 35 U.S.C. § 103 over various prior art references. Ans. 3. Appeal 2014-006868 Application 12/580,765 3 Examiner further finds that Krutak discloses “that use of black dye compositions which do not absorb strongly in the near infrared in place of the carbon black pigments results in stronger contrast images.” Id. (citing Krutak 10:19–28). Therefore, the Examiner determines Krutak provides a teaching for why a person of ordinary skill in the art would have modified Koele. Id. at 4. Appellants argue that the Examiner failed to establish a prima facie case of obviousness, because, inter alia, there is no apparent reason why a person of ordinary skill in the art would have modified the references to arrive at the claimed invention. Br. 4. According to Appellants, in contrast to the claims, which require using an ink that includes no carbon black colorant to print a graphic so that the printed graphic is transparent (i.e., invisible) to infrared light, Koele teaches including infrared absorbers or blockers in ink used to print a graphic in order to make a component visible under infrared light. Id. Thus, Appellants contend that “[a] printed graphic that is substantially transparent to infrared radiation is useless to Koele in the inspection region because such a component would be invisible, whereas Koele seeks to make components visible in the inspection region.” Id. Accordingly, even if Krutak’s pigment-less dye, which is transparent to infrared radiation, does provide contrast, Appellants disagree that it would have been obvious to modify Koele by using Krutak’s dye because “Koele needs a substance to block infrared radiation.” Id. at 5. We are persuaded by Appellants’ arguments. Koele discloses “a process for the detection of marked components of a composite article.” Koele, Abstract. Koele further discloses that “infrared blockers, such as absorbing infrared blockers, are incorporated into the Appeal 2014-006868 Application 12/580,765 4 component of interest in the composite to increase the visibility of the marked component during inspection” of a composite article using infrared radiation. Id. According to Koele, infrared blockers can be introduced into numerous components, including ink for graphics. Id. ¶ 96. Thus, as Appellants argue, Koele teaches incorporating materials into ink that would make graphics printed with that ink more visible when exposed to infrared radiation. The Examiner’s proposal of modifying Koele by using Krutak’s ink to provide improved contrast between images would make these graphics less visible when viewed with an infrared camera (Krutak 10:28–29). The Examiner, however, fails to explain adequately why a person of ordinary skill in the art would have been motivated to make Koele’s images less visible to infrared radiation when Koele strives to achieve the opposite result. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (finding no suggestion or motivation to make the proposed modification when the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose). We are not persuaded by the Examiner’s finding that absorbent articles typically have multiple components, and that it would have been obvious to a person of ordinary skill to not include carbon black in a printed graphic that is oriented over another component, so as to enable detection of the underlying component using infrared radiation. Ans. 4. Koele recognizes that absorbent articles have multiple components, yet explicitly teaches adding infrared blockers or absorbers into the ink used to print graphics on the absorbent material as a way to improve the detectability of certain components. Koele ¶¶ 96, 99. Appeal 2014-006868 Application 12/580,765 5 In view of the divergent teachings of Koele and Krutak, we determine that the Examiner has failed to establish a prima facie case of obviousness. KSR Int’l. Co. v. Teleflex Inc., 550 US 398, 418 (2007) (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”); In re Gordon, 733 F.2d at 902. CONCLUSION For the reasons set forth above, we reverse the decision of the Examiner to reject claims 13 and14 under 35 U.S.C. § 103(a). REVERSED