Ex Parte Song et al

Patent Trial and Appeal Board

Mar 25, 2015

12825877 (P.T.A.B. Mar. 25, 2015)

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.
12/825,877 06/29/2010 Xuedong Song 64642160US01 2433
23556 7590 03/25/2015
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
WARDEN, JILL ALICE
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
03/25/2015 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 XUEDONG SONG and THOMAS M. ALES, III
____________

Appeal 2013-005151
Application 12/825,877
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and GEORGE C. BEST,
Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–22. We have jurisdiction under 35 U.S.C. § 6.
We affirm.

Appellants claim a multiple-component material or article (e.g., a
disposable diaper) comprising a substrate and a color-changing composition
which includes a matrix-forming component (e.g., a water-insoluble, film-
forming polymer) and a pH adjuster comprising a low molecular weight
organic acid and a high molecular weight organic acid (independent claims
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Application 12/825,877

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1, 19, and 20). Appellants also claim a method of making such a material
(independent claim 21).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A multiple-component material, the material
comprising:
a substrate and a printed layer on the substrate, wherein
the printed layer includes a color-changing composition, the
color-changing composition comprising:
a matrix-forming component;
a colorant;
a surfactant; and
a pH adjuster, wherein the pH adjuster includes low
molecular weight organic acid and a high molecular weight
organic acid.

On the ground of nonstatutory obviousness-type double patenting, the
Examiner provisionally rejects claims 1–15 and 17–22 as unpatentable over
claims 1 and 6–20 of copending Application No. 12/503,364 in view of Mao
et al. (US 7,094,464 B2, issued Aug. 22, 2006) (hereinafter “Mao”) (Final
Action 3–4) and provisionally rejects claims 1–10, 12–15, and 17–22 as
unpatentable over claims 1–17 of copending Application No. 12/503,380 (id.
at 4).
Under 35 U.S.C. § 103(a), the Examiner rejects claims 1–7, 10, and
12–22 as unpatentable over Klofta ’532 et al. (US 7,159,532 B2, issued Jan.
9, 2007) (hereinafter “Klofta ’532”) in view of Klofta ’557 et al. (US
7,005,557 B2, issued Feb. 28, 2006) (hereinafter “Klofta ’557”) (id. at 5–6
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Application 12/825,877

3
and Ans. 6–7)
1
and rejects dependent claims 15 and 16 as unpatentable over
these references in combination with additional prior art.
In this appeal, Appellants specifically contest only the § 103 rejection
based on Klofta ’532 and Klofta ’557 (Br. 3–6). Moreover, in contesting
this rejection, Appellants’ arguments are directed to the independent claims
and dependent claim 22 only (id.). It follows that, except for claim 22, the
dependent claims rejected under § 103 will stand or fall with their parent
independent claims, of which claim 1 is representative.
We sustain each of the above rejections advanced in this appeal for
the reasons expressed in the Final Action, the Answer, and below.
We summarily sustain the Examiner’s provisional rejections on the
ground of nonstatutory obviousness-type double patenting because they have
not been contested by Appellants in the appeal record.
Regarding the § 103 rejections generally and the matrix-forming
component limitation of claim 1 specifically, we agree with the Examiner
that it would have been obvious to provide Klofta ’532 with the film-
forming polymer (i.e., a matrix-forming component as evinced by dependent
claim 7) of Klofta ’557 in order to improve comfort (see, e.g., Final Action
5).
Appellants argue that there is no reason to combine these references
because their respective compositions have different functions and because

1
Appellants recognize that claims 18–22 are not listed in the statement of
rejection but are discussed in the explanatory body of the rejection as
presented in the Final Action (Br. 6 n.1) which is an oversight corrected in
the Answer (Ans. 5). Particularly in light of Appellants’ recognition, this
oversight in the Final Action is harmless.
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Application 12/825,877

4
“comfort” is not an objective of either reference (Br. 4). According to
Appellants, the film-forming compositions of Klofta ’557 are intended to be
transferred to the skin of the wearer of the absorbent article whereas the
wetness-indicating compositions of Klofta ’532 are not intended to come
into contact with the skin of the wearer at all (id. at ¶ bridging 4–5).
Appellants’ argument is not convincing. Contrary to Appellants’
apparent belief, Klofta ’557 teaches providing absorbent articles such as
diapers (e.g., the absorbent articles taught by Klofta ’532) with a film-
forming composition in order to avoid skin discomfort of the wearer (see,
e.g., Klofta ’557 col. 1, ll. 22–33). Appellants also are incorrect in asserting
that the wetness-indicating compositions of Klofta ’532 are not intended to
come into contact with a wearer’s skin. Klofta ’532 expressly teaches that
the wetness indicator may be applied to any one or a combination of
structural components of an absorbent article including but not limited to the
back-sheet, top sheet, etc. (col. 11, ll. 43–47). Regardless, the film-forming
compositions of Klofta ’557 need not be placed on an absorbent article
component which directly contacts the skin because the compositions may
be transferred to the skin indirectly (col. 14, ll. 56–59).
Concerning the claim 1 pH adjuster, Appellants acknowledge the
Examiner’s finding that Klofta ’532 discloses a pH adjuster at column 8, line
38–column 9, line 7 (Final Action 5) but argue that “there is no disclosure of
a specific combination of a low molecular weight organic acid and a high
molecular weight organic acid [as claimed]” (Br. 5).
The cited disclosure of Klofta ’532 teaches a class of organic acid pH
adjusters for preventing premature activation of colorant which correspond
to the pH adjuster class and function disclosed in the subject Specification
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Application 12/825,877

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(Spec. 13–16), and Appellants do not argue otherwise with any reasonable
specificity. Further, Klofta ’532 expressly teaches that the organic acid pH
adjusters include “combinations thereof” (col. 8, l. 67). For these reasons,
the Klofta ’532 disclosure teaches or at least would have suggested the claim
1 combination of low molecular weight organic acid and high molecular
weight organic acid. Appellants’ unembellished argument reveals no error
in this determination.
Finally, Appellants contend that, “[w]ith respect to dependent claim
22, the Examiner does not articulate how the Klofta ‘532 patent teaches or
suggests a mixture that is liquid at room temperature” (Br. 6).
For this claim requirement, the Examiner relies on the Klofta ’532
disclosure at column 12, line 59–column 13, line 4 (Final Action 6). This
disclosure teaches that “[t]he wetness indicator may be applied to a substrate
via any means of liquid or semi-liquid application as known in the art
including, but not limited to, slot coating, spraying, gravure printing, ink jet
printing, and digital printing” (Klofta ’532 col. 12, ll. 59–62). We agree
with the Examiner’s finding that Klofta ’532 teaches or at least would have
suggested applying to the substrate the wetness indicator mixture in the form
of a liquid at room temperature as claimed (see, e.g., Ans. 10). Appellants
do not provide any explanatory rationale in support of their opposing view.
In summary, the arguments advanced by Appellants in this appeal fail
to show error in the Examiner’s § 103 rejections.
The decision of the Examiner is affirmed.
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