Ex Parte Song et al

Board of Patent Appeals and Interferences

Jul 24, 2012

10902998 (B.P.A.I. Jul. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/902,998 07/30/2004 Limin Song 9726 2296
27752 7590 07/24/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
HAND, MELANIE JO
ART UNIT PAPER NUMBER
3778
MAIL DATE DELIVERY MODE
07/24/2012 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 LIMIN SONG, KESYIN FUGGER HSUEH, WALTER
DOUGLAS DANIELS, and JOHN JOSEPH LITCHHOLT
__________

Appeal 2011-009367
Application 10/902,998
Technology Center 3700
__________

Before LORA M. GREEN, STEPHEN WALSH, 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
methods for creating an absorbent article exhibiting a harmonic color
scheme. The Patent Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
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Application 10/902,998

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Claims 1-4, 6-10, 12-17, 19 and 20 are on appeal. Claim 1 is
representative and reads as follows:
1. A method for creating an absorbent article exhibiting a harmonic color
scheme, said method comprising the steps of:
a. providing at least two elements each comprising at least one
imparted color;
wherein the imparted colors are provided by different coloration
techniques,
wherein the elements are selected from the group consisting of a
backsheet, a leg cuff, a landing zone, and a fastening tab, and
b. disposing the at least two elements on the absorbent article;
wherein the imparted colors provided by the different coloration
techniques are within a CIELab color space volume of less than about
190, and wherein each imparted color provided by the different
coloration techniques have a CIELab chroma value, C*, of greater
than about 6.

The Examiner rejected claims 1-4, 6-10, 12-17, 19 and 20 under 35
U.S.C. § 103(a) as unpatentable over London Brown1 and Ito.2
The Examiner’s position is that the combination of London Brown
and Ito taught the claimed methods of creating an absorbent article
exhibiting a harmonic color scheme comprising the steps recited in the
claimed invention. (Ans. 4-13.) In particular, the Examiner found that since
London Brown met the limitations regarding imparted color and differing
coloration techniques, the reference rendered the limitation “wherein the
imparted colors are within a CIELab color space volume of less than about
190” obvious. (Id. at 5.)

1 Patent Application Publication No. US 2002/0049418 A1 by Allison
London Brown et al., published Apr. 25, 2002.
2 Patent Application Publication No. US 2004/0153046 A1 by Kazunori Ito
et al., filed March 1, 2002, published Aug. 5, 2004.
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Application 10/902,998

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Appellants contend, with respect to independent claim 1, and its
dependent claims, that “London Brown does not teach or suggest that [its]
coloring of elements are within the claimed color space volume.” (App. Br.
4.) Appellants also assert that the Examiner failed to provide any
“reasoning as to why one of ordinary skill in the art would modify London
Brown to include the claimed color space volume to achieve the claimed
color matching of elements.” (Id.)
In the Response to Argument, the Examiner explained that London
Brown disclosed colors that are identical to the colors disclosed in
Appellants’ Specification as having color space volumes within the claimed
range. (Ans. 15.) According to the Examiner, if all of the imparted colors
are identical to one another, the hue difference is zero, which falls within the
claimed ranges. (Id.) The Examiner reasoned that because Brown
disclosed, or at least suggested, applying the same color to more than one
element, one of ordinary skill in the art could have reasonably expected that
any hue difference between two elements of the same color to be within the
claimed ranges. (Id.)
Regarding independent claim 8, and its dependent claims, Appellants
assert that London Brown did not “teach or suggest that [its] coloring of
elements are within the claimed hue difference” (App. Br. 7), i.e., less than
about 4. Regarding independent claim 14, and its dependent claims,
Appellants assert that London Brown did not “teach or suggest that [its]
coloring of elements are within the claimed hue difference,” (id. at 8) i.e.,
within a CIELab color space total color difference of less than about 10.
Regarding dependent claim 2, Appellants further assert that “the
Examiner’s reasoning used to arrive at the assertion that London Brown
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Application 10/902,998

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discloses the claimed space volume is flawed in that it is in conflict with the
accompanying assertion that London Brown discloses the claimed chroma
values, C*, of greater than about 6.” (App. Br. 5.) The Examiner found that
(i) each imparted color disclosed by London Brown had a CIELab chroma
value greater than 6; (ii) the Specification disclosed that the color white has
values of L=100, a=0, and b=0, (iii) London Brown disclosed the color
white; and, therefore, the Examiner reasoned that London Brown’s white
necessarily has a CIELab color space volume of 0, which is less than about
150 as recited in claim 2. (Id.) However, according to Appellants, if C* is
greater than about 6, then values “a” and “b” cannot both be zero because, as
disclosed in the Specification: . (Id. at 6.)
At the outset, we note that each of Appellants’ claimed methods
involve two steps, neither of which recite selecting imparted colors based
upon CIELab color space volume, CIELab color space hue difference,
CIELab color space total color difference, or CIELab chroma value C*.
(See App. Br. 10-13, Claims App’x.). Rather, these characteristics of the
imparted color(s) are recited in a “wherein” clause, such that if a method
according to the recited steps (a) and (b) happens to provide imparted colors
having the recited CIELab values, such method would read on the claimed
invention.
After considering all the evidence and arguments, we conclude that the record
supports a conclusion of prima facie obviousness. The Examiner articulated sound
reasoning, supported by the evidence, that a skilled artisan would have understood the
imparted colors disclosed by London Brown to have been within the CIELab values
recited in claimed invention. (See Ans. 5, 15.) Appellants have not persuasively
established otherwise by merely asserting that London Brown did not disclose these
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values. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the
claimed and prior art products are identical or substantially identical, or are produced
by identical or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.…”); see also In re Wiseman, 596 F.2d 1019,
1023 (CCPA 1979) (rejecting the notion that “a structure suggested by the prior art,
and, hence, potentially in the possession of the public, is patentable ... because it also
possesses an inherent, but hitherto unknown, function which [Appellants] claim to
have discovered. This is not the law. A patent on such a structure would remove
from the public that which is in the public domain by virtue of its inclusion in, or
obviousness from, the prior art.”).
Further, with respect to dependent claim 2, we agree with Appellants that the
Examiner’s discussion regarding London Brown’s use of the color white did not
establish that the reference taught or suggested the claimed space volume of less than
about 150. (See App. Br. 5.) However, as discussed, the Examiner correctly found
that London Brown disclosed several other colors (identical to some disclosed by
Appellants) that a skilled artisan would have understood to meet the recited limitations
of color space volume and C* chroma value. (See Ans. 6, 14.)
Accordingly, we affirm the obviousness rejections of claims1-4, 6-10,
12-17, 19 and 20.

Appeal 2011-009367
Application 10/902,998

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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

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