Ex Parte Ales et al

Patent Trial and Appeal Board

Nov 18, 2013

11799029 (P.T.A.B. Nov. 18, 2013)

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.
11/799,029 04/30/2007 Thomas Michael Ales KCX-1341
(64129559US01)
3935
22827 7590 11/19/2013
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
LIEU, JULIE BICHNGOC
ART UNIT PAPER NUMBER
2684
MAIL DATE DELIVERY MODE
11/19/2013 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 THOMAS MICHAEL ALES,
ANDREW MARK LONG,
and MICHAEL A. BERGEMANN
____________

Appeal 2011-005674
Application 11/799,029
Technology Center 2600
____________

Before ROBERT E. NAPPI, KRISTEN L. DROESCH, and
JENNIFER M. MEYER, Administrative Patent Judges.

MEYER, Administrative Patent Judge

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 3-5, 7-20, 22-26, and 28-30 (Br. 2). 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is Kimberly-Clark Worldwide, Inc. (Br. 1).
2 Claims 2, 6, 21, and 27 were previously canceled.
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STATEMENT OF THE CASE
Illustrative Claim
Appellants’ disclosure relates to an audible signaling device for a
wetness sensor for absorbent articles. Abstract. Claim 1 is illustrative and is
reproduced below with the disputed features emphasized:
1. An absorbent article comprising:
a chassis comprising an outer cover having an interior
surface and an exterior surface and an absorbent structure
positioned adjacent the interior surface of the outer cover, the
chassis including a crotch region positioned in between a front
region and a back region, the front region and the back region
defining a waist region therebetween; and
a wetness sensing device that is activated when a
conductive substance is detected in the absorbent article, the
wetness sensing device including a signaling device that
produces an audible signal when the wetness sensing device is
activated, the signaling device being configured to initially emit
an audible signal that has an intensity of less than about 80 dB
and at selected frequency or range of frequencies such that the
intensity of the audible signal is greater than about 48 dB at a
distance of 20 feet from the signaling device, and wherein the
frequency or range of frequencies of the audible signal are also
selected such that the intensity decreases by no more than
about 15 percent when the signaling device is covered by a
standard cotton cloth, and wherein the selected frequency or
range of frequencies is from about 500 Hz to 2000 Hz.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bodford US 5,643,239 Jul. 1, 1997
Nielsen US 2004/0207530 A1 Oct. 21, 2004
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Rejections
The Examiner rejected claims 1, 3-5, 7-15, 26, 28, and 30 under
35 U.S.C. § 103(a) as being unpatentable over Nielsen. Ans. 3-7.3
The Examiner rejected claims 16-20, 22-25, and 29 under 35 U.S.C.
§ 103(a) as being unpatentable over Nielsen and Bodford. Ans. 7-9.

ISSUES
Appellants’ arguments present us with the following issues:
1. Did the Examiner err by finding that Nielsen teaches a signaling
device that operates at an intensity of “less than about 80 dB” as recited in
independent claims 1, 16, and 26?
2. Did the Examiner err by finding that Nielsen teaches a signaling
device that operates in the range “from about 500 Hz to 2000 Hz” as recited
in claims 1, 16, and 26?
3. Did the Examiner err by finding the claimed frequency range and
low initial intensity were merely design choices within the knowledge of a
skilled artisan and result-effective variables with respect to optimizing the
perceived loudness of the signaling device?
4. Did the Examiner err by finding that Nielsen teaches a signaling
device that operates at an intensity of “less than about 70 dB” as recited in
dependent claims 5 and 20?

3 Throughout the opinion we refer to the Appellants’ Brief filed August 6,
2010, and the Examiner’s Answer mailed November 12, 2010.
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5. Did the Examiner err by finding that Nielsen teaches a signaling
device that operates in the range “from about 500 Hz to about 1000 Hz” as
recited in dependent claims 28-30?

ANALYSIS
Independent claims 1, 16, and 26:
Appellants’ arguments with respect to claims 1, 16, and 26 are
grouped together (Br. 5-11).

Issue 1:
Appellants contend the Examiner erred in finding Nielsen discloses or
suggests a signaling device that operates at an intensity of “less than about
80 dB” (Br. 7). The Examiner relies on the signaling device 800 of Nielsen
as disclosing this claim feature (Ans. 4). Signaling device 800 is “capable of
producing sound pressure levels of about 80 dB(A) at 10 cm range” (Nielsen
¶ [0327]). Appellants argue that 80 dB is not lower than about 80 dB (Br.
7). As noted by the Examiner, the Specification does not clearly disclose
what is meant by “less than about 80 dB” and thus, the Examiner interprets
the signaling device 800 of Nielsen as operating at an intensity of less than
about 80 dB, explaining “the distance of 10 cm is very close to the signalling
[sic] device; thus, the initial sound intensity would be essentially about 80
dB” (Ans. 15) (emphasis added). In any event, a “prima facie case of
obviousness exists where the claimed ranges and prior art ranges do not
overlap but are close enough that one skilled in the art would have expected
them to have the same properties” (MPEP § 2144.05(I) (citing Titanium
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Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985))). As
noted by the Examiner, “Nielsen suggests . . . the signaling device emitting
an intensity 80 dB at 10 cm range . . . and thus inherently becoming less than
80 dB as distance increases from the signaling device” indicating that one of
skill in the art would expect, for example, an initial signal of 80 dB to be
effectively the same as one of less than about 80 dB upon moving away
from the signaling device (Ans. 13).
As further explained by the Examiner, the “choice of . . . different
sound pressure intensity of an audible signaling device is a mere design
choice in the art” (Ans. 15). Appellants disagree with this contention,
arguing that a particular parameter (e.g., intensity level) “‘must be
recognized as a results-effective variable . . . before the determination of the
optimum or workable ranges of said variable might be characterized as
routine experimentation’” (Br. 9 (citing In re Antonie, 559 F.2d 618 (CCPA
1977); MPEP § 2144.05(II)(B))).
The Examiner has made a reasonable showing that sound pressure
intensity (dB) is a result-effective variable with respect to the perceived
loudness of an audible signal. As noted by the Examiner, “Nielson’s
concern is the efficacy of the audible signal as well as the comfort of the
user hearing the audible signal,” thus, a “skilled artisan would have readily
recognized the desirability to use the right . . . sound intensity to produce an
efficient sound, one that is both noticeable and comfortable to a user’s
hearing as suggested in Nielsen” (Ans. 15 (citing Nielsen ¶ [0325]); see also
Nielsen ¶¶ [0231], [0326]). Absent any evidence from Appellants of
criticality of the claimed range, we find the Examiner’s position to be
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reasonable. See In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed.
Cir. 2012) (“The outcome of optimizing a result-effective variable may still
be patentable if the claimed ranges are ‘critical’ and ‘produce a new and
unexpected result which is different in kind and not merely in degree from
the results of the prior art.’”) (internal citations omitted).
Appellants have not persuaded us of error in the Examiner’s finding
that Nielsen teaches a signaling device that operates at an intensity of “less
than about 80 dB.”

Issue 2:
Appellants contend the Examiner erred in finding Nielsen discloses or
suggests a signaling device that operates in the range “from about 500 Hz to
2000 Hz” (Br. 7). Similar to the claimed intensity, the Examiner relies on
the signaling device 800 of Nielsen as disclosing this claim feature (Ans. 4-
5). Signaling device 800 has a “desirably low resonant frequency of 2,048
Hz” (Nielsen ¶ [0327]). Appellants argue that the disclosed frequency of
2,048 Hz is higher than the claimed range of about 500 to 2000 Hz (Br. 7).
As discussed supra, a prior art range need not overlap that of the claims to
create a prima facie case of obviousness where the ranges are close enough
that one skilled in the art would expect them to have the same properties (see
MPEP § 2144.05(I)). The Examiner notes that the Specification is unclear
as to how close to 2000 Hz the claimed “about” is (Ans. 13). Further, as
noted by the Examiner (and admitted by Appellants), Nielsen suggests that
lower frequencies are more easily heard in noisy background environments
(Ans. 4-5 (citing Nielsen ¶ [0326]); see also Br. 9), thus indicating that one
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of skill in the art would expect a frequency lower than the explicitly
disclosed 2048 Hz to be effective for use as an alarm signal in noisy
environments.
As further explained by the Examiner, the “choice of different
frequencies or frequency ranges . . . of an audible signaling device is a mere
design choice in the art” (Ans. 15). Appellants disagree with this contention,
arguing that a particular parameter (e.g., frequency) “‘must be recognized as
a results-effective variable . . . before the determination of the optimum or
workable ranges of said variable might be characterized as routine
experimentation’” (Br. 9 (citing In re Antonie, 559 F.2d 618; MPEP
§ 2144.05(II)(B)).
The Examiner has made a reasonable showing that the frequency (Hz)
is a result-effective variable with respect to the perceived loudness of an
audible signal. As noted by the Examiner, “Nielson’s concern is the efficacy
of the audible signal as well as the comfort of the user hearing the audible
signal,” thus, a “skilled artisan would have readily recognized the
desirability to use the right frequency . . . to produce an efficient sound, one
that is both noticeable and comfortable to a user’s hearing as suggested in
Nielsen” (Ans. 15 (citing Nielsen ¶ [0325]); see also Nielsen ¶¶ [0231],
[0326]). Absent any evidence from Appellants of criticality of the claimed
range, we find the Examiner’s position to be reasonable. See In re Applied
Materials, Inc., 692 F.3d at 1297.
Appellants have not persuaded us of error in the Examiner’s finding
that Nielsen teaches a signaling device that operates in the range “from
about 500 Hz to 2000 Hz.”
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Issue 3
Appellants further contend that the Examiner erred in finding that the
claimed frequency range and low initial intensity were merely design
choices within the knowledge of a skilled artisan and result-effective
variables with respect to optimizing the perceived loudness of the signaling
device (e.g., ensuring that the intensity of the audible signal is “at least about
48 dB at a distance of 20 feet from the signaling device” (claims 1, 26) and
that the “intensity [of the signal] decreases by no more than about 15% when
the signaling device is covered” by a standard cloth (claims 1, 16) or a
standard polyester/cotton woven fabric (claim 16)) (Br. 8-10). Appellants
argue that in order for the optimization of the frequency and intensity to be
an obvious “choice of design,” it first must be recognized as a result-
effective variable (Br. 9). In response, the Examiner points to several
sections of Nielsen which suggest to one of ordinary skill in the art that the
perceived loudness of an audible signal (e.g., the signal is noticeable and
comfortable to a user’s hearing) is affected by the frequency and intensity
thereof (see Ans. 13-16; Nielsen ¶¶ [0231], [0325]-[0327]). A “recognition
in the prior art that a property is affected by the variable is sufficient to find
the variable result-effective.” In re Applied Materials, Inc., 692 F.3d at
1297. Thus, absent any evidence from Appellants of criticality of the
claimed ranges, we find the Examiner’s position to be reasonable. See id.
Appellants further contend that it is the “combination of the claimed
intensities and frequencies [that] has been discovered by Appellants to
optimize the perceived loudness of the signaling device” and that this is not
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suggested by Nielsen (Br. 9, emphasis in original omitted, emphasis added).
However, “[t]he mere fact that multiple result-effective variables were
combined does not necessarily render their combination beyond the
capability of a person having ordinary skill in the art.” In re Applied
Materials, Inc., 692 F.3d at 1297. As discussed supra, the Examiner has
provided reasonable evidence that frequency and intensity affect the
perceived loudness of an audible signal. Appellants have not provided any
evidence that the frequency and intensity interact in any unpredictable or
unexpected manner. See id. at 1298 (“Evidence that the variables interacted
in an unpredictable or unexpected way could render the combination
nonobvious.” (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007))).
Accordingly, Appellants have not persuaded us of error in the
Examiner’s finding that the claimed frequency range and low initial intensity
were merely design choices within the knowledge of a skilled artisan and
result-effective variables with respect to optimizing the perceived loudness
of the signaling device.
Appellants have not persuaded us of error in the Examiner’s rejections
of independent claims 1, 16, or 26 under 35 U.S.C. § 103(a). Dependent
claims 3, 4, 7-15, 17-19, and 22-25 were not separately argued (Br. 5-11).
Accordingly, we sustain the Examiner’s rejections of claims 1, 3, 4, 7-19,
and 22-26.
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Dependent claims 5 and 20:
Issue 4:
Dependent claims 5 and 20 each recite the “signaling device has an
initial intensity of less than about 70 dB” (Br. 18, 20). Appellants argue the
Examiner has erred in finding that Nielsen discloses or suggests such a
signaling device (Br. 11). While we agree with Appellants that Nielsen does
not explicitly disclose a signaling device having an “initial intensity of less
than about 70 dB” as claimed, we are not persuaded by Appellants’
arguments that Nielsen does not suggest such a device. For at least the
reasons discussed supra with respect to claims 1 and 16, the Examiner has
made a reasonable showing that sound pressure intensity (dB) is a result-
effective variable with respect to the perceived loudness of an audible signal.
Absent any evidence from Appellants of criticality of the claimed range, we
find the Examiner’s position to be reasonable. Appellants have not
persuaded us of error in the Examiner’s finding that Nielsen teaches or
suggests a signaling device that operates at an intensity of “less than about
70 dB.”
Appellants have not persuaded us of error in the Examiner’s rejections
of claims 5 and 20 under 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner’s rejection of claims 5 and 20.

Dependent claims 28-30:
Issue 5:
Dependent claims 28-30 each recite the “signaling device emits an
audible signal that is at least partially at a frequency of from about 500 Hz to
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about 1000 Hz” (Br. 21). Appellants argue the Examiner has erred in
finding that Nielsen discloses or suggests such a signaling device (Br. 14).
While we agree with Appellants that Nielsen does not explicitly disclose a
signaling device having a “frequency of from about 500 Hz to about 1000
Hz” as claimed, we are not persuaded by Appellants’ arguments that Nielsen
does not suggest such a device. For at least the reasons discussed supra with
respect to claims 1, 16, and 26, the Examiner has made a reasonable
showing that frequency (Hz) is a result-effective variable with respect to the
perceived loudness of an audible signal. Absent any evidence from
Appellants of criticality of the claimed range, we find the Examiner’s
position to be reasonable. Appellants have not persuaded us of error in the
Examiner’s finding that Nielsen teaches or suggests a signaling device that
operates in the range “from about 500 Hz to about 1000 Hz.”
Appellants have not persuaded us of error in the Examiner’s rejections
of claims 28-30 under 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner’s rejection of claims 28-30.

DECISION
The decision of the Examiner to reject claims 1, 3-5, 7-20, 22-26, and
28-30 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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