Ex Parte Costello et al

Patent Trial and Appeal Board

Nov 30, 2012

10813873 (P.T.A.B. Nov. 30, 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.
10/813,873 03/31/2004 John Patrick Costello 19961 5578
23556 7590 11/30/2012
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
OSELE, MARK A
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
11/30/2012 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 PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte JOHN PATRICK COSTELLO,
JOHN JEROME SCHMID, and ERIC DONALD JOHNSON
__________

Appeal 2011-011672
Application 10/813,873
Technology Center 1700
____________

Before PETER F. KRATZ, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
14-21, and 25. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellants’ invention is directed to a method of printing graphics on
an outer cover of an absorbent article (e.g., a diaper) using non-contacting
printing (e.g., ink jet printing) and contact printing (e.g., rotogravure or
flexographic) (Spec. 2: 25-33; 3:1-10; Claims App’x claims 14 and 18).
Claims 14 and 18 are illustrative:
14. A method of printing an outer cover for an absorbent
article, comprising:
supplying a moving first substrate to a first printing
operation, the first moving substrate comprising a film;
contact printing at least one first graphic on the first
moving substrate in the first printing operation using a gravure
roll printer or flexographic printer;
laminating a second moving substrate to the first moving
substrate to form an outer cover, the second moving substrate
comprising a nonwoven web and the outer cover defining a
width;
supplying the outer cover with the first graphic to a
second printing operation on a manufacturing line for absorbent
articles, said outer cover moving at a speed of 100 feet or
greater per minute;
non-contact printing at least one second graphic on the
outer cover in the second printing operation on the
manufacturing line for absorbent articles using a wax jet printer,
ink jet printer, bubble jet printer, or laser jet printer, the first
graphic spanning at least 60% of the width of the outer cover
and being visible to the naked eye, the second graphic being
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positioned within the center third of the width of the outer cover
and being visible to the naked eye; and
joining the outer cover with an absorbent and a liner to
produce an absorbent article.
18. A method of minimizing substrate printing waste,
comprising:
supplying a moving substrate to a first converting
operation;
printing a plurality of absence advertisements on the
moving substrate using a contact printer;
supplying the moving substrate with the absence
advertisements to a second converting operation;
at least partially overprinting second graphics on at least
some of the absence advertisements using a non-contact printer,
wherein a failure to print a second graphic on an absence
advertisement results in the absence advertisement remaining
visible on the substrate.
Appellants appeal the following rejections:
1. Claims 14-17, 21, and 25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings of Masaru (JP 2000-
000266 A published Jan. 7, 2000), Travers (US 6,129,264 issued Oct.
10, 2000), Clinton (US 2004/0231539 published Nov. 25, 2004) or
Feesler (US 6,343,550 B1 issued Feb. 5, 2002), Yeo (US 5,503,076
issued Apr. 2, 1996), Machida (US 6,732,778 B1 issued May 11,
2004), and Olson (US 6,297,424 B1 issued Oct. 2, 2001).
2. Claims 18-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings of Masaru, Travers, and
Clinton or Feesler, and Odorzynski (US 2005/0149389 A1 published
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July 7, 2005) and Cammarota (US 6,307,119 B1 issued Oct. 23,
2001).

With regard to rejection (1), Appellants argue the subject matter of claim
14 only. (App. Br. 4-9). Regarding rejection (2), Appellants only argue the
subject matter of claim 18 (id. at 9-10).

REJECTION (1): Claim 14
ISSUE
Did the Examiner reversibly err in concluding that the combined
teachings of Masaru, Travers, Clinton, Feesler, Yeo, Machida and Olson
would have rendered obvious the claim 14 method of printing an outer cover
and absorbent article that includes the steps of contact printing a first graphic
over at least 60% of the width of the outer cover and non-contact printing at
least one second graphic positioned within the center third of the outer
cover? We decide this issue in the negative.

FINDINGS OF FACT & ANALYSIS
The Examiner’s rejection of claim 14 may be found on pages 4-8 of
the Answer.
Appellants argue that Masaru’s teachings that ink jet printing graphics
on absorbent articles is superior to contact printing methods (e.g.,
flexographic printing) constitutes a teaching away from using both contact
and non-contact printing steps in Masaru’s method (App. Br. 6-7).
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The Examiner responds that Masaru’s teaching to use ink jet printing
does not constitute a teaching away because Masaru teaches that ink jet
printing is a preference (Ans. 10-11).
We agree with the Examiner. While Masaru teaches that ink jet
printing provides the advantage of greater flexibility in changing the images
formed on absorbent articles over contact printing methods, such does not
discourage use of contact printing with Masaru’s method of ink jet printing.
Indeed, the Examiner finds that Travers, Clinton, and Feesler provide a
reason for including a step of contact printing in Masaru’s method of ink jet
printing, which Appellants do not specifically respond to via a Reply Brief
(Ans. 5).
Indeed, the applied prior art teaches that contact and non-contact
printing methods were known methods to print graphics on absorbent
articles. Therefore, combining a prior art contact printing method with
Masaru’s non-contact printing method appears to be nothing more than the
predictable use of a prior art printing method (i.e., contact printing)
according to its established function (i.e., printing on an absorbent article).
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellants further argue that one of ordinary skill in the art would not
look to Travers for guidance on printing absorbent article components
because, unlike the envelopes printed by Travers, the concept of having non-
variable graphics and variable graphics is inapplicable to absorbent articles
(App. Br. 7). Appellants contend that Travers and Masaru do not appreciate
the problem that Appellants have overcome: the limited use of non-contact
printing on absorbent articles at high speeds (i.e., 100 feet per second or
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greater). Id. Appellants contend that Travers does not teach the step of
contact printing a first graphic over at least 60% of the substrate width. Id.
The Examiner finds that Travers is analogous art because it is
concerned with the same problem as Appellants: printing variable and non-
variable graphics on the same substrate (Ans. 11). The Examiner further
finds that Appellants’ argument that Travers’ teachings are not relevant to
absorbent articles because absorbent articles normally have simply non-
variable graphics is undermined by Odorzynski’s teachings that variable
advertisements may be printed on the absorbent articles. Id. We agree.
We add that contrary to Appellants’ argument regarding the sole use
of non-variable graphics on absorbent articles, Masaru teaches that the
image formed by ink jet printing on absorbent articles is variable and may be
selected from an infinite variety of graphics (Masaru Translation
para. [0014]). Regarding the argument that the art does not appreciate the
problem of printing at high speeds (i.e., greater than 100 feet per second),
the Examiner relies on Machida to teach printing on absorbent articles at a
mid-portion of a manufacturing line, which is conventionally run at 100 feet
per second or greater (Ans. 6-7). Appellants do not specifically address the
Examiner’s finding regarding Machida or the combination of Machida’s
teachings with the other applied prior art (App. Br. 6-9).
Appellants’ argument regarding Travers’ failure to teach the non-
variable image covers at least 60% of the substrate width fails to appreciate
that the Examiner relies on Olson to teach such a feature (Ans. 7).
Appellants’ sole argument regarding Olson is that the patent fails to teach or
suggest that Olson’s active and inactive graphics are applied by two different
methods (App. Br. 7). However, the Examiner relies on Travers, Feesler or
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Clinton to teach using contact and non-contact printing methods to form
different images on a web of material (Ans. 5). Therefore, the Examiner
properly finds (id. at 12) that Appellants’ arguments are unpersuasive
because they improperly attack the references individually instead of
addressing what the combined teachings would have suggested to one of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants contend that the Examiner engaged in impermissible
hindsight in combining the teachings of Masaru, Travers, Clinton, Feesler,
Yeo, Machida and Olson (App. Br. 7). Appellants argue that the Examiner
has not provided a reason for modifying Masaru to arrive at the claimed
method of printing (id. at 8). Appellants contend the Examiner has not
shown that the claimed invention which includes non-contact printing at
high speeds was within the level of ordinary skill in the art based on the
teachings of the applied prior art. Id.
Contrary to Appellants’ arguments, the Examiner provides throughout
the stated rejection findings as to what each reference teaches and reasons
why one of ordinary skill in the art would have combined the teachings to
arrive at the claimed invention (Ans. 4-8). Regarding Appellants’ argument
that the Examiner has not shown that the claimed invention was within the
level of ordinary skill in the art, we note that the references themselves
establish the level of skill in the art. Okajima v. Bourdeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001). For the above noted reasons, we find that the
Examiner has established that combining the teachings of the applied prior
art to arrive at the claimed method would have been within the level of skill
of the ordinary artisan.
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On this record, we affirm the Examiner’s § 103 rejection of claims 14-
17, 21, and 25.

REJECTION (2): Claim 18
ISSUE
Did the Examiner reversibly err in finding the combined teachings of
Masaru, Travers, Clinton, Feesler, Odorzynski and Cammarota would have
suggested that “absence advertisements” may be printed on the absorbent
article? We decide this issue in the negative.

FINDINGS OF FACT & ANALYSIS
Appellants argue that the Examiner has not provided any evidence
that Odorzynski’s teaching regarding suitable graphics would have been
extended to “absence advertisements” (App. Br. 9). Appellants contend that
the “absence advertisement” is defined in the Specification as “a graphic that
conveys the message that an additional graphic is missing.” Id.
The Examiner finds that Odorzynski’s teachings of a wide variety of
advertising techniques and suggestions that other techniques are possible
would have suggested to one of ordinary skill in the art that any known
advertising technique including absence advertisements would have been
suitably used by the claimed method (Ans. 10, 12).
The preponderance of the evidence favors the Examiner’s obviousness
conclusion. Appellants’ particular definition of absence advertisement
indicates that different forms of graphics are suitable for printing on the
absorbent article. In other words, Appellants’ “absence advertisements” is a
change in the particular shape of the graphic, which does not affect the
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particular method steps in a significant way. See, In re Dailey, 357 F.2d 669
(CCPA 1966). In other words, the particular change in shape of graphic
affects the aesthetics of the image, but does not patentably distinguish the
claimed method over the method of the prior art. After all, patentability of
utility claims cannot be based on claim features which relate to
ornamentation only. In re Seid, 161 F.2d 229, 231 (CCPA 1947). “Where
the printed matter is not functionally related to the substrate, the printed
matter will not distinguish the invention from the prior art in terms of
patentability.” In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) quoting In
re Gulack, 703 F.2d 1381, 1387 (Fed. Cir. 1983). As such, we agree with
the Examiner that in light of the combined teachings, the method of claim 18
would have been obvious.
We affirm the Examiner’s § 103(a) rejection of claims 18-20 over
Masaru, Travers, Feesler, Clinton, Odorzynski and Cammarota.

DECISION
The Examiner’s decision 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.

ORDER
AFFIRMED

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