Ex Parte Weber et al

Patent Trial and Appeal BoardOct 17, 2012

11682518 (P.T.A.B. Oct. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SHIRLEE A. WEBER, CHRISTOPHER P. OLSON, and ANDREW M. LONG ____________________ Appeal 2010-005438 Application 11/682,518 Technology Center 3700 ____________________ Before: NEAL E. ABRAMS, CHARLES N. GREENHUT, and REMY J. VANOPHEM, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005438 Application 11/682,518 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 15. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to an absorbent article including a temperature change member. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An absorbent article having, in an unfolded, laid flat configuration of the absorbent article, a front region, a rear region, and a crotch region extending longitudinally between and interconnecting the front and rear regions, the absorbent article comprising: a liquid impermeable outercover; a liquid permeable bodyside liner; an absorbent assembly having a front portion, a rear portion, and a central portion extending longitudinally between and interconnecting the front portion and rear portion, the central portion having an opening therein to define a gap extending longitudinally between the front portion and the rear portion in the unfolded, laid flat configuration of the absorbent article; the absorbent assembly front portion being disposed intermediate the outercover and the liner in the front region of the article; the absorbent assembly rear portion being disposed intermediate the outercover and the liner in the rear region of the article; and a temperature change member containing a temperature change substance, said temperature change substance being disposed in the opening of the central portion of the assembly in the unfolded, laid flat configuration of the absorbent article. Appeal 2010-005438 Application 11/682,518 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Van Gompel Glaug Rabin Williams US 4,940,464 US 5,649,914 US 6,284,942 B1 US 6,506,958 B2 Jul. 10, 1990 Jul. 22, 1997 Sep. 4, 2001 Jan. 14, 2003 Stenberg Olson Smith US 2002/0016579 A1 US 2003/0125682 A1 US 2005/0165370 A1 Feb. 7, 2002 Jul. 3, 2003 Jul. 28, 2005 REJECTIONS Claims 1-15 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Ans. 3. Claims 1-15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rabin, Glaug , Williams, Stenberg and Smith. Ans. 4. Claims 1, 2 and 4-15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Olson and Glaug. Ans. 9. Claims 1-15 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims of copending Application Number 10/462,166 (Notice of Allowance Mailed Aug. 20, 2012) in view of Rabin and Olson. Ans. 12. Claims 1-15 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 3-15 and 17-20 of copending Application Number 11/539,267 (Notice of Abandonment Mailed Apr. 29, 2011) in view of Rabin. Ans. 13. Appeal 2010-005438 Application 11/682,518 4 OPINION The rejection of claims 1-15 under 35 U.S.C. § 112, second paragraph, as being indefinite is reversed. Regarding the rejection under 35 U.S.C. § 112, second paragraph, the Examiner takes the position that claim 1 is paradoxical because once a member is located within a “gap” or “opening” there ceases to be such a “gap” or “opening.” However, Appellants correctly point out that: One of ordinary skill in the art, when reading claims 1-15 in light of the specification, would understand that the gap/opening is defined by the distance between the front and rear portions of the absorbent assembly and that the distance does not change if the temperature change member is disposed between the front and rear portions (i.e., the presence of the gap does not depend on the presence or absence of the temperature change substance). App. Br. 5. The terms of the claim must be read in context. The “opening defining a gap,” as recited in claim 1, requires some absence of the absorbent assembly “between the [front and rear portions thereof].” See, e.g., Application figs. 2, 7. This requirement is in no way negated by the presence of a temperature change member in the opening. Accordingly, this rejection cannot be sustained. The rejections under 35 U.S.C. § 103(a) are affirmed. In arguing each of the Examiner’s rejections based on prior art Appellants only present arguments concerning independent claim 1. Thus, the dependent claims will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Regarding the rejection based on the combination of Rabin, Glaug, Williams, Stenberg and Smith, there does not appear to be any disagreement Appeal 2010-005438 Application 11/682,518 5 that the embodiment depicted in Figure 3 of Rabin discloses the basic structure defined by the claim, but with color change indicators 120, 130, 140 instead of Appellants’ temperature change member. Ans. 5; see, e.g., Application figs. 2, 7 (temperature change member 12). The Examiner correctly found that it was known in the art to use temperature change members as indicators to provide a wearer with feedback regarding wetness. See Glaug col. 2, ll. 21-31; Williams col. 1, ll. 51-53; Smith p. 1, para. [0006]; see also Spec. pp. 1-2, para. [0004]. The Examiner also correctly found that temperature change indicators were art-recognized alternatives for performing essentially the same function, albeit in a different way, as color-change indicators. See Williams col. 3, l. 59 – col. 4, l. 9, col. 4, ll. 23- 28; Stenberg pp. 1 and 2, paras. [0002], [0032]. The Examiner concluded that, because the claimed subject matter results from the pursuit of known alternatives, it would have been obvious to one having ordinary skill in the art. Ans. 6. We agree. Appellants take issue with the fact that the Examiner apparently proposed to supplement as opposed to substitute Rabin’s wetness indicator with a temperature change indicator. App. Br. 8. Appellants contend that “supplementing the color change components of Rabin with a temperature change member would render Rabin useless for one of its intended purposes. That is, the wearer would not be able to quantify the amount of urine that was discharged.” App. Br. 8. Appellants do not apprise us of, and we are unable to ascertain, the factual basis for this allegation. First, the absorption or release of heat by a temperature change wetness indicator is generally a result of dissolution, swelling, or reaction. Glaug col. 8, ll. 41-54. It is unclear why Appellants believe this response is not, like Rabin’s color Appeal 2010-005438 Application 11/682,518 6 change wetness indicator, gradational in response to the quantity of bodily fluid released. Appellants’ argument concerning the ability to wear Rabin for an entire work day (App. Br. 9) appears to be based upon a benefit of Rabin’s device perceived by Appellants as opposed to any specific disclosure in Rabin. While a visual indicator may not provide feedback to a user until a visual inspection or the completion of a wearing session, in light of the record before us, we cannot agree that one of ordinary skill in the art would understand feedback provided concurrently with an insult of bodily fluid to be undesirable. Appellants correctly point out that the inclusion of a temperature change member may affect the amount of urine available for quantifying by the color change component of Rabin. App. Br. 9. But the fact that a particular detail of construction must be worked out in order to effectuate the Examiner’s proposed combination does not demonstrate nonobviousness of that proposed combination. The fact that judgment and mechanical skill may be required to arrive at a particular combination does not necessarily mean that particular combination constitutes a nonobvious invention. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 10-12 (1966) (discussing Hotchkiss v. Greenwood, 11 How. 248 (1851)). Even if, as Appellants suggest, some of the urine used for providing a temperature change indication is unavailable for use to provide a color change indication, there is no reason why one of ordinary skill in the art could not take that into account when selecting the indicator that will be used, for example by adjusting the anticipated volume (cc) of urine reaching the color change indicators. See Rabin col. 3, l. 33 – col. 5, l. 6, col. 5, ll. 54-61. When incorporating the prior art teachings regarding temperature change indicators into Rabin’s Appeal 2010-005438 Application 11/682,518 7 device, one of ordinary skill in the art could work out the details of construction necessary to arrive at a properly functioning device. See, e.g., In re Spence, 261 F.2d 244, 246 (CCPA 1958). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973); see also In re Wood, 599 F.2d 1032, 1037 (CCPA 1979). Appellants’ final argument regarding this rejection, that there is no reason for the Examiner’s proposed combination (App. Br. 11), appears to be premised on the arguments rejected above. In any case, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). We turn next to the rejection based upon the combination of Olson and Glaug. The sole issue raised by Appellants concerning this rejection is Olson’s alleged lack of an opening defining a gap according to claim 1. App. Br. 13; Reply Br. 2. While Appellants do not appear to have fully appreciated the Examiner’s position, unlike Appellants, we discern no inconsistency in that position. Contra Reply Br. 1; cf Ans. 9 and Final Rej. 10. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). As discussed above the “opening defining a gap,” as recited in claim 1, requires some absence of the absorbent assembly “between the [front and rear portions thereof].” See, e.g., Application figs. 2, 7. While Olson’s absorbent bodies provide the wetness Appeal 2010-005438 Application 11/682,518 8 indication they are also absorbent. P. 3, para. [0032]. Appellants have not apprised us of any reason why it is unreasonable to interpret the absorbent body 55 closest to the front 33 of Olson’s pants 21 as the front portion of an absorbent assembly, and the absorbent body 55 closest to the back 35 of the pants as the rear portion, while interpreting the space occupied by all of the other absorbent bodies 55 and seams 77 as an opening defining a gap extending therebetween. We do not reach the merits of the provisional rejections. Appellants have not presented the Examiner’s double patenting rejection for our review under 37 C.F.R. §§ 41.37(c)(1)(vi) and (vii). “Once the provisional rejection has been made, there is nothing the examiner and the applicant must do until the other application issues.” In re Mott, 539 F.2d 1291, 1295-6 (CCPA 1976); see also MPEP § 804(I)1. At this time Application Number 11/539,267 appears to be abandoned. Thus, the issue of double patenting involving Application Number 11/539,267 appears to be moot. General Foods Corp. v. Studiengesellschaft Kohle, 972 F.2d 1272, 1277 (Fed. Cir. 1992)(Double patenting is a matter of what is claimed). Since we do not have the benefit of any discussion by Appellants regarding the merits of the provisional rejection based on Application Number 10/462,166, we do not reach the merits of this rejection at this time. See In re Mott, 539 F.2d at 1296 (“By making the rejection final the PTO has ‘jumped the gun[]’”). 1 “The merits of such a provisional rejection can be addressed by both the applicant and the examiner without waiting for the first patent to issue.” Appeal 2010-005438 Application 11/682,518 9 DECISION The rejection of claims 1-15 under 35 U.S.C. § 112, second paragraph, as being indefinite is reversed. The rejection of claims 1-15 under 35 U.S.C. § 103(a) as being unpatentable over Rabin, Glaug , Williams, Stenberg and Smith is affirmed. The rejection of claims 1, 2 and 4-15 under 35 U.S.C. § 103(a) as being unpatentable over Olson and Glaug is affirmed. We do not reach the merits of the provisional rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls