The Procter & Gamble Company

Patent Trials and Appeals Board

Dec 22, 2020

2020001391 (P.T.A.B. Dec. 22, 2020)

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.
15/138,267 04/26/2016 Paul Thomas Weisman 13823 3342
27752 7590 12/22/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
POLLEY, CHRISTOPHER M
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
12/22/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte PAUL THOMAS WEISMAN, HUI YANG,
ALRICK VINCENT WARNER, and
DAVID CHRISTOPHER OETJEN 1
_____________

Appeal 2020-001391
Application 15/138,267
Technology Center 1700
______________

Before TERRY J. OWENS, JOHN A. EVANS, and
BRIAN D. RANGE, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge JOHN A.
EVANS.

Opinion concurring filed by Administrative Patent Judge TERRY J.
OWENS.

Opinion dissenting filed by Administrative Patent Judge BRIAN D.
RANGE.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appeal Brief identifies The Procter & Gamble
Company of Cincinnati, Ohio, as the real party in interest. Appeal Br. 1.
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2

STATEMENT OF THE CASE

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Claims 1, 4–12, 15–17, 20–22, 25–29, 32–36,
38–45, 47–49, 51–59, and 62–71. Final Act. 1. We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b).
We REVERSE.

INVENTION
The invention is directed to homogeneous or heterogeneous polymer
foam structures having a graphic printed thereon. See Abstract. Claims 1,
12, 17, 22, 29, 36, 45, 49, 53, 59, 65, and 71 are independent. Claim 1,
reproduced below, is illustrative of the invention.
1. A heterogeneous polymeric foam structure
comprising:
a first surface and a second surface opposite the first
surface;
interconnected open-cells obtained from at least one
water-in-oil emulsion;
at least two distinct regions that differ by at least about
20% with regard to microcellular morphology; and
a graphic printed on at least one of the two distinct
regions, wherein the graphic comprises ink positioned on the
first surface; and
wherein a portion of the ink is positioned on the foam
structure at an average ink penetration depth of 500 microns or
less below the first surface.

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PRIOR ART
Name2 Reference Date
Conrad US 6,245,697 B1 June 12, 2001
Oetjen US 2008/0208154 A1 Aug. 28, 2008

REJECTION AT ISSUE3
1. Claims 1, 4–12, 15–17, 20–22, 25–29, 32–36, 38–45, 47–49, 51–59,
and 62–71 stand rejected under 35 U.S.C. § 103 as obvious over
Conrad and Oetjen. Final Act. 2–7.

ANALYSIS
We have reviewed the rejections of Claims 1, 3, 6–9, 11–13, 15–17,
20–23, and 25 in light of Appellant’s arguments that the Examiner erred. We
have considered in this Decision only those arguments Appellant actually
raised in the Briefs. Any other arguments which Appellant could have made
but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis. We

2 All citations herein to the references are by reference to the first named
inventor/author only.
3 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
June 17, 2019, the Final Office Action (“Final Act.”) mailed January 17,
2019, the Examiner’s Answer mailed September 20, 2019, and the
Specification (“Spec.”) filed April 26, 2016.
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consider Appellant’s arguments as they are presented in the Appeal Brief and
the Reply Brief.

CLAIMS 1, 4–12, 15–17, 20–22, 25–29, 32–36, 38–45,
47–49, 51–59, AND 62–71: OBVIOUSNESS OVER CONRAD AND OETJEN.
Claim 1 recites, inter alia: “wherein a portion of the ink is positioned
on the foam structure at an average ink penetration depth of 500 microns or
less below the first surface.”
The Examiner finds Conrad teaches the claimed foam material, but is
silent as to printing ink on the foam. Final Act. 2. The Examiner finds
Oetjen teaches ink printing on a film material. Id. at 3. The Examiner finds
because both Conrad and Oetjen are directed to absorbent materials,
Oetjen’s ink would be suitable to print on Conrad’s foam. Id.
Appellant contends the Examiner provides no reasoning why it would
have been obvious to modify Conrad’s foam to be printed by Oetjen’s film
printing methodology. Appeal Br. 8.
The Examiner finds it is known in the art to print on absorbent
materials and the prior art teaches both Conrad’s foam and Oetjen’s film are
absorbent. Ans. 4.
Appellant does not reply.
The Examiner finds a person of ordinary skill would find it obvious to
have the ink penetrate to 500 microns or less to avoid bleeding the ink into
another layer which would waste ink, thus costing more. Id.
Appellant further contends the Examiner provides no reason why
concerns of wasting ink make the claimed depth of printing, 500 microns or
less, obvious. Id.
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The Examiner finds Conrad teaches the foam could be less than 500
microns thick. Ans. 4. The Examiner repeats the wastage finding and finds
the claimed 500 microns or less is a large range, but that appellant has not
supported the range with data showing significance. Id.
Appellant does not reply.
The Supreme Court explained that, “inventions in most, if not all,
instances rely upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in some sense,
is already known.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Thus, “it can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in
the way the claimed new invention does.” Id. Critically, in order to “allow
effective judicial review,” the Board “is obligated to provide an
administrative record showing the evidence on which the findings are
based, accompanied by the agency’s reasoning in reaching its conclusions.”
Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 992 (2017).
We agree with Appellant (Appeal Br. 8) that the Examiner provides
no reasoning why it would have been obvious to modify Conrad’s foam to
be printed by Oetjen’s film printing methodology. We further agree that the
Examiner has not articulated reasons to limit the depth of the ink to 500
microns.
In view of the foregoing, we decline to sustain the rejection of Claims
1, 4–12, 15–17, 20–22, 25–29, 32–36, 38–45, 47–49, 51–59, and 62–71
under 35 U.S.C. § 103 over Conrad and Oetjen.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4–12,
15–17, 20–
22, 25–29,
32–36, 38–
45, 47–49,
51–59, 62–
71
103 Conrad, Oetjen 1, 4–12,
15–17, 20–
22, 25–29,
32–36, 38–
45, 47–49,
51–59, 62–
71

REVERSED

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OWENS, Administrative Patent Judge, concurring.
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Conrad discloses flexible mats for absorbing liquids for use on floors
and other surfaces (col. 2, ll. 22–23). The mats comprise at least one high
internal phase emulsion foam sheet, each typically about 0.5–5 mm thick,
and “can be patterned or printed with designs” (col. 3, ll. 49–55; col. 4,
ll. 21–25; col. 8, ll. 53–54). The mats
are very versatile and incorporate a wide variety of uses including,
protecting surfaces from water, rain, moisture, dirt, mud, bodily fluids
(including blood, mucous, feces, and the like), oil, grease,
transmission and brake fluid, and other hydrophilic or hydrophobic
liquids. These mats can be used, for example, outdoors, in shoes and
boots, in homes, garages, repair shops, automobiles, offices, vending
machine areas, kitchens, refrigerators, under defrosting foods,
restaurants, schools, surgeries, emergency rooms, athletic and fitness
facilities, showers, schools, health care facilities, in the industry. The
user benefits of mats include protection of durable surfaces, i.e., lower
frequency of professional cleaning, prevention of damage,
maintenance of appearance/function of surfaces so as to increase
useable life, large spill wipe-up, and reduction of food losses that can
be caused by contamination from leaking meats and vegetables
[(col. 4, ll. 38–55)].

Oetjen discloses (¶ 2):
Disposable absorbent articles, such as disposable diapers,
sanitary napkins, pantiliners, interlabial devices, incontinent devices,
training pants, tampons, and the like, are known in the art. Printing on
or below the top surface of an absorbent article is known in the art.
Printing to create a signal that masks stains, for example, is known.
One currently-marketed disposable absorbent article, ALWAYS®
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brand sanitary napkins, there is printed on one layer underlying the
topsheet a color signal that is visible through the topsheet. By printing
on a layer below the topsheet, the color signal can be viewed through
the topsheet to provide for a perception of depth within the absorbent
article. Depth perception of a printed color signal appears to be
particularly effective when utilized with a three-dimensional formed
film topsheet, as used on the aforementioned ALWAYS® brand
sanitary napkin.

Oetjen’s invention is “[a] method of making a web having a color signal
visible and/or a composition providing a skin health benefit thereon” (¶ 4),
comprising:
a. providing a three-dimensional, fluid pervious, polymeric
web, the web comprising a pattern of interconnecting members, the
interconnecting members defining apertures, the apertures being
defined in a first surface of the web in a first plane of the web, and
extending in sidewall portions to a second surface in a second plane of
the web;
b. providing a first colorant and/or composition providing a
skin health benefit;
c. providing a first means for depositing the first
colorant onto the polymeric web; and
d. depositing the first colorant and/or composition
on the polymeric web, the colorant and/or composition being
deposited substantially only on the second surface of the web [¶¶ 5–
8].

The Examiner concludes (Final Act. 3):
It would have been obvious to one of ordinary skill in the art to have
modified Conrad and used the ink of Oetjen to print the design of
Conrad as one of ordinary skill in the art would know that since both
Conrad and Oetjen are directed to absorbent articles, the ink of Oetjen
would be a suitable ink to print the design of Conrad.

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The Examiner does not establish that Oetjen’s disclosure of printing a
colorant or composition providing a health care benefit on an absorbent
article such as a disposable diaper, sanitary napkin, pantiliner, interlabial
device, incontinent device, training pants, or tampon would have provided
one of ordinary skill in the art with an apparent reason to use Oitjen’s
colorant ink (¶ 34) to form the pattern or printed design on Conrad’s
absorbent floor mat. The Examiner errs by considering Conrad’s floor mat
and Oetjen’s article such as a disposable diaper, sanitary napkin, pantiliner,
interlabial device, incontinent device, training pants, or tampon to be
combinable merely because they have the common characteristic of being
absorbent. Thus, the record indicates that the Examiner’s rejection is based
upon impermissible hindsight in view of the Appellant’s disclosure. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art”). Accordingly, I concur in the reversal of the rejection.

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RANGE, Administrative Patent Judge dissenting.
I respectfully differ in opinion with regard to reversal of the
Examiner’s obviousness rejection. The Board reviews appealed rejections
for error based upon the issues identified by Appellant and in light of the
arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s
practice to require an applicant to identify the alleged error in the examiner’s
rejections.”). An appeal does not “entitle an appellant to de novo review of
all aspects of a rejection.” Id. The Board need not, for example, review
“uncontested findings of fact made by the examiner underlying the
rejection.” Id. Here, as explained below, Appellant has not adequately
identified error.
With regard to claims 1 and 4–11, for example, Appellant provides a
statement of law and restatement of claim 1’s recitations before providing
one paragraph of argument specific to the Examiner’s rejection. Appeal Br.
7–8. In Appellant’s sole argumentative paragraph, Appellant first argues
that “the Examiner fails to articulate why it would have been obvious to
modify the foam of Conrad with the film printing methodology of Oetjen.”
Id. at 8.
Appellant’s argument is unpersuasive because, contrary to Appellant’s
assertion, the Examiner provides a rationale why a person of skill in the art
would have combined the references’ teachings. Final Act. 2–3; Ans. 3–5.
In particular, the Examiner finds that Conrad teaches that its absorbent foam
layer can be printed with a design. Final Act. 2. The Examiner finds that
Oetjen “discloses printing on disposable absorbent articles” using ink. Id. at
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3. The Examiner determines that it would have been obvious to one of
ordinary skill to modify Conrad with the ink of Oetjen “since both Conrad
and Oetjen are directed to absorbent articles, the ink of Oetjen would be a
suitable ink to print the design of Conrad.” Id. at 3. Appellant does not
dispute the Examiner’s findings, and Appellant does not explain why the
Examiner’s stated rationale is an insufficient explanation of reason to
combine. As such, Appellant does not adequately identify error in the
Examiner’s rejection.
Next, in the same single argumentative paragraph, Appellant argues
that “the Examiner recognizes that Conrad and Oetjen are silent to the depth
of the ink penetration, and then concludes, without more, that ‘one of
ordinary skill in the art would know that penetrating the foam too deep
would cause the ink to bleed into another layer and cost more as it would
waste ink, while not using enough ink would be cheaper but allow the color
to fade as it could rub off easily.’” Appeal Br. 8. Here, Appellant merely
summarizes the Examiner’s rejection. Appellant does not argue that the
Examiner’s findings or conclusion are incorrect. This is insufficient to
identify error.
Moreover, the Examiner expands upon why Conrad and Oetjen
suggest an ink depth of under 500 microns in the Answer. Ans. 3–5. The
Examiner finds that Conrad teaches that its foam layer may be less than 500
microns thick. Id. at 4. In this scenario, the depth of the ink would
necessarily be “positioned on the foam structure [] at an average ink
penetration depth of 500 microns or less below the first surface” as claim 1
recites. Id. at 4–5. Appellant does not dispute the Examiner’s findings or
reasoning in this regard and therefore does not identify error.
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The remainder of Appellant’s brief addresses other claims by
repeating the arguments addressed above. Appeal Br. 9–26. Those
arguments are unpersuasive for the reasons explained above.
With respect to claims reciting graphics defined by CIELab
coordinate values (for example, claim 12), Appellant also argues that “[t]he
cited combination of Conrad and Oetjen is also not understood to disclose
graphics defined by CIELab coordinate values disposed inside the boundary
described by the system of equations.” Appeal Br. 9; see also id. at 11, 17,
19. The Examiner, however, finds that Oetjen teaches that its inks can be
“primary colors, other colors and combinations of colors.” Ans. 5. The
Examiner articulates reasoning as to why it would have been obvious to
reach CIELab colors as follows:
It would have been obvious to one of ordinary skill in the art to have
modified the printed color of the modified article of Conrad and use
any ink color including colors that meet the CIELab coordinates as it
would allow for aesthetic pleasing images. Further, the choice of
printing color would be design choice. One of ordinary skill in the art
would be motivated to choose an appropriate color for many reasons
known in the art such as contrasting the color off the substrate, to hide
staining, to enhance a design or message, to create visual
representations and the like.”
Ans. 5–6. Appellant does not dispute the Examiner’s findings and does not
explain why the Examiner’s reasoning is inadequate to explain why a person
of ordinary skill in the art would have reached the claims’ recitations. As
such, Appellant’s argument does not identify error.
Because Appellant does not identify error in the Examiner’s rejection,
I would sustain the rejection. I, therefore, respectfully dissent.