Friday, November 30, 2012

Kimberly-Clark loses diaper printing case because of KSR

In Ex parte Costello, claims by Kimberly-Clark related to printing on diapers were found obvious via KSR. Some of the relevant text-->

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).

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).

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).

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.

The Board affirmed the Examiner's § 103(a) rejection.


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