Ex Parte Farbrot et al

Board of Patent Appeals and Interferences

Feb 24, 2009

10800176 (B.P.A.I. Feb. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ANNE FARBROT and INGRID GUSTAFSSON
__________

Appeal 2008-47991
Application 10/800,1762
Technology Center 3700
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Decided:3February 24, 2009
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and FRANCISCO C.
PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

1 Oral argument in this case was heard February 11, 2009.
2 The application is assigned to SCA Hygiene Products AB, which is the real
party in interest (App. Br. 1).
3 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-4799
Application 10/800,176

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
absorbent article that includes a cross-linked polysiloxane gel. The
Examiner has rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Claims 1-18 are pending and on appeal (App. Br. 1). Claims 1 and
16, the independent claims on appeal, are representative and read as follows:
1. An absorbent article, which article is intended to be
positioned in the crotch area of a wearer and has a surface
intended during use to be in contact with skin and/or mucous
membranes and which comprises at least one absorbent body
and a carrier containing at least one additive intended to be
released from the carrier, wherein the carrier comprises a
polysiloxane gel,
wherein the polysiloxane gel is a structure in which
polysiloxanes are cross-linked and form a three-dimensional
network which is swollen in a hydrophobic substance, or a
substance where the greater part is hydrophobic, and forms an
oil gel.

16. A method of providing an additive to an absorbent article
comprising providing a polysiloxane gel with an additive and
attaching the polysiloxane gel to an absorbent article, which
article is intended to be positioned in the crotch area of a
wearer, and wherein the additive is arranged so as to be released
from the polysiloxane gel during use of the absorbent article,
wherein the polysiloxane gel is a structure in which
polysiloxanes are cross-linked and form a three-dimensional
network which is swollen in a hydrophobic substance, or a
substance where the greater part is hydrophobic, and forms an
oil gel.

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Application 10/800,176

The Examiner applies the following documents in rejecting the
claims:
Muckenfuhs US 4,934,535 Jun. 19, 1990
Roe US 5,635,191 Jun. 3, 1997
Lin US 6,168,782 B1 Jan. 2, 2001
Runeman US 6,187,990 B1 Feb. 13, 2001

The following rejections are before us for review:
Claims 1-4, 6-12, 14-16, and 18 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Roe and Lin (Ans. 3-5).
Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roe, Lin, and Runeman (Ans. 5-6).
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roe, Lin, and Muckenfuhs (Ans. 6).
OBVIOUSNESS -- ROE AND LIN
ISSUE
The Examiner finds that Roe “teaches an absorbent article (50) having
a topsheet (520) having a polysiloxane gel/lotion/emollient that functions as
a carrier for an additive such as a pharmaceutical agent or odor inhibitor”
(Ans. 3). The Examiner concedes that Roe “does not disclose expressly the
specific cross-linked three-dimension structure or hydrophobic substance”
recited in the article of claim 1 (id. at 4).
To meet that limitation, the Examiner cites Lin as teaching “cross-
linked three-dimensional gelled networks of polysiloxane, an active
ingredient such as a vitamin, and a hydrophobic substance (oil)” (id.). The
Examiner further cites Lin as teaching that the polysiloxane gels are “useful
in personal, health care applications and personal hygiene. The silicone gel
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chemically bonds to the active ingredient which provides an avenue for
entrapping vitamins personal care products and for controlling the release of
active ingredient in delivery systems” (id.).
Based on these teachings, the Examiner concludes that one of
ordinary skill in the art would have considered it obvious to “replace the
polysiloxane emollient of Roe with the elastomeric silicone of Lin in order
to provide an effective active ingredient and oil retention and delivery
mechanism” (id.). Additionally, the Examiner reasons that claim 1 “would
have been obvious because the substitution of one known element for
another would have yielded predictable results to one of ordinary skill in the
art” (id. (citing In re Fout, 675 F.2d 297 (CCPA 1982)).
Appellants contend that the Examiner’s conclusion of obviousness is
erroneous because “[o]ne skilled in the art would not substitute the
elastomeric silicon[e] of Lin for the polysiloxane emollient of Roe” (App.
Br. 4). Specifically, Appellants argue that Lin’s elastomeric silicone is a
cross-linked, relatively rigid structure that functions to deliver an additive
contained within the silicone structure to the user’s skin while the structure
stays on the article, whereas Roe’s polysiloxane compound is an emollient
that is itself transferred to the skin to provide a soothing moisturizing effect
(id.).
Thus, Appellants argue, a person of ordinary skill in the art would
have recognized that Lin’s elastomeric silicone “would function against the
principles of Roe. Further, one skilled in the art would recognize that Roe
has addressed any mobility/migration issues by requiring the key component
of an immobilizing agent. There is no problem or issue to be solved by
using the elastomeric silicone of Lin” (id. at 5).
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The Examiner responds that at least one of Roe’s embodiments
includes using a lotion to deliver additive materials such as perfumes,
antibacterial substances, or deodorants to the skin, and that substituting
Roe’s emollient with Lin’s elastomeric silicone “does not change this
functionality, even if other functions of Roe are changed. The elastomeric
silicone of Lin would still allow these materials to be transferred to the
wearer’s skin. Furthermore, Lin teaches an oil which can perform the
soothing, moisturizing and lubricated function of the emollients of Roe”
(Ans. 7).
Appellants reply that the substitution posited by the Examiner ignores
the importance of the transferability of the lotions disclosed by Roe (Reply
Br. 2).4 Moreover, Appellants urge, the oil in Lin’s article is explicitly
disclosed as not being an active ingredient, and therefore, contrary to the
Examiner’s argument, it “does not perform the soothing, moisturizing, or
lubricating function of the emollient of Roe” (id. at 3).
In view of the positions advanced by the Examiner and Appellants,
the issue with respect to this rejection is whether the Examiner erred in
concluding that one of ordinary skill in the art would have considered it
obvious to replace the polysiloxane emollient-containing lotion on the
topsheet of Roe’s diaper with the elastomeric cross-linked polysiloxane gel
of Lin.

4 This document is not paginated. We therefore refer to page numbers as if
the document was paginated consecutively beginning with the first page.

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Application 10/800,176

FINDINGS OF FACT (“FF”)
1. Roe discloses “a disposable diaper having a lotion coating on the
outer surface of the [skin-facing] topsheet that is semisolid or solid at
ambient temperatures (i.e., at 20° C.)” (Roe, col. 2, ll. 64-66).
The lotion coating “is adapted to be transferred to the wearer’s skin,
where it acts to reduce the adherence of BM [(bowel movements)] to the
skin of the wearer, thereby improving the ease of BM clean up” (id. at col. 2,
l. 67, through col. 3, l. 2).
2. Roe discloses that the lotion coating on the diaper’s topsheet has
“from about 10 to about 95% of a substantially water free emollient having a
plastic or fluid consistency at 20° C. and compris[es] a member selected
from the group consisting of petroleum-based emollients, fatty acid ester
emollients, alkyl ethoxylate emollients, polysiloxane emollients, and
mixtures thereof” (Roe, col. 3, ll. 14-20; see also col. 11, l. 43 through col.
12, l. 45).
Roe discloses that petroleum-based emollients useful in its lotion
compositions include “mineral oil (also known as ‘liquid petrolatum’) and
petrolatum (also known as ‘mineral wax,’ ‘petroleum jelly’ and ‘mineral
jelly’)” (id. at, col. 10, ll. 62-64).
3. Roe discloses:
The key active ingredient in these lotion compositions is
one or more emollients. As used herein, an emollient is a
material that softens, soothes, supples, coats, lubricates,
moisturizes, or cleanses the skin. An emollient typically
accomplishes several of these objectives such as soothing,
moisturizing, and lubricating the skin. For the purposes of the
present invention, these emollients have either a plastic or fluid
consistency at 20°C., i.e., at ambient temperatures. This
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particular emollient consistency allows the lotion composition
to impart a soft, lubricious, lotion-like feel.

(Roe, col. 10, ll. 33-42.)
4. Roe discloses that its lotion compositions “preferably have a melting
profile such that they are relatively immobile and localized on the diaper
topsheet at room temperature, are transferable to the wearer at body
temperature, and yet are not completely liquid under extreme storage
conditions” (Roe, col. 3, ll. 40-44).
5. Despite the desirability of having the lotion compositions relatively
immobile on the diaper topsheets, Roe discloses that it is important for the
lotion compositions to be “easily transferable to the skin by way of normal
contact, wearer motion, and/or body heat” (Roe, col. 3, ll. 46-47).
6. Roe discloses that immobilization of the lotion compositions on the
topsheet is achieved by including an immobilizing agent in the lotion
composition (Roe, col. 13, ll. 5-8). Specifically, Roe discloses
The immobilizing agent counteracts th[e] tendency of the
emollient to migrate or flow by keeping the emollient primarily
localized on the surface of the diaper topsheet to which the
lotion composition is applied. This is believed to be due, in
part, to the fact that the immobilizing agent raises the melting
point of the lotion composition above that of the emollient.
Since the immobilizing agent is also miscible with the emollient
(or solubilized in the emollient with the aid of an appropriate
emulsifier), it entraps the emollient on the surface of the diaper
topsheet as well.

(Roe, col. 13, ll. 23-32.)
7. Examples of suitable immobilizing agents include “C14 -C22 fatty
alcohols, C12 -C22 fatty acids, and C12 -C22 fatty alcohol ethoxylates having
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an average degree of ethoxylation ranging from 2 to about 30, and mixtures
thereof” (Roe, col. 13, ll. 50-53).
8. Roe discloses that optional components for the lotion compositions
“include water, viscosity modifiers, perfumes, disinfectant antibacterial
actives, pharmaceutical actives, film formers, deodorants, opacifiers,
astringents, solvents and the like” (Roe, col. 18, ll. 32-35).
9. Lin discloses “crosslinked three-dimensional gelled networks of
elastomeric silicones, especially elastomeric silicone polyethers, containing
an active ingredient and an oil. The compositions can be used in personal
and health care applications, personal hygiene, and household cleaning
applications” (Lin, col. 1, ll. 16-21).
10. Lin’s silicone elastomer gels are prepared by reacting the
gel-producing ingredients (the polysiloxanes, polyethers, unsaturated
hydrocarbons, and catalyst) in the presence of an oil and the active
ingredient, thereby entrapping the active ingredient in the gel matrix (see
Lin, col. 2, l. 55, through col. 3, l. 5).
11. Lin discloses that the “active ingredient” can be “any component that
is intended to furnish pharmacological activity or other direct effect in the
diagnosis, cure, mitigation, treatment, or prevention of disease, or to affect
the structure or any function of the body of man or other animals” (Lin, col.
7, ll. 24-28).
12. Lin discloses:
Some representative examples of active ingredients
including drugs, are vitamin-minerals; hormones; topical
antimicrobial agents such as antibiotic active ingredients,
antifungal active ingredients for the treatment of athlete’s foot,
jock itch, or ringworm, and acne active ingredients; astringent
active ingredients; deodorant active ingredients; wart remover
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active ingredients; corn and callus remover active ingredients;
pediculicide active ingredients for the treatment of head, pubic
(crab), and body lice; active ingredients for the control of
dandruff, seborrheic dermatitis, or psoriasis; and sunburn
prevention and treatment agents.

(Lin, col. 7, ll. 36-46.)
13. Lin discloses that the oil in its gel compositions can be a silicone
compound “such as low molecular weight linear and cyclic volatile and non-
volatile alkyl and aryl siloxanes” (Lin, col. 5, ll. 11-13), or an organic
compound, including, among a variety of other organic compounds
“petroleum hydrocarbons such as petroleum jelly [and] mineral oil” (id. at
col. 6, ll. 47-48).
14. Lin discloses that it gel compositions have a variety of applications:
The compositions according to this invention have
particular value in the personal care arena. They can be used
alone, or blended with other cosmetic ingredients, to form a
variety of personal care products.
Thus, they are useful as carriers in antiperspirants and
deodorants. They are lubricious and can improve the properties
of skin creams, skin care lotions, moisturizers, facial treatments
such as acne or wrinkle removers, personal and facial cleansers,
bath oils, perfumes, colognes, sachets, sunscreens, pre-shave
and after-shave lotions, liquid soaps, shaving soaps, and
shaving lathers. They can be used in hair shampoos, hair
conditioners, hair sprays, mousses, permanents, depilatories,
and cuticle coats, to enhance gloss, and provide conditioning
benefits.
In cosmetics, they can function as leveling and spreading
agents for pigments in make-ups, color cosmetics, foundations,
blushes, lipsticks, lip balms, eyeliners, mascaras, oil removers,
color cosmetic removers, and powders. When incorporated into
sticks, gels, lotions, aerosols, and roll-ons, the compositions can
impart a dry, silky-smooth, payout.
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In addition, the compositions exhibit other advantageous
and beneficial properties such as shelf stability and ease of
preparation. Hence, they can have wide application, but
especially in antiperspirants, deodorants, skin care products,
and for conditioning hair.
Further, the compositions have utility as additives for
cellulosic or synthetic nonwoven carrier substrates used in wet-
like cleansing wipes such as wet-wipes, tissues, and towels,
marketed generally for personal hygiene and household
cleaning tasks.

(Lin, col. 13, l. 45, through col. 14, l. 8.)
PRINCIPLES OF LAW
In proceedings before the Patent and Trademark Office,
the Examiner bears the burden of establishing a prima facie
case of obviousness based upon the prior art. “[The Examiner]
can satisfy this burden only by showing some objective
teaching in the prior art or that knowledge generally available to
one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.”

In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992) (citations omitted,
bracketed material in original).
However, “[e]xpress suggestion to substitute one equivalent for
another need not be present to render such substitution obvious.” In re Fout,
675 F.2d at 301; see also In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997)
(“Because the applicants merely substituted one element known in the art for
a known equivalent, this court affirms [the rejection for obviousness].”).
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727 (2007),
the Supreme Court emphasized the flexibility of the analysis applied under §
103, and reaffirmed the obviousness of choosing from among known
equivalent solutions to a problem:
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Application 10/800,176

When 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. In that
instance the fact that a combination was obvious to try might
show that is was obvious under § 103.

Id. at ___, 127 S. Ct. at 1742; see also 127 S. Ct. at 1740 (“[W]hen a patent
claims a structure already known in the prior art that is altered by mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”).
While it reaffirmed the obviousness of substituting equivalent
elements, and stressed the importance of a flexible approach to the
obviousness question, the Supreme Court nonetheless also noted that “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 . . . because 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, 127 S. Ct. at 1741 (emphasis added); see also id. at
1740-41 (requiring a determination of “whether there was an apparent
reason to combine the known elements in the fashion claimed by the patent
at issue”) (emphasis added).
Thus, ultimately, “[i]n determining whether obviousness is established
by combining the teachings of the prior art, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
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in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal
quotations omitted).
Also, when evaluating the references’ respective teachings, “[t]he fact
that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.” Medichem S.A. v. Rolabo S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006) (quoting Winner Int’l Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n.8, (Fed. Cir. 2000)).
ANALYSIS
We agree with Appellants that the Examiner erred in concluding that a
person of ordinary skill in the art would have considered it obvious to
replace the polysiloxane emollient-containing lotion on the topsheet of Roe’s
diaper with the elastomeric cross-linked polysiloxane gel of Lin.
Specifically, we note Lin’s disclosure that its elastomeric gel can be
used to deliver a variety of active agents to a user’s skin, including
antibacterial, pharmaceutical, deodorant, and astringent compounds (FF 11,
12), like the lotion applied to the skin-facing inner liner of Roe’s diapers (FF
8). We also note that the oil used as the fluid medium in Lin’s gels can be
mineral oil or petrolatum (FF 13), the same substances used as emollients in
Roe’s lotion (FF 2).
However, Roe discloses that a critical property of its lotion is the
capacity to be, essentially, rubbed off the diaper liner onto the wearer’s skin,
thereby enhancing subsequent cleanup (FF 1, 4, 5), as well as allowing the
emollient in the lotion to provide skin soothing, moisturizing, and
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lubricating effects (FF 3). The Examiner asserts that the oil in Lin’s gel
would provide the skin soothing effect required by Roe (Ans. 7).
We agree with the Examiner that Lin’s gel contains oils that have
emollient properties (see FF 1, 13). We also agree that Lin’s gels are
disclosed as having a lubricious skin feel (FF 14), like the lotions in Roe (FF
3).
However, the Examiner does not point to any disclosure in Lin, or for
that matter Roe, suggesting that the oil in Lin’s cross-linked gel would be
released from the gel in sufficient quantities to provide the skin lubricating
effects, much less the cleanup-enhancing properties, disclosed by Roe as
being critical to the function of its diapers. Rather, Lin discloses that its gels
are suitably applied to personal care articles, such as wipes (FF 9, 14), thus
suggesting that the gel itself is maintained on the substrate while the active
agent is delivered to the user. Lin also expressly states that its matrix
entraps the active ingredient (FF 11), a different function than the
transferability characteristics taught by Roe for its compound (FF 4, 5). We
therefore do not agree with the Examiner that a person of ordinary skill in
the art would have considered Lin’s active agent-delivering elastomeric gels
to be equivalent to Roe’s emollient lotion, for use on Roe’s diapers.
The Examiner argues that substituting Lin’s silicone gel for Roe’s
lotion does not change the active agent-delivering functionality of Roe’s
diapers, “even if other functions of Roe are changed” (Ans. 7). We are not
persuaded by this argument.
We note that the relative advantages of each reference must be
considered when considering the obviousness of a claim. However, on the
current record, the Examiner does not point to any specific evidence
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suggesting that placing Lin’s silicone gels on the skin-facing surface of
Roe’s diapers would provide the skin lubricating and cleanup enhancing
effects disclosed by Roe as being critical to the function of its diapers.
Because replacing Roe’s lotion with Lin’s gel would eliminate a critical
functionality of Roe’s diapers, we do not agree with the Examiner that a
person of ordinary skill would have been prompted to place Lin’s gel on the
skin-facing surface of Roe’s diapers, as posited by the Examiner.
In sum, independent claim 1 recites an absorbent article that includes
a cross-linked polysiloxane gel, and claim 16 recites, essentially, a method
of making that article. For the reasons discussed above, we agree with
Appellants that the Examiner failed to make a prima facie case that a person
of ordinary skill in the art would have considered that structure obvious in
view of Roe and Lin.
The Examiner does not point to any disclosure in either Runeman or
Muckenfuhs that remedies the discussed deficiencies of Roe and Lin with
respect to claims 1 and 16. We therefore reverse the Examiner’s
obviousness rejection of claims 1 and 16, as well as the obviousness
rejections of their dependent claims 2-15, 17, and 18.

REVERSED

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