Ex Parte Hoffman et al

Patent Trial and Appeal Board

Dec 1, 2016

13460313 (P.T.A.B. Dec. 1, 2016)

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.
64797106US01 7352
EXAMINER
SONG, JIANFENG
ART UNIT PAPER NUMBER
1613
MAIL DATE DELIVERY MODE
13/460,313 04/30/2012
23556 7590 12/01/2016
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI54956
Douglas R. Hoffman
12/01/2016 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 DOUGLAS R. HOFFMAN,
COREY T. CUNNINGHAM, STACY A. MUNDSCHAU,
DAVID W. KOENIG, and SHAOSHENG DONG
Appeal 2015-004240
Application 13/460,313
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving a liquid anti­
adherent formulation. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
“The liquid anti-adherent formulation described herein acts to prevent
the adherence of menses and/or fecal material to the skin in the labial and
1 Appellant identifies the Real Party in Interest as Kimberly-Clark
Worldwide, Inc. (see Br. 1).
Appeal 2015-004240
Application 13/460,313
perianal regions during and after menstruation or defecation, respectively.”
(Spec. 2:12-15).
The Claims
Claims 1 and 3—9 are on appeal. Claim 1 is representative and reads
as follows:
1. A liquid anti-adherent formulation having anti-adherent
activity comprising:
a carrier,
from about 1.5% to about 15% by weight of nonionic
acrylate co-polymer having at least one methyl methacrylate
monomer, and at least one monomer selected from
methacryloxypropyl tris(trimethylsiloxysilane), vinyl
pyrrolidinone, butyl acrylate, polydimethyl siloxane-methyl
methacrylate, and combinations thereof, wherein the nonionic
acrylate co-polymer comprises about 5% to about 55% by mole
of methyl methacrylate, about 5%[] to about 45% by mole of
butyl acrylate, and about 5% to about 80% by mole of
polydimethyl siloxane-methyl methacrylate,
wherein liquid anti-adherent formulation has a menses
leave-on percentage of less than about 6.4% after two insults.
Br. 6 (Claims Appendix).
The Issue
The Examiner rejected claims 1 and 3—9 under 35 U.S.C. § 103(a) as
obvious over Wenzel,2 Jonn,3 Hitz,4 Stueven,5 Bauer,6 and Salamone7 (Ans.
2-8).
2 Wenzel et al., US 2009/0155325 Al, June 18, 2009 (“Wenzel”).
3 Jonn et al., US 2006/0211820 Al, Sept. 21, 2006 (“Jonn”).
4 Hitz et al., US 2009/0232871 Al, Sept. 17, 2009 (“Hitz”).
5 Stueven et al., US 2010/0294988 Al, Nov. 25, 2010 (“Stueven”).
6 Bauer et al., US 2008/0241529 Al, Oct. 2, 2008 (“Bauer”).
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Application 13/460,313
The Examiner finds Wenzel teaches
an anti-adherent liquid formulation comprising about 0.01 % to
about 10% of polymethylmethacrylate (page 3, [0045] and
[0046]), water in an amount 0.1 % to 99% (page 9, [0101]) and
ethanol (page 5, [0068]) as carrier from about 1 % to 99% by
weight (page 7, [0086]) for diaper or feminine pad
(Ans. 3).
The Examiner acknowledges that Wenzel does not “teach nonionic
acrylate co-polymer having about 5% to about 55% by mole of methyl
methacrylate, and at least one monomer vinyl pyrrolidinone, about 5% to
about 45% by mole of butyl acrylate, methacryloxypropyl
tris(trimethylsiloxy)silane, and about 35% to about 80% by mole of
polydimethylsiloxane-methyl methacrylate” (Ans. 5).
The Examiner finds that Jonn, Hitz, Stueven, Bauer, and Salamone
teach specific copolymer compositions comprising the various monomers
for diaper and sanitary napkin coatings (Ans. 3—5)
The Examiner finds it obvious to combine known compositions of
polymers and that the use of different polymers is “not more than a simple
substitution of one known siloxysilane-containing copolymer for another
since Salamone et al. teaches both siloxysilane-containing copolymer for the
skin contact application” (Ans. 6; cf. Ans. 7—8 regarding Jonn, Hitz,
Stueven, and Bauer).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Wenzel, Jonn, Hitz, Stueven,
Bauer, and Salamone render claim 1 obvious?
7 Salamone et al, US 2007/0041935 Al, Feb. 22, 2007 (“Salamone”).
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Application 13/460,313
Findings of Fact
1. Wenzel teaches
the formulations of the present disclosure can be used to reduce
the adherence of body exudates to skin, mucosa, and hair, and
to promote transfer of the exudate from the body into an
absorbent article ... By reducing exudate adherence, the degree
of wicking along the body is reduced, thus improving the
effectiveness of absorbent articles, and reducing absorbent
article leakage.
(Wenzel 136).
2. Wenzel teaches “the relative amounts of such components in
the formulations of the disclosure will be dictated by the nature of the
formulation. The levels can be determined by routine experimentation in
view of the disclosure” (Wenzel 186).
3. Wenzel teaches “the formulations of the present disclosure may
advantageously comprise a coefficient of friction modulator” (Wenzel 141)
and that “the coefficient of friction modulator is selected from the group
consisting of. . . polymethacrylate; polymethylmethacylate . . . The
coefficient of friction modulator may be present in the formulation in
amounts of from about 0.01 % (by total weight of the formulation) to about
10%” (Wenzel H 45-46).
4. Wenzel teaches the “anti-adherence agent is a thermoplastic
polymer. Examples of thermoplastic polymers include
polymethylmethacrylate, methyl methacrylate crosspolymer,
ethylene/acrylate copolymer” (Wenzel 174).
5. Jonn teaches an “excellent non-stinging, nonirritating liquid
coating material for forming films which act as conformable bandages
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Application 13/460,313
adhering to and protecting . . . from abrasion, contamination, and
desiccation” (Jonn 12).
6. Jonn teaches the “coating could be used as a water repellent, yet
H20 vapor permeable, film applied to sanitary napkins, diapers, or panties . .
. other uses include forming films for use in . . . treating skin and internal
body surfaces, and providing protection to skin and other surfaces” (Jonn
144).
7. Jonn teaches
Most preferably, the siloxane-containing polymer comprises
about 50 to 60 weight percent A monomer, 25-45 weight
percent B monomer, and about 3 to 20 weight percent of C
monomer. A specifically preferred embodiment is where the
siloxane-containing polymer comprises about 50 to 60 weight
percent of 3-methacryloxypropyl tris(trimethylsiloxy)silane,
about 25 to 45 weight percent methyl methacrylate, and about 3
to 20 weight percent of a monomer selected from C7-C10
straight chain or branched alkyl acylates.
(Jonn 129).
8. Jonn teaches for “example, the polymer may comprise 57% 3-
methacryloyloxypropyl tris(trimethylsiloxy)silane, 39% methyl
methacrylate, 2% isooctyl acrylate and 2% decyl acrylate” (Jonn 130).
9. Hitz teaches “[sjynthetic polymers are widely used in
biomedical applications as well as in other articles that come into contact
with human skin or tissues, including clothing” that may include “diapers,
tampons” (Hitz H 2 and 38).
10. Hitz teaches copolymers of “methyl methacrylate, vinyl
pyrrolidone and hydroxyethylmethacrylate” (Hitz 11, claim 7).
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11. Stueven teaches “water-absorbing polymer are used to produce
diapers, tampons, sanitary napkins and other hygiene articles” (Stueven 13).
12. Stueven teaches “copolymers of methyl methacrylate and n-
butyl acrylate or 2-ethylhexyl acrylate” (Stueven 125).
13. Bauer teaches adhesive polymers for “diapers, hospital hygiene
articles, feminine hygiene articles” (Bauer 128).
14. Bauer teaches “[sjuitable acrylate resins are . . . alkyl esters of
acrylic acid . . . n-butyl acrylate, isobutyl acrylate . . . 2-ethylhexyl acrylate
. . . methyl methacrylate” (Bauer 1 122).
15. Salamone teaches a polymer material that “forms a coating or
bandage when applied to a surface or the skin of a user” (Salamone 110).
16. Salamone teaches “when a siloxysilane-containing polymer is
present, the siloxysilane-containing polymer comprises at least one vinyl-
containing siloxysilane monomer . . . siloxysilane monomers according to
claim 5 comprise at least one of: 3-methacryloyloxypropyltris
(trimethylsiloxy)silane . . . polydimethylsiloxane monomethacrylate”
(Salamone 13—15 and 42).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If aperson of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
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Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2—8; FF 1—16) and agree that the
claims are obvious over Wenzel, Jonn, Hitz, Stueven, Bauer, and Salamone.
We address Appellants’ arguments below.
Claim 1
Appellants contend
the particular ratios of the methyl methacrylate, butyl acrylate,
methacryloxypropyl tris(trimethylsiloxysilane), and of
polydimethyl siloxane-methyl methacrylate is important and
critical to the function of the formulation. As illustrated in
table 2 and 3, the particular ratios of the monomers in the non­
ionic polymer leads to more effectively repelling menses. In
particular, the ratios claims in claim 1 lead to a menses leave-on
percentage of less than 6.4%.
(Br. 4).
We find this argument unpersuasive because claim 1 includes no
specific ratio requirements for the formulation. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“[AJppellanf s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.”).
Indeed, as the Examiner points out, widely different ratios are demonstrated
in the Specification (see Ans. 9-10; Spec. 14—16) and claim 1 itself permits
ranges of methyl methacrylate:butyl acrylate:polydimethyl siloxane-methyl
methacrylate of 5%:5%:80% (1:1:16) to 55%:5%:5% (11:1:1) to
5%:45%:5% (1:9:1) and multiple variations in between.
As the Examiner points out, Appellants evidence regarding the leave-
on percentage does not demonstrate that ratios outside of those claimed fail
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Application 13/460,313
to achieve the requirement for a “leave-on percentage of less than about
6.4% after two insults” required by claim 1 because Appellants “have not
shown sufficient number of tests both inside and outside the claimed range”
(Ans. 9). In fact, Appellants do not clearly identify any compositions from
outside the range that were tested, much less specific ratios that were critical
in achieving the required “leave-on percentage”.
Moreover, given Wenzel’s specific teaching of copolymer
formulations to reduce adherence (FF 1) and express teaching that the
relative amounts of components may be determined by routine
experimentation (FF 2), as well as the teachings in the prior art that the
amounts of polymers may vary within percentage ranges (FF 3, 4, 7), the
evidence supports a finding that the particular ranges in claim 1 represent
routine optimization in the absence of any comparative evidence
demonstrating unexpected results or another secondary consideration.
Appellants contend:
Despite teaching for use in a diaper article, Bauer simply does
not teach use of formulations in an absorbent article for
repelling menses. One skilled in the art would not expect to
add components from an adhesive and sealing material to an
anti-adherent to achieve a result of repelling menses. As a
result, there is no motivation to add the carbon black pigment­
less dye compositions of Bauer to Wenzel, Jonn, Hiltz and
Steuven.
(Br. 4).
We do not find this argument persuasive because, as the Examiner
notes, Bauer is relied upon for a “suitable ratio of butyl acrylate to methyl
methacrylate” (Ans. 11; FF 14; cf Ans. 4) in forming a copolymer. Stueven
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also teaches the use of copolymers of butyl acrylate and methyl methacrylate
in diapers and tampons (FF 11—12).
Importantly, Bauer also recognizes that different acrylate polymers
are known equivalents, reciting the methyl methacrylate and acrylate
monomers used by Wenzel in adherent compositions (FF 4). Appellants
provide no evidence demonstrating that selection of a known equivalent
polymer taught by Bauer for use in the anti-adherent composition of Wenzel
would have been unobvious. An “[ejxpress suggestion to substitute one
equivalent for another need not be present to render such substitution
obvious.” In re Font, 675 F.2d 291, 301 (CCPA 1982). As noted by the
Court in KSR, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” 550 U.S. at 421.
As already noted, Wenzel evidences that routine experimentation
regarding amounts of known polymers was evident to the ordinary artisan
(FF 2), and Appellants provide no evidence that the use of the particular
polymer ratios provided any secondary consideration when compared to the
closest prior art of Wenzel. See In re Baxter Travenol Labs., 952 F.2d 388,
392 (Fed. Cir. 1991) (“when unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”).
Conclusion of Law
The evidence of record support the Examiner’s conclusion that
Wenzel, Jonn, Hitz, Stueven, Bauer, and Salamone render claim 1 obvious.
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SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Wenzel, Jonn, Hitz, Stueven, Bauer, and Salamone
Claims 3—9 fall with claim 1.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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