Ex Parte Hoffman et alDownload PDFPatent Trial and Appeal BoardDec 1, 201613460313 (P.T.A.B. Dec. 1, 2016) Copy Citation 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”). 2 Appeal 2015-004240 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”). 3 Appeal 2015-004240 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 4 Appeal 2015-004240 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). 5 Appeal 2015-004240 Application 13/460,313 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. 6 Appeal 2015-004240 Application 13/460,313 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 7 Appeal 2015-004240 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 8 Appeal 2015-004240 Application 13/460,313 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. 9 Appeal 2015-004240 Application 13/460,313 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 10 Copy with citationCopy as parenthetical citation