Ex Parte Tyrrell et al

Board of Patent Appeals and Interferences

May 2, 2007

09746888 (B.P.A.I. May. 2, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID JOHN TYRRELL, CHANTEL SPRING BUHROW,
BETH ANNE LANGE, DUANE GERALD KRZYSIK,
EARL DAVID BROCK, JAMES LOUIS CAHALL,
SAMUEL QCHENG LIN, RONNI LYNN WEINKAUF,
and UMA SANTHANAN
____________

Appeal 2007-0326
Application 09/746,888
Technology Center 3700
____________

Decided: May 2, 2007
____________

Before CHUNG K. PAK, TERRY J. OWENS, and THOMAS A. WALTZ,
Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 1-7, 10-34, 37-41, 43, 45-47,
and 49-57. The remaining claims in this application are claims 8, 9, 35, 36,
42, 44, and 48, which stand withdrawn from consideration by the Examiner
Appeal 2007-0326
Application 09/746,888

as directed to a non-elected invention (Br. 1; Final Office Action dated Nov.
1, 2002, 1). We have jurisdiction pursuant to 35 U.S.C. § 6.
According to Appellants, the invention is directed to an absorbent
article including an outer cover, a liquid permeable bodyside liner that
defines a bodyfacing surface and is connected in superposed relation to the
outer cover, an absorbent body located between the bodyside liner and the
outer cover, and a specified composition on at least a portion of the
bodyfacing surface of the bodyside liner (Br. 2). Further details of the
invention may be ascertained from illustrative independent claim 1 as
reproduced below:
1. An absorbent article comprising:

(a) an outer cover;

(b) a liquid permeable bodyside liner that defines a bodyfacing
surface and that is connected in superposed relation to the outer
cover;

(c) an absorbent body that is located between the bodyside liner
and the outer cover; and

(d) a composition on at least a portion of the bodyfacing surface
of the bodyside liner that includes from about 10 to about 90
weight percent of a hydrophilic solvent, from about 5 to about
90 percent by weight of a high molecular weight polyethylene
glycol, from about 0 to about 40 percent by weight of a C14 to
C30 fatty alcohol, from about 0 to about 40 percent by weight of
a C14 to C30 fatty acid and from about 0.1 to about 10 percent by
weight of extracted botanical active.

Appellants state that the claims do not stand or fall together and list
two groups of claims for each issue (Br. 7). To the extent Appellants have
2
Appeal 2007-0326
Application 09/746,888

presented specific, substantive arguments for the separate patentability of
any individual claim, we consider these claims separately below. See 37
C.F.R. § 1.192(c)(7)(8) (2003), in effect at the time that Appellants’ Brief
was filed.
The Examiner has relied on the following references as evidence of
obviousness:
Krzysik US 6,149,934 Nov. 21, 2000
Klofta US 6,238,682 B1 May 29, 2001
Kropf US 6,316,030 B1 Nov. 13, 2001

ISSUES ON APPEAL
Claims 1-7, 10-13, 16-20, 40, 41, 43, 45-47, 49, 50, and 52-57 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Krzysik in view of
Klofta (Answer 3).
Claims 14, 15, 21-39, and 51 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Krzysik in view of Klofta and Kropf (Answer 5).1
Appellants contend that neither Krzysik nor Klofta discloses the
claimed composition applied to a liner, and the Examiner has “picked and
choosed” the components from the two references using hindsight (Br. 8).
Appellants contend that the Examiner has not adequately stated why
one of ordinary skill would have selected particular compounds from Klofta
and combined them with the teachings of Krzysik to arrive at the claimed

1 We note that the Examiner inadvertently includes claims 35 and 36 in this
rejection, both in the Final Office Action dated Nov. 1, 2002 (page 4) and
the Answer (page 5). Both the Examiner and Appellants agree that claims
35 and 36 have been withdrawn from further consideration as directed to a
non-elected invention (Br. 1; Final Office Action dated Nov. 1, 2002, page
1; Answer 2, ¶ (3)). For purposes of this Appeal, we do not consider claims
35 and 36 as included in this rejection.
3
Appeal 2007-0326
Application 09/746,888

composition, especially since Klofta is directed to anhydrous skin lotions
having antimicrobial components for application to tissue paper (Br. 8).
Appellants contend that the Examiner has not explained why the
portion of Klofta directed to “natural essential oil antibacterial actives” reads
on the claimed “extracted botanical actives” (Br. 9).
Appellants also contend that Kropf does not contain any teaching
about using nanoscale sterols and sterol esters in compositions applied to
absorbent articles, but only teaches use in cosmetics (Br. 11).
The Examiner contends that Krzysik teaches all aspects of the claimed
invention but teaches a skin care composition that differs from the claimed
skin care composition, while Klofta teaches a skin care composition that
encompasses the claimed skin care composition that results in a “soft,
lubricious feel” (Answer 3-4).
The Examiner contends that Klofta discloses a “botanical active”
(Answer 4).
The Examiner contends that Kropf teaches inclusion of sterols in
lotion compositions “to provide a caring and protective effect and increase
the skin moisture” (Answer 5).
Accordingly, the issues in this appeal are as follows: (1) has the
Examiner established an adequate motivation to use the lotion composition
of Klofta as the applied lotion in the absorbent article disclosed by Krzysik;
(2) does Klofta disclose or teach a lotion component that “reads on” the
“extracted botanical actives” as required by the claims on appeal; and (3)
would it have been obvious to one of ordinary skill in this art to use the
sterols taught by Kropf in the lotion compositions of Klofta and Krzysik?
4
Appeal 2007-0326
Application 09/746,888

We determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence, which prima facie case has
not been adequately rebutted by Appellants’ arguments.2 Therefore, we
AFFIRM all grounds of rejection in this appeal essentially for the reasons
stated in the Answer, as well as those reasons set forth below.
OPINION
We determine the following factual findings from the record in this
appeal:
(1) Krzysik discloses an absorbent article comprising a bodyside liner,
an outer cover, an absorbent core located between the bodyside
liner and the outer cover, and the liquid permeable bodyside liner
defines a bodyfacing surface on which a lotion formulation has
been applied, where the lotion formulation comprises an emollient,
a wax, and a viscosity enhancer (Abstract; col. 2, ll. 10-30; col. 3,
ll. 12-23; col. 9, ll. 31-41; and the Answer 3-4);
(2) Krzysik desires a lotion formulation that has a reduced level of
migration, which leads to improved transfer to the wearer’s skin,
and acts as a lubricant to reduce abrasion to the skin and improve
the skin health (Abstract; col. 1, ll. 48-53; and col. 2, ll. 23-25);
(3) Krzysik teaches the inclusion of “active ingredients” in the lotion
formulation to “treat the skin” or act as a skin protectant (col. 11,
ll. 7-22); Krzysik further teaches that additional ingredients can be

2 We have also considered the Decision in related Appeal No. 2005-1186
(S.N. 09/746,872), as well as the record in related Appeal No. 2007-0042
(S.N. 09/746,880), and related U.S. Patent Nos. 6,287,581 B1 and 6,475,197
B1 (S.N. 09/382,018; see the Specification 2:13-20).
5
Appeal 2007-0326
Application 09/746,888

included in the lotion formulation, such as antimicrobial actives
and “biological additives” to enhance the performance or
consumer appeal of the product (col. 11, ll. 24-60);
(4) Klofta discloses an anhydrous lotion composition for killing
viruses and bacteria in addition to imparting a soft, lubricious
lotion-like feel when applied to tissue paper; Klofta desires a
lotion that is mild to skin, possesses a soft, lubricious feel,
provides skin benefits, acts as a protective barrier, and easily
transfers to the skin so that less lotion composition is required
(Abstract; col. 4, ll. 26-49; col. 10, ll. 6-49; and the Answer 7);
(5) Klofta teaches that these anhydrous lotions “tend to be mild to the
skin thus mitigating the potential for skin irritation;” it is desirable
to use ingredients that are as mild as possible, even more desirable
to use ingredients that might provide a skin benefit (col. 1, ll. 23-
25; and col. 2, ll. 37-40);
(6) Klofta discloses skin compositions including hydrophilic solvents,
high molecular weight polyethylene glycol, a fatty alcohol, a fatty
acid, and “natural essential oils” (Abstract; col. 4, l. 50-col. 5, l.
28; col. 10, ll. 6-49; col. 11, ll. 9-15; col. 16, l. 31-col. 27, l. 37;
and the Answer 4);
(7) Kropf teaches the “caring and protective effect” of sterols in skin
cosmetics, providing many benefits to the skin, and the improved
absorption of sterols in the form of nanoparticles (col. 1, ll. 20-62;
and the Answer 5);
6
Appeal 2007-0326
Application 09/746,888

(8) Kropf teaches the well known use of “biogenic agents” in lotions
or emollients, including such biogenics as “plant extracts” (col. 3,
ll. 32-42; and col. 7, ll. 14-19).
During prosecution before the Examiner, the claim language is given
the broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
any definitions or other description contained in the Applicants’
specification. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997). The claim language should only be limited if there is
an express disclaimer of a broader definition. See In re Bigio, 381 F.3d
1320, 1325, 72 USPQ2d 1209, 1210-11 (Fed. Cir. 2004). It is well
established that before a conclusion of obviousness may be made based on a
combination of prior art references, there must be a reason, suggestion, or
motivation to lead an inventor to combine those references. See Pro-Mold
and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629 (Fed. Cir. 1996).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness in view of the reference evidence, which
prima facie case has not been adequately rebutted by Appellants’ arguments.
We construe the claimed term “extracted botanical active” in accordance
with Appellants’ Specification, where this term is defined as “any water-
soluble or oil-soluble active extracted from a particular plant” that provides
benefits to the skin (Specification 8:4-5 and 34:23-28). We determine that
this term cannot be limited to the plant extracts exemplified by Appellants
7
Appeal 2007-0326
Application 09/746,888

(Specification 8:5-15 and 34:28-35:8) because there is no express disclaimer
of a broader definition. See Bigio, supra.
As shown by factual finding (1) listed above, we determine that
Krzysik discloses every limitation of claim 1 on appeal with the exception of
the specific lotion composition required by this claim. However, as shown
by factual finding (6) listed above, we determine that Klofta discloses a
lotion composition including the same ingredients as required by claim 1 on
appeal. In view of our claim construction discussed above, we determine
that the “natural essential oils” taught by Klofta are derived from plants,
provide benefits for the skin, and thus fall within the scope of the claimed
“extracted botanical active” (see Klofta, col. 16, ll. 31-42). Additionally, as
shown by factual findings (3) and (8) listed above, we determine that it was
well known in the skin care composition art to use plant extracts for their
beneficial effect on skin health. As shown by factual findings (2), (4), and
(5) listed above, we determine that the Examiner has established sufficient
motivation or reasons why one of ordinary skill in this art would have
substituted the lotion composition of Klofta for the lotion composition of
Krzysik, i.e., to produce the desired lubricious, mild, less irritating feel,
provide skin benefits, and promote easy transfer to the skin thus
necessitating use of a smaller amount of lotion.
As shown by factual finding (7) listed above, we determine that Kropf
teaches the many benefits of adding sterols to skin care compositions, thus
motivating one of ordinary skill in this art to add sterols to the lotion
compositions of Krzysik and Klofta.
For the foregoing reasons and those stated in the Answer, we affirm
the rejection of claims 1-7, 10-13, 16-20, 40, 41, 43, 45-47, 49, 50, and 52-
8
Appeal 2007-0326
Application 09/746,888

57 under § 103(a) over Krzysik in view of Klofta, as well as the rejection of
claims 14, 15, 21-34, 37-39, and 51 under § 103(a) over these references
further in view of Kropf.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).
AFFIRMED

sld/ls

KIMBERLY-CLARK WORLDWIDE, INC.
401 NORTH LAKE STREET
NEENAH, WI 54956
9