Ex Parte Warren et alDownload PDFPatent Trial and Appeal BoardSep 7, 201711059763 (P.T.A.B. Sep. 7, 2017) 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. 11/059,763 02/17/2005 Raphael Warren 8725R2RRR 8015 27752 7590 09/11/2017 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 EXAMINER VU, JAKE MINH ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 09/11/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): centraldocket. im @ pg. com pair_pg @ firsttofile. com mayer.jk @ pg. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAPHAEL WARREN and JOHN LEE HAMMONS Appeal 2016-000568 Application 11/059,763 Technology Center 1600 Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and RYAN H. FLAX, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1,2 under 35 U.S.C. § 134 involving a catamenial device. The Examiner rejected the claims as anticipated and as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as The Procter & Gamble Company (see App. Br. 1). 2 This decision is related to Appeals 2013-000867 (US 10/789,967), 2014- 001676 (US 10/262,036), 2015-001167 (US 10/992,383), and 2016-000626 (US 10/444,241). In 2010-005094, the Board affirmed the Examiner in a previous decision on the instant application, US 11/059,763. Appeal 2016-000568 Application 11/059,763 Statement of the Case Background “Disposable absorbent articles, such as diapers, training pants, and catamenial devices having lotioned topsheets are known. Lotions of various types are known to provide various skin benefits, such as prevention or treatment of diaper rash” (Spec. 1:17—19). The prior art teaches “wherein a portion of the topsheet is coated with a discontinuous film of oleaginous material. A major disadvantage of the diapers disclosed in the [prior art] is that the hydrophobic and oleophobic topsheets are slow in promoting transfer of urine to the underlying absorbent cores” (Spec. 1:30 to 2:3). The Claims Claims 1—23 are on appeal. Independent claims 1 and 13 are representative and are reproduced below. 1. A catamenial device, said device comprising: (a) a topsheet having a body facing surface, wherein said topsheet is hydrophobic and has a first portion comprising a plurality of apertures, wherein said apertures have an average open area of between 1 mm2 and 5 mm2; (b) a lotion composition applied from 50mg/in2 to about 100 mg/in2 to at least a portion of at least the body facing surface of said topsheet, said lotion composition having a level of hydrophobicity equal to or greater than that of said topsheet; (c) a backsheet joined to said topsheet; and (d) an absorbent core disposed between said topsheet and said backsheet; wherein the entirety of the body facing surface is hydrophobic. 2 Appeal 2016-000568 Application 11/059,763 13. A catamenial device, said device comprising: (a) a topsheet having a body facing surface, wherein said topsheet is hydrophobic and has a portion comprising a plurality of apertures, wherein said apertures have an average open area of between 1 mm2 and 5 mm2; (b) a lotion composition applied to at least a portion of at least the body facing surface of said topsheet, said lotion composition having a level of hydrophobicity equal to or greater than that of said topsheet, said lotion composition comprising from about 60% to about 99.9%, by weight of said lotion composition, of a carrier selected from the group consisting of petroleum-based hydrocarbons having from about 4 to about 32 carbon atoms, fatty alcohols having from about 12 to about 24 carbon atoms, lower alcohols having from about 1 to about 6 carbon atoms, low molecular weight glycols and polyols, lanolin, and mixtures thereof; (c) a backsheet joined to said topsheet; and (d) an absorbent core disposed between said topsheet and said backsheet; wherein the entirety of the body facing surface is hydrophobic. The Issues A. The Examiner rejected claims 13—20 and 23 under 35 U.S.C. § 102(b) as anticipated by Roe3 (Final Act. 2-4). B. The Examiner rejected claims 1—23 under 35 U.S.C. § 103(a) as obvious over Roe (Final Act. 4—5). 3 Roe et al., WO 99/45973 Al, published Sept. 16, 1999. 3 Appeal 2016-000568 Application 11/059,763 A. 35 U.S.C. § 102(b) over Roe The Examiner finds Roe teaches “a catamenial device, generally comprising of a liquid-pervious topsheet material, an absorbent core, and a liquid-impervious backsheet material” (Final Act. 2—3). The Examiner finds Roe teaches “a topsheet having an aperture formed film, such as Dri- Weave® (see pg. 19, 1st paragraph), which is the same topsheet as disclosed by Applicant. . . wherein the aperture allows menses to penetrate through the topsheet” {id. at 3). The Examiner finds the device may comprise Vaseline Petroleum Jelly without surfactant... or 41% of a fatty alcohol (see pg. 59, composition 1); paraffin wax; HLB value less than 4.9, which could be less than 3; 1-25% of wetting agents with HLB less than 7, such as ethoxylated sorbitan ester or ethoxylated amine ester or polyethylene glycol ester or ethoxylated alcohol; glycerine; allantoin. {Id). The Examiner finds Roe teaches an “apertured polymeric web with a diameter of 0.070 inch, which is 1.778mm, which is 2.96mm2 or about 3mm2 for an area of a circle” (Final Act. 4). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that the Roe anticipates claim 13? Findings of Fact 1. Roe teaches “feminine hygiene products . . . that incorporate a skin care composition that comprises an enzyme inhibitor, preferably on a wearer-contacting surface” (Roe 1). 2. Roe teaches: “Disposable products of this type generally comprise some sort of liquid-pervious topsheet material, an absorbent core, and a liquid-impervious backsheet material” (Roe 1). 4 Appeal 2016-000568 Application 11/059,763 3. Roe teaches “the topsheet may be in the form of an apertured formed film, which is preferred in feminine hygiene absorbent articles. . . . The preferred topsheet for use in feminine hygiene products is the formed film . . . marketed on sanitary napkins by The Procter & Gamble Company of Cincinnati, Ohio as ‘DRI-WEAVE®’” (Roe 19). 4. The Specification teaches the “topsheet 14 of the sanitary napkin can comprise an apertured formed film as is known in the art of sanitary napkins, including Dri-weave® topsheets” (Spec. 4:25—26). 5. Roe teaches “with compositions that are relatively hydrophobic and are to be applied such that regions of the topsheet are not coated with the composition, the composition is preferably applied to the article topsheet in an amount ranging from about 0.05 mg/in2 (0.0078 mg/cm2) to about 35 mg/in2 (5.43 mg/cm2)” (Roe 49). 6. Roe teaches: “Suitable petroleum-based emollients include those hydrocarbons, or mixtures of hydrocarbons, having chain lengths of from 16 to 32 carbon atoms. Petroleum based hydrocarbons having these chain lengths include mineral oil. . . and petrolatum (also known as ‘mineral wax,’ ‘petroleum jelly’ and ‘mineral jelly’)” (Roe 34). 7. The Specification teaches “suitable petroleum-based hydrocarbons having from about 4 to about 32 carbon atoms include mineral oil, petrolatum .... Petrolatum is also known as ‘mineral wax’, ‘petroleum jelly’, and ‘mineral jelly’, and usually refers to more viscous mixtures of hydrocarbons having from about 16 to about 32 carbon atoms” (Spec. 17:1— 7). 5 Appeal 2016-000568 Application 11/059,763 8. Roe teaches that the “composition will comprise from about 10 to about 95%, . . . most preferably from about 40 to about 75%, by weight, of the emollient” (Roe 37). Principles of Law A prior art reference can only anticipate a claim if it discloses all the claimed limitations ‘“arranged or combined in the same way as in the claim.’” Wm. WrigleyJr. Co. v. Cadbury Adams USALLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012). Analysis We adopt the Examiner’s findings concerning the scope and content of the prior art (Final Act. 2-A; FF 1—8), and agree that the claims are anticipated by Roe. We address Appellants’ arguments below. Appellants contend Roe does not teach or suggest a hydrophobic lotion on a hydrophobic topsheet. Roe explicitly teaches away from the combination made by the Office and gives no example teaching or suggesting the claimed limitation of a topsheet with a lotion wherein the entirety of the body facing surface is hydrophobic as required by both independent claim 1 and independent claim 13. (App. Br. 4). We find this argument unpersuasive because Roe teaches a catamenial device (FF 1) that comprises a topsheet with aperture formed film, including a preference for Dri-weave® brand (FF 3) where the Dri-weave® brand is also a topsheet preferred by the Specification (FF 4) as well as hydrophobic lotion materials (FF 6). The Examiner reasonably finds that Roe’s 6 Appeal 2016-000568 Application 11/059,763 disclosure of Dri-weave® would “read on a hydrophobic topsheet having a body facing surface” (Final Act. 3). That is, because Roe is using the identical brand of topsheet, Dri- weave®, as that of the Specification, the topsheet is reasonably understood as inherently being hydrophobic, in the absence of evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”) Roe also teaches that skin lotion materials may include petrolatum (FF 6), an identical hydrophobic component that is also disclosed by the Specification (FF 7), including preferred amounts up to 95% (FF 8). Thus, Roe teaches a catamenial device with a hydrophobic topsheet composed of Dri-weave® and a hydrophobic lotion composed of up to 95% petrolatum (FF 3, 6, 8), as well as a backsheet and absorbent core (FF 2). See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (“[A] reference need not always include an express discussion of the actual combination to anticipate. . . . Instead, a reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.”) We do not address Appellants’ teaching away arguments relative to the anticipation rejection because “[Reaching away is irrelevant to 7 Appeal 2016-000568 Application 11/059,763 anticipation.” Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005). Conclusion of Law The evidence of record support the Examiner’s conclusion that the Roe anticipates claim 13. B. 35 U.S.C. § 103(a) over Roe The Examiner relies on Roe’s teaching in the anticipation rejection, but finds Roe does not teach “applying the lotion from 50mg/in2” as recited in claim 1 (Final Act. 4). The Examiner finds Roe teaches “an amount of about 35 mg/in2” and “wherein greater add-on levels maybe obtainable” {id. 5). The Examiner finds “the amount to apply is an optimization parameter that one skilled in the art would employ and reasonably would expect success” (Ans. 6). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that the Roe renders claim 1 obvious? Findings of Fact 9. Roe teaches the “percent open area” of the topsheet is determined by (i) measuring the surface area of the topsheet that overlies the crotch region, (ii) measuring the total surface area of the untreated region(s) in this portion of the topsheet and (iii) dividing the measurement in (ii) by the measurement in (i). As used herein, “untreated” means a region of the topsheet having less than about 0.01 mg/in2 (0.0016 mg/cm2) of the 8 Appeal 2016-000568 Application 11/059,763 composition. In this regard, the percent open area may be from about 1% to about 99%. (Roe 49). 10. Roe teaches: The percent open area required to achieve the desired composition effect and the desired liquid handling properties of the topsheet will be dictated largely by the characteristics of the composition (in particular the composition’s contents and its relative hydrophobicity/hydrophilicity properties). One skilled in the art will appreciate that the desired percent open area will be readily determined through routine experimentation. (Roe 49). 11. Roe teaches that “hydrophobic skin care compositions may be utilized, so long as they are applied such that the fluid handling properties of the topsheet are adequately maintained” (Roe 42). Principles of Law “[WJhere the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). Analysis We adopt the Examiner’s findings concerning the scope and content of the prior art (Final Act. 4—5; FF 1—11), and agree that the claims are rendered obvious by Roe. We address Appellants’ arguments below. Appellants contend “claim 1 does not use the term ‘about’. The claimed range is from 50 mg/in2 to 100 mg/in2. This range is not taught or suggested by Roe” (App. Br. 3). Appellants contend “even at its broadest level, Roe states a range that is outside of Appellants’ claimed range” (App. Br. 6). 9 Appeal 2016-000568 Application 11/059,763 We find this argument unpersuasive because Roe teaches the percent open area, or area untreated by lotion composition, may be as little as 1%, and that the “relative hydrophobicity/hydrophilicity properties” may be determined by “routine experimentation” (FF 9—10). We recognize that Roe’s range of “about 0.05 mg/in2 (0.0078 mg/cm2) to about 35 mg/in2 (5.43 mg/cm2)” (FF 5) does not expressly overlap the “50mg/in2 to about 100 mg/in2” recited in claim 1, but “a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). The Examiner has evidence in Roe that the amount of lotion added is subject to routine experimentation (FF 10) and that Roe’s range is close enough that the ordinary artisan “reasonably would expect success” (Ans. 6). In contrast, Appellants provide no evidence that the difference between the range endpoint in Roe of “about 35 mg/in2” and claim 1 of “50mg/in2” are sufficiently different that a skilled artisan would expect them to have different properties. Indeed, no results demonstrating secondary considerations showing any unexpected result for this change in range has been presented, and “it is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellants contend that “Roe explicitly teaches away from the combination made by the Office and gives no example teaching or suggesting the claimed limitation of a topsheet with a lotion wherein the 10 Appeal 2016-000568 Application 11/059,763 entirety of the body facing surface is hydrophobic as required by both independent claim 1 and independent claim 13” (App. Br. 4). Appellants contend that “[w]ith regard to the hydrophilicity/hydrophobicity of the topsheet created in a finished absorbent article, Roe disclose [s] that the topsheet should be hydrophilic and teach away from the use of a hydrophobic topsheet in a finished absorbent article” (id.). We do not find the teaching away argument persuasive. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”). Even the portions of Roe cited by Appellants indicate that the topsheet may be hydrophilic, a hydrophobic material treated to be hydrophilic, or “[alternatively, the topsheet may be in the form of an apertured formed film” (see App. Br. 5, citing Roe 18—19) (emphasis added). Thus, Roe expressly contemplates an alternative to hydrophilic topsheets where the topsheet is a hydrophobic aperture formed film (FF 3). As discussed above in the anticipation context, Roe’s preferred Dri-weave® brand (FF 3) is also a topsheet preferred by the Specification (FF 4), and is reasonably understood as inherently satisfying the requirement of claim 1 for a 11 Appeal 2016-000568 Application 11/059,763 hydrophobic topsheet “wherein the entirety of the body facing surface is hydrophobic,” in the absence of rebuttal evidence presented by Appellants.4 In particular, Appellants provide no evidence that the Dri-weave® brand topsheet undergoes any treatment that renders it hydrophilic. “[Attorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We recognize, but also find unpersuasive, Appellants’ contention that “Roe clearly teach away from the combination of a hydrophobic topsheet and a hydrophobic lotion composition in an absorbent article” (App. Br. 6). Because Roe teaches both hydrophilic and hydrophobic topsheets as discussed above (FF 3) and Roe specifically teaches hydrophobic lotion components (FF 6), Appellants have not established on this record that Roe discredits or discourages the use of these components in combination. Indeed, Roe specifically teaches that “hydrophobic skin care compositions may be utilized, so long as they are applied such that the fluid handling properties of the topsheet are adequately maintained” (FF 11). Conclusion of Law The evidence of record supports the Examiner’s conclusion that the Roe renders claim 1 obvious. 4 We note that this inherency argument by the Examiner was raised at least as early as the Non-Final Action mailed July 31, 2013, and Appellants therefore have had numerous opportunities to submit evidence rebutting the Examiner’s inherency position as a matter of right, but have not done so. 12 Appeal 2016-000568 Application 11/059,763 SUMMARY In summary, we affirm the rejection of claim 13 under 35 U.S.C. § 102(b) as anticipated by Roe. Claims 14—20 and 23 fall with claim 13. We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as obvious over Roe. Claims 2—23 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 13 Copy with citationCopy as parenthetical citation