Ex Parte Warren et al

Patent Trial and Appeal Board

Sep 7, 2017

11059763 (P.T.A.B. Sep. 7, 2017)

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.
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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.
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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).
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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).
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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
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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
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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
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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).
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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
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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
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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.
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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
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