Ex Parte Zhou et al

Patent Trials and Appeals Board

Jun 28, 2019

12267806 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/267,806 11/10/2008
45736 7590 07/02/2019
Christopher M. Goff (27839)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Peiguang Zhou
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
ATTORNEY DOCKET NO.
64394441US01
(27839-2995)
CONFIRMATION NO.
6928
EXAMINER
DITMER, KATHRYN ELIZABETH
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
07/02/2019 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):
uspatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PEIGUANG ZHOU, SCOTT W. WENZEL,
LISHA YU, and COREY CUNNINGHAM
Appeal2017-003658
Application 12/267,806
Technology Center 3700
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peiguang Zhou et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1, 2, 7-10, 13, 14, 19-22, 24,
27-29, and 31-34, which are all the pending claims. Appeal Br. 1-2. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
According to Appellants, the real party in interest is Kimberly-Clark
Worldwide, Inc. Appeal Br. 1.
Appeal2017-003658
Application 12/267,806
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "relates generally to improved skin-
adhesive compositions for bonding a substrate, such as an absorbent article,
to skin," and, more particularly, to a "skin-adhesive composition [that] has
an improved, yet gentle, adhesion to the skin of a user." Spec. ,r 1. Claims 1
and 13 are independent. Claim 1, reproduced below with emphasis and line
breaks added for clarity, is illustrative of the subject matter on appeal.
1. A skin-adhesive composition for bonding a substrate to
the skin, the adhesive composition comprising[:]
an acrylate-based adhesive and an adhesion modifier,
wherein the adhesion modifier is present in an amount of
from about 5% (by total weight of the composition) to about
15% (by total weight of the composition),
wherein the adhesion modifier is selected from the group
consisting of silica gel, allyl methacrylates crosspolymer, allyl
methacrylate/glycol dimethacrylate crosspolymer, and lauryl
methacrylate/glycol dimethacrylate crosspolymer,
wherein the adhesive composition is substantially free of
a solvent, and
wherein the adhesive composition has a peel strength of
the adhesive composition to skin of from about 20 grams per
inch to about 5 00 grams per inch and a peel strength of the
adhesive composition to the substrate of from about 800 grams
per inch to about 15 00 grams per inch.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Zaffaroni
Asmus
Roos
us 3,731,683
us 5,369,155
us 5,554,381
2
May 8, 1973
Nov. 29, 1994
Sept. 10, 1996
Appeal2017-003658
Application 12/267,806
Sojka US 6,491,953 B 1 Dec. 10, 2002
Zhu US 2003/0044380 Al Mar. 6, 2003
Zhou US 6,657,009 B2 Dec. 2, 2003
Burton US 2004/0133143 Al July 8, 2004
Husemann US 2006/0205835 Al Sept. 14, 2006
Houze US 2006/0240087 Al Oct. 26, 2006
Martens US 2007 /0275068 Al Nov. 29, 2007
REJECTIONS
The following rejections are before us for review:
I. Claims 1 and 2 stand rejected under 35 U.S.C. § I02(b) as
anticipated by or, in the alternative, under 35 U.S.C. § I03(a) as
being unpatentable over Roos. Final Act. 3-5.
II. Claims 1, 2, 7-10, 27-29, and 33 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Zaffaroni, Sojka,
Asmus, and Zhou. Id. at 6-15.
III. Claims 13, 14, 19-22, 24, 31, 32, and 34 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Burton in view
of Zaffaroni, Sojka, Asmus, and Zhou. Id. at 15-18.
IV. Claims 1, 2, 7-10, 13, 14, 19-22, 24, 27, 28, and 31-34 stand
rejected under 35 U.S.C. § I03(a) as being unpatentable over
Zhu and Sojka. Id. at 19-25.
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Application 12/267,806
ANALYSIS
New Ground of Rejection
Claims 1, 2, 7-10, 13, 14, 19-22, 24, 27-29, and 31-34 as indefinite
All the claims recite, in relevant part, a skin-adhesive composition for
bonding a substrate to skin, presumably human skin, where the composition
includes "an acrylate-based adhesive and an adhesion modifier," where the
adhesion modifier is selected from a closed group of possibilities and is
present in a range of total weight of the composition of from about 5% to
about 15%. See Appeal Br., Claims App. The overall adhesive composition
is "substantially free of a solvent," and is stated to have different peel
strengths for separation from different surfaces-namely a relatively low
peel strength from a user's skin (from about 20 grams per inch to about
500 grams per inch) and a relatively high peel strength from a substrate
(from about 800 grams per inch to about 1500 grams per inch). See id.
The Examiner makes sufficiently supported findings that the cited art
discloses compositions that include the recited constituent components
within the claimed ranges, and that are substantially free of a solvent. See
Final Act. 3--4, 6-11, 19-22. The Examiner also reasons that the known
compositions would either have the recited peel strengths, by virtue of being
the same composition as recited, or could be adjusted or optimized as
necessary to have the recited peel strengths as an obvious modification in
order to yield the logical benefits of a composition that would have a
relatively low peel strength from a user's skin ("in order to provide a
composition with enough peel strength to maintain contact with the skin in
use, while still being easy to remove without pain or dermal trauma after
use" (id. at 10)) and a relatively high peel strength from a substrate ("in
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Application 12/267,806
order to assure/enhance the integrity or strength of the bond between the two
components ... such that the adhesive will not delaminate from the substrate
in use, which could result in undesirable residue being left on the skin" (id.
at 11)).
Appellants argue asserted distinctions between the cited references
individually, rather than as combined by the Examiner. See, e.g., Appeal
Br. 8-10. More importantly, Appellants assert that the combination of cited
references does not necessarily suggest a composition that would have peel
strengths in the ranges recited. See id. at 10-13.
Underlying Appellants' assertions is a position that not every
composition that includes the structural recitations of the claims (namely, the
constituent component parts, mixed within the recited ratio, and being
substantially free of a solvent) would necessarily also possess the functional
recitations of the claims (the different relative peel strengths). Thus, a
critical issue identified by Appellants' position centers on what specific
structural features, if any, would be required for a composition to have peel
strengths within these recited ranges.
Resolution of this issue, however, is not possible on the record before
us because Appellants do not identify what specific structures ( apart from
including the constituent component parts, mixed within the recited ratio,
and being substantially free of a solvent) would be required to achieve these
functional recitations. Although it may be possible that these functions may
imply some structural requirements of the composition, the problem here is
that Appellants do not direct us to anything in the record, let alone in the
claims themselves, that would specifically identify what these structural
features might be.
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Application 12/267,806
For example, achieving these functional recitations of the relative peel
strengths claimed may depend on a particular amount or volume of the
adhesive composition used in bonding a substrate to skin, which is not
recited in the claims. Further, the recited ranges of peel strength between the
adhesive composition and a "substrate," and between the adhesive
composition and "skin" will depend at least in part on specific details of both
the substrate and the skin, neither of which are recited in the claims. 2 As an
example, Appellants' Specification contemplates many possible substrates,
such as absorbent articles, masks, gloves, or even human skin (see, e.g.,
Spec. ,r 25), all of which may adhere to the composition somewhat
differently. Likewise, skin (presumably human skin, though the claim does
not specify) has a multitude of variables (e.g., age, body area, body hair,
elasticity, moisture level), all of which affect adhesion to the composition
and peel strength of something adhered thereto.
We appreciate that the Specification describes a testing protocol to
measure peel strength. See Spec. ,r,r 32-36. However, the claims do not
require application of this particular testing protocol. Further, the testing
protocol does not specify how substrate and skin samples are chosen to be
tested, or how the substrate and the skin are prepared prior to the testing.
Also, the testing protocol supports our finding that the peel strength of an
adhesive composition to skin may vary depending on the skin sample at
2 If the claims are truly intended to encompass an adhesive composition
for bonding any substrate to any skin, as presently recited, both Appellants
and the Examiner may wish to consider whether such breadth of the claims
is adequately supported by the written description, or is commensurate in
scope with the enabling disclosure, both of which are required by 35 U.S.C.
§ 112, first paragraph.
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Application 12/267,806
issue, in that the Specification indicates "in this case" (i.e., as one example)
the inventors looked at "the underside of a forearm without hair," implying
that other skin samples may behave differently when tested. Id. ,r 34.
Stated another way, because we are unable to determine the scope of
what specific structures might be implied by the functional recitations as to
peel strengths between any skin and any substrate as claimed ( apart from
including the constituent component parts, mixed within the recited ratio,
and being substantially free of a solvent, which the prior art discloses), the
claims are indefinite for failing to particularly point out and distinctly claim
the subject matter which Appellants regard as the invention. This inability
to determine the claim scope pervades all the claims.
Accordingly, we enter a new ground of rejection for claims 1, 2, 7-10,
13, 14, 19-22, 24, 27-29, and 31-34 pursuant to 37 C.F.R. § 4I.50(b).
Claims 1, 2, 7-10, 13, 14, 19-22, 24, 27-29, and 31-34 are rejected under
35 U.S.C. § 112, second paragraph, as being indefinite.
The essence of the requirement under 35 U.S.C. § 112, second
paragraph, that the claims must be definite, is that the language of the claims
must provide clarity to those skilled in the art regarding the scope of the
subject matter which the claims encompass. See In re Hammack, 427 F.2d
1378 (CCPA 1970). A claim is indefinite when it contains words or phrases
whose meaning is unclear to a person of ordinary skill in the art. Ex parte
McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *2---6 (PTAB
Aug. 25, 2017) (precedential); Ex parte Miyazaki, Appeal No. 2007-3300,
2008 WL 5105055, at *4 (BP AI Nov. 19, 2008) (precedential) ("[t]he test
for definiteness under 35 U.S.C. § 112, second paragraph, is whether 'those
skilled in the art would understand what is claimed when the claim is read in
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Application 12/267,806
light of the specification'") (quoting Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)).
Notwithstanding the permissible instances of including functional
recitations in a claim for a composition, the use of functional recitations may
fail "to provide a clear-cut indication of the scope of the subject matter
embraced by the claim," and thus be indefinite. In re Swinehart, 439 F.2d
210,213 (CCPA 1971). Such is the case here. When a claim merely recites
a function or result to be achieved by the underlying recited structural
elements-here, the peel strengths of the composition-the boundaries of
the claim scope may be unclear. See Halliburton Energy Servs., Inc. v. M-I
LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that the Supreme Court
has explained that a vice of functional claiming occurs "when the inventor is
painstaking when he recites what has already been seen, and then uses
conveniently functional language at the exact point of novelty") ( quoting
General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)).
Here, Appellants urge that some structural distinction between the
claimed composition and the known compositions must be present, as not all
such compositions would include the recited peel strengths, but they do not
identify with clarity what such a structural distinction would be. Although
Appellants point to portions of their disclosure to indicate testing data of
various examples that fell both inside and outside of the recited ranges, any
such details ( again, apart from including the constituent component parts,
mixed within the recited ratio, and being substantially free of a solvent,
which the prior art discloses) are conspicuously absent from the claims
themselves. See Appeal Br. 14--19; see id., Claims App. As stated by our
reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998),
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Application 12/267,806
"the name of the game is the claim." It is well established that limitations
not appearing in the claim cannot be relied upon for patentability. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982). Thus, although the claims are
interpreted in light of the specification, limitations from the specification are
not read into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
To the extent that Appellants endeavor to rely on some structural
distinction of the composition itself that would be implied by the functional
recitations of peel strength, it is only fair-both to the Examiner and to the
public-that Appellants clearly delineate, either by express language in the
claims themselves or by citation to evidence in the record, the precise scope
encompassed by the claims. Appellants do not direct us to any such
delineation; absent which, we are not in a position to speculate as to what
specific structural features of the composition may be imparted by the
function recitations of the peel strengths (particularly, beyond what the
Examiner has already indicated is known in the art). Unless and until a
person of ordinary skill in the art reading the claim is able to ascertain with
reasonable certainty what the asserted structural features of the composition
implied by these functional recitations may be, the scope of the claims is
unclear because it lacks sufficient precision to permit one endeavoring to
practice the invention to adequately determine the metes and bounds thereof.
In light of the above, we conclude that claims 1, 2, 7-10, 13, 14,
19-22, 24, 27-29, and 31-34 are indefinite under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention.
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Re} ections I-IV
Claims 1 and 2 as anticipated by or, in the alternative,
as unpatentable over Roos
Claims 1, 2, 7-10, 27-29, and 33 as unpatentable over
Zaffaroni, Sojka, Asmus, and Zhou
Claims 13, 14, 19-22, 24, 31, 32, and 34 as unpatentable over
Burton in view ofZaffaroni, Sojka, Asmus, and Zhou
Claims 1, 2, 7-10, 13, 14, 19-22, 24, 27, 28, and 31-34 as unpatentable
over Zhu and Sojka
We do not sustain the Examiner's rejections of claims 1, 2, 7-10, 13,
14, 19-22, 24, 27-29, and 31-34 under 35 U.S.C. § 102(b) or§ 103(a). For
the reasons explained in detail above, the claims are indefinite. Before a
proper review of these rejections can be performed, the subject matter
encompassed by the claims on appeal must be reasonably understood
without resort to speculation. Therefore, since the claims fail to satisfy the
requirements of the second paragraph of 35 U.S.C. § 112, we are constrained
to reverse, proforma, the prior art rejections because they necessarily are
based on speculative assumptions as to the scope of the claims. See In re
Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in
affirming a rejection of indefinite claims because the rejection was based on
speculative assumptions as to the meaning of the claims).
We emphasize, however, that our decision in this regard is based
solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejections. As discussed above, the Examiner has cited prior art that
discloses compositions including the recited constituent component parts,
mixed in ratios within the claimed range, and being substantially free of a
solvent, which are determined either to have or to be adjustable/optimizable
to have the recited peel strengths as an obvious modification in order to yield
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the logical benefits of a composition that would have a relatively low peel
strength from a user's skin. Appellants' arguments do not apprise us of error
in these findings or determinations.
DECISION
We ENTER A NEW GROUND OF REJECTION of claims 1, 2,
7-10, 13, 14, 19-22, 24, 27-29, and 31-34 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
We REVERSE the Examiner's decision rejecting claims 1 and 2
under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as being unpatentable over Roos.
We REVERSE the Examiner's decision rejecting claims 1, 2, 7-10,
27-29, and 33 under 35 U.S.C. § 103(a) as being unpatentable over
Zaffaroni, Sojka, Asmus, and Zhou.
We REVERSE the Examiner's decision rejecting claims 13, 14,
19-22, 24, 31, 32, and 34 under 35 U.S.C. § 103(a) as being unpatentable
over Burton in view of Zaffaroni, Sojka, Asmus, and Zhou.
We REVERSE the Examiner's decision rejecting claims 1, 2, 7-10,
13, 14, 19-22, 24, 27, 28, and 31-34 under 35 U.S.C. § 103(a) as being
unpatentable over Zhu and Sojka.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
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Application 12/267,806
37 C.F.R. § 4I.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 4I.50(b)
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