Ex Parte Zwick et alDownload PDFPatent Trial and Appeal BoardJul 22, 201613588171 (P.T.A.B. Jul. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/588,171 08/17/2012 23556 7590 07/22/2016 KIMBERLY-CLARK WORLDWIDE, INC, Patent Docketing 2300 Winchester Rd. NEENAH, WI 54956 FIRST NAMED INVENTOR Kenneth John Zwick 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. CONFIRMATION NO. 64817402US01 4281 EXAMINER VAN SELL, NATHAN L ART UNIT PAPER NUMBER 1783 MAILDATE DELIVERY MODE 07/22/2016 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 KENNETH JOHN ZWICK, PETER LEE CARSON, MICHAEL WILLIAM SMABY, GARY LEE SHANKLIN, MICHAEL JOHN REKOSKE, MIKE THOMAS GOULET, THOMAS JOSEPH DYER, AND JOHN ALEXANDER WERNER IV Appeal2015-003392 Application 13/588, 171 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1 through 20. We have jurisdiction under 35 U.S.C. § 6(b ). STATEMENT OF THE CASE Appellants' invention is directed to a creped tissue product comprising two or more tissue webs in which the basis weight of each web is greater than about 16.5 gsm, and the product has a slough of less than about 4 mg and a geometric mean tensile of less than about 1000 g/3 ". App. Br. 1. Claim 1 illustrates the subject matter on appeal and is reproduced below: Appeal2015-003392 Application 13/588, 171 1. A creped tissue product comprising two or more tissue webs, wherein the basis weight of each web is greater than about 16.5 gsm the product having a slough less than about 4 mg and a geometric mean tensile less than about 1000 g/3 ". App. Br. 6 (Claims Appendix). Appellants (see App. Br., generally) request review of the Examiner's rejection in the Final Office Action entered May 2, 2014 of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Dyer et al. (US 2008/0073045 Al, published March 27, 2008, hereinafter "Dyer"). OPINION After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner's rejection of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Dyer. We add the following for emphasis. 1 To prevail in an appeal to this Board, Appellants must adequately explain or identify reversible error in the Examiner's § 103 (a) rejection. See 37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining that even ifthe examiner had failed to make a prima facie case, it has long been the Board's practice to require an appellant to identify the alleged error in the examiner's rejection.) The Examiner finds that Dyer discloses a creped tissue product comprising two or more tissue webs in which the basis weight of each web is from about 10 gsm to about 40 gsm. Final Act. 2. The Examiner finds 1 Appellants argue claims 1-20 together. See Appeal Brief, generally. Therefore, we select claim 1 as representative of these claims, which will stand or fall with claim 1. 2 Appeal2015-003392 Application 13/588, 171 that Dyer further discloses tissue webs (base webs) having a Lint Test Value-which Dyer, at paragraph 20, indicates, corresponds to slough-of less than about 1.5 mg, which the Examiner determines would result in a slough of less than about 3 mg for a tissue product comprising two tissue webs. Id. The Examiner also finds that Dyer discloses two-ply tissue webs having a geometric mean tensile of less than about 1000 g/3 ", and finds that Dyer discloses applying an additive composition to tissue webs to improve their geometric mean tensile strength. Final Act. 3. The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of the invention to adjust the level of the additive composition to optimize the geometric mean tensile of the tissue webs, and concludes de facto that the creped tissue products and tissue webs disclosed in Dyer would have rendered the claimed creped tissue product prima facie obvious. Id. Appellants contend that the Examiner finds that Dyer inherently discloses a tissue product having a basis weight, slough, and tensile recited in claim 1, and argue that reliance on inherency in an obviousness rejection under 35 U.S.C. § 103(a) is legal error. App. Br. 2. However, as the Examiner explains in the Answer, the rejection of claim 1 is not based on inherency (Ans. 7-9), and the Examiner's findings of fact do not rely on inherent disclosures in Dyer. Final Act. 2-3. Moreover, "[t]he inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613 (Fed. Cir. 199 5). Appellants' arguments are therefore unpersuasive of reversible error. Appellants also argue, relying on the Rule 132 Declaration of inventor Kenneth Zwick submitted to the Patent Office on January 22, 2014, that 3 Appeal2015-003392 Application 13/588, 171 Dyer illustrates the state of the art for tissue products at the time of the invention in which an increase in the basis weight of the products increases the products' slough, and to counter this effect, the geometric mean tensile (GMT) of the products is increased commensurate with the increase in the basis weight (BW). App. Br. 2-3; Zwick Dec. ,-i 7. Appellants contend that this concomitant increase in both GMT and BW is reflected in the ratio of GMT to BW for prior art tissue products, as illustrated by the two inventive samples of Example 7 of Dyer, which have a GMT to BW ratio (GMT:BW) of greater than 50. App. Br. 3; Zwick Dec. ,-i 6. Appellants assert that in contrast to Dyer's products, the tissue products recited in claim 1 surprisingly exhibit low slough while having an increased basis weight without a commensurate increase in tensile, which is reflected in a GMT:BW ratio of less than 50. App. Br. 3; Zwick Dec. ,-i,-i 7-8. Appellants identify two inventive samples described in Table 7 of their Specification that have a GMT:BW ratio of less than 50, and argue that these surprising ratios are neither taught nor suggested in Dyer. App. Br. 3; Zwick Dec. ,-i 8. However, we find this argument and the Zwick Declaration to be unpersuasive of reversible error because both are based on a supposed distinction between the claimed tissue product and the tissue products disclosed in Dyer that is not recited in claim 1. Specifically, claim 1 does not require the ratio of the geometric mean tensile (GMT) to basis weight (BW) for the claimed tissue product to be less than 50. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("[A ]ppellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims.") In fact, claim 1 encompasses tissue products having a GMT to BW ratio (GMT:BW) of greater than 50, and the claim is thus not limited to tissue 4 Appeal2015-003392 Application 13/588, 171 products having a GMT:BW ratio of less than 50. Appellants and the Declarant do not explain why the limited showing of two inventive samples set forth in Table 7 of the Specification having a GMT:BW ratio of less than 50 is reasonably commensurate with the scope of the tissue products encompassed by claim 1, which does not require a ratio of less than 50. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). In addition, we agree with the Examiner that Dyer discloses multi-ply tissue products in which the basis weight of each ply is 20 gsm to 40 gsm, which is encompassed by the range of greater than about 16.5 gsm recited in claim 1. We further agree with the Examiner that Dyer discloses tissue webs having a Lint (or Slough) Test Value of less than about 1.5 mg, reasonably yielding a Lint (or Slough) Test Value of less than about 3 mg for a two-ply tissue product, which overlaps with the range of less than about 4 mg of slough recited in claim 1. The Lint Test Value corresponds to slough as Dyer, at paragraph 20, uses lint and slough interchangeably and "slough" is not described in Appellants' Specification to distinguish it from lint (Spec. 3, 11. 24-27; 13, 11. 22-27). On this record, Appellants have not identified a distinction between slough and the Lint Test Value. App. Br. 2-4. Nor have Appellants identified error in the Examiner's reliance on Figure 20 of Dyer for disclosure of two-ply tissue webs having a geometric mean tensile of less than 1000 g/3". Id. Furthermore, as discussed in paragraph 6 of the Zwick Declaration, Example 7 of Dyer discloses two-ply tissue samples having a GMT of approximately 800 g/3 ", which is encompassed by the range of less than 1000 g/3" recited in claim 1. Dyer ,-i,-i 299, 314. Accordingly, Dyer's disclosures reasonably would have suggested a creped tissue product 5 Appeal2015-003392 Application 13/588, 171 comprising two or more tissue webs in which each web has a basis weight within the range recited in claim 1, and in which the product has a slough and a geometric mean tensile that are both within the ranges recited in claim 1. In re Peterson, 315 F.3d 1325, 1329-330 (Fed. Cir. 2003) ("In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness .... "). Because Appellants do not provide persuasive evidence demonstrating the criticality of the ranges recited in claim 1 (App. Br. 2--4), we are unpersuaded of reversible error in the Examiner's rejection of this claim under 35 U.S.C. § 103(a). In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.). As indicated supra, Appellants' reliance on the ratio of the geometric mean tensile (GMT) to basis weight (BW) of less than 50 is not persuasive as such ratio is not required by claim 1. Appellants further argue that the Examiner's focus on whether it would have been obvious to adjust the amount of the additive composition disclosed in Dyer that is applied to tissue webs to achieve the claimed tissue products is misplaced and ignores Appellants' surprising results, discussed above. App. Br. 4. However, as set forth above, Appellants have not met their burden of establishing unexpected results that are reasonably commensurate with the scope of protection sought by the claims on appeal. In reKlosak, 455F.2d1077, 1080 (CCPA 1972) ("the burden of showing 6 Appeal2015-003392 Application 13/588, 171 unexpected results rests on he who asserts them"); Grasselli, 713 F.2d at 743; Clemens, 622 F.2d at 1035. Appellants' argument thus lacks persuasive merit. In addition, we note that because Dyer and the present application are both assigned to the same assignee, and because the Declarant, Kenneth Zwick, is an inventor of both the present application and Dyer, Appellants are in the best position to identify a patentable distinction between the claimed tissue products and those disclosed by Dyer. However, we find that Appellants fail to do so. Therefore, we are unpersuaded of reversible error in the Examiner's rejection of claims 1-20 under 35 U.S.C. § 103(a) as obvious over Dyer, and we accordingly sustain this rejection. ORDER For the reasons set forth above and in the Answer, the decision of the Examiner is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ). AFFIRMED 7 Copy with citationCopy as parenthetical citation