Ex Parte Bruce et al

Patent Trial and Appeal Board

Apr 28, 2017

13200776 (P.T.A.B. Apr. 28, 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.
13/200,776 09/30/2011 Stephen D. Bruce TRED15.DIV 6509
141083 7590 05/02/2017
TreHeaar Pnmnratinn
EXAMINER
1100 Boulders Parkway
N. Chesterfield, VA 23225
AFTERGUT, JEFFRY H
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
ip@tredegar.com
docket @ karceskiiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN D. BRUCE
and Jeffrey A. Middlesworth
Appeal 2016-000766
Application 13/200,7761
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MARKNAGUMO, and
DEBRA L. DENNETT, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Stephen D. Bruce and Jeffrey A. Middlesworth (“Bruce”) timely
appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending
claims 5, 7—12, and 19-31. We have jurisdiction. 35 U.S.C. § 6.
We reverse.
1 The real party in interest is identified as Tredegar Film Products. (Appeal
Brief, filed 10 March 2015 (“Br”), 2.)
2 Office action mailed 9 December 2013 (“Final Rejection”; cited as “FR”).
Appeal 2016-000766
Application 13/200,776
OPINION
A. Introduction3
The subject matter on appeal relates to a method of making elastic
film laminates that are used, e.g., in the manufacture of absorbent articles
such as diapers “to provide desired fit characteristics to the article.”
(Spec. 1 [0003].) Most methods of making laminates using elastic films are
said to provide stretch in the cross direction, corresponding to the width of
the web, rather than the longer machine direction of the web.
{Id. at 2 [0004].) Conventional methods of making machine-direction elastic
laminates are said to adhere stretched elastic strands, rather than stretched
elastic films, to a pair of nonwoven fibrous webs. When the stretched
strands are allowed to relax, the nonwoven members gather and pucker,
resulting in a bulky appearance, which is said to be objectionable for use in
adult incontinence articles. {Id. at 2 [0005].) This problem can be
ameliorated by trebling the number of elastic strands, but due to difficulties
of dealing with more strands (including down-time for re-threading after
breakage) the manufacturing process is said to be more complicated, less
robust, and more costly. {Id.) Simpler and less expensive ways of providing
machine-direction elasticity in elastic laminates are thus desirable.
3 Application 13/200,776, Elastic film laminates prepared by multiple
stretching steps, filed 30 September 2011 as a division of 11/729,346,
filed 28 March 2007, now abandoned, claiming the benefit of 60/790,663
(10 April 2006). We refer to the “’776 Specification,” which we cite as
“Spec.”
2
Appeal 2016-000766
Application 13/200,776
Bruce seeks patent protection for a method comprising stretching a
specified elastic4 film by a draw ratio of at least 4:1 (i.e., stretched at
least 300%; (id. at 9,1. 5)) in the machine direction, relaxing the film,
perforating the film (to impart breathability; (id. at 8 [0028])), stretching the
film a second time to an extent less than the first stretching step (again in the
machine draw direction), laminating the stretched film to a substrate web,
and relaxing the laminate.
As illustrated in Figure 8, reproduced below, the force required during
the first extension (labeled “prestrain”) is significantly higher than during
0 50 100 150 200 250 300 350 400 450
ELONGATION {PERCENT)
(Figure 8 shows a graph of force versus elongation in subsequent cycles}
4 A material is said to be elastic if it can be stretched in at least one direction
to approximately 150% of its original dimension, and that returns to no more
than 125% of its original dimension when the tension is released.
(Spec. 6 [0024].)
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Appeal 2016-000766
Application 13/200,776
the second extension (labeled “first cycle”). However, the force required
during the third (and subsequent) extension is nearly the same as that
required during the second extension. {Id. at 14 [0046] to 15 [0049].)
This manufacturing process is said to result in improved bond strength
between the film and the nonwoven web. The Specification proposes that
this is due to lower recovery forces in the elastic film during the second and
subsequent extensions. {Id. at 10 [0034].) Moreover, the lower recovery
forces, which can be viewed as the force necessary to hold the film in a
stretch condition, are said to be advantageous when the film is used in a cut-
and-place apparatus for making diapers. {Id. at [0037].) Also, the laminate
formed by this multiple stretch process is said to have greater elongation
than a laminate made using a single stretch process. {Id. at [0036].)
Claim 5 is representative and reads:
A process of manufacturing a laminate, the process comprising
providing an elastic film comprising
a styrene/isoprene/styrene core and
one or more skin layers of a polyethylene polymer;
stretching the film in the machine direction to a 4:1 draw
ratio or greater in a first stretching step;
relaxing the film after the first stretching step;
perforating the film after relaxing the film;
stretching the film at least once more in the machine
direction less than the draw ratio after perforating the film
in a second stretching step such that
the film is stretched less in the second stretching step
than in the first stretching step;
laminating the film to at least one substrate web while the
film is stretched in the second stretching step to form a
laminate; and
4
Appeal 2016-000766
Application 13/200,776
relaxing the laminate.
(Claims App., Br. 4; some indentation, paragraphing, and emphasis added.)
Remaining independent claim 24 is somewhat more detailed, but it
recites the same requirement that “the film is stretched less in the second
stretching step than in the first stretching step.” (Claims App., Br. 6.)
The Examiner maintains the following grounds of rejection5,6:
A. Claims 5, 7—10, and 12 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
McCabe,5 6 7 Hanschen,8 and optionally Turi.9
Al. Claim 11 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of McCabe, Hanschen, optionally
Turi, and Bridges.10
A2. Claim 19-28, 30, and 31 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
5 Examiner’s Answer mailed 2 January 2015 (“Ans.”).
6 Because this application was filed before the 16 March 2013 effective date
of the America Invents Act, we refer to the pre-AIA version of the statute.
7 John A. McCabe et al., Pants type product and method of making the
same, U.S. Patent No. 8,007,484 B2 (30 August 2011), based on an
application filed 1 April 2005.
8 Thomas P. Hanschen et al., Spatially modified elastic laminates, U.S.
Patent No. 5,344,691 (1994) [Ex parte Reexamination Certificate issued
2 February 2010.]
9 Mordechai Turi and Michael Kauschke, Disposable absorbent article
having elastically contractible waist and sides, U.S. Patent
No. 6,413,249 B1 (2002).
10 Russell P. Bridges et al., U.S. Patent No. 5,518,566 (1996).
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Appeal 2016-000766
Application 13/200,776
McCabe, Hanschen, optionally Turi, and either admitted
prior art11 or Middlesworth.12
A3. Claim 29 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of McCabe, Hanschen, optionally
Turi, either admitted prior art or Middlesworth, and Bridges.
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
The Examiner finds that McCabe describes a stretching and
laminating process that differs from the claimed process in the identity of the
elastic film.13 The Examiner finds further that “McCabe clearly placed no
criticality on the restretching the assembly to 300% in the second stretching
step,” as indicated by the absence in the claims of a recitation of the amount
of stretching in that step. (FR 2,11. 10—14.) Therefore, the Examiner
reasons, due to ‘“engineering tolerances’ associated with the amount of
restretch,” a stretch of 295 or 299% would have been viewed as acceptable.
{Id. at 11. 18—21.) In the absence of criticality or unexpected results {id. at 2,
1. 21, to 3,1. 1), the Examiner “believes that McCabe satisfies the
requirement that the second stretching be less than the draw ratio stretch.”
11 Admitted prior art, Spec. 7 [0026] (intermeshing gears stretching through
nip of complementary toothed rollers).
12 Jeffrey A. Middlesworth et al., WO 2007/061486 A1 (31 May 2007).
13 McCabe does not specify the structure or composition of the film. Bruce
does not dispute that Hanschen describes an elastic film having a styrene -
isoprene-styrene core and a polyethylene skin layer. Nor does Bruce dispute
that it would have been obvious to use that film as the elastic film described
by McCabe. (FR3,11. 19-21.)
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Appeal 2016-000766
Application 13/200,776
(Id. at 3,11. 1—3.) Optionally, in the alternative, the Examiner finds that Turi
teaches stretching an elastic belt between 200 to 350% of its original length
before adhering it to an absorbent substrate. (Id. at 11. 6—13.) Thus, the
Examiner concludes, it would have been obvious to stretch the panels of
McCabe by an amount less than 300% as suggested by Turi.
As Bruce points out (Br. 5), the Examiner does not support the
argument about “engineering tolerances” with any evidence in the record.
Moreover, Bruce adds, such “tolerances” would include stretches of 301%
or 302%, that is, second stretches larger than in the first stretching step.
(Id. at para, bridging 5—6.) As Bruce argues, correctly, the mere fact that the
applied prior art could have been modified to meet a claim does not mean
that the modification would have been obvious, absent motivation to do so.
(Id. at 6,11. 16-23.)
As for Turi, Bruce urges that the teachings are limited to a stretching
of elastic belts, and have nothing to do with a second stretching following a
first stretching. (Id. at 6, last para.) Turi therefore does not add to the
teachings of McCabe regarding the ratio of the second stretching to the first
stretching. The Examiner’s response (Ans. 14—15) does not explain how this
gap is filled.
We conclude that Bruce has shown that the Examiner has not come
forward with a preponderance of the evidence demonstrating a proper reason
to modify McCabe to include a second stretching that is less than the first
stretching. The Examiner makes no findings regarding the additional
references and the additional limitations of the dependent claims that cure
this fundamental defect relating to the independent claims.
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Application 13/200,776
Accordingly, we reverse the appealed rejections.
C. Order
It is ORDERED that the rejection of claims 5, 7—12, and 19—31 is
reversed.
REVERSED
8