Ex Parte Chen et al

Board of Patent Appeals and Interferences

Jan 7, 2009

10321831 (B.P.A.I. Jan. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FUNG-JOU CHEN,
JEFFREY D. LINDSAY, JULIE BEDNARZ,
and PEIGUANG ZHOU
____________

Appeal 2008-5803
Application 10/321,8311
Technology Center 1700
____________

Decided: January 07, 2009
____________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

1 Application 10/321,831, Meltblown Scrubbing Product, filed
17 December 2002. The Specification is referred to as the
“831 Specification,” and is cited as “Spec.” The real party in interest is
listed as Kimberly-Clark Worldwide, Inc. (Supplemental Brief on Appeal,
filed 7 February 2008 (“Br.”), 1.)

Appeal 2008-5803
Application 10/321,831

DECISION ON APPEAL
A. Introduction
Fung-Jou Chen, Jeffrey D. Lindsay, Julie Bednarz, and Peiguang
Zhou (“Chen”) timely appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-33, 35-41, 43-48, 50-55, 57-98, 100-112, and 114-131.
The only other pending claims are claims 42, 49, and 99, which have been
withdrawn from consideration and are not before us. We have jurisdiction
under 35 U.S.C. § 6(a). We AFFIRM-IN-PART.
The subject matter on appeal relates to abrasive webs in combination
with cellulosic webs or certain additives. The webs are said to be useful as
abrasive cleaning products.
Claims 1, 32, and 88 are representative. We reproduce the disputed
parts of the claims below:
Claim 1
An abrasive cleaning product comprising:
a scrubbing pad including an abrasive layer and an
absorbent layer
said abrasive layer defining an outer surface of the
scrubbing pad,
* * * *
said absorbent layer comprising a fibrous cellulosic web.
(Claims App., Br. 17; paragraphing and indentation added; the elided text
recites limitations relating to the aggregate fibers that Chen has not
disputed.)
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Claim 32
A meltblown web comprising
abrasive polymeric fibers in a planar substrate, * * * ,
said meltblown web being attached to a fibrous cellulosic
web.
(Claims App., Br. 21; paragraphing and indentation added; the elided text
recites limitations relating to the fibers and web that Chen has not disputed.)
Claim 88
A polymeric meltblown web comprising
abrasive polymeric fibers
* * * * and
an additive selected from the group consisting of
a soap, a detergent, a buffering agent, an antimicrobial
agent, a skin wellness agent, a lotion, a medication, a
polishing agent, and mixtures thereof.
(Claims App., Br. 26; paragraphing and indentation added; the elided text
recites limitations relating to the abrasive polymeric fibers that Chen has not
disputed.)
The Examiner has maintained the following grounds of rejection:2
A. Claims 1-15, 17-19, 21-33, 35-39, 43, 45-48, 51-55, 57-64, and
68-87 stand rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Mozelack3, Barzuza,4 and any one of
Feint,5 Linnersten,6 Paas,7 or Favre.8

2 Examiner’s Answer mailed 9 April 2008. (“Ans.”).
3 Brian Mozelack et al., Melt-Blown Tubular Core Elements and Filter
Cartridges Including the Same, U.S. Patent 6,342,283 B1 29 January 2002,
based on an application filed 22 July 1999.
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B. Claims 16 and 44 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Mozelack, Barzuza,
Kochesky,9 and any one of Feint, Linnersten, Paas, or Favre.
C. Claims 20 and 65 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Mozelack, Barzuza, either
Ouellette10 or Nakajima,11 and any one of Feint, Linnersten,
Paas, or Favre.
D. Claims 40, 41, and 50 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Mozelack, Barzuza,
Hou,12 and any one of Feint, Linnersten, Paas, or Favre.
E. Claims 88-96, 101-106, 108-112, 114-120, and 122-131 stand
rejected under 35 U.S.C. § 103(a) in view of the combined
teachings of Mozelack, Barzuza, Patrick,13 and any one of
Feint, Linnersten, Paas, or Favre.
F. Claims 97-98 and 107 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Mozelack, Barzuza,
Patrick, Hou, and any one of Feint, Linnersten, Paas, or Favre.
4 Ytzhak Barzuza, Plural Layer Fiber Filter element and System for
Cleaning, U.S. Patent 5,514,270 (1996).
5 Stephen D. Feint, U.S. Patent 5,130,023 (1992).
6 Staffan B. Linnersten, U.S. Patent 5,152,890 (1992).
7 Norbert Paas, U.S. Patent 5,431,706 (1995).
8 Eric Favre, U.S. Patent 5,472,719 (1995).
9 Francis F. Kochesky and Bryan F. Paschall, U.S. Patent 5,284,704 (1994).
10 William R. Ouellette et al., U.S. Patent 5,989,478 (1999).
11 Yuji Nakajima and Morio Abe, U.S. Patent 6,207,600 B1 (27 March 2001,
based on a PCT Application filed 28 November 1997).
12 Kenneth C. Hou et al., U.S. Patent 6,565,749 B1 (20 May 2003), based on
an application filed 31 July 2000.
13 Gilbert Patrick et al., Antimicrobial Filter Cartridge, U.S. Patent
5,868,933 (1999).
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Application 10/321,831

G. Claim 100 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Mozelack, Barzuza, Patrick,
Kochesky, and any one of Feint, Linnersten, Paas, or Favre.
H. Claim 121 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Mozelack, Barzuza, Patrick, either
Ouellette or Nakajima, and any one of Feint, Linnersten, Paas,
or Favre.
Chen has argued only that the Examiner erred regarding certain
limitations of the independent claims 1, 32, and 88.14 Accordingly, all
claims covered by Rejections A-D stand or fall with claims 1 or 32 as
rejected in Rejection A. Similarly, all claims covered by Rejections E-H
stand or fall with claim 88 as rejected in Rejection E.
More specifically, Chen contends that the Examiner erred in rejecting
claim 1 because none of the references teaches or suggests an abrasive
cleaning pad. (Br. 6-7.) The Examiner responds that the structures taught or
obvious in view of the applied prior art can function like cleaning pads.
(Ans. 19.)
Chen argues further that the Examiner failed to establish a reason to
use the cylindrical core disclosed by Mozelack as a structure found on an
outer surface (of a filter), as required by claim 1. (Br. at 8.) Similarly, Chen
argues that the Examiner failed to establish a reason to modify the shape of
the cylindrical filters taught by Mozelack to the planar shaped filters taught
by Barzuza—i.e., to the planar geometry required by claim 32. (Br. 12-13.)

14 Chen has not disputed the Examiner’s finding (Ans. 4) that the meltblown
core described by Mozelack corresponds to the abrasive layer recited in
claims 1, 32, and 88. Nor has Chen disputed the Examiner’s findings
(Ans. 5) that Feint, Linnersten, Paas, or Favre (the “cellulosic references”)
disclose filtering elements made from fibrous cellulose.
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We refer to these arguments as the “structural arguments” in the Discussion,
infra.
The Examiner responds that the selection of suitable shapes for filters
from among known shapes for filters would have been obvious.
(Ans. 19-20). Hence, the Examiner concludes, a flat pad filter, such as the
one illustrated by Barzuza, would have been an obvious variant of a
cylindrical filter given the general level of skill in the art based on the
suitability of the shape. (Id. at 20.) The Examiner appears to be of the
opinion that a flat filter would also meet the limitation, “said abrasive layer
defining an outer surface” recited in claim 1.
Additionally, Chen argues that the Examiner failed to establish that
Mozelack teaches or suggests an absorbent layer (Br. 9-10), or that the prior
art provides a reason to modify the filters described by Mozelack by using
any of the cellulosic filter elements taught by the cellulosic references as
suggested by the Examiner (id. at 10-12.) A cellulosic web, according to
Chen, would not have the same functionality as the filtration fibers described
by Mozelack, and would destroy the function of the Mozelack filter. (Id.
at 11.) Chen concludes that the Examiner failed to establish a prima facie
case of obviousness for the presence of an absorbent layer comprising a
fibrous cellulosic web, as required by claim 1 (id. at 12), or for the
meltblown web being attached to a fibrous cellulosic web, as required
by claim 32 (id.). We refer to these arguments as the “absorbent” argument,
and as the “cellulosic web” argument in the Discussion, infra.
The Examiner responds that the substitution of suitable materials,
such as cellulosic fibers (Ans. 5 and 21-22), which are taught by the
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Application 10/321,831

cellulosic references, would have been obvious. In this regard, the
Examiner argues that the “filtration fiber layer taught by the applied prior art
is absorbent because the fibers allow liquid to be taken in through the pores
or interstices of the layer to be filtered.” (Ans. 5 and Ans. 21.)
A dispositive issue, with regard to the rejection of claim 1, is, has the
Examiner shown that Mozelack and Barzuza provide a reason to the
ordinary worker to make a filter having the core taught by Mozelack as an
outer surface layer? Similarly, with regard to the rejection of claim 32, has
the Examiner shown that Mozelack and Barzuza provide a reason to the
ordinary worker to make a flat filter with a layer of the core element fibers
and a layer of the filtration zone fibers taught by Mozelack?
Another dispositive issue with respect to claims 1 and 32 is, has the
Examiner shown that the references provide an adequate motivation to use
an absorbent fibrous cellulosic web together with an abrasive layer of fibers
as required by claim 1, or attached to an abrasive meltblown web as required
by claim 32?
Finally, regarding claim 88, Chen contends that there is no
motivation, other than impermissible hindsight, to combine the disclosure by
Patrick of a filter formed from a yarn or nonwoven web impregnated with an
antimicrobial agent, with the filtration core described by Mozelack, to obtain
a meltblown web as recited in claim 88. (Br. 14-15.)
The Examiner argues that the substitution of antibacterial agents
would have been the obvious use of a known material for its known function
in a similar circumstance. (Ans. 13 and 25.)
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The dispositive issue with respect to claim 88 is, has Chen shown
reversible error in the Examiner’s reason to use antimicrobial agents in the
webs taught by Mozelack?
B. Findings of Fact
Findings of fact ("FF") throughout this Decision are supported by a
preponderance of the evidence of record.
The 831 Specification
1. According to the 831 Specification, abrasive scrubbing pads
commonly include a non-absorbent abrasive material combined with an
absorbent sponge-like backing. (Spec. 1:3-8.)
2. Such prior art scrubbing pads are said to be expensive and difficult to
clean. (Spec. 1:12-15.)
3. The claimed invention is said to overcome these problems by
providing a product having “at least two distinct layers, an abrasive layer
and an absorbent fibrous layer such as a layer of tissue made from paper
making fiber . . . or other known cellulosic webs.” (Spec. 2:1-4.)
4. The abrasive layer is described generally at pages 2-8 and more
specifically at pages 20-31 of the 831 Specification.
5. Notably, the abrasive layer is described as having, in embodiments, “a
relatively open structure that provides high permeability, allowing gas or
liquid to readily pass through the abrasive layer.” (Spec. 7:24-25.)
6. The absorbent layer is described generally at pages 8-9, and more
specifically at pages 31-37 of the 831 Specification.
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7. Notably, the absorbent layer is described in terms of a paper or
cellulosic web. (E.g., Spec. 8:14-19; 31:24-33.)
8. In the words of the 831 Specification, “[a]s used herein, the term
‘cellulosic’ is meant to include any material having cellulose as a significant
constituent, and specifically comprising about 20 percent or more by weight
of cellulose or cellulose derivatives.” (Spec. 12:14-16.)
9. The 831 Specification describes further embodiments in which “the
scrubbing product may contain other additives associated with either of the
primary layers such as soaps, detergents, buffering agents, antimicrobial
agents, skin wellness agents, lotions, medications, polishing agents, and the
like.” (Spec. 9:28-31.)
Mozelack
10. Mozelack describes cylindrical disposable filter cartridges said to be
useful for filtering fluids (Mozelack 1:14-16), including water (id.
at 6:59-7:10.)
11. The filter cartridges are said to have a core element formed of a non-
filtering, self-supporting non-woven mass of synthetic polymer fibers, and at
least one annular filtration zone layer formed of a mass of non-woven
synthetic polymer fibers. (Mozelack 2:59-64.)
12. The core is said to be made of fibers having a sufficient diameter and
meltblown to a density such that they do not perform a filtering function, but
they do form a highly open structural support for the filtration fibers during
manufacture and during filtration. (Mozelack 3:2-11.)
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Application 10/321,831

13. Both the core element and the filtration fibers may be meltblown.
(Mozelack 6:30-32; 7:48-50.)
14. In the words of Mozelack, “[v]irtually any thermoplastic polymer
which is capable of being melt blown may be used in accordance with the
present invention.” (Mozelack 7:55-57.)
15. Mozelack does not expressly describe or suggest fibrous cellulosic
webs as components of the cylindrical filters.
Barzuza
16. Barzuza describes fluid filters “comprising a plurality of layers 2
composed of fibers . . . [that] are arranged to assume a substantially uniform
orientation, wherein each of the fibers is disposed in close proximity to its
adjacent fibers.” (Barzuza 2:3-7.)
Patrick
17. Patrick describes antimicrobial filter cartridges for purifying fluids
wherein the filtration system “is formed from layers of yarn and/or
nonwoven webs or mats treated with an antimicrobial agent.”
(Patrick 1:11-15.)
18. According to Patrick, the purpose of the antimicrobial agent is to
“inhibit growth of the bacterial and viral contaminants in the filtered flow to
significantly reduce . . . bacterial contaminants within the water flowing
through the filtration system.” (Patrick 1:18-22.)
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The Cellulose References
19. Feint (3:25-27), Linnersten (2:40-43), Paas (6:7-8), and
Favre (8:33-37) describe filtering elements made from cellulose.
C. Discussion
The burden is on Chen, as the Appellant, to demonstrate reversible
error in the Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness . . . .”). “The ultimate determination of whether an
invention would have been obvious is a legal conclusion based on
underlying findings of fact.” Kahn, 441 F.3d at 985 (citation omitted). Our
reviewing court has explained repeatedly that “mere identification in the
prior art of each element is insufficient to defeat the patentability of the
combined subject matter as a whole.” Id. at 986. In practice, as the Federal
Circuit has explained, the articulation of the basis for the conclusion of
obviousness must “explain the reasons one of ordinary skill in the art would
have been motivated to select the references and to combine them to render
the claimed invention obvious.” Id., citation omitted. As the Supreme Court
has emphasized, “[t]o facilitate review, this analysis should be made
explicit.” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007).
Claims 1 and 32
Initially, we construe the claimed subject matter. The recitation of an
“abrasive cleaning product” in claim 1 and “scrubbing pad” in claim 32 are,
in the absence of a definition in the 831 Specification, mere recitations of
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Application 10/321,831

intended use. Chen has not directed our attention to such a definition in
the 831 Specification, and we have not found such a definition explicitly or
implicitly in our own review of the supporting disclosure. We therefore hold
that claim 1 “reads on” any article that meets all the structural limitations
recited in the claims. Accordingly, Chen’s arguments (Br. 6-7) that the
Examiner erred by failing to come forward with references describing
abrasive cleaning products or scrubbing pads are without merit.
Chen’s structural, absorbent, and cellulosic web arguments, however,
are persuasive of reversible error. Obviousness is a bar to patentability to
protect the public from being excluded from practicing what would have
been done in the ordinary course of work by those skilled in the art. Most
inventions involve the assembly of pre-existing structures in new
combinations and new inter-relations. Thus, establishing a prima facie case
of obviousness requires more than merely establishing that a set of structures
were known in the art in various embodiments of articles such as filters prior
to an applicant’s filing date. The role of references is to provide evidence
that the combinations would have been suggested by what was known, and
thus to avoid hindsight reconstruction of the claimed subject matter. Thus, a
demonstration of obviousness requires a showing that the ordinary person
would have combined or substituted various structures in one reference with
other structures in other references in a way that is within the scope of the
claimed subject matter, based on the teachings of those references, bringing
ordinary knowledge and creativity to the task.
The Examiner’s rejection of claims 1 and 32 fails for lack of an
explanation, based on the references, of why a person having ordinary skill
in the art would have modified Mozelack’s filters, which have the “abrasive
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layer” in the “wrong” place (inside), and which have the “wrong” shape
(cylindrical), to resemble filters having the “abrasive layer” on an outside
surface or having the “right” (planar) shape shown by Barzuza. In the
Examiner’s rejection of claims 1 and 32, Mozelack stands, as evidence of
layer structure, for no more than that two meltblown webs can be prepared
to form two layers—an inner layer and an outer layer—in a cylindrical filter.
Similarly, Barzuza stands, in the Examiner’s rejection, as no more than
evidence supporting the proposition that planar filters are known. The
Examiner has not directed our attention to any credible evidence that the
structure or function of the supporting core element in filters described by
Mozelack corresponds to the structure or function of any element in the
filters described by Barzuza. The structural and functional similarity of the
filtering layers of Mozelack and Barzuza appear to start and stop with
filtering. Whereas the filtering layers of Mozelack are disorderly and highly
entangled, the filtering layers 2 of Barzuza are highly ordered, all the
filtering elements being parallel to one another. Neither reference, to
paraphrase the formal definition of relevant evidence,15 has any tendency to
make the existence of any fact that is of consequence to the determination of
the obviousness of the claimed products more probable or less probable than
it would be without the evidence. Put another way, the Examiner has not
established that the cylindrical filters described by Mozelack and the planar
filters described by Barzuza are equivalents that would have been obvious to
substitute, one for the other.

15 Fed. R. Evid. 401.
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Moreover, as Chen points out (Br. 9-11), Mozelack does not appear to
suggest an “absorbent” layer. In this regard, we note that in claim 1, the
term “absorbent” is further limited by the requirement that the absorbent
layer comprise a fibrous cellulosic web. From everyday experience, it is
generally recognized that cellulosic webs, such as paper towels (cf.
Spec. 8:15-19), are absorbent in the sense that individual fibers take up
liquids that ‘wet” the fibers, such as water. Thus, the “absorbent layer
comprising a fibrous cellulosic web” recited in claim 1 does not merely
allow water to enter into interstices in the web.16 Mozelack describes both
the core element (“abrasive layer”) and the filtering zone as being meltblown
fibers made from thermoplastic polymers. The Examiner has not directed
our attention to any credible evidence in Mozelack that the thermoplastic
meltblown fibers would inherently absorb water and thus be a functional
equivalent of cellulosic webs described by the cellulosic references. Thus,
consistent with Chen’s argument, the Examiner has not shown that a fibrous
cellulosic web is a functional equivalent for the meltblown webs taught by
Mozelack, and that it would therefore have been prima facie obvious to
substitute cellulosic webs for the meltblown thermoplastic filtering webs
described by Mozelack.
We conclude that the Examiner has failed to establish a prima facie
case that either of claims 1 or 32 would have been obvious over the cited
prior art. We therefore REVERSE Rejections A through D.

16 The required presence of cellulosic fibers in claim 1 renders the
Examiner’s broad interpretation of the term “absorbent” as being applicable
to any fiber layers that “allow liquid to be taken in through the pores or
interstices of the layer” (Ans. 5) incomplete as a measure of what properties
would bring a web into the scope of claim 1.
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Claim 88
Claim 88 is fully met by a polymeric meltblown web comprising
certain abrasive polymeric fibers and an antimicrobial agent as an additive.
Chen does not dispute the Examiner’s findings that the recited abrasive
fibers read on the core layer described by Mozelack. Nor does Chen dispute
the Examiner’s findings that Patrick discloses antimicrobial treated yarn as a
filtering material, or that Patrick teaches that the purpose is “to eliminate and
inhibit growth of the bacterial and viral contaminants in the filtered flow”
(Patrick 1:17-20). Rather, Chen argues that there is no motivation to modify
the structural core of Mozelack. (Br. 15.)
This argument does not demonstrate reversible error in the
Examiner’s rejection. The common purpose of the references, filtering
liquids, including water, and the express purpose of Patrick, to use
antimicrobial treatment to suppress microbial contamination, provide a
person having ordinary skill in the art with an adequate reason to combine
the references. Moreover, claim 88 uses the transitional term “comprising,”
which is “open” language that permits the presence of non-recited materials
and structures in embodiments within the scope of the claimed subject
matter. In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“[t]he term
“comprises” permits the inclusion of other steps, elements, or materials.”)
Thus, contrary to Chen’s argument, claim 88 does not limit the placement of
the additive to the abrasive polymeric layers. Claim 88 is fully met if the
antimicrobial additive is added to any part of the filters described by
Mozelack.
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Because we conclude that Chen has not demonstrated reversible error
in the Examiner’s rejection of claim 88, we AFFIRM Rejections E
through H.
D. Order
We REVERSE the rejection of claims 1-15, 17-19, 21-33, 35-39, 43,
45-48, 51-55, 57-64, and 68-87 35 U.S.C. § 103(a) in view of the combined
teachings of Mozelack, Barzuza, and any one of Feint, Linnersten, Paas, or
Favre.
We REVERSE the rejection of claims 16 and 44 under
35 U.S.C. § 103(a) in view of the combined teachings of Mozelack, Barzuza,
Kochesky, and any one of Feint, Linnersten, Paas, or Favre.
We REVERSE the rejection of claims 20 and 65 under
35 U.S.C. § 103(a) in view of the combined teachings of Mozelack, Barzuza,
either Ouellette or Nakajima, and any one of Feint, Linnersten, Paas, or
Favre.
We REVERSE the rejection of claims 40, 41, and 50 under
35 U.S.C. § 103(a) in view of the combined teachings of Mozelack, Barzuza,
Hou, and any one of Feint, Linnersten, Paas, or Favre.
We AFFIRM the rejection of claims 88-96, 101-106, 108-112,
114-120, and 122-131 under 35 U.S.C. § 103(a) in view of the combined
teachings of Mozelack, Barzuza, Patrick, and any one of Feint, Linnersten,
Paas, or Favre.
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We AFFIRM the rejection of claims 97-98 and 107 under
35 U.S.C. § 103(a) in view of the combined teachings of Mozelack, Barzuza,
Patrick, Hou, and any one of Feint, Linnersten, Paas, or Favre.
We AFFIRM the rejection of claim 100 under 35 U.S.C. § 103(a) in
view of the combined teachings of Mozelack, Barzuza, Patrick, Kochesky,
and any one of Feint, Linnersten, Paas, or Favre.
We AFFIRM the rejection of claim 121 under 35 U.S.C. § 103(a) in
view of the combined teachings of Mozelack, Barzuza, Patrick, either
Oullette or Nakajima, and any one of Feint, Linnersten, Paas, or Favre.
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-IN-PART

ssl

DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449

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