Ex Parte Fish et al

Patent Trial and Appeal Board

Apr 18, 2017

11627291 (P.T.A.B. Apr. 18, 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.
11/627,291 01/25/2007 David E. Fish INTP140138 1649
26389 7590 04/20/2017
rTTRTSTRNSFN OTONNOR TOHNSON KTNDNFNN PT T C EXAMINER
1201 THIRD AVENUE CHEVALIER, ALICIA ANN
SUITE 3600
SEATTLE, WA 98101-3029 ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
04/20/2017 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):
efiling @ cojk. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID E. FISH,1
Hugh West, and Linda A. Beltz
Appeal 2015-007385
Application 11/627,291
Technology Center 1700
Before LINDA M. GAUDETTE, MARK NAGUMO, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
David E. Fish, Hugh West, and Linda A. Beltz (“Fish”) timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1—14, which
are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6.
We reverse for reasons well-stated by Fish.
1 The real party in interest is identified as Weyerhaeuser NR Company.
(Appeal Brief, filed 17 February 2015 (“Br.”), 3.)
2 Office Action mailed 17 July 2014 (“Final Rejection”; cited as “FR”).
Appeal 2015-007385
Application 11/627,291
OPINION
A. Introduction3
The subject matter on appeal relates to cellulose pulp particles
disclosed as being useful for improving the flow of liquids of all viscosities
in absorbent articles such as diapers. The structure of a typical absorbent
article is shown in Figure 11, shown below, with added annotations.
lie acquisition patch
-------- 11d
..... -j -jc Storage core ]
------11b
... i....“““11a ibschihiiT
{Figure 11 shows layers of an absorbent article in cross section}
The outside of the diaper is liquid-impermeable backsheet 11a.4 Tissue
layers lib and lid are placed on either side of fluff and SAP
[superabsorbent particle] storage core 11c. Acquisition patch lie overlies
storage core 11c, and is covered by liquid-permeable top sheet Ilf, which is
in contact with the wearer’s skin. (Spec. 15,11. 25—30.)
3 Application 11/627,291, Product to promote fluid flow,
filed 25 January 2007. We refer to the “’291 Specification,” which we cite
as “Spec.”
4 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
2
Appeal 2015-007385
Application 11/627,291
The ’291 Specification teaches that the acquisition/distribution layer
“must provide channels that permit rapid flow even under a weight load
caused by the wearer of [the] article.” (Spec. 1,11. 22—23.) Thus, the
material for the acquisition/distribution layer “should be of low
compressibility to maintain these channels but yet be flexible to provide
comfort to the wearer.” {Id. at 11. 23—24.) However, the Specification
reveals, “[g]ood management of higher viscosity fluids such as menses,
loose stools, etc., has some additional requirements . . . such as large voids
to immediately accumulate the high viscosity liquid.” {Id. at 1,1. 29, to 2,
1. 1.) According to the Specification, “[t]he provision of these void spaces
requires special designs of the acquisition/distribution layer and special
equipment to form these designs.’ {Id. at 2,11. 7—8.)
Fish seeks patent protection for prismatoid cellulose pulp particles
having two parallel bases, one larger than the other, wherein the base of the
particle has a dimension greater than the height of the particle. Such
particles are obtained by cutting, punching, or otherwise shaping them from
a sheet of absorbent pulp. {Id. at 4,11. 21—22.) In the words of the
Specification, the “parallel bases would be the surfaces of the pulp sheet
from which the particles are formed.” {Id. at 11. 22—23.) Moreover, in a
preferred embodiment, “the dimension of the shapes of the bases of the
particles would be larger than the thickness of the pulp sheet from which
they were produced.” {Id. at 5,11. 19-20.) This prismatoid shape of the
particles is said to cause the particles, when scattered onto an absorbent
article, “to orient themselves with the cut edges normal to the article and
original pulp sheet surfaces parallel to the article. Misalignment of the
pieces will. . . tend to be corrected during the finishing of the absorbent
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Appeal 2015-007385
Application 11/627,291
article where forces normal to the article are applied thereby realigning the
cut pieces.” {Id. at 5,11. 22—25.)
Sole independent claim 1 is representative and reads:
A cellulose pulp particle having
the shape of a general prismatoid having two parallel bases,
the pulp particle comprising hydrogen bonded cellulose
pulp fibers in a wet laid pulp sheet form,
one of the bases having an area that is equal to or greater
than the area of the other base,
the area of the larger base being equal to or less
than 35 mm2 and equal to or greater than 8 mm2, and
the height of the particle being equal to or greater
than 0.9 mm and equal to or less than 6 mm,
wherein the base of the particle has a dimension greater
than the height of the particle, wherein
the particle does not contain bulking fibers and wherein
the particle has a basis weight of from 600 g/m2 to 1000 g/m2.
(Claims App., Br. 21; indentation and paragraphing5 added.)
5 In compliance with 37 C.F.R. §1.75(i) (2014): “Where a claim sets forth a
plurality of elements or steps, each element or step of the claim should be
separated by a line indentation.”
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Appeal 2015-007385
Application 11/627,291
The Examiner maintains the following ground of rejection6,7:
Claims 1—14 stand rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of McFall,8 Robertson,9 Crow,10 Lindstrom,* 11
and Dahiya.12
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Briefly, the Examiner finds that McFall describes an absorbent sheet
that is passed through two pairs of toothed rollers that break the absorbent
sheet into particles that may have the geometric characteristics required by
claim 1. (FR 10—11.) The Examiner finds that McFall does not describe the
material as being from cellulose pulp, and that McFall does not describe the
required basis weight of the particles. {Id. at para, bridging 11—12.) The
6 Examiner’s Answer mailed 5 June 2015 (“Ans.”).
7 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.
8 Ronald Ray McFall et al., Method of making a slitted or particulate
absorbent material, U.S. Patent No. 6,203,654 B1 (2001).
9 Douglas Edgar Robinson, Embossed wet-laid fibrous structures,
EP 0 843 042 Al (1998).
10 Anne B. Crow and Erin M. Byers, Wet-laid absorbent pulp sheet suitable
for immediate conversion into an absorbent product, U.S. Patent
Application Publication 2003/0070776 Al (2003).
11 Richard S. Lindstrom and Thomas Raphael, U.S. Patent No. 3,003,911
(1961).
12 Atul Dahiya et al., Wet-laid nonwovens (April 2004)
http://www.engr.utk.edu/mse/Textiles/Wet%20Laid%20Nonwovens.htm
(last visited 6 December 2010).
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Appeal 2015-007385
Application 11/627,291
Examiner finds that “Robinson discloses a wet-laid cellulosic fibrous
structure for tissue webs” in the context of paper-making. {Id. at 12,11. 7—9.)
The Examiner finds further that Crow describes wet-laid absorbent pulp
sheet materials having the required basis weight that are useful for absorbent
particles. {Id. at 13.) The Examiner concludes that because both McFall and
Robinson teach tissue webs, they are analogous art, and that the selection of
a known material based on its suitability for its intended use—here, an
absorbent material layer capable of being readily cut into pieces {id.
at 11. 10-14, citing McFall, col. 9,11. 40-42, 45^47)—supports the case of
prima facie obviousness. {Id. at 11. 10—18.)13 Similarly, the Examiner
concludes that McFall and Crow are analogous art, and that therefore it
would have been obvious to use a conventional basis weight web that was
“conventional in the art of producing an absorbent product from the
conversion of a wet-laid absorbent sheet.” {Id. at 14,11. 2—3.)
Fish urges the Examiner erred harmfully in concluding that it would
have been obvious to use the wet-laid cellulosic fibrous structures taught by
Robinson as a superior structure for embossing patterns as a substitute for
the absorbent material 22 in the composite web 26 described by McFall.
(Br. 10-13.)
The preponderance of the evidence of record supports Fish.
McFall teaches a method of making absorbent articles, such as
sanitary napkins and diapers. (McFall, Abstract; col. 1,11. 5—9.) The
13 Considering the obviousness of a shaped particle solely in the context of
the intended use is not unreasonable, but it may not result in a full
exploration of the possibly relevant prior art.
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Appeal 2015-007385
Application 11/627,291
process involves feeding a composite web 26 through two pairs of nip rollers
(34, 36) and (64, 66). Composite web 26 comprises carrier webs 20 and 24
on either side of second web of material 22 that comprises an absorbent
material. In McFall’s words, “[t]he second web of material 22 preferably
has a second yield to break point under tensile forces that is lower than the
yield to break point of both of the carrier webs 20 and 24.” (McFall, col., 9,
11. 47—50.) The rollers are set with teeth that cut or break the second web of
material 22 into particles without breaking carrier webs 20 and 24.
Robinson, on the other hand, is concerned with embossing paper
towels and similar products to provide “a superior cleaning response.”
(Robinson 2,11. 5—6.) Robinson defines the term “embossing” in the
following words:
the term “embossing” refers to the process of deflecting a
relatively small portion of a cellulosic fibrous structure
normal to its plane and impacting the projected portion of the
cellulosic fibrous structure against a relatively hard surface to
permanently disrupt the fibre to fibre bonds. Embossing
typically results in a permanent localised deformation of the
“embossed site” so deflected. The embossed site projects
normal to the plane of the cellulosic fibrous structure and
toward the opposite lamina.
{Id. at 3,11. 3—7.) Notably, “embossing,” so-defined, does not involve
breaking the embossed sheet into distinct particles.
The fact that two references are in the same field of endeavor—or that
they are concerned with a problem common to distinct fields of endeavor—
merely provides evidence that a person having ordinary skill in the art might
have considered whether or not to combine the teachings of the references.
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Appeal 2015-007385
Application 11/627,291
Whether that combination would have led to an embodiment within the
scope of a claim is a distinct inquiry.
In the present case, the Examiner has not directed our attention to any
credible evidence that Robinson provides any teachings that would have
suggested to the routineer that the wet-laid pulp fibrous structure described
by Robinson would have a yield-to-break point less than the yield-to-break
point of carrier webs 20 and 24, as required by McFall. Nor has the
Examiner provided a reasonable explanation of why the routineer would
have, more likely than not, expected the wet-pulp laid fibrous structures to
be breakable or to be cut into separate pieces under the conditions described
or suggested by McFall.
Similarly, as Fish urges (Br. 14—16), the basis weight of the structures
taught by Robinson differs from the basis weight of those taught by Crow by
a factor of at least 12. This difference, which is also the difference in basis
weight between the structures taught by Robinson and those required by
claim 1, further emphasizes the magnitude of the differences between
Robinson and the claimed subject matter. Again, the Examiner has not
directed our attention to any credible evidence that materials suggested by
Crow would have been suitable substitutes for the purposes of either McFall
or Robinson.
The Examiner makes no findings regarding limitations of the
dependent claims that cure the defects of the rejection of independent
claim 1. Accordingly, we reverse the appealed rejection.
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Application 11/627,291
C. Order
It is ORDERED that the rejection of claims 1—14 is reversed.
REVERSED
9