Ex Parte Forry et al

Board of Patent Appeals and Interferences

Aug 17, 2012

10840042 (B.P.A.I. Aug. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/840,042 05/06/2004 Mark Edwin Forry 9630 7766
27752 7590 08/20/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
CORDRAY, DENNIS R
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
08/20/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte MARK EDWIN FORRY, WAYNE ROBERT FISHER,
LAMAR AHMED ELONY, MICHAEL GOMER STELLJES JR.,
KEVIN BENSON MCNEIL, JOHN JIANBIN ZHANG, DEAN PHAN,
TIMOTHY JUDE LORENZ and PAUL DENNIS TROKHAN
______________

Appeal 2011-003538
Application 10/840,042
Technology Center 1700
_______________

Before CHARLES F. WARREN, PETER F. KRATZ, and
ROMULO H. DELMENDO, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1, 5, 7 and 12-15 in the Office Action
mailed March 5, 2010. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a)
(2002); 37 C.F.R. § 41.31(a) (2010).
We affirm the decision of the Primary Examiner.
Appellants request review of the rejection under 35 U.S.C. § 103(a)
advanced on appeal by the Examiner: claims 1, 5, 7 and 12-15 over Chen
(US 2004/0099388 A1), Klowak (US 4,507,173) and Swoboda (US
6,740,373 B1). Br. 3; Ans. 3.
Appeal 2011-003538
Application 10/840,042
2
We decide this appeal with respect to claim 1 and on individual claims
to the extent argued by Appellants. Br. 3. 37 C.F.R. § 41.37(c)(1)(vii)
(2010). A mere reiteration of the limitations recited in the individual claims
does not meet the requirements of 37 C.F.R. § 41.37(c) (1)(vii).
Opinion
We are of the opinion Appellants’ arguments do not establish that the
evidence in the totality of the record weighs in favor of the nonobviousness
of the claimed article encompassed by representative claim 1. In this
respect, we are in agreement with the Examiner’s analysis of the evidence in
the references and the findings of fact and conclusions of law stated in the
Answer, to which we add the following for emphasis with respect to
Appellants’ arguments.
The dispositive issue in this appeal raised by Appellants’ position with
respect to the teachings of Klowak is the interpretation of this limitation of
claim 1: a tissue product “comprising” at least, among other things, “latex
. . . present on at least one of the first and second surfaces of the fibrous
structure, wherein more than 50% of the total latex present is present on the
regions of high density of the differential density fibrous structure.” Br. 8,
Claim Appendix. Indeed, there is no dispute that Klowak would have
described to one of ordinary skill in the art that the binding liquid applied to
highly bulked web 12 by gravure roller 14 is substantially absorbed through
the web in compressed, high density areas 57, and a light coating of the
binding liquid can be applied to areas 58. Klowak abst., col.1 l.61 to col.2
l.33, col.5 ll.16-50, Fig. 5. Ans. 5, 7-8; Br. 4.
Appellants contend that “Klowak fails to teach that 50% or more of its
binding liquid in [sic, is] on the surface of the high density regions of its
Appeal 2011-003538
Application 10/840,042
3
fibrous structure as is claimed in Claim 1.” Br. 4. We disagree with
Appellants’ interpretation of the subject limitation of claim 1.
We determine the plain language of the subject limitation, in light of
the disclosure in the Specification, specifies only the “latex . . . present on at
least one of the first and second surfaces of the fibrous structure” and not the
total latex applied to the structure, some of which can be absorbed in the
regions of high density as permitted by the open-ended transitional term
“comprising.” Indeed, Appellants disclose in the Specification application
“nonlimiting application methods,” including dipping, gravure printing,
coating and impregnating, which apply the latex “at any level based on total
weight of the patterned fibrous structure,” and, as the Examiner points out,
“more than 50% . . . of the total latex present on the surface of the patterned
fibrous structure is present on high density regions.” Spec. 9:3-6, 9:14-17
(emphasis supplied). Ans. 7.
Thus, we are of the opinion the Examiner properly applied Klowak
following the language of the subject limitation of claim 1, and accordingly,
Appellants have not established that the Examiner erred in combining Chen
and Klowak in this respect.
We are further of the opinion that the Appellants have not established
error in the Examiner’s position with the bare contention that the
combination of Chen and Klowak is improper because the claimed tissue
encompassed by “Claim 1 has overcome a long, unmet need” since one of
ordinary skill in the art hadn’t combined Klowak with Chen in the 25 years
since Klowak issued. Br. 4. As the Examiner points out, Appellants have
not adduced evidence establishing that, notwithstanding knowledge of Chen
and Klowak, one of ordinary skill in the art art tried and failed to arrive at
Appeal 2011-003538
Application 10/840,042
4
the claimed tissue. Ans. 8. Indeed, the mere age of Klowak does not carry
that burden. See generally, In re Wright, 659 F.2d 1124, 1127 (CCPA
1977).
Turning now to Appellants’ contentions with respect to claims 7, 12,
13, 14 and-15, we find Appellants do not argue the separate patentability of
these claims with specificity. Indeed, Appellants merely cite to the further
limitation of claim 1 specified in each of these dependent claims and do not
point out error in the Examiner’s position with respect thereto. Br. 4-6. We
note the Examiner has responded to Appellants’ contentions made for the
first time in the Brief, and Appellants have not replied.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Chen, Klowak and Swoboda with Appellants’
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1, 5, 7 and 12-15 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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