Ex Parte Forry et al

Board of Patent Appeals and Interferences

Aug 17, 2012

11105998 (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.
11/105,998 04/14/2005 Mark Edwin Forry 9630R 3592
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 2011-003539
Application 11/105,998
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 finally rejecting claims 21, 22, 27-33 and
35-44 in the Office Action mailed April 1, 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 ground of rejection advanced on
appeal by the Examiner: under 35 U.S.C. § 112, first paragraph, written
description requirement, claim 21 and 27; and under 35 U.S.C. § 103(a),
claims 21, 22, 27-33 and 35-44 over Chen (US 2004/0099388 A1) and
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Application 11/105,998
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Klowak (US 4,507,173), and claims 35, 43 and 44 over Chen, Klowak and
Batra (US 6,162,327). Br. 3-5; Ans. 3.
We decide this appeal on claim 21 and on individual claims to the
extent argued by Appellants, the arguments for claims 21 and 27 being
essentially identical. Br. 3-5, 5-6, 6-7, 8-9. 37 C.F.R. § 41.37(c)(1)(vii)
(2010). A mere reiteration of the limitations recited in a claim does not meet
the requirements of 37 C.F.R. § 41.37(c) (1)(vii).
Opinion
I.
We disagree with Appellants that the Examiner erred in finding that
the Specification does not provide a written description of a process wherein
a differential density fibrous structure is subjected to an embossing step as
specified in claim 21. Ans. 4-5, 10-11; Br. 5-6. Indeed, we find that as the
Examiner points out, the disclosure at page 8, lines 29-31, of the
Specification describes the “patterned fibrous structure” of the product of the
claimed processes and not a fibrous structure that is subjected to a
deformation step. See Spec. 7:20-23. Ans. 10-11.
Accordingly, we affirm the rejection of claims 21 and 27 under 35
U.S.C. § 112, first paragraph, written description requirement.
II.
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 21. 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
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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 21: a method for making a tissue product “comprising” at least, among
other things, “applying latex to the first surface of the patterned fibrous
structure such that more than 50% of the total latex is present on the regions
of high density of the patterned fibrous structure.” Br. 6-7, 19 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. 7-8, 13; Br. 7.
Appellants contend that “Klowak fails to teach that 50% or more of its
binding liquid is on the surface of the high density regions of its fibrous
structure as is claimed in Claim 21.” Br. 7. We disagree with Appellants’
interpretation of the subject limitation of claim 21.
We determine the plain language of the subject limitation, in light of
the disclosure in the Specification, specifies only “applying latex’ in any
manner “to the first surface of the patterned fibrous structure such that more
than 50% of the total latex is present on the regions of high density of the
patterned fibrous structure,” and the rest of the “total latex” 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
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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.
10:3-7, 10:16-19 (emphasis supplied). Ans. 14.
Thus, we are of the opinion the Examiner properly applied Klowak
following the language of the subject limitation of claim 21, 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 21 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. 7. 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
the claimed tissue. Ans. 15. Indeed, the mere age of Klowak does not carry
that burden. See generally, In re Wright, 659 F.2d 1124, 1127, (CCPA
1977).
We find Appellants’ contentions with respect to claims 22 and 28-44
do not argue the separate patentability of these claims with specificity.
Indeed, Appellants merely cite to the further limitation of claims 21 and 27
specified in each of these dependent claims and do not point out error in the
Examiner’s position with respect thereto. Br. 8, 9-16. We note the
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Examiner has responded to Appellants’ contentions made for the first time in
the Brief, and Appellants have not replied.
III.
We find Appellants’ contentions with respect to claims 35, 43 and 44
do not argue the separate patentability of these claims over the combination
of Chen, Klowak and Batra with specificity. Indeed, Appellants merely cite
to the further limitation of claims 21 and 27 specified in each of these
dependent claims and do not point out error in the Examiner’s position with
respect thereto. Br. 16-17. We note the Examiner has responded to
Appellants’ contentions made for the first time in the Brief, and Appellants
have not replied.
IV.
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 and Klowak alone and further combined with
Batra 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 21, 22, 27-33 and 35-44 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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