Ex Parte Gatto et al

Patent Trial and Appeal Board

Dec 17, 2015

12032099 (P.T.A.B. Dec. 17, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/032,099 02/15/2008
27752 7590 12/21/2015
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Joseph Anthony Gatto
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10708M 3752
EXAMINER
HAND, MELANIE JO
ART UNIT PAPER NUMBER
3778
NOTIFICATION DATE DELIVERY MODE
12/21/2015 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH ANTHONY GATTO, BRENT TAYLOR GINN,
and ROBERT YA-LIN PAN
Appeal2014-003881
Application 12/032,099 1
Technology Center 3700
Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and KENNETH G.
SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to absorbent
articles. The Examiner rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
1 According to Appellants, the real party in interest is The Proctor & Gamble
Company. App. Br. 1.
Appeal2014-003881
Application 12/032,099
STATEivIENT OF THE CASE
Background
According to Appellants, the Specification "relates to absorbent
articles, including catamenial devices such as tampons and sanitary napkins
for the absorption of menses. More particularly, the present invention
relates to catamenial devices comprising a lotion composition comprising a
polypropylene glycol material, the lotion composition being applied to a
surface thereof." Spec. 1.
The Claims
Claims 1-13, 21, 22, and 25 are on appeal. Claim 1 is illustrative and
reads as follows.
1. An absorbent article comprising:
a liquid pervious topsheet, said topsheet having an inner
surface oriented toward the interior of said absorbent article and
an outer surface oriented toward the skin of the wearer when
said absorbent article is being \x1orn,
a backsheet joined to said topsheet, said backsheet having
an inner surface oriented toward the interior of said absorbent
article and an outer surface oriented toward the garment of the
wearer when said absorbent article is being worn;
an absorbent core disposed between said topsheet and
said backsheet, said absorbent core having an inner surface
oriented toward the skin of the wearer when said absorbent
article is being worn and an outer surface oriented toward the
garment of the wearer when said absorbent article is being
worn;
and a lotion composition applied to at least a portion of
said inner surface of said topsheet, said inner surface of said
backsheet, and/or a substrate or surface thereof disposed
between said inner surface of said topsheet and said inner
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Appeal2014-003881
Application I2/032,099
surface of said backsheet, said lotion compos1t10n compnsmg a
polypropylene glycol material;
wherein said polypropylene glycol material is a
polypropylene glycol surfactant material selected from the
group consisting of: PPG-30 cetyl ether, PPG-20 methyl
glucose ether distearate, PPG-20 methyl glucose ether acetate,
PPG-20 sorbitan tristearate, PPG-20 methyl glucose ether
distearate, PPG-20 distearate, PPG- I 5 stearyl ether, PPG- I 5
stearyl ether benzoate, PPG- I 5 isohexadecyl ether, PPG- I 5
stearate, PPG-I5 dicocoate, PPG-I2 dilaurate, PPG-I I stearyl
ether, PPG- I 0 cetyl ether, PPG- I 0 glyceryl stearate, PPG- I 0
sorbitan monosteate, PPG- I 0 hydrogenated castor oil, PPG- I 0
cetyl phosphate, PPG- I 0 tallow amine, PPG- I 0 oleamide, PPG-
I 0 cetyl ether phosphate, PPG- I 0 dinonylphenolate, PPG-9
laurate, PPG-8 dioctate, PPG-8 diethylhexylate, PPG-7 lauryl
ether, PPG-5 lanolin wax ether, PPG-5 sucrose cocoate, PPG-5
lanolin wax, PPG-4 jojoba alcohol ether, PPG-4 lauryl ether,
PPG-3 myristyl ether, PPG-3 myristyl ether, PPG-3 benzyl
ether myristate, PPG-3 hydrogenated castor oil, PPG-3-
hdyroxyethyl soyamide, PPG-2 Cocamide, PPG-2 lanolin
alcohol ether, and PPG- I coconut fatty acid isopropanolamide,
and combinations thereof.
Br. I 0-I 1. Claim 2 I, the only other independent claim on appeal, is
substantially identical to claim I, except that claim 2 I recites, "said lotion
composition consisting essentially of a polypropylene glycol material." Id.
at. I2.
The Rejections
1. The Examiner maintains that claims I, 3---6, 8, 9, 2I, 22, and 25 2
are provisionally unpatentable on the ground of non-statutory
2 The Examiner also lists claim 24 as part of this rejection, but that claim is
not on appeal. See Final Action 8
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Appeal2014-003881
Application 12/032,099
obviousness-type double patenting over claims 4--12 and 17-21 of
co-pending Application No. 12/369,922.
2. The Examiner maintains that claims 1-6, 8-13, 21, 22, and 25 are
unpatentable under 35 U.S.C. § 103(a) over Warren3 in view of
Luu. 4
3. The Examiner maintains that claim 7 is unpatentable under 35
U.S.C. § 103(a) over Warren in view of Luu and Roe. 5
DISCUSSION
1. Double Patenting
Although this rejection does not appear in the Answer, it was
maintained in the Final Action and does not appear to have been withdrawn
by the Examiner, and we address it here. See Ans. 3-12; Final Action 8; 37
C.F.R. § 41.39(a)(l). Appellants do not raise any arguments regarding this
rejection, and therefore, we summarily affirm this rejection. See Hyatt v.
Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008).
2. Warren in view of Luu
Appellants address the claims as a single group, presenting separate
arguments only with respect to independent claim 21. See Br. 5-8. We elect
to review claim 1 as representative of claims 1-13 and claim 21 as
representative of claims 21, 22, and 25.
3 Warren et al., US 2003/0082219 Al, pub. May 1, 2003.
4 Luu et al., US 2007/0087041 Al, pub. Apr. 19, 2007.
5 Roe et al., US 5,968,025, issued Oct. 19, 1999.
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Appeal2014-003881
Application 12/032,099
Claim 1
The Examiner finds that Warren discloses a topsheet, backsheet, and
absorbent core as claimed. Final Action 4. The Examiner also finds that
Warren discloses a lotion comprising a polypropylene glycol (PPG) material
applied to the device as claimed, but the Examiner acknowledges that
Warren does not disclose that the PPG material is a PPG surfactant. Id.; see
also Ans. 9 (acknowledging that Warren does not disclose PPG surfactants).
The Examiner relies on Luu's disclosure of a lotion with PPG-20 methyl
glucose ether distearate and concludes that it would have been obvious to
use Luu's PPG surfactant in Warren's lotion. Id. at 8.
Appellants raise several arguments regarding this rejection. As set
forth below, we find Appellants arguments unpersuasive.
Appellants first assert that Warren does not disclose using PPG
surfactants. Br. 6. Appellants also assert that Luu only discloses placing a
lotion on the coverstock of a menstrual pad and not in the layers within the
pad. Id. at 7. These arguments inappropriately attack the references
individually without apparent consideration for the combination of art relied
upon by the Examiner, particularly because the Examiner relies on Luu as
disclosing a PPG surfactant and the Examiner relies on Warren as disclosing
a lotion applied to the layers within the menstrual pad. See In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Next, Appellants note that neither Luu nor Warren discuss the
interaction of a lotion or PPG surfactant with menses, and Appellants argue
that the Examiner has not shown why one of ordinary skill in the art would
have been motivated to combine Warren and Luu. Br. 7-8. First, we agree
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Application 12/032,099
with the Examiner that this argument is not commensurate with the scope of
claim 1, which does not include any requirement regarding the interaction of
the lotion with menses. In addition, to the extent Appellants are arguing
non-obviousness based on the interaction of PPG surfactant with menses, the
fact that Appellants may have recognized another advantage of a
combination that would otherwise be obvious cannot form the basis for
patentability here. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. &
Inter. 1985). We also note that the prior art need not recognize the problem
solved by Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir.
1996). Further, we agree with the Examiner (see Final Action 4--5; Ans. 10-
11) that the use of a PPG surfactant in Warren's lotion would have been
obvious to one of ordinary skill in the art as the combination is no more than
a combination of familiar elements used in lotions applied to absorbent
articles that would yield predictable results. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007).
Finally, Appellants argue that the Examiner's "proposed modification
of Luu would render Luu unsatisfactory for its intended purpose." Br. 8.
Specifically, Appellants argue that using only one ingredient from Luu's
lotion "to create a new lotion would frustrate the purpose of Luu."
However, the Examiner has not proposed a modification of Luu, and the
Examiner only relies on Luu for its teaching of the use of a PPG surfactant
in a lotion applied to an absorbent article.
Claim 21
We first note that the rejection of claim 21 is identical to the rejection
of claim 1 and does not address the difference in language between these
claims. See Final Action 4--7. Appellants argue that Warren does not teach
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Appeal2014-003881
Application 12/032,099
a lotion consIStmg essentially of PPG "because a lotion without actives
defeats the purpose of Warren." Br. 8. The Examiner does not appear to
address this argument. See Ans. 9-11. In light of Appellants' argument and
the Examiner's silence regarding the claim language, we find that the
Examiner has not adequately shown that the combination of Warren and Luu
teaches or suggests a device with a lotion consisting essentially of a PPG
material as required by claim 21. Accordingly, we reverse the rejection of
independent claim 21 and dependent claims 22 and 25.
3. Warren in view of Luu and Roe
With respect to the rejection of claim 7, Appellants argue only that
Roe fails to cure the deficiencies in the rejection of claim 1, from which
claim 7 depends, based on Warren and Luu. Br. 8-9. As discussed above,
we find no deficiencies in the Examiner's rejection of claim 1 over Warren
and Luu. Accordingly, we affirm the rejection of claim 7 for the reasons
identified above.
CONCLUSION
For the reasons set forth above, we affirm the provisional double
patenting rejection of claims 1, 3-6, 8, 9, 21, 22, and 25 and the obviousness
rejection of claims 1-13. However, we reverse the obviousness rejection of
claims 21, 22, and 25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
JNS
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