Ex Parte Hammons et al

Patent Trial and Appeal Board

Sep 11, 2017

10444241 (P.T.A.B. Sep. 11, 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.
10/444,241 05/23/2003 John Lee Hammons 8725R2 5726
27752 7590 09/13/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
VU, JAKE MINH
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
09/13/2017 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):
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 JOHN LEE HAMMONS, RAPHAEL WARREN,
RONALD BOSMAN VISSCHER, JOSEPH ANTHONY GATTO,
and BRIAN FRANCIS GRAY
Appeal 2016-000626
Application 10/444,241
Technology Center 1600
Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
RYAN H. FLAX, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134 involving a catamenial
device. The Examiner rejected the claims as anticipated and as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as The Procter & Gamble
Company (see App. Br. 1).
2 This decision is related to Appeals 2013-000867 (US 10/789,967), 2014-
001676 (US 10/262,036), 2015-001167 (US 10/992,383), and 2016-000568
(US 11/059,763) {see App. Br. 1-2).
Appeal 2016-000626
Application 10/444,241
Statement of the Case
Background
“[Cjatamenial devices having lotioned topsheets are known. Lotions
of various types are known to provide various skin benefits, such as
prevention or treatment of diaper rash” (Spec. 1:21—23). The prior art
teaches “wherein a portion of the topsheet is coated with a discontinuous
film of oleaginous material. A major disadvantage of the diapers disclosed
in the [prior art] is that the hydrophobic and oleophobic topsheets are slow in
promoting transfer of urine to the underlying absorbent cores” (Spec. 2:2—5).
The Claims
Claims 1, 2, 4—8, 10-14, and 22—28 are on appeal. Claims 1 and 28
are representative and are reproduced below.
1. A catamenial device, said device comprising:
(a) a topsheet having a body facing surface, wherein said
topsheet is hydrophobic;
(b) a lotion composition applied to at least a portion of at
least the body facing surface of said topsheet, said
lotion having a level of hydrophobicity equal or
greater than that of said topsheet;
(c) a backsheet joined to said topsheet; and
(d) an absorbent core disposed between said topsheet and
said backsheet;
wherein the entirety of the body facing surface is
hydrophobic.
28. The catamenial device of Claim 13, wherein the device
comprises a lotion composition applied from about 50
mg/in2 to about 100 mg/in2 to at least a portion of at least
the body facing surf ace of said topsheet.
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The Issues
A. The Examiner rejected claims 1, 2, 4—8, 10-14, and 22—27 under 35
U.S.C. § 102(b) as anticipated by Roe3 (Final Act. 2-4).
B. The Examiner rejected claims 1, 2, 4—8, 10—14, and 22—28 under 35
U.S.C. § 103(a) as obvious over Roe (Final Act. 4—5).
A. 35 U.S.C. § 102(b) over Roe
The Examiner finds Roe teaches “a catamenial device, generally
comprising of a liquid-pervious topsheet material, an absorbent core, and a
liquid-impervious backsheet material” (Final Act. 3). The Examiner finds
Roe teaches “a topsheet having an aperture formed film, such as Dri-
Weave® (see pg. 19, 1st paragraph), which is the same topsheet as disclosed
by Applicant. . . wherein the aperture allows menses to penetrate through
the topsheet” (Id.). The Examiner finds Roe teaches “using lotions such as
Vaseline Petroleum Jelly which is surfactant-free (see pg. 31, last
paragraph); and lotions/compositions that are relatively hydrophobic are to
be applied to the topsheet in an amount of about 35 mg/in2 (see pg. 49, 1st
full paragraph), which is about 50mg/in2, to sanitary napkins” (Id.).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the Roe anticipates claims 1 and 13?
Findings of Fact
1. Roe teaches “feminine hygiene products . . . that incorporate a
skin care composition that comprises an enzyme inhibitor, preferably on a
wearer-contacting surface” (Roe 1).
3 Roe et al, WO 99/45973 Al, published Sept. 16, 1999.
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Application 10/444,241
2. Roe teaches: “Disposable products of this type generally
comprise some sort of liquid-pervious topsheet material, an absorbent core,
and a liquid-impervious backsheet material” (Roe 1).
3. Roe teaches “the topsheet may be in the form of an apertured
formed film, which is preferred in feminine hygiene absorbent articles . . .
The preferred topsheet for use in feminine hygiene products is the formed
film . . . marketed on sanitary napkins by The Procter & Gamble Company
of Cincinnati, Ohio as ‘DRI-WEAVE®’” (Roe 19).
4. The Specification teaches the “topsheet 14 of the sanitary
napkin can comprise an apertured formed film as is known in the art of
sanitary napkins, including Dri-weave® topsheets” (Spec. 4:25—26).
5. Roe teaches “with compositions that are relatively hydrophobic
and are to be applied such that regions of the topsheet are not coated with the
composition, the composition is preferably applied to the article topsheet in
an amount ranging from about 0.05 mg/in2 (0.0078 mg/cm2) to about 35
mg/in2 (5.43 mg/cm2)” (Roe 49).
6. Roe teaches: “Suitable petroleum-based emollients include
those hydrocarbons, or mixtures of hydrocarbons, having chain lengths of
from 16 to 32 carbon atoms. Petroleum based hydrocarbons having these
chain lengths include mineral oil. . . and petrolatum (also known as ‘mineral
wax,’ ‘petroleum jelly’ and ‘mineral jelly’)” (Roe 34).
7. The Specification teaches “suitable petroleum-based
hydrocarbons having from about 4 to about 32 carbon atoms include mineral
oil, petrolatum . . . Petrolatum is also known as ‘mineral wax’, ‘petroleum
jelly’, and ‘mineral jelly’, and usually refers to more viscous mixtures of
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Application 10/444,241
hydrocarbons having from about 16 to about 32 carbon atoms” (Spec. 17:1—
7).
8. Roe teaches that the “composition will comprise from about 10
to about 95%,. . . most preferably from about 40 to about 75%, by weight,
of the emollient” (Roe 37).
9. Roe teaches:
the “percent open area” of the topsheet is determined by (i)
measuring the surface area of the topsheet that overlies the
crotch region, (ii) measuring the total surface area of the
untreated region(s) in this portion of the topsheet and (iii)
dividing the measurement in (ii) by the measurement in (i). As
used herein, “untreated” means a region of the topsheet having
less than about 0.01 mg/in2 (0.0016 mg/cm2) of the
composition. In this regard, the percent open area may be from
about 1 % to about 99%.
(Roe 49).
10. Roe teaches:
The percent open area required to achieve the desired
composition effect and the desired liquid handling properties of
the topsheet will be dictated largely by the characteristics of the
composition (in particular the composition’s contents and its
relative hydrophobicity/hydrophilicity properties). One skilled
in the art will appreciate that the desired percent open area will
be readily determined through routine experimentation.
(Roe 49).
11. Roe teaches that “hydrophobic skin care compositions may be
utilized, so long as they are applied such that the fluid handling properties of
the topsheet are adequately maintained” (Roe 42).
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Principles of Law
A prior art reference can only anticipate a claim if it discloses all the
claimed limitations “arranged or combined in the same way as in the claim.”
Wm. Wrigley Jr. Co. v. Cadbury Adams USALLC, 683 F.3d 1356, 1361
(Fed. Cir. 2012).
Analysis
We adopt the Examiner’s findings concerning the scope and content
of the prior art (Final Act. 2-A; FF 1—11), and agree that the claims are
anticipated by Roe. We address Appellants’ arguments below.
Appellants contend
Roe does not teach or suggest a hydrophobic lotion on a
hydrophobic topsheet. Roe explicitly teaches away from the
combination made by the Office and gives no example teaching
or suggesting the claimed limitation of a topsheet with a lotion
wherein the entirety of the body facing surface is hydrophobic.
(App. Br. 4).
We find this argument unpersuasive because Roe teaches a catamenial
device (FF 1) that comprises a topsheet with aperture formed film, including
a preference for Dri-weave® brand (FF 3) where the Dri-weave® brand is
also a topsheet preferred by the Specification (FF 4) as well as hydrophobic
lotion materials (FF 6). The Examiner reasonably finds that Roe’s
disclosure of Dri-weave® would “read on a hydrophobic topsheet having a
body facing surface” (Final Act. 6).
That is, because Roe is using the identical brand of topsheet, Dri-
weave®, as that of the Specification, the topsheet is reasonably understood as
inherently being hydrophobic, in the absence of evidence to the contrary.
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Application 10/444,241
See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.”)
Roe also teaches that skin lotion materials may include petrolatum (FF
6), an identical hydrophobic component that is also disclosed by the
Specification (FF 7), including preferred amounts up to 95% (FF 8).
Thus, Roe teaches a catamenial device with a hydrophobic topsheet
composed of Dri-weave® and a hydrophobic lotion composed of up to 95%
petrolatum (FF 3, 6, 8), as well as a backsheet and absorbent core (FF 2).
See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1343—44 (Fed. Cir.
2016) (“[A] reference need not always include an express discussion of the
actual combination to anticipate. . . . Instead, a reference may still anticipate
if that reference teaches that the disclosed components or functionalities may
be combined and one of skill in the art would be able to implement the
combination.”)
We do not address Appellants’ teaching away arguments relative to
the anticipation rejection because “[Reaching away is irrelevant to
anticipation.” Seachange Int’l, Inc., v. C-COR, Inc., 413 F.3d 1361, 1380
(Fed. Cir. 2005).
Claim 13
Appellants contend because
essentially all of the topsheet is coated, Roe recommends
applying the lotion in a nonuniform pattern and in an amount
between 0.1 mg/in2 (0.016 mg/cm2) to about 15 mg/in2 (2.33
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Application 10/444,241
mg/cm2). (See Roe, page 47). As such, the range of Roe is
outside of Appellants claimed range of 20 mg/in2 to 100 mg/in2
for a product that has a hydrophobic topsheet and a
hydrophobic lotion.
(App. Br. 7).
We find this argument unpersuasive because claim 13 does not require
application to “essentially all of the topsheet,” but simply requires
application to “at least a portion of at least the body facing surface of the
topsheet” (Claim 13). As already discussed, Roe’s teaching of apertured
films such as Dri-weave® reasonably satisfy the requirement in Claim 13
that “the entirety of the body facing surface is hydrophobic” (FF 3).
There is no limitation in claim 13 that requires “all of the topsheet is
coated” as argued by Appellants (see App. Br. 7). See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“[AJppellanf s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.”)
We also find this argument unpersuasive because, while Appellants
correctly note that Roe teaches 0.1 mg/in2 to about 15 mg/in2 is preferred for
hydrophobic compositions (see Roe 47), Roe teaches that for articles not
fully coated with hydrophobic compositions, which would include apertured
films such as Dri-weave®, the amounts range from 0.05 mg/in2 to about 35
mg/in2 (see Roe 49). Thus, Roe teaches using overlapping amounts of
hydrophobic lotion compositions on topsheets identical to those disclosed by
Appellants’ own Specification using the same compositions (FF 3—7).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
Roe anticipates claims 1 and 13.
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B. 35 U.S.C. § 103(a) over Roe
The Examiner relies on Roe’s teaching in the anticipation rejection,
but finds Roe does not teach “using about 50mg/in2” as recited in claim 28
(Final Act. 5). The Examiner finds Roe teaches “an amount of about 35
mg/in2” and “wherein greater add-on levels maybe obtainable” (id.). The
Examiner finds “the amount to apply is an optimization parameter that one
skilled in the art would employ and reasonably would expect success” (Ans.
9).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that the Roe renders claims 1 and
28 obvious?
Principles of Law
“[Wjhere the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Analysis
We adopt the Examiner’s findings concerning the scope and content
of the prior art (Final Act. 4—5; FF 1—11), and agree that the claims are
rendered obvious by Roe. We address Appellants’ arguments below.
Appellants contend “Roe, at its broadest interpretation, does not teach
or suggest the claimed range of about 50 mg/ in2 to about 100 mg/in2” (App.
Br. 8).
We find this argument unpersuasive because Roe teaches the
treatments may be determined by “routine experimentation” (FF 10—11)
thereby recognizing that the amounts of lotion (FF 5) and amounts of open
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area on the article (FF 10) are optimizable variables. We recognize that
Roe’s range “of about 0.05 mg/in2 (0.0078 mg/cm2) to about 35 mg/in2 (5.43
mg/cm2)” (FF 5) may not expressly overlap the “about 50mg/in2 to about
100 mg/in2” recited in claim 28, but “a prima facie case of obviousness
exists when the claimed range and the prior art range do not overlap but are
close enough such that one skilled in the art would have expected them to
have the same properties.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003).
The Examiner reasonably relies upon specific teachings by Roe that
the amount of lotion added is subject to routine experimentation (FF 10) and
that Roe’s range is close enough that the ordinary artisan “reasonably would
expect success” (Ans. 9).
In contrast, Appellants provide no evidence that the difference
between the range endpoint in Roe of “about 35 mg/in2” and claim 1 of
“50mg/in2” are sufficiently different that a skilled artisan would expect them
to have different properties. Indeed, no results demonstrating secondary
considerations showing any unexpected result for this change in range has
been presented, and “it is not enough to show that results are obtained which
differ from those obtained in the prior art: that difference must be shown to
be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972).
Appellants contend that “Roe explicitly teaches away from the
combination made by the Office and gives no example teaching or
suggesting the claimed limitation of a topsheet with a lotion wherein the
entirety of the body facing surface is hydrophobic” (App. Br. 4). Appellants
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contend that, “[w]ith regard to the hydrophilicity/hydrophobicity of the
topsheet created in a finished absorbent article, Roe disclose that the
topsheet should be hydrophilic and teach away from the use of a
hydrophobic topsheet in a finished absorbent article” (id.).
We do not find the teaching away argument persuasive. A teaching
away requires a reference to actually criticize, discredit, or otherwise
discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed”).
Even in the portions of Roe cited by Appellants that indicate the
topsheet may be hydrophilic or a hydrophobic material treated to be
hydrophilic, Roe also teaches that “alternatively, the topsheet may be in the
form of an aperture formed film” (see App. Br. 4—6, citing Roe 18—19;
emphasis added). Thus, Roe expressly contemplates an alternative to
hydrophilic topsheets where the topsheet is a hydrophobic aperture formed
film (FF 3). As discussed above in the anticipation context, Roe’s preferred
Dri-weave® brand (FF 3) is also a topsheet preferred by the Specification
(FF 4), and is reasonably understood as inherently satisfying the requirement
of claim 1 for a hydrophobic topsheet “wherein the entirety of the body
facing surface is hydrophobic,” in the absence of rebuttal evidence presented
by Appellants.
In particular, Appellants provide no evidence that the Dri-weave®
brand topsheet undergoes any treatment that renders it hydrophilic in order
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to rebut the Examiner’s inherency position (see Ans. 7; “the Dri-Weave®
alternative does not need to be made hydrophilic.”) “[Attorney argument
[is] not the kind of factual evidence that is required to rebut a prima facie
case of obviousness.” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
We recognize, but also find unpersuasive, Appellants’ contention that
“Roe clearly teach[es] away from the combination of a hydrophobic topsheet
and a hydrophobic lotion composition in an absorbent article” (App. Br. 6).
Because Roe teaches both hydrophilic and hydrophobic topsheets as
discussed above (FF 3) and Roe specifically teaches hydrophobic lotion
components (FF 6), Appellants have not established on this record that Roe
discredits or discourages the use of these components in combination.
Indeed, Roe specifically teaches that “hydrophobic skin care compositions
may be utilized, so long as they are applied such that the fluid handling
properties of the topsheet are adequately maintained” (FF 11).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
Roe renders claims 1 and 28 obvious.
SUMMARY
In summary, we affirm the rejection of claims 1 and 13 under 35
U.S.C. § 102(b) as anticipated by Roe. Claims 2, 4—8, 10—12, 14, and 22—27
fall with claim 1.
We affirm the rejection of claims 1 and 28 under 35 U.S.C. § 103(a)
as obvious over Roe. Claims 2, 4—8, 10-14, and 22—27 fall with claim 1.
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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
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