Ex Parte Hanschen et al

Patent Trial and Appeal Board

Sep 14, 2017

13633450 (P.T.A.B. Sep. 14, 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.
13/633,450 10/02/2012 Thomas P. Hanschen 69977US002 4923
32692 7590 09/18/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
HANDVILLE, BRIAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/18/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS P. HANSCHEN,
WILLIAM H. SIKORSKI, JR., RONALD W. AUSEN,
PAUL S. WALLIS, VATHSALA RAJAGOPAL, and
WILLIAM J. KOPECKY
Appeal 2016-007699
Application 13/63 3,45 c1
Technology Center 1700
Before PETER F. KRATZ, CHRISTOPHER L. CRUMBLEY, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—5, 7—9, and 18—24. We have jurisdiction. 35
U.S.C. § 6(b). We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is 3M Company
(formerly known as Minnesota Mining and Manufacturing Company).
Appeal Br. 2.
Appeal 2016-007699
Application 13/633,450
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a laminate for a
nonwoven elastic film for use in, for example, the limited-use garment
industry. Spec. 1:5—8. The laminate could also be used for bandage-like
material. Id. at 26:22—25. The Specification states that the laminate is
designed to maximize elastic potential of the second elastic regions of the
film. Id. at 1:22—25. Claims 1 and 18, reproduced below with emphases
added to certain key recitations, are illustrative of the claimed subject
matter:
1. An incrementally activated laminate comprising:
an incrementally activated fibrous web having an activation
pitch; and
a film comprising alternating first and second regions laminated
to the incrementally activated fibrous web,
wherein the first regions comprise a first polymeric composition,
wherein the second regions comprise an elastic polymeric
composition that is more elastic than the first polymeric
composition,
wherein a distance between midpoints of two first regions
separated by one second region is smaller than the activation
pitch, and wherein the first regions are not plastically
deformed.
18. An extensible laminate comprising:
an extensible fibrous web; and
a film comprising alternating first and second regions laminated
to the extensible fibrous web,
2 In this opinion, we refer to the Final Office Action dated July 6, 2015
(“Final Act.”), the Appeal Brief filed January 6, 2016 (“Appeal Br.”), the
Examiner’s Answer dated June 3, 2016 (“Ans.”), and the Reply Brief filed
August 3, 2016 (“Reply Br.”).
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Application 13/633,450
wherein the first regions comprise a first polymeric composition,
wherein the second regions comprise an elastic polymeric
composition that is more elastic than the first polymeric
composition, and wherein a tensile elongation at maximum
load of the film is up to 250 percent of the tensile elongation
at maximum load of the extensible fibrous web.
Appeal Br. 9—11 (Claims App’x).
REJECTION AND REFERENCES
On appeal, the Examiner maintains the rejection of claims 1—5, 7—9,
and 18—24 under 35 U.S.C. § 103 as unpatentable over Morman et al., US
7,651,653 B2, issued Jan. 26, 2010 (hereinafter “Morman”) in view of Wood
et al., US 5,773,374, issued June 30, 1998 (hereinafter “Wood”). Ans. 3.
ANALYSIS
Claim 1. The Examiner finds that Morman teaches a method of
making an elastic laminate with a facing layer “which reads on the limitation
which requires an incrementally activated laminate comprising a facing layer
(fibrous web) having an activation pitch and an elastic layer (film).” Ans. 3—
4 (providing citations to Morman). The Examiner finds that Morman does
not teach an elastic layer comprising first and second regions as claimed. Id.
at 4. The Examiner finds that Wood teaches an elastic layer with first and
second regions. Id. at 4—7 (providing citations to Wood). The Examiner
concludes that it would have been obvious “to modify the elastic layer of
Morman with the elastic film of Wood to improve wearer comfort when the
film material is used as a garment.” Id. at 7.
Appellants argue that the combined references do not teach or suggest
claim 1 ’s recitation “wherein the first regions [of the film] are not plastically
deformed.” Appeal Br. 3. In particular, Appellants argue that if the
transversely stretchable elastic film of Wood is introduced to the production
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method of Morman, the first regions of Wood would become plastically
deformed. Id. at 4. Appellants further argue that if, alternatively, a
longitudinally stretchable elastic film of Wood is used, such laminate is
already plastically deformed. Id. at 5 (citing Wood 4:42-45 (teaching that
longitudinally stretched nonwoven film laminates are not flat)). The
evidence cited by Appellants supports these positions.
The Examiner does not directly refute Appellants’ position above.
Rather, the Examiner states that the rejection does not rely upon Morman’s
method to form the laminate. Ans. 8—9. The Examiner, however, does not
explain what method would have been used in place of Morman’s method or
why a person of ordinary skill in the art would have had reason to modify
Morman’s formation method. As Appellants state, “the rejection fails to
provide a rationale for combining the references and modifying the method
of Morman et al. such that it would not plastically deform the first regions as
presently claimed.” Reply Br. 2; see also In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”).
Because the Examiner has not articulated reasoning with rational
underpinning as to why a person of skill in the art would combine Morman
and Wood with a reasonable expectation of success that the resulting process
would result in providing a laminate with a film with regions that do not
plastically deform corresponding to claim 1 ’s recited first regions, we do not
sustain the Examiner’s rejection of claim 1 or rejection of claims that depend
from claim 1.
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Claim 1 8. Like claim 1, the Examiner also rejects claim 18 as
obvious over Morman in view of Wood. We review the appealed rejections
for error based upon the issues identified by the Appellants and in light of
the arguments and evidence produced thereon. Cf. Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s
practice to require an applicant to identify the alleged error in the examiner’s
rejections”)). After considering the evidence presented in this Appeal and
each of Appellants’ arguments, we are not persuaded that Appellants identify
reversible error with respect to claim 18. Thus, we affirm the Examiner’s
rejections for the reasons expressed in the Final Office Action and the
Answer. We add the following primarily for emphasis.
Appellants do not separately argue any claims depending from claim
18. Therefore, we limit our discussion to claim 18, and the claims
depending from claim 18 stand or fall with claim 18. 37 C.F.R.
§ 41.37(c)(l)(iv) (2013).
Claim 18 does not recite the “wherein the first regions [of the film]
are not plastically deformed” recitation at issue for claim l.3 Claim 18
instead recites “wherein a tensile elongation at maximum load of the film is
up to 250 percent of the tensile elongation at maximum load of the
extensible fibrous web.” Appeal Br. 10-11 (Claims App).
3 Because of this difference in the claims, our determination that the
Examiner has not identified adequate reason to combine Morman and Wood
with a reasonable expectation of success that the resulting process would
result in providing a laminate with a film with regions that do not plastically
deform corresponding to claim 1 ’s recited first region does not apply to
claim 18.
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The Examiner finds that claim 18’s recited tensile strength properties
“are deemed to naturally flow from the structure in the prior art since the
combination of the Morman and Wood references teach an invention with a
substantially similar structure and chemical composition as the claimed
invention.” Ans. 7—8. A preponderance of the evidence, as cited by the
Examiner, supports this position. Id.
Appellants argue that the Examiner’s finding is in error because the
prior art laminate would not have a substantially similar structure. Appeal
Br. 6. In particular, Appellants argue that the facing of Morman “could also
be” non-extensible and thus different than the “extensible fibrous web”
recited in claim 18. Id. Appellants thus conclude that, because the structure
of claim 18 is different (or “could also be” different) than the prior art, the
same tensile strength properties cannot be presumed. Id.
The Examiner correctly concludes that “extensible” as recited in claim
18 is defined by the Specification. Ans. 12. The Specification states that
“[t]he term ‘extensible refers to a material that can be extended or elongated
in the direction of an applied stretching force without destroying the
structure of the material or material fibers. An extensible material may or
may not have recovery properties.” Spec. 3:27—29. The Examiner finds that
Morman teaches applying a stretching force to an elastic laminate, including
its facing layer, and finds that Morman does not teach that the stretching
destroys the facing layer. Ans. 12. Thus, the Examiner finds that Morman
teaches an extensible facing layer. The preponderance of the evidence
supports this finding.
In the reply brief, Appellants clarify that they do not dispute this
finding. See Reply Br. 2 (stating that Appellants are not arguing that
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Morman “does not disclose an extensible fibrous web”). To the extent
Appellants argue that a person of skill in the art could also consider a non-
extensible fibrous web in view of Morman (Appeal Br. 6), this argument
does not negate the teachings regarding a fibrous web relied upon by the
Examiner. See In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“all
disclosures of the prior art, including unpreferred embodiments, must be
considered”).
Appellants also argue that the references do not explicitly teach the
recited tensile characteristics. See, e.g., Reply Br. 2. The Examiner
provides extensive findings establishing that the product resulting from the
combination of Morman/Wood would be identical or substantially identical
to those of claim 18. Ans. 11—16. Appellants do not persuasively dispute
these findings, and Appellants do not dispute the Examiner’s rationale for
combining the Morman and Wood references to reach claim 18. The
Examiner’s findings are sufficient to shift the burden to the applicant to
prove that the applied prior art does not render an extensible laminate having
the recited tensile characteristics prima facie obvious. In re Best, 562 F.2d
1252, 1256 (CCPA 1977); see also Southwire Co. v. Cerro WireLLC,___
F.3d____ , Appeal No. 2016-2287, slip op. at 9 (Fed. Cir. Sept. 7, 2017)
(affirming obviousness determination where cited art “does not preclude the
possibility, or even likelihood, that its process achieved” claim’s recited
characteristic). Here, Appellants make no persuasive argument that would
meet Appellants’ burden.
Because Appellants’ arguments do not identify Examiner error, we
sustain the Examiner’s rejection of claims 18—24.
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Withdrawn claims. Appellant argues that dependent claims 10-17
and 25—30 are patentable because those claims depend from either claim 1 or
from claim 18. Appeal Br. 8. Claims 10—17 and 25—30 have been
withdrawn. Id. We therefore do not consider the merit of those claims on
appeal. 35 U.S.C. § 6(b) (“The Patent Trial and Appeal Board shall... on
written appeal of an applicant, review adverse decisions of examiners upon
application for patents. . . .”).
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
1—5 and 7—9. We affirm the Examiner’s rejection of claims 18—24.
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-IN-PART
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