Ex Parte Hendrix et al

Board of Patent Appeals and Interferences

Aug 17, 2012

11304487 (B.P.A.I. Aug. 17, 2012)

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.
11/304,487 12/15/2005 Joerg Hendrix KCX-1503 (21369) 3654
22827 7590 08/20/2012
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1798
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 JOERG HENDRIX, BRAULIO A. POLANCO,
BRYAN J. STADELMAN, DAVID W. HALL
and RYAN J. MCENEANY
______________

Appeal 2011-001611
Application 11/304,487
Technology Center 1700
_______________

Before CHARLES F. WARREN, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-18, 32-41, 45 and 46 in the Office
Action mailed December 14, 2009. We have jurisdiction. 35 U.S.C. §§ 6
and 134(a) (2002); 37 C.F.R. § 41.31(a) (2009).
We affirm the decision of the Primary Examiner.
Claims 1, 9 and 45 illustrate Appellants’ invention of an elastic
composite material, and is representative of the claims on appeal:
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1. An elastic composite material comprising:
a first elastic meltblown layer comprising an elastic polyolefin-based
meltblown polymer having a degree of crystallinity from about 3% to about
40%;
a plurality of generally parallel individual continuous filament strands
deposited on the first elastic meltblown layer in substantially the machine
direction, wherein the elastic composite material contains no other
individual continuous filament strands other than the plurality of individual
continuous filament strands deposited in substantially the machine direction;
and
a second elastic meltblown layer deposited on the continuous filament
strands opposite the first elastic meltblown layer;
wherein the elastic composite material is not stretch-bonded.
9. The elastic composite material of claim 1, wherein the elastic
composite material is incorporated into a personal care article adjacent to an
opening for a body part, with no facing layers covering the elastic composite
material.
45. The elastic composite material of claim 1, wherein the elastic
composite material does not contain any crossing strands that contact
directly or indirectly a majority of the plurality of individual continuous
filament strands.
Br. 20, 21, 24, Claim Appendix.
Appellants request review of the grounds of rejection advanced on
appeal by the Examiner: under 35 U.S.C. § 112, first paragraph, written
description requirement, claim 1-18, 32-41, 45 and 46; and under 35 U.S.C.
§ 103(a), claims 1-18, 32-41, 45 and 46 over Wright (US 5,385,775),
Jackson (US 4,741,944), Austin (US 5,413,849), Abuto (US 6,096,668) and
Appellants’ Specification (¶ 0045).1 Br. 4; Ans. 4, 5. .

1 The Examiner has withdrawn the ground of rejection under 35 U.S.C.
§ 112, second paragraph
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The Examiner also advanced the ground of rejection of claims 7 and
17 under 35 U.S.C. §103(a) over Wright, Jackson, Austin, Abuto,
Appellants’ Specification and Alper (US 6,491,776 B2). Ans. 10; see Office
Action 8. Appellants did not request review of or submit argument with
respect to this ground of rejection. See generally Br.
Appellants argue the first ground of rejection on claims 1 and 45, and
the second ground of rejection on claims 1 and 9, and thus we decide this
appeal based on claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009). See Br. 18.
Opinion
I.
We disagree with Appellants that the Examiner erred in finding that
the Specification does not provide a written description of an elastic
composite material comprising at least, among other things, “a plurality of
generally parallel individual continuous filament strands deposited on the
first elastic meltblown layer in substantially the machine direction, wherein
the elastic composite material contains no other individual continuous
filament strands other than the plurality of individual continuous filament
strands deposited in substantially the machine direction,” specified in
appealed claim 1; and of the further limitation “the elastic composite
material [of claim 1] does not contain any crossing strands that contact
directly or indirectly a majority of the plurality of [generally parallel]
individual continuous filament strands,” specified in appealed claim 45
(emphasis supplied). Ans. 4, 11-13; Br. 4-7.
We find that Appellants disclose in the Specification an elastic
composite material “comprising” at least, among other things, “an elastic
layer of an array of continuous filament strands deposited on the first elastic
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meltblown layer.” Spec. ¶ 0007 (3:15-18; emphasis supplied); see also
original claims 1, 10, 19; Spec. ¶¶ 0009 (4:6-8), 0012 (4:24-25), 0040, 0043
(9:18-21), 0071 (17:19-22), 0078 (19:11-18), 0082 (20:17-19); Figs. 1, 2.
We find that “pre-formed strands are also contemplated . . . [which] may
serve as the basis for a continuous filament array.” Spec. ¶ 0061. We find
“[t]he filaments, whether extruded or pre-formed, may be round with a
circular cross-section, or may have various other cross-sectional shapes . . .
include[ing] strips or flat strands, having a square, rectangular, or other
cross-sectional shape that lends a flat appearance to the strands.” Spec.
¶ 0062.
We find Appellants disclose in the Specification that Figure 1
“illustrates a schematic view of . . . a horizontal, continuous filament
laminate manufacturing process” in which “[a]n array of continuous
filaments 36 is extruded from a filament extrusion bank 35 onto the first
meltblown layer 31 on the forming surface 30,” wherein “the extrusion
apparatus 35 . . . can be configured to produce other materials, e.g. a film, to
achieve the inline placement of layers of the same or different materials.”
Spec. ¶¶ 0070 (17:9-10), 0071. We find Figure 1 would have disclosed to
one of ordinary skill in the art that the array of continuous filaments 36 is
extruded onto first meltblown layer 31 moving in the machine direction on
forming surface 30.
We find Appellants disclose in the Specification that the “structure of
the elastic composite material” containing “filament array 87” having a
plurality of filaments is illustrated in Figure 2 with “[t]he thicknesses of the
various layers . . . not necessarily to scale, and are exaggerated to illustrate
their existence.” Spec. ¶ 0078 (19:11-15). We find that “[i]n one
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embodiment, the continuous filaments in such laminates are desirably
present in an amount between about 7 to 18, or about 8 to 15 per cross-
directional inch.” Spec. ¶ 0079 (19:16-18).
We find Appellants disclose in the Specification that “Figure 4
schematically illustrates a vertical filament laminate manufacturing process
100 of the manufacture of elastic composite material 170,” wherein “at least
one molten elastomeric material 105 . . . is extruded from a die extruder 110
through spinning holes as a plurality of substantially continuous elastomeric
filaments.” Spec. ¶ 0083 (20:22-27). We find “[t]he die of the extruder 110
may be positioned with respect to the first roll 120 so that the continuous
filaments meet . . . roll 120 at a predetermined angle 130” which
“configuration allows the filaments to emerge at an angle from the die and
follow a relatively straight path to contact” roll 120, wherein angle 130 “may
be as little as a few degrees or as much as 90 degrees.” Spec. ¶ 0084 (213-
13). We find “[t]he meltblown layers 152, 154 may be applied to the
filaments from meltblown banks 153, 155 on opposite sides of the filaments
105” to form the elastic composite material. Spec. ¶ 0085 (21:24-25). We
find Figure 4 and related disclosure in the Specification would have
disclosed to one of ordinary skill in the art that the molten elastomeric
material 105 forming the continuous filaments are extruded in the machine
direction.
As Appellants point out, the Examiner bears the initial burden of
establishing that, prima facie, the disclosure in the Specification and Figures
would not have reasonably conveyed to those skilled in the art that
Appellants were in possession of the claimed elastic composite material
encompassed by appealed claims 1 and 45 at the time the present
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Application was filed, as required by § 112, first paragraph, written
description requirement. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc) (‘“[T]he test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.”) (citing Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1562-63 (Fed. Cir. 1991) (quoting Ralston Purina Co. v. Far-
Mar-Co., 772 F.2d 1570, 1575 (Fed. Cir. 1985)); In re Alton, 76 F.3d 1168,
1172, 1175-76, (Fed. Cir. 1996) (citing In re Wertheim, 541 F.2d 257, 262-
64 (CCPA 1976)). In order to establish a prima facie case, the Examiner or
the Board need only establish that as a matter of fact, Appellants claim
“embodiments of the invention that are completely outside the scope of the
specification.” Alton 76 F.3d at 1175-76; see also Wertheim, 541 F.2d at
263-64. Appellants can amend the originally claimed invention to avoid
prior art or for other purposes where there is adequate written description in
the Specification establishing that Appellants were in possession of the
invention to which they retreat at the time the Application was filed. See,
e.g., In re Johnson, 558 F.2d 1008, 1017-19 (CCPA 1977).
We determine that appealed claims 1 and 45 are drawn in product-by-
process format wherein the claimed elastic composite materials are specified
by, among other things, the limitation that the layer of a plurality of
continuous filament strands is formed by depositing the filament strands on
the first meltblown layer in substantially the machine direction. See, e.g., In
re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985); In re Bridgeford, 357 F.2d
679, 680-83 (CCPA 1966). The term ‘substantially” is a term of degree, and
we find no guidance for interpreting this term in the Specification, Figures,
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and original claims, as indeed, there is no disclosure therein which describes
depositing the array of continuous filament strands on the first meltblown
layer in any manner deviating to any extent from the machine direction. See,
e.g., Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826
(Fed. Cir. 1984) (“When a word of degree is used the district court must
determine whether the patent’s specification provides some standard for
measuring that degree.”). Thus, even if we give the term “substantially” its
common dictionary meaning of “largely but not wholly,”2 the written
description provided in the Specification, Figures and original claims does
not provide a written description of depositing the array of continuous
filament strands on the first elastic meltblown layer in a direction other than
the machine direction.
Furthermore, we find no disclosure in the Specification, Figures and
original claims which describes to any extent the structure of a layer of an
array of plurality of continuous filament strands resulting from depositing
the strands in the machine direction and certainly no disclosure of structure
when the strands are deposited in “substantially” the machine direction.
Indeed, as disclosed and originally claimed, the layer of the array of
continuous filament strands can be of any shape, can have any interaction
between individual strands, and can be orientated in any direction relative to

2 See, e.g., York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99
F.3d 1568, 1572-73 (Fed. Cir. 1996) (“In this case, the patent discloses no
novel use of claim words. Ordinarily, therefore, ‘substantially’ means
‘considerable in . . . extent,’ American Heritage Dictionary Second College
Edition 1213 (2d ed. 1982), or ‘largely but not wholly that which is
specified,’ Webster’s Ninth New Collegiate Dictionary 1176 (9th ed.
1983).”).
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the machine direction that can be obtained by depositing the array of a
plurality of continuous filament strands in any manner in the machine
direction.
Thus, we find no disclosure of the structure of a layer of an array of
plurality of continuous filament strands in which strands are “generally
parallel” as specified in appealed claim 1, and in which that structure “does
not contain any crossing strands that contact directly or indirectly a majority
of the plurality of [generally parallel] individual continuous filament
strands” as specified in appealed claim 45. Indeed, while “filament array
87” in Figure 2 would appear to depict “parallel” strands, this illustration is
described as “exaggerated to illustrate their existence” and there is no other
description in the Specification, Figures and original claims of a “parallel’
strand arrangement. Thus, the disclosure in the Specification, Figures, and
original claims neither provides guidance for interpreting the term of degree
“generally,” nor describes a structure corresponding to “generally parallel”
when the term of degree “generally” in appealed claim 1 is given its
common, dictionary meaning in context of “[f]or the most part,”3 Indeed,
crisscrossed strands can be “generally parallel” and are not entirely
precluded by the limitation of claim 45, which is also not described in the
written description in the Specification, Figures and original claims.
On the same basis, the appealed claim 1 limitation “the elastic
composite material contains no other individual continuous filament strands
other than the plurality of [generally parallel] individual continuous filament

3 See, e.g., generally, The American Heritage Dictionary of the English
Language 7 (4th ed., Houghton Mifflin Co., 2000).
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strands deposited in substantially the machine direction” is also not
described in the Specification, Figures and original claims.
On this record, we agree with the Examiner that appealed claims 1
and 45 encompass embodiments that are outside the scope of the
specification by the written description in the Specification, Figures and
original claims. Ans. 11-13. We are not convinced otherwise by
Appellants’ position that one skilled in the art would “understand that
parallel continuous filaments may be deposited in the machine direction, but
due to process conditions and/or anomalies, some strands may vary from
‘exactly’ parallel, possibly to the extreme that some strands come into
contact or even overlap with an adjacent strand.” Br. 5-6. Appellants
contend that “slight variances from ‘exactly’ parallel are to be expected
during manufacturing.” Br. 6. Appellants further contend that composite
elastic materials are known in the art from, among other sources, Wright,
and point to the disclosure in the Specification that “[s]uch stretch-bonded
laminates may include an elastic component that is a web, such as a
meltblown web, a film, an array/series of generally parallel continuous
filament strands (either excluded or preformed), or a combination of such.”
Br. 6, citing Spec. 1:25. Spec. ¶ 0002 (1:21-26). Appellants argue that
while this disclosure in the Specification “[references] prior art stretch-
bonded laminates . . . those skilled in the art appreciate that the procedure for
extruding or otherwise placing the continuous strands in the prior art are
generally the same as the present invention,” as shown, for example, in
Figure 1. Br. 7.
We find little merit in Appellants’ reliance on the knowledge of one of
ordinary skill in the art, as indeed, what that person would have been “lead
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. . . to speculate as to modifications that the inventor might have envisioned,
but failed to disclose” does not show that Appellants were in possession of
the invention now claimed, the disclosure in the Specification, Figures and
original claims notwithstanding. Lockwood v. American Airlines, Inc., 107
F.3d 1565, 1571-72 (Fed. Cir. 1997) (“It is the disclosures of the
applications that count. . . . While the meaning of terms, phrases, or
diagrams in a disclosure is to be explained or interpreted from the vantage
point of one skilled in the art, all the limitations must appear in the
specification. The question is not whether a claimed invention is an obvious
variant of that which is disclosed in the specification. Rather, a prior
application itself must describe an invention, and do so in sufficient detail
that one skilled in the art can clearly conclude that the inventor invented the
claimed invention as of the filing date sought.”).
Accordingly, we affirm the ground of rejection of claims 1-18, 32-41,
45 and 46 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 elastic composite material encompassed by claims 1 and 9.
In this respect, we are in agreement with the Examiner’s analysis of the
evidence in Wright, Jackson, Austin, Abuto and Appellants’ Specification
(¶ 0045) 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.
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We cannot agree with Appellants that the Examiner erred in finding
that Wright would have disclosed to one of ordinary skill in the art an
“elastic composite material [that] is not stretch-bonded” as specified in
claims 1 and 9. Ans. 5, 14, citing Wright col.14 l.40 to col.15 l.39;
Br. 10-12. We find that Wright discloses that the web of elastic composite
material described at columns 14-15 is further modified with facing to form
a laminate that is then stretch-bonded. Wright col.15 l.50 to col.16 l.5.
Thus, contrary to Appellants’ contentions, the disclosure at columns 14-16
evinces that Wright’s disclosure at column 5, lines 47-59, relied on by the
Examiner, describes a web of elastic composite material that is not stretch-
bonded. Ans. 5, 14; Br. 10-12.
We further disagree with Appellants’ position that the Examiner erred
in determining one of ordinary skill in the art would have utilized “an
elastic polyolefin-based polymers having a degree of crystallinity from about
3% to about 40%” disclosed in Jackson, Austin and Abuto for the
elastomeric meltblown fibers of Wright. Ans. 6, 15; Br. 13-16. We find that
as the Examiner points out, Wright would have disclosed to one of ordinary
skill in the art that the elastomeric meltblown fibers can be made from any
material that can be formed into fibers, and Jackson, Austin and Abuto
would have disclosed elastomeric polymers that can be meltblown into
fibers that fall within the polymeric material described by Wright as suitable
for that purpose. Ans. 6, citing Wright col. 12 l.14 to col. 13 l.6; Jackson
col. 6 l.45 to col. 7 l.6, Austin col. 9 ll.9-31, Abuto col. 7 ll.23-40. Indeed,
Wright would have disclosed that useful elastomeric polymers include,
among other things, copolymers of ethylene and at least one vinyl monomer,
such as vinyl acetate (EVA), and Jackson discloses that a suitable
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commercially available EVA for an elastic meltblown web is Escorene.
Wright col. 12 ll.48-51, Jackson col. 6 l.57 to col.7 l.2. Appellants do not
dispute the Examiner’s findings that the polymeric material disclosed by
Jackson, Austin and Abuto have a degree of crystallinity of from about 3%
to about 40% as claimed as established by Appellants’ disclosure. Ans. 6;
Br. 13-16.
On this record, we are not convinced by Appellants’ contentions that
one of ordinary skill in the art would not have used particular polymeric
materials disclosed by Jackson, Austin and Abuto to form Wright’s
meltblown fibers because of the structure of articles formed with meltblown
fibers prepared with the polymeric materials by Jackson, Austin and Abuto.
Br. 14-16. Indeed, Wright would have described suitable polymeric
materials for the meltblown fibers and states no limitations on the polymeric
materials, leading one of ordinary skill in the art to select such polymeric
materials known in the art to be useful to form meltblown fibers, regardless
of the use of such meltblown fibers in the art.
We also disagree with Appellants that the Examiner erred in finding
that Wright’s web of elastic composite material would have been capable of
being used in a personal care article as specified in claim 9. Ans. 8; Br. 16-
17. We find Wright would have disclosed that the web of elastic composite
materials disclosed therein can be incorporated into a personal care item
wherein the web of elastic composite material can be combined with one
gatherable layer, leaving the web of elastic composite material exposed.
Wright, e.g., col. 1 ll.11-16, col. 5 ll.30-38. We determine that one of
ordinary skill in the art would have reasonably positioned Wright’s web of
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elastic composite material in the personal care article to take advantage of its
properties.
Appellants rely on the same positions with respect to claims 10 and 18
that we addressed above.
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 Wright, Jackson, Austin, Abuto and Appellants’
Specification 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 1-18, 32-41, 45 and 46 would have been obvious as a matter of law
under 35 U.S.C. § 103(a).
III.
We summarily affirm the ground of rejection of claims 7 and 17 over
Wright, Jackson, Austin, Abuto, Appellants’ Specification and Alper which
has not been selected for review and briefed by Appellants. See above p. 3.
See 37 C.F.R. § 41.37(c)(1)(vi) and (vii); see also Manual of Patent
Examining Procedure § 1205.02 (8th ed., Rev. 3, August 2005) (“If a ground
of rejection stated by the examiner is not addressed in the appellant’s brief,
that ground of rejection will be summarily sustained by the Board.”).
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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