Ex parte HUNTOON et al.

Board of Patent Appeals and Interferences

Jul 21, 1998

08294155 (B.P.A.I. Jul. 21, 1998)

Application for patent filed August 22, 1994. According1
to the appellants, the application is a continuation-in-part
of Application No. 08/157,802, filed November 23, 1993, now
abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANDREW E. HUNTOON, RANDY E. MEIROWITZ,
SRIRAM P. ANJUR, ROBERT J. PHELAN,
KIM T. TANG and ANTHONY J. WISNESKI
____________
Appeal No. 97-4294
Application No. 08/294,1551
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge,
ABRAMS and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 39, which are all of the claims
pending in this application.
Appeal No. 97-4294
Application No. 08/294,155
We REVERSE and enter new rejections pursuant to 37 CFR
§ 1.196(b).
Appeal No. 97-4294 Page 3
Application No. 08/294,155
BACKGROUND
The appellants' invention relates to an absorbent
structure. An understanding of the invention can be derived
from a reading of exemplary claim 1, which appears in the
appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Pieniak 4,560,372 Dec. 24,
1985
Jackson et al. 5,350,370 Sep.
27, 1994
(Jackson) (filed Apr. 30,
1993)
Reference made of record by this panel of the Board is:
Bair 5,135,787 Aug.
4, 1992
Claims 1 to 39 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellants regard as the invention.
Appeal No. 97-4294 Page 4
Application No. 08/294,155
Claims 1 to 12, 14 to 16, 18 to 32, 34 to 36, 38 and 39
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Pieniak.
Appeal No. 97-4294 Page 5
Application No. 08/294,155
Claims 13, 17, 33 and 37 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Pieniak in view of Jackson.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 8, mailed May 10, 1996) and the examiner's answer (Paper
No. 13, mailed June 23, 1997) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
brief (Paper No. 12, filed May 12, 1997) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness issue
Appeal No. 97-4294 Page 6
Application No. 08/294,155
We will not sustain the examiner's rejection of claims 1
to 39 under 35 U.S.C. § 112, second paragraph.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted
by one possessing the ordinary level of skill in the pertinent
art. Id.
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as
Appeal No. 97-4294 Page 7
Application No. 08/294,155
precise as the examiner might desire. If the scope of the
invention sought to be patented cannot be determined from the
language of the claims with a reasonable degree of certainty,
a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is appropriate.
Furthermore, appellants may use functional language,
alternative expressions, negative limitations, or any style of
expression or format of claim which makes clear the boundaries
of the subject matter for which protection is sought. As
noted by the Court in In re Swinehart, 439 F.2d 210, 160 USPQ
226 (CCPA 1971), a claim may not be rejected solely because of
the type of language used to define the subject matter for
which patent protection is sought.
With this as background, we analyze the specific
rejection under 35 U.S.C. § 112, second paragraph, made by the
examiner of the claims on appeal. The examiner determined
(final rejection, p. 2) that the claims were indefinite
because the phrase "at least about 2 times . . . 240
millimeters" defines the article in terms of something
other than itself, lending ambiguity as to what
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structural feature or combination of structural and
material features allow these characteristics to
manifest.
The appellants argue (brief, pp. 3-4) that the
specification provides the required degree of clarity and
particularity. We agree. The specification at page 10, lines
23-32, provides a definition of the term "otherwise
substantially identical absorbent structure without any
wettable staple fiber" which is used in the phrase found
objectionable by the examiner. With this definition, the
phrase in question makes clear the boundaries of the subject
matter for which protection is sought. Thus, the examiner's
rejection is improper. Accordingly, the decision of the
examiner to reject claims 1 to 39 under 35 U.S.C. § 112,
second paragraph, is reversed.
The obviousness issues
We will not sustain the examiner's rejection of claims 1
to 39 under 35 U.S.C. § 103.
Appeal No. 97-4294 Page 9
Application No. 08/294,155
Obviousness is established by presenting evidence that
the reference teachings would appear to be sufficient for one
of ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 9 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is obvious must be supported by
evidence, as shown by some objective teaching in the prior art
or by knowledge generally available to one of ordinary skill
in the art that would have led that individual to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). Rejections based on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
Appeal No. 97-4294 Page 10
Application No. 08/294,155
With this as background, we analyze the specific
rejection under 35 U.S.C. § 103 made by the examiner of the
independent claims on appeal. The examiner determined (final
rejection, p. 3) that
Pieniak discloses the material ratios of the
absorbent structure substantially as claimed, however,
Pieniak does not explicitly set forth liquid uptake rates
in terms of the article with no wettable staple fiber.
As concerns this deficiency, it would have been
obvious to one of ordinary skill within the art that
since the matrix of Pieniak does satisfy the broad staple
fiber, binder fiber and superabsorbing polymer percentage
limitations that under specific conditions the article
would satisfy the uptake limitations.
The appellants argue (brief, pp. 4-6) that Pieniak does
not suggest (1) wettable stable fibers, (2) wettable binder
fibers, or (3) that the absorbent structure exhibits the
claimed liquid uptake rate improvement.
In our opinion, the claimed subject matter would not have
been obvious from the teachings of Pieniak. In that regard,
Pieniak teaches that the superabsorbent is present in an
amount of at least 10% by weight of a first fibrous layer, and
preferably from about 20% to about 90%. The first fibrous
Appeal No. 97-4294 Page 11
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The reference to Jackson was only applied by the2
examiner to suggest the features of dependent claims 13, 17,
33 and 37. Thus, the examiner did not rely on Jackson for any
suggestion relative to the nonobvious limitations discussed
layer also includes both wet and dry resilient fibers which
are generally synthetic staple fibers such as polyethylene,
polypropylene and the like. Pieniak teaches that if the
fibers selected are not thermoplastic, a minor amount of
thermoplastic fibers can be added to provide a binder fiber so
that heat bonding can take place. From the teachings of
Pieniak, it is our view that one skilled in the art would be
unable to determine if the binder fibers are wettable or not.
Thus, Pieniak would not have suggested the claimed wettable
binder fibers. In addition, it is opinion, that while under
specific conditions articles taught by Pieniak would satisfy
the uptake limitations, this by itself is not sufficient to
establish obviousness since there is no motivation or
suggestion to make the claimed invention in light of the
teachings of Pieniak.
For the above reasons, the decision of the examiner to
reject claims 1 to 39 under 35 U.S.C. § 103 is reversed.2
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Application No. 08/294,155
above.
New grounds of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection under 35 U.S.C. § 102.
Anticipation by a prior art reference under 35 U.S.C. §
102 does not require either the inventive concept of the
claimed subject matter or the recognition of inherent
properties that may be possessed by the prior art reference.
See Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633,
2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). A prior art reference anticipates the subject of a
claim when the reference discloses every feature of the
claimed invention, either explicitly or inherently (see Hazani
v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358,
1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984)); however, the law of anticipation does not require
that the reference teach what the appellants are claiming, but
only that the claims on appeal "read on" something disclosed
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Application No. 08/294,155
in the reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied,
465 U.S. 1026 (1984)).
It is well settled that the burden of establishing a
prima facie case of anticipation resides with the Patent and
Trademark Office (PTO). See In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). When relying upon
the theory of inherency, the PTO must provide a basis in fact
and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art.
See Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. &
Int. 1990).
After the PTO establishes a prima facie case of
anticipation based on inherency, the burden shifts to the
appellant to prove that the subject matter shown to be in the
prior art does not possess the characteristics of the claimed
invention. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964,
Appeal No. 97-4294 Page 14
Application No. 08/294,155
966 (Fed. Cir. 1985); In re King, 801 F.2d 1324, 1327, 231
USPQ 136, 138 (Fed. Cir. 1986).
For the reasons set forth below in the rejections under
35 U.S.C. § 102, it is our view that the PTO has established a
prima facie case of anticipation based upon inherency.
Hence, the appellants' burden before the PTO is to prove that
the applied references do not perform the functions defined in
the claims.
35 U.S.C. § 102(e) Rejection based on Jackson
Claims 1 to 39 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Jackson.
Jackson discloses a high wicking liquid absorbent
composite suitable for a wide number of uses including
personal care products. The composite is made from a
relatively uniform mixture of from about 5 to about 20 percent
fine wettable fiber,
from about 3 to about 30 percent pulp fibers, from about 50 to
about 90 percent superabsorbent and from 0 to about 10 percent
binder, the percentages being on a dry weight basis.
Appeal No. 97-4294 Page 15
Application No. 08/294,155
Jackson teaches that the pulp fibers will most typically
be a wood pulp or cellulose material such as wood pulp fibers
(commonly referred to as fluff), cotton, cotton linters,
bagasse or rayon fibers. In addition, synthetic counterparts
to the foregoing materials are also considered to be within
the scope of Jackson's invention. The fibers will have
lengths in the range of about to 2 to about 10 millimeters.
Examples of wood pulp fluff include CR2054 fluffing pulp
produced by Kimberly-Clark Corporation of Neenab, Wis. and
NB416 fluffing pulp produced by Weyerhauser Corporation of
Federal Way, Washington.

Jackson discloses that the superabsorbent material is
oftentimes referred to as a "hydrogel" or "hydrocolloid".
Such
superabsorbents are well known and produced in at least three
forms including granules, fibers and flakes. Granular forms
are the most common and typically have particle diameters in
the range of about 50 to 1000 micrometers with liquid
retention capacities in the range of 10 to 40 grams per gram
of superabsorbent under a load of 0.5 pounds per square inch
Appeal No. 97-4294 Page 16
Application No. 08/294,155
(3500 pascals) using 0.9% by weight saline solution. Such
materials occur naturally and may also be synthesized.
Examples of
natural superabsorbents or hydrocolloids include gum arabic,
agar, guar gum, starches, dextran and gelatin. Semi-synthetic
versions include modified celluloses such as carboxymethyl
cellulose and modified starches. Examples of synthetic
absorbent gelling material polymers include but are not
limited to polyvinylpyrrolidone and poly-acrylates.
Commercially available products include, but are not limited
to, Hoechst-Celanese SANWET IM5000 and IM3900 from®
Hoechst-Celanese Corporation of Charlotte, N.C.; Dow Drytech®
534 from Dow Chemical Company of Midland, Mich. and Allied
Colloids SALSORB 89 from Allied Colloids, Ltd. of Bradford,®
UK. Fibrous superabsorbents are also commercially available.
Typically these fibers will have diameters ranging from about
10 to 50 microns and lengths ranging from about 3 to 60
millimeters. Their absorbency will typically range between
about 10 and about 40 grams per gram of superabsorbent under a
load of 0.5 pounds per square inch (3500 pascals) using 0.9%
by weight saline solution. Commercially available
Appeal No. 97-4294 Page 17
Application No. 08/294,155
superabsorbent fibers include Allied Colloids/Courtalds FSA®
101 and 111; ARCO FIBERSORB from Arco Corporation of®
Philadelphia, Pa.; and TOYO BOSEKI KK Lanseal from Toyo Boseki
KK of Osaka, Japan.
Jackson teaches that the fine wettable fiber is a fiber
which is very small in diameter in comparison to the fibers
found in the conventional fluff-based absorbent core materials
and the superabsorbent fibers defined above. Typically, the
fine wettable fiber will have a length less than about 2
millimeters and a fiber diameter less than about 5 microns and
generally the diameter will be between about 0.5 and 2.0
microns. The fiber should either have inherent hydrophilic
properties or be treated so as to have such properties. As a
result, the fine wettable fiber will have an advancing contact
angle less than 90° and generally less than 70° using
deionized water. Hoechst Celanese cellulose acetate Fibrets®
fibers from Hoechst Celanese Corporation of Charlotte, N. C.
is an example of such fine
wettable fibers. The Hoechst Celanese Fibrets fibers are®
highly
Appeal No. 97-4294 Page 18
Application No. 08/294,155
fibrillated microfibers and have lengths ranging from between
20 and 200 microns and diameters of 0.5 to 5 microns. Another
fine wettable fiber is the CFF fibrillated fiber from®
American Cyanamid Company of Stanford, Conn.
Jackson also teaches that the fine wettable fibers prove
particularly advantageous when used in conjunction with high
swell superabsorbents. Certain superabsorbents when absorbing
liquids swell more than others. When such high swell
superabsorbents are used in absorbent composites, they will
tend to expand. As they do, the center to center spacing
between the particles increases thus increasing the void
volume of the
total composite. If the spacing becomes too large and thus
the void volume becomes too great, then the capillarity of the
structure will decrease, and, as a result, the absorbent
composite cannot be fully utilized. The fine wettable fibers,
however, will tend to bridge the gaps between the particles
and provide a path for liquid transport. Consequently, the
capillarity is maintained and the liquid can be wicked to more
remote areas of the absorbent.
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Application No. 08/294,155
Jackson discloses that the binder serves to hold together
the components of the absorbent composite through mechanical
entanglement, adhesion or both. The binder used by Jackson is
binder fibers which can be relatively short staple fibers or
more continuous fibers such as meltblown and spunbond fibers.
Staple length fibers range in size from about 6 to 40 mm with
denier sizes ranging from about 1.5 to 6 denier. Examples of
staple fibers include straight or crimped single polymer
staple fibers made from polyolefins, nylons or polyesters.
Fusible synthetic pulps, such as PLEXAFIL from E. I. du Pont®
de Nemours of
Wilmington, Del., may also be used for bonding purposes but
typically have fiber sizes outside the aforementioned range.
Multiconstituent fibers such as bicomponent fibers also may be
used. Such bicomponent fibers can provide both mechanical and
adhesive bonding when heated to bond their sheaths to
surrounding materials. Jackson teaches (column 8, lines 10-
16) that
suitable binder fibers are those which have a uniform
polymer composition across their diameters or they may be
non-uniform or even have distinct regions as with
bicomponent fibers. The fibers also can have both
regular and irregular-shaped cross--sections and they can
Appeal No. 97-4294 Page 20
Application No. 08/294,155
be either hydrophilic or hydrophobic, though hydrophilic
fibers are more desirable for liquid transport.

Jackson discloses the following specific examples of high
wicking liquid absorbent composites.
Example 1 included 62% by weight IM5000P superabsorbent
granules produced by Hoechst Celanese Corporation of Richmond,
Va., 16% by weight CR2054 fluffing pulp produced by
Kimberly-Clark Corporation of Neenab, Wis., 16% by weight
cellulose acetate Fibrets fibers produced by Hoechst Celanese®
Corporation of Charlotte, N.C. and 6% by weight generally
continuous macroscopic meltblown polypropylene reinforcing
fibers (i.e., binder fibers) having average diameters of
approximately 15 microns.
Example 2 included the same components as Example 1, the
difference being the relative weight percent of each
component. The material in Example 2 comprised 80% by weight
superabsorbent, 3% by weight fluffing pulp, 14% by weight
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cellulose acetate Fibrets fine wettable fibers and 3% by®
weight polypropylene reinforcing fibers.
Example 3 included two sample materials (sample 3a and
sample 3b). The sample 3a material included 75% by weight of
an experimental high liquid retention/high gel strength
superabsorbent produced by Dow Chemical Corporation of
Midland, Mich., 19% by weight CR2054 fluffing pulp produced by
Kimberly-Clark Corporation of Neenah, Wis. and 6% by weight
Danaklon ES-C bicomponent polyolefin binder fibers from
Danaklon
a/s of Varde, Denmark. The binder fibers were 3.3 decitex
(dtex) fibers with a length of 6 mm. Sample 3b included 75%
by weight superabsorbent, 14% by weight cellulose acetate
Fibrets fine wettable fibers, 6% by weight fluffing pulp and®
5% by weight bicomponent polyolefin binder fibers.
Example 4 included two sample materials (sample 4a and
sample 4b). The sample 4a material included 70% by weight of
a developmental acrylate superabsorbent 10 decitex by 6 mm
fiber labeled "FSA -101" produced by a joint venture of®
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Application No. 08/294,155
Courtaids Fibers Ltd. of Coventry, UK and Allied Colloids,
Ltd. of Bradford, UK, 23% by weight Weyerhauser NB-416
fluffing pulp produced by Weyerhauser Corporation of Federal
Way, Washington and 7% by weight Danaklon bicomponent
polyolefin binder fiber
of the same type mentioned in the previous examples. Sample
4b used 75% by weight of the same superabsorbent fiber as
sample
4a. Intimately mixed with the superabsorbent fibers was 13%
by weight of the cellulosic acetate Fibrets fine wettable®
fibers, 5% by weight of the fluffing pulp and 7% by weight of
the Danaklon PE/PP eccentric sheath core fiber. The fine
wettable
fibers, pulp and bicomponents fibers were the same as those
previously mentioned in the preceding examples.
Example 5 included two sample materials (sample 5a and
sample 5b). The sample 5a material included 75% by weight of
the same developmental acrylate superabsorbent 10 decitex by 6
mm FSA -101 fiber from Example 4, 20% by weight NB416 fluffing®
pulp produced by Weyerhauser Corporation of Federal Way,
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Application No. 08/294,155
Washington and 5% by weight of the bicomponent PE/PP binder
fiber mentioned in the previous examples and produced by
Danaklon a/s of Varde, Denmark. Sample 5b used the same
superabsorbent fibers and bicomponent fibers as sample 5a and
the same cellulose acetate fine wettable fibers and fluffing
pulp as used in sample 4b. Sample 5b contained 75% by weight
superabsorbent fiber, 16% by weight cellulose acetate Fibrets®
fine wettable fibers, 4% by weight fluffing pulp and 5% by
weight bicomponent polyolefin binder fiber.
Example 6 included two sample materials (sample 6a and
sample 6b). The sample 6a used the same components as sample
5a except for the length of the superabsorbent fiber which was
12 mm instead of 6 mm. The sample 6a comprised 75% by weight
superabsorbent fiber, 20% by weight fluffing pulp and 5% by
weight of bicomponent PE/PP binder fiber. Sample 6b used the
same materials as did sample 5b. Sample 6b comprised 75% by
weight superabsorbent fiber, 16% by weight fine wettable
fiber,
4% by weight fluffing pulp and 5% by weight bicomponent binder
fiber.
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Application No. 08/294,155
Example 7 included two sample materials (sample 7a and
sample 7b). The sample 7a material included 75% by weight of
a developmental acrylate superabsorbent 10 dtex by 12 mm fiber
labeled "FSA -111" produced by a joint venture of Courtaids®
Fibers Ltd. of Coventry, UK and Allied Colloids, Ltd. of
Bradford, UK, 20% by weight CR2054 fluffing pulp from
Kimberly-Clark Corporation of Neenah, Wis. and 5% by weight
bicomponent polyolefin binder fiber (Danaklon ES-C 3.3 dtex by
6 mm fibers from Danakalon a/s of Varde, Denmark). Sample 7b
used the same materials as sample 7a with the addition of the
cellulose acetate fine wettable fibers described and used in
sample 6b. Sample 7b comprised 75% by weight superabsorbent
fiber, 16% by weight fine wettable fiber, 4% fluffing pulp and
5% by weight binder fiber.
A comparison of the claimed subject matter (using claim 1
as a guide) to the above teachings of Jackson reveals that
Jackson does not specifically disclose that (1) the pulp
fibers are wettable, (2) the binder fibers are wettable and
(3) the liquid uptake rate is at least 2 times greater than
the article with no wettable staple fiber.
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Application No. 08/294,155
We find that there is a reasonable basis to conclude that
the pulp fibers used by Jackson (e.g., wood pulp fibers,
fluffing pulp) are wettable. Jackson is silent as to whether
or not his pulp fibers are wettable. However, since the
appellants' disclosure (specification, p. 9) informs us that
cellulosic fibers such as wood pulp fibers are wettable, it is
reasonable to conclude that the pulp fibers used by Jackson
(e.g., wood pulp fibers, fluffing pulp) are inherently
wettable.
Additionally, we find that there is a reasonable basis to
conclude that the binder fibers used by Jackson (e.g.,
polyolefins, nylons, polyesters, meltblown polypropylene,
bicomponent polyolefin (PE/PP)) are wettable. Jackson is
silent as to whether or not his binder fibers are wettable.
However, since the appellants' disclosure (specification, p.
11) informs us that thermoplastic compositions such as
polyethylene, polypropylene, polyesters such as polyethylene
terephthalate, polyamides such as nylon, are wettable, it is
reasonable to conclude that the binder fibers used by Jackson
(e.g., polyolefins, nylons, polyesters, meltblown
Appeal No. 97-4294 Page 26
Application No. 08/294,155
The wettable staple fibers in Jackson can be either 3
(1) the fine wettable fibers, (2) the pulp fibers, or (3) both
the fine wettable fibers and the pulp fibers since both are
wettable staple fibers.
polypropylene, bicomponent polyolefin (PE/PP)) are inherently
wettable.
Lastly, from the direct overlap between the claimed
percentages of superabsorbent material, wettable staple fiber
and wettable binder fiber and those disclosed by Jackson, we
find that there is a reasonable basis to conclude that
Jackson's absorbent composite would inherently exhibit a
liquid uptake rate at least 2 times greater than the article
with no wettable staple fiber.3
35 U.S.C. § 102(b) Rejection based on Bair
Claims 1, 6 to 10, 12, 13, 16, 18, 19, 21, 26 to 30, 32,
33, 36, 38 and 39 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Bair.
Bair discloses a liquid absorbing pad. The pad comprises
superabsorbing polymer (SAP) particles distributed in a
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Application No. 08/294,155
polyester carded web contained between hydrophilic fabric
outer layers. The pad can absorb more than 100 times its dry
weight in water and other aqueous liquids. Bair teaches
(column 2, lines 52-54) that in his pad the SAP particles
generally are well distributed, do not migrate and thereby
avoid gel-blocking.
Bair teaches that the superabsorbing polymer is
preferably in particulate or granular form, because of the
ease with such forms can be handled and dispersed in the webs
with commercially available powder applicators or spreaders.
Bair discloses that the polymer of the SAP particles can be
selected from a wide variety of such polymers, such as those
disclosed in U.S. Pat. No. 4,897,297 (Zafiroglu) column 3,
lines 8-63. Preferably, the SAP polymer is a derivative of a
polyacrylic acid (e.g., "Sanwet" J-400, sold by Sanyo).
Suitable SAP particles for use in the
present invention will absorb aqueous liquid amounting to many
times its own dry weight. The SAP and absorbed aqueous
liquids form a highly viscous gel which remains in place
within the web. The SAP particles, prior to exposure to
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Application No. 08/294,155
moisture, generally have a weight-average size of about 75 to
800 microns, preferably about 100 to 500 microns. Bair
teaches that generally, the SAP particles amount to about 5 to
50 per cent by weight of the composite article, preferably
about 25 to 40%.
Bair discloses that the fibrous web into which the SAP
particles are dispersed can be prepared from commercially
available fiber and can be assembled by carding, air-laying,
or the like to form the web. The individual staple fibers of
the web can have the same or different compositions, lengths
and decitex. Fibers having an average length in the range of
3.5 to 10 cm are suitable. Lengths averaging in the range of
4 to 6 cm are preferred for good cotton-system carding. Bair
teaches that in one embodiment of his invention, the web
comprises two types of fibers, matrix fibers and binder
fibers. The binder fibers have a lower melting temperature
than the matrix fibers, usually by 3° to 50° C. For example,
the matrix fibers can be of polyethylene terephthalate
homopolymer and the binder fibers can be of an 80/20
polyethylene terephthalate/isophthalate copolymer. Bair
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Application No. 08/294,155
discloses that the binder fiber of such a web usually amounts
to no more than 25% of the total weight of the web, but
preferably amounts to no more than 15%. The binder fiber can
be incorporated into the web conveniently, by "coforming",
that is by intimately and uniformly blending matrix and binder
fibers
prior to forming the web itself.
Bair discloses one example of an absorbing pad according
to his invention. The absorbing pad included (1) a carded web
comprising 75% of 6.5-denier (7.2-dtex), 2-inch (5.1-cm) long
polyester staple fibers (KODEL 430 sold by Eastman) and 25% of
3-denier (3.3-dtex), bicomponent sheath/core
(polyethylene/polyester) binder fiber (sold by BASF Corp), and
(2) superabsorbent powder J-400 Grade (sold by Sanyo
Corporation of America) which was applied to the web at a rate
of 60 grams per square yard (72 g/m ).2
A comparison of the claimed subject matter (using claim 1
as a guide) to the above teachings of Bair reveals that Bair
does not specifically disclose that (1) the matrix (i.e.,
Appeal No. 97-4294 Page 30
Application No. 08/294,155
staple) fibers are wettable, (2) the binder fibers are
wettable and
(3) the liquid uptake rate is at least 2 times greater than
the article with no wettable staple fiber. The claimed
percentages of superabsorbent material, staple fiber, and
binder fiber is met by the specific teachings of Bair that (1)
the binder fiber usually amounts to no more than 25% of the
total weight of the web (i.e., the weight of both the binder
fiber and the matrix (staple) fiber), and (2) the SAP
particles amount to about 5 to 50 per cent by weight of the
composite article.
We find that there is a reasonable basis to conclude that
the matrix fibers used by Bair (e.g., polyethylene
terephthalate homopolymer, polyester staple fibers (KODEL 430
sold by Eastman)) are wettable. Bair is silent as to whether
or not his matrix fibers are wettable. However, since the
appellants' disclosure (specification, p. 9) informs us that
polyethylene terephthalate and polyesters are wettable, it is
reasonable to conclude that the matrix fibers used by Bair
(e.g., polyethylene terephthalate homopolymer, polyester
Appeal No. 97-4294 Page 31
Application No. 08/294,155
staple fibers (KODEL 430 sold by Eastman)) are inherently
wettable.
Additionally, we find that there is a reasonable basis to
conclude that the binder fibers used by Bair (e.g., 80/20
polyethylene terephthalate/isophthalate copolymer, bicomponent
sheath/core (polyethylene/polyester) binder fiber (sold by
BASF Corp)) are wettable. Bair is silent as to whether or not
his binder fibers are wettable. However, since the
appellants' disclosure (specification, p. 11) informs us that
thermoplastic compositions such as polyethylene and polyesters
such as polyethylene terephthalate are wettable, it is
reasonable to conclude that the binder fibers used by Bair
(e.g., 80/20 polyethylene terephthalate/isophthalate
copolymer, bicomponent sheath/core (polyethylene/polyester)
binder fiber (sold by BASF Corp)) are inherently wettable.
Lastly, from the direct overlap between the claimed
percentages of superabsorbent material, wettable staple fiber
and wettable binder fiber and those disclosed by Bair, we find
that there is a reasonable basis to conclude that Bair's
Appeal No. 97-4294 Page 32
Application No. 08/294,155
absorbing pad would inherently exhibit a liquid uptake rate at
least 2 times greater than the article with no wettable staple
fiber.
As a final note, we leave it to the examiner to determine
if any of the pending claims should be rejected under 35
U.S.C.
§ 103 based upon Jackson and/or Bair combined with other prior
art.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 39 under 35 U.S.C. § 112, second paragraph, is
reversed and the decision of the examiner to reject claims 1
to 39 under
35 U.S.C. § 103 is reversed. In addition new rejections of
claims 1 to 39 under 35 U.S.C. § 102 have been added pursuant
to provisions of 37 CFR § 1.196(b)
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
Appeal No. 97-4294 Page 33
Application No. 08/294,155
rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides that, "A new ground of rejection shall not
be considered final for purposes of judicial review."

37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 97-4294 Page 34
Application No. 08/294,155
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
HARRISON E. McCANDLISH, Senior
)
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-4294 Page 35
Application No. 08/294,155
KIMBERLY CLARK CORPORATION
PATENT DEPARTMENT DOCKET OFFICE
401 NORTH LAKE STREET
NEENAH, WI 54956
APPEAL NO. 97-4294 - JUDGE NASE
APPLICATION NO. 08/294,155
APJ NASE
APJ ABRAMS
SAPJ McCANDLISH
DECISION: REVERSED;
37 CFR § 1.196(b)
Prepared By: Delores A. Lowe
DRAFT TYPED: 14 Jul 98
FINAL TYPED:
3 Member Conf.