Ex Parte Lakso et al

Patent Trial and Appeal Board

Nov 30, 2017

13514864 (P.T.A.B. Nov. 30, 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.
13/514,864 06/08/2012 Elisabeth Lakso 049121-0067-00-US-484186 1789
105855 7590 12/04/2017
Drinker Biddle & Reath LLP
1500 K Street NW, Suite 1100
Washington, DC 20005
EXAMINER
FORREST, MICHAEL
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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):
DB RIPDocket @ dbr. com
penelope. mongelluzzo @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELISABETH LAKSO and CHATRINE STRIDFELDT
Appeal 2017-001565
Application 13/514,8641
Technology Center 1700
Before PETER F. KRATZ, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting under 35 U.S.C. 103 claims 1-3 and 5-10 over Antoon2
view of Puumalainen3 and of claims 1, 2, and 4-10 over Bomemann4 in
view of Puumalainen. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify SCA HYGIENE PRODUCTS AB as the real party in
interest. Appeal Br. 1.
2 Antoon, Jr. et al., US 5,008,296, issued April 16, 1991.
3 Puumalainen, WO 96/09248, published March 28, 1996.
4 Bomemann et al., US 2009/0104831 Al, published April 23, 2009.
Appeal 2017-001565
Application 13/514,864
CLAIMED SUBJECT MATTER
The subject matter of the claims on appeal relates to an absorbent
article, such as a diaper, comprising inorganic material comprising carbon
derived from atmospheric carbon dioxide and methods for making the
absorbent article. Specification5 *filed June 8, 2012 (“Spec.”), Abstract. As
defined in the Specification, “‘atmospheric’ carbon dioxide can refer to
carbon dioxide which is a waste product of industrial processes, e.g.,
obtained from the waste flues of other processes and recycled.” Spec. 117.
Independent claim 1 is directed to an absorbent article. Independent claim 5
is directed to a method of making the article.
1. An absorbent article comprising inorganic material, said
inorganic material comprising carbon being derived from
atmospheric carbon dioxide (CO2) and having a 14C/12C ratio
of 1 x 10'13 or greater,
wherein said inorganic material is a carbonate salt of an
alkali metal (Group 1) selected among lithium (Li), sodium
(Na) and potassium (K) or a carbonate salt of an alkaline earth
metal (Group 2) selected among magnesium (Mg) and calcium
(Ca), and mixtures thereof, and
wherein the absorbent article is disposable.
5. A method for making a disposable absorbent article, said
method comprising the steps of:
a. reacting atmospheric CO2 with a metal salt being the salt
of an alkali metal (Group 1) selected among lithium (Li),
sodium (Na) and potassium (K) or a salt of an alkaline earth
metal (Group 2) selected among magnesium (Mg) and
calcium (Ca) in the presence of water to obtain a metal
carbonate being an alkali metal carbonate or an alkaline earth
metal carbonate, and
5 The Specification of record includes amendments, including added
paragraphing, to the publication WO 2011/071429.
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b. incorporating the alkali metal carbonate or alkaline earth
metal carbonate obtained in step a. into said disposable
absorbent article.
Appeal Brief filed January 22, 2016 (“Appeal Br.”), Claims App’x A-l-2.
DISCUSSION6
Appellants argue the claims as an undifferentiated group in their
arguments as to the rejection over Antoon in view of Puumalainen and the
rejection over Bomemann in view of Puumalainen. See generally Appeal
Br.; Reply Br.
We have reviewed the grounds of rejection set forth by the Examiner,
Appellants’ arguments, and the Examiner’s response. On this record, we are
unpersuaded that the Examiner erred reversibly and we determine that a
preponderance of the evidence supports the Examiner’s conclusion of
obviousness for the reasons expressed by the Examiner in the Final Office
Action and the Examiner’s Answer. We add the following.
Rejection over Antoon in view of Puumalainen
The Examiner relies on Antoon for its disclosure of “disposable
absorbent articles comprising breathable microporous films comprising
stretched plastic and calcium carbonate as a filler material. Ans. 3 (citing
Antoon, Abstract).
The Examiner relies on Puumalainen for its disclosure of a “process
for sequestration of carbon dioxide wherein atmospheric carbon dioxide is
6 In this discussion, we refer to the Specification, the Final Office Action
dated August 27, 2015 (“Final Act.”), the Appeal Brief (supplemented May
12, 2016), the Examiner’s Answer dated September 9, 2016 (“Ans.”), and
the Reply Brief filed November 8, 2016 (“Reply Br.”).
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used to prepare calcium carbonate” and of “a method where the calcium
carbonate is used as filler material in paper.” Ans. 4 (citing Puumalainen,
Abstract). As to the “14C/12C ratio” (claim 1), “since Puumalainen teaches
a calcium carbonate prepared from carbon sequestered from the atmosphere,
. . . it would have the same 14C/12C ratio as the calcium carbonate described
in Applicant’s Specification.” Ans. 4. The relied on process for preparing
calcium carbonate “compris[es] reacting atmospheric carbon dioxide with
calcium sulfate to obtain calcium carbonate.” Ans. 5 (citing Puumalainen,
Abstract). The Examiner further finds, “[a]s admitted in the Specification,
Puumalainen describes the use of atmospheric C02 [sic] as a source of
calcium carbonate filler” and maintains that “[a]s presented in the rejection,
Puumalainen suggests that calcium carbonate sourced his way reduces the
carbon dioxide content of the atmosphere.” Ans. 9.
The Examiner determines the claimed “invention is merely the
combination of prior art elements according to known methods to yield
predictable results” in that calcium carbonate obtained by sequestering
atmospheric carbon was known in the prior art, as was the use of calcium
carbonate as a filler in absorbent articles. Ans. 3^4; see also Final Act. 4.
Further, the Examiner concludes that it would have been obvious to
one of ordinary skill in that art at the time of the invention to have prepared
the absorbent article taught by Antoon using calcium filler derived from
atmospheric carbon dioxide in order to “sequester[] carbon dioxide from the
atmosphere” as taught by Puumalainen. Ans. 4—5; Final Act. 4—5.
Appellants proffer three general contentions, discussed in turn below,
why the Examiner erred in determining that the combination of Antoon and
Puumalainen rendered the claims unpatentable.
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Appellants contend that there is “[n]o reason to remove calcium
carbonate from the closed system of Puumalainen” and that “[t]he Examiner
has failed to provide any rationale for why it would have been obvious to
one of ordinary skill in the art to remove the calcium carbonate from the
paper making process of Puumalainen for use in other products.” Appeal
Br. 3^4 (emphasis omitted). Appellants emphasize how Puumalainen is
directed to “a papermaking process which reduces, as a net phenomenon, the
carbon dioxide content of the atmosphere.” Appeal Br. 4 (quoting
Puumalainen 1,11. 32—36. Appellants further contrast Puumalainen’s
method which uses waste gypsum, i.e., calcium sulfate, and carbon dioxide
obtained from burning wood-chips as reactants to form calcium carbonate to
other known “methods of forming calcium carbonate that involve[] burning
limestone to obtain slaked lime, which releases carbon dioxide.” Appeal Br.
4 (citing Puumalainen 1,11. 9-21, 2,11. 7—33). Appellants contend that “the
Office has failed to provide any rationale for why one of ordinary skill in the
art would have found it obvious to take the calcium carbonate produced in
the papermaking process of Puumalainen out of the papermaking process
where it is already fully utilized, to use as filler in absorbent articles.”
Appeal Br. 5. Appellants further contend that Puumulainen teaches away
from use of the calcium carbonate outside of the papermaking process
because it is fully utilized with the papermaking process. Appeal Br. 5.
Appellants’ arguments are not persuasive of reversible error because
they fail both to properly account for what the cited prior art would have
taught the skilled artisan and to address the rejection as set forth by the
Examiner.
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The test for obviousness neither requires that the features of the
secondary reference be bodily incorporated into the structure of the primary
reference, nor that there is an express suggestion in any one or all of the
references for the combination. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is . . . what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”); see
also In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (A reference’s
disclosure is not limited to its preferred embodiments, but is available for all
that it discloses and suggests to one of ordinary skill in the art.).
As relied on by the Examiner, the broad teachings of Puumalainen
include both (1) a method for forming calcium carbonate filler from
atmospheric carbon, i.e., from carbon dioxide formed by burning wood
waste; and (2) the desirability of sequestering atmospheric carbon dioxide,
including that formed by burning wood waste, by forming it into calcium
carbonate filler in order to reduce the carbon dioxide content of the
atmosphere. Ans. 3^4. We are directed to no reversible error in the
Examiner’s reliance on Puumalainen set forth above. In re Preda, 401 F.2d
825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.”).
Appellants’ arguments, relying on Puumalainen’s purpose for the
calcium carbonate as filler in papermaking differing from that in the relied
on combination as filler in absorbent articles, further fail because “the
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill would
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employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In
particular, Appellants’ argument fails to address squarely the Examiner’s
articulated reasoning grounded on the ordinary artisan’s skill level being
sufficient to select calcium carbonate from an available source, which
includes calcium carbonate available from atmospheric carbon dioxide via
the known method utilizing wood waste taught by Puumalainen, as the
calcium carbonate used as the absorbent filler for the absorbent article of
Antoon with the expected benefit of sequestering atmospheric carbon
dioxide. Ans. 9.
Appellants contend the Examiner has failed to set forth why one of
ordinary skill in the art would use the calcium carbonate filler of
Puumalainen when calcium carbonate fillers from other sources would have
been expected to have been much less expensive. Appeal Br. 6—7.
Emphasizing both the disposable nature of Antoon’s absorbent products and
low cost of carbon carbonate from mineral sources, Appellants argue that
“one of ordinary skill in the art is typically looking for less expensive
starting materials when forming such disposable items, especially with
respect to an inorganic filler.” Appeal Br. 6. On this basis, Appellants also
argue that there is no reasonable expectation of success, presumably in
obtaining an inexpensive, disposable absorbent article. Appeal Br. 7.
Appellants’ arguments are not persuasive of reversible error because
they fail to address the motivation grounded on providing absorbent
products incorporating components whose use would remove, or be
perceived to remove, carbon dioxide from the atmosphere, where the
desirability of sequestering atmospheric carbon dioxide is established. The
issue of relative cost raised by Appellants does not negate the relied on
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motivation, but rather weighs on whether the relative cost would outweigh
that motivation. Likewise, in the absence of any limitation as to cost, there
is no persuasive merit to the contention that use of an expensive calcium
carbonate filler does not support a reasonable expectation of success.
Appellants contend that the Examiner has relied on impermissible
hindsight. Appeal Br. 7—9. Appellants further contend that the reason
suggested by the Examiner ‘“to obtain calcium carbonate filler [] while
sequestering carbon dioxide from the atmosphere’ . . . [but that] such a
reason is not found in any of the references of the rejection, but instead [is]
found solely in Appellant’s [sic] [Specification.” Appeal Br. 8.
Appellants’ argument is unpersuasive of error because it fails to
properly account for what is taught by the prior art and the level of skill of
an ordinarily skilled artisan, as explained above, and because the motivation
need not be found in the cited prior art itself. See, e.g., Perfect Web
Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)
(The “use of common sense [to support the combination of references] does
not require a ‘specific hint or suggestion in a particular reference,’ only a
reasoned explanation that avoids conclusory generalizations.”) (citing
DyStar Textilfarben GmbHv. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed.
Cir. 2006). Having not been persuaded of any deficiency in the Examiner’s
rejection, the contention of impermissible hindsight is unfounded. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (Requiring “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”) (cited with approval in KSR, 550 U.S. at 418).
Maintaining that the Examiner has mischaracterized Puumalainen,
Appellants further contend that “Puumalainen is not taking carbon dioxide
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from the atmosphere generally” and that “Puumalainen does not teach
broadly that carbon dioxide from the atmosphere generally can be used to
form calcium carbonate in an attempt to reduce carbon dioxide of the
general atmosphere.” Reply Br. 2, 3.
Appellants fail, however, to provide good reason why this argument
could not have been raised in the Appeal Brief as it addresses in effect a
position taken by the Examiner not only in the Answer, but also in the Final
Office Action. As set forth in the Final Office Action, the rejection is
grounded on it being known in the prior art to “us[e] calcium carbonate as
filler material where the calcium carbonate is obtained by sequestering
atmospheric carbon” and, in particular, on Puumalainen for teaching
“sequestration of carbon dioxide wherein atmospheric carbon dioxide is used
to prepare calcium carbonate.” Final Act. 4. Thus, we deem the argument
waived for purposes of the present appeal. 37 C.F.R. § 41.41(b)(2). “[A]n
issue not raised by an [Ajppellant in its opening brief... is waived.”
Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (citations omitted) (internal quotations omitted); Cf. McBride v.
Merrell Dow andPharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986)
(internal citations omitted) (“Considering an argument for the first time in a
reply brief... is not only unfair to the appellee [] but also entails the risk of
an improvident or ill-advised opinion on the legal issues tendered.”).
Further, finding the Examiner’s position as to the general teaching of
Puumalainen well-founded, as discussed above, we are unpersuaded the
Examiner erred.
Appellants further contend that the Examiner’s position “that one of
ordinary skill in the art would recognize that environmental impact is
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another desirable characteristic ... for disposable absorbent articles” is
newly raised in the Answer and that it is unsupported by evidence and “has
nothing to do with whether the disposable absorbent article can be used to
reduce carbon dioxide content in the atmosphere.” Reply Br. 3^4.
Appellants’ argument does not persuade us of harmful error because it
fails to address squarely the motivation grounded on the desirability of
sequestering atmospheric carbon, as taught by Puumalainen.
On this record, a preponderance of the evidence supports the
Examiner’s determination of obviousness over the combination of Antoon
and Puumalainen.
Rejection over Bornemann in view of Puumalainen
The Examiner relies on Bornemann for its disclosure of “polymer
fiber comprising thermoplastic polymer and inorganic filler where the filler
is an alkaline earth carbonate, especially calcium carbonate” and the use of
“the polymer fibers in disposable absorbent articles.” Ans. 6 (citing
Bornemann || 17, 60).
Using the same reasoning, the Examiner relies on Puumalainen in
substantially the same manner as in the combination with Antoon. Compare
Ans. 6—8, with Ans. 3—5.
As with the rejection over Antoon and Puumalainen, Appellants
contend that there is “[n]o reason to remove calcium carbonate from the
closed system of Puumalainen” and that “[t]he Examiner has failed to
provide any rationale for why it would have been obvious to one of ordinary
skill in the art to remove the calcium carbonate from the paper making
process of Puumalainen for use in other products” (compare Appeal Br. 10-
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11, with Appeal Br. 3—4), and, likewise, rely on effectively the same
argument (compare Appeal Br. 10-13, with Appeal Br. 3—5).
Likewise, Appellants’ arguments are also unpersuasive of reversible
error for the same reasons.
Appellants next contend that Bomemann “teaches away from using
the more costly version of calcium carbonate” obtained by Puumalainen’s
method and, thus, “from the proposed combination.” Appeal Br. 13—14.
Appellants rely on Bomemann’s disclosed reasons for using calcium
carbonate as the inorganic filler, including that it “is low cost,” and
Bomemann’s suggestion to use the filled material in disposable items.
Appeal Br. 13 (citing Bomemann || 17, 60). Appellants contend further
that “[s]uch disposable items are typically purchased with cost being a major
factor.” Appeal Br. 13.
Appellants’ argument is unpersuasive. “A reference does not teach
away ... if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Bomemann’s teaching that
calcium carbonate is preferred, in part, for its low cost does not rise to a
teaching away. See In re Farrenkopf 713 F.2d 714, 718 (Fed. Cir. 1983)
(“[Additional expense . . . would not discourage one of ordinary skill in the
art. . . . That a given combination would not be made by businessmen for
economic reasons does not mean that persons skilled in the art would not
make the combination because of some technological incompatibility. Only
the latter fact would be relevant.”) (citing Orthopedic Equipment Co. v.
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United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983)). “We will not read
into a reference a teaching away from a process where no such language
exists.” DyStar Textilfarben, 464 F.3d at 1364.
Appellants finally contend that the Examiner has relied on
impermissible hindsight. Appeal Br. 14—16.
Again, Appellants’ argument is unpersuasive of error because it fails
to establish any teaching away, fails to properly account for what is taught
by the prior art and that the motivation need not be found in the cited prior
art itself, as explained above. Having not been persuaded of any deficiency
in the Examiner’s rejection, the contention of impermissible hindsight is
unfounded. See Kahn, 441 F.3d at 988.
On this record, a preponderance of the evidence supports the
Examiner’s determination of obviousness over the combination of
Bomemann and Puumalainen.
DECISION
The Examiner’s rejection of the claims under 35 U.S.C. § 103(a) 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)(l)(iv).
AFFIRMED
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