Ex Parte Long et al

Board of Patent Appeals and Interferences

May 23, 2012

11512801 (B.P.A.I. May. 23, 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.
11/512,801 08/29/2006 Andrew M. Long 64045331US01 2048
23556 7590 05/24/2012
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
ANDERSON, CATHARINE L
ART UNIT PAPER NUMBER
3764
MAIL DATE DELIVERY MODE
05/24/2012 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 ANDREW M. LONG and DAVIS DANG NHAN
__________

Appeal 2011-000504
Application 11/512,801
Technology Center 3700
__________

Before FRANCISCO C. PRATS, STEPHEN WALSH, and
ERICA A. FRANKLIN, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to an absorbent
article that includes an element that changes temperature when contacted
with liquid. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1 and 3-21 stand rejected and appealed (App. Br. 1). Claims 1
and 12 are representative and read as follows:
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Application 11/512,801

2
1. An absorbent article defining a longitudinal direction, a lateral
direction perpendicular to said longitudinal direction, and a
z-direction perpendicular to a plane defined by said lateral direction
and said longitudinal direction, said absorbent article comprising:
an outercover;
an absorbent body disposed on said outercover;
a liner disposed on the absorbent body; and
a temperature change member disposed between the liner and
the outercover, the temperature change member defining a member
inner surface and a member outer surface opposite said member inner
surface, the temperature change member comprising a matrix of fibers
and temperature change material intermixed with the matrix of fibers,
wherein the temperature change material is disposed in the matrix of
fibers in a nonuniform distribution by weight in the z-direction of the
temperature change member, and having a GMD of less than about
0.0275 at the member inner surface as determined by the Friction Test
described herein.

12. An absorbent article comprising:
a liquid impermeable outercover;
an absorbent body disposed on said outercover; and
a temperature change member defining a member inner surface
and a member outer surface opposite said member inner surface, the
temperature change member comprising temperature change material
wherein at least 50 percent of said temperature change material
defines a particle size of at least 500 microns by weight, wherein the
temperature change member has a GMD, as determined by the
Friction Test described herein, of less than 0.0270 when tested at the
member inner surface.

The sole rejection before us for review is the Examiner’s rejection of
claims 1 and 3-21 under 35 U.S.C. § 103(a) as obvious over Brunner
1
(Ans.
3-5).
2

1
U.S. Patent No. 5,681,298 (issued October 28, 1997).
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Application 11/512,801

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DISCUSSION
The Examiner found that Brunner described an absorbent article
substantially as recited in claim 1, including a temperature change material
non-uniformly distributed in the z-direction as claimed, except that Brunner
was silent regarding the surface friction of the temperature change member
(Ans. 3-4). The Examiner reasoned, however, that an ordinary artisan would
have considered it obvious to “provide the temperature change material of
Brunner with a GMD of less than 0.0275, to provide the predictable result of
creating a tissue layer that is suitably soft and compliant” (id. at 4).
Appellants argue, among other things, that Brunner does not
“disclose, teach, or suggest a temperature change member including a matrix
of fibers and temperature change material intermixed with the matrix of
fibers, wherein the temperature change material is disposed in the matrix of
fibers” as required by claim 1 (App. Br. 5; see also id. at 7 (arguing same
limitation as to claim 15)).
The Examiner responds:
The present claims do not require the temperature
change material to be intermixed within the fibers of the matrix,
but merely intermixed with, and disposed in, the matrix. The
temperature change material 70 [of Brunner] is located between
the two fibrous layers 72, as shown in figure 3. The two fibrous
layers comprise the matrix of fibers, and therefore the
temperature change material is disposed within the matrix of
fibers and is intermixed with the matrix. Brunner therefore
fulfills the claimed limitations.

2
The Examiner also entered a provisional rejection over the claims of
Application No. 11/299,433 (Ans. 5). A review of that application indicates
that it has been abandoned, however.
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Application 11/512,801

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(Ans. 5.)
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

As to claim interpretation, it is well settled that, during examination
the PTO must interpret terms in a claim using “the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Here, we conclude that a preponderance of the evidence does not
support the Examiner’s finding that Brunner teaches or suggests an article
with a temperature change element as required by claim 1.
Contrary to the Examiner’s argument, claim 1 does in fact require the
temperature change member to include “a matrix of fibers and temperature
change material intermixed with the matrix of fibers” (see App. Br. 10).
Thus, as shown for example in Appellants’ Figure 5, particles of the
temperature change material 80 are interspersed throughout the matrix of
fibers 78.
In contrast, as Appellants point out, Brunner describes its temperature
change material as being “in the form of particles captured between a pair of
containment layers” (Brunner, col. 5, ll. 16-17 (emphasis added); see also id.
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Application 11/512,801

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at col. 6, ll. 57-59 (“The temperature change substance 70 is desirably
although not necessarily in the form of particles sandwiched between the
first and second containment layers 72.”)).
Thus, while it may be true that the Examiner has shown a layering of
the temperature change material between two tissue layers composed of
fibers (see id. at col. 6, l. 63, through col. 7, l. 21), we are not persuaded that
the Examiner has shown or explained, by a preponderance of the evidence,
how or why the arrangement described by Brunner teaches or suggests
intermixing of the temperature change material with the matrix of fibers, as
claim 1 requires. Therefore, because we are not persuaded that a
preponderance of the evidence supports the Examiner’s prima facie case as
to claim 1, we reverse the Examiner’s obviousness rejection of that claim
and its dependents over Brunner. As claim 15 also requires the temperature
change material to be “intermixed with the matrix of fibers” (App. Br. 13),
we reverse the Examiner’s rejection of that claim as well.
As to claim 12, the Examiner found that Brunner described an article
with all of the claimed features, “with the exception of the particle size of
the temperature change composite. Particle size is considered a result-
effective variable” (Ans. 4).
The Examiner reasoned, therefore, that an ordinary artisan would have
found it obvious to provide Brunner’s article with a temperature change
material having a particle size “between 300-710 microns since it has been
held that where the general conditions of a claim are disclosed in the prior
art (i.e. use of xylitol as a temperature change material in an absorbent
article), finding the optimum or workable ranges involves only routine skill
in the art” (id. (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955))).
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Appellants argue, in essence, that the Examiner has not shown that an
ordinary artisan would have recognized from the prior art that the particle
size of Brunner’s temperature change material was a result-effective
parameter (App. Br. 6 (citing In re Antonie, 559 F.2d 618 (CCPA 1977)).
We again conclude that Appellants have the better position.
We agree with the Examiner that, as a general principle, “the
discovery of an optimum value of a variable in a known process is usually
obvious.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007).
Thus, our reviewing court has held that a claimed range is prima facie
obvious when it overlaps or is close to a range disclosed in the prior art. See
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Here, however, the Examiner points to no prior art range of particle
sizes for Brunner’s material that overlaps or is close to the range recited in
claim 12. Indeed, the Examiner points to no specific mention of particle size
in Brunner.
Moreover, while the Examiner found that an ordinary artisan would
have recognized particle size as being a result-effective parameter (see Ans.
4), the Examiner has not explained why that is the case. Nor has the
Examiner pointed to or explained any effect that the particle size of the
temperature change material has on the results obtained by Brunner’s article.
Thus, we find the instant situation similar to that of In re Antonie,
where our reviewing court’s predecessor reversed an optimization-based
obviousness rejection because the examiner and the Board had not shown
that the parameter at issue was “recognized to be a result-effective variable .
. . .” 559 F.2d at 620. Therefore, as we are not persuaded that the Examiner
has shown, by a preponderance of the evidence, that an ordinary artisan
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would have considered the particle size of Brunner’s temperature change
material to be a result-effective parameter, we reverse the Examiner’s
rejection of claim 12, and its dependents, as obvious over Brunner.

REVERSED
alw