Ex Parte Maldonado Pacheco et al

Board of Patent Appeals and Interferences

Sep 20, 2010

10743245 (B.P.A.I. Sep. 20, 2010)

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.
10/743,245 12/22/2003 Jose Enrique Maldonado Pacheco 20006 6968
23556 7590 09/20/2010
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
MUSSER, BARBARA J
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
09/20/2010 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 JOSE ENRIQUE MALDONADO PACHECO, ANN LOUISE
MCCORMACK, CHARLES HERMAN ELLISON, TIMOTHY RAY
MARTIN, WING-CHAK NG, PRASAD SHRIKRISHNA POTNIS, and
JASON SYBREN FAIRBANKS
____________________

Appeal 2009-009494
Application 10/743,245
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1
I. STATEMENT OF CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention relates to a method of producing a laminate
material by incrementally stretching a flexible sheet material and joining the
stretched material to another flexible sheet material (Spec. 2:8-10).
Incremental stretching is accomplished by passing the flexible sheet between
successive nips, each nip having mating fins and grooves that provide a
different amount of stretch (Spec. 2:30-32). The stretching forces may be
gradually increased so that there is a reduced tendency to tear or otherwise
damage the flexible sheet (which can be a nonwoven material, polymeric
film, or laminate) (Spec. 13:21-32 and 15:19-28). Claim 1 is illustrative:
1. A method of producing a laminate material comprising the
steps of
a. providing a first flexible sheet material;
b. providing a second flexible sheet material having a first
surface and a second surface;
c. providing a forming surface having grooves formed therein;
d. providing a plurality of mating surfaces having fins
positioned to fit within the grooves of said forming surfaces;
e. forming successive nips between the forming surface and the
mating surfaces wherein the fins of the mating surfaces enter
the grooves of the forming surface at separate locations on the
forming surface;
f. feeding said first flexible sheet material into the successive
nips while maintaining the position of said first flexible sheet
material with respect to said forming surface;
g. stretching said first flexible sheet material a plurality of times
along lines on the first flexible sheet material by the fins
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entering the forming surface grooves along with said first
flexible sheet material within successive nips;
h. applying adhesive directly to said stretched first flexible
sheet material with a slot coat adhesive process; and
i. joining the stretched first flexible sheet material in a face to
face configuration to the first surface of the second flexible
sheet material.

The Examiner maintains, and Appellants seek review of, the
following rejections:
1. The final rejection of claims 1-11 and 13-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Dobrin et al (US 6,383,431 B1, issued
May 7, 2002) in view of Weber et al (US 5,143,679, issued Sep. 1, 1992)
and Boger et al (US 4,874,451, issued Oct. 17, 1989).
2. The final rejection of claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Dobrin et al, Weber et al and Boger et al, as applied to
claim 1, and further in view of Morman et al (US 2002/0119288A1, pub.
Aug. 29, 2002).
With respect to the first rejection, Appellants argue claims 14-20 as a
separate group. We select claims 1 and 14 as representative for deciding the
issues with respect to the first rejection.
II. DISCUSSION
A. REJECTION OVER DOBRIN, WEBER, AND BOGER
1. CLAIM 1
The Examiner finds that, based on the teachings in Weber, there is a
suggestion to stretch the nonwoven web of Dobrin with multiple
intermeshing roll pairs to reduce the strain on Dobrin’s web as it is stretched
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and to cause less damage to the web (Ans. 4). The Examiner also finds that,
based on the teachings in Boger, there is a suggestion to use slot adhesive
coating to apply adhesive to bond the nonwoven web to the breathable film
of Dobrin as such slot coating applicators were known in the art for accurate
placement of adhesive with a relatively simple system requiring little
maintenance (Ans. 4).
Appellants contend that, because of various differences between the
method and apparatus of Dobrin and that of Weber, the Examiner’s
suggestion for using multiple roll pairs in the method of Dobrin is not
supported by the prior art (Br. 11-15). Appellants further contend that
Weber’s fins and grooves do not meet the claim requirements (Br. 15).
Moreover, Appellants contend that Dobrin’s inventors were aware of the
disclosure of the Weber reference and yet Dobrin failed to appreciate the
desirability of the successive nip arrangement in Dobrin’s invention (Br. 17-
18).
Appellants also take issue with the Examiner’s combination of Dobrin
with Boger to show that it would have been obvious to use a slot coat
adhesive process in the lamination process of Dobrin (Br. 19-22).
The resulting issues are:
(1) Does the evidence as a whole support the Examiner’s finding that
there is a suggestion within the prior art to carry out the stretching desired by
Dobrin using multiple pairs of meshing rolls having “mating surfaces having
fins positioned to fit within the grooves of said forming surfaces” as required
by claim 1; and
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(2) Does the evidence as a whole support the Examiner’s finding that
the prior art provides a suggestion to use a slot coat adhesive process to
apply adhesive to bond the laminate of Dobrin?
We answer both questions in the affirmative. We adopt the thorough
fact findings, analysis, and response to arguments advanced by the Examiner
in the Answer. We add the following primarily for emphasis.
Dobrin describes a method of forming a liquid-impervious, breathable
backsheet for a disposable absorbent article having a soft, cloth-like,
outermost surface. The backsheet includes a modified nonwoven material
joined to a breathable film. The process involves modifying a nonwoven
web between forming rolls having intermeshed teeth and grooves and
joining the modified nonwoven web to a breathable film made porous by
stretching a precursor film having incompatible inorganic material dispersed
therein between another set of similar intermeshing forming rolls. After
joining, the resulting composite may be passed through another set of
intermeshing forming rolls similar to the first two sets. (Dobrin, col. 3, l. 7
to col. 4, l. 15; Fig. 18; col. 17, l. 47 to col. 18, l. 11.)
Figure 2 of Dobrin illustrates the forming rolls used to modify the
nonwoven material. The intermeshed teeth and grooves are spaced and
shaped to locally stretch the nonwoven web in the cross-web direction
(Dobrin, col. 8, ll. 25-30; Figs. 2-5). The outermost tips of the teeth are
preferably rounded to avoid cuts or tears (Dobrin, col. 7, ll. 52-55). In this
process, it is possible to control the web width and basis weight by selecting
a suitable forming roll tooth and groove configuration, suitable machine
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direction tension, and choosing to apply additional cross direction tension
(Dobrin, col. 9, ll. 29-37).
Figure 3 of Appellants depicts fins and grooves used to stretch
Appellants’ nonwoven (Fig. 3). Those fins and grooves are depicted
similarly to the teeth and grooves of Dobrin and serve to stretch or extend
the nonwoven material in the cross-web direction similar to Dobrin (Spec.
15:10-12).
Given the similarity between the structure and purpose of the teeth
and grooves of Dobrin and the fins and grooves of Appellants’ invention, we
find that the teeth of Dobrin are “fins” positioned to fit within grooves of the
forming surfaces as required by claim 1.
Dobrin contemplates successively modifying the nonwoven web “by
passing the web through successive sets of forming rolls, tensioning and, if
desired, additional cross-web direction stretching.” (Dobrin, col. 13, ll. 13-
17.)
Weber relates to a method for sequentially stretching a “zero strain”
stretch laminate, i.e., a laminate web comprised of at least two plies secured
together while in a substantially untensioned (“zero-strain”) condition,
(Weber, col. 1, ll. 61-67).
Weber states that
While "zero-strain" stretch laminate webs per se are
generally known in the art as is the use of meshing corrugated
rolls to incrementally stretch such "zero-strain" stretch
laminate webs to impart elasticity thereto, the present
Applicant has discovered that for some "zero strain" stretch
laminate webs there is a tendency for the corrugated rolls to
cause damage to the webs, particularly when relatively high
degrees of incremental stretching are involved.
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(Weber, col. 9, ll. 9-17.)
Weber solves the problem by:
sequentially stretching the "zero-strain" stretch laminate
portions of the web during the incremental stretching process.
In a particularly preferred embodiment, the mechanical
stretching operation is carried out in stages by passing said
laminate web between multiple pairs of meshing corrugated
rolls, each pair of rolls exhibiting a greater degree of meshing
than the preceding pair, to sequentially stretch said web while
minimizing damage thereto. The use of multiple roll pairs
with progressively greater degrees of meshing imposes a lower
strain rate on the web than would be the case for a single pair
of meshing corrugated rolls having an amplitude and degree of
meshing comparable to the final pair of multiple rolls. In
addition, the temporary release of tension from the web as it
passes between the successive roll pairs allows some degree of
stress redistribution to occur in the web prior to the web's
being incrementally stretched to a greater degree by each
succeeding roll pair. Minimizing the strain rate and allowing a
degree of stress redistribution in the foregoing manner
minimizes the tendency to cause damage to the web.
(Weber, col. 9, ll. 20-45.)

“The test for combining references is not what the individual
references themselves suggest but rather what the combination of disclosures
taken as a whole would suggest to one of ordinary skill in the art.” In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR, 550
U.S. 398, 421. Therefore, in the obviousness analysis, the inferences and
creative steps that the ordinary artisan would employ must be taken into
account. Id. at 418.
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Taking into account the skill of the ordinary artisan as evidenced by
the prior art, we cannot agree with Appellants that the differences between
the method and apparatus of Dobrin and that of Weber somehow negate the
obviousness of using Weber’s sequential stretching to reduce strain and
prevent breaking in the stretching process of Dobrin. Dobrin’s process
involves stretching the web by straining the web between the teeth and
grooves of rolls. As a result strain will occur between the rolls and damage
can occur. Dobrin acknowledges this fact. Dobrin states that, “[f]or
example, a first set of forming rolls can serve to increase the elongation
capability of the nonwoven web without causing shredding of the web into
‘pieces’ or ‘strips,’ and a second set of forming rolls can serve to expand the
web in the X-Y plane.” (Dobrin, col. 13, ll. 17-21.)
Given that stretching occurs in the process of Dobrin, one of ordinary
skill in the art would understand that the multiple roll pairs of Weber would
solve the problem of damage caused by stretching, especially high degrees
of stretching. One of the ways in which a claim’s subject matter can be
proved obvious is by establishing that there existed at the time of invention a
known problem for which there was an obvious solution encompassed by the
claims. KSR Int’l v. Teleflex Inc., 550 U.S. 398, 419-20 (2007). Weber
solves a known problem that would have been encountered by the ordinary
artisan implementing Dobrin’s process at certain levels of stretching.
The evidence as a whole supports the Examiner’s finding that there is
a suggestion within the prior art to carry out the stretching desired by Dobrin
using multiple pairs of meshing rolls having the “mating surfaces having fins
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positioned to fit within the grooves of said forming surfaces” as required by
claim 1.
Turning to the second issue, we further determine that the evidence
supports the Examiner’s finding of a suggestion to use slot adhesive coating
to apply adhesive in the process of Dobrin.
Dobrin requires that the modified nonwoven web be joined to the
breathable film to form the backsheet product. Dobrin does not particularly
limit the joining operation, and suggests joining by applying adhesive and
pressing the materials together (Dobrin, col. 21, ll. 22-25 and ll. 47-54). So
that the micropores of the breathable backing sheet film are not all filled,
Dobrin prefers to apply the adhesive in a discontinuous pattern (Dobrin, col.
21, ll. 54-60).
Boger slot coats rows of adhesive onto a moisture impervious backing
sheet of a diaper so as to adhere the backing sheet to the nonwoven pad of
the diaper (Boger, col. 1, ll. 23-29 and col. 2, ll. 17-32).
For the reasons provided by the Examiner, and in view of the skill in
the art demonstrated by the prior art as a whole, we agree with the Examiner
that using the known slot coating process for its known function of
discontinuously coating adhesive onto a substrate to allow bonding between
a nonwoven and film would have been obvious to one of ordinary skill in the
art (Ans. 11-13).
The evidence as a whole supports the Examiner’s finding that the
prior art provides a suggestion to use a slot coat adhesive process to apply
adhesive to bond the laminate of Dobrin.

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2. CLAIM 14
Claim 14 further requires that, in accordance with claim 13, the first
flexible sheet material, after stretching, have a corrugated surface, and that
the adhesive be applied substantially to the peaks of the corrugations.
Appellants further contend that Boger’s substrate is flat, not
corrugated, and Boger is not concerned with application of adhesive only on
the peaks of corrugations (Br. 21-22).
The Examiner responds that applying adhesive to a corrugated web
would not appear to require any more skill than applying adhesive to an
uncorrugated web other than a determination of the precise locations to
which the adhesive should be applied, and Boger applies adhesive to precise
locations in the transverse direction (Ans. 12). Based on the Examiner’s
reasoning, we agree that one of ordinary skill in the art would have
appreciated that a slot coating device would be useful for applying adhesive
to webs in rows such as along the peaks of the corrugations of Dobrin, given
that Dobrin’s rows of corrugations are spaced similarly to the adhesive
application rows of Boger.
B. REJECTION OF CLAIM 12 ADDING MORMAN
Claim 12 further requires that the method of claim 1 include “the step
of stretching the second flexible sheet material in the machine direction
before it is joined to the stretched first flexible sheet material.”
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to stretch Dobrin’s second web in the machine
direction to create breathability as machine direction stretching is an obvious
alternative to the cross direction stretching Dobrin suggests for creating
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breathability, such machine direction stretching being well known in the art
as exemplified by Morman (Ans. 6).
Appellants contend that machine direction stretching has other
negative effects such as necking and the Examiner must show why persons
of ordinary skill would ignore these other effects and resort to stretching in
the machine direction (Br. 22-23).
The issue is: Does the evidence as a whole and the law support the
Examiner’s conclusion that it would have been obvious to select the
admittedly known process of machine direction stretching to create the
breathability desired by Dobrin?
We answer this question in the affirmative.
The prior art indicates that both machine direction stretching and cross
direction stretching were known in the art for imparting the necessary
micropores for breathability (Dobrin, col. 20, ll. 20-37 (cross direction
stretching); Morman ¶ [0011] (machine direction stretching)).
It was also known in the art that machine direction stretching results
in necking (Morman, ¶ [0011]), and that one can control the width and basis
weight of a web by stretching in the machine direction (Dobrin, col. 9, ll. 9-
24).
Because machine direction stretching was known to create the
micropores desired by Dobrin, it would have been obvious to use that known
method instead of the cross direction stretching taught by Dobrin. Those of
ordinary skill would have obtained a predictable result of necking in so
stretching. The choice of stretching type would have been dependent on the
level of necking desired or tolerated in the process. Even if machine
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direction stretching were less desirable than cross direction stretching in the
process, it remains that both stretching processes where known to
accomplish the desired breathability.
It is well settled that, “in a section 103 inquiry, ‘the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”’ Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Therefore, even if machine direction stretching were less preferred, it would
have been obvious to use it because it was known to accomplish the desired
result.
The evidence as a whole and the law support the Examiner’s
conclusion that it would have been obvious to select the admittedly known
process of machine direction stretching to create the breathability desired by
Dobrin.
III. CONCLUSION
On the record before us, we sustain the rejections maintained by the
Examiner.
IV. DECISION
The decision of the Examiner is affirmed.
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V. TIME PERIOD FOR RESPONSE
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

cam

KIMBERLY-CLARK WORLDWIDE, INC.
TARA POHLKOTTE
2300 WINCHESTER RD.
NEENAH WI 54956