Ex Parte Moore et al

Patent Trial and Appeal Board

Feb 28, 2019

12997391 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/997,391 03/04/2011
32692 7590 03/04/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Eric M. Moore
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
64409US005 6175
EXAMINER
WALSHON, SCOTT R
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC M. MOORE, MATTHEW T. SCHOLZ,
KOREY W. KARLS, FRANCIS E. PORBENI,
KEVIN D. LANDGREBE and JAY M. JENNEN
Appeal2017-005971
Application 12/997,391
Technology Center 1700
Before TERRY J. OWENS, ROMULO H. DELMENDO, and
JAMES C. HOUSEL, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (3M Innovative Properties Company) appeals under
35 U.S.C. § 134(a) from the Examiner's rejection of claims 1, 8, 10, 12, 13,
15-17, 19, 20, 32, 33, 36-42, 44--51, and 53---64. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The claims are to a nonwoven web and an article comprising it.
Claim 1 is illustrative:
1. A nonwoven web comprising fine fibers, wherein the fine
fibers comprise a composition comprising:
Appeal2017-0005971
Application 12/997,391
one or more thermoplastic semicrystalline aliphatic
polyesters having at least 85% of one isomer; and
a viscosity modifier mixed with the one or more
thermoplastic semicrystalline aliphatic polyesters within the
fine fiber, wherein the viscosity modifier has the following
structure:
(R-C02-)nMn+
wherein:
R is alkyl or alkylene of C8-C30 which is
branched or straight chain, or Cl2-C30 aralkyl, and
may be optionally substituted with 0-100 alkylene
oxide groups;
M is H, an alkali metal, an alkaline earth
metal, or an amine; and n is the valency of M;
wherein the viscosity modifier is selected to lower the
viscosity of the composition relative to the same composition
without the viscosity modifier;
wherein the fine fibers have an average fiber diameter of
less than 5 microns;
wherein the viscosity modifier is present in an amount of
at least 0.5% by weight and less than 2% by weight, based on
the total weight of the fine fibers.
Liu
Noda
Jariwala
Gale
The References
us 5,585,056
US 6,905,987 B2
US 6,960,642 B2
US 2006/0058868 Al
Dec. 17, 1996
June 14, 2005
Nov. 1, 2005
Mar. 16, 2006
Pratham Stearchem Pvt. Ltd., Calcium Stearate - Product Data Sheet (2010),
http://www. prathamstearchem. com/ calcium_stearate.html (hereinafter
Pratham Stearchem).
Silver Fem Chemical, Calcium Stearate (2014),
http://www.silverfemchemical.com/products/calcium-stearate/[9/10/2014
5:39:51 PM] (hereinafter Silver Fem).
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Application 12/997,391
The Rejections
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
claims 1, 8, 10, 12, 13, 15-17, 19, 20, 32, 33, 36-38, 42, 44--51, and 53-56
over Noda in view of Liu, Silver Fem and Pratham Stearchem; claims 39-41
over Noda in view of Liu, Silver Fem, Pratham Stearchem, and Gale; and
claims 57-64 over Noda in view of Liu, Silver Fem, Pratham Stearchem,
and Jariwala.
OPINION
We affirm the rejections.
Although the Examiner applies additional references in rejecting some
of the dependent claims, the Appellant argues the claims as a group
(App. Br. 10-19). We therefore limit our discussion to one claim, i.e.,
claim 1. Claims 8, 10, 12, 13, 15-17, 19, 20, 32, 33, 36-42, 44--51, and 53-
64 stand or fall with that claim. See 37 C.F.R. § 4I.37(c)(l)(iv) (2012).
Noda discloses "[ e ]nvironmentally degradable melt spun fibers
comprising a polyhydroxyalkanoate copolymer (PHA) and a polylactic acid
polymer or copolymer (PLA)" (col. 3, 11. 8-10) and "[n]onwoven webs and
disposable articles comprising the environmentally degradable fibers"
( col. 3, 11. 23-25). The PHA polymer makes the fiber rapidly
environmentally degradable, and the PLA polymer makes the polymer blend
spinnable and helps prevent stickiness ( col. 3, 11. 42--46). A preferred fiber
configuration is sheath-core, the sheath being a PLA polymer and the core
being a PHA polymer (col. 3, 11. 48-50). The PLA polymer preferably is
semi-crystalline with at least about 90 mole%, more preferably at least about
95 mole%, of the repeating units in the polylactide being either L- or
D-lactide (col. 7, 11. 59-64). The fiber can contain a plasticizer which "tends
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Application 12/997,391
to lower the modulus and tensile strength, and to increase the ultimate tensile
elongation, impact strength, and tear strength" ( col. 8, 11. 22-24 ), and is
present in the final fiber composition in an amount of from about 2% to
about 70% ( col. 8, 11. 42--45). The exemplified plasticizers include
biodegradable organic esters (col. 8, 11. 31-36). "Fibers commonly used to
make non wovens will have a diameter of from about 5 micrometers to about
30 micrometers" ( col. 11, 11. 59---61 ).
Liu discloses a fiber composition containing a bioabsorbable polymer
and a plasticizer ( col. 2, 11. 18-20). The monomers from which the
bioabsorbable polymer is made include lactide and lactic acid, which are
among the preferred monomers (col. 1, 11. 64---67; col. 2, 11. 21-27). The
amount of plasticizer in the composition can be from about 0.001 to about
5 wt%, preferably about 0.1 to 2 wt%, most preferably about 0.02 to 1 wt%
(col. 2, 11. 47-53). "Calcium stearate and stearic acid are particularly
preferred plasticizers" ( col. 1, 11. 64---65). The fibers are used to make
surgical articles (col. 1, 11. 14--15; col. 9, 11. 39--45).
The Appellant asserts that "the fibers disclosed by Noda et al. in the
examples are not even 'about 5 micrometers"' (App. Br. 12) and that Noda
does not "enable making a fine fiber of less than 5 microns" (App. Br. 13).
Noda is not limited to its examples. See In re Fracalossi, 681 F.2d
792, 794 n.1 (CCPA 1982); In re Mills, 470 F.2d 649, 651 (CCPA 1972).
Instead, all disclosures therein must be evaluated for what they would have
fairly suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d
961,965 (CCPA 1966). Noda's term "about 5 micrometers" (col. 11, 1. 60)
is not limited to 5 micrometers but, rather, permits some tolerance. See In re
Ayers, 154 F.2d 182, 185 (CCPA 1946). Also, the Appellant does not
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Application 12/997,391
provide evidence that Noda would not have enabled one of ordinary skill in
the art to make a fiber having a diameter slightly less than 5 micrometers.
The Appellant asserts that Noda does not meet the Appellant's claim
requirement of "one or more thermoplastic semicrystalline aliphatic
polyesters having at least 85% of one isomer" because only Noda's PLA
polymer, not the PHA polymer, is disclosed as having at least 85% of one
isomer (App. Br. 13).
That claim requirement can be met by one thermoplastic
semicrystalline aliphatic polyester having at least 85% of one isomer, e.g.,
Noda's PLA polymer. Claim 1 's transition term "comprising" opens the
claim to other thermoplastic semicrystalline aliphatic polyesters such as
Noda's PHA polymer. See In re Baxter, 656 F.2d 679, 686 (CCPA 1981).
The Appellant asserts that "Noda et al. do not equate a plasticizer with
[the Appellant's claim 1 's] viscosity modifier (App. Br. 15) and that there is
no evidence that "a skilled artisan would have been able to predict that a
plasticizer could operate as a viscosity modifier" (App. Br. 16).
Noda's "organic acid esters which are biodegradable" include Liu's
calcium stearate which can be the Appellant's viscosity modifier
(Appellant's claim 8). "From the standpoint of patent law, a compound and
all of its properties are inseparable; they are one and the same thing." In re
Papesch, 315 F.2d 381,391 (CCPA 1963). Thus, like the Appellant's
calcium stearate, Liu's calcium stearate has the property of being a viscosity
modifier.
The Appellant asserts that one of ordinary skill in the art would not
have looked to Liu for a plasticizer to use in Noda's fiber because "Liu is
directed to making yams for woven, knitted, or braided products"
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(App. Br. 16) whereas "in the nonwoven spunbond process ofNoda et al.,
the filaments are extruded and stretched using a high velocity stream of air"
(id.).
Liu's yam formation techniques are not limited to weaving, knitting,
or braiding but, rather, include air-entangling (col. 4, 11. 37--40) which
appears to be the same as or similar to Noda's air drag attenuation (col. 12,
1. 48). Moreover, the Appellant does not provide evidence that one of
ordinary skill in the art would have considered plasticizers suitable for
making fibers by weaving, knitting, or braiding to be unsuitable for making
fibers by air drag attenuation.
The Appellant asserts that Liu's plasticizers disrupt crystallinity and
that, therefore, one of ordinary skill in the art would not have used them to
make Noda's semi-crystalline PHA or preferably-semi-crystalline PLA
(App. Br. 17; Reply Br. 3--4).
Liu teaches that "plasticizers lower the strength of the intermolecular
forces, thus increasing the flexibility of the polymeric structure" ( col. 1,
11. 22-24), and "[i]n general, plasticizers tend to interfere with crystallinity,
orientation, etc., and weaken fibers" (col. 1, 11. 40--41). Similarly, Noda
teaches that "a plasticizer tends to lower the modulus and tensile strength"
( col. 8, 11. 22-23). Noda, however, also teaches that a plasticizer tends "to
increase the ultimate tensile elongation, impact strength, and tear strength"
( col. 8, 11. 23-24). Thus, because Noda's plasticizers which are "organic
acid esters which are biodegradable" include Liu's calcium stearate, one of
ordinary skill in the art, through no more than ordinary creativity, would
have used Liu's calcium stearate as Noda's plasticizer in an amount
providing a suitable balance between fiber strength and flexibility, such as
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Noda's about 2% (col. 8, 11. 42--43). See KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398,418 (2007) (in making an obviousness determination one "can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ").
For the above reasons we are not persuaded of reversible error in the
rejections.
DECISION
The rejections under 35 U.S.C. § 103(a) of claims 1, 8, 10, 12, 13, 15-
17, 19, 20, 32, 33, 36-38, 42, 44--51, and 53-56 over Noda in view of Liu,
Silver Fem and Pratham Stearchem; claims 39--41 over Noda in view of Liu,
Silver Fem, Pratham Stearchem, and Gale; and claims 57---64 over Noda in
view of Liu, Silver Fem, Pratham Stearchem, and Jariwala are affirmed.
The 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).
AFFIRMED
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