Ex Parte Mrozinski et al

Board of Patent Appeals and Interferences

Nov 5, 2010

09876704 (B.P.A.I. Nov. 5, 2010)

1

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES S. MROZINSKI, JAYSHREE SETH, and
JAMES E. THORSON
__________

Appeal 2009-012766
Application 09/876,704
Technology Center 1600
__________

Before ADRIENE LEPIANE HANLON, DEMETRA J. MILLS and
KAREN M. HASTINGS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL1

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation and obviousness. We have jurisdiction under 35
U.S.C. § 6(b).

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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STATEMENT OF THE CASE
The following claims are representative and read as follows:
1. An oil absorbing wipe material suitable for wiping a users skin
comprising an oil absorbing porous substrate having a first face and a second
face wherein the substrate has a transparency of less than 65 percent which
porous substrate changes transparency upon absorption of oil on the first
face, said porous substrate having a generally non-tacky flexible coating on
at least a portion of the second face, said coating covering the porous
substrate second face and comprising a film forming polymer with at least
one additional additive comprising an active or skin modifying agent which
can deliver a benefit to skin or hair contained within the film-forming
polymer which coating is visible on the coated second face of the porous
substrate and which coating does not penetrate to the opposite face of the
porous substrate and which coating can deliver a benefit to skin or hair
wherein the oil absorbing porous sheet comprises stretched film made of a
thermoplastic material and wherein interstitial volume per unit area of said
porous stretched film is in the range of 0.0001-0.005 cm3 as calculated by
the following equation:
interstitial volume per unit are = [film thickness(cm) x 1 (cm) x void content
(%)]/100 (where the void content is the percentage of voids in the porous
film) and the average pore size of the wipe material is from 3 to 15 microns.

45. A method for forming a flexible coating on an oil absorbing wipe
material suitable for wiping a users skin comprising, providing an oil
absorbing porous substrate having a first face and a second face wherein the
substrate has a transparency of less than 65 percent, which porous substrate
changes transparency upon absorption of oil on the first face, coating the
porous substrate on at least a portion of the second face with a coating
solution so as to cover the second face of the porous substrate comprising at
least a film forming polymer, a particulate filler and an evaporative solvent
with at least one additional additive which delivers a benefit to hair or skin,
the coating solution having a viscosity of from 2000 to 100,000 cps and a
percent solids of 60 to 80 percent wherein the coating is visible on the
coated face of the porous substrate and which coating does not penetrate to
the opposite face of the porous substrate.

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Cited References

The Examiner relies on the following prior art references:

Sugiyama et al. US 4,643,939 Feb. 17, 1987
Matsuo et al. US 6,492,307 B1 Dec. 10, 2002
Hansen et al. US 6,533,119 B1 Mar. 18, 2003
Kondo et al. WO 99/29220 Jun. 17, 1999
Park et al. US 5,939,093 Aug. 17, 1999

Grounds of Rejection
1. Claims 1, 4-7, 13-15, 18-20, 23-25, 29, 30 and 39-44 are rejected under
35 U.S.C. § 102(e) as being anticipated by Matsuo et al. (Ans. 4-5).
2. Claims 1, 4-7, 13-15, 18-20, 23-25, 29, 30 and 39-44 are rejected under 35
U.S.C. §103(a) as being unpatentable over Matsuo et al., in view of Hansen
et al. (Id. at 6-7).
3. Claims 26-28, 31-33, 35-38, 45-53 and 55-72 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Matsuo et al., in view of Kondo
et al. (Id. at 7).
4. Claims 1, 4-9, 12-15, 18-33, 35-53 and 55-72 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Kondo et al., in view of
Sugiyama et al. (id.).
5. Claims 10 and 54 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kondo et al. in view of Sugiyama et al. and Park et al. (id.
at 9).

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PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference;
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Our mandate is to give claims their broadest reasonable interpretation.
In re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed.
Cir. 2004). “An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
Moreover, it is during prosecution that applicants have “the opportunity to
amend the claims to obtain more precise claim coverage.” American
Academy, 367 F.3d at 1364.
“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).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
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issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.

Discussion
1. Claims 1, 4-7, 13-15, 18-20, 23-25, 29, 30 and 39-44 are rejected under
35 U.S.C. §102(e) as being anticipated by Matsuo et al. (Ans. 10 -11.)

ISSUE
The Examiner finds that Matsuo teaches each element claimed.
(Ans. 10.)
Appellants argue that there is no teaching in Matsuo of a film forming
polymer coating or a porous oil absorbing layer “that has a transparency of
less than 65[%] and changes transparency upon absorption of oil.” (Id.)
The issue is: Does Matsuo teach the film forming element and oil
absorbing layer claimed?

ANALYSIS
We select claim 1 as the representative claim as Appellants have not
separately argued individual claims.
The Examiner finds that Matsuo teaches each element claimed.
(Ans. 10.)
Appellants argue that there is no teaching in Matsuo of a film forming
polymer coating or a porous oil absorbing layer “that has a transparency of
less than 65[%] and changes transparency upon absorption of oil.” (Id.)
The Examiner finds that “Matsuo teaches the aqueous cleansing liquid
retention layer 2 (the active containing layer) is made of polyurethane,
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acrylic, polyester, or polyamide (column 5, lines 59 through column 6, lines
1-28). Polyurethane and polyester are well known in the pharmaceutical art
as film forming polymer[s.]” (Id.) We further note that Matsuo teaches that
the aqueous liquid retention layer may be a nonwoven fabric of cellulose
(see col. 5. line 67 to col. 6, l.2) which is consistent with the cellulosic film
forming polymers in the Specification. (See Spec., page 15, ll. 20.)
Appellants argue that the Examiner has not interpreted the term
“coating” consistent with its use in the Specification. However, Appellants
do not direct us to any portion of the Specification that discusses Appellants’
coating or defines the term “coating. (Reply Br. 2.)
We give the phrase “coating comprising a film forming polymer” its
broadest reasonable interpretation. Since the term “coating” is not defined
in the Specification, we give the term its ordinary meaning. “The ordinary
and customary meaning of a claim term may be determined by reviewing a
variety of sources. Some of these sources include the claims themselves;
dictionaries and treatises; and the written description, the drawings, and the
prosecution history.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334
F.3d. 1294, 1298 (Fed. Cir. 2003) (internal citations omitted).
The term “coating” means “a layer of covering material.”2
Accordingly, we conclude that Matsuo does teach polyurethane and
polyester, which are film forming polymers, as a layer of covering material
covering the oil absorption layer, thus Matsuo teaches a coating comprising
a film-forming polymer, as claimed.

2 Webster’s II New Riverside University Dictionary, (1994).
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Appellants argue “that Matsuo does not teach the porous oil absorbing
layer is one that has a transparency of less than 65 percent and changes
transparency upon absorption of oil.” (Ans. 10.) The Examiner finds that the
oil absorption layer of Matsuo would have the same transparency and pore
size “because Matsuo teaches the use of the same thermoplastic polymer,
manufactured from fiber having the same basis weight and the same fiber
diameter.” (Id. at 11.) Appellants have not provided any persuasive
technical reasoning nor evidence that the thermoplastic polymers of Matsuo
would not possess the same transparency properties. Therefore, we are not
persuaded by Appellants’ argument.
We agree with the Examiner and do not find that the Appellants have
provided sufficient evidence to show that the oil absorption layer of Matsuo
is not the same as that claimed.

CONCLUSIONS OF LAW
The cited reference supports the Examiner’s anticipation rejection.

2. Claims 1, 4-7, 13-15, 18-20, 23-25, 29, 30 and 39-44 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Matsuo et al., in view
of Hansen et al. (Ans. 6-7.)
We select claim 1 as the representative claim as Appellants have not
separately argued individual claims.
The Examiner finds that, with regard “to the properties of the oil
absorbing layer, it would have been obvious to one of the skill in the art that
the oil absorbing layer taught by Matsuo would have the claimed properties,
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because Matsuo teaches the use of the same thermoplastic polymer.” (Id. at
6.) The Examiner further finds that
“Hansen teaches oil absorbing wipes made of porous sheet
thermoplastic polymer such as polyolefin and polypropylene having
fiber average diameter of less than 10 μm, void volume of from 40 to
80%, average pore size of 3-15 μm, and oil absorption capacity of
from 0.7 to 6 mg/cm2 (column 4, lines 25-62). Hansen further teaches
the wipes having transparency of about 65% or less, having Hand of
8g or less, and having the ability to change from opaque to translucent
after absorbing oil (column 5, lines 1-27).” (Id. at 6-7.)

Appellants do not point to any error in these findings. Instead,
Appellants contend that neither Matsuo nor Hansen teach “a film forming
polymer coating that penetrates into a porous oil absorbing layer.” (App. Br.
11.)
However, the pending claim 1 does not require that the film forming
polymer penetrates into a porous oil absorbing layer.
For the reasons set forth above affirming rejection 1, we conclude that
Matsuo teaches a film forming polymer layered on an oil absorption layer as
claimed.
CONCLUSION
The obviousness rejection over Matsuo in view of Hansen is affirmed.

3. Claims 26-28, 31-33, 35-38, 45-53 and 55-72 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Matsuo et al. in view of Kondo
et al. (Ans. 7).
We select claim 45 as representative of this rejection as Appellants
have not argued the claims separately.
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As found by the Examiner, “Matsuo does not expressly teach the
claimed method. Kondo teaches a process for applying a coating
composition to an oil absorbing sheet comprising applying to a surface to the
oil absorbing sheet a coating solution containing fine particles of liquid-
absorbing substance, solvent, and surfactant; and drying the coating to
remove the solvent therefrom (page 9, lines 13-30).” (Id.)
Therefore, the Examiner concludes that one of ordinary skill in the art
would have been motivated to use the process of Kondo to prepare the
cleansing sheet of Matsuo, because Matsuo teaches coating the oily
absorption sheet with a film, and because Kondo teaches the oily absorption
sheet can be coated by applying a coating solution to the surface of the sheet
to obtain an oil cleaning sheet that has excellent oil absorption and resistant
to damage during use. (Id.) Appellants do not direct us to any error in the
Examiner’s conclusion.
Appellants contend that neither Matsuo nor Kondo teach “a film
forming polymer coating that penetrates into a porous oil absorbing layer.”
(App. Br. 12.) However, pending claim 45 does not require the film forming
polymer to penetrate into a porous oil absorbing layer. Claim 45 merely
recites that the “coating does not penetrate to the opposite face of the porous
substrate.”
Appellants also argue that the claimed viscosity and solidity are
critical to obtaining a porous substrate whereby the coating is firmly
anchored onto the porous substrate but does not penetrate to the opposite
face of the substrate. (App. Br. 12.)
There is no dispute that the coating in Kondo penetrates the substrate
to some degree but does not penetrate to the opposite face of the film. See,
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e.g., Kondo, p. 5, ll. 14-16 (at least one surface of the porous film contains
the hydrophilic coating). Thus, on this record, it is reasonable to find that
the coating in Kondo inherently has a viscosity and solidity within the
claimed ranges.
CONCLUSION
The rejection of claim 45 is reversed, and all the other rejected claims
stand with claim 45.

4. Claims 1, 4-9, 12-15, 18-33, 35-53 and 55-72 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Kondo et al. in view of
Sugiyama et al. (Ans. 7-9).
Appellants argue individual claims separately which we address
below.
Claim 1
“Kondo teaches a process for applying a coating composition to an oil
absorbing sheet comprising applying to a surface to the oil absorbing sheet a
coating solution containing fine particles of liquid-absorbing substance,
solvent, and surfactant; and drying the coating to remove the solvent
therefrom (page 9, lines 13-30).” (Ans. 8.) The Examiner finds that “Kondo
does not teach the use of additive in the coating solution.” (Id.)
The Examiner finds that Sugiyama teaches a coating solution
comprising an additive such as a bactericide. (Ans. 9.) The Examiner
concludes that, “it would have been obvious to one of ordinary skill in the
art to modify the coating solution of Kondo to include the bactericide in
view of the teaching of Sugiyama to obtain the claimed invention, because
Sugiyama teaches oil absorbing wipes containing bactericide exhibits better
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cosmetic effect than the conventional oil absorbing wipes (column 4, lines
17-23) and because Sugiyama teaches bactericide contained in the oil
absorbing wipes suppressed proliferation of bacteria therefore, reduce
adverse effects of bacteria on the skin.” (Id.)
Appellants argue that the bactericide of Sugiyama is incorporated into
the oil absorbing sheet and thus, suggests, at best, putting a bactericide in the
oil absorbent microporous thermoplastic film of Kondo rather than the
coating solution. (App. Br. 10.) We disagree.
Sugiyama discloses that the bactericide is dissolved in a suitable
solvent and intermixed with a water soluble sizing agent, such as polyvinyl
alcohol. Sugiyama discloses that this solution may be coated on the surface
of the oil absorbing sheet (column 2, lines 55-68). Based on these teachings,
the Examiner had a reasonable basis for concluding it would have been
obvious to one of ordinary skill in the art to add the bactericide of Sugiyama
to the coating solution of Kondo. (Ans. 9.)
Next, Appellants contend that the “coated bactericide-containing
solution [of Sugiyama] penetrates to the other side of the sheet and remains
at both the front and (r)ear side of the sheet” and therefore Sugiyama does
not teach that the coating does not penetrate to the opposite face of the
porous substrate, as claimed (Reply Br. 3).
Appellants’ argument fails to consider the prior art as a whole. There
is no dispute that the coating in Kondo does not penetrate to the opposite
face of the microporous thermoplastic film. The Examiner merely relies on
Sugiyama as evidence that a bactericide may be useful in an oil absorbing
cosmetic sheet. Appellants have not shown that adding the bactericide of
Sugiyama to the coating of Kondo would cause the coating of Kondo to
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penetrate to the other side of the oil absorbing layer. Thus, we are not
persuaded by Appellants’ argument.

Claims 4-5
Appellants argue that neither Kondo nor Sugiyama “teach coating of a
film forming polymer having a particulate filler.” (App. Br. 10.)
Kondo teaches applying to a surface to the oil absorbing sheet a
coating solution (that includes a film forming polymer) containing fine
particles of liquid-absorbing substance, solvent, and surfactant; and drying
the coating to remove the solvent therefrom (see page 9, lines 13-30). Thus
the Examiner’s position that the oil absorbing sheet of Kondo and coating
has a film forming polymer having a particulate filler is reasonable. (Ans. 8.)

Claims 8-9
Appellants argue claims 8 and 9 as a group. In particular, Appellants
argue that neither Kondo nor Sugiyama “teach coating the porous substrate
such [that] the film forming polymer coating penetrates a specific percentage
of the porous substrate.” (App. Br. at 10.)
Claim 8 recites that the coating “penetrates from 10 to 90 percent of
the thickness of the oil absorbing porous substrate.” There is no dispute that
the coating in Kondo does not penetrate to the opposite face of the
microporous substrate. However, the coating in Kondo does penetrate the
substrate to some degree thereby retaining the coating on the substrate. In
the absence of a showing of criticality, we conclude that optimizing the
amount of penetration through routine experimentation would have been
within the skill of the ordinary artisan.
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Claim 12
Appellants contend “there is no teaching in Kondo or Sugiyama of
using salicylic acid or other additive in a film forming polymer layer.”
(App. Br. 10.)
However, the Examiner concluded that the combined teachings of
Kondo and Sugiyama teach adding a bactericide such as salicylic acid to a
coating layer as claimed. (Ans. 9.) For the reasons set forth above,
Appellants have failed to direct us to any harmful error in this conclusion or
the underlying facts supporting this conclusion.

Claim 45
Appellants argue that the viscosity and solidity recited in claim 45 are
critical to obtaining a porous substrate whereby the coating is firmly
anchored onto the porous substrate but does not penetrate to the opposite
face of the substrate. (App. Br. 12.)
There is no dispute that the coating in Kondo penetrates the substrate
to some degree but does not penetrate to the opposite face of the film. See,
e.g., Kondo, p. 5, ll. 14-16 (at least one surface of the porous film contains
the hydrophilic coating). Thus, on this record, it is reasonable to find that
the coating in Kondo inherently has a viscosity and solidity within the
claimed ranges.

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CONCLUSION
We are not persuaded that the cited references do not support the
rejection before us and the obviousness rejection is affirmed.
5. Claims 10 and 54 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kondo et al. in view of Sugiyama et al. and Park et al.
(Ans. 9-10).
Appellants do not address this rejection in the Appeal Brief or Reply
Brief concerning Park, therefore the rejection of these claims is Summarily
Affirmed.
TIME PERIOD
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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