Ex Parte Ng et al

Board of Patent Appeals and Interferences

Jul 27, 2012

11027285 (B.P.A.I. Jul. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/027,285 12/30/2004 Wing-Chak Ng KCX-924 (19459) 8016
22827 7590 07/27/2012
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
MCCLELLAND, KIMBERLY KEIL
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
07/27/2012 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 WING-CHAK NG,
ANN LOUISE McCORMACK, SUSAN ELAINE SHAWVER
____________

Appeal 2011-006842
Application 11/027,285
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-12, 15-18,
36-48, and 50 directed to a method of forming a laminate. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal:
1. A method for forming a laminate, said method comprising:

forming an elastic film from a polymer composition that comprises an
elastomeric polymer;
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orienting the elastic film in at least the machine direction;

bonding said oriented elastic film to a nonwoven web material to form
a laminate, wherein said nonwoven web material has a dimension in the
cross-machine direction that has not been reduced by necking and has a
percent stretch of no more than 25% when applied with 500 grams-force per
3 inches of said material in the cross-machine or the machine direction;

after formation of said laminate, mechanically stretching said laminate
in at least the cross-machine direction, wherein the mechanically stretched
laminate is extensible in the cross-machine direction, machine direction, or
both; and

wherein the laminate is liquid and vapor impermeable.

The Examiner relies upon the following as evidence of unpatentability
(Ans. 3):1
Wu US 5,422,172 Jun. 6,1995
Gessner US 5,733,822 Mar. 31, 1998
Melius US 6,214,274 B1 Apr. 10, 2001
Morman ‘274 US 6,579,274 B1 Jun. 17, 2003
Morman ‘511 WO 02/34511 A1 May 2, 2002
Csida 2003/0201061 A1 Oct. 30, 2003

THE REJECTIONS
The Appellants seek review of the following rejections under 35
U.S.C. § 103(a): Claims 1-4, 8-12, 15-16, 36-37, 44-48, and 50 over
Morman ‘511 in view of Wu and Csida; claims 1-4, 8-12, 15, and 44-48 over
Morman ‘511 in view of Gessner and Csida; claims 5-7, 17-18, and 42-43
over Morman ‘511 in view of Wu, Csida, and Morman ‘274; and claims 38-
41 in view of Morman ‘511 over Wu, Csida, and Melius.

1 Our analysis makes reference to the Examiner’s Answer mailed December
17, 2010 (“Ans.”) and the Appeal Brief filed October 15, 2010 (“App. Br.”).
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ISSUE
The following dispositive issue arises: Does the Examiner err in
concluding that the invention of claim 1, and in particular, the limitation
requiring a nonwoven web material that “has a percent stretch of no more
than 25% when applied with 500 grams-force per 3 inches of said material”
in a specified direction, would have been obvious in view of the applied art?
We answer the question in the negative and AFFIRM. We find no
reversible error in the Examiner’s fact finding and application of law.
Therefore, we adopt the fact findings and responses to argument presented in
the Answer and add the following analysis primarily for emphasis.

ANALYSIS
(with Findings of Fact and Principles of Law)
Claim 1 is the only independent claim at issue. The Appellants argue
the rejected claims as a group, emphasizing the patentability of claim 1.
App. Br. 3-18. We select claim 1 as representative of the group. Claims 2-
12, 15-18, 36-48, and 50 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii). Our analysis focuses on the rejection of claim 1 over
Morman ‘511 in view of Wu and Csida because the Appellants focus their
arguments upon that rejection.
The Examiner finds that Morman ‘511 discloses a method of making
a biaxial stretch laminate that meets each limitation of claim 1, except that
the reference “does not specifically disclose after formation of the laminate
mechanically stretching said laminate in at least the cross-machine
direction” nor disclose that “the laminate is vapor impermeable.” Ans. 4.
The Examiner finds that Wu discloses the limitation relating to mechanical
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stretching and, further, would have motivated an ordinary artisan to include
that limitation in the method of Morman ‘511 “to improve the recoverability
and fibrous texture of the laminate.” Ans. 4-5 (citing Wu 6:20-22). The
Examiner further finds that Csida demonstrates that liquid and vapor
impermeable laminates were known equivalents of liquid and vapor
permeable laminates and, on that basis, concludes that it would have been
obvious to substitute a vapor impermeable laminate for the equivalent vapor
permeable laminate of Morman ‘511. Id. at 5 (citing Csida ¶ [0079]).
The Appellants contend that Morman ‘511 also fails to disclose a
nonwoven web that “has a percent stretch of no more than 25% when
applied with a 500 grams-force per 3 inches of said material” as specified in
claim 1. App. Br. 6. The Examiner responds that the stretch of a nonwoven
web is “a material dependent property.” The Examiner finds, and we agree,
that the web of Morman ‘511 and the web of claim 1 reasonably appear to be
“composed of the same materials and formed by the same techniques.” Ans.
17; see Ans. 4 (citing Morman ‘511 10:9-14:31; Spec. p. 13). Significantly,
the Appellants raise no argument against this crucial finding. App. Br. 3-18.
On this record, we are of the opinion that the Examiner makes out a
prima facie showing that the nonwoven web of Morman ‘511 appears to be
substantially identical to the nonwoven web of claim 1, and thus, the burden
shifts to the Appellants to establish that the web of Morman ‘511 does not
inherently possess the stretch characteristics of the claimed web. See In re
Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and
prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
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applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”).
On this point, the Appellants contend that Morman ‘511 discloses a
nonwoven web that “can be stretched by at least 50% in at least one
direction.” App. Br. 7 (citing Morman 2:27-28; 6:14-18); App. Br. 9
(contending that Morman ‘511 discloses a nonwoven web that “can be
stretched, without breaking, by at least 50%”) (citations omitted). Critically
absent, however, is any showing of the percent stretch that is exhibited by
the web of Morman ‘511 “when applied with 500 grams-force per 3 inches.”
Claim 1. We agree with the Examiner that the Appellants have failed to
come forward with persuasive argument or evidence that Morman
‘511discloses “a web with greater than 25 percent stretch when applied
with” the relevant force. Ans. 18.
The same failure of evidence undercuts the Appellants’ further
contention that Morman ‘511 teaches away from the web of claim 1. Id. at
10-11. That contention is based on the premise that the web of claim 1 is
“non-extensible” whereas the web of Mormon ‘511 is “extensible.” Id. We
agree with the Examiner that “this argument is not persuasive” in light of the
finding, undisputed by the Appellants, that the web of Morman ‘511
reasonably appears to be “composed of the same materials and formed by
the same techniques” as the web of claim 1, therefore, the webs would be
expected to “exhibit the identical percent stretch.” Ans. 17, 18.
The Appellants further argue that Morman ‘511 teaches away from
substituting the liquid and vapor impermeable laminate of Csida for the
“breathable” liquid and vapor permeable laminate of Morman ‘511. App.
Br. 13. The Examiner finds that Csida discloses that “it is known in the art
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as equivalent to substitute liquid and vapor impermeable laminates for liquid
impermeable vapor permeable laminates.” Ans. 5 (citing Csida ¶ [0079]).
We agree. On this record, we discern no error in the Examiner’s conclusion
that “[s]imple substitution of one known web (impermeable) for another
(breathable) to yield predictable results (diaper laminate) would have been
obvious to one of ordinary skill in the art, because a teaching of equivalence
is sufficient rational to make such a substitution.” Id. at 19; see KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result”) (citation omitted).
For the above reasons, we affirm the rejections of claims 1-12, 15-18,
36-48, and 50.

CONCLUSION
We affirm the rejections of claims 1-12, 15-18, 36-48, and 50.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED
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