Ex Parte Noda et al

Patent Trial and Appeal Board

Jun 18, 2018

14430348 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/430,348 03/23/2015 Yuki Noda
22429 7590 06/20/2018
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
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.
4639-407 3120
EXAMINER
DITMER, KATHRYN ELIZABETH
ART UNIT PAPER NUMBER
3778
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
EAnastasio@IPFirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUKI NODA,
TATSUYA TAMURA,
and AK.IRA HASHINO
Appeal2018-005216
Application 14/430,348
Technology Center 3700
Before STEVEN D.A. McCARTHY, MICHAEL L. HOELTER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a non-final rejection
of claims 1-13 and 16-20. Non-Final Act. 1 (Office Action Summary).
Claims 14 and 15 have been withdrawn. App. Br. 24 (Claims Appendix);
Non-Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm in part.
1 According to Appellants, "[t]he real party in interest is UNICHARM
CORPORATION." App. Br. 2.
Appeal2018-005216
Application 14/430,348
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to an absorbent article." Spec.
,r 1. Apparatus claim 1 is the sole independent claim, is illustrative of the
claimed subject matter, and is reproduced below:
1. An absorbent article comprising:
a liquid-permeable top sheet,
a liquid-impermeable back sheet, and
an absorbent body between the top sheet and back sheet,
wherein
the top sheet has a blood slipping agent-containing first
region and a blood slipping agent-containing second region each
consisting essentially of a blood slipping agent with a kinematic
viscosity of0.01 to 80 mm2/s at 40°C, a water holding percentage
of 0.01 to 4.0 mass%, and a weight-average molecular weight of
less than 1,000,
the blood slipping agent-containing first region overlaps at
least partially with an excretory opening contact region of the top
sheet that is adapted to be in contact with an excretory opening
of a wearer in use, and
the blood slipping agent-containing second region is
situated further toward a back side in a lengthwise direction of
the absorbent article than the blood slipping agent-containing
first region, and
a basis weight of the blood slipping agent in the blood
slipping agent-containing first region is greater than a basis
weight of the blood slipping agent in the blood slipping agent-
containing second region.
REFERENCES RELIED ON BY THE EXAMINER
Hjorth et al.
Warren et al.
Sato et al.
US 2004/0024374 Al
US 2006/0206077 Al
US 2012/0226250 Al
2
Feb. 5,2004
Sept. 14, 2006
Sept. 6, 2012
Appeal2018-005216
Application 14/430,348
REJECTI0NS 2
Claims 1-13 and 16-20 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Applicants regard as the invention.
Claims 1-3, 5, 8-12, and 16-20 are rejected under 35 U.S.C. § 102(b)
as anticipated by Sato or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Sato and Hjorth.
Claims 4, 6, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sato, or Sato in view ofHjorth, in view of Warren.
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sato, or Sato in view of Hjorth.
ANALYSIS
The Examiner's rejection of claims 1-13 and 16-20
as being indefinite
The Examiner expresses two separate rejections under 35 U.S.C.
§ 112, second paragraph. See Non-Final Act. 3-5. The first pertains to all
the claims (i.e., claims 1-13 and 16-20) while the other only pertains to
claims 16-20. We address each separately.
2 The rejection of claims 16-20 under 35 U.S.C. § 112, second paragraph, as
being indefinite because is it "unclear exactly what is further required for the
blood-slipping agent (regions) of claim 1 to be considered 'configured to
drop"' has been withdrawn. Ans. 5. However, the Examiner makes clear
that the other (i.e., "first") rejection of claims 16-20 as being indefinite
under 35 U.S.C. § 112, second paragraph, "remains outstanding and to be
reviewed by the Board." Ans. 6.
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Appeal2018-005216
Application 14/430,348
Claims 1-13 and 16-20
Sole independent claim 1 includes the limitation "consisting
essentially of' a blood slipping agent having a certain kinematic viscosity,
water holding percentage, and molecular weight. We are instructed, the
phrase "consisting essentially of' indicates that "the invention necessarily
includes the listed ingredients," but also that the claim is "open to unlisted
ingredients that do not materially affect the basic and novel properties of the
invention." PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354
(Fed. Cir. 1998). It is not disputed by the parties that Paragraphs 51-57 of
Appellants' Specification set forth desired properties and/ or "characteristics
of the recited blood slipping agent." Non-Final Act. 3; App. Br. 10. A
review of these paragraphs show that they contain explicit descriptions
where (a) the blood migrates from the top sheet into an underneath absorbent
pad 3 (see Spec. ,r 56) and, (b) the blood and the agent together migrate from
the top sheet into the underneath pad 3 (see Spec. ,r,r 52, 54). 3 However,
3 It is noted that, regarding those paragraphs in Appellants' Specification
where blood is the only item overtly described as migrating into the
underneath absorbent pad (see, e.g., Spec. ,r,r 37, 56, 73), these same
paragraphs do not expressly exclude some of the agent from also migrating
as well. See also Spec. ,r 55 (stating that the blood's hydrophilic
components "repel the hydrophobic portion of the blood slipping agent 25"
but is silent as to any leaching, dissolving, or the like of the agent into the
blood during such repulsion and migration). However, when the agent is
clearly to migrate with the blood into the underneath absorbent pad,
Appellants' Specification openly expresses this in other, distinct, paragraphs
(see, e.g., Spec. ,r,r 52, 54). Perhaps providing clarification on this point,
Paragraph 45 of Appellants' Specification addresses kinematic viscosity ( a
claimed value) stating that values "exceeding about 80 mm2/s" result in
"high viscosity" and thus "tend to be resistant to slipping into the absorbent
article together with menstrual blood." In claim 1, the claimed range for
kinematic viscosity is "0.01 to 80 mm2/s" and as such, this recited range is
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Appeal2018-005216
Application 14/430,348
according to Appellants, "Appellant clearly excluded embodiments that
include immobilizers so that the blood slipping agent can move with the
menstrual blood instead of being immobilized." Reply Br. 5. As per
Appellants, "[ t ]his exclusion is clear in both the explicit language in the
claim as well as in the prosecution history." Reply Br. 5. Despite this
assertion, Appellants do not indicate where claim 1, as presented for review,
clearly excludes immobilizers since Appellants' Specification provides no
support for such a limited interpretation of the characteristics of the blood
slipping agent (see above), and especially when claim 1 still recites such a
wide range of kinematic viscosity. Further, and as the Examiner states,
"[ c ]laim language should be clear from the specification from which it draws
its support." Ans. 7.
Turning to the Examiner's analysis of claim 1, the Examiner
addresses Paragraphs 157-164 of Appellants' Specification. Non-Final Act.
3--4. Paragraph 157 states, "[t]he blood slipping agent-containing
composition contains a blood slipping agent and at least one other
component," with the following paragraphs further identifying examples of
"other components." The Examiner thus reasons, "it appears that any
composition comprising an agent ... would be capable of performing as
claimed" with the exception where the agent "is somehow prevented from
understood to encompass both values of high viscosity (i.e., "80") and also
values of low viscosity (i.e., "0.01" or those that would be less likely to
resist slipping into the absorbent article together with the menstrual blood).
See also Spec. ,r 168. In view of the above, and because of the divergent
expressions made as to agent migration, it is considered reasonable for one
skilled in the art to understand Appellants' Specification as it is literally
presented, i.e., in some cases it is only the blood that migrates into the
underneath pad, and in other cases, both the blood and the agent migrate.
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Application 14/430,348
being dissolved and/or leaching out of a prior art composition." Non-Final
Act. 4. Accordingly, the Examiner states, "for purposes of examination,
'consisting essentially of' will be construed as excluding only those
ingredients that would irreversibly and/or covalently bind a blood slipping
agent itself to the topsheet." Non-Final Act. 4 (emphasis added). After
recounting the Examiner's interpretation, Appellants state, "Appellant does
not agree with this interpretation" and "Appellant traverses the interpretation
asserted by the Examiner." Reply Br. 4. We note, however, that these
assertions by Appellants appear inconsistent with Appellants' assertion
referenced above, i.e., "Appellant clearly excluded embodiments that
include immobilizers so that the blood slipping agent can move with the
menstrual blood instead of being immobilized." Reply Br. 5.
Nevertheless, the Examiner's unilateral insertion of a requirement
regarding binding into the understanding of claim 1 is not reasonable. First,
the express language of claim 1 neither requires nor precludes a particular
type of binding between the agent and the top sheet. Additionally, and as
indicated above, a stated characteristic of the blood slipping agent is that it
can either remain immobile on the top sheet, or it can migrate with the blood
into the underneath absorbent pad. Thus, in view of the above, the
Examiner's incorporation into the understanding of claim 1 that the phrase
"consisting essentially of' means an exclusion of irreversible or covalent
binding is faulty and not one we share. Accordingly, we are not in
agreement with the Examiner's analysis that reached this result and, because
the Examiner's indefiniteness rejection relied on this analysis, we do not
sustain the Examiner's rejection that claims 1-13 and 16-20 are indefinite.
See Non-Final Act. 4.
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Application 14/430,348
Claims 16-20
Claim 16 depends directly from claim 1 and recites the additional
limitation ( directed to previously recited first and second regions), that these
regions are "configured to drop from the top sheet to a member under the top
sheet ... along with menstrual blood." The Examiner explains that it is
unclear how these "regions" are to "drop from the top sheet." Non-Final
Act. 4. However, for purposes of examination, the Examiner states, "the
claims will be considered to recite ... that it is only the agent that is
intended to drop from the top sheet" along with the blood. Non-Final Act. 5.
Appellants do not focus on the claim language regarding the regions
dropping, but instead state, "Appellant respectfully request that the
Examiner clearly explain why the 'configured to' language in the current
application renders the claim language indefinite." App. Br. 8. Appellants
do not address or explain how a top sheet region is to drop to a member
underneath and as such, Appellants' reply is not responsive to the
Examiner's rejection, nor is Appellants' reply persuasive that the
Examiner's rejection was in error. We sustain the Examiner's rejection of
claims 16-20 as being indefinite on this point. We further agree with the
Examiner's understanding of claim 16 that "it is only the agent that is
intended to drop from the top sheet" along with the blood. 4 See supra.
4 This understanding is also consistent with our understanding of parent
claim 1 above where, in some instances, the agent can migrate from the top
sheet with the blood, and in other instances, the agent does not migrate but
stays with the top sheet. Hence, because dependent claim 16 recites that the
agent can drop from the top sheet to the underneath material, this further
buttresses the above analysis (under claim differentiation principles) that
parent claim 1 is broader, i.e., the agent can either migrate from the top sheet
with the blood or remain on the top sheet.
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Application 14/430,348
The rejections of claims 1-13 and 16-20
as either anticipated by or obvious over the cited art
In rendering these rejections, the Examiner expresses a reliance on
claim 1 as being "understood to irreversibly and/or covalently bind the [prior
art's] skin care agent to the topsheet." Non-Final Act. 7. As indicated
above, this is not a proper interpretation of claim 1. The Examiner's reliance
on this faulty interpretation permeates the Examiner's rejections under
various combinations of Sato, Hjorth, and Warren. For this reason, we do
not sustain the Examiner's rejections of claims 1-13 and 16-20 under either
35 U.S.C. §§ 102(b) and 103(a).
However, in reviewing the record presented, we note that Appellants
identify and rely upon two stated characteristics of the recited blood slipping
agent that purportedly distinguish their claims over the cited art. See App.
Br. 10. These are "(i) showing a suitable degree of affinity with menstrual
blood, and (ii) dropping from the top sheet to the member to be placed under
the top sheet along with the menstrual blood." App. Br. 10. However, there
are at least two additional characteristics of the blood slipping agent that are
identified and described in Paragraphs 51-57 of Appellants' Specification
(which Appellants rely upon for disclosing the two listed above). Regarding
the acknowledged showing of a suitable degree of affinity with menstrual
blood, Paragraph 53 also expressly discloses a certain degree of repulsion
between the blood slipping agent and menstrual blood ("the hydrophobic
portion [ of the blood slipping agent] repels the hydrophilic components [ of
the menstrual blood]"). Another characteristic described in these paragraphs
( and addressed above) is the disclosure of the agent remaining with the top
sheet such that it is not always "dropping with" or migrating with the
menstrual blood as Appellants seem to indicate. We note these
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Application 14/430,348
discrepancies in Appellants' arguments so that, in the event this matter
returns to the Board for review, they will (hopefully) have been addressed as
well.
DECISION
We reverse the Examiner's rejection of claims 1-13 and 16-20
(pertaining to the limitation "consisting essentially of') under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
We sustain the Examiner's rejection of claims 16-20 (pertaining to
regions being "configured to drop from the top sheet") under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
We reverse the Examiner's art rejections of claims 1-13 and 16-20
under 35 U.S.C. §§ 102(b) and 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED-IN-PART
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