Ex Parte Schonbeck

Patent Trial and Appeal Board

Mar 14, 2013

11152425 (P.T.A.B. Mar. 14, 2013)

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.
11/152,425 06/14/2005 Marcus Schonbeck SCHONBECK, M-1 8698
25889 7590 03/15/2013
COLLARD & ROE, P.C.
1077 NORTHERN BOULEVARD
ROSLYN, NY 11576
EXAMINER
MCCLELLAND, KIMBERLY KEIL
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
03/15/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARCUS SCHONBECK
____________

Appeal 2011-012189
Application 11/152,425
Technology Center 1700
____________

Before ROMULO H. DELMENDO, DEBORAH KATZ, and
DONNA M. PRAISS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 seeks our review under 35 U.S.C. § 134(a) of a final
rejection of claims 2, 3, and 8-15. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

STATEMENT OF THE CASE
The invention relates to a process for the production of an elastic

1 The Appellant identifies the real party in interest as “Nordenia
Deutschland.” Appeal Brief filed January 7, 2011 (“App. Br.”) at 1.
Appeal 2011-012189
Application 11/152,425

2
laminate material web, in which a cover material is laminated, using a hot-
melt glue, onto a carrier film containing a specified polymer powder on its
surface for preventing interlocking of the layers of the carrier film in a film
roll. Specification as originally filed (“Spec.”) 3. Representative claim 10,
which is recited in Jepson format,2 is reproduced below (with key limitations
shown in italics):
10. In a process for the production of an elastic laminate
material web, comprising the following steps:
processing a carrier film made of a thermoplastic
elastomer from a film roll;
laminating a cover material on at least one side of the
carrier film using a hot melt glue which is applied to the carrier
film at a glue temperature;
wherein the carrier film is a mono-film produced by
extrusion from a polymer selected from the group consisting of
styrene-isoprene-styrene block copolymer, styrene-butadiene-
styrene block copolymer, styrene ethylene/butylene block
copolymer, polyurethanes and ethylene copolymers,
wherein the improvement comprises:
applying a polymer powder directly to a surface of the
carrier film on at least one side of the carrier film prior to the
carrier film being rolled to prevent the carrier film from
sticking to itself in the film roll,
wherein the material in said film roll consists of said
carrier film provided as a mono-film and said polymer powder,
which acts as a spacer in the storage of said film roll, and

2 See Ex parte Jepson, 1917 C.D. 62, 243 O.G. 525 (Ass’t Comm’r Pat.
1917).
Appeal 2011-012189
Application 11/152,425

3
wherein the powder is present on the carrier film at a
weight per area of less than or equal to 1 g/m2,
wherein the powder consists of a polyethylene or
ethylene vinyl acetate [sic, ethylene-vinyl acetate copolymer]
having a melt temperature which is less than the glue
temperature of the hot melt glue applied to the carrier film, so
that the powder melts and mixes into the hot melt glue during
the step of laminating.
App. Br., Claims App’x.
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 8-10, 12, 13, and 15 as unpatentable over the admitted
prior art3 in view of Hisanaka4 and Taal;5
II. Claims 2 and 3 as unpatentable over the admitted prior art in
view of Hisanaka, Taal, and Abed;6 and
III. Claims 11 and 14 as unpatentable over the admitted prior art in
view of Hisanaka, Maglio,7 and Taal.
Examiner’s Answer entered April 12, 2011 (“Ans.”) 3-20.

3 Applicant’s Reply filed August 22, 2007, p. 8, ¶ 2; Specification, as
reflected in U.S. Patent Application Publication 2006/0225835 A1 published
October 12, 2006, ¶ [0007].
4 U.S. Patent Application Publication 2002/0058917 A1 published May 16,
2002.
5 U.S. Patent 6,818,093 B1 issued November 16, 2004.
6 U.S. Patent Application Publication 2005/0106980 A1 published May 19,
2005.
7 U.S. Patent 4,521,479 issued June 4, 1985.
Appeal 2011-012189
Application 11/152,425

4
DISCUSSION
A dispositive issue common to all three rejections is whether the
Examiner provided some articulated reasoning with some rational
underpinning to support a conclusion that a person of ordinary skill in the art
would have been prompted to substitute the powder made of silicon dioxide,
chalk, starch, or talcum used as spacer material in the process of the
admitted prior art with Hisanaka’s polyethylene powder? We agree with the
Appellant that the Examiner failed to provide a sufficient reason for
combining the admitted prior art with Hisanaka to support a conclusion that
a person of ordinary skill in the art would have been led to substitute the
identified spacer materials of the admitted prior art with Hisanaka’s
polyethylene powder. App. Br. 12, 14.
In discussing the prior art, the current Specification states that an
elastic laminate material web can be used to produce elastic segments on
articles of clothing and hygiene articles (e.g., as an elastic closure strip for
baby diapers). Spec. ¶ [0004]-[0005]. The Specification further
acknowledges:
To prevent interlocking of film rolls, the application of
powder made of silicon dioxide, chalk, starch, or talcum as a
spacer material between the layers of a film roll is known.
These powder materials result in a clear reduction of the
adhesion forces when gluing takes place with a hot-melt glue,
and for this reason, an attempt is made to apply only just
enough powder as is necessary to prevent interlocking. In
addition, an attempt is also made to compensate the reduction in
the adhesion force with a large amount of hot-melt glue, which
Appeal 2011-012189
Application 11/152,425

5
is only possible within limits, and results in an increase in the
production costs. In addition, when the amount of powder
applied is minimized, influences such as the storage duration
and storage temperature of the film rolls and the possible effect
of external forces on the film roll must also be precisely
considered.
Spec. ¶ [0007] (emphasis added).
The process of the admitted prior art differs from the subject matter of
the claims on appeal in that a polyethylene or ethylene-vinyl acetate
copolymer powder having the specified melt temperature is not applied
directly on a surface of the carrier film prior to the rolling of the carrier film
in order to prevent the carrier film from sticking to itself. See claims 10-12,
which are the only independent claims on appeal.
Hisanaka teaches that a problem with absorbent articles such as a
diaper or a sanitary napkin is dermatitis, which is “produced by attachment
of feces, urine, menstrual bleeding, and the like to the skin, or stimulation of
the skin by chemicals such as a surfactant used for improving the surface
properties of the absorbent article, or contact-type dermatitis produced by a
physical stimulation of the skin due to friction.” ¶ [0002]. Hisanaka
addresses this problem by providing a barrier agent on the surface of the
absorbent article such that article “does not impart [a] sticky sensation to the
wearer.” ¶ [0010]. Suitable barrier agents are said to include, inter alia,
polyethylene powder. ¶¶ [0028]-[0033].
As conceded by the Examiner at page 16 of the Answer, Hisanaka’s
polyethylene powder addresses an entirely different problem (dermatitis
Appeal 2011-012189
Application 11/152,425

6
caused by contact between the absorbent article and skin) from that of the
admitted prior art (interlocking of the layers of the carrier film in rolled
form). While the Examiner has shown that polyethylene powder may be
suitable for eliminating a “sticky sensation to the wearer” resulting from
contact of an absorbent article with skin, no evidence has been offered to
indicate that the adhesive forces and surface chemistries involved in
Hisanaka’s absorbent product when worn by a consumer is in any way
similar to those involved in the process of the admitted prior art. Absent
such evidence, we find no factual basis upon which to conclude “there
[would have been] an apparent reason to combine the known elements in the
fashion claimed.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Accordingly, we cannot uphold any of the Examiner’s rejections.

SUMMARY
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 8-10, 12,
13, and 15 as unpatentable over the admitted prior art in view of Hisanaka
and Taal is reversed.
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 2 and 3
as unpatentable over the admitted prior art in view of Hisanaka, Taal, and
Abed is reversed.
Appeal 2011-012189
Application 11/152,425

7
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 11 and
14 as unpatentable over the admitted prior art in view of Hisanaka, Maglio,
and Taal is reversed.
REVERSED

tc