Ex Parte Tanzer et al

Board of Patent Appeals and Interferences

Nov 15, 2010

11027555 (B.P.A.I. Nov. 15, 2010)

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.
11/027,555 12/30/2004 Richard W. Tanzer 18974 1397
23556 7590 11/15/2010
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
AHMED, HASAN SYED
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
11/15/2010 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 RICHARD W. TANZER, MICHAEL R. LOSTOCCO,
KELLY D. BRANHAM, and W. CLAYTON BUNYARD
__________

Appeal 2010-007584
Application 11/027,555
Technology Center 1600
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a wet
wipe. The Examiner rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

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 Claims
Claims 1, 7, 9-11, 13, and 26-292 are on appeal. Claim 1 is
representative. Claim 1 reads as follows:
1. A wet wipe, comprising:
fibrous material;
a binder composition for binding the fibrous
material into an integral web, the binder
composition comprising an ionic copolymer; and
a wetting composition comprising water, a
monovalent ion salt, and at least about 10 wt% of
an organic solvent;
wherein the binder composition is insoluble
in the wetting composition, and the binder
composition is dispersible in water containing up
to 200 ppm of one or more multivalent ions.

The issues
A. The Examiner rejected claims 1, 7, 9-11, 13, and 26-29 under 35
U.S.C. § 103(a) as obvious over Kakiuchi3 (Ans. 3-5).
B. The Examiner provisionally rejected claims 1, 7, 9-11, and 13 on the
ground of non-statutory obviousness-type double patenting over claims 1, 3,
4, and 6-20 of copending US application 11/413,446 (Ans. 5).
A. 35 U.S.C. § 103(a) over Kakiuchi
The Examiner finds that:
Kakiuchi teaches a water-disintegrable cleaning sheet (see
abstract) comprising:
• the fibrous material of instant claim 1 (see col. 2, line 34);

2 Claims 2-6, 8, 12, and 14-25 are also pending, but stand
withdrawn from consideration. (App. Br. 1.)
3 Kakiuchi et al., US 5,281,306, issued Jan. 25, 1994.
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• the binder of instant claim 1 (see col. 2, line 41);
• the water of instant claim 1 (see col. 5, line 6);
• the salt of instant claim 1 (see col. 3, line 38);
• the organic solvent of instant claim 1 (see col. 4, line 57);
• the binder of instant claim 1 (see col. 2, line 41);
• the ionic copolymer of instant claim 7 (see col. 2, lines 49-
65);
• the chloride salt of instant claim 9 (see col. 2, line 38); and
• the alcohol of instant claim 11 (see col. 4, line 59)

(Ans. 3).
The Examiner finds it obvious “to one of ordinary skill in the art at the
time the invention was made to determine suitable percentages through
routine or manipulative experimentation to obtain the best possible results,
as these are variable parameters attainable within the art” (id. at 4).
Appellants contend that “[s]odium and potassium salts may be used in
Kakiuchi as a water soluble binder, NOT as a wetting composition” (App.
Br. 3). Appellants contend that “Kakiuchi teaches away from using
monovalent ion salts in a wetting composition, as required by amended
independent claim 1” (id.).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Kakiuchi renders obvious a wet wipe
a wetting composition comprising a monovalent ion salt?
Findings of Fact
1. Kakiuchi teaches “a water-disintegratable cleaning sheet
containing a cleaning agent, which has strength enough for cleaning use
under a mechanical force while retaining satisfactory water
disintegratability” (Kakiuchi 2, ll. 9-13).
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2. Kakiuchi teaches a cleaning sheet composed of “fibrous
materials substantially dispersible in water . . . Water-soluble binders having
a carboxyl group which can be used . . . include . . . synthetic high
polymers . . . Examples of suitable synthetic high polymers include . . .
copolymers of two or more unsaturated carboxylic acids” (Kakiuchi, col. 2,
ll. 36-51).
3. Kakiuchi teaches that the “metallic ion which is incorporated
into the water-disintegratable cleaning sheet of the present invention . . . is at
least one member selected from the group consisting of ions of alkaline earth
metals such as magnesium, calcium, strontium and barium; manganese; zinc;
cobalt; and nickel” (Kakiuchi, col. 3, ll. 7-13).
4. Kakiuchi teaches that “[m]onovalent metallic ions other than
those described above satisfy water disintegratability but cannot afford
strength withstanding cleaning work. Divalent metallic ions other than those
described above, e.g., Cu 2 +, Fe 2 + or Sn 2 +, and trivalent metallic ions other
than those described above, e.g., Fe 3 + or Al 3 +, afford strength enough for
cleaning work but do not satisfy water disintegrability” (Kakiuchi, col. 3, ll.
19-25).
5. Kakiuchi teaches that when “the metal ion is incorporated into
the cleaning sheet of the present invention in the form (B) above, an alkali
metal salt of the binder which formed a salt between the carboxyl group and
an alkali metal such as sodium and potassium, is preferably used as a water-
soluble binder” (Kakiuchi, col. 3, ll. 46-51).
6. Kakiuchi teaches that
the water-disintegratable cleaning sheet can be produced by
incorporating an aqueous cleaning agent together with the
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essential metallic ion of the present invention. In such
production, the essential metallic ion is, for example,
incorporated into the water-disintegratable cleaning sheet by
dissolving at least one of water-soluble salt of the essential
metallic ion, namely the form (B) as mentioned above, into
an aqueous cleaning agent containing an organic solvent,
and impregnating or spraying the resulting aqueous cleaning
agent into the web containing calboxyl-containing water-
soluble binder, and then drying.

(Kakiuchi, col. 4, ll. 41-52.)
7. Kakiuchi teaches that the “water-disintegratable paper sheet
was sprayed with 3% (corresponding to 0.75 g/m2) of a sodium
carboxymethyl cellulose ‘CMC 2200’ (produced by Daisel Kagaku K.K.) in
the form of a 1% aqueous solution and dried to obtain a CMC-containing
sheet” (Kakiuchi, col. 6, ll. 21-25).
8. Kakiuchi teaches that the “CMC-containing sheet was
impregnated with 1.7 times the sheet weight of a 1% solution of calcium
chloride in an ethanol/water mixed solvent having a ratio of 50/50, 20/80,
10/90 or 0/100 to obtain a water-disintegratable cleaning sheet.” (Kakiuchi,
col. 6, ll. 26-30.)
9. Kakiuchi teaches, in Example 10, that “[w]ater-disintegratable
crepe paper having a basis weight of 25 g/m2 (crepe ratio: 15%) was
produced from a raw material comprising 100 parts of NBKP and 10 parts of
a water-soluble carboxymethyl cellulose sodium-calcium mixed salt
(Na:Ca=1/1 by mol; produced by Daisel K.K.) using a cylindrical net-
Yankee machine” (Kakiuchi, col. 11, ll. 11-18).
10. Kakiuchi teaches, in Example 10, that the “water-
disintegratable paper was impregnated with 1.7 times the paper weight of a
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cleaning agent comprising a surfactant (Softanol 90), ethanol and water
(1/15/84), and the impregnated paper was evaluated in the same manner as
in Example 1” (Kakiuchi, col. 11, ll. 19-24).
11. Kakiuchi teaches, in comparative Example 12, that the
crepe paper as described in Example 11 was coated with 3%
the paper weight of a water-soluble carboxymethyl cellulose
sodium-calcium mixed salt (Na:Ca=10/1 by mol; produced
by Daisel K.K.) and dried to obtain water-disintegratable
paper.
The water-disintegratable paper was impregnated with
2.0 times the paper weight of a cleaning agent comprising
surfactant, propylene glycol and water.

(Kakiuchi, col. 12, ll. 7-17.)
12. Table 10 of Kakiuchi is reproduced below:

“The impregnated paper was evaluated in the same manner as in Example 1,
and the results obtained are shown in Table 10” (Kakiuchi, col. 12, ll. 16-
17).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. Moreover, an “[e]xpress suggestion to substitute
one equivalent for another need not be present to render such substitution
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obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982). As noted by the
Court in KSR, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” 550 U.S. at 421.
Analysis
Kakiuchi teaches a wet wipe comprising a fibrous material and a
binder composition with an ionic copolymer (FF 1-2). Kakiuchi teaches that
“the water-disintegratable cleaning sheet can be produced by incorporating
an aqueous cleaning agent together with the essential metallic ion of the
present invention” (Kakiuchi, col. 4, ll. 41-45; FF 6). Kakiuchi teaches the
use of 10% or more organic solvent (FF 8).
Appellants contend that “[s]odium and potassium salts may be used in
Kakiuchi as a water soluble binder, NOT as a wetting composition” (App.
Br. 3).
We are not persuaded. As the Examiner notes, “claim 1 is a
composition claim, not a method claim . . . the claim lists a number of
ingredients that must be added to a fibrous material” (Ans. 8-9). We agree
with the Examiner’s point, which is that it is the final wet wipe composition
which is being claimed, not the process by which the final wet wipe
composition is formed. Consequently, when Kakiuchi exemplifies a final
wet wipe with a “sodium-calcium mixed salt” as in Example 12, this teaches
a composition with both a monovalent sodium salt and a divalent calcium
salt (FF 11).
The transitional term “comprising” is “inclusive or open- ended and
does not exclude additional, unrecited elements or method steps.” Georgia-
Pacific Corp. v. United States Gypsum Co., 195 F.3d 1322, 1327, (Fed. Cir.
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1999). Therefore, applying the broadest reasonable interpretation to
Appellants’ use of the term “comprising” in Claim 1 results in a claim which
can encompass multiple metallic ions including the sodium and calcium ions
disclosed in a single wet wipe of Kakiuchi (FF 11-12).
Appellants contend that “Kakiuchi teaches away from using
monovalent ion salts in a wetting composition, as required by amended
independent claim 1” (App. Br. 3).
We are not persuaded. Kakiuchi does teach that the use of solely
monovalent metals will result in a product with reduced strength (FF 4).
However, we note, as did the Examiner (see Ans. 7), that the claim has no
requirement for any particular strength of the wet wipe. “Limitations are not
to be read into the claims from the specification.” In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).
We also do not find the teaching away argument persuasive in this
context.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference,
or would be led in a direction divergent from the path that
was taken by the applicant. The degree of teaching away
will of course depend on the particular facts; in general, a
reference will teach away if it suggests that the line of
development flowing from the reference's disclosure is
unlikely to be productive of the result sought by the
applicant.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We do not disagree that
Kakiuchi teaches that monovalent metals alone may result in undesirable
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strength for cleaning work (FF 4). However, Kakiuchi is not limited to
teaching wet wipes with only a single metal, and Kakiuchi teaches a wet
wipe with a mixed salt composition in Example 12 which comprises both a
monovalent salt, sodium, and a divalent salt, calcium (FF 11-12). Kakiuchi
teaches that the wet wipe of Example 12 satisfies the dusting and fuzzing
requirements as demonstrated in Table 10 (FF 12). Thus, an ordinary
practitioner would have reasonably been motivated by Kakiuchi to use the
combination of the monovalent and divalent salts exemplified in Example 12
in a disintegratable wet wipe composition, which would satisfy the
requirement of Claim 1 for a wet wipe comprising a monovalent ion salt.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Kakiuchi renders obvious a wet wipe a wetting composition comprising a
monovalent ion salt.
A. Provisional non-statutory obviousness-type double patenting
Appellants do not traverse the merits of the double patenting
rejections (see App. Br. 3). As Appellants have waived any arguments
against the rejections, we summarily affirm the provisional obviousness-type
double patenting rejections.
SUMMARY
In summary, we affirm the rejection of claims 1, under 35 U.S.C. §
103(a) as obvious over Kakiuchi. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 7, 9-11, 13,
and 26-29 as these claims were not argued separately.
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We affirm the rejection of claims 1, 7, 9-11, and 13 on the ground of
non-statutory obviousness-type double patenting over claims 1, 3, 4, and 6-
20 of copending US application 11/413,446.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED

cdc
KIMBERLY-CLARK WORLDWIDE, INC.
TARA POHLKOTTE
2300 WINCHESTER RD.
NEENAH, WI 54956