10387752 (B.P.A.I. Sep. 28, 2010)

Ex Parte Trokhan et al

Board of Patent Appeals and InterferencesSep 28, 2010

10387752 (B.P.A.I. Sep. 28, 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. 10/387,752 03/13/2003 Paul Dennis Trokhan 8334C 7142 27752 7590 09/29/2010 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER CHOI, PETER Y ART UNIT PAPER NUMBER 1786 MAIL DATE DELIVERY MODE 09/29/2010 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 PAUL DENNIS TROKHAN and DAVID WILLIAM CABELL ____________ Appeal 2009-014634 Application 10/387,752 Technology Center 1700 ____________ Before ERIC B. GRIMES, MICHAEL P. COLAIANNI, and BEVERLY A. FRANKLIN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL1 Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 53 to 70. 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. Appeal 2009-014634 Application 10/387,752 2 STATEMENT OF THE CASE Claim 53 is representative of the subject matter on appeal and is set forth below: 53. A flexible structure comprising a plurality of starch filaments exhibiting an aspect ratio of a length of a major axis to an equivalent diameter of a cross-section to the major axis of a starch filament of great than 500/l, the structure comprising at least a first region and a second region, each of the first and second regions having at least one common intensive property, wherein the at least one common intensive property of the first region differs in value from the at least one common intensive property of the second region, wherein at least one starch filament extends from a first portion of the first region through the second region and into a second portion of the first region. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Van Phan 5,277,761 Jan. 11, 1994 Trokhan 6,420,100 B1 Jul. 16, 2002 Humatro EP 1 035 239 A2 Sep. 13, 2000 THE REJECTIONS 1. Claims 53-65, 69, and 70 are rejected under 35 U.S.C. 103(a) as being unpatentable over Humatro in view of Van Phan. 2. Claims 66-68 are rejected under 35 U.S.C. 103(a) as being obvious over Humatro in view Van Phan, as applied to claims 53-65, 69, and 70, and further in view of Trokhan. ANALYSIS We select claim 53 for consideration in this appeal based upon Appellants’ arguments and note that because Appellants present similar arguments for each of the above-listed rejections, our determination with Appeal 2009-014634 Application 10/387,752 3 respect to claim 53 determines the outcome for each rejection. 37 C.F.R. § 41.37(c)(1)(vii). We adopt the Examiner’s findings and response to Appellants’ argument pertinent to the issues raised by Appellants for each rejection. We, therefore, incorporate the Examiner’s position as set forth in the Answer. We add the following for emphasis only. Appellants’ arguments are essentially two-fold. Appellants argue that the teachings of Van Phan cannot properly be combined with Humatro. Br. 3-4. Appellants then argue that the aspect of their claimed invention pertaining to “wherein at least one starch filament extends from a first portion of the first region through the second region and into a second portion of the first region” is not suggested by the applied art. Br. 4. With respect to the first line of argument, we agree with the Examiner’s position that one skilled in the art would look to the teachings of Van Phan for ways to improve upon Humatro for the reasons provided by the Examiner on pages 7-10 of the Answer. “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.” KSR Int'l. Co. v. Teleflex Inc., 550 US 398, 417 (2007). With regard to the second line of argument, we incorporate the Examiner’s response made on pages 10-12 of the Answer as our own. We add that we agree with the Examiner’s interpretation of the claimed phrase of “wherein at least one starch filament extends from a first portion of the Appeal 2009-014634 Application 10/387,752 4 first region through the second region and into a second portion of the first region”. “[T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). DECISION Each rejection is affirmed. 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)(v). AFFIRMED cam THE PROCTER & GAMBLE CO. GLOBAL LEGAL DEPT. – IP SYCAMORE BLDG. – 4TH FLOOR 299 EAST SIXTH STREET CINCINNATI OH 45202