Ex Parte Zenker et al

Patent Trial and Appeal Board

Feb 25, 2013

10379210 (P.T.A.B. Feb. 25, 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.
10/379,210 03/03/2003 David L. Zenker 16,707 4651
23556 7590 02/26/2013
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
SU, SUSAN SHAN
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
02/26/2013 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 DAVID L. ZENKER, MICHAEL B. VENTURINO,
SHANNON K. MELIUS, DEBRA JEAN MCDOWALL,
ALAN F. SCHLEINZ, DAVID A. FELL,
JULIE A. PAVELETZKE, and MARK J. BEITZ
____________________

Appeal 2010-009528
Application 10/379,210
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
David L. Zenker et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1 and 3-33. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A disposable absorbent article defining a longitudinal
direction and a lateral direction perpendicular to said
longitudinal direction, said article comprising:
an operative, liquid impermeable backsheet;
an operative, liquid permeable top sheet connected to
said backsheet; and
a multi-layer absorbent body positioned between said
topsheet and said backsheet, said absorbent body further
comprising:
an airlaid, stabilized, first absorbent layer defining
a first absorbent surface having a first absorbent area, and
containing a quantity of absorbent fibers, a quantity of
superabsorbent material and a quantity of thermally
activated binder fiber; and
a second absorbent layer located adjacent said first
absorbent layer, said second absorbent layer defining a
second absorbent surface having a second absorbent area,
and containing a quantity of absorbent fibers and a
quantity of superabsorbent material, wherein said first
absorbent area is less than said second absorbent area.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Young
Jackson
Kielpikowski
US 5,188,624
US 5,350,370
US 5,669,896
Feb. 23, 1993
Sep. 27, 1994
Sep. 23, 1997
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Chmielewski US 6,632,209 B1 Oct. 14, 2003

Rejections
Appellants request our review of the following rejections:1
I. Claims 1, 4-6, 12, 13, and 15-17 under 35 U.S.C. § 102(b) as
anticipated by Young;
II. Claims 7-9 under 35 U.S.C. § 103(a) as unpatentable over Young;
III. Claims 18 and 19 under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as unpatentable over
Young;
IV. Claims 3 and 20-33 under 35 U.S.C. § 103(a) as unpatentable over
Young and Jackson;
V. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Young
and Chmielewski;
VI. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over Young,
Chmielewski, and Kielpikowski; and
VII. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Young.
OPINION
Rejection I
Appellants argue all of the claims together in contesting this rejection.
We select claim 1 as representative.
Appellants raise the following issues in contesting the rejection of
claim 1:
(1) Did the Examiner err in finding that Young’s fibers (preferably
wood pulp fibers), which are coated with heat fusible liquid binder

1 The Examiner identified the rejections of claims 7-9, 18, 19, 28, and 29 as
new grounds. Ans. 2-3.
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material, satisfy the “thermally activated binder fiber” recited in
claim 1?
(2) Does Young disclose that the insert pad 14 (first absorbent layer)
has an absorbent area less than the absorbent area of dispersion pad
16 (second absorbent layer), as called for in claim 1?
Discussion - Issue (1)
Appellants assert the Examiner’s interpretation is not permitted by
Appellants’ Specification. Reply Br. 5-6; see Spec., p. 22, last paragraph to
p. 25, first paragraph. This portion of the Specification describes
“[e]xamples of suitable polymeric binders,” “[s]ome commercial liquid
binders,” some “non-polymeric binders,” and then “[n]on-liquid binder
material,” such as “thermally activated binder material, such as thermally
activated binder fiber material.” Appellants’ Specification discloses that
“[b]inder fibers generally have two components and are therefore termed bi-
component fibers.” Spec., p. 24. Bi-component fibers of Appellants’
invention comprise a core and a sheath that acts as the bonding agent in the
stabilized absorbent structure to bond between the core and other
components in the absorbent matrix. Id.
Young’s insert pad 14 comprises superabsorbent particles, fibers
(preferably wood pulp fibers) coated with heat fusible liquid binder material,
and a relatively small amount of hydrophilic fibers, such as untreated (i.e.,
nonbinder coated) wood pulp fibers. Col. 5, ll. 40-49; col. 6, ll. 15-25, 49-
52. Young’s binder-coated fibers are described as “substantially
continuously” coated. Col. 6, l. 39. In fact, Young discloses that substantial
quantities of binder beyond the amounts needed to continuously coat the
fibers can be applied; thus, sufficient binder is present to securely hold the
superabsorbent particles in place. Col. 6, ll. 43-48. Young characterizes the
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fibers as having a substantially continuous “sheath” of the binder. Col. 14,
ll. 29-30. Preferably, Young’s superabsorbent particles are added to the
coated fibers while the binder material is still wet. Col. 6, ll. 25-28. During
drying the fibers stick to the superabsorbent particles. Col. 6, ll. 28-30.
Using Young’s approach, the superabsorbent particles will have portions
exposed for more effective liquid absorption, rather than being totally coated
with binder material. Col. 6, ll. 30-33. “Heat bonding may be accomplished
before or after the binder material is allowed to dry.” Col. 6, ll. 35-37.
The Examiner’s reading of the claimed “thermally activated binder
fiber” on Young’s binder-coated fibers is reasonable in light of Appellants’
Specification. We find nothing in the Specification’s description of
thermally activated binder material that is inconsistent with or otherwise
precludes the Examiner’s reading.
Discussion - Issue (2)
Appellants assert that “Young does not anticipate the arrangement of a
first absorbent layer containing thermally activated binder fiber and having a
first absorbent area and a second absorbent layer having a second absorbent
area where the first absorbent area is less than the first [sic: second]
absorbent area.” App. Br. 6.
The Examiner points to Young’s figure 2, for example, as disclosing
that the insert pad 14 (first absorbent layer) has an absorbent area less than
the absorbent area of dispersion pad 16 (second absorbent layer), as called
for in claim 1. Ans. 14. Further, Young discloses the insert pad has an area
sized to overlie approximately 10 to 80%, more particularly 20 to 60%, of
the area of the dispersion pad. Col. 9, l. 65 - col. 10, l. 1. Thus, we reject
Appellants’ suggestion that Young fails to disclose the relationship between
the first absorbent area and the second absorbent area recited in claim 1.
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Conclusion
Appellants’ arguments do not apprise us of error in the Examiner’s
rejection of claim 1. We sustain the rejection of claim 1 and of claims 4-6,
12, 13, and 15-17, which fall with claim 1.
Rejection II
Appellants group claims 7-9 together in contesting this rejection.
Thus, we select claim 8 as representative.
In contesting this rejection, Appellants raise the following additional
issues:
(3) Does Young teach away from a first absorbent layer containing
binder fiber?
(4) Does Young render obvious the relationship between the first
absorbent layer length and the absorbent body length called for in
claim 8 (i.e., the first absorbent layer length is from 30% to 70% of
the absorbent body length)?
Discussion – Issue (3)
Appellants argue that Young’s repeated disclosure that the fibers be at
least partially coated, and that a lack of a continuous coating on the fibers
would render difficult the adherence of significant amounts of
superabsorbent material to the binder, teaches away from a first absorbent
layer containing binder fiber. Reply Br. 7. According to Appellants,
because a binder fiber would not necessarily coat the fibers of the first
absorbent layer prior to activation, a person of ordinary skill in the art would
not be motivated to substitute binder fiber for the liquid binder material
disclosed in Young. See id.
Appellants’ teaching away argument does not address the Examiner’s
rejection, which was based on a finding that Young discloses binder fiber.
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The Examiner does not propose to modify Young’s coated fibers to form
them as other than coated, and does not propose substituting binder fiber for
the liquid binder coating material disclosed in Young.
Discussion – Issue (4)
Appellants argue that since Young does not disclose the relative sizes
of the first absorbent layer and second absorbent layer, the Examiner’s
routine optimization rationale is improper. Reply Br. 8.
This argument does not address the Examiner’s rejection of claim 8,
which does not rely on the theory of routine optimization. Rather, the
Examiner determined it would have been obvious to make the first absorbent
layer (insert pad 14) length 30-70% of the entire absorbent body length since
“Young discloses insert pad/first absorbent layer has a length approximately
one-half to three fourths of the length of dispersion pad/second absorbent
layer 16” and the “Young insert pad/first absorbent layer 14 and dispersion
pad/second absorbent layer 16 comprise the entire absorbent body that
absorbs body exudates.” Ans. 7-8. See Young, col. 10, ll. 1-4 (disclosing
the insert pad length being from ½ to ¾ the length of the underlying
dispersion pad). Appellants do not dispute the Examiner’s findings or
reasoning.
Conclusion
For the above reasons, Appellants’ arguments do not apprise us of
error in the Examiner’s rejection of claim 8. We thus sustain the rejection of
claim 8 and of claims 7 and 9, which fall with claim 8.
Rejection III
Appellants raise the following additional issue in contesting this
rejection:
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(5) Has the Examiner established a sound basis that Young’s insert
pad possesses the tensile strengths called for in claims 18 and 19 to
shift the burden to Appellants to show that this is not the case? See
Ans. 8-9; Reply Br. 8-9.
Discussion – Issue (5)
The Examiner acknowledges that Young does not expressly disclose
the tensile strengths called for in claims 18 and 19. Ans. 8. However, the
Examiner finds that “Young teaches substantially the same structure and
material as claimed (also as disclosed in the Specification of the
Application)” and consequently determines that the claimed dry and wet
tensile strengths are inherent material properties. Ans. 3. The Examiner
directs our attention to Young (col. 10, l. 34 – col. 12, l. 65) and to
Appellants’ Specification (p. 19, last para. – p. 25, second para.)2. Id. at 8.
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977). This is the case whether
the rejection is based on inherency under 35 U.S.C. § 102, prima facie
obviousness under 35 U.S.C. § 103, or both jointly or alternatively. See id.
at 1255.
As pointed out by the Examiner, both Appellants’ first absorbent layer
and Young’s insert pad 14 are made of an airlaid combination of absorbent
fibers, superabsorbent material, and thermally activated binder fiber. Ans. 8.

2 These paragraphs correspond to “PG Pub 2003/0225384, [0073-90]” cited
by the Examiner. Ans. 8.
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Moreover, Appellants’ Specification discloses that “[s]tabilized airlaid
absorbent structures generally offer superior performance characteristics
over traditional airformed absorbent structures” and that the use of binders
as a stabilizer assists the absorbent matrix of Appellants’ invention in
maintaining its integrity even under load or while saturated. Spec., p. 20,
third and fourth paras. Appellants’ Specification also discloses that their
first absorbent layer provides “improved wet and dry strength characteristics
as compared to conventional airformed absorbent bodies.” Additionally,
Appellants’ Specification cites numerous examples of binders that would be
suitable as a stabilizer. Spec., p. 22, last para. – p. 25, first para.
The descriptions of common absorbent fibers and superabsorbent
materials in an airlaid structure stabilized by binders in the portions of
Young and Appellants’ Specification alluded to by the Examiner support the
Examiner’s finding that Young’s insert pad 14 and Appellants’ first
absorbent layer are substantially the same, particularly in respects pertinent
to dry and wet tensile strengths. Thus, the Examiner’s findings provide a
sound basis to support the determination that the dry and wet tensile strength
properties claimed in claims 18 and 19 are inherent properties of Young’s
insert pad.
“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 applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d at 1255. Appellants have not come
forth with any evidence or technical reasoning to show that Young’s insert
pad 14 does not possess the claimed tensile strength properties.

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Conclusion
The Examiner established a sound basis that Young’s insert pad
possesses the tensile strengths called for in claims 18 and 19, thereby
shifting the burden to Appellants to show that this is not the case.
Appellants have not proffered any evidence or technical reasoning to satisfy
their burden. Thus, Appellants do not apprise us of error in the Examiner’s
rejection of claims 18 and 19. We sustain the rejection.
Rejection IV
Appellants argue claims 3 and 20-33 together as a group. We select
claim 3 as representative of the group to decide the appeal of this rejection.
Appellants raise the following additional issue in contesting the
rejection of claim 3:
(6) Does Young teach away from a first absorbent layer containing
binder fiber, let alone bi-component binder fiber? Reply Br. 9. In
other words, does Young teach away from the Examiner’s
proposed modification of Young to substitute the bi-component
binder fiber taught by Jackson for the thermally activated binder
fiber (i.e., the fibers coated with binder) of Young? Reply Br. 9-
10; Ans. 9, 15.
Discussion – Issue (6)
Appellants’ argument is essentially the same argument giving rise to
issue (3), discussed supra. Appellants additionally assert that the Examiner
incorrectly frames the issue by characterizing the substitution as a
replacement of binder fiber with bi-component binder fiber. Reply Br. 10.
According to Appellants, the proposed substitution is a replacement of liquid
binder material of Young with the bi-component binder fiber of Jackson. Id.
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Appellants’ argument misapprehends or mischaracterizes the
modification proposed by the Examiner. The Examiner proposes to
substitute the bi-component binder fibers taught by Jackson (col. 6, ll. 6-20)
for the coated fibers of Young. Ans. 9. The binder fibers of Jackson
provide mechanical and adhesive bonding when heated to bond their sheaths
to surrounding materials (col. 6, ll. 18-20). In other words, the sheath of
Jackson’s bi-component fiber serves the same function as the sheath/coating
of Young’s coated fiber. See Young, col. 6, ll. 25-48; col. 14, ll. 25-45.
Thus, we reject Appellants’ argument that Young teaches away from
substituting the bi-component binder fibers taught by Jackson for the coated
fibers of Young, as proposed by the Examiner.
Conclusion
Young does not teach away from the Examiner’s proposed
modification of Young to substitute the bi-component binder fiber taught by
Jackson for the thermally activated binder fiber (i.e., the fibers coated with
binder) of Young. Thus, Appellants’ arguments do not apprise us of error in
the Examiner’s rejection of claim 3 as unpatentable over Young and
Jackson. We sustain the rejection of claim 3 and of claims 20-33, which fall
with claim 3.
Rejections V-VII
In contesting these rejections, Appellants merely rely on their
arguments asserted against the rejection of claim 1. App. Br. 9-10; Reply
Br. 10-12. These arguments do not apprise us of error, for the reasons
discussed supra. We sustain the rejections of claims 10, 11, and 14.
DECISION
The Examiner’s decision rejecting claims 1 and 3-33 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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