Ex Parte Zietlow et al

Patent Trial and Appeal Board

Jul 27, 2017

14047203 (P.T.A.B. Jul. 27, 2017)

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.
14/047,203 10/07/2013 Mark Alan Zietlow 64895640US02 2676
23556 7590 07/28/2017
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI54956
EXAMINER
POWERS, LAURA C
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
07/28/2017 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 KIMBERLY-CLARK WORLDWIDE, INC.
Appeal 2017-000528
Application 14/047,203
Technology Center 1700
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
N. WHITNEY WILSON, Administrative Patent Judges.
OPINION FOR THE BOARD BY HASTINGS, Administrative Patent
Judge.
OPINION DISSENTING IN PART BY WILSON, Administrative Patent
Judge.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1,3, and 5—20. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
Claims 1 and 17 are illustrative of the claimed subject matter
(emphasis added to highlight disputed limitations):
1 Mark Alan Zietlow, Thomas Garrett Neal, Jr., Christopher Jay Olszewski,
Christopher Lee Satori, and Gary Lee Shanklin are named as inventers.
Appeal 2017-000528
Application 14/047,203
1. An adhesively bonded multi-ply tissue laminate consisting
essentially of a first fibrous tissue ply and a second fibrous tissue
ply and an adhesive disposed between the first and second plies,
wherein the adhesive is discontinuous and disposed to provide at
least two discrete bonded areas that extend the length of the plies
and comprises from about 5 to about 15 percent of the total surface
area of the laminate, the tissue laminate having a GMT from about
500 to about 900 g/3” and a Stiffness Index less than about 20.
17. An adhesively bonded multi-ply tissue laminate
comprising a first unembossed tissue ply, a second unembossed
tissue ply and two discrete longitudinally orientated continuous
strips of adhesive disposed between the first and second plies,
wherein the tissue laminate has a ply attachment strength of at
least about 15 grams, a Stiffness Index of less than about 20 and a
geometric mean tensile of at least about 500 g/3”.
The § 103 rejections maintained on appeal all rely upon
Shannon ’7062 and Shannon ’6783 as evidence of obviousness under
35 U.S.C. § 103(a). (See Ans. 3—13 for full listing of the § 103 rejections on
appeal). The Examiner also maintained the rejection of claims 1 and 8 under
35 U.S.C. § 112 as failing to comply with the written description
requirement (Ans. 2).
Upon consideration of the evidence cited and each of Appellants’
contentions, we find that the preponderance of evidence supports the
Examiner’s conclusion that the subject matter of Appellants’ claims is
unpatentable over the applied prior art, and that claims 1 and 8 fail to
comply with the written description requirement of 35 U.S.C. § 112. We
2Shannon et al., US 2006/0269706 Al, published Nov. 30, 2006.
3 Shannon, US 2013/0071678 Al, published Mar. 21, 2013.
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Application 14/047,203
sustain the above rejections based on the findings of fact, conclusions of
law, and rebuttals to arguments expressed by the Examiner in the Answer.
We add the following for emphasis.
The §112 Rejection of Claims 1 and 8
The Examiner rejects claims 1 and 8 as failing to comply with the
written description requirement because the claim limitation “tissue laminate
consists essentially of’ the elements and properties recited in each of
independent claims 1 and 8 is not supported in the original disclosure (Final
Act. 3; Ans. 3).
Notably, Appellants have not presented any cogent arguments
sufficient to address the Examiner’s position that the Specification examples
relied upon by Appellants for written description support are more limited
than the claims in various aspects and do not describe within the meaning of
35 U.S.C. § 112 all of the claim limitations in the claims (Ans. 14—15; Br. 3
(merely concluding that each claimed element finds literal support in the
Specification); no responsive brief has been filed). For example, claims 1
and 8 do not contain a limitation to “cellulosic fibrous tissue” consistent
with the cited examples as pointed out by the Examiner. Ans. 15.
Consequently, Appellants’ claims have not been shown to be limited to a
preferred embodiment as Appellants imply (Br. 3—4). In addition, the non-
precedential decision of the Board cited by Appellants is distinguishable on
the basis that, in that case, it was apparent that the claims excluded liquid
crystal polymer from claims that explicitly recited the presence of a
thermoplastic elastomeric polymer material. Ex parte Wang, 2012 WL
762627 *11 (BPAI Mar. 8, 2012).
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Application 14/047,203
Furthermore, the Examiner has not erred by de facto stating that there
must be support in the Specification for any negative claim limitation such
as the exclusion of additional components that would materially affect the
basic and novel characteristic(s) of the invention (Ans. 15). The transitional
phrase “consisting essentially of’ limits the scope of a claim to the specified
materials or steps “and those that do not materially affect the basic and novel
characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551—
52, (CCPA 1976). Accordingly, claim 1 recites a negative limitation and the
dispositive issue is whether Appellants’ negative claim limitation has written
description support in the Specification.
“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.”
Santarus, Inc. v Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012); see
AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (“‘[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.’”
(Citation omitted)).
The question is not whether the Specification provides a reason to
have made the invention which is now claimed, but whether the invention,
with all its claimed limitations, is described in it. See Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). In the Specification,
Appellants explicitly state:
While the invention has been described in detail with
respect to the specific embodiments thereof, it will be
appreciated that those skilled in the art, upon attaining an
understanding of the foregoing, may readily conceive of
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Appeal 2017-000528
Application 14/047,203
alterations to, variations of, and equivalents to these
embodiments. Accordingly, the scope of the present disclosure
should be assessed as that of the appended claims [(the claims
as filed)] and any equivalents thereto.
(Spec. 13) (emphasis added). Appellants’ explicit statement of the
expansive nature of the invention should be taken at face value. To find
otherwise would improperly extend the scope of the invention beyond what
was actually described as in the Specification and claims as filed. The
Specification does not indicate what other materials do not affect the
examples, and the Specification also does not provide a reason to exclude
other materials from the exemplified multiply tissues. Appellants’ attempt
to now add particular negative limitations to the claims via the use of
“consisting essentially of’ is not supported by the application as filed.
Appellants have not adequately described what the basic and novel
characteristics of the invention are so as ascertain what elements and/or
properties may or may not constitute a material change.
Thus, Appellants have not shown that the Examiner erred in this
rejection.
The §103 Rejections
Appellants’ main argument with respect to the § 103 rejection of
claims 1 and 8 is that there is no reason to exclude the polymeric film of
Shannon ’706 (Br. 4). The Examiner aptly notes that
the burden is on the Appellants] to show: 1) what the novel
and basic characteristics of the claimed invention are, and 2)
how the presence of additional components would materially
change the characteristics of the Appellants invention (see
MPEP 2111.03, 2163(11)(1)). The Appellants] has [have] not
met either of these criteria, and instead, argued that the
hydrophobic layer is critical to the invention of Shannon et al.
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Application 14/047,203
and thus is not obvious to remove. The rejection does not
modify the reference to remove this layer.
(Ans. 16).
We agree with the Examiner that Appellants have not met their
burden in this case, and we sustain the rejections of claims 1 and 8 and all
claims not separately argued.
The rejection of independent claim 17 further includes Anderson4 to
exemplify that ply attachment strength is important in multi-ply tissue
products and may be greater than 30 grams (Ans. 9, 10). Appellants argue
that Anderson is directed to mechanical crimping of tissue products and thus
is not applicable to adhesive bonding of tissue plies (such as used in
Shannon ’706) (Br. 4, 5). However, Appellants have not shown error in the
Examiner’s determination that an ordinarily skilled artisan would have
readily inferred that Anderson’s teaching concerning ply attachment strength
would have been applicable to Shannon’s ’706 adhesively bonded plies so as
to arrive at an attachment strength over 15 grams as recited in claim 17 (e.g.,
Ans. 17). KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (It has
been established that “the [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”); see also In re Fritch, 972 F.2d
1260, 1264—65 (Fed. Cir. 1992) (a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom).
4 Anderson et al., US 2005/0224201 Al, published Oct. 13, 2005.
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Application 14/047,203
Accordingly, we affirm all of the Examiner’s § 103 rejections of the
claims on appeal.
CONCLUSION
The decision of the Examiner 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).
AFFIRMED
7
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIMBERLY-CLARK WORLDWIDE, INC.5
Appeal 2017-000528
Application 14/047,203
Technology Center 1700
OPINION DISSENTING-IN-PART BY WILSON, Administrative Patent
Judge.
I respectfully dissent from the decision by the majority of this panel to
affirm the rejection of claims 1 and 8 under 35U.S.C. § 112 as failing to
comply with the written description requirement.
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. See Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). “The
specification as originally filed must convey clearly to those skilled in the art
the information that the applicant has invented the specific subject matter
later claimed.” In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989) (quoting In
re Smith, 481 F.2d 910, 914 (CCPA 1973)).
5 Mark Alan Zietlow, Thomas Garrett Neal, Jr., Christopher Jay Olszewski,
Christopher Lee Satori, and Gary Lee Shanklin are named as inventers.
Appeal 2017-000528
Application 14/047,203
In this instance, the Specification describes an adhesively bonded
multi-ply tissue laminate which includes a first tissue ply, a second tissue
ply, and an adhesive disposed between the first and second plies (Spec. 2).
The Specification also describes 4 examples of adhesively bonded multi-ply
tissues consisting of two plies and adhesive (Spec. 12—13). In my judgment,
this description and these examples would convey to a person of skill in the
art that Applicants had possession of a multi-ply tissue which (1) comprises
the recited components, (2) consists of the recited components, and (3)
consists essentially of the recited components.
My colleagues rely on the following statement from the Specification
as supporting their position that the “consisting essentially of’ embodiment
is not adequately described within the meaning of § 112, |1:
While the invention has been described in detail with respect to
the specific embodiments thereof, it will be appreciated that
those skilled in the art, upon attaining an understanding of the
foregoing, may readily conceive of alterations to, variations of,
and equivalents to these embodiments. Accordingly, the scope
of the present disclosure should be assessed as that of the
appended claims [(the claims as filed)] and any equivalents
thereto.
Spec. 13. This passage, in my view, supports Appellants’ position, as it
states a person of skill may “readily conceive of. . . variations of’ the
embodiments set forth in the examples, such as those which might be
covered by the “consisting essentially of’ transitional phrase.
Accordingly, I respectfully dissent from decision to affirm the
rejection of claims 1 and 8 under § 112, |1, although I concur in the
affirmance of the rejections under § 103(a).
2