KIMBERLY-CLARK WORLDWIDE, INC.

Patent Trials and Appeals Board

Jun 10, 2020

15025445 - (D) (P.T.A.B. Jun. 10, 2020)

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.
15/025,445 03/28/2016 Peiguang Zhou 64902629US10 5577
23556 7590 06/10/2020
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
Neenah, WI 54956
EXAMINER
YOUNG, MICAH PAUL
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
06/10/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Kimberlyclark.docketing@kcc.com
Tisha.Sutherland@kcc.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PEIGUANG ZHOU, DAVID GERARD IWANSKI,
GARY ALAN TURCHAN, and ANDREW MARK LONG
____________

Appeal 2019-006087
Application 15/025,445
Technology Center 1600
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ELIZABETH A. LAVIER, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–15 (Br. 2).2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Kimberly-
Clark Worldwide, Inc.” (Appellant’s October 8, 2018 Appeal Brief (Br.) 1).
2 Appellant’s pending claims 16–20 stand withdrawn from consideration
(Br. 2).
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STATEMENT OF THE CASE
Appellant’s disclosure relates “to an extruded, water-soluble,
thermoplastic article into which an active agent has been incorporated, and a
method for manufacturing the same” (Spec. 1). Appellant’s claims 1, 9, 10,
and 14 are reproduced below:
1. An extruded water-soluble article comprising:
a water-soluble, polymer having an extrusion temperature of 90
to 150°C, the polymer having a molecular weight between
about 10,000 to about 50,000; a plasticizer; and
one or more thermal active agents in a total amount of 0.1 % to
50% by weight of the article,
wherein the one or more thermal active agents are completely
dissolvable/dispersible in the plasticizer;
wherein the combination of the one or more thermal active
agents and the plasticizer is a homogeneous mixture/solution;
wherein a homogeneous blend, comprising the polymer and the
homogeneous mixture/solution, has an extrusion temperature of
50 to 125°C; and
wherein the one or more thermal agents are configured to be
released when the extruded water-soluble article is wetted to
provide either an actual or perceived thermal effect on a user’s
skin.
(Br. 8.)
9. The extruded water-soluble article of claim 1, wherein the
article is a mono-layer or multilayer film.
(Id. at 9.)
10. The extruded water-soluble article of claim 9, wherein the
film has a water dissolution speed from 5 seconds to 30 minutes
as determined by the Dissolution Test of the present disclosure.
(Id.)
14. The extruded water-soluble article of claim 1, wherein the
one or more thermal active agents are configured to either
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stimulate human sensory receptors or change the temperature of
the skin upon contact therewith.
(Id.)

Grounds of rejection before this Panel for review:
Claims 1–15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Bond,3 Mentink,4 and Oji.5
Claims 1–15 stand provisionally rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1–11 and 15 of copending Application 15/032,235.

Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Bond “relates to films formed from compositions comprising
intimate admixtures of thermoplastic starch, thermoplastic polymers and
oils, waxes, or combinations thereof” and “to articles made of these films”
(Bond ¶ 2; see generally Ans.6 5–6).
FF 2. Bond discloses that “[t]he term ‘thermoplastic starch’ refers to
destructured starch with a plasticizer” (Bond ¶ 25; see also id. ¶ 32 (Bond
discloses that a “plasticizer can be used . . . to destructurize the starch and

3 Bond et al., US 2012/0321871 A1, published Dec. 20, 2012.
4 Mentink et al., US 2011/0086949 A1, published Apr. 14, 2011.
5 Oji et al., GB 2 302 651 A, published Jan. 29, 1997.
6 Examiner’s February 8, 2019 Answer.
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enable the starch to flow, i.e. create a thermoplastic starch” and to “improve
the flexibility of the final products”); see generally Ans. 8).
FF 3. Bond discloses that plasticizer within the scope of its invention
includes glycerin (Bond ¶ 35; see Ans. 5; cf. Spec. 5 (Appellant disclose that
glycerin is a plasticizer within the scope of its invention)).
FF 4. Bond discloses the use of starch or starch blends having an average
molecular weight “from about 3,000 g/mol to about 20,000,000 g/mol”
(Bond ¶ 29; see Ans. 5 and 8).
FF 5. Bond discloses that “[t]hermoplastic polymers . . . are polymers that
melt and then, upon cooling, crystallize or harden, but can be re-melted upon
further heating,” wherein “[s]uitable thermoplastic polymers used . . . [in
Bond’s disclosure] have a melting temperature . . . from about 60º C. to
about 300º C.” (Bond ¶ 37; see Ans. 5).
FF 6. Bond discloses that “thermoplastic polymers [within the scope of its
disclosure] include polypropylene, polyethylene, polyamides, polyvinyl
alcohol, ethylene acrylic acid, polyolefin carboxylic acid copolymers,
polyesters, and combinations thereof” (Bond ¶ 40; see also id. ¶ 39; see Ans.
5; cf. Spec. 15 (Appellant discloses, and claims, polymers within the scope
of its invention “selected from the group consisting of polyvinyl alcohol
(PVOH), polyethylene oxide (PEO), polyethylene glycol (PEG), polyacylate
(acid), polyacylamide, polyester, thermoplastic starch, polyolefin
copolymer; and a combination thereof.)).
FF 7. Bond discloses that its compositions may “include an additive[, such
as a filler,] . . . dispersed throughout the composition, or . . . substantially in
the thermoplastic polymer portion of the thermoplastic layer, substantially in
the oil portion of the composition, or substantially in the . . . [thermoplastic
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starch (TPS)] portion of the composition” (Bond ¶ 56; see id. ¶ 57 (Bond
discloses “[n]on-limiting examples of classes of additives contemplated in
the compositions disclosed herein include perfumes, dyes, pigments,
nanoparticles, antistatic agents, fillers, and combinations thereof”); see
generally Ans. 5–6).
FF 8. Bond discloses that a filler within the scope of its disclosure includes
“alkali metal salts” (Bond ¶ 60; cf. Spec. 5 and 16 (Appellant discloses, and
claims, that thermal agents within the scope of its invention includes alkali-
metal compounds, menthol, and combinations thereof); see Ans. 6).
FF 9. Bond discloses that the additive, i.e. filler, is present “in a weight
percent of about 0.05 wt% to about 20 wt%” (Bond ¶ 57; see Ans. 6).
FF 10. Bond discloses that its composition:
can be formed into a film and can comprise one of many
different configurations, depending on the film properties
desired. The properties of the film can be manipulated by
varying, for example, the thickness, or in the case of
multilayered films, the number of layers, the chemistry of the
layers, i.e., hydrophobic or hydrophilic, and the types of
polymers used to form the polymeric layers.
(Bond ¶ 65; see also id. ¶ 66 (Bond’s “films . . . can be multi-layer films”);
see generally id. ¶¶ 67–71; see Ans. 5–6.)
FF 11. Bond discloses that “[t]he oil, wax, or combination thereof can be
dispersed within the thermoplastic starch and thermoplastic polymer such
that the oil, wax, or combination has a droplet size of less than 10 μm”
(Bond ¶ 11; see Ans. 8).
FF 12. Bond discloses that its
[f]ilms . . . are made from compositions of an intimate
admixture of a thermoplastic starch, thermoplastic polymer, and
an oil, wax or combination thereof. The term “intimate
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admixture” refers to the physical relationship of the oil or wax,
the thermoplastic starch, and thermoplastic polymer, wherein
the oil or wax is dispersed within the thermoplastic polymer
and/or thermoplastic starch. The droplet size of the oil or wax
within in the thermoplastic polymer is a parameter that
indicates the level of dispersion of the oil or wax within the
thermoplastic polymer and/or thermoplastic starch. The smaller
the droplet size, the higher the dispersion of the oil or wax
within the thermoplastic polymer and/or thermoplastic starch,
the larger the droplet size the lower the dispersion of the oil or
wax within the thermoplastic polymer and/or thermoplastic
starch. The oil, wax, or both associate with the thermoplastic
polymer, but are mixed into both the TPS and thermoplastic
polymer during formation of the compositions as disclosed
herein. As used herein, the term “admixture” refers to the
intimate admixture of the present invention, and not an
“admixture” in the more general sense of a standard mixture of
materials.
(Bond ¶ 17; see generally Ans. 8–9.)
FF 13. Examiner finds that although Bond discloses vinyl polymers, it fails
to disclose “the specific vinyl of [Appellant’s dependent] . . . claims” and
relies on Mentink to make up for this deficiency in Bond (Ans. 6).
FF 14. Mentink discloses “thermoplastic and/or elastomeric compositions
and . . . a process for the preparation of these compositions” (Mentink ¶ 1).
FF 15. Examiner finds that Mentink discloses a thermoplastic formulation
comprising a homogenous blend of thermoplastic starch, plasticizers (such
as glycerin and polyethylene glycols) and additional water soluble polymers
(such as polyvinyl alcohol, amorphous vinyl alcohols, ethylene vinyl acetate,
and other vinyl alcohol polymers) (Ans. 6 (citing Mentink, Abstract;
Mentink ¶¶ 13, 18, 150, and 153)).
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FF 16. Examiner finds that Mentink discloses that “the thermoplastic starch
is present in at least 25% of the final composition, with at least 8%
plasticizer” (Ans. 6 (citing Mentink, claims)).
FF 17. Examiner finds that Mentink discloses that the components of the
formulation are mixed and extruded at “temperatures are from 90ºC-120ºC”
(Ans. 6 (citing Mentink ¶¶ 266–270)).
FF 18. Examiner finds that although the combination of Bond and Mentink
make obvious “an extruded water-soluble article comprising water-soluble
polymer and a thermal active agent, the combination [of Bond and Mentink]
is silent [as] to the configuration of . . . such compounds into formulations
that exhibit thermal effects on the user’s skin” and relies on Oji to make up
for this deficiency in the combination of Bond and Mentink (Ans. 7).
FF 19. Oji discloses a patch comprising “1-menthol and ethanol are
incorporated as a reagent for providing [a] . . . cooling effect [on a user’s
skin] . . . into a paste composition comprising a water-soluble high-
molecular-weight compound[, such as polyvinyl alcohol], a polyhydric
alcohol[, such as glycerol, polyethylene glycol, or a mixture thereof,] and
water” (see Oji 3–4; see generally Ans. 7).
ANALYSIS
Based on the combination of Bond, Mentink, and Oji, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious to incorporate Mentink’s vinyl polymers and Oji’s
menthol and ethanol into Bond’s formulation to obtain a film that provides
an actual or perceived thermal effect on a user’s skin (see Ans. 6–7; see FF
1–19). In reaching the forgoing conclusion, Examiner recognizes that
although Bond suggests the components of Appellant’s claimed article, i.e.
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film, Bond is silent as to the water dissolution speed of such a film (see Ans.
6). Examiner reasons, however, that because the water dissolution speed is a
direct feature, or property, of film’s composition and Bond discloses a film
comprising the same components as Appellant’s film, a person of ordinary
skill in this art would have expected Bond’s film to have the same water
dissolution speed as Appellant’s claimed invention (see Ans. 6; FF 1–13; see
also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“Products of identical
chemical composition can not have mutually exclusive properties.”)).

Claim 1:
Appellant contends that, notwithstanding Examiner’s assertion to the
contrary, “Bond does not teach an identical chemical structure to the film
Appellant specifies in independent claim 1, and the differences of Bond
prevent the structure of Bond from performing in the same manner as
specified by Appellant’s claim 1” (Br. 4). Specifically, Appellant contends
that “[a]lthough Bond teaches some of the same components as Appellant
specifies in independent claim 1, such as a thermoplastic polymer and
plasticizer,” “Bond is directed at films composed of a starch-polymer-wax-
oil composition” and, because of “the insoluble nature of the wax and oil” in
Bond’s formulation, it “is not water-soluble” and this “prevents the alkali
metal salt filler materials of Bond . . . from being configured to be released
when the film is wetter” (Br. 4–5). For these reasons, Appellant contends
that Bond’s “filler materials . . . cannot serve as a thermal active agent that is
‘configured to be released when the extruded water-soluble article is wetted
to provide either an actual or perceived thermal effect on a user’s skin’,” as
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required by Appellant’s claim 1 (Br. 5). Appellant further contends that
“Mentink and Oji do not cure these deficiencies of Bond” (Br. 5).
We are not persuaded.
As Examiner explains, “the oil and wax components [of Bond’s film]
are present as discreet particles” (Ans. 8 (citing Bond ¶ 11)). We agree.
Bond discloses that “[t]he oil, wax, or combination thereof can be dispersed
within the thermoplastic starch and thermoplastic polymer such that the oil,
wax, or combination has a droplet size of less than 10 μm,” wherein, as
Bond explains, “the larger the droplet size the lower the dispersion of the oil
or wax within the thermoplastic polymer and/or thermoplastic starch” (FF
11–12).
We also agree with Examiner’s reasoning that because Bond’s oil and
wax components are dispersed in a composition that falls within the scope of
Appellant’s claimed invention, “the film, when extruded, would be a water
soluble article with discreet water-insoluble components” and, although
portions of the film would not be soluble, “the film itself would dissolve,
leaving the insoluble portions such that those portions would no longer be
the article” (Ans. 8–9).

Claim 10:
Appellant contends “that Bond does not teach or suggest that the film
including an oil-wax composition can have a dissolution speed of the
claimed rate of Appellant’s dependent claim 10” (Br. 6). Stated differently,
Appellant contends that
As noted above in the discussion with respect to independent
claim 1 . . . the film of Bond will not be water soluble due to its
oil-wax composition. Certainly, by no means does Bond teach
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or suggest that the film can have a dissolution speed from 5
seconds to 30 minutes as Appellant specifies in dependent
claim 10, and the Office has not provided any rationale for how
such an oil/wax based composition could provide such a
dissolution speed.
(Br. 6.)
We are not persuaded by Appellant’s contentions for the same reasons
articulated by the Examiner (Ans. 8–9) and discussed above. In this regard,
we note that Appellant’s claimed invention does not exclude dispersed
droplets of oil and wax from its composition. Thus, we find no error in
Examiner’s conclusion that Bond discloses an article that falls within the
scope of Appellant’s claimed invention (see Ans. 8 (Examiner finds that
Bond’s “thermoplastic starch, polymer and plasticizer [are] all identical to
those of the instant claims”); see FF 1–13). “[W]hen the PTO shows sound
basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not.” In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Appellant failed to establish an
evidentiary basis on this record to support a conclusion that Appellant’s
article is distinct from the film disclosed by Bond.

Claim 14:
For the reasons set forth above, with respect to Appellant’s claim 1,
we are not persuaded by Appellant’s contention that “Bond does not teach
any thermal active agents that are configured to be released when the film is
wetted because the film Bond teaches is not water-soluble” and, thus, fails to
disclose the subject matter of Appellant’s claim 14, reproduced above (see
Br. 6–7).

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CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claims 1, 10, and 14 under
35 U.S.C. § 103(a) as unpatentable over the combination of Bond, Mentink,
and Oji is affirmed. Claims 2–9, 11–13, and 15 are not separately argued
and fall with claim 1.

Obviousness-type Double Patenting:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness-type double patenting?
ANALYSIS
Appellant’s claim 1, reproduced above, is representative.
Appellant does not contest the provisional rejection of claim 1 under
the judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1–11 and 15 of copending Application No.
15/032,235. Appellant also did not file a terminal disclaimer to moot this
obviousness-type double patenting rejection. Instead, Appellant contends
that because allowable subject matter has not be identified in this or the
copending Applications, “any action by Appellant with regard to the present
rejection is premature” (Br. 3).
“If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it.” Manual of Patent
Examining Procedure § 1205.02 (9th Ed., Rev. 08.2017 (Jan. 2018)).
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Accordingly, the provisional obviousness-type double patenting
rejection is summarily affirmed.
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness-type double patenting. The provisional rejection
of claim 1 under the judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1–11 and 15 of copending
Application 15/032,235 is affirmed. Claims 2–15 are not separately argued
and fall with claim 1.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–15 103 Bond, Mentink, Oji 1–15
1–15 Nonstatutory
Double Patenting,
copending
15/032,235
1–15
Overall
Outcome
1–15

TIME PERIOD FOR RESPONSE
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