2021002711 (P.T.A.B. Aug. 3, 2021)

SCA Hygiene Products AB

Patent Trials and Appeals BoardAug 3, 2021

2021002711 (P.T.A.B. Aug. 3, 2021)

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. 15/541,253 06/30/2017 Elisabeth LAKSO 1018798-000890 1043 105718 7590 08/03/2021 ESSITY HYGIENE AND HEALTH AKTIEBOLAG c/o Buchanan Ingersoll & Rooney, PC 1737 King Street, Suite 500 Alexandria, VA 22314 EXAMINER KIDWELL, MICHELE M ART UNIT PAPER NUMBER 3781 NOTIFICATION DATE DELIVERY MODE 08/03/2021 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ELISABETH LASKO, CARINA HEDLUND, PETTER ANDREASSEN, and MORGAN SWEDBERG ____________ Appeal 2021-002711 Application 15/541,253 Technology Center 3700 ____________ Before JOHN C. KERINS, JILL D. HILL, and CYNTHIA L. MURPHY, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–5, 7–15, 18–25, 27, 29, and 30. We 1 The term “Appellant” is used herein to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies ESSITY HYGIENE AND HEALTH AKTIEBOLAG as the real party in interest. Appeal Br. 2. Appeal 2021-002711 Application 15/541,253 2 have jurisdiction under 35 U.S.C. § 6(b). A video hearing was conducted on July 15, 2021, with Travis D. Boone, Esq., appearing on behalf of Appellant. We REVERSE and ENTER NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b). THE CLAIMED SUBJECT MATTER Appellant’s invention is directed to an absorbent article. Independent claims 1 and 30 are illustrative: 1. An absorbent article having a wearer-facing side and a garment-facing side, the absorbent article extending a longitudinal direction and a transverse direction and having a front end portion, a rear end portion and a crotch portion located intermediate the end portions, wherein the absorbent article comprises a topsheet arranged on the wearer-facing side, a backsheet arranged on the garment-facing side, an absorbent core enclosed between the topsheet and the backsheet, and a pair of standing gathers, which are arranged on the wearer-facing- side and extend substantially in the longitudinal direction, the topsheet comprising a sheet material comprising a nonwoven material comprising polypropylene-containing fibers and each of the standing gathers comprising a sheet material comprising a nonwoven material comprising polypropylene-containing fibers, wherein the topsheet sheet material has a stiffness from 2.3 to 20 mm/N and each standing gather sheet material has a stiffness from 2.0 to 20 mm/N, wherein stiffness is measured according to a softness test method, wherein the softness test method is TSA method - Tissue Softness Analyzer method, wherein the topsheet sheet material has a softness of 4.5 dB V^2 rms or less and the standing gather sheet material has a softness of 5.0 dB V^2 rms or less, wherein softness is measured on a surface of each sheet material and according to the softness test method, Appeal 2021-002711 Application 15/541,253 3 wherein the topsheet sheet material has a smoothness of 4 dB V^2 rms or less and the standing gather sheet material has a smoothness of 7.0 dB V^2 rms or less, wherein smoothness is measured on the surface of each sheet material and according to the softness test method, wherein the polypropylene-containing fibers of the topsheet sheet material and the polypropylene-containing fibers of each of the standing gathers sheet material contain a slip agent, and wherein the nonwoven material of the topsheet sheet material and the nonwoven material of each of the standing gather sheet material comprises a side surface, wherein the polypropylene- containing fibres of each of the nonwoven materials are bound together by an alternating bonding pattern of individualized bonded areas which are in the form of rods which are arranged in the cross direction of the web, the alternating pattern of the individualized bonded areas defining a non-bonded area, the surface of the bonded surface area being from 5 to 30 % of the total surface area of the side surface, and the surface of the non- bonded area being from 70 to 95% of the total surface area of the side surface of each of the nonwoven materials. 30. An absorbent article having a wearer-facing side and a garment-facing side, the absorbent article extending a longitudinal direction and a transverse direction and having a front end portion, a rear end portion and a crotch portion located intermediate the end portions, wherein the absorbent article comprises a topsheet arranged on the wearer-facing side, a backsheet arranged on the garment-facing side, an absorbent core enclosed between the topsheet and the backsheet, and a pair of standing gathers, which are arranged on the wearer-facing- side and extend substantially in the longitudinal direction, wherein the topsheet comprises a sheet material having a stiffness from 2.3 to 20 mm/N and each standing gather comprises a sheet material having a stiffness from 2.0 to 20 mm/N, wherein stiffness is measured according to a softness test method, wherein the softness test method is TSA method - Tissue Appeal 2021-002711 Application 15/541,253 4 Softness Analyzer method, wherein the topsheet sheet material has a softness of 4.5 dB V^2 rms or less and the standing gather sheet material has a softness of 5.0 dB V^2 rms or less, wherein softness is measured on a surface of each sheet material and according to the softness test method, wherein the topsheet sheet material has a smoothness of 4 dB V^2 rms or less and the standing gather sheet material has a smoothness of 7.0 dB V^2 rms or less, wherein smoothness is measured on the surface of each sheet material and according to the softness test method, and wherein the topsheet sheet material and the standing gather sheet material are different materials, wherein the difference between the smoothness of the topsheet sheet material and the smoothness of the standing gather sheet material is 3.0 dB V^2 rms or less, wherein the standing gather sheet material is a stiffer material than the topsheet sheet material, by the standing gather sheet material having a lower stiffness value, wherein stiffness is measured according to a softness test method, wherein the softness test method is TSA method - Tissue Softness Analyzer method, wherein the standing gather sheet material is softer material than the topsheet sheet material, by the standing gather sheet material having a lower softness value, wherein softness as measured according to a softness test method, wherein the softness test is TSA method - Tissue Softness Analyzer method. THE REJECTION The Examiner has rejected claims 1–5, 7–15, 18–25, 27, 29, and 30 under 35 U.S.C. § 103(a) as being unpatentable over Xu (US 2014/0088535 Appeal 2021-002711 Application 15/541,253 5 A1, published Mar. 27, 2014) in view of St. Louis (US 5,993,433, issued Nov. 30, 1999). ANALYSIS Claims 1–5, 7–15, 18–25, 27, 29, 30--35 U.S.C. § 103--Xu/St. Louis In rejecting all claims, the Examiner acknowledges that Xu does not explicitly disclose the claimed stiffness, softness, and smoothness for the claimed topsheet and standing gather materials. Final Act. 5. The Examiner does not rely on St. Louis as providing such disclosure, but instead for its disclosure of fibres/layers being bound together by an alternating bonding pattern and a total bonded surface area as recited in the claims. Id. at 7. The Examiner’s position vis-à-vis the claimed values for stiffness, softness, and smoothness is that those characteristics “are subjective, relative concepts which are difficult to characterize in an objective way and have no standard, universally accepted units or methods of measure,” citing to paragraph 8 of Xu in support. Final Act. 6. The Examiner additionally observes that the values for softness and smoothness, and differences between them, may be “zero” within the scope of the claims, “and therefore may not necessarily be required to be present and/or may be considered to be composed of the same material.” Id. at 5. The Examiner further maintains that “Xu teaches an absorbent article including a soft, nonwoven layer that utilizes the same type of materials . . . produced by the same methods . . . in combination with a slip agent . . . with the intent of providing a topsheet and/or standing gather with a perceptible softness.” Id. at 5–6, citing Xu ¶¶ 2, 4, 84, 94, 122. Ultimately, the Examiner concludes that it would have been obvious to modify the blend of fibers and/or the type and amount of Appeal 2021-002711 Application 15/541,253 6 slip agent used in the desired areas of the article “in order to produce the desired result as taught by Xu.” Id. at 6, citing Xu ¶¶ 94, 111, 122. Although we appreciate that the goals and solutions presented in Xu appear to align with certain of Appellant’s desired material characteristics, we find that we are unable to sustain the rejection of the claims as being unpatentable over Xu on the record before us. As argued by Appellant, the claims recite a particular method that is to be used to measure stiffness, softness, and smoothness that is not subjective, but is instead objective. Further, the Examiner’s position as to Xu disclosing soft, nonwoven layers made of the same types of materials and produced by the same methods might, with a more fully developed record, be seen as shifting the burden to Appellant to show that materials produced in accordance with the teachings of Wu have stiffness, softness, and smoothness values falling outside the claimed ranges,2 the Examiner instead concludes that it would have been obvious to modify the blend of fibers and/or the type and amount of slip agent to obtain values within the claimed ranges. As such, we do not view the Examiner’s position as putting Appellant on sufficient notice that the Examiner regards the burden to have shifted to Appellant in this manner. The rejection of claims 1–5, 7–15, 18–25, 27, 29, and 30, as being unpatentable over Xu and St. Louis, is not sustained. 2 See, e.g., In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where 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); accord In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Appeal 2021-002711 Application 15/541,253 7 NEW GROUNDS OF REJECTION--§ 41.50(B) Claims 29 and 30--35 U.S.C. § 112(a)--Written Description Claims 29 and 30 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description rejection. This is a New Ground of Rejection pursuant to 37 C.F.R. § 41.50(b). Independent claim 30 includes the limitations: wherein the standing gather sheet material is a stiffer material than the topsheet sheet material, by the standing gather sheet material having a lower stiffness value, wherein stiffness is measured according to a softness test method, wherein the softness test method is TSA method - Tissue Softness Analyzer method, wherein the standing gather sheet material is softer material than the topsheet sheet material, by the standing gather sheet material having a lower softness value, wherein softness as measured according to a softness test method, wherein the softness test is TSA method - Tissue Softness Analyzer method. Appeal Br. 30–31 (Claims Appendix). Claim 29, which depends from independent claim 1, includes identical language. Id. at 28–29. Appellant’s application, as originally filed, does not evidence that, at the time of the filing, Appellant was in possession of an invention that requires the claimed standing gather sheet material to be both stiffer and softer than the claimed topsheet material, or that a lower stiffness value resulting from the TSA test method connotes a stiffer material, as claimed. The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required “to ‘recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.’” Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d Appeal 2021-002711 Application 15/541,253 8 1313, 1330 (Fed. Cir. 2003) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). An applicant shows possession of a claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). That a person skilled in the art might realize from reading the disclosure that such a feature is possible is not a sufficient indication that the feature is a part of the invention. Application of Barker, 559 F.2d 588 (CCPA 1977). An applicant need not “describe exactly the subject matter claimed,” but “the description must clearly allow persons of ordinary skill in the art to recognize that [the applicant] invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989) (citations omitted); see also Barker, 559 F.2d at 589, 591. Appellant’s Specification including the claims, as originally filed, includes no discussion of any desirability to provide an absorbent article having a standing gather sheet made of a material that is both stiffer and softer than the material used in the article as a topsheet. This, despite Appellant’s spirited arguments, which echo averments in a “37 CFR § 1.132 Expert Declaration of Morgan Swedburg,” (hereafter “Swedberg Declaration), that making the standing gather sheet material both stiffer and softer (1) involves consideration of competing qualities; (2) is the opposite of expectations of persons of ordinary skill in the art; (3) “surprisingly achieve[s] the same (or nearly the same) ‘feel’ for both these different Appeal 2021-002711 Application 15/541,253 9 materials from a user’s perspective;” and (4) gives rise to “a critical and surprising result.” Swedberg Declaration ¶¶ 19, 22, 23; Appeal Br. 13–15. Instead, Appellant’s application as originally filed, although discussing a desire to provide standing gather and topsheet materials having properties such that a soft, cloth-like transition area between the two materials is realized, simply asserts that this is accomplished as a result of using materials of the type set forth in claim 30, whose stiffness, softness, and smoothness fall within the scope of the ranges recited in claim 30. The Specification alludes further to having sums and differences of stiffness and softness falling within particular ranges, and possibly purposely acting on compositional and/or process parameters, which go largely unexplained in the disclosure, as possibly impacting the feel of the transition area. The various sums and differences discussed in the Specification do not, however, dictate or suggest, as now claimed, that the standing gather material be both stiffer and softer than the topsheet material. Further, the claimed range of values for the stiffness of the topsheet material is from 2.3 to 20 mm/N, and the claimed range for the standing gather material is from 2.0 to 20 mm/N. Appeal Br. 29. The substantial overlap in this range provides no indication that Appellant believed its invention involved the standing gather material being stiffer than the topsheet material. Taking into account the non-overlapping portion of that range, in which the stiffness of the standing gather may be at a lower value between 2.0 and 2.3 mm/N, the Specification evidences that Appellant, if anything, might have had Appeal 2021-002711 Application 15/541,253 10 possession of using a standing gather material that is less stiff than the topsheet material, and not vice versa, as claimed.3 The disclosed and claimed ranges for the softness of the standing gather material and the topsheet material are also not disclosed in any manner evidencing that Appellant had possession of a construction in which the standing gather material is softer than the topsheet material. Again, the claimed ranges have more-than-considerable overlap, with no explanation provided whatsoever as to why there is any difference in the ranges.4 As with the ranges of stiffnesses discussed above, the non-overlapping portions of the ranges, if evidence of anything, indicate that a topsheet material may be softer than a standing gather material, and not the opposite, which is what is claimed. To that end, claim 30 permits the topsheet material to have a 3 Appellant appears to now correctly understand, as can be seen in the language of claim 30, that a lower stiffness value represents a stiffer material, but at the time the application was filed, that was not the case. The Specification reports, in connection with Table 3, that the soft material in accordance with the invention, having measured stiffness values of 2.19 and 2.23 mm/N, has a “higher stiffness” than does the reference material, whose measured values were both 1.84 mm/N. Spec., p. 22, ll. 15–24. This evidences that, at the time the application was filed, Appellant incorrectly understood that a lower stiffness value represented a lower stiffness material. 4 The selection of the upper limits of the ranges for softness appear, to us, to have been determined by selection of a value, based on the measured values appearing in Table 2, which excludes the values of the reference material, yet includes the values of the soft material purporting to be a soft material in accordance with the invention. The same appears to be generally true for the numerical limits appearing in claim 30 for stiffness and smoothness. Appeal 2021-002711 Application 15/541,253 11 softness as low as 4.5 dB V^2 rms, whereas the standing gather material may be no softer than 5.0 dB V^2 rms. The test results of specific materials presumed to be in accordance with the present invention also fail to evidence that Appellant was in possession of an absorbent article whose standing gather material is both stiffer and softer than the topsheet material. As for stiffness, and considering Appellant’s understanding of measured values at the time of the application filing, just as Appellant assesses that the topsheet values of 2.44, 2.47, 2.732, and 2.72, for the two soft materials evidenced that those materials had higher stiffness than did the reference material at 1.84, so, too, would have Appellant understood that the standing gather values of 2.19 and 2.23 would have represented a less stiff material, rather than a stiffer material, as claimed. Spec., p. 21, l. 16–p. 21, ll. 24. The measured values for softness of the topsheet material and the standing gather material also do not clearly evidence possession of an absorbent article whose standing gather material is softer than the topsheet material. The reported values measured for softness of the standing gather material (4.84/3.01 dB V^2 rms) average to 3.92 dB V^2 rms.5 The reported measured values for topsheet “Soft material #1” (5.11/2.91 dB V^2 rms) average to 4.01 dB V^2 rms, and, for topsheet “Soft material #2 (3.07/4.42) average to 3.75 dB V^2 rms. Thus, one exemplary topsheet material has an average softness value indicating that it is less soft than the standing gather 5 Appellant’s Specification does not explicitly state that the measured values are to be averaged, but if they are not, then, for example, the topsheet “Soft material #1” would be both softer and less soft than the topsheet “Reference material,” depending upon the measurement locations. See Spec., p. 21, Table 2. Appeal 2021-002711 Application 15/541,253 12 material, but the other exemplary topsheet material has an average softness value indicating that it is softer than the standing gather material. As such, there is no clear indication that Appellant’s were in possession of the notion that the standing gather material is to be softer than the topsheet material. For the above reasons, we determine that the application as originally filed fails to evidence that Appellant was in possession of the entire subject matter of claim 30, in particular, the limitations requiring that the claimed standing gather sheet material be both stiffer and softer than the claimed topsheet material. We additionally determine that the Specification does not evidence that Appellant was in possession, at the time of the filing of the original application, of the limitation in claim 30 that a lower stiffness value resulting from the TSA test method connotes a stiffer material. Claim 29, which depends from claim 1 and includes these same limitations, also lacks written descriptive support in the application as originally filed, for the same reasons. DECISION The rejection of claims 1–5, 7–15, 18–25, 27, 29, and 30 under 35 U.S.C. § 103(a) is REVERSED. Claims 29 and 30 are rejected under 35 U.S.C. § 112(a), as failing to meet the written description requirement thereof. This rejection is a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant Appeal 2021-002711 Application 15/541,253 13 to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. Appeal 2021-002711 Application 15/541,253 14 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed New Ground 1–5, 7– 15, 18– 25, 27, 29, 30 103(a) Xu, St. Louis 1–5, 7– 15, 18– 25, 27, 29, 30 29, 30 112(a) Written Description 29, 30 Overall Outcome 1–5, 7– 15, 18– 25, 27, 29, 30 29, 30 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED; 37 C.F.R. § 41.50(b)