Ex Parte Brennan et al

Patent Trial and Appeal BoardSep 17, 2012

11728930 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/728,930 03/27/2007 Jonathan Paul Brennan 10358M 4418 27752 7590 09/17/2012 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 09/17/2012 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 JONATHAN PAUL BRENNAN and HOLLY ANN BALASUBRAMANIAN ____________ Appeal 2011-003613 Application 11/728,930 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, BEVERLY A. FRANKLIN, and LINDA M. GAUDETTE, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-9 and 11-24. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: 1. A stack of pre-moistened wipes, said stack comprising a height from about 50 millimeters to about 300 millimeters and a saturation gradient index from about 1.0 to about 1.5, wherein said wipes comprise: (a) a composite of at least a first layer and third layer of fibrous nonwoven webs, said first layer and said third layer comprising synthetic fibers with an average fiber denier from about 2.5 to about 6.0, said composite further comprises a second layer comprising pulp, wherein said first layer is joined to a face of said second layer in a face to face Appeal 2011-003613 Application 11/728,930 2 relationship by bonding between the layers and said third layer is joined to a second face of said second layer in a face to face relationship by bonding between the layers, wherein said bonding comprises intertwining of the fibers between the layers; (b) a saturation loading from about 1.5 to about 6.0 grams of liquid composition per gram of wipe, wherein said liquid composition has a surface tension from about 20 to about 35 dynes per centimeter; (c) a dynamic absorption time from about 0.01 to about 0.4 seconds; and (d) a first side and a second side opposed thereto, wherein the wipes are interleaved with one another such that at least a portion of the first side of one wipe overlaps at least a portion of the second side and another wipe. The Examiner relies upon the following references as evidence of obviousness: Austin et al. (Austin) US 5,026,587 Jun. 25, 1991 Bouchette US 6,110,848 Aug. 29, 2000 Hill US 6,202,845 B1 Mar. 20, 2001 Trinh et al. (Trinh) CA 2 524 671 A1 Apr. 5, 2001 Lange et al. (Lange) US 2002/0127937 A1 Sep. 12, 2002 Wong et al. (Wong) US 2004/0121686 A1 Jun. 24, 2004 Dunbar et al. (Dunbar) US 2007/0049153 A1 Mar. 1, 2007 Appellants’ claimed invention is directed to a stack of pre-moistened wipes having a height of about 50 millimeters to about 300 millimeters. The stack comprises a composite of at least a first layer and a third layer of fibrous nonwoven webs with a second pulp layer between the webs. The fibers of the web have the recited denier, and the stack of webs has the recited saturation gradient index, saturation loading, dynamic absorption time, and surface tension for the liquid composition. Appeal 2011-003613 Application 11/728,930 3 The appealed claims stand rejected under 35 U.S.C. § 103(a) as follows: (a) claims 1-6, 22, and 23 over Bouchette in view of Trinh, Austin, and Hill, (b) claim 7 over the stated combination of references further in view of Dunbar, (c) claims 8, 9, 11-13, 18, 19, and 24 over Trinh in view of Austin and Wong, (d) claims 14-16, and 21 over Trinh in view of Austin, Wong, and Bouchette, (e) claim 17 over Trinh in view of Austin, Wong, and Lange, and (f) claim 20 over Trinh in view of Austin, Wong, and Dunbar. In addition, claims 8, 9, 11-21, and 24 stand rejected under 35 U.S.C. § 112, second paragraph. We have thoroughly reviewed the respective positions advanced by Appellants and the Examiner. In so doing, we find ourselves in agreement with the Appellants that the Examiner’s rejections are not well founded. We consider first the Examiner’s rejection under § 112, second paragraph. According to the Examiner, “[i]t is unclear exactly what structure necessarily defines the scope of ‘rib-like ridges and furrows’” (Ans. 4, penultimate paragraph). The Examiner states that “Appellants’ specification recites that the ‘rib-like elements may comprise ridges and furrows,’ but Appellants’ specification does not teach that a ‘rib-like’ structure necessarily comprises ridges and furrows” (Ans. 27, first paragraph). Appeal 2011-003613 Application 11/728,930 4 We do not subscribe to the Examiner’s reasoning. We agree with Appellants that the present Specification and accompanying drawings recently apprise one of ordinary skill in the art what is meant by the wipes having protruding elements in the form of rib-like ridges and furrows. The terms “rib” and “furrows” encompass many particular structures and forms, and we find that the language “rib-like ridges and furrows” is no more ambiguous than the language apparently preferred by the Examiner, “rib ridges and furrows, when such language is read in light of the Specification. We now turn to the § 103 rejections. Bouchette and Trinh, the two primary references, disclose pre-moistened wipes. The Examiner acknowledges, however, that Bouchette does not disclose the claimed fiber denier, surface tension of the liquid composition, saturation gradient index, and dynamic absorption time, as well as the height of the claimed stack. The Examiner also acknowledges that Trinh does not teach the claimed fiber denier, reticulated structure comprising protruding elements in the form of rib-like ridges and furrows, the claimed height of the stack, saturation gradient index and dynamic absorption time. The Examiner modifies the primary references by various teachings of Austin, Hill, Dunbar, Wong, and Lange and concludes that the modified wipes of Bouchette and Trinh would inherently possess the claimed saturation gradient index and dynamic absorption time. It is well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior art, the burden is on the applicant to prove that the prior art product does not necessarily or inherently possess characteristics attributed to the claimed product. In re Appeal 2011-003613 Application 11/728,930 5 Spade, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In the present case, there is no finding that the wipes of Bouchette and Trinh are substantially the same as the claimed wipes and exhibit the claimed saturation gradient index and dynamic absorption time. Although it may be possible for one of ordinary skill in the art to modify the wipes of Bouchette and Trinh in accordance with the teachings of Hill, Austin, Dunbar, Wong, and Lange to arrive at the claimed structure and, therefore, with the claimed saturation gradient index and dynamic absorption time, the Examiner has pointed to no direction offered by the secondary references to select the parameters necessary to produce the saturation gradient index and dynamic absorption time. A finding of inherency requires more than the mere possibility that the prior art possesses the claimed properties. Inevitability is mandated. The Examiner has not pointed to prior art which appreciates the problem confronted by Appellants, namely, keeping the moisture in the wipes at the top of the stack from falling to the bottom of the stack, let alone Appellants’ solution. In conclusion, based on the foregoing, we are constrained to reverse the Examiner’s rejections. REVERSED cam