Ex Parte Cordial et al

Patent Trial and Appeal Board

Apr 26, 2016

12282884 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/282,884 09/15/2008
105855 7590 04/28/2016
Drinker Biddle & Reath LLP
1500 K Street NW, Suite 1100
Washington, DC 20005
FIRST NAMED INVENTOR
Lesley Cordial
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
049121-0269-00-US-494930 6191
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
DBRIPDocket@dbr.com
penelope.mongelluzzo@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LESLEY CORDIAL, PAUL DREWES-MAGDANZ, DIRK
MAULER, REIKO STEUER, and WOLFRAM SCHINKOREIT
Appeal2014-009169
Application 12/282,884
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 36, 38, 40 through 59, and 69 through 72. We have jurisdiction
under 35 U.S.C. § 6(b ).
Appellants' invention is generally directed to a disposable tissue paper
product that comprises a lathering surfactant and a wet strength agent. App.
Br. 1-2. Claim 36 illustrates the subject matter on appeal and is reproduced
below:
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Application 12/282,884
j o. A disposable tissue paper product which feels dry to the
touch and comprises a lathering surfactant in a form capable of
forming lather upon contact with water, wherein
said disposable tissue paper product has two or more
tissue paper plies,
the weight content of synthetic fibers is 20% or less of
said disposable tissue paper product,
one or more plies of said two or more tissue paper plies
were subjected to a through air drying (TAD) step,
said disposable tissue paper product has said lathering
surfactant or a composition containing the lathering surfactant
applied to one or more plies of dry tissue paper web,
said disposable tissue paper product contains a wet
strength agent in an amount of 0.01 to 5 wt[.]% based on a
total amount of untreated cellulose fibers,
the lathering surfactant is present in an amount of 0.01 to
6 g/m2, and,
if a composition containing the lathering surfactant is
applied, the total amount of nonvolatile components of said
composition does not exceed 20 wt.[]% of the dry weight of
said one or more tissue paper plies.
App. Br. A-1, Claims Appendix.
Appellants (see App. Br., generally) request review of the following
rejections from the Examiner's Final Office Action mailed October 24,
2013:
I. Claims 36, 38, 40-45, 48-53, 55, 57, 71, and 72 under
35 U.S.C. § 103(a) as unpatentable over Spendel (US 4,959,125, issued
September 25, 1990) alone or in view ofBaumoller et al. (US 2002/0148583
Al, published October 17, 2002).
II. Claims 46, 47, 69, and 70 under 35 U.S.C. § 103(a) as
unpatentable over Spendel alone or in view of Baumoller and Kelly et al.
(US 6,475,501 Bl, issued November 5, 2002).
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Application 12/282,884
III. Claim 54 under 35 U.S.C. § 103(a) as unpatentable over
Spendel alone or in view of Baumoller and Lindsay et al. (US 2004/0062907
Al, published April 1, 2004).
IV. Claims 56 and 58 under 35 U.S.C. § 103(a) as unpatentable
over Spendel alone or in view of Baumoller, Lindsay, and Chaussee
(US 4,603,005, issued July 29, 1986).
V. Claim 59 under 35 U.S.C. § 103(a) as unpatentable over
Spendel alone or in view of Baumoller and Warner et al. (US 5,525,345,
issued June 11, 1996).
VI. Claims 36, 38, 40-48, 50-55, 57, 59, 69, 71, and 72 under
35 U.S.C. § 103(a) as unpatentable over McAtee et al. (WO 99/13861,
published March 25, 1999) in view of Spendel and evidenced by Kelly
alone, or in view of Baumoller.
VII. Claim 49 under 35 U.S.C. § 103(a) as unpatentable over
McAtee in view of Spendel alone, or in view of Baumoller, and further in
view of Warner et al. (US 5,525,345, issued June 11, 1996).
VIII. Claims 56 and 58 under 35 U.S.C. § 103(a) as unpatentable
over McAtee in view of Spendel and evidenced by Kelly alone, or in view of
Baumoller, and further in view of Chaussee (US 4,603,005, issued Jul. 29,
1986).
IX. Claim 70 under 35 U.S.C. § 103(a) as unpatentable over
McAtee in view of Spendel and evidenced by Kelly alone, or in view of
Baumoller, and further in view of Kelly.
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's rejections under 35 U.S.C.
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Application 12/282,884
§ 103(a) of claims 36, 38, 40-59, and 69--72. We add the following for
emphasis.
Rejection Jl
The Examiner finds that Spendel discloses a tissue paper product
comprising a surfactant that contributes to the tactile softness of the product,
and determines that the surfactant is intrinsically capable of forming lather
upon contact with water. Ans. 2. The Examiner acknowledges that Spendel
does not express the amount of surfactant that is in the tissue paper product
in units that correspond to the units recited in claim 3 6, but determines that
because the surfactant affects the softness of the tissue paper, the amount of
surfactant is a result-effective variable, and optimization of the amount of
surfactant in a tissue paper product would therefore, require nothing more
than routine experimentation. Ans. 3. The Examiner further finds that
Spendel discloses that the tissue paper product also comprises about 0.01 %
to about 2.0 % starch, and determines in essence that Spendel suggests that
starch functions as a wet strength agent. Ans. 2-3.
Appellants argue that Spendel fails to disclose that the surfactants
described in the reference for use in tissue paper products are lathering
surfactants, and the Examiner has not established that the surfactants
disclosed in Spendel are inherently or intrinsically lathering. App. Br. 6.
However, Spendel discloses that noncationic surfactants that impart softness
to tissue paper products include nonionic, anionic, ampholytic, and
zwitterionic surfactants (Spendel col. 7, 11. 1-3), which are classes of
1 Appellants argue claims 36, 38, 40-45, 48-53, 55, 57, and 72 together. See
Appeal Brief, generally. Therefore, we select claim 36 as representative of
these claims, which will stand or fall with claim 36.
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Application 12/282,884
surfactants that overlap with the nonionic, anionic, and amphoteric classes of
lathering surfactants described in Appellants' Specification, (Spec. 14, 11. 3-
32). In addition, Spendel discloses that such useful anionic surfactants
include alkali metal soaps, such as sodium laurate (Spendel col. 10, 11. 17-
28), which one of ordinary skill in the art reasonably would have understood
would form lather upon contact with water. Spendel also discloses that
useful anionic surfactants include alkali metal salts of organic sulfuric
reaction products having an alkyl group containing 10 to 20 carbon atoms
(Spendel col. 10, 11. 30-34), which one of ordinary skill in the art would
have understood to include sodium lauryl sulfate, which is exemplified in
Appellants' Specification as a lathering surfactant. Spec. 52. Spendel
further discloses that useful nonionic surfactants include amine oxides (col.
8, 11. 29-34), and Appellants' claim 45 recites an amine oxide lathering
surfactant. Therefore, Spendel and Appellants' Specification both broadly
disclose overlapping classes of surfactants for use in tissue paper products,
and Spendel discloses that surfactants that soften tissue paper products
include lathering surfactants, as recited in claim 36. Accordingly,
Appellants' argument that Spendel fails to disclose that the surfactants
included in the tissue paper products are lathering surfactants is not
persuasive of reversible error.
Appellants argue that the Examiner does not provide a reason why
"optimizing the amount of surfactant for softness would result in the claimed
amount of surfactant, which was selected for the purpose of forming lather
for cleaning purposes." App. Br. 6-7. However, Spendel discloses that the
tissue paper comprises about 0.01 % to about 2 % surfactant based on the
dry fiber weight of the tissue paper, and discloses that the tissue paper has a
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Application 12/282,884
1 • • 1 , ,.. ,.. 1 , -1 A , 1 , / ,_ I ') 1"11 • ,..... / •, , "1 , , "1 oasis we1gm or rrom aoom l u to aoom 0) g;m~. lAaim j o recnes mat me
lathering surfactant is present in the tissue paper product in an amount of
0.01 to 6 g/m2, and it thus appears that the amount of surfactant disclosed in
Spendel encompasses/overlaps the amount of surfactant recited in claim 36.
Therefore, the Examiner has a reasonable basis for determining that
optimizing the amount of surfactant in Spendel' s tissue paper product to
achieve a desired degree of softness would result in the tissue paper having
an amount of surfactant recited in claim 36. In re Woodruff, 919 F.2d 1575,
1577-78 (Fed. Cir. 1990). Appellants do not direct us to evidence
establishing that an amount of surfactant that imparts softness to a tissue
paper product would not be sufficient to provide some degree of lathering
upon contact with water, which is all that claim 36 requires. App. Br. 5-18.
Moreover, contrary to Appellants' assertions, claim 3 6 does not require
sufficient lather for cleaning purposes. In re Self, 671 F.2d 1344, 1348
(CCP A 1982) ("[A ]ppellant's arguments fail from the outset because ...
they are not based on limitations appearing in the claims."). Accordingly,
Appellants' arguments are unpersuasive of reversible error.
Appellants also argue that the Examiner does not provide a reason
why one of ordinary skill in the art would have selected a lathering
surfactant from among the surfactants disclosed in Spendel for imparting
softness to tissue paper products. App. Br. 7-8. However, as discussed
above, Spendel and Appellants' Specification both broadly disclose
overlapping classes of surfactants for use in tissue paper products, and
Spendel discloses that surfactants that soften tissue paper products include
lathering surfactants. It follows that the Examiner did not reversibly err in
determining that Spendel would have suggested a tissue paper product
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compnsmg a lathering surfactant as recited in claim 3 6, within the meaning
of 35 U.S.C. § 103(a). KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (an obviousness analysis "need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for [an
examiner] can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.")
Appellants also argue that the Examiner fails to provide a reason why
one of ordinary skill in the art would have modified the tissue paper product
of Spendel to include a wet strength agent in the amount recited in claim 3 6.
App. Br. 8-10. However, Spendel discloses that the tissue paper product
comprises a binder, which is preferably starch, and indicates that the term
"binder" refers to "the various wet and dry strength additives known in the
art." Spendel col. 13, 11. 37--42. Spendel also discloses that modified starch
materials are used as a pulp furnish additive to increase wet and/or dry
strength. Spendel col. 14, 11. 34--36. Accordingly, Spendel teaches using a
binder in the form of a wet strength additive and/or a dry strength additive in
tissue paper products, and identifies starch as such a binder. Spendel further
discloses that the amount of starch in the tissue paper product is about 0.01
% to 2.0 %, calculated on a dry fiber weight basis, which overlaps the range
of wet strength agent recited in claim 36. Spendel col. 14, 11. 61---66.
Therefore, we agree with the Examiner that Spendel reasonably would have
suggested including a wet strength additive binder in a tissue paper product
in an amount recited in claim 36, and Appellants' arguments are thus,
unpersuasive of reversible error.
Appellants further argue that the Examiner improperly fails to address
whether Spendel' s tissue paper product includes a total amount of non-
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Application 12/282,884
volatile components that does not exceed 20 wt. % of the dry weight of one
or more of the tissue paper plies, as recited in claim 36. App. Br. 10.
Appellants' argument is directed to a conditional limitation. The prior art
need not disclose or suggest this limitation to render claim 3 6 prima facie
obvious if the prior art does not disclose that the condition precedent recited
in the claim must be performed. Specifically, claim 36 recites that a
lathering surfactant or a composition containing the lathering surfactant is
applied to one or more plies of dry tissue paper web, and further recites that
if a composition containing the lathering surfactant is applied, the total
amount of nonvolatile components of the composition does not exceed 20
wt. % of the dry weight of one or more of the tissue paper plies. Spendel
discloses that the surfactant itself, rather than a composition containing the
surfactant, can be applied to a dry paper web. Spendel col. 11, 11. 55-58;
col. 12, 11. 65---66. Moreover, the Examiner does not rely on disclosure in
Spendel of applying a composition containing a surfactant to the dry paper
web. Appellants have not established that Spendel discloses applying a
composition containing a surfactant. Therefore, this element of claim 3 6 is
not invoked in the present rejection, and Appellants' argument lacks
persuasive merit.
We accordingly sustain the Examiner's rejection of claims 36, 38, 40-
45, 48-53, 55, 57, and 72 under 35 U.S.C. § 103(a) as obvious over Spendel.
Claim 71
Claim 71 depends from claim 3 6 and requires the tissue paper product
to further comprise a dry strength agent in an amount of 0.01 to 3 weight%
based on the total amount of untreated cellulosic fibers. Appellants argue
that Spendel does not disclose including both a wet strength agent and a dry
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Application 12/282,884
strength agent in a tissue paper product, and the Examiner does not provide a
reason for why it would have been obvious to do. App. Br. 11.
However, Spendel's disclosure of including a binder in a tissue paper
product, which Spendel defines as "the various wet and dry strength
additives known in the art" (Spendel col. 13, 11. 37--43), and disclosure of
including a starch binder in an amount of about 0.01 % to 2.0 % calculated
on a dry fiber weight basis (Spendel col. 14, 11. 61---66), reasonably would
have led one of ordinary skill in the art, through no more than ordinary skill
and creativity, to include both a wet strength additive binder, and a dry
strength additive binder in an amount recited in claim 71, in a tissue paper
product. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. at 417. Therefore, we are
unpersuaded of reversible error in the Examiner's rejection of claim 71
under 35 U.S.C. § 103(a) as obvious over Spendel.
Appellants argue that Baumoller fails to remedy the deficiencies of
Spendel, and the combination of Spendel and Baumoller therefore, fails to
render claims 36, 38, 40--45, 48-53, 55, 57, 71, and 72 obvious for the same
reasons provided with respect to Spendel. App. Br. 12. However, as
discussed above, Appellants' arguments regarding Spendel are unpersuasive
of reversible error, and we therefore, sustain the Examiner's rejection of
claims 47, 69, and 70 under 35 U.S.C. § 103(a) as obvious over Spendel and
Baumoller.
Rejection II
Claims 69 and 70
Claims 69 and 70 both depend from claim 36. Claim 69 requires the
wet strength agent to be a cationic polymer, and claim 70 requires the wet
strength agent to be selected from urea-formaldehyde resins, melamine-
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Application 12/282,884
formaldehyde resins, polyvinylamine, polyureide-formaldehyde resins,
glyoxal-acrylamide resins, and cationic materials obtained by the reaction of
polyalkylene polyamines with polysaccharides. The Examiner
acknowledges the Spendel does not explicitly disclose a wet strength agent
as recited in claims 69 and 70, and to remedy this deficiency in Spendel,
relies on Kelly's disclosure of tissue paper products that include cationic
polymer, urea formaldehyde resin, and melamine formaldehyde resin wet
strength agents. Ans. 8.
Appellants argue that the Examiner fails to provide a rationale for why
one of ordinary skill in the art would have added the specific wet strength
agents disclosed in Kelly to Spendel' s tissue paper product when Spendel
fails to teach the use of a wet strength agent. App. Br. 14. However, as
discussed above, Spendel reasonably would have suggested including a wet
strength additive in a tissue paper product, and it would have been well
within the ambit of one of ordinary skill in the art to utilize an appropriate
wet strength additive, such as the cationic polymer, urea formaldehyde resin,
and melamine formaldehyde resin wet strength agents disclosed in Kelly as
useful in tissue paper products, as recited in claims 69 and 70.
Appellants also argue that because Spendel supposedly discloses that
starch provides an improved strength/softness relationship relative to
traditional wet strength agents, one of ordinary skill in the art would have
expected that substituting one of the wet strength agents disclosed in Kelly
for the starch of Spendel would result in a tissue paper product having a
reduced strength/softness relationship, rendering the product unsatisfactory
for its intended purpose. App. Br. 14--15. However, Appellants' arguments
are contrary to the disclosures of Spendel. Specifically, Spendel discloses
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that starch provides tissue paper with an improved strength/softness
relationship as compared to tissue paper strengthened by traditional methods
of increasing tensile strength, which include the addition of dry strength
additives, rather than the addition of wet strength additives as Appellants
assert. Spendel col. 13, 11. 46-57. Accordingly, Appellants' argument does
not establish that substituting one of the wet strength agents disclosed in
Kelly for the starch of Spendel would result in a tissue paper rendered
unsatisfactory for its intended purpose. Therefore, we are unpersuaded of
reversible error in the Examiner's rejection of claims 69 and 70 under 35
U.S.C. § 103(a) as obvious over Spendel and Kelly.
Claims 46 and 47
Claim 46 depends from claim 3 6 and requires the tissue paper product
to comprise a water-binding agent, comprising a polyhydric alcohol. Claim
4 7 depends from claim 46 and requires the weight ratio of the water-binding
agent(s) to lathering surfactant(s) to be from 1/2 to 1/10.
The Examiner finds that Kelly discloses a tissue paper product
comprising a water-binding agent comprising a polyhydric alcohol in an
amount of about 0.1 % to 99 %, and a surfactant in the amount of about 0.01
% to 10 %. Ans. 7. The Examiner determines that the weight ratio of the
water-binding agent and surfactant disclosed in Kelly overlaps the range
recited in claim 47. Ans. 7-8.
With respect to claim 46, Appellants argue that Kelly fails to remedy
the deficiencies of Spendel, and the combination of Spendel and Kelly
therefore, fails to render claims 46 obvious. App. Br. 12. However, as
discussed above, Appellants' arguments regarding Spendel are unpersuasive
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of reversible error, and we therefore, sustain the Examiner's rejection of
claim 46 under 35 U.S.C. § 103(a) as obvious over Spendel and Kelly.
With respect to claim 4 7, Appellants argue that when Kelly is
considered in its entirety, it becomes clear that the reference intends the
amount of polyhydric alcohol in the paper product to be greater than the
amount of surfactant, and one of ordinary skill in the art therefore, would not
have added surfactant to a tissue paper product in an amount at least twice as
great as polyhydric alcohol. App. Br. 13-14.
However, Kelly discloses a tissue paper comprising an antiviral
composition, a water-binding agent comprising a polyhydric alcohol in an
amount of about 0.1 % to 99 % of the antiviral composition, and a surfactant
in an amount of about 0.01 % to 10 % of the antiviral composition. Kelly
Abstract; col. 15, 11. 1--4, 11-15; col. 13, 11. 25-26; col. 14, 11. 31-33. These
disclosures reasonably would have led one of ordinary skill in the art,
through no more than ordinary skill and creativity, to include appropriate
relative amounts of a water-binding agent and a surfactant in Spendel's
tissue paper product, such as amounts having a weight ratio as recited in
claim 47. In re Peterson, 315 F.3d 1325, 1329-330 (Fed. Cir. 2003) ("In
cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness .... "). Because Appellants do not provide evidence
demonstrating the criticality of the recited range (App. Br. 5-18), we are
unpersuaded of reversible error in the Examiner's rejection of claim 47
under 35 U.S.C. § 103(a) as obvious over Spendel and Kelly. In re
Woodruff, 919 F.2d at 1578.
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Appellants argue that Bamnoller fails to remedy the deficiencies of
Spendel and Kelly, and the combination of Spendel, Kelly, and Baumoller
therefore, fails to render claims 46, 46, 69, and 70 obvious for the same
reasons provided for Spendel and Kelly. App. Br. 15-16. However,
Appellants' arguments regarding Spendel and Kelly are unpersuasive of
reversible error, as discussed above, and we therefore, sustain the
Examiner's rejection of claims 47, 69, and 70 under 35 U.S.C. § 103(a) as
obvious over Spendel, Kelly, and Baumoller.
Rejections 3-5
Appellants rely on contentions that the Examiner erred in rejecting the
base claim, independent claim 36, from which claims 54, 56, 58, and 59
depend, and argue that the additional references relied upon by the Examiner
in the rejections of these claims fail to remedy the deficiencies of Spendel.
App. Br. 16. Because we are not persuaded of reversible error in the
Examiner's rejection of claim 36, we also sustain the rejection of claims 54,
56, 58, and 59 under 35 U.S.C. § 103(a).
Rejections 6-92
The Examiner relies on McAtee as the primary reference in rejections
6---9, and relies on Spendel, Kelly, and Baumoller as secondary references in
these rejections. Ans. 11-19. The Examiner finds that McAtee discloses a
disposable tissue paper product, but does not disclose the amount of
synthetic fiber in the product. Ans. 11. Spendel discloses a tissue paper
product comprising natural and synthetic fibers (Spendel col. 6, 11. 44--52),
2 Appellants argue claims 36, 38, 40-59, and 69-72 together on the basis of
independent claim 36. App. Br. 16---18. Therefore, we select claim 36 as
representative of these claims, which will stand or fall with claim 3 6.
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and the Examiner determines that in view of these disclosures it would have
been obvious to one of ordinary skill in the art to choose an appropriate
amount of synthetic fibers to include in McAtee' s tissue paper product to
control the softness and tensile strength of the product. Ans. 11-12.
Appellants argue that Spendel does not disclose the amount of
synthetic fibers incorporated into the tissue paper product, and neither
McAtee nor Spendel provide any disclosure or reason to limit the amount of
synthetic fibers to a weight content of 20 % or less as recited in claim 36.
App. Br. 17. However, Spendel discloses that a combination of natural
cellulosic fibers and synthetic fibers can be used to produce tissue paper
products. Spendel col. 6, 11. 44--52. Appellants do not dispute that Spendel
thus, recognizes the suitability of using natural cellulosic fibers together with
synthetic fibers for the production of tissue paper products. App. Br. 5-18.
One of ordinary skill in the art reasonably would have had sufficient skill to
determine appropriate amounts of natural cellulosic and synthetic fibers to
incorporate into a tissue paper product to achieve desired properties, such as
an amount of synthetic fibers recited in claim 36. Because Appellants do not
provide evidence demonstrating the criticality of the recited range (App. Br.
5-18), we are unpersuaded of reversible error in the Examiner's rejection of
claim 36 under 35 U.S.C. § 103(a) as obvious over McAttee, Spendel, Kelly,
and Baumoller. In re Woodruff, 919 F.2d at 1578.
ORDER
For the reasons set forth above and in the Answer, the decision of the
Examiner is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
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this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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