Ex Parte Drevik et al

Patent Trial and Appeal Board

Nov 28, 2016

12299394 (P.T.A.B. Nov. 28, 2016)

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.
12/299,394 11/03/2008 Solgun Drevik 1018798-000508 8955
105718 7590 11/30/2016
SCA Hygiene Products AB
c/o Buchanan Ingersoll & Rooney, PC
1737 King Street, Suite 500
Alexandria, VA 22314
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
11/30/2016 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOLGUN DREVIK, CHATRINE STRIDFELDT,
and ANGELICA BURVALL
Appeal 2014-005497
Application 12/299,394
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and JILL D. HILL,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Solgun Drevik et al. (“Appellants”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject claims 21—43. We have jurisdiction
under 35 U.S.C. § 6(b). Oral argument was heard on October 13, 2016.
We AFFIRM.
Appeal 2014-005497
Application 12/299,394
CLAIMED SUBJECT MATTER
Independent claims 21, 22, 37, and 38 are pending. Claim 21,
reproduced below, illustrates the subject matter on appeal.
21. A packing wrapper for an absorbent article, the wrapper
comprising:
a protective layer, and
a first functional layer attached to the protective layer,
wherein the first functional layer is positioned on a face of
the wrapper facing the absorbent article or on a face of the
wrapper facing away from the absorbent article,
wherein the first functional layer is a wiping layer adapted
for absorbing or adsorbing a liquid or particles from a surface
and/or a transfer layer adapted for transferring a substance to a
surface,
wherein the protective layer and the first functional layer
form separate layers removably attached to each other by a
means of attachment, and the protective layer and the first
functional layer are in direct contact with each other.
REJECTIONS1
I. Claims 21—43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Steger (US 6,911,022 B2; iss. June 28, 2005) and Morin
(US 5,111,934; iss. May 12, 1992). Final Act. 3.
II. Claims 21—43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Steger and Dunshee (US 5,487,932; iss. Jan. 30, 1996).
Final Act. 16.
1 The rejection under 35 USC § 112, first paragraph, has been withdrawn.
Final Act. 2—3; Ans. 29.
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Appeal 2014-005497
Application 12/299,394
III. Claims 21—43 stand rejected on the ground of non-statutory
obviousness-type double patenting over claims 20-39 of co-pending patent
U.S. Application No. 12/299,553.2 Final Act. 31.
ANALYSIS
Rejection I
Independent Claim 21
Appellants argue claims 21, 23, 26, and 31—36 as a group. We select
claim 21 as representative. Claims 23, 26, and 31—36 stand or fall with
claim 21. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 21 recites, inter alia, that “the protective layer and the first
functional layer form separate layers removably attached to each other . . .
[and] are in direct contact with each other.” The Examiner finds this
teaching in Steger. Final Act. 4 (citing Steger Figs. 4—5, 7). The Examiner
also finds that, although Steger’s materials “would provide degrees of
‘physically bonded or joined’ elements” and “Steger discloses ultrasonic
bonding, thermal bonding, and adhesively bonding between layers . . . with
respect to the first functional layer and protective layer attached to each
other and in direct contact,” Morin’s similar device comprises “a protective
layer (16) and a first functional layer (at 24) attached to each other and in
direct contact (via 20 . . .).” Id. at 4—5.
The Examiner concludes that it would have been obvious “to modify
Steger in view of Morin to provide attachment means between two layers in
order to secure a functional layer such as a towel type sheet to the device.”
2 Co-pending patent application no. 12/299,553 was abandoned on October
8,2015.
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Id. at 5. According to the Examiner, “it is well known in the art to provide
alternative means of attachment such as ultrasonic welding/bonding,
embossing, coating, impregnating, heat sealing, needling, stitching,
thermomechanical bonding, thermal bonding, adhesive bonding, gluing,
etc.,” and “substituting [such] equivalents known for the same purpose on
the basis of its suitability for the intended use was an obvious extension of
the prior teachings.” Id.
Appellant argues that the wipe 80 and pouch 70 of Steger’s device
may be in direct contact with each other, but are not joined or attached to
each other. Appeal Br. 8. Even if this is the case, the Examiner finds that
Morin teaches this limitation. Final Act. 5.
Regarding Morin, Appellants argue that its sponge-type towel sheet
24 is adhered to the plastic backing 16 via adhesive 20, but “is not in direct
contact with the plastic sheet backing 16.” Appeal Br. 15—16. Appellants
also argue that although the edges of Morin’s sheets 12—18 may be “glued,
heat-sealed or otherwise sealingly secured to each other,” Morin never states
that adhesive 20 includes such an adhesive. Id.
In arguing that Steger fails to disclose adhesive and Morin fails to
disclose direct contact, Appellants are arguing the references separately,
rather than arguing the combination of references proposed by the Examiner,
wherein Morin’s adhesive is added to Steger’s direct contact construction.
Appellants’ arguments do not take into account what the collective teachings
of the prior art would have suggested to one of ordinary skill in the art, and
are therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test
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Application 12/299,394
for obviousness ... is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”).
Further, regarding the Examiner’s proposed reason for combining
Steger and Morin, Appellants argue that Morin doesn’t teach any equivalents
for the adhesive 20 between its backing 16 and its towel 24, and that the
Examiner fails to establish that the alleged equivalents (i.e., ultrasonic
welding/bonding, embossing, coating, impregnating, heat sealing, needling,
stitching, thermomechanical bonding, thermal bonding, adhesive bonding,
gluing) “are equivalents in the same environment” such that substitution
thereof would be obvious. Appeal Br. 16.
The relative sections of Steger and Morin are directed to the
environment of wipe/towel/napkin containment. Absent any further
explanation regarding how the environments of Steger and Morin differ, and
why such a difference negates combinability or equivalence of adhesives, we
are not persuaded by this argument.
Appellants still further argue that Steger does not recognize a need to
further secure its wipe 80 in the pouch 70, and thus there is no reason to
modify Steger to include such securement. Appeal Br. 17. This argument is
not persuasive, however, because it is Morin, rather than Steger, that
appreciates the benefit of adhering its towel 24 to a backing 16. For the
reasons set for above, we sustain the rejection of claim 21. Claims 23, 26,
and 31—36 fall with claim 21.
Independent Claim 22
Appellants argue claims 22, 24, 27, and 28 as a group. We select
claim 22 as representative. Claims 24, 27, and 28 stand or fall with claim
22.
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Claim 22 recites first and second functional layers attached to a
protective layer. The Examiner finds this teaching in Steger’s first
functional layer, 82, second functional layer 84, and protective layer 76.
Final Act. 8 (citing Steger Fig. 5). The Examiner states that, “[although it is
believed that materials in Steger . . . provide degrees of ‘physically bonded
or joined’ elements . ..,” Morin discloses attaching a functional layer 24 to a
protective layer 16 and a first functional layer (via adhesive 20). Id. at 8—9.
The Examiner again reasons that it would have been obvious “to modify
Steger in view of Morin to provide attachment means between two layers” to
secure the functional layers to Morin’s device. Id. at 9.
Appellants argue that, “to the extent that one might modify Steger et
al. by adhering the wet wine 82 to the protective layer 76, in view of the
teachings of Morin, there lacks an apparent reason to also adhere the dry
wine 84 to the protective layer 76.” Appeal Br. 18. Appellants further argue
that different adhesions would be needed for wet and dry wipes. Id. at 19.
Appellant’s conclusory arguments fail to explain the difference
between wet and dry wipes, and how such difference affects the applicability
of Morin’s teachings to Steger or the type of adhesive used. We therefore
are not persuaded by this argument. Thus, we sustain the rejection of claim
22.
Claims 24, 27, and 28 stand or fall with claim 22.
Dependent Claim 25
Dependent claim 25 recites that “the protective layer is coated onto
the second functional layer.” The Examiner determines that claim 25 is a
product-by-process claim, such that the term “coated onto” adds no
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patentable distinction, and patentability is determined based on the product
itself. Final Act. 9—10; see In re Garnero, 412 F.2d 276, 279 (CCPA 1979).
The Examiner also finds that Steger and Morin disclose various adhesives
that the Examiner considers to be coatings, because the adhesives are not
supported by their own structure (e.g., ultrasonic bonding, thermal bonding,
adhesive bonding, gluing, heat-sealing), and that it is known in the adhesive
art “to provide alternative means of attachment such as ultrasonic
welding/bonding, embossing, coating, impregnating, heat sealing, needling,
stitching, thermomechanical bonding, thermal bonding, adhesive bonding,
gluing, etc.,” making the selection of an adhesive coating at least obvious to
one skilled in the art. Final Act. 10.
Regardless of whether the Examiner is correct in determining that the
adhesives of Steger and Moran are structurally the same as a coated layer,
the claim recites that the protective layer is coated, and the Examiner fails to
establish that the adhesives referred to in Steger and Moran provide such a
protective coating. We therefore do not sustain the rejection of claim 25.
Dependent Claim 29
Claim 29 recites that “the first or second functional layer comprises an
active substance which can be activated by contact with water or heat or in
contact with air or can be activated by mechanical action.” The Examiner
finds that Steger discloses a functional layer comprising “an active substance
which can be activated by contact with water or heat or in contact with air or
can be activated by mechanical action such as breaking of a capsulated unit.”
Final Act. 11 (citing Steger 9:38—10:67; 12:47—64); Ans. 36—37.
Appellants agree that Steger discloses its wipe includes mineral oils,
an emollient, surfactants, alcohols, perfumes, antimicrobial agents, pH
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buffers, silicones, skin conditioning substances, “or any other substances
known in the art for inclusion in cleansing wipes.” Appeal Br. 20 (citing
Steger 10:22—39). Appellants argue, however, that the Examiner “fails to
identify any specific substance among those described in Steger et al. which
can be activated by contact with water or heat or in contact with air or can be
activated by mechanical action.”
Appellants’ Specification discloses the following regarding the
meaning of the limitation “active substance:” (1) an active substance can
include a lotion, an anti-bacterial substance, a moisturizer, a soap, an odor-
control agent (for example, a perfume), “or any other suitable substance or
active agent” (Spec. 5,11. 17—19), an odor-control agent including; and (2)
an active substance can additionally include a skincare agent, a lactic acid
producing bacteria (Spec. 26,11. 13—18). Appellants’ Specification does not
disclose the method of activation of each “active substance.”
Given that there is overlap between the content of Steger’s wipes and
the active substances disclosed in Appellants’ Specification, we are not
persuaded that the Examiner’s failure to identify the method of activation of
Steger’s substances evidences error in the rejection, particularly given that
Appellants also fail to identify the method of activation of each substance.
We sustain the rejection of claim 29.
Dependent Claim 30
Claim 30 recites the wrapper comprising “a release layer laminated
onto” the first or second functional layer. The Examiner treats “laminated
onto” in claim 30 as a product-by-process limitation, and finds that Steger
discloses a release layer attached to a functional layer, and Morin discloses
gluing and heat sealing, which result in a laminated product. Final Act. 11—
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12. Appellants contend that “laminated onto” provides a structural
limitation. Appeal Br. 21.
The Examiner has the better position. Appellants have not claimed “a
lamination” or even a laminated layer (i.e., a noun), but rather have claimed
a layer “laminated onto” another later (i.e., a verb). “Laminated” denotes a
process. Appellants have not explained how or why the term “laminated”
limits the structure of the claimed release layer, and how such structure
would be distinguished from the disclosed layers of Steger and Morin.
Lacking such an explanation, we sustain the rejection of claim 30.
Independent Claim 3 7
Claim 37 recites, inter alia, a second functional layer being “attached
at edge portions thereof to [a] protective layer thereby forming a pocket
between the protective layer and the second functional layer.” The
Examiner finds that Steger discloses this limitation “(as in [Tig.] 5, 84 is
attached at edges at contact with 76; pocket at comer space between 82/84,
76,75/74).” final Act. 13. The Examiner also finds that, if Steger does not
disclose attachment of the second functional layer to the protective layer,
Morin discloses functional layer attachment with adhesive 20, such that
applying Morin’s adhesive 20 to attach Steger’s second functional layer 84
to its protective layer 76 would yield the indicated pocket “at comer space
between 82/84, 76, 75/74.” See id. at 13—14.
Appellants argue, as for claim 1, that Steger’s functional layer 84 is
not attached to its protective layer, and that Morin does not disclose adhering
a dry towel, such that one skilled in the art “would have had no apparent
reason to modify Steger et al. by adhering the dry wine 84.” Appeal Br. 22—
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23. We are not persuaded by the arguments for the reasons set forth above
regarding claims 21 and 22.
Appellants also argue that “the comer space in Fig. 5 of Steger et al.
referred to by the Examiner is a triangle-like space surrounded by layers 84,
76, 75 and thus does not constitute a ‘pocket’ between the layers 84 and 76.”
Id. at 23. The Examiner responds that a “pocket is merely an opening
between layers.” Ans. 37. Appellants provide no intrinsic or extrinsic
definition of the term “pocket” that excludes, or that can be used to
differentiate the claimed pocket from, the triangular space surrounded by
Steger’s layers 84, 76, 75. Absent provision of a definition and explained
differentiation, we are not persuaded by Appellants’ argument, and we
sustain the rejection of claim 37.
Independent Claim 38
Claim 38 recites, inter alia, a first separating layer attached to a first
protective layer, and a second separating layer attached to a second
protective layer, “wherein the two separating layers separate the two
protective layers.” The Examiner finds this disclosure in Steger’s first
functional layer 82, first protective layer, 76, first separating layer 74, and its
second functional layer 84, second protective layer 75, and second
separating layer 46’. Final Act. 14. The Examiner contends that “the two
separating layers (74, 46’) separate the two protective layers (76, 75; the
layers are able to separate)” to separate the wrapper into “a first unit
comprising the first functional layer (82), the first protective layer (76) and
the first separating layer (74) and a second unit comprising the second
functional layer (84), the second protective layer (75) and the second
separating layer (46’).” Id. at 14—15. While Steger’s release backing 46’,
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which resides between the napkin and the wipe, is labeled in Figure 4, it is
Steger’s Figure 5 that illustrates the Examiner’s proposed separating layers,
protective layers, functional layers, and the separability thereof.
Appellants repeat certain arguments presented in opposing the
rejection of independent claims 21 and 22. Appeal Br. 24. For the reasons
set forth above, we are not persuaded by those arguments.
Appellants then essentially argue that Steger’s separating layers 74,
46’ fail to both act to separate the two protective layers 76, 75 from each
other. Appeal Br. 25 (Steger’s “‘separating’ layers 74, 46’ are located
outside the two ‘protective’ layers 76, 75, and thus do not separate the two
‘protective’ layers 76, 75.”). Claim 38, however, does not recite that both of
the separating layers function to separate the two protective layers from each
other. We decline to construe the claim to require that both of the separating
layers function to separate the two protective layers from each other.
Appellants’ argument, therefore, is not commensurate with the scope of
claim 38, and we are thus not persuaded by Appellants’ argument. We
sustain the rejection of claim 38.
Dependent Claim 39
Claim 39 depends from claim 38, and recites that “the second
separating layer is attached at edge portions thereof to the second protective
layer” to form “a pocket between the second separating layer and the second
protective layer, so that the second unit is adapted to be used as a glove.”
The Examiner finds that Steger’s “second unit is adapted to be used as a
glove (the device is able to perform the intended use described above;
pocket at comer space between 82/84, 76, 75/74).” Final Act. 16.
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Appellants argue that Steger’s release strip 46’ does not form a unit
adapted to be used as a glove. Appeal Br. 25. We agree with Appellants.
While we agree with the Examiner that Steger discloses a pocket “at comer
space between 82/84, 76, 75/74,” the Examiner’s conclusory finding has not
persuaded us that Steger’s pocket is “adapted to be used as a glove” as
required by claim 39. Final Act. 16. We therefore do not sustain the
rejection of claim 39.
Dependent Claims 40—43
Each of claims 40-43 recite that “the packing wrapper has a surface
larger than an entire surface of the absorbent article in a flat state.” The
Examiner finds that, referencing Steger’s Figure 7, its package wrapper
surface 48 is larger than the entire surface of its absorbent article 26. Final
Act. 16.
Appellants argue that Steger’s wrapper 48 is “structurally different
from the pouch 70, which is considered by the Examiner to correspond to
the packing wrapper.” Appeal Br. 26. We agree with Appellants. In
addressing the “packing wrapper” recited in independent claims 21, 22, 37,
and 38, from which claims 40-43 depend, respectively, the Examiner finds
that “the wrapper compris[es] a protective layer (76), and a first functional
layer (82) attached to the protective layer (as in fig. 5).3 Final Act. 5. This
finding appears to be at odds with the Examiner’s finding that Steger’s
release liner 48 is the packing wrapper. While it is possible that, for claims
40-43, the Examiner considers the packing wrapper to include all of at least
3 The Examiner also finds that the packing wrapper includes the second
functional layer and the second protective layer when considering
independent claims 22, 37, and 38. Final Act. 8, 12, 14.
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the protective layer 76, the first functional layer 82, and the release liner 48,
the Examiner has not clearly set forth this finding. Therefore, the
Examiner’s finding that release liner 48 is the packing wrapper of claims
40-43 appears to be at odds with the Examiner’s earlier findings regarding
the packing wrapper of independent claims 21, 22, 37, and 38. We therefore
do not sustain the rejection of claims 40-43.
Rejection II
The Examiner makes findings regarding the disclosures of Steger and
Dunshee, concluding that it would have been obvious to modify Steger by
adding Dunshee’s attachment means “(as described in col. 6: 29-51 of
Dunshee)” between two layers, “to secure and stabilize a functional layer
thereby preventing undesired movement during opening and use while also
creating an improved flush surface (col. 6: 29-51 of Dunshee).” Final Act.
18.
The only argument presented against Rejection II is that there is “no
apparent reason to combine Steger et al. and Dunshee.” Appeal Br. 26.
According to Appellants, Steger intends for its wipe 80 to be separated from
its pouch 70 in use, whereas Dunshee intends for its pad 20 to remain
secured to its package portions 12, 14. Id. at 27—28. Thus, Appellants
contend, modifying Steger to include the attachment means of Dunshee,
would cause Steger’s wipe 80 to remain secured to its pouch, which would
render Steger unsatisfactory for its intended purpose. Id. at 28. We
understand Appellants to be contending that the intended purpose of Steger’s
invention is to provide a wipe that can be released from its pouch. We
disagree with the proffered intended purpose. Steger’s invention is directed
to packaging for sanitary napkins having a wipe associated therewith, and its
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intended purpose is to provide a desirable flap disposition and easy access to
the wipe. See Steger 1:7—9; 2:31 42. We are not persuaded that Dunshee’s
attachment means would render Steger unsuitable for this intended purpose.
We sustain Rejection II.
Rejection III
Because co-pending patent U.S. Application No. 12/299,553 was
abandoned on October 8, 2015, we reverse the double patenting rejection as
moot. MPEP § 804(I)(C) (“If the published application has not yet issued as
a patent, the examiner is permitted to make a ‘provisional’ rejection on the
ground of double patenting when the published application has not been
abandoned.'1'’).
DECISION
We AFFIRM the rejection of claims 21—24 and 26—39 under 35
U.S.C. § 103(a) as unpatentable over Steger and Morin.
We REVERSE the rejection of claims 25 and 40-43 under 35 U.S.C.
§ 103(a) as unpatentable over Steger and Morin.
We AFFIRM the rejection of claims 21—43 under 35 U.S.C. § 103(a)
as unpatentable over Steger and Dunshee.
We REVERSE as moot the rejection of claims 21—43 under the
ground of non-statutory obvious-type double patenting over claims 20-39 of
co-pending U.S. Application No. 12/299,553 (now abandoned).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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