Ex Parte Dyer et al

Patent Trial and Appeal BoardSep 19, 2012

11818513 (P.T.A.B. Sep. 19, 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. 11/818,513 06/14/2007 Thomas Joseph Dyer KCX-1376 (64375486US02) 8832 22827 7590 09/19/2012 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER CORDRAY, DENNIS R ART UNIT PAPER NUMBER 1741 MAIL DATE DELIVERY MODE 09/19/2012 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 THOMAS JOSEPH DYER, Deborah Nickel, Kenneth J. Zwick, Mike T. Goulet, Jeffrey J. Timm, and Perry H. Clough ________________ Appeal 2011-002566 Application 11/818,513 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, PETER F. KRATZ, and MARK NAGUMO, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002566 Application 11/818,513 2 A. Introduction1 Thomas Joseph Dyer, Deborah Nickel, Kenneth J. Zwick, Mike T. Goulet, Jeffrey J. Timm, and Perry H. Clough (“KCW”) timely appeal under 35 U.S.C. § 134(a) from the final rejection2 of claims 1-14 and 23-29.3 We have jurisdiction. 35 U.S.C. § 6. We REVERSE. The subject matter on appeal relates to a process of incorporating certain additives to sheet products, especially absorbent tissue products such as paper towels, facial tissues, and bath tissues. (Spec. 1, ll. 12-13.) The additives are intended, inter alia, to improve softness and feel, and they can increase the strength of the sheet products. (Id. at 4, ll. 17-27.) The 513 Specification teaches that increasing the bulk and softness of tissue products is commonly accomplished by subjecting the sheets to a creping process during production. (Id. at 1, ll. 17-20.) In an exemplary creping process, an adhesive is applied to a rotating drum, such as a Yankee dryer. A tissue web is then adhered to the surface of the drum, and a creping blade is used to remove the tissue web from the drum. In the words of the 1 Application 11/818,513, Process for Increasing the Basis Weight of Sheet Materials, filed 14 June 2007, as a continuation-in-part of six prior applications, five of which have issued as patents, the sixth having gone abandoned. The specification is referred to as the “513 Specification,” and is cited as “Spec.” The real party in interest is listed as Kimberly-Clark Worldwide, Inc. (“KCW”) (Appeal Brief, filed 18 May 2010 (“Br.”), 1.) 2 Office action mailed 18 November 2009 (“Final Rejection”; cited as “FR”). 3 Contrary to the Examiner (FR 1, Ans. 2) and KCW (Br. 2), copending claims 15-18 are not rejected. (See FR 2, l. 13, withdrawing the rejection in view of Datta and other references.) Appeal 2011-002566 Application 11/818,513 3 Specification, “[c]reping the web from the drum compacts the web and can break fiber to fiber bonds which both increases the bulk and softness of the product.” (Id. at ll. 23-25.) The 513 Specification summarizes the disclosed process in in the following words: In general, the present disclosure is directed to the incorporation of an additive composition into a sheet-like product, such as a tissue web. More particularly, the present disclosure is directed to applying an additive composition to a creping surface. The additive composition adheres a base sheet to the creping surface for creping the base sheet from the surface. In addition to adhering the base sheet to the creping surface, the additive composition also transfers to the base sheet in amounts sufficient to increase the basis weight, such as more than 1 % by weight. In this manner, sufficient amounts of the additive composition can be transferred to a sheet in order to improve one or more properties of the base sheet. In addition, during the process, the base sheet can be creped which may also increase the softness and bulk of the base sheet. (Spec. 6, ll. 5-15; emphasis added.) Representative Claim 1 reads: 1. A process for producing a sheet product comprising: applying an additive composition to a moving creping surface, the additive composition comprising a lotion, a debonder, a softener, aloe, vitamin E, an oxidized polyethylene or mixtures thereof; pressing a base sheet against the creping surface after the additive composition has been applied, the additive composition adhering the base sheet to the creping surface; and Appeal 2011-002566 Application 11/818,513 4 removing the base sheet from the creping surface, wherein the additive composition transfers to the base sheet such that the additive composition comprises at least about 1 % of the basis weight of the sheet product. (Claims App., Br. 19 (paragraphing and emphasis added).) Claim 3, reproduced below, will inform our analysis of the scope of claim 1: 3. A process as defined in claim 1, wherein the base sheet is creped from the creping surface. (Id.) The Examiner maintains the following grounds of rejection:4 A. Claims 1, 2, 4, 10, 13, 14, 27 and 28 stand rejected under 35 U.S.C. § 102(a or e) in view of Lindsay.5,6 B. Claims 5-7 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Lindsay and Chen.7 C. Claim 8 stands rejected under 35 U.S.C. § 103(a) in view of Lindsay. D. Claim 9 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Lindsay, Wedel,8 and Smook.9 4 Examiner’s Answer mailed 20 July 2010 (“Ans.”). 5 Jeffrey Dean Lindsay et al., Clothlike Pattern Densified Web, U.S. Patent Application Publication 2005/0045292 A1 (3 March 2005), based on an application filed 2 September 2003 [assigned to Kimberly-Clark Worldwide, Inc.]. 6 The Examiner has withdrawn the rejection of claim 3 as anticipated by Lindsay. (Ans. 3.) 7 Fung-Jou Chen et al., Structural Printing of Absorbent Webs, U.S. Patent Application Publication 2004/0099388 A1 (2004) [assigned to Kimberly- Clark Worldwide, Inc.]. Appeal 2011-002566 Application 11/818,513 5 E. Claims 1, 11, 12, 23-26, and 29 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Lindsay and Luu.10 F. Claims 1-8,10,13,14, 27 and 28 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Chen, Salvucci,11 and Burns.12 G. Claim 9 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Chen, Salvucci, Burns, Wedel, and Smook. H. Claims 11, 12, 23-26, and 29 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Chen, Salvucci, Burns, and Luu. I. Claims 1-14 and 27-29 stand rejected under obviousness-type double patenting in view of claims 1-3, 6-9, 13-16, and 23-33 of Dyer.13 8 Gregory L. Wedel, Insulating Apparatus for Thermally Insulating a Dryer Head, U.S. Patent 4,878,299 (1989). 9 GARY A. SMOOK, HANDBOOK FOR PULP & PAPER TECHNOLOGISTS (Angus Wilde Publications, Inc. 2001) (1992). 10 Phuong V. Luu et al., Substrate Treated with Lotion, U.S. Patent 5,871,763 (1999). 11 Joseph L. Salvucci, Jr., and Peter N. Yiannos, Soft Absorbent Fibrous Sheet Material, U.S. Patent 3,812,000 (1974). (The Examiner and KCW refer to this reference by the second inventor, Yiannos.) 12 Barbara J. Burns et al., Soft Paper Products with Low Lint and Slough, U.S. Patent 6,808,595 B1 (2004) [assigned to Kimberly-Clark Worldwide, Inc.]. 13 Thomas Joseph Dyer et al., Process for Increasing the Basis Weight of Sheet Materials, U.S. Patent 7, 807, 023 B1 (5 October 2010), based on application no. 11/818,504, filed 14 June 2007 [assigned to Kimberly-Clark Worldwide, Inc.]. Appeal 2011-002566 Application 11/818,513 6 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Initially, we note that KCW expressly declines to contest the rejection for obviousness-type double patenting over certain claims of the then pending Application of Dyer, and “agree[s] to submit a terminal disclaimer, if needed, upon a favorable decision from the Board.” (Br. 3 n.1.) Thus, the obviousness double patenting rejection is not before us: only the rejections over prior art are appealed. (Id. at 2.) The claimed invention The claimed invention comprises a first step of applying, to a moving creping surface, an additive composition that comprises at least one of a list of named contents, namely, a lotion, a debonder, a softener, aloe, vitamin E, an oxidized polyethylene, or mixtures of one or more of these substances. Next, a base sheet is then pressed against the creping surface, and the additive composition adheres the base sheet to the creping surface. Finally, the base sheet and at least some of the adhered adhesive composition is removed from the creping surface, such that at least about 1% of the basis weight of the sheet product is the additive composition. In this appeal, the most important conclusion to be drawn from the plain language of claim 1 is that, due to the term “comprising,” the additive composition that is transferred to the base sheet need only contain a finite amount of the named contents. The amount of the named contents, however, need not comprise at least about 1% of the basis weight of the sheet product Appeal 2011-002566 Application 11/818,513 7 as long as “the additive composition transfers to the base sheet such that the additive composition comprises at least about 1 % of the basis weight of the sheet product” as required by claim 1. Rejections A-E, based on Lindsay To be anticipatory, a reference must describe, either expressly or inherently, each and every claim limitation, arranged or combined as required by the claimed invention, and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation. See, e.g., In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). The Examiner finds (FR 5-6; Ans. 4) that Lindsay teaches in paragraph [0094] that the bonding material may be applied to the surface of the Yankee dryer. Lindsay teaches that the application may be by spraying, printing, coating, or other means. (Lindsay 9 [0094].) The Examiner finds further that the amount of bonding material, which the Examiner characterizes as an “adhesive additive composition” transferred to the product sheet may be about 3% or greater. (FR 6, ll. 1-6; Ans. 4, ll. 13-15; both citing, inter alia, Lindsay 13 [0131].) Finally, the Examiner finds (Ans. 4, ll. 17-21) that, when the sheet is not creped from the drum, release agents, including known debonding agents, “may then be applied to the web or the surface of the drum dryer or both, including the use of solutions comprising both adhesive agents and release materials that are applied by spray application.” (Lindsay 15 [0172].) Appeal 2011-002566 Application 11/818,513 8 As the Examiner recognizes, Lindsay teaches applying release agents and debonding agents to the surface of the drum only when the base sheet is to be removed without creping. Thus, the Examiner withdrew the rejection of claim 3, which requires removal with creping. (Ans. 3.) The difficulty with the Examiner’s continued anticipation rejection of claim 1 is, as KCW points out (Br., para. bridging 6-7), that the Examiner has failed to establish a connection between the amounts of bonding material transferred in a creping process, discussed by Lindsay in paragraph [0131], and the amount of release agent or debonding agent, if any, that is transferred to the non-creped sheet in processes described by Lindsay in paragraph [0172]. Thus, the Examiner has failed to show that Lindsay teaches, either expressly or inherently, the transfer of any of the named additive compounds, and particularly the recited debonder, from the Yankee drum to the sheet under non-creping conditions. We therefore REVERSE the rejection for anticipation. The Examiner does not rely on the additional references cited in the obviousness rejections in any way that cures this fundamental defect of Lindsay. Accordingly, we also REVERSE the obviousness rejections based on Lindsay. Rejections F-H, based on Chen Although the Examiner finds that Chen discloses adding adhesive materials in an amount from 8 to 25% by weight of the web (Ans. 9, 1st full para.), the Examiner also finds that “Chen et al[.] does not disclose applying the additive to a moving creping surface or that the additive composition Appeal 2011-002566 Application 11/818,513 9 comprises the claimed [sic] ingredients.” (Id. at 2d full para.) The Examiner finds that Salvucci describes the formation of tissue sheets via application of a binder material to a moving creping surface, but without mention of any of the named additive components. (Id. at 3d and 4th full paras.) Finally, the Examiner finds that Burns discloses that a debonder and a creping adhesive can be applied to a drum and then transferred to a formed web that is separated from the drum by creping. (Id. at para. bridging 9-10.) The Examiner finds further that Chen, Salvucci, and Burns are analogous art “pertaining to additives applied to paper products in a creping process.” (Id. at 10, 1st full para.) The Examiner concludes that it would have been obvious to include a softener or debonder in the additive composition, and to crepe the web from the surface in the process of Chen. (Id.) As KCW argues (Br. 14-15), the Examiner has failed to establish the relevance of Chen, which does not involve moving creping surfaces or creping, to Salvucci and Burns, which do involve creping. Although it appears that the Examiner is trying to demonstrate that the term “additive composition” recited in claim 1 would read on the combination of a debonder or softener with the bonding materials described by Chen, the Examiner has failed to explain why a person having ordinary skill in the art would have made that combination. Put another way, the Examiner has not shown why the routineer would have adapted the teachings of Chen to a process involving moving creping surfaces and creping. Moreover, as KCW argues (id. at 16), the Examiner has not directed our attention to credible evidence that Burns teaches or suggests the transfer of amounts of debonder or the other named materials from a dryer drum to a Appeal 2011-002566 Application 11/818,513 10 base sheet in the amount of more than 1% of the basis weight of the sheet product. Indeed, it is KCW, not the Examiner, who directs our attention to the amounts of debonder transferred from the drum to the sheet. (Burns, col. 17, ll. 34-36; and Table III in col. 18.) According to KCW, that amount (3 lb/MT [metric ton, about 2200 lbs]) of debonder is about eight times less than the amount required by claim 1 (Br. 16), and at least 15 times less than the amount required by claims 2, 13, and 14 (id. at 17). The Examiner does not dispute these estimates. In this regard, we note that Burns adds another 3 lb/MT of debonder “prior to the headbox” [element 10 in Figs. 1 and 2], which supplies paper making stock (suspensions of fibers, also known as “furnish”) to the paper making machine. Thus, at best half of the debonder added to the paper in this example is provided in the way required by the appealed claims. Again, the Examiner has not supported the rejection with substantial evidence in the record. The Examiner’s reliance on the additional references does not cure the deficiencies of Chen, Salvucci, and Burns. C. Order We REVERSE all the appealed prior art rejections. REVERSED bar