Ex Parte Hasenoehrl et al

Patent Trial and Appeal BoardApr 30, 2013

10737640 (P.T.A.B. Apr. 30, 2013)

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. 10/737,640 12/16/2003 Erik John Hasenoehrl 9234M 6409 23368 7590 04/30/2013 DINSMORE & SHOHL LLP FIFTH THIRD CENTER, ONE SOUTH MAIN STREET SUITE 1300 DAYTON, OH 45402-2023 EXAMINER JOHNSON, JENNA LEIGH ART UNIT PAPER NUMBER 1789 MAIL DATE DELIVERY MODE 04/30/2013 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 ERIK JOHN HASENOEHRL, EDWARD DEWEY SMITH III, DANIEL BURTON SEARS, STEVEN KIRK HEDGES, ROBERT HAINES TURNER, JOHN JOSEPH CURRO, and DANIEL CHARLES PECK ________________ Appeal 2011-013581 Application 10/737,640 Technology Center 1700 ________________ Before CHARLES F. WARREN, TERRY J. OWENS, and RICHARD TORCZON, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL Appeal 2011-013581 Application 10/737,640 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-20 and 44. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we REVERSE. The Invention Appellants claim a disposable personal care article and a kit for a personal care article. Claim 1 is representative of the present application’s claims and is reproduced here: 1. A disposable, personal care article comprising: (A) a spunbond, fibrous nonwoven web having a first surface and a second surface and comprising: (i) a first region; (ii) a plurality of discrete integral second regions, the second regions having a discontinuity exhibiting a linear orientation and a deformation comprising a plurality of tufted, looped fibers integral with, but extending from, the first region, wherein the deformation defines a void area disposed between a base and a distal end of the deformation, the void area being wider at the distal end than the base of the deformation; and (B) a personal care composition. The claimed articles are made by feeding precursor nonwoven webs through rolls (Spec., p. 16, ll. 19-21 and Fig. 7, items 102 and 104) having toothed and notched regions (Spec., p. 16, ll. 1-3 and Fig. 7, item 110). As the web goes through the teeth and grooves of the rolls, the teeth push or punch through the web to form the deformations (Spec., p. 16, ll. 27-30). The teeth have certain dimensions such as tooth height, tooth length, tooth- to-tooth spacing, and depth of engagement (Spec., p. 17, l. 14 to p. 18, l. 18). Appeal 2011-013581 Application 10/737,640 3 The rate at which the web is processed through the rotating rolls impacts the structure of the deformations (Spec., p. 18, ll. 19-21). At relatively lower processing rates, the webs have uniform, looped, aligned fibers in the deformations, whereas at higher processing rates the webs have more broken fibers and a “mat” of fibers at the top of the deformations (Spec., p. 18, l. 21 to p. 19, l. 19; Figs. 11 and 12). Other parameters such as fiber type, basis weight of the web, and processing temperature can affect the fiber orientation (such as the presence of mats) at the distal portion of the deformations (Spec., p. 20, ll. 11-14). The extension of the looped fibers is accompanied by a reduction in the cross-sectional dimension of the fibers due to plastic deformation of the fibers (Spec. p. 15, ll. 7-9). Appellants believe that the reduction in the fiber’s diameter contributes to the perceived softness of the web, and that the softness can be comparable to cotton terry cloth (Spec. p. 15, ll. 13-16). The References Chappell1 US 5,518,801 May 21, 1996 Lorenzi US 2001/0018068 A1 Aug. 30, 2001 Dobrin US 6,383,431 B1 May 7, 2002 Pung WO 99/25318 A1 May 27, 1999 The Rejections Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dobrin (Ans. 4). 1 Chappell is incorporated by reference into Dobrin (Dobrin, col. 11, ll. 57- 61). Although we discuss Chappell briefly here regarding how a person having ordinary skill in the art would have understood Dobrin, Chappell is not relied upon by the examiner. Appeal 2011-013581 Application 10/737,640 4 Claims 8-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dobrin in view of Pung (Ans. 6). Claim 44 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Dobrin in view of Lorenzi (Ans. 7). OPINION The Rejection over Dobrin We need to address only sole independent claim among claims 1-7, i.e., claim 1. That claim requires a fibrous nonwoven web (section (A) of claim 1; Fig. 1, item 1) having a plurality of regions with deformations (section (A)(ii) of claim 1; Fig. 1, item 6). The deformations comprise a plurality of tufted, looped fibers (Figs. 2 and 3, item 8), and the deformations define a void area (Figs. 2 and 3, item 10) that is wider at the distal end (Fig. 3, item 3) than it is at the base end (Fig. 3, item 5). Dobrin describes a method for the modification of nonwoven fibrous webs which may be used for absorbent articles such as disposable diapers (Dobrin, abstract). The nonwoven webs are fed through rolls (Dobrin, col. 10, ll. 31-51 and Fig. 6, items 70 and 72) having toothed and notched regions (Dobrin, Fig. 6, items 74 and 78). The portions of the web that pass between the toothed regions are deformed or stretched beyond the elastic limit of the nonwoven material, resulting in a plurality of raised, rib-like elements (Dobrin, col. 10, ll. 61-65). The teeth can be in the form of thin fins of substantially rectangular cross-section, or they can have a triangular or an inverted V-shape (Dobrin, col. 7, ll. 45-55). The raised, rib-like elements have a major axis that is substantially parallel to the longitudinal axis of the nonwoven web and a minor axis that Appeal 2011-013581 Application 10/737,640 5 is substantially parallel to the transverse axis of the web (Dobrin, col. 11, ll. 42-46; Figs. 8 and 9, item 90). The first axis is at least equal to and preferably longer than the second axis (Dobrin, col. 11, ll. 46-49), although the dimensions of the rib-like elements can be varied, if desired (Dobrin, col. 11, ll. 56-57). Dobrin additionally states (Dobrin, col. 11, ll. 57-61) that a more detailed description of the webs is provided in U.S. Patent No. 5,518,801 to Chappell which is incorporated therein by reference. Chappell describes a web material that is modified to contain raised, rib-like elements (Chappell, col. 3, ll. 15-30; Fig. 5A). The webs may be modified by a press having intermeshing teeth or having intermeshing teeth and grooves (Chappell, col. 19, l. 60 to col. 20, l. 51; Figs. 32-35) or by rolls having toothed and notched regions (Chappell, col. 20, l. 62 to col. 21, l. 18; Fig. 36). In the examples of Chappell, a film is pressed between plates with teeth having a substantially triangular cross-section (Chappell, col. 22, l. 23 to col. 23, l. 7). In one embodiment, a cross-section of a modified web is shown to contain deformations having a loop-like structure (Chappell, Fig. 38). Chappell does not specifically describe what material is illustrated in this figure or how the material is made. Dobrin fails to describe a loop wherein the distal end of the loop is wider than the base of the loop, as is presently recited in claim 1 (Ans. 4). The examiner finds that Dobrin discloses the claimed invention except for the loops that have a distal end that is wider than the base (Ans. 5). Appeal 2011-013581 Application 10/737,640 6 The examiner states that “[i]t would have been an obvious matter of design choice to modify the shape, since such a modification would have involved a mere change in the shape of a component.” (Ans. 5). The examiner cites In re Dailey and Eilers, 357 F.2d 669 (C.C.P.A. 1966) to support the position that a change of shape is ordinarily within the level of skill in the art. See id. It is therefore the examiner’s position that the modification of the shape of the rib elements of the webs of Dobrin is an obvious matter of design choice. Appellants argue generally that Dobrin does not disclose, teach, or suggest a deformation or a void area as recited in the claims (Br. 3). Appellants further argue that while the rejection asserts the obviousness of modifying the shape of the fins, Dobrin would not have led one skilled in the art to modify the fins to have a distal end wider than the base (Br. 4-5). We are not persuaded by the examiner’s argument that the change in the shape of Dobrin’s rib elements to the presently recited deformations is an obvious matter of design choice. The present specification provides evidence that the structure of the deformations is affected by a variety of processing conditions, including the fiber type, the basis weight of the web, the processing temperature, and in particular, the rate at which the web is processed through the rotating rolls (Spec., pp. 18-20; Figs. 11 and 12). Additionally, the present specification suggests that the structure of the deformations affects the perceived softness of the web (Spec. p. 15, ll. 13- 16). The examiner does not provide any technical reasoning or citations to the prior art to establish that it would have been obvious to control any of these conditions or other conditions in order to control the structure of the Appeal 2011-013581 Application 10/737,640 7 deformations. Because the structure of the deformations is affected by a variety of processing conditions which must be chosen by the practitioner, and because the structure of the deformations has a material effect on the structure and properties of the claimed articles, the change in the structure of the deformations of the webs of Dobrin is more than a mere design choice. We are also unpersuaded by the examiner’s argument that changes in shape are obvious because they are within the ordinary level of skill in the art. The Supreme Court, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), stated that “rejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In the present case, while the examiner asserts that changes in shape are generally recognized as being within the ordinary level of skill in the art, a mere statement that a modification of the prior art would have been within the ordinary level of skill in the art does not amount to an objective reason to make such a modification. Accordingly, the examiner’s position (i.e. that changing the shape of Dobrin’s rib elements to the presently recited looped deformations is within the ordinary level of skill in the art) does not provide any articulated reasoning with some rational underpinning as to why the person of ordinary skill would have made such a change to the shape of Dobrin’s rib elements. The examiner additionally finds that the fins used to produce the webs can be different shapes, and the examiner finds that the sizes of the fins and grooves can be modified (Ans. 4-5). The examiner finds that the dimensions Appeal 2011-013581 Application 10/737,640 8 of the rib elements can be varied, producing different physical properties (Ans. 5). The examiner additionally finds that Dobrin teaches that the processing of the web can be modified to optimize the physical properties of the fabric. See id. The examiner concludes that “it would have been obvious[] to optimize the shape of the tufts [] so that the distal end of the loop is wider than the base of the loop to produce the desired physical properties in the tufted web.” Id. The examiner additionally states that “it would have been obvious to one having ordinary skill in the art to modify the shape of the rib elements, by producing the elements with a more rectangular shaped fin . . . to create a projection wherein the distal end of the loop is wider than the base of the loop.” Id. The examiner states in the rejection that it would have been obvious to produce elements with a more rectangularly shaped fin, such that the distal ends of the resulting loops are wider than the bases of the loops (Ans. 5). It therefore appears to be the examiner’s position that the shape of the deformations is merely a consequence of the shape of the fins employed on the rolls that process the nonwoven fabric. The examiner has thus taken an additional position that it would have been obvious to modify the shape of the fins that are used to produce the deformations on the nonwoven web. We therefore consider the examiner’s position to be that it would have been obvious to modify the shape of the fins that are used to make webs of Dobrin and that the resulting structure of the deformations of the webs of Dobrin is merely a consequence of the shape of the fins that are used to produce the deformations. Appeal 2011-013581 Application 10/737,640 9 The examiner has not pointed to any technical reasoning or any portion of Dobrin to establish what shape the fins would need to have in order to produce the presently recited deformations having a distal end that is wider than the base. Because the examiner has not provided any technical reasoning or citations to the prior art to establish that the use of a more rectangularly shaped fin would necessarily produce deformations that have a distal end that is wider than the base, we are unpersuaded that the presently recited deformations are obvious as merely a consequence of making Dobrin’s fins more rectangularly shaped. The examiner further argues that Dobrin teaches fin shapes that are very similar to those used by Appellants, and thus one of ordinary skill would not need to choose a fin shape which is not taught by Dobrin (Ans. 7). The examiner argues that the person of ordinary skill would instead only have to control how much the fins stretch the nonwoven fabric. The examiner further argues that Dobrin teaches that the web may be modified in the Z direction (i.e. the direction extending out of the plane of the web) (Ans. 8). The examiner argues that in light of Dobrin, one of ordinary skill would have the skill to make modifications to the shape of the loops, and that changes of shape are generally recognized as being within the ordinary level of skill in the art. See id. The examiner’s argument that the person of ordinary skill would only have to control how much the fins stretch the nonwoven fabric appears to differ from the positions taken in the rejection that it would have been obvious to modify the shape of the ribs by producing the elements with more rectangularly shaped fins (Ans. 5) and that the modification of the shape of Appeal 2011-013581 Application 10/737,640 10 the rib elements of the webs of Dobrin is an obvious matter of design choice. See id. For this reason, it appears to us that the examiner has ultimately set forth a third position that it would have been obvious to control how much the fins stretch the fabric. While the examiner argues that the fins of Dobrin are “very similar” to those of the present invention (Ans. 7), the examiner has not established that fins of such similarity would lead to the production of webs having deformations of the same looped shape as the deformations in the webs of the present invention. That is, the examiner has not established any nexus between the shape of the fins used by Dobrin and the resulting shape of the raised, rib-like elements. Because of this, the examiner has not established that the use of the fins described or suggested by Dobrin, no matter how similar they are to those used in the present invention, would produce deformations of the same looped shape as those of the present invention. To the contrary, as we noted above, the present specification provides evidence that the shape of the deformations is affected by parameters other than the shape of the fins, such as the fiber type, the basis weight of the web, the processing temperature, and in particular, the rate at which the web is processed through the rotating rolls. Because the present deformations are affected by parameters other than the shape of the fins, the examiner’s finding of similarity of among the fins of Dobrin and those of the present invention (and the examiner’s conclusion of obviousness regarding making the fins of Dobrin more rectangularly shaped) does not amount to a reason that the deformations produced from the fins of Dobrin would possess the presently recited looped shape. Because the examiner does not provide any Appeal 2011-013581 Application 10/737,640 11 technical reasoning or citations to the prior art to establish that merely controlling how much the fins stretch the nonwoven fabric would result in deformations having a distal end that is wider than the base, we are unpersuaded that it would have been obvious to produce the presently recited deformations that have a distal end that is wider than the base by merely controlling how much the fins stretch the nonwoven fabric. For these reasons, we reverse the rejection of claims 1-7 over Dobrin. The Rejections over Dobrin in view of Pung and over Dobrin in view of Lorenzi The rejections of claims 8-20 and 44 do not rely upon the references to Pung and Lorenzi for any disclosure that remedies the deficiencies of Dobrin (Ans. 6-7). Because we reverse the rejection of base claim 1 over Dobrin, we REVERSE the rejection of claims 8-20 over Dobrin in view of Pung. We reverse the rejection of claim 44 over Dobrin in view of Lorenzi for the reasons given above regarding claim 1. DECISION/ORDER We reverse the rejection of claims 1-7 under 35 U.S.C. § 103(a) as being unpatentable over Dobrin, the rejection of claims 8-20 under 35 U.S.C. § 103(a) as being unpatentable over Dobrin in view of Pung, and the rejection of claim 44 under 35 U.S.C. § 103(a) as being unpatentable over Dobrin in view of Lorenzi. It is ordered that the Examiner’s decision is REVERSED. REVERSED kmm