Ex Parte Wibaux et al

Patent Trials and Appeals Board

Mar 14, 2019

12866750 - (D) (P.T.A.B. Mar. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/866,750 09/02/2010
81029 7590 03/18/2019
A very Dennison Corporation
Brian G. Bembenick
8080 Norton Parkway, 22D
Mentor, OH 44060
FIRST NAMED INVENTOR
Anne Wibaux
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.
4437-US; AD2010000586 4182
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
03/18/2019 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):
patentdocket@averydennison.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNE WIBAUX, KRISTINE DHAEZE,
and DA VY VON BA VEL 1
Appeal2018-000124
Application 12/866, 7 50
Technology Center 1600
Before RICHARD M. LEBOVITZ, TA WEN CHANG, and RY ANH.
FLAX, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to an adhesive composite
comprising a breathable polymeric backing layer and a fluid absorbing
adhesive layer. The Examiner rejected the claims as obvious under
35 U.S.C. § 103. Pursuant to 35 U.S.C. § 134, Appellants appeal the
Examiner's determination that the claims are unpatentable. We have
jurisdiction for the appeal under 35 U.S.C. § 6(b ). The Examiner's decision
is affirmed.
1 The Appeal Brief ("Br." entered Mar. 15, 2017) lists Avery Dennison
Corporation as the real party in interest. Br. 1.
Appeal2018-000124
Application 12/866,750
STATEMENT OF THE CASE
The Examiner finally rejected claims 1-3, 5-8, 10, 11, 13-16, and 18-
32 as follows:
Claim 1-3, 5-7, 10, and 21-24 under 35 U.S.C. § I03(a) as obvious in
view of Lipman (US 2004/0241215 Al, published Dec. 2, 2004) and Hart
(US 2006/0269591 Al, published Nov. 30, 2006). Ans. 2.
Claims 8, 11, 13-16, 18-20, and 25-32 under 35 U.S.C. § I03(a) as
obvious in view of Lipman, Hart, and Lykke (2004/0065232 Al, published
Apr. 8, 2004). Ans. 2.
Claim 1, which is illustrative of the rejected claims, is reproduced
below:
1. An adhesive composite comprising:
a breathable polymeric backing layer;
a fluid absorbing adhesive layer comprising (a) 20-80%
by weight of a solvent-based acrylic pressure sensitive adhesive
and (b) 20-80% by weight of at least one super-absorbent
polymer or hydrocolloid, wherein the thickness of the adhesive
layer is about 60 µm to about 150 µm, and the overall adhesive
composite has a fluid handling capacity of at least 2000 g/m2/24
hours and a moisture vapor transmission rate of at least 1100
g/m2/24 hours.
REJECTION BASED ON LIPMAN AND HART
The Examiner found that Lipman discloses an occlusive top layer of
an occlusive dressing that meets the limitations of the claimed "breathable
polymeric backing layer." Final Act. 3--4. The Examiner also found that
Lipman describes an adhesive layer comprising overlapping amounts of the
claimed components (a) and (b). Id. The Examiner found that Lipman does
not disclose the recited thickness of the adhesive layer, but found that Hart
teaches that adhesive layers of the claimed thickness were known in the art
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Appeal2018-000124
Application 12/866,750
at the time of the invention, making such thickness obvious to utilize in
Lipman's dressing. Id. at 4.
"breathable polymeric backing layer"
The Examiner found that Lipman' s occlusive top layer (Lipman ,r 71)
meets the claimed breathable "polymeric back layer." Final Act. 3--4. The
Examiner also found that it has openings which make it breathable. Id. at 4.
Appellants argue that the "moisture vapor transmission rate" (MVTR)
of the entire Lipman dressing "would be minimal, if any, in order to provide
moisture retention to the wound." Br. 12. Appellants further cite the
disclosure in paragraph 31 of Lipman to support this argument: "The
occlusive dressings are designed to be highly absorbent, while at the same
time providing protection, covering and moisture retention to the wound."
Appellants contend that "[ u ]unlike Lipman, the Current Application is not
occlusive. Not only does the breathable backing layer (as shown in all
figures) allow for moisture vapor transmission," but the adhesive also allows
for moisture vapor transmission. Br. 13.
Appellants do not provide adequate evidence to persuasively
demonstrate error in the Examiner's rejection. Lipman teaches that "the
occlusive top layer possesses at least some moisture vapor transmission
capability, that may also be referred to as breathability." Lipman ,r 75. The
claimed polymeric backing layer does not require a specific amount of
breathability. Therefore, as long as Lipman's top layer has some moisture
vapor transmission capability, which it does, the claim limitation is met.
Further, Lipman teaches that the MVTR of the occlusive top layer
"may be as high as 4000 g/m2 /24 hours or greater" (Lipman ,r 71 ), a value
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Appeal2018-000124
Application 12/866,750
that meets the claimed value of 1100 g/m2/24 hours for the entire composite.
Lipman also discloses that "[i]n another embodiment, perforations or small
apertures in the occlusive top layer facilitate a high rate moisture vapor
transmission." Lipman ,r 74.
Thus, while we recognize that Lipman characterizes the top layer as
"occlusive," the publication also describes it as having holes to facilitate
vapor transmission, and a MTVR value in some embodiments that meets the
claim limitation for the entire composite. In sum, Appellants have not
distinguished the claimed backing layer from Lipman' s top layer. 2
"fluid handling capacity"
Claim 1 recites that "the overall adhesive composite has a fluid
handling capacity of at least 2000 g/m2/24 hours and a moisture vapor
transmission rate of at least 1100 g/m2/24 hours." The Examiner found that
Lipman describes two occlusive dressings with "a moisture absorbing
capacity" greater than 3000 g/m2/24 hours and a second dressing in a range
of 300-5000 g/m2/24 hours (Lipman ,r,r 9, 61, 62) and an occlusive top layer
having a moisture vapor transmission rate (MVTR) in the range of about 100
to 2000 g/m2/24 hours (Lipman ,r 71 ). Final Act. 3--4.
Appellants contend that "Lipman does not disclose an adhesive
composite with a moisture vapor transmission rate of at least 1100 g/m2/24
2 We note that some of the materials that Lipman discloses for the occlusive
layer are the same as those disclosed in Appellants' Specification for the
claimed breathable polymeric backing layer. Spec. ,r 30 discloses the
backing layer as "a polyurethane film"; Lipman at ,r,r 76, 77 discloses the top
layer as made of polyurethanes.
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Appeal2018-000124
Application 12/866,750
hours" as required by claim 1. Br. 11. Appellants state that the Examiner
"has mistakenly equated the Fluid Handling Capacity in the Current
Application to the Moisture Absorbing Capacity in Lipman." Id.
Appellants state that the "moisture absorbing capacity" described in
Lipman is a measure of the ability to absorb water and other liquids over
time. Br. 13-14. In contrast, Appellants state that the "fluid handling
capacity" recited in the claims "is a measurement of the combined ability of
the composite to take up moisture and to evaporate it to the environment."
Br. 15.
This argument does not persuade us that the Examiner erred. While it
appears from Appellants' argument that the moisture absorbing capacity3 is
different from the claimed fluid handling capacity, Appellants also appear to
be claiming just a different property of the same material and composition.
"The discovery of a previously unappreciated property of a prior art
3 The Specification discloses that the static absorption of its composite is
"greater than 600 g/m2/24 hours, or at least about 700 g/m2/24 hours, or at
least about 850 g/m2/24 hours, or at least about 1000 g/m2/24 hours." Spec.
,r 16. See also claim 10: "The adhesive composite of claim 1 wherein a
static absorption of the composite is greater than about 600 g/m2/24 hours."
The Specification defines the static absorption as "(W 4-WI) x 1000" or the
combined weight of the composite sample after absorbing liquid plus the cup
holding the sample (W 4) minus the weight of the sample and cup prior to
absorbing liquid (WI). Spec. ,r 44. Thus, W4-Wl is the weight of the
absorbed liquid. The static absorption value appears to be the same as the
"moisture absorbing capacity" (which Appellants state is a "measurement of
the ability to absorb water and other liquids" (Br. 13)) because both measure
the absorption of a composite sample (albeit by different methods). The
moisture absorbing capacity disclosed in Lipman of "300 g/m2/24 hours to
about 5000 g/m2/24 hours" therefore overlaps with the range described in the
Specification for the static absorption of its composite.
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Appeal2018-000124
Application 12/866,750
composition, or of a scientific explanation for the prior art's functioning,
does not render the old composition patentably new to the discoverer." Atlas
Powder Co. v. !REGO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999).
Specifically, Appellants did not challenge the Examiner's finding that
Lipman describes a fluid absorbing layer comprising (a) a solvent-based
acrylic pressure sensitive adhesive and (b) at least one super-absorbent
polymer or hydrocolloid in a weight percent that overlaps or falls within the
claimed range. See Final Act. 3, 5; Lipman ,r,r 8, 36, 40, 53, 58. Because
the compositions have the same components in the same amounts, the
Examiner reasonably found they would have the same properties.
Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
See In re Ludtke, supra. Whether the rejection is based on
"inherency" under 35 U.S.C. § 102, on "prima facie
obviousness" under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced by
the PTO's inability to manufacture products or to obtain and
compare prior art products. See In re Brown, 459 F.2d 531, 59
CCPA 1036 (1972).
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
The Examiner's finding is also reasonable and supported because the
claimed composite has a "fluid absorbing adhesive layer" and Lipman
characterizes the purpose of its dressings as being "highly absorbent" to
absorb wound exudate (Lipman ,r 31 ).
Appellants did not provide adequate evidence to persuasively rebut
the Examiner's determination that Lipman's dressing has the same
properties as claimed.
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Appeal2018-000124
Application 12/866,750
Summary
For the foregoing reasons, the obviousness rejection of claim 1 is
affirmed. Claim 2, 3, 5-7, 10, and 21-24 were not argued separately and fall
with claim 10. 37 C.F.R. § 4I.37(c)(l)(iv).
REJECTION BASED ON LIPMAN, HART, AND LYKKE
Appellants did not provide separate arguments over the rejection of
claims 8, 11, 13-16, 18-20, and 25-32 based on Lipman, Hart, and Lykke.
The rejection is, therefore, affirmed for the reasons and rationale as set forth
by the Examiner. Final Act. 6-7. See also 37 C.F.R. § 4I.37(c)(l)(iv).
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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