SCA HYGIENE PRODUCTS AB

Patent Trials and Appeals BoardNov 19, 2021

2021004828 (P.T.A.B. Nov. 19, 2021)

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. 15/741,368 01/02/2018 Lisa PALMQVIST 1018798-000903 7865 105718 7590 11/19/2021 ESSITY HYGIENE AND HEALTH AKTIEBOLAG c/o Buchanan Ingersoll & Rooney, PC 1737 King Street, Suite 500 Alexandria, VA 22314 EXAMINER NGO, MEAGAN N ART UNIT PAPER NUMBER 3781 NOTIFICATION DATE DELIVERY MODE 11/19/2021 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LISA PALMQVIST and ANNA KNÖS ____________ Appeal 2021-004828 Application 15/741,368 Technology Center 3700 ____________ Before STEFAN STAICOVICI, EDWARD A. BROWN, and JAMES P. CALVE, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1–20. Appellant’s representative presented oral argument on November 8, 2021. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Essity Hygiene and Health Aktiebolag as the real party in interest. Appeal Br. i. Appeal 2021-004828 Application 15/741,368 2 CLAIMS Claims 1–14 and 16–18 are directed to a method of applying a skin beneficial agent to an absorbent article, and claims 15, 19, and 20 are directed to an absorbent article. Claims 1 and 15 are independent. Appeal Br. (Claims App.). Claim 1 is illustrative: 1. A method of applying a skin beneficial agent to an absorbent article comprising a topsheet layer having a body facing surface and a garment facing surface, the article having a longitudinal front portion, a longitudinal back portion and a crotch portion located between the front and the back portion, comprising: printing with an in-line synchronized print technique, a water based ink composition comprising a binder and the skin beneficial agent that is microencapsulated on the article, each layer of the absorbent article having a garment facing surface and a body facing surface, and the ink being applied to any of said surfaces, the skin beneficial agent being at least a partly hydrophobic or lipophilic substance or additive, and the skin beneficial agent being microencapsulated in a microcapsule material being water-insoluble at 20°C. Id. REJECTIONS Claims 1–5, 8, and 11–20 are rejected under 35 U.S.C. § 103 as being unpatentable over Krzysik (US 6,756,520 B1, issued June 29, 2004), Arizti (US 2015/0282997 A1, published Oct. 8, 2015), and Hancock (US 2016/0213528 A1, published July 28, 2016). Final Act. 2. Claims 6 and 7 are rejected under 35 U.S.C. § 103 as being unpatentable over Krzysik, Arizti, Hancock, and Ehrnsperger (US 2015/0080826 A1, published Mar. 19, 2015). Final Act. 8. Appeal 2021-004828 Application 15/741,368 3 Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Krzysik, Arizti, Hancock, and Eilender (US 4,959,059, issued Sept. 25, 1990). Final Act. 9. Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over Krzysik, Arizti, and Hancock, as evidenced by the Polydimethylsiloxane Material Safety Data Sheet. Final Act. 10. ANALYSIS Claims 1–5, 8, and 11–20 over Krzysik, Arizti, and Hancock Claims 1–5, 8, and 11–14 The Examiner finds that Krzysik discloses a method of applying a skin beneficial agent to an absorbent article comprising most limitations of claim 1. Final Act. 2–3. More particularly, the Examiner finds that Krzysik discloses a skin beneficial agent (dimethicone) that is microencapsulated on the absorbent article, but finds that Krzysik does not disclose that the skin beneficial agent is microencapsulated in a microcapsule material that is water-insoluble at 20°C, as claimed. Id. at 3 (citing Krzysik, col. 25, l. 58– col. 26, l. 8). The Examiner also finds that Krzysik discloses an in-line print technique, but does not disclose that the technique is a synchronized print technique, as claimed. Id. (citing Krzysik, col. 30, ll. 10–21). The Examiner finds that Arizti discloses an absorbent article comprising a topsheet with discrete zones that comprise a chemical treatment. Final Act. 3 (citing Arizti ¶ 158, Fig. 22). The Examiner finds that Arizti teaches chemical treatments that comprise printing a beneficial skin agent (lotion) on the substrate, and thus, finds that Arizti suggests a synchronized print technique. Id. (citing Arizti ¶ 76). The Examiner Appeal 2021-004828 Application 15/741,368 4 concludes that it would have been obvious to one of ordinary skill in the art to modify Krzysik’s in-line print technique to be synchronized, as suggested by Arizti, to “create discrete zones where it would be desirable to apply a skin beneficial agent.” Id. The Examiner further relies on Hancock as teaching a microencapsulated beneficial skin agent for use in an absorbent article, wherein the microcapsule material is water-insoluble at 20°C (e.g., wax). Final Act. 3 (citing Hancock ¶¶ 28, 94). The Examiner concludes that it would have been obvious to a skilled artisan to modify Krzysik’s microencapsulated skin beneficial agent to be microencapsulated in Hancock’s microcapsule material. Id. The Examiner reasons that this modification “may improve the transfer of the agent to the skin of the wearer.” Id. (citing Hancock ¶ 28). Appellant contests the rejection for several reasons. Appellant first asserts that Hancock does not teach that the encapsulating material is water- insoluble at 20°C. Appeal Br. 3. Appellant contends that paragraph 28 of Hancock “refers to a solidifying agent as wax for a diaper, [and] relates to the embodiment of Figure 1.” Id. (bold face omitted). Appellant also contends that paragraph 28 “states that the solidifying agent can be a thin layer of wax or a wax-like substance,” but “[t]here is no discussion in paragraph [28] that the solidifying agent is used to encapsulate the hydrophobic composition.” Id. (bold face omitted). Appellant acknowledges that paragraph 94 of Hancock refers to encapsulating the topical composition with a solidifying agent. Appeal Br. 4. Appellant asserts, however, that there is no discussion of using wax for encapsulation, “[a]nd, more importantly, in the discussion of encapsulating, Appeal 2021-004828 Application 15/741,368 5 there is no reference to a wax or wax-like substance.” Id. (bold face omitted). Appellant adds that “there is no teaching in Hancock that wax would be suitable for encapsulation or microencapsulation.” Id. The Examiner responds that Hancock teaches that wax or a wax-like substance is used as the solidifying agent, and that the solidifying agent encapsulates the topical composition. Ans. 3 (citing Hancock ¶¶ 28, 94). The Examiner determines that this disclosure means the topical composition can be encapsulated in wax or a wax-like substance. Id. Appellant’s first argument is unpersuasive. Hancock discloses that the topical layer can include dimethicone. See Hancock ¶ 46. Appellant’s Specification discloses that the skin beneficial agent may be dimethicone. See Spec. 4, ll. 9–11.2 Paragraph 28 of Hancock discloses that the “topical layer,” also referred to as a “hydrophobic composition,” can include a topical composition and a solidifying agent, which can be wax or a wax-like substance. Paragraph 28 does not explicitly describe that the solidifying agent encapsulates the topical composition. However, Hancock broadly describes that “there are many references to a topical composition. Any such reference could also include the topical composition . . . encapsulated by a solidifying agent.” See Hancock ¶ 108 (emphasis added). Consistent with this broad description, the hydrophobic composition used in the embodiment of Figure 1 of Hancock could be encapsulated by a solidifying agent. Indeed, paragraph 94 of Hancock discloses exemplary embodiments wherein the solidifying agent encapsulates the topical composition. Paragraph 94 2 Herein, we refer to the Substitute Specification filed on January 2, 2018 as the “Specification” or “Spec.” Appeal 2021-004828 Application 15/741,368 6 does not explicitly describe the composition of the solidifying agent used to encapsulate the topical composition. Hancock broadly discloses that the topical layer can include solidifying agents, such as multiple types of waxes, butters, and zinc oxide. See Hancock ¶ 49. Hancock does not appear to disclose that any of these substances would be unsuitable for use as an encapsulating material for the topical composition. Although neither paragraph 94 nor 108 of Hancock explicitly describes the solidifying agent used to encapsulate the topical composition as being, for example, a wax, an Examiner is not required to “seek out precise teachings directed to the specific subject matter of the challenged claim.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, in an obviousness analysis, an Examiner can consider not only the express disclosures of the references, but also the “inferences and creative steps that a person of ordinary skill in the art would employ.” Id. Under 35 U.S.C. § 103, a prior art reference “must be considered not only for what it expressly teaches, but also for what it fairly suggests.” In re Burckel, 592 F.2d 1175, 1179 (C.C.P.A. 1979). Here, in light of Hancock’s broad disclosures that waxes and wax-like substances can be used as a solidifying agent in the topical layer, and solidifying agents can be used to encapsulate topical compositions, we are unpersuaded that Hancock fails to either implicitly disclose this use, or fairly suggest it. Second, Appellant contends that there is no reason to combine Hancock and Krzysik. Appeal Br. 5. Regarding the Examiner’s stated rationale for this combination, Appellant asserts, “Hancock does not indicate that encapsulating the topical composition is done for the purpose of improving the transfer of the agent to the wearer’s skin.” Id. Appellant also Appeal 2021-004828 Application 15/741,368 7 asserts, “Krzysik teaches a composition that primarily includes a hydrophilic solvent and a polyethylene glycol, along with a microencapsulated agent, such as dimethicone. Krzysik teaches that ‘. . . the high molecular weight polyethylene glycols provide a tackiness to the hydrophilic lotion composition that improves transfer to the skin of the wearer.’” Id. (citing Krzysik, col. 5, ll. 1–25. Thus, Appellant contends, “Krzysik already provides agents to ensure transfer to the skin. Moreover, the microencapsulated agent of Krzysik is already an emollient/skin protectant.” Id. (citing Krzysik, col. 6, l. 60–col. 7, l. 10). Appellant contends that a skilled artisan would have no reason to replace Krzysik’s emollient/skin protectant with Hancock’s composition, particularly when Krzysik’s composition already includes compositions specifically designed to ensure transfer to the skin. Id. at 5–6. Appellant also contends that the Examiner does not explain how using wax as taught by Hancock would further improve transfer of the composition to the skin. Id. at 6. In response, the Examiner submits that Hancock teaches that the solidifying agent may improve transfer to the skin of the wearer, and thus, encapsulating Krzysik’s skin beneficial agent in the solidifying agent of Hancock would improve transfer of the skin beneficial agent to the skin of the wearer. Ans. 4. The Examiner states, “even if Krzysik’s inclusion of a hydrophilic solvent and a polyethylene glycol ensures transfer of the skin beneficial agent to the skin, including the solidifying agent of Hancock can further improve transfer and improving transfer of the skin beneficial agent to the skin would still be desirable and advantageous.” Id. (emphasis added). Appeal 2021-004828 Application 15/741,368 8 Appellant’s second argument is also unpersuasive. As explained by the Examiner, the proposed modification does not replace the emollient/skin protectant of Krzysik with Hancock’s composition. Ans. 5. Rather, the Examiner finds that Krzysik discloses compositions that “include the emollient and skin protectant, dimethicone,” and that the dimethicone can be in microencapsulated form; however, the Examiner concedes that Krzysik does not disclose that the microencapsulation material used with dimethicone has the claimed water-insolubility property. See Final Act. 3; Krzysik, col. 25, ll. 58–59, 65–67. The proposed combination therefore utilizes Hancock’s encapsulation material with Krzysik’s dimethicone, but does not replace the dimethicone with Hancock’s composition. Final Act. 3. We are unpersuaded by Appellant that there is no reason to combine Hancock and Krzysik. Appeal Br. 5. As for Appellant’s contention that “Hancock does not indicate that encapsulating the topical composition is done for the purpose of improving the transfer of the agent to the wearer’s skin,” Hancock discloses that the solidifying agent provides this skin transfer improvement. Id.; see Hancock ¶ 28. In other words, this skin transfer effect is a property of the solidifying agent. Accordingly, it is not apparent why using the solidifying agent of Hancock would not provide improved skin transfer when it is used to encapsulate Krzysik’s dimethicone. Furthermore, although Krzysik discloses that “the high molecular weight polyethylene glycols provide a tackiness to the hydrophilic lotion composition that improves transfer to the skin of the wearer,” we are unpersuaded that this tackiness would prevent the microencapsulated dimethicone including Hancock’s solidifying agent from improving skin transfer. Rather, we determine that the Examiner has provided an adequate Appeal 2021-004828 Application 15/741,368 9 reason with rational underpinnings to use Hancock’s solidifying agent as a microencapsulation material in the combination. Third, Appellant contends that Arizti fails to specifically teach that a lotion or skin care agent may be used in printing, but only mentions printing in relation to a dye. Appeal Br. 7. We disagree. Arizti discloses that: The term “chemical treatment”, as used herein, means at least a portion or region of a single or multi-layer substrate that has a compound, composition, or substance applied to at least a portion thereof. Some examples are one or more skin care compositions, surfactants, inks, dyes, pigments, hydrophilic coatings, hydrophobic coatings, lotions, enzyme inhibitors, vitamins, and/or active ingredients. The chemical treatment may be sprayed on, printed on, slot coated, or otherwise applied to the at least a portion or region of the substrate. See Arizti ¶ 76 (emphasis added). Accordingly, Arizti discloses that the chemical treatment may be a lotion and it may be printed, and thus, contradicts Appellant’s contention. For the foregoing reasons, we sustain the rejection of claim 1, and claims 2–5, 8, and 11–14, which depend ultimately from claim 1 and are not argued separately, as being unpatentable over Krzysik, Arizti, and Hancock. Claim 15 Appellant repeats substantially the same arguments as those presented for claim 1. Appeal Br. 7–11. Accordingly, we sustain the rejection of claim 15 as being unpatentable over Krzysik, Arizti, and Hancock for the same reasons as for claim 1. Claim 16 Claim 16 depends from claim 1 and specifies that “the water based ink composition is mixed at ambient temperature.” Appeal Br. (Claims App. 3). Appeal 2021-004828 Application 15/741,368 10 The Examiner finds that Krzysik discloses this limitation. Final Act. 7 (citing Krzysik, col. 30, l. 56–col. 31, l. 16). Appellant contends that the cited portion of Krzysik does not mention ambient temperature, and that Krzysik discloses that the composition solidifies when at ambient temperature, and thus, cannot be mixed at ambient temperature. Appeal Br. 11 (citing Krzysik, col. 30, ll. 28–30). Appellant contends that the disclosure cited by the Examiner makes clear that the solution is mixed while melted. Id. Appellant points out that the Examiner states: while the composition of Krzysik might not be at ambient temperature while mixing is occurring, the step of mixing occurs at ambient temperature as Krzysik does not disclose that the composition is being heated while mixing is occurring. Thus, Krzysik discloses that the composition is mixed at ambient temperature. Id. Appellant submits that “[t]here is no reason to conclude that the composition is mixed at ambient temperature simply because ‘Krzysik does not disclose that the composition is being heated while mixing is occurring.’” Appeal Br. 11. The Examiner responds that “Krzysik makes no mention of agitating the mixture while it is being heated or cooled. Thus, Krzysik discloses that the water based ink composition is mixed at ambient temperature.” Ans. 8 (citing Krzysik, col. 30, l. 62–col. 31, l. 1). Appellant’s contentions are persuasive. We construe claim 16 as requiring the water based ink composition to be at ambient temperature during the mixing. The passage in Krzysik cited by the Examiner does not describe this. See Krzysik, col. 30, l. 56–col. 31, l. 16. In fact, the Examiner appears to acknowledge this omission, stating “the composition of Krzysik might not be at ambient temperature while mixing is occurring.” Final Act. Appeal 2021-004828 Application 15/741,368 11 7 (emphasis added). We agree with Appellant that Krzysik’s lack of disclosure that the composition is heated while mixing occurs does not constitute persuasive evidence that the composition itself is at ambient temperature during this mixing. As the Examiner has not established with sufficient evidence that Krzysik discloses the recited limitation, we do not sustain the rejection of claim 16 as being unpatentable over Krzysik, Arizti, and Hancock. Claims 17–19 Claim 17 depends from claim 1 and recites that “the water based ink composition dries almost instantaneously after application.” Appeal Br. (Claims App. 3). Claims 18 and 19 depend from claims 16 and 15, respectively, and recite similar language as claim 17. Id. The Examiner finds that Krzysik discloses the recited limitations. Final Act. 7–8 (citing Krzysik, col. 30, ll. 22–30). Krzysik discloses, “[d]esirably, resolidification of the composition occurs almost instantaneously, without the need for external cooling devices such as chill rolls.” Krzysik, col. 30, ll. 28–30 (emphasis added). Appellant contends that “[t]o dry something requires a change in moisture content,” whereas “resolidifying requires a phase change from liquid to solid. It does not require a change in moisture content.” Appeal Br. 12. The Examiner responds that Krzysik’s disclosure of almost simultaneous resolidification of the composition “implies that the composition is at least partially dried. The claims do not require that the composition is completely dried almost instantaneously after application nor is ‘dried’ defined in the specification.” Ans. 8. Appeal 2021-004828 Application 15/741,368 12 Appellant’s contention is persuasive. The fact that Krzysik’s composition can resolidify almost simultaneous is not, by itself, sufficient evidence that drying of the composition necessarily also occurs during this time. Nor has the Examiner provided additional evidence to support this finding. Thus, the Examiner has not established by a preponderance of the evidence that Krzysik discloses the recited limitation. Therefore, we do not sustain the rejection of claims 17–19 as being unpatentable over Krzysik, Arizti, and Hancock. Claim 20 Claim 20 depends from claim 1 and recites that “all of the skin beneficial agent in the water based ink composition is encapsulated in the microcapsule material.”3 The Examiner finds that Krzysik discloses this limitation, i.e., “the skin beneficial agent in the water based composition is microencapsulated dimethicone.” Final Act. 8 (citing Krzysik, col. 25, ll. 58–67). Appellant acknowledges that the portion of Krzysik cited by the Examiner discloses encapsulated dimethicone, but contends that PEG (polyethylene glycol) and natural fats are also skin beneficial agents. Appeal Br. 12; Reply Br. 4. Appellant contends that the cited portion of Krzysik does not teach that PEG and natural fats are encapsulated. Id. The Examiner responds that the rejection identifies dimethicone as the skin beneficial agent and Krzysik discloses microencapsulated dimethicone. Ans. 9. The Examiner notes that Krzysik’s composition contains PEG, 3 Claim 20 is directed to “[t]he article according to claim 1.” Appeal Br. (Claims App. 4). As claim 1 is directed to a method, it appears that claim 20 should instead depend from claim 15 or 19. Appeal 2021-004828 Application 15/741,368 13 natural fats, etc., that are not disclosed to be encapsulated, but submits that the skin beneficial agent (i.e., dimethicone) is encapsulated, and thus, Krzysik discloses that all of the skin beneficial agent is encapsulated. Id. As noted above, Appellant states, “Krzysik teaches a composition that primarily includes a hydrophilic solvent and a polyethylene glycol, along with a microencapsulated agent, such as dimethicone.” Appeal Br. 5 (emphasis added). Regarding polyethylene glycol, Appellant’s Specification discloses that polyglycols are suitable binders for the ink composition. See Spec. 4, ll. 27–31. The Specification does not, however, disclose that polyglycols are “skin beneficial agents” in the context of Appellant’s invention. See, e.g., id. at 3, l. 6–4, ll. 1–18. Accordingly, we disagree that Krzysik must disclose that PEG is encapsulated in order to meet claim 20, as construed consistent with Appellant’s Specification. Additionally, Appellant does not identify any disclosure in Krzysik that the composition must include natural fats. Accordingly, we are unpersuaded that the applied combination fails to meet the recited limitation. Thus, we sustain the rejection of claim 20 as being unpatentable over Krzysik, Arizti, and Hancock. Claims 6 and 7 over Krzysik, Arizti, Hancock, and Ehrnsperger; Claim 9 over Krzysik, Arizti, Hancock, and Eilender; and Claim 10 over Krzysik, Arizti, and Hancock, as evidenced by the Polydimethylsiloxane Material Safety Data Sheet Appellant does not present separate argument against the rejections of claims 6, 7, 9, and 10. Accordingly, we sustain the rejections of these claims for the same reasons as discussed for parent claim 1. Appeal 2021-004828 Application 15/741,368 14 CONCLUSION We affirm the Examiner’s rejections of claims 1–15 and 20, and reverse the rejection of claims 16–19. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 8, 11–20 103 Krzysik, Arizti, Hancock 1–5, 8, 11–15, 20 16–19 6, 7 103 Krzysik, Arizti, Hancock, Ehrnsperger 6, 7 9 103 Krzysik, Arizti, Hancock, Eilender 9 10 103 Krzysik, Arizti, Hancock, Polydimethylsiloxane Material Safety Data Sheet 10 Overall Outcome 1–15, 20 16–19 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)(1)(iv). AFFIRMED IN PART