Ex Parte Abba et al

Board of Patent Appeals and Interferences

Jul 22, 2009

10029111 (B.P.A.I. Jul. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RODNEY L. ABBA, ROBERT J. MAKOLIN,
DAVID J. NICKEL, CHARLES W. COLMAN,
JEFFREY DEAN LINDSAY,
FUNG-JOU CHEN, and JULIE MARIE BEDNARZ
____________

Appeal 2009-003890
Application 10/029,111
Technology Center 3700
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Decided:1 July 22, 2009
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Before ERIC GRIMES, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as provided for in 37 C.F.R. § 1.304, begins to run from the decided
date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-003890
Application 10/029,111

This is a decision on the Patent Applicants’ appeal from the Patent
Examiner’s rejection of claims 1-47. Jurisdiction for this appeal is under 35
U.S.C. § 6(b). We affirm.
Statement of the Case
The claims are directed to a textured airlaid fibrous web with peaks
and valleys. According to the Specification, the web has improved
absorbent and wicking properties. (Spec. 2: 4-7.) The textured web is
characterized in the Specification as having increased surface area in
comparison to planar webs and therefore more surface area for contact with
liquids. (Id. at 2: 7-10.)
Claims 1-47 stand rejected by the Examiner under 35 U.S.C. § 103(a)
as obvious over Chen2 (WO 98/42289, published Oct. 1, 1998) (Ans.3 5-6).
Claim 1 is representative and reads as follows
1. A textured airlaid fibrous web comprising natural fibers,
synthetic fibers, or mixtures thereof, said airlaid web being
formed on a three-dimensional fabric under sufficient force to
cause the web to conform to the surface of the fabric, the
textured web including a repeating pattern of peaks and valleys,
the textured web having a height that is at least 25% greater
than the average caliper of the web, the airlaid web being
bonded together, wherein the peaks are made of the same
material as the valleys such that the percentage of composition
of material making up the peaks is the same as the percentage
of composition of material making up the valleys.

2 The claims had been rejected over Chen et al., U.S. Pat. No. 5,990,377, but
the Examiner dropped the rejection in the Answer and made a new ground of
rejection over Chen’s WO 98/42289. Appellants stated that “for the
purposes of this Appeal, Appellant’s arguments are germane to both” the
U.S. Patent and the WO. (Reply Br. 2.)
3 “Ans.” is the Examiner’s Answer with a mail date of Aug. 21, 2008.
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Statement of the Issues
Issue 1
The Examiner contends that basesheet 1 shown in Chen’s Figure 1
“comprises the same material and the same percentage of composition for
the peaks and valleys” (Ans. 6), and therefore meets the limitation of claim 1
that the “peaks are made of the same material as the valleys such that the
percentage of composition of material making up the peaks is the same as
the percentage of composition of material making up the valleys.”
Appellants contend that Chen explicitly states the depressed
(“valleys”) regions should have significantly lower amounts of hydrophobic
material than the elevated regions (“peaks”) of Chen’s absorbent web in
order to achieve its stated goals. (Reply Br. 4-5.) Appellants argue:
In contrast, all of the pending claims of Appellants’ application
call for the peaks and valley to have the same percentage of
composition of material in their make up. All of Appellants’
pending claims call for a web that performs and operates
differently then that in Chen et al. because they do not call for a
web in which a “significantly” lower amount of hydrophobic
amount may be present in the valleys while a greater amount of
hydrophobic matter is present in the peaks.
(Reply Br. 5.)
The issue is whether Appellants have established the Examiner erred
in finding that Chen meets the limitation of claim 1 that the “peaks are made
of the same material as the valleys such that the percentage of composition
of material making up the peaks is the same as the percentage of
composition of material making up the valleys.”

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Issue 2
The Examiner contends that the claimed limitation that “the textured
web” have “a height that is at least 25% greater than the average caliper of
the web” would have been obvious to persons of ordinary skill in the art
because where “the general conditions of a claim are disclosed in the prior
art, discovering the optimum or workable ranges involves only routine skill
in the art.” (Ans. 6.)
Appellants contend that the Examiner erred because there is no
teaching or suggestion of modifying Chen to have produced a web with the
claimed height and caliper (Reply Br. 6-7).
The issue is whether Appellants have established that the Examiner
erred in concluding that the claimed limitation of a textured web having “a
height that is at least 25% greater than the average caliper of the web” would
have been obvious to persons of ordinary skill in the art in view of Chen.

Principles of Law
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. . . . These cases have consistently
held that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior
art range.
In re Woodruff, 919 F.2d 1575, 1578 (1990).
Dimensional limitations recited in a claim to a device useful for
drying ink on paper were not disclosed in the prior art, but were held
obvious because the device did not perform differently than the prior art
device and that “structural differences over the prior art” did not “result in
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differences in performance over the prior art.” Gardner v. TEC Systems,
Inc., 725 F.2d 1338, 1345-1346 (Fed. Cir. 1984).

Claim interpretation
Claim 1 is to a “textured airlaid fibrous web comprising natural fibers,
synthetic fibers, or mixtures thereof” which is “formed on a three-
dimensional fabric under sufficient force to cause the web to conform to the
surface of the fabric.” The textured web includes “a repeating pattern of
peaks and valleys.” The web has an average height which is at least 25%
greater than the web caliper (i.e., thickness). The “peaks are made of the
same material as the valleys such that the percentage of composition of
material making up the peaks is the same as the percentage of composition
of material making up the valleys.”
The recitation in the claim that the “fibrous web” is “formed on a
three-dimensional fabric under sufficient force to cause the web to conform
to the surface of the fabric” is a product-by-process limitation that describes
how the web is formed. We do not interpret this limitation to further define
or describe the web apart from the structural limitations specifically recited
in the claim.
Findings of Fact
The Chen International Published Application (WO 98/42289)
1. “Absorbent articles are typically used in contact with skin.” (Chen, at 1.)
2. According to Chen, in “virtually every case, it is desired that the
absorbent article . . . keep liquids off the skin to provide a clean, dry feel and
to reduce skin health problems” (Chen, at 1).
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3. “While the use of hydrophobic nonwoven fabrics [in absorbent articles]
may have resulted in improved dry feel, the hydrophobic material hinders
wicking into the absorbent core,” reducing absorbent capacity and liquid
permeability. (Id.)
4. Another approach described by Chen “is to use an apertured plastic film
of hydrophobic polymer or other materials [on top of an absorbent material].
The hydrophobic cover material repels many body fluids, while the apertures
allow wicking away from the cover into the absorbent material beneath.”
(Chen, at 2.)
5. In its Summary of the Invention, Chen describes composite, resilient
topsheet materials for use in absorbent articles.
6. The materials are made from “hydrophobic agents or materials”
deposited “on relatively elevated portions of one surface of a three-
dimensional” fibrous web “comprising intrinsically hydrophilic fibers”
(Chen, at 3).
7. The composite provides the “clean feel” characteristic of hydrophobic
topsheet materials while providing for rapid depthwise transport of liquid
through the topsheet into the absorbent core comprising the hydrophilic
fibers. (Chen, at 2.)
8. Figure 13, reproduced below, shows a preferred embodiment with
hydrophobic fibers deposited on absorbent material.

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As shown in Figure 13, absorbent material 51 is in contact with a
hydrophilic basesheet 1. (Chen, at 49-50.) Hydrophobic fibers 50a-50d are
“attached preferentially to the elevated regions of the upper surface of the
basesheet such that less than 80%, preferably less than 50%, and more
preferably less than about 25% of the surface area of said basesheet is
covered by the attached synthetic fibers.” (Chen, at 49.)
9. Chen teaches that its absorbent web “having a dry feel when wet”
comprises a hydrophilic basesheet “having elevated and depressed regions”
and “hydrophobic matter deposited preferentially on the elevated regions of
the upper surface of said basesheet.” (Chen, at 9; see also Chen, at 11.)
10. Chen teaches that the elevated regions can have a height relative to the
basesheet “of about 0.1 mm or greater, preferably about 0.2 mm or greater,
more preferably about 0.3 mm or greater, and most preferably from about
0.25 to about 0.6 mm.” (Chen, at 11.)
11. Chen teaches absorbent paper thickness as a parameter of paper
permeability. (Chen, at 29-34 & 35.) Chen also describes preferred
dimensions of the thickness of hydrophobic deposits relative to the
hydrophilic basesheet. (Id. at 35-36.)

Analysis
Issue 1
Claim 1 is to a “textured airlaid fibrous web.” The claim requires that
the “peaks are made of the same material as the valleys such that the
percentage of composition of material making up the peaks is the same as
the percentage of composition of material making up the valleys.”
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The Examiner found that the claimed limitation was met by Chen.
According to the Examiner, Chen’s Figure 13 shows a basesheet material
with elevated and depressed regions (FF8-9) which correspond to the peaks
and valleys of the claimed web. The Examiner also found that the material –
shown as 1 in Figure 13 (FF8) – has the same composition of material in the
peaks and valleys and therefore satisfied the claim limitation. The Examiner
acknowledged that the peaks in Chen comprise additional hydrophobic
material (FF6 & 8-10), but contends that the “comprising” language recited
in the independent claims “is inclusive or open-ended and does not exclude
additional unrecited elements, compositional components, or steps.” (Ans.
13.)
Appellants contend that the Examiner erred because the peaks and
valleys described in Chen have different amounts of hydrophobic material
and therefore do not meet the claim limitation.
The Examiner did not err. It is correct that Chen teaches basesheet 1
to comprise hydrophobic materials deposited or attached preferentially to its
elevated or peak regions. However, the presence of these additional
materials do not alter the characteristics of the basesheet material, itself,
which the Examiner found, and Appellants do not challenge, has the same
“percentage of composition of material making up the peaks” as “the
percentage of composition of material making up the valleys.” Claim 1 is to
drawn to a web, alone, and the Examiner correctly determined that Chen’s
basesheet 1 – a clearly identifiable element of Figure 13 – met all the
limitations of the claimed web.
As properly recognized by the Examiner, the claim utilizes the term
“comprising” and is therefore open to other elements – including the
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hydrophobic materials additionally described by Chen as deposited on the
web (FF6-8). However, it is the basesheet element alone which meets the
disputed claim limitation.
It appears that Appellants have interpreted claim 1 to read on the web-
forming three-dimensional fabric and the textured fibrous web. They
therefore argue that Chen describes a product with less hydrophobic material
in the valleys than in the peaks. However, this description is only true of the
composite formed from the layers of hydrophobic (50a-d) and hydrophilic
materials (1) – for example, as illustrated in Figure 13. Claim 1, on the other
hand, reads only on one layer – which in this case corresponds to the
basesheet 1.

Issue 2
Claim 1 also recites that “the textured web ha[s] a height that is at
least 25% greater than the average caliper of the web.”
The Examiner concluded:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to provide the claimed
relationship between the web height and web caliper since
where the general conditions of a claim are disclosed in the
prior art, discovering the optimum or workable ranges involves
only routine skill in the art. In re Aller, 105 USPQ 233.
(Ans. 6.)
A prima facie case of obviousness typically exists when the
differences between the prior art and the claimed invention is a range or
dimension. Woodruff, 919 F.2d at 1578; Gardner, 725 F.2d at 1345-1346. It
is well-established that in such cases obviousness can be rebutted by
secondary considerations, such as a showing of “new and unexpected results
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relative to the prior art.” Iron Grip Barbell Co. v. USA Sports, Inc., 392
F.3d 1317, 1322 (Fed. Cir. 2004).
Appellants contend that the relationship between web height and
average caliper of the web would not have been obvious. (Reply Br. 6.)
They assert: “In order to render the presently pending claims obvious,” Chen
“must teach or suggest to one having ordinary skill in the art the desirability
of modifying Chen et al. so as to achieve the structure set forth in
Appellants’ pending claims.” (Id. at 6-7.)
This argument is not persuasive. Chen specifically teaches preferred
heights of the basesheet 1, preferred thicknesses of the hydrophobic deposits
50a-d and the basesheet 1, and that thickness is a known parameter of paper
permeability (FF10 & 11). Therefore, both height and thickness of the
basesheet were recognized as parameters by Chen to achieve its goal of a
“dry feel” material. While the claimed limitation of a web with an average
height at least 25% greater than the web caliper is not expressly described by
Chen, Chen recognizes each of these dimensions as parameters controlling
paper permeability (FF9-11). Thus, absent a showing that the claimed
limitation produces unexpected results or otherwise is critical to the claimed
invention, the claimed limitation would have been considered obvious by a
person of ordinary skill in the art, requiring nothing more than routine
optimization of parameters explicitly identified by Chen.

Claims 28 and 47
Independent claims 28 and 47 recite the same limitations as in claim
1. Appellants have not argued any of the additional limitations recited in
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these claims, but have relied on the same argument as for claim 1. We
therefore affirm their rejection for the same reasons.

Conclusions of Law
The Examiner did not err in finding that Chen’s basesheet meets the
limitation of claim 1 that the “peaks are made of the same material as the
valleys such that the percentage of composition of material making up the
peaks is the same as the percentage of composition of material making up
the valleys.”
The Examiner did not err in concluding that the claimed limitation of
a textured web having “a height that is at least 25% greater than the average
caliper of the web” would have been obvious to persons of ordinary skill in
the art in view of Chen.

Summary
The obviousness rejection of claims 1, 28, and 47 is affirmed.
Because separate arguments for the patentability of claims 2-27 and 29-46
were not provided, these claims fall with claims 1, 28, and 47. See 37 C.F.R
§ 41.37(c)(1)(vii). Therefore, the obviousness rejection of claims 2-27 and
29-46 is also affirmed.

Time Period for Response
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

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AFFIRMED

cdc

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