Ex Parte Abed et al

Board of Patent Appeals and Interferences

Feb 28, 2006

10180228 (B.P.A.I. Feb. 28, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEAN-CLAUDE ABED
and
DENIS G. FALLON
____________

Appeal No. 2005-1830
Application No. 10/180,228
____________

ON BRIEF
____________

Before GARRIS, WALTZ, and TIMM, Administrative Patent Judges.
TIMM, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves finally rejected claims 1-7, 9-19, and 21-24. Claims 8 and
20, the only other claims pending in the application, are not rejected. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 134.
Appeal No. 2005-1830
Application No. 10/180,228

2
INTRODUCTION
The claims are directed to a method of producing a nonwoven product and a
method of absorbing a liquid using the nonwoven product. Claim 1 is representative
and reads as follows:
Claim 1. A method for the production of a nonwoven product
comprising the steps of:
providing a nonwoven material having a bicomponent fiber of a
cellulose ester polymer and a second polymer selected from the group
consisting of polyolefins, polyesters, polyamides, and polyimides; where
said bicomponent fiber is either a core-and-sheath fiber or a side-by-side
fiber;
forming a nonwoven product from said nonwoven material where
said nonwoven product is selected from the group consisting of:
disposable towels; diapers; hygienic products; grips; “wet wipe" type
towels; and inserts for shoes and boots.

All of the claims on appeal, i.e., claims 1-7, 9-19, and 21-24, are rejected under
35 U.S.C. § 102(b) as anticipated by U.S. Patent 5,509,430 issued to Berger on April
23, 1996 (Berger).
We reverse for the reasons that follow.

OPINION
The determining issue in this case is an issue of claim interpretation.
Specifically, the question is: How much weight should be given to the recitation in the
claims that “said nonwoven product is selected from the group consisting of: disposable
towels; diapers; hygienic products; grips; ‘wet wipe’ type towels; and inserts for shoes
Appeal No. 2005-1830
Application No. 10/180,228

3
and boots.” (Claims 1 and 13). It is the Examiner’s position that “the naming of the
product does not define the method” and that the claim “fails to recite the manipulative
steps that define the method of forming such product.” (Answer, p. 5). Therefore,
according to the Examiner’s reasoning, Berger teaches the claimed process even
though there is no disclosure of forming any of the products recited in the markush
group of the claims. Berger forms a tobacco filter product (Fig. 6), a product which is
not found by the Examiner to be of the type recited in the markush group of the claims.
If the naming of the product genus in the claims serves to limit the claims, the rejection
fails to establish anticipation by Berger. “To anticipate a claim, a prior art reference
must disclose every limitation of the claimed invention, either explicitly or inherently.” In
re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
We cannot agree with the Examiner’s interpretation of the claim. What the
Examiner’s claim interpretation fails to consider is the claim as a whole. Every limitation
in the claim must be given effect rather than considering one in isolation from the
others. In re Geerdes, 491 F.2d 1260, 1262-63, 180 USPQ 789, 791 (CCPA 1974). It
is true that the effect of a limitation may differ based on the nature of what is claimed.
For instance, in a claim directed to a product, a method step does not limit the claim
directly, it is analyzed for how it limits the structure and properties of the product. See
In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972)(“[I]t is the
patentability of the product claimed and not of the recited process steps which must be
Appeal No. 2005-1830
Application No. 10/180,228

4
established.”). But Appellants’ claims are directed to a process. The process requires
the formation of a product within the genus of the claims. That the claim does not recite
the specific steps required to form those recited products is of no moment. The claim
may be broad with respect to how the product is formed, but it requires it to be formed
nonetheless.
In order to anticipate, both steps of the claimed method with all their limitations
must be found in the prior art reference either expressly or inherently. Berger forms a
nonwoven web or roving, but that web or roving is a continuous intermediate article in
the process of forming a tobacco filter. The Examiner provides no technical reasoning
or other convincing logic indicating that this intermediate, the product tobacco filter, or
any other structure formed within the process of Berger has the structure and
characteristics of a disposable towel, diaper, or any of the other products to which the
forming step is limited. Nor can we agree that the Examiner has provided any
reasonable basis to conclude that a product of Berger inherently meets the
requirements of the products recited.
Because the Examiner has not established that Berger describes forming a
nonwoven product within the claimed genus as is required by the claim, we find that the
Examiner has not established anticipation within the meeting of 35 U.S.C. § 102.
For these reasons, we reverse.

Appeal No. 2005-1830
Application No. 10/180,228

Παγε 5

CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-7, 9-19, and 21-24
under 35 U.S.C. § 103(a) is reversed.
REVERSED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge

Comment [jvn1]: Type or Paste
Address

Appeal No. 2005-1830
Application No. 10/180,228

Παγε 6
HAMMER & HANF, PC
3125 SPRINGBANK LANE
SUITE G
CHARLOTTE, NC 28226