Ex Parte Anast et al

Patent Trial and Appeal Board

Oct 14, 2014

11105975 (P.T.A.B. Oct. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOHN MATTHEW ANAST, RONALD RAY WARNER,
JOERG KLEINWAECHTER, and DIRK BUTZ
__________

Appeal 2012-004172
Application 11/105,975
Technology Center 1600
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a paper
tissue. The Examiner rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as The Procter &
Gamble Company (see App. Br. 1).
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Statement of the Case
Background
“It is desirable to provide a smooth tissue that comprises a lotion able
to be transferred easily into the skin of the tissue user” (Spec. 6: 25–26).
The Specification teaches that “the careful selection [of] the distribution of
the lotion on the tissue, as multitude of discrete deposits, can enhance the
transferability of the lotion from the tissue onto the skin of the user” (Spec.
6: 26–29). According to the Specification, it “is believed that protruding
deposing having a significant height above the average plan of the tissue
surface will have a higher transferability to the skin of the user and thus will
contribute best to the general smoothness of the tissue” (Spec. 6: 29–31).
The Claims
Claims 1–11 are on appeal. Claim 1 is representative and reads as
follows:
1. A paper tissue, comprising:
first and second opposed surfaces, at least one of said
first and second opposed surfaces comprising a lotion
comprising an immobilizing agent and an emollient, said
lotion being present in substantially discrete protruding
deposits on said first surface, wherein said paper tissue has a
bulk of equal to or less than 5.2 cm3/g of tissue, and wherein
said protruding deposits have an average height of at least
30µm.

The issues
A. The Examiner rejected claims 1–8 under 35 U.S.C. § 103(a) as
obvious over Vinson,2 Krzysik,3 and Le Bras4 (Ans. 5–9).

2 Vinson et al., US 5,814,188, issued Sept. 29, 1998.
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B. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as obvious
over Vinson, Krzysik, Le Bras, and Lubrication Engineering5 (Ans. 9–10).
C. The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103(a) as
obvious over Vinson, Krzysik, Le Bras, and Warner6 (Ans. 10–12).
A. 35 U.S.C. § 103(a) over Vinson, Krzysik, and LeBras
The Examiner finds that Vinson teaches “soft tissue paper wherein at
least one surface of the tissue papers has uniform discrete surface deposits of
a substantively affixed chemical softening agent” (Ans. 5). The Examiner
finds that the “chemical softening agent of Vinson et al are suitable as
immobilizing agents and emollients” (Ans. 5). The Examiner finds that the
“bulk of the tissue is . . . preferably between about 10 cm3/g and 5 cm3/g.
These bulk ranges overlap that of the claimed invention” (Ans. 6). The
Examiner finds that the “uniform surface deposits are . . . most preferably
less than about 240 microns in diameter” (Ans. 6).
The Examiner finds that Vinson “is silent with respect to the height of
the protruding deposits” (Ans. 6). The Examiner finds that Krzysik teaches
lotioned tissues where the “additive composition is applied at predetermined
add-on amounts by desirably uniformly applying the melted composition to
one or both surfaces of the tissue web in spaced-apart deposits, which are
then resolidified” (Ans. 6). The Examiner finds that Krzysik’s

3 Krzysik et al., US 6,544,386 B1, issued Apr. 8, 2003.
4 Le Bras et al., US 5,858,381, issued Jan. 12, 1999.
5 Lubrication Engineering, SEFOSE(SM), the innovative molecule
from P&G Chemicals (accessed at http://findarticles.com/p/articles
/mi_qa5506/is_200309/ai_n21335475) (2003).
6 Warner et al., US 5,525,345, issued June 11, 1996.
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“instantaneous resolidification tends to impede penetration of the
composition into the tissue and retain it on the surface of the tissue” (Ans.
6).
The Examiner finds it obvious to form the “deposits of Vinson
according to the guidance of Krzysik, since both products are drawn to
lotioned tissues comprising a lotion additive composition comprising oils
such as mineral oil and petrolatum, and fatty alcohols, such as stearyl
alcohol, and retaining the deposits on the surface of the tissue is
advantageous” (Ans. 7). The Examiner finds that the “shape of the deposits
would be expected to be somewhere between disc-shaped (or flat, if all of
the lotion is absorbed into the tissue) to hemispherical (if none of the lotion
is absorbed). Therefore, the height of the deposits would be somewhere
between 0 [µ]m . . . to 120-1300 [µ]m” (Ans. 7).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the combination of Vinson, Krzysik,
and Le Bras render obvious a tissue with protruding lotion deposits having
“an average height of at least 30 µm” as required by claim 1?
Findings of Fact
1. Vinson teaches “a strong, soft tissue paper product comprised
of one or more plies of tissue paper, wherein at least one outer surface of the
product has uniform discrete surface deposits of a substantively affixed
chemical softening agent” (Vinson, col. 3, ll. 63–67).
2. Vinson teaches that chemical softening agents include “oils
such as mineral oil and silicone oil as well as petrolatum” (Vinson, col. 2, ll.
27–28).
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3. The Specification teaches that a “lotion may comprise . . .
emollients . . . [s]uitable emollients include . . . petrolatum fatty acids . . .
mineral oil, namely silicone oil” (Spec. 4, ll. 8–13).
4. Vinson teaches that the “soft tissue paper . . . has a density
between about 0.03 g/cm3 and about 0.6 g/cm3 and, more preferably,
between about 0.1 g/cm3 and 0.2 g/cm3” (Vinson, col. 5, ll. 32–37).
5. Vinson teaches “uniform surface deposits spaced apart at a
frequency between about 5 deposits per lineal inch and about 100 deposits
per lineal inch. Most preferably, the uniform surface deposits are spaced
apart at a frequency between about 7 and about 25 deposits per lineal inch”
(Vinson, col. 7, ll. 61–65).
6. Vinson teaches that the “uniform surface deposits of the
chemical softening agent are preferably less than about 2700 microns in
diameter, more preferably less than about 800 microns in diameter, and most
preferably less than about 240 microns in diameter (Vinson, col. 7, l. 66 to
col. 8, l. 3).
7. Krzysik teaches “applying to at least one ply of a multi-ply
tissue product, an additive composition, such as a lotion” (Krzysik, col. 3, ll.
66–67)
8. Krzysik teaches that the “location of the additive composition
on the multi-ply tissue will depend to a great extent on the nature of the
additive composition” (Krzysik, col. 4, ll. 61–64).
9. Krzysik teaches that “[a]dditive compositions which are
intended to transfer to the skin of the user, for instance, are generally best
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positioned on the outer surfaces of the outer plies of the tissue” (Krzysik,
col. 4, ll. 64–67).
10. Krzysik teaches that “[o]il-based compositions can include
combinations of oil and wax. . . . Because the composition is a solid at room
temperature and rapidly solidifies after deposition, it has less tendency to
penetrate and migrate into the sheet” (Krzysik, col. 6, ll. 41–50).
11. Krzysik teaches that “[s]uitable oils include, but are not limited
to, the following classes of oils: petroleum or mineral oils” (Krzysik, col. 7,
ll. 3–5).
12. Krzysik teaches that
The amount of wax in the composition can be from
about 10 to about 40 weight percent . . . . Suitable waxes
include, but are not limited to the following classes: natural
waxes, such as beeswax and carnauba wax; petroleum
waxes, such as paraffin and ceresine wax; silicone waxes,
such as alkyl methyl siloxanes; or synthetic waxes, such as
synthetic beeswax and synthetic sperm wax.

(Krzysik, col. 7, ll. 10–18.)
13. Krzysik teaches that the “additive is then applied at the
predetermined add-on amount or amounts by desirably uniformly applying
the melted composition to one or both surfaces of the tissue web in spaced-
apart deposits. Thereafter, the deposits of the melted composition are
resolidified. Resolidification of the deposits can occur almost
instantaneously” (Krzysik, col. 8, ll. 17–22).
14. Krzysik teaches that “[s]uch instantaneous resolidification tends
to impede penetration of the composition into the tissue and retain it on the
surface of the tissue, which is advantageous” (Krzysik, col. 8, ll. 28–30).
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15. The Specification teaches that “[i]mmobilizing agents include
agents that are [sic] may prevent migration of the emollient into the paper
tissue such that the emollient remain primarily on the surface of the paper
tissue . . . suitable immobilizing agents include waxes (such as . . .
microcrystalline wax, petroleum waxes, fisher tropsh waxes, silicone waxes,
paraffin waxes)” (Spec. 10, ll. 10–18).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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. . . . 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.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 5–12; FF 1–15) and agree that the
claims would have been obvious over the teachings of Vinson and Krzysik.
We address Appellants’ arguments below.
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Appellants “submit that the term ‘impede’ does not mean fully restrict
penetration. Thus some penetration of the additive composition into the
tissue is desired for bonding the plies together” (App. Br. 5). Appellants
[S]ubmit that one main intended purpose of Krzysik is to use
the melted additive composition to bond the plies together
and, therefore, penetrate the tissue surface. If the plies
were not bonded together and the additive composition
remained on the surface . . . one main intended purpose of
the additive composition of Krzysik (bonding plies together
with a melted additive composition) would be completely
frustrated

(App. Br. 5–6).
We are not persuaded. Krzysik does not teach that bonding the plies
together is necessarily the purpose of additive compositions, instead
teaching that the “location of the additive composition on the multi-ply
tissue will depend to a great extent on the nature of the additive
composition” (Krzysik, col. 4, ll. 61–64; FF 8). Krzysik explains that
“[a]dditive compositions which are intended to transfer to the skin of the
user, for instance, are generally best positioned on the outer surfaces of the
outer plies of the tissue” (Krzysik, col. 4, ll. 64–67; FF 9). Krzysik further
teaches that after application of the additive composition, “the deposits of
the melted composition are resolidified. Resolidification of the deposits can
occur almost instantaneously” (Krzysik, col. 8, ll. 17–22; FF 13). Krzysik
teaches “instantaneous resolidification tends to impede penetration of the
composition into the tissue and retain it on the surface of the tissue, which is
advantageous” (Krzysik, col. 8, ll. 28–30; FF 14).
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Thus, contrary to Appellants’ argument, Krzysik expressly teaches
positioning of the deposited lotion on the outer ply of the tissue (FF 9) with
rapid resolidification in order to retain the lotion on the surface, rather than
serving as a bonding agent (FF 11, 13).
Appellants contend that “Krzysik does not disclose any average
heights above a surface of the tissue for the additive compositions, let alone
disclose average heights of at least 30µm, as recited in Claim 1” (App. Br.
6).
We are not persuaded. The Examiner has acknowledged that while
“Vinson and Krzysik do not specifically define the height of the deposits as
being greater than 30 µm . . . the resolidification ‘almost instantaneously’
taught by Krzysik would still mean that most of the composition would
remain on the surface of the tissue, and expect the height of the deposits to
more closely approach 120-1300 µm, or the radius of the deposit” (Ans. 13–
14).
The Examiner’s inherency argument is particularly reasonable in this
situation, where the Specification teaches lotion ingredients such as mineral
oil, silicone oil, and petrolatum (FF 3) and the Examiner has established that
both Vinson and Krzysik teach the use of lotion ingredients including
mineral oil, silicone oil, and petrolatum (FF 2, 11; Ans. 5–6). In addition to
the identity of lotion ingredients, the Specification also teaches inclusion of
immobilizing agents such as waxes which prevent migration into tissue (FF
15) and Krzysik teaches identical waxes such as petroleum waxes and
silicone waxes, as additives in the lotion composition (FF 12).
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Thus, Vinson and Krzysik are reasonably understood as suggesting
depositing a substantially identical lotion to the same tissue paper substrate
as that of the Specification (FF 2, 3, 11–15), supporting the Examiner’s
prima facie case of obviousness. Once a prima facie case of obviousness has
been established, the burden shifts to the Appellants to prove that the prior
art product does not necessarily or inherently possess the characteristics of
the claimed product. In re Best, 562 F.2d at 1255. Appellants provide no
evidence to rebut the prima facie case. Appellants do not identify any
process either in their Appeal Brief or Specification which differs from the
processes used by Vinson and Krzysik for application of the lotion to the
tissue paper (FF 13–14). In the absence of any evidence rebutting the
Examiner’s finding that Krzysik’s deposition method would inherently result
in tissues where “the height of the deposits to more closely approach 120-
1300 µm” (Ans. 13), we conclude that the Examiner has the better position.
Appellants “submit that the combination of Vinson with Krzysik was
made solely based on impermissible hindsight in view of the Subject
Application’s disclosure” (App. Br. 6). We are not persuaded.
In this case, we conclude that the person of ordinary skill would have
had a specific reason to deposit the lotion of Vinson using the waxes and
resolidification method of Krzysik because Krzysik teaches that “[s]uch
instantaneous resolidification tends to impede penetration of the composition
into the tissue and retain it on the surface of the tissue, which is
advantageous” (Krzysik, col. 8, ll. 28–30; FF 14). Krzysik specifically
teaches that retention on the surface is an advantage for lotion deposited on a
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tissue, providing express motivation for the combination with Vinson (FF
14).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
combination of Vinson, Krzysik, and Le Bras render obvious a tissue with
protruding lotion deposits having “an average height of at least 30 µm” as
required by claim 1.
B–C. 35 U.S.C. § 103(a)
Appellants do not argue separately the claims in these obviousness
rejections (see App. Br. 6). Having affirmed the obviousness rejection over
Vinson and Krzysik for the reasons given above, we also find that the further
obvious combinations with Lubrication Engineering and Warner render the
remaining claims obvious for the reasons given by the Examiner (see Ans.
9–12).
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Vinson, Krzysik, and Le Bras. Pursuant to
37 C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 2–8 as these
claims were not argued separately.
We affirm the rejection of claim 9 under 35 U.S.C. § 103(a) as
obvious over Vinson, Krzysik, Le Bras, and Lubrication Engineering.
We affirm the rejection of claims 10 and 11 under 35 U.S.C. § 103(a)
as obvious over Vinson, Krzysik, Le Bras, and Warner.

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

AFFIRMED

cdc