Ex Parte Baer et al

Board of Patent Appeals and Interferences

Jul 9, 2009

11131595 (B.P.A.I. Jul. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte DAVID J. BAER and KENNETH B. CLOSE 8
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10
Appeal 2009-001697 11
Application 11/131,595 12
Technology Center 3600 13
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15
Decided:1 July 9, 2009 16
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18
Before LINDA E. HORNER, MICHAEL W. O’NEILL, and 19
FRED A. SILVERBERG, Administrative Patent Judges. 20
21
SILVERBERG, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL25

1 The two-month time period for filing an appeal or commencing a civil
action, as recited 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).
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STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a rejection of 2
claims 1-18, which are all of the pending claims. Claims 19-24 have been 3
canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 4
5
SUMMARY OF DECISION 6
We AFFIRM-IN-PART. 7
8
THE INVENTION 9
The Appellants’ claimed invention is directed to a wet-wipe including 10
a composite elastic material for providing a cloth-like feel (Spec. 7:10-16). 11
Claim 1, reproduced below, is representative of the subject matter on appeal. 12
1. A system comprising: 13
a dispenser; 14
a plurality of wipes, each wipe being formed of a stretch-15
bonded laminate that includes a non-woven elastic layer bonded 16
to a non-woven gatherable layer, the wipes being stored within 17
the dispenser such that the wipes become thicker as the wipes 18
are individually removed from the dispenser; and 19
a liquid absorbed by the plurality of wipes. 20
21
THE REJECTIONS 22
The Examiner relies upon the following as evidence of 23
unpatentability: 24
Jackson US 4,865,221 Sep. 12, 1989 25
26
The following rejections by the Examiner are before us for review: 27
1. Claims 1-5, 7-9, 11-16 and 18 are rejected under 35 U.S.C. § 102(b) 28
as being anticipated by Jackson. 29
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2. Claims 6, 10 and 17 are rejected under 35 U.S.C. § 103(a) as being 1
unpatentable over Jackson. 2
3
ISSUE 4
The issues before us are whether the Appellants have shown that the 5
Examiner erred in rejecting claims 1-5, 7-9, 11-16 and 18 as being 6
anticipated by Jackson and claims 6, 10, and 17 as being unpatentable over 7
Jackson. These issues turn on whether: (1) Jackson discloses that the wipes 8
being stored within the dispenser become thicker as the wipes are 9
individually removed from the dispenser as called for in claims 1 and 13 10
(App. Br. 9-11); (2) Jackson discloses that the non-woven gatherable layer 11
becomes thicker as the wipes are stretched as called for in claim 15 (App. 12
Br. 11); and (3) Jackson discloses a layer of elastomeric meltblown fibers 13
and a layer of substantially parallel elastomeric fibers that are bonded to 14
each other as called for in claims 3, 7 and 10 (Reply Br. 2 and App. Br. 10). 15
16
FINDINGS OF FACT 17
We find that the following enumerated findings are supported by at 18
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 19
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 20
proceedings before the Office). 21
1. The Appellants’ Specification discloses that wet wipes lose some 22
of their thickness during manufacturing, packaging, and 23
distribution; and that it is desired to recapture the thickness prior to 24
wet wipe use (Spec. 47:21-23). 25
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2. The Appellants’ Specification further discloses that as the wet-1
wipe 1000 is removed from the container, the opening 1307 in the 2
container resists the removal of the wet wipe 1000. The resistance 3
by the opening 1307 causes the wet wipe 1000 to stretch while it is 4
in the opening 1307 (Spec. 47:13-16 and Spec. 48:7-15, and fig. 5
13). 6
3. The Appellants’ Specification still further discloses that when the 7
wet wipe snaps free of the opening 1307, it returns to its relaxed 8
length, with increased thickness (Spec. 47:13-16 and Spec. 48:15-9
18). 10
4. The Appellants’ Specification still further discloses that 11
[t]he softness and cloth-like texture (feel) is further 12
enhanced by stretching the stretch-bonded 13
laminate prior to use, and allowing the laminate to 14
return (recover) to about its relaxed state mode. 15
The stretching and recovery causes the thickness 16
of the laminate to increase; thereby, increasing the 17
softness and cloth-like texture of the laminate 18
(Spec. 10:21-25). 19
5. Jackson discloses a wet wipe and wipe dispensing arrangement 66 20
including a container 68, the container 68 having a dispensing 21
orifice 74, wherein a stack of interleaved individual wet wipes 58 22
are contained in the container 68 (col. 11, ll. 13-32 and fig. 3). 23
6. Jackson further discloses that the wet wipe 58 includes a first non-24
elastic web 32 and a second non-elastic web 36 heat-bonded to 25
respective opposite sides of an elastic sheet 12 (col. 11, ll. 46-48 26
and fig. 5), wherein the elastic sheet 12 is an elastic meltblown 27
nonwoven web of coherent microfibers formed from a copolymer 28
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(col. 6, l. 54-col. 7, l. 32), and the non-elastic webs 32 and 36 are 1
nonwoven and formed from spunbounded fibers (col. 8, ll. 3-17). 2
7. Jackson still further discloses that “[b]ecause the bond sites 76 are 3
spaced-apart, generally parallel gathers or pleats 64 are formed in 4
the webs 32 and 36 when the wet wipe 58 is in a relaxed condition 5
as shown in FIG. 5” (col. 11, ll. 48-52). 6
8. Jackson further discloses that because the direction of elasticity of 7
the wipes 56 will be generally aligned with the idealized direction 8
of removal 72 of the wipes 56, upon removal of a wipe 58 from the 9
container 68 through a dispensing orifice 74, the wipe 58 will tend 10
to stretch slightly and snap into the user’s hand, wherein the 11
snapping gives the user a positive indication of wipe removal 12
without having to view the dispensing arrangement 66 (col. 6, ll. 13
24-27; col. 11, ll. 18-27; and fig. 3). 14
9. The ordinary meaning of the word “upon” includes “on.” 15
Merriam-Webster’s Collegiate Dictionary (10th ed. 1996). 16
10. The ordinary meaning of the word “on” includes “used as a 17
function word to indicate a time frame during which something 18
takes place or an instant, action, or occurrence when something 19
begins or is done.” Merriam-Webster’s Collegiate Dictionary 20
(10th ed. 1996). 21
11. The ordinary meaning of the word “as” includes “when.” 22
Merriam-Webster’s Collegiate Dictionary (10th ed. 1996). 23
24
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PRINCIPLES OF LAW 1
Appellants have the burden on appeal to the Board to demonstrate 2
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 3
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a 4
rejection [under § 103] by showing insufficient evidence of prima facie 5
obviousness or by rebutting the prima facie case with evidence of secondary 6
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 7
(Fed. Cir. 1998)). 8
“Anticipation is established only when a single prior art reference 9
discloses, expressly or under the principles of inherency, each and every 10
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys., 11
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, “[t]here must be 12
no difference between the claimed invention and the reference disclosure, as 13
viewed by a person of ordinary skill in the field of the invention.” Scripps 14
Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. 15
Cir. 1991). It is not necessary that the reference teach what the subject 16
application teaches, but only that the claim reads on something disclosed in 17
the reference, i.e., that all of the limitations in the claim be found in or fully 18
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 19
(Fed. Cir. 1983). 20
“Section 103 forbids issuance of a patent when ‘the differences 21
between the subject matter sought to be patented and the prior art are such 22
that the subject matter as a whole would have been obvious at the time the 23
invention was made to a person having ordinary skill in the art to which said 24
subject matter pertains.’” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 25
(2007). The question of obviousness is resolved on the basis of underlying 26
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factual determinations including (1) the scope and content of the prior art, 1
(2) any differences between the claimed subject matter and the prior art, (3) 2
the level of skill in the art, and (4) where in evidence, so-called secondary 3
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See 4
also KSR, 550 U.S. at 406-407 (“While the sequence of these questions 5
might be reordered in any particular case, the [Graham] factors continue to 6
define the inquiry that controls.”) 7
When construing claim terminology in the United States Patent and 8
Trademark Office, claims are to be given their broadest reasonable 9
interpretation consistent with the specification, reading claim language in 10
light of the specification as it would be interpreted by one of ordinary skill in 11
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 12
2004). 13
“A patent applicant is free to recite features of an apparatus either 14
structurally or functionally.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. 15
Cir. 1997) (citing In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)(“[T]here 16
is nothing intrinsically wrong with [defining something by what it does 17
rather than what it is] in drafting patent claims.”)). “Yet, choosing to define 18
an element functionally, i.e., by what it does, carries with it a risk.” Id. 19
[W]here the Patent Office has reason to believe 20
that a functional limitation asserted to be critical 21
for establishing novelty in the claimed subject 22
matter may, in fact, be an inherent characteristic of 23
the prior art, it possesses the authority to require 24
the applicant to prove that the subject matter 25
shown to be in the prior art does not possess the 26
characteristic relied on. 27
Swinehart, 439 F.2d at 213. 28
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“[W]hen the PTO shows sound basis for believing that the products of 1
the applicant and the prior art are the same, the applicant has the burden of 2
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). 3
ANALYSIS 4
Appellants argue claims 1, 2, 4 and 5 as a group. As such, we select 5
claim 1 as representative of the group, and claims 2, 4 and 5 will stand or 6
fall with claim 1. Appellants argue claims 7-9, 11 and 12 as a group. As 7
such, we select claim 7 as representative of the group, and claims 8, 9, 11 8
and 12 will stand or fall with claim 7. Appellants argue claims 13, 14, 16 9
and 18 as a group. As such, we select claim 13 as representative of the 10
group, and claims 14, 16 and 18 will stand or fall with claim 13. 37 C.F.R. 11
§ 41.37(c)(1)(vii) (2007). The Appellants argue claims 3, 10 and 15 12
separately. In contesting the rejection of claims 6 and 17 under 35 U.S.C. 13
§ 103(a) as being unpatentable over Jackson, Appellants provide no further 14
arguments regarding these claims than those presented for claims 1 and 13. 15
16
Rejection of claims 1-5, 7-9, 11-16 and 18 under 35 U.S.C. § 102(b) as 17
being anticipated by Jackson 18
Regarding claims 1 and 13: Appellants contend that Jackson does not 19
disclose that the wipes being stored within the dispenser become thicker as 20
the wipes are individually removed from the dispenser (App. Br. 9-11). 21
Appellants further contend that even if the relevant claim language “the 22
wipes being stored within the dispenser such that the wipes become thicker 23
as the wipes are individually removed from the dispenser” is a functional 24
recitation, Jackson’s wipes are not inherently capable of becoming thicker as 25
the wipes are individually removed from the dispenser (App. Br. 12). 26
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Jackson discloses a wet wipe and wipe dispensing arrangement 66 1
including a container 68, a dispensing orifice 74, wherein a stack of 2
interleaved individual wet wipes 58 are contained in the container 68 (Fact 3
5). Jackson further discloses a wet wipe similar to Appellants’ wet wipe, 4
that is, a wet wipe 58 that includes a first non-elastic web 32 and a second 5
non-elastic web 36 heat-bonded to respective opposite sides of an elastic 6
sheet 12 (Fact 6). 7
The ordinary meaning of the word “upon” includes “on” (Fact 9), and 8
the ordinary meaning of the word “on” includes “used as a function word to 9
indicate a time frame during which something takes place or an instant, 10
action, or occurrence when something begins or is done” (Fact 10). 11
Therefore, we find that the word “upon” refers to a point in time that 12
something takes place. We find that in Jackson, the use of the word “upon” 13
in the phrase “upon removal of a wipe 58 from the container 68 through a 14
dispensing orifice 74, the wipe 58 will tend to stretch slightly and snap into 15
the user’s hand” (Fact 8) refers to two points in time, the first point in time 16
being during the removal of the wipe from the dispenser through the 17
dispensing orifice, and the second point in time being immediately after the 18
wet wipe has been removed from the dispensing orifice. At the first point in 19
time (during the removal of the wipe from the dispenser through the 20
dispensing orifice), we find that in Jackson this removal of the wet wipe 21
through the dispensing orifice causes the wet wipe to slightly stretch (Fact 22
8). We find that at the second point in time (after the wet wipe has been 23
removed from the dispensing orifice), the resistance is removed and the snap 24
occurs (Fact 8). We find that after the resistance is removed, Jackson’s wet 25
wipe 58 returns to its relaxed condition, wherein generally parallel gathers or 26
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pleats are formed in the webs 32 and 36 (Fact 7). We find that the weight of 1
the interleaved wipes (Fact 5) in the predispensed stack of interleaved wipes 2
compresses both the webs 32, 36 and the gathers or pleats 64 formed in the 3
webs 32, 36 (Fact 7) causing the wipes to become thinner. Therefore, we 4
find that in Jackson, after the wet wipe has been removed from the 5
dispensing orifice and the generally parallel gathers or pleats are formed in 6
the webs 32 and 36 (Fact 7), the wet wipe 58 becomes thicker than the 7
individual wipes in the predispensed stack of interleaved wipes (Fact 5). 8
The ordinary meaning of the word “as” includes “when” (Fact 11). 9
Giving the claims their broadest reasonable interpretation consistent with the 10
Specification, we find that Appellants’ claimed limitation “such that the 11
wipes become thicker as the wipes are individually removed from the 12
dispenser” means that the wipes become thicker when the wipes are 13
individually removed from the dispensing orifice. 14
We find that Jackson’s wipes are removed from the dispensing orifice 15
after they snap into the user’s hand (Fact 8). Therefore, since Jackson’s 16
wipes 58 become thicker when they are removed from the dispensing 17
orifice, we agree with the Examiner’s analysis (Ans. 9-10) and conclude that 18
Jackson’s wipes 58 stored within the dispenser become thicker “as the wipes 19
are individually removed from the dispenser,” as called for in claims 1 and 20
13. In other words, the structure of Jackson’s wet wipes inherently performs 21
the claimed function of becoming thicker as the wipes are individually 22
removed from the dispenser. Appellants have failed to show how the 23
claimed wet wipe is different from the wet wipe disclosed in Jackson. See In 24
re Spada, 911 F.2d at 708. Therefore, we conclude that Appellants have not 25
demonstrated that the Examiner erred in rejecting claims 1 and 13 and 26
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claims 2, 4, 5, 14, 16 and 18, which respectively depend therefrom, over 1
Jackson. Accordingly, we affirm the rejection of claims 1, 2, 4, 5, 13, 14, 16 2
and 18 under 35 U.S.C. § 102 as being anticipated by Jackson. 3
Regarding claims 3 and 7: Appellants contend that Jackson’s sheet 4
12 does not include a layer of elastomeric meltblown fibers and a layer of 5
substantially parallel elastomeric fibers (App. Br. 10). We do not agree with 6
the Examiner’s analysis (Ans. 10) that Jackson inherently discloses a layer 7
of parallel elastomeric fibers. We find that Jackson does not include any 8
disclosure, inherently or otherwise, of one of the layers including 9
substantially parallel fibers (Fact 6). Therefore, we conclude that Appellants 10
have demonstrated that the Examiner erred in rejecting claims 3 and 7 over 11
Jackson. The Appellants have likewise demonstrated error in the 12
Examiner’s rejection of claims 8, 9, 11, and 12, which depend from claim 7. 13
We reverse the rejection of claims 3 and 7, and claims 8, 9, 11 and 12, which 14
depend from claim 7 under 35 U.S.C. § 102 as being anticipated by Jackson. 15
Regarding claim 15: Appellants contend that Jackson does not 16
disclose that the non-woven gatherable layer becomes thicker as the wipes 17
are stretched as called for in claim 15 (App. Br. 11). 18
The Appellants’ Specification discloses that the stretching and 19
recovery causes the thickness of the laminate to increase (Fact 4). 20
Therefore, we find that the stretching and recovery are part of a process that 21
causes the thickness of the laminate to increase. 22
We previously found in our discussion of the rejection of claim 13 as 23
being anticipated by Jackson that Jackson’s wipe becomes thicker than the 24
individual wipes in the predispensed stack of interleaved wipes (Fact 5) after 25
the wipe has been removed from the dispensing orifice and the generally 26
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parallel gathers or pleats are formed in the webs 32 and 36 (Fact 7). 1
Therefore, we find that in Jackson, the stretching and recovery are also part 2
of a process that allows Jackson’s wipe to become thicker. We find that the 3
non-woven webs 32 and 36 correspond to Appellants’ non-woven gatherable 4
layer. Therefore, we conclude that in Jackson, since the stretching and 5
recovery are part of a process that allows Jackson’s wipe to become thicker, 6
Jackson discloses that the non-woven gatherable layer becomes thicker as 7
the wipes are stretched as called for in claim 15. Therefore, we conclude 8
that Appellants have not demonstrated that the Examiner erred in rejecting 9
claim 15 over Jackson. Accordingly, we affirm the rejection of claim 15 10
under 35 U.S.C. § 102 as being anticipated by Jackson. 11
12
Rejection of claims 6, 10 and 17 under 35 U.S.C. § 103(a) as being 13
unpatentable over Jackson. 14
Regarding claims 6 and 17: Appellants’ contentions regarding the 15
rejection of claims 6 and 17 as being unpatentable over Jackson are not 16
persuasive for the reasons set forth above in our discussion of the rejection 17
of claims 1 and 13 as being anticipated by Jackson. Therefore, we conclude 18
that Appellants have not demonstrated that the Examiner erred in rejecting 19
claims 6 and 17 over Jackson. Accordingly, we affirm the rejection of 20
claims 6 and 17 under 35 U.S.C. § 103 as being unpatentable over Jackson. 21
Regarding claim 10: The Examiner’s conclusion of obviousness of 22
dependent claim 10 is likewise based on the Examiner’s erroneous finding 23
that Jackson inherently discloses a layer of elastomeric meltblown fibers and 24
a layer of substantially parallel elastomeric fibers. Further, the Examiner has 25
not articulated reasoning with some rational underpinning as to why one 26
having ordinary skill in the art would have been led to modify Jackson’s wet 27
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wipes to have a layer of substantially parallel elastomeric fibers. See KSR, 1
550 U.S. at 418. As such, we reverse the Examiner’s rejection of claim 10 2
under 35 U.S.C. § 103(a) as unpatentable over Jackson. 3
4
CONCLUSIONS OF LAW 5
We conclude that the Appellants have not shown that the Examiner 6
erred in rejecting claims 1, 2, 4, 5, 13-16 and 18 under 35 U.S.C. § 102(b) as 7
being anticipated by Jackson, and claims 6 and 17 under 35 U.S.C. § 103(a) 8
as being unpatentable over Jackson. We conclude that the Appellants have 9
shown that the Examiner erred in rejecting claims 3, 7-9, 11 and 12 under 35 10
U.S.C. § 102(b) as being anticipated by Jackson, and claim 10 under 35 11
U.S.C. § 103(a) as being unpatentable over Jackson. 12
13
DECISION 14
The decision of the Examiner to reject claims 1, 2, 4-6, and 13-18 15
over Jackson is affirmed. The decision of the Examiner to reject claims 3 16
and 7-12 over Jackson is reversed. 17
No time period for taking any subsequent action in connection with 18
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 19
20
AFFIRMED-IN-PART 21
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mls 1
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CHRISTOPHER M. GOFF (27839) 6
ARMSTRONG TEASDALE LLP 7
ONE METROPOLITAN SQUARE 8
SUITE 2600 9
ST. LOUIS, MO 63102 10