Ex Parte Biegler et al

Patent Trial and Appeal Board

Feb 15, 2018

12974536 (P.T.A.B. Feb. 15, 2018)

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.
12/974,536 12/21/2010 Kristopher K. Biegler 65781US007 3896
32692 7590 02/20/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
GUO, TONG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
02/20/2018 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISTOPHER K. BIEGLER, JORGE A. FERREIRO,
MICHAEL R. GORMAN, VICTOR F. PANZA, OMAR A. PARODI,
GABRIELA F. SERRA, and WILLIAM C. UNRUH1
Appeal 2017-004659
Application 12/974,536
Technology Center 1700
Before BRADLEY R. GARRIS, DEBRA L. DENNETT, and
JANE E. INGLESE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—15, 41, and 42. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
1 3M Company is identified as the real party in interest. App. Br. 2.
Appeal 2017-004659
Application 12/974,536
Appellants claim a surface-bonded laminate 150 comprising a fibrous
web 110 and a pre-formed substrate 120, wherein a major surface of the
fibrous web is surface-bonded to a major surface of the pre-formed substrate
such that the fibers of the fibrous web are melt-bonded to the substrate so as
to substantially preserve the original pre-bonded shape of the substrate major
surface and the fibers are not embedded within the substrate, so that at least
about 65% of the surface area of the surface-bonded fibers is visible above
the surface of the substrate in the bonded portion of the fiber (sole
independent claim 1, Fig. 1).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A surface-bonded laminate comprising:
a fibrous web with first and second oppositely facing major
surfaces;
and,
a pre-formed substrate with first and second oppositely facing major
surfaces;
wherein the first major surface of the fibrous web is surface-
bonded to the first major surface of the pre-formed substrate such
that fibers of the fibrous web are melt-bonded to the substrate so as
to substantially preserve the original pre-bonded shape of the first
major surface of the substrate and said fibers are not embedded
within the substrate, so that at least about 65% of the surface area of
the surface-bonded fibers is visible above the surface of the
substrate in the bonded portion of the fiber,
wherein the surface-bonding of the first major surface of the
fibrous web to the first major surface of the pre-formed substrate is
not a hot melt adhesive bond, an ultrasonic bond or a compression
bond;
and,
2
Appeal 2017-004659
Application 12/974,536
wherein at least some surface-bonded fibers of the nonwoven
fibrous web are surface-bonded directly to the first major surface of
the pre-formed substrate.
Appellants present arguments specifically directed to independent
claim 1 only (App. Br. 3—9). Therefore, we will focus on claim 1 in our
assessment of the rejections on appeal.
Under 35 U.S.C. § 103(a), the Examiner rejects as unpatentable:
claim 1 over Otsubo (US 2009/0095403 Al, published Apr. 16, 2009)
(“Otsubo”) in view of Shelley (US 2002/0089079 Al, published July 11,
2002) (“Shelley”) and Dreher (US 3,843,480, issued Oct. 22, 1974)
(“Dreher”);
claim 1 over Otsubo in view of Shepard (US 6,324,285 Bl, issued
Jan. 29, 2002) (“Shepard”) and Shelley as evidenced by Calvert (US
2006/0069377 Al, published Mar. 30, 2006) (“Calvert”) and Deka (US
2002/0019206 Al, published Feb. 14, 2002) (“Deka”); and
remaining dependent claims 2—15, 41, and 42 over Otsubo in view of
Shepard and Shelley as evidenced by Calvert and Deka alone or in
combination with additional prior art.
We sustain the above rejections for the reasons expressed in the Final
Office Action, the Answer, and below.
3
Appeal 2017-004659
Application 12/974,536
The Rejection based on Otsubo, Shelley, and Dreher
The Examiner finds that:
Otsubo discloses a laminate (e.g., for a diaper) of fibrous web heat
bonded to a pre-formed substrate, but not the claim 1 limitations wherein the
web is surface-bonded to the substrate so as to obtain the recited
characteristics (e.g., so that at least about 65% of the surface area of the
surface-bonded fibers is visible above the surface of the substrate in the
bonded portion of the fiber) (Final Action 3);
Shelley discloses a fibrous web (e.g., for a diaper) wherein the web
fibers are crimped and bonded to one another via a hot-air method (i.e.,
corresponding to Appellants’ disclosed hot-air method for making the
claimed surface-bonded laminate) whose parameters are adjusted to retain
the desirable lofty structure of the web without substantial melt bonding {id.
at 3—5 (citing Shelley, e.g., 36 and 40); see also Ans. 18 (citing Shelley,
e.g., 139))2; and
Dreher discloses a hot-air method for bonding a fibrous web and
substrate (Final Action 5—6).
In light of these findings, the Examiner concludes that it would have
been obvious to bond the fibrous web and substrate of Otsubo via Shelley’s
hot-air method whose parameters would be adjusted so as to retain the
desirable high loft of the web and to achieve adequate bonding of web and
substrate as suggested by Dreher {id. at 5—6). Further, the Examiner
2 Fike Shelley, Appellants seek to retain the web characteristic of loft {see,
e.g., Spec. 1:21-22, 2:11-12, 9:19-27).
4
Appeal 2017-004659
Application 12/974,536
determines that the resulting laminate would have the same surface-bonded
and other characteristics as the claim 1 laminate because both laminates
would have been made using the same materials and hot-air bonding method
{id. at 6).
Appellants argue that Shelley’s hot-air method of treating fibers
without substantial melt bonding of the fibers to each other would not have
suggested forming a laminate by surface-bonding the fibrous web to a pre­
formed substrate (App. Br. 6). Appellants further argue that Dreher’s hot-air
method for bonding a fibrous web and substrate would not have suggested
the “surface-bonded” and other characteristics required by claim 1 {id. at 7).
The deficiency of Appellants’ arguments is that they are directed to
Shelley and Dreher individually rather than their combination as proposed
by the Examiner. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”). For this reason, the above arguments fail to
show error in the Examiner’s position that the combination of Shelley and
Dreher would have suggested bonding Otsubo’s fibrous web and substrate
via Shelley’s hot-air method whose parameters would be adjusted to retain
the high loft of the web and to achieve adequate bonding of web to substrate.
Appellants contend that the Examiner’s obviousness conclusion is
erroneous because Shelley’s hot-air method “is not disclosed as being
sufficient for lamination bonding” (Reply Br. unnumbered-page 2).
5
Appeal 2017-004659
Application 12/974,536
Contrary to Appellants’ apparent belief, “the expectation of success
need only be reasonable, not absolute.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1364 (Fed. Cir. 2007). Here, the applied references evince that it
would have been obvious for an artisan to form Otsubo’s laminate using
Shelley’s hot-air method based on a reasonable expectation of obtaining
high loft in combination with adequate bonding by appropriate adjustment of
the method parameters.
With respect to the Examiner’s statement that the parameters (e.g., air
temperature) of Shelley’s method are result-effective variables, Appellants
argue that the “statement ignores the actual surface-bonding claim
limitations at issue . . . [and] is a conclusory assertion” (App. Br. 8).
The “conclusory assertion” argument is undermined by Shelley’s
express disclosure of controlling air temperature and other parameters in
order to hot-air bond web fibers (Shelley 136) “without substantial melt
bonding or crimp relaxation of the crimped fibers in order to retain the lofty
structure of this layer” (Shelley 139). As for the “surface-bonded” and
other limitations of claim 1, we perceive merit in the Examiner’s rational
determination that an artisan would have adjusted the parameters of
Shelley’s hot-air method so as to retain high loft and achieve adequate
bonding in Otsubo’s laminate, and that the resulting laminate would possess
the “surface-bonded” and other characteristics of the claim 1 laminate,
because both laminates would have been made using the same materials and
hot-air method. In this latter regard, we emphasize that both Shelley and
Appellants seek to achieve an adequate, but not excessive, melt bond while
6
Appeal 2017-004659
Application 12/974,536
retaining web loft (cf. Shelley Tflf 36 and 39 with Spec. 1:21—22, 2:11—12,
and 9:19-27).
For the above-stated reasons and those given by the Examiner,
Appellants fail to show error in the Examiner’s rejection of claim 1 based on
Otsubo, Shelley, and Dreher.
The Rejections based on Otsubo, Sheppard, and Shelley as evidenced
by Calvert and Deka
In rejecting claim 1 over these references, the Examiner finds that
Otsubo and Shelley disclose the features discussed previously (Final Action
7—10) and that Sheppard discloses using hot air to bond fibrous web to a
substrate (id. at 9). The Examiner concludes that it would have been
obvious to bond the fibrous web and substrate of Otsubo using Shelley’s
hot-air method with parameters adjusted to retain high loft and achieve
adequate bonding in view of Sheppard and as evidenced by Calvert and
Deka (id. at 10).
Appellants indicate that the arguments regarding Otsubo and Shelley
as applied in the preceding rejection are applicable to the rejections under
consideration (App. Br. 8).
However, these arguments are not persuasive for the reasons given
above.
7
Appeal 2017-004659
Application 12/974,536
In addition, Appellants again attack the applied references
individually, for example, by arguing “there is nothing in Sheppard et al. to
indicate that the hot air bonding used is other than conventional hot air melt­
bonding where substantial substrate deformation and fiber
deformation/embedding would be expected” {id. at 8; see also id. at 9).
As explained earlier, such an attack fails to reveal error in the
Examiner’s determination that the combined teachings of the references
would have suggested using Shelley’s hot-air method in the manner
proposed above for bonding Otsubo’s fibrous web and substrate.
In summary, Appellants’ arguments do not show error in the
Examiner’s rejections of independent claim 1 and dependent claims 2—15,
41, and 42 based on Otsubo, Sheppard, and Shelley as evidenced by Calvert
and Deka alone or in combination with additional prior art.
Conclusion
The decision of the Examiner is affirmed.
TIME PERIOD
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
8