11303412 (B.P.A.I. Feb. 3, 2012)

Ex Parte Brennan

Board of Patent Appeals and InterferencesFeb 3, 2012

11303412 (B.P.A.I. Feb. 3, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/303,412 12/16/2005 Jonathan Paul Brennan 9868M 7796 27752 7590 02/03/2012 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER GUGLIOTTA, NICOLE T ART UNIT PAPER NUMBER 1783 MAIL DATE DELIVERY MODE 02/03/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JONATHAN PAUL BRENNAN ____________ Appeal 2011-004474 Application 11/303,412 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHARLES F. WARREN, and PETER F. KRATZ, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004474 Application 11/303,412 2 Appellant appeals under 35 U.S.C. Â§ 134 from the Examiner's rejection under 35 U.S.C. Â§ 103(a) of claims 1-3, 7-9, 11-15, 20, and 21 as unpatentable over Noda (WO 02/066089 A2 published Aug. 29, 2002) in view of Swanson (US 6,383,958 B1 issued May 7, 2002). We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. Appellant claims a nonwoven web comprising a plurality of discrete compressed sites forming lines of weakness bounding discrete uncompressed regions such that "said web at least partially fails in tension along said [] lines of weakness when the nonwoven web is flushed into a plumbing system" (independent claims 1, 20). Representative claim 1 reads as follows: 1. A nonwoven web having a machine direction and a cross direction, said nonwoven web comprising: (a) non-thermoplastic fibers comprising from about 20% to about 80% by weight of the nonwoven web of man-made fibers and from about 20% to about 80% by weight of the nonwoven web of pulp fibers, wherein at least about 20% by weight of said man-made fibers have a fiber length of at least about 18 mm; (b) a plurality of discrete compressed sites, each compressed site having selective breaking or weakening of fibers along edges of the compressed sites, the compressed sites are: i. less than about 2.5 square millimeters in area; and Appeal 2011-004474 Application 11/303,412 3 ii. separated by an edge to edge distance of no more than about 10 millimeters from the nearest adjacent discrete compressed site; (c) lines of weakness; and (d) discrete uncompressed regions, wherein said discrete uncompressed regions have an elongation at maximum force in the machine direction and an elongation at maximum force in the cross direction; wherein said (b) plurality of discrete compressed sites form said (c) lines of weakness and said (c) lines of weakness are arranged to substantially bound and define said (d) discrete uncompressed regions, such that when said web is subjected to a force less than the maximum force of said (d) discrete uncompressed regions in at least one of said machine direction or said cross direction, said web at least partially fails in tension along said (c) lines of weakness when the nonwoven web is flushed into a plumbing system. The Examiner concludes that it would have been obvious "to incorporate the depression areas [i.e., lines of weakness] of Swanson . . . into the flushable disposable absorbent article of Noda . . . because these depression areas prevent premature tearing of Noda's disposable article, but also allow for separation when force is applied" (Ans. 5). Appellant argues that Noda and Swanson contain no teaching of the independent claim requirement that the web at least partially fails along the lines of weakness when the nonwoven web is flushed into a plumbing system (Br. 8, 13). In this regard, Appellant states that Swanson's lines of weakness are torn by a user and that Swanson "fails to teach that its web at least partially fails in tension along its lines of weakness . . . as a result of flushing the web into a plumbing system" (id.). Appeal 2011-004474 Application 11/303,412 4 The Examiner does not disagree with Appellant's statements regarding the teachings of Swanson. Rather, the Examiner finds that "[i]t would be reasonable to believe the high water pressure of a toilet exerts a force strong enough to tear the tearable fabric disclosed by Swanson" (Ans. 9). This finding is the only statement in the Answer which relates to the independent claim requirement under consideration. Further, in making this finding, the Examiner seems to implicitly propose that Swanson's teachings would result in a web inherently possessing the independent claim characteristic of at least partially failing in tension along the lines of weakness when flushed into a plumbing system. If a rejection relies on a theory of inherency, the Examiner must provide a basis in fact and/or technical reasoning to reasonably support a determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1463-64 (BPAI 1990). The Examiner has provided no basis in fact and/or technical reasoning to support the above quoted belief or the implicit proposition that Swanson's teachings would result in a web inherently possessing the independent claim characteristic under review. For this reason alone, we cannot sustain the Examiner's Â§ 103 rejection. The decision of the Examiner is reversed. REVERSED bar