Ex Parte Bret et al

Patent Trials and Appeals Board

Jun 27, 2019

12228875 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/228,875 08/15/2008
105855 7590 07/01/2019
Drinker Biddle & Reath LLP (SCA Americas)
1500 K Street NW, Suite 1100
Washington, DC 20005
FIRST NAMED INVENTOR
Bruno Bret
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
21 ll 10-0119-00-US(488129) 6516
EXAMINER
CHOI, PETER Y
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUNO BRET, ANNE-GAELLE CLERMONT,
PHILIPPE GREGOIRE, and BERNARD LOUIS DIT PICARD
Appeal 2018-007 4 7 6
Application 12/228,875
Technology Center 1700
Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 39-41, and 43-71 of
Application 12/228,875 under 35 U.S.C. § 103(a). Final Act. (Aug. 28,
2017) 2-11. Appellants 1 seek reversal of the rejection pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 SCA TISSUE FRANCE is identified as the real party in interest. Appeal
Br. 3.
Appeal 2018-007476
Application 12/228,875
BACKGROUND
The present application generally relates to a skin cleansing article,
such as a makeup remover pad, intended to apply liquid or semi-solid
substances to the skin or remove such substances. Spec. 2 ,r 2. The
Specification teaches that the article has two outer layers made of an
absorbent fibrous material and at least one series of yams placed between
the outer layers to provide relief. Id. ,r,r 14--15. The Specification further
teaches "the thickness of at least one of the outer layers being less than the
average diameter of the yams so as to create a raised pattern at the surface."
Id. ,r 15. A relief feature, such as a groove or protrusion, "favours the
makeup removing efficiency." Id. ,r 7, see also ,r 52.
The Specification teaches an embodiment having three series of yams
as shown in Figure 3D, reproduced below.
11
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Figure 3D depicts "a first series of textile yams lOe that are parallel to one
another and a second series of textile yams 1 Ofl and 1 Of2 that are parallel to
one another, each yam 1 Oe of the first series being alternately arranged
underneath a yam lOfl and on top of a yam 10f2." Id. ,r 57. In this
2 Specification dated August 15, 2008 (hereinafter "Spec.").
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Application 12/228,875
embodiment, the first series of yams 1 Oe is oriented perpendicularly to the
second and third series lOfl and 10f2. Id.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A skin care pad comprising:
a first outer layer of absorbent fibrous material having a
first thickness;
a second outer layer of absorbent fibrous material having
a second thickness the second thickness greater than the first
thickness, the second outer layer of absorbent fibrous material
joined to the first outer layer of absorbent fibrous material;
a first, second, and third series of yams disposed between
the first outer layer and the second outer layer, the first series of
yams arranged substantially parallel to each other, the yams in
each of the first, second and third series of yams having an
average diameter that is greater than the first thickness and the
average diameter of the first series of yams being larger than
any diameter of yams in the second or the third series of yams,
wherein the first series of yams are arranged underneath the
second series of yams and on top of the third series of yams;
and
a first series of substantially semi-cylindrical protrusions
in the first outer layer of absorbent fibrous material, the first
series of substantially semi-cylindrical protrusions disposed
over and in contact with at least one of the first, second, or third
series of yams, the first series of substantially semi-cylindrical
protrusions include a deformation of the first outer layer by a
corresponding yam of the at least one of the first, second, or
third series of yams without compression of the absorbent
fibrous material of the first outer layer at the corresponding
yam.
Appeal Br. 14 (Claims App.).
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Application 12/228,875
REJECTION
Claims 1, 39-41, and 43-71 are rejected under 35 U.S.C. § I03(a)
(pre-AIA) 3 as obvious over Gregoire et al. 4 in view of Groitzsch et al. 5 and
further in view of Otsuka et al. 6 Final Act. 2-11.
DISCUSSION
In support of the rejection, the Examiner makes certain findings. The
Examiner finds that Gregoire teaches the general structure of the claimed
article. Final Act. 2-3; Answer 12. The Examiner finds that "Gregoire
teaches first and second outer fibrous layers 36 and 36', with first, second
and third fiber layers 34, 34' and 32 there between (see for example
Gregoire, paragraph 0028, Figure 3)." Answer 12. Figure 3 of Gregoire is
reproduced below.
3 Because the present Application was filed Aug. 15, 2008, prior to the
March 16, 2013 effective date of the America Invents Act, we apply the pre-
AIA version of 35 U.S.C. § 103.
4 US 2007 /0082032 Al, published Apr. 12, 2007 ("Gregoire").
5 US 2003/0039807 Al, published Feb. 27, 2003 ("Groitzsch").
6 US 2005/0255297 Al, published Nov. 17, 2005 ("Otsuka").
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Application 12/228,875
Gregoire, Fig. 3. Gregoire teaches that, "[i]n the embodiment shown in FIG.
3, a pad with two exfoliating surfaces has been created, cohesion of the
product as a whole being ensured by a center layer, which by preference is
thicker." Id. ,r 28.
The secondary reference, Groitzsch, teaches a nonwoven fabric with
high fluid absorption capacity. Final Act. 3; Groitzsch ,r,r 1, 8. Groitzsch
teaches a process whereby two outer layers of nonwoven fabrics are bonded
to a middle "shrunk fabric" layer. Final Act. 3. Figure 1 of Groitzsch is
reproduced below.
4 2
Groitzsch, Fig. 1. Groitzsch teaches that Figure 1 "illustrates a shape of the
corrugations (hills/undulations)." Id. ,r 56. The embodiment shown in
Figure 1 is made up of three non woven fabric layers. Id. ,r 64. Outer layers
1 and 2 have been hot bonded onto the middle layer 7. Id. ,r 65.
The Examiner finds that the shrunk fabric 7 may comprise
multifilament yams that extend parallel. Final Act. 4 ( citing Groitzsch ,r 24 ).
The Examiner determines that one of skill in the art would have had reason
to form the skin care pad of Gregoire but substitute the yams of Groitzsch
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Application 12/228,875
for the "fibers between the outer layers" of Gregoire. Id. Similarly, in the
Answer, the Examiner determines that "Gregoire teaches the claimed
configuration of fibers, where Groitzsch establishes that fibers or yams are
functionally equivalent and predictably suitable for similar skin care pad
structures having sandwiched layers arranged in lines or strips." Answer 14.
The Examiner additionally relies on Otsuka. The Examiner finds that
Otsuka teaches a "pad similar to Gregoire, wherein protrusions similar to the
exfoliating surfaces of Gregoire, can be formed with fiber layers formed on a
network sheet having strands with diameters preferably from 100 to
400µm." Final Act. 5. The Examiner determines that one of ordinary skill
in the art would have had reason to make a skin care article where "the
exfoliating element surfaces each comprise a network sheet made of strands
and having a diameter of 100 to 400µm" because Otsuka teaches "a stably
retained three-dimensional profile wherein the protrusions and depressions
hardly collapse to lose their shapes even under load." Id.
Appellants argue that the rejection is in error on several bases. We
review the appealed rejection for error based upon the issues identified by
the Appellants and in light of the arguments and evidence produced thereon.
See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the
Board's practice to require an applicant to identify the alleged error in the
examiner's rejections.")).
First, Appellants argue that Gregoire does not teach or suggest a pad
having three series of yams arranged in the recited manner. Appeal Br. 6-7.
Appellants argue that the Examiner asserts both that Gregoire teaches fibers
having equal diameters and varied diameters. Id. at 6. This argument is not
persuasive. The Examiner finds that it is reasonable to expect that the
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Application 12/228,875
exfoliating elements 34 and 34' of Gregoire "comprise fibers having
substantially equal diameters, thereby preserving uniformity of the pad."
Final Act. 3. This finding is limited to the exfoliating elements which
correspond to the second and third series of yams in claim 1. That is, the
Examiner finds that the protrusions on each side should be of equal size. In
a later portion of the Final Rejection, the Examiner finds that Gregoire
teaches that the center layer ( corresponding to the first series of yams in
claim 1) is preferably thicker than the exfoliating elements (second and third
yam layers). Id. at 8. As these findings apply to different features of the
prior art ( and different claim elements), the Examiner has not made
inconsistent findings and Appellants have not shown error in this regard.
Appellants further argue that "Gregoire fails to disclose one or any
number of yams as recited in independent claims 1, 48, and 54." Appeal Br.
6. This is not persuasive of error as the Examiner does not rely on Gregoire
for such finding, discussed supra. Appellants similarly contend that "nor is
there any description given concerning the configuration of the exfoliating
elements in Gregoire besides ,r,r [0021], [0023], and [0024], none of which
support the Examiner's assertions." Id. at 6-7. Here, Appellants seem to
refer to the components of the exfoliating elements. As above, the Examiner
does not rely on Gregoire for such teaching.
For their second argument, Appellants contend that Groitzsch does not
teach three series of yams having different diameters. Id. at 7-8. Appellants
state that "[ t ]here is no disclosure in Groitzsch that the 'yams' have different
diameters, or that there are three series of yams, with one of those series of
yams underneath a second series of yams and on top of a third series of
yams." Id. at 7. This argument is not persuasive of error as the Examiner
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Application 12/228,875
does not rely on Groitzsch for the findings listed above. Rather, the
Examiner relies on the combined teachings of the references. "The proper
test is whether the references, taken as a whole, would suggest the invention
to one of ordinary skill in the art." Milliken Research Corp. v. Dan River,
Inc., 739 F.2d 587, 602 (Fed. Cir. 1984).
For their third argument, Appellants assert that Otsuka does not
disclose varied strand diameters. Appeal Br. 8-10. In regard to Otsuka's
teachings concerning strand diameter, Appellants argue that "Otsuka merely
states that a network can have a strand size in the range of 100 to 400 µm,
not that individual strands can vary within the unitary network." Id. at 8.
Otsuka, however, is not relied upon for such teaching. See Answer 14
("Otsuka is not relied on to teach varying the individual strands within the
unitary network."). Accordingly, Appellants have not shown error in this
regard.
Appellants additionally argue that "Gregoire provides no disclosure
indicating that exfoliating elements should overlap with one another."
Appeal Br. 9. The Examiner determines that "the claimed invention does
not require 'overlapping' layers, only a first series of yarns arranged
underneath the second series of yarns and on top of the third series."
Answer 14. We adopt the Examiner's reasoning. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset
because ... they are not based on limitations appearing in the claims."). To
the extent that Appellants intend the foregoing to bear upon some claim
term, they have not adequately articulated the limitation at issue. See
37 C.F.R. § 4I.37(c)(l)(iv).
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Appellants further argue that the thicker center layer of Gregoire does
not teach the use of a yam of greater diameter as the middle layer of the skin
care article. Appeal Br. 9. Appellants contend that, "[ a ]t best, Gregoire
discloses the use of a thick center sheet that separates exfoliating element
layers." Id. Appellants assert the Examiner's determination that "'it is
reasonable ... to expect that the first yams are arranged substantially in
parallel, and second yams are additionally arranged substantially in parallel,
wherein the first and second yams are arranged in a generally perpendicular
relationship to each other"' is factually unsupported. Id. at 9-10 (citing
Final Act. 6-7). In the Answer, the Examiner determines as follows:
Appellants argue that there is no factual basis for the
assertion that the first yams are arranged substantially in parallel
and second yams are additionally arranged in parallel, and that
Examiner has not provided any basis by which a skilled artisan
would have been directed to the claimed configuration of yams
with the claimed diameters. Examiner respectfully disagrees. As
set forth in the Rejection, Gregoire teaches that the exfoliating
elements may be arranged in lines or strips or in any other
continuous or broken pattern, such as evenly distributing the
exfoliating elements, wherein a contour clearly marked by
alternating protuberances and flat surfaces is obtained ( Gregoire,
paragraph 0029, claim 3). Additionally, regarding the claimed
configuration of yams with the claimed diameters, as set forth
above, Gregoire establishes the claimed configuration of yams
and the prior art combination renders obvious the claimed
diameters.
Answer 16-17. Further, in the Final Rejection, the Examiner finds that
Groitzsch teaches "yams that are in a linear alignment." Final Act. 4 ( citing
Groitzsch ,r 24). Given such findings, the Examiner's determination in this
regard may not be fairly said to have "no factual basis." Further, Appellants
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Application 12/228,875
argument is directed toward Gregoire individually rather than the
Examiner's proposed combination as a whole.
Appellants additionally argue that none of the three references relied
upon (Gregoire, Groitzsch, and Otsuka) "disclose three yams in the
configuration recited in claims 1, 48, or 54." Appeal Br. 10. Again, "[t]he
proper test is whether the references, taken as a whole, would suggest the
invention to one of ordinary skill in the art," Milliken Research Corp., 739
F .2d at 602, not what an individual reference may or may not teach.
Appellants additionally argue that "Gregoire does not provide any
disclosure regarding the relationship of the size or thickness of the
exfoliating layer and the upper layer." Appeal Br. 10-12 (emphasis
omitted). Claim 1 requires "a first outer layer of absorbent fibrous material
having a first thickness." Appeal Br. 14 (Claims App.). Claim 1 further
requires that "the yams in each of the first, second and third series of yams
hav[ e] an average diameter that is greater than the first thickness." Id.
Appellants argue that Gregoire does not teach such a relationship. Id. at 10.
Appellants further argue that Gregoire teaches that the layer of exfoliating
elements has a basis weight in the range of 2 to 50 g/m2, while the basis
weight of the upper support layer is 15 to 50g/m2. Id. (citing Gregoire ,r,r 23,
24 ). That is, the basis weight of the exfoliating elements is less than or equal
to that of the outer layer. Appellants further argue that one may not rely
upon the figures of Gregoire in depicting the relative size of the exfoliating
elements and the outer layer. Id. at 11.
In the Answer, the Examiner reasons as follows:
Gregoire teaches that the purpose of the second layer (i.e.
the outer layer) is to obtain an exfoliating effect and simultaneous
massaging effect (Id., paragraph 0025). Gregoire teaches that the
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exfoliating elements are held in place by a layer of fibers (i.e. the
outer layer) which are fine enough so that they do not mask the
effect of the layer of exfoliating elements on the skin. It is
reasonable for one of ordinary skill to expect that the thickness
of the outer layer would be less than the diameter of the fibers
making up the exfoliating elements, such that the exfoliating
effects are not masked by the outer layer of fibers. Such a
relationship appears to be shown in at least Figures 1-4 of
Gregoire, as the exfoliating elements 4 are demonstrated to have
a thickness greater than the thicknesses of the outer layers. Such
teachings taken as a whole, and in view of the Figures,
reasonably suggest to one of ordinary skill the desire to provide
exfoliating elements larger than an outer layer.
Answer 17-18.
Basis weight in Gregoire is given in grams per square meter. See,
e.g., Gregoire ,r 23. Basis weight would be indicative of thickness if the
layers were of the same materials. Gregoire, however, teaches a wide
variety of exfoliating element materials. Id. ,r 10. A less dense material may
have a lower basis weight yet still be thicker than a second material.
Accordingly, basis weight tells us little about the thickness of the
components taught by Gregoire.
Appellants additionally argue that the Examiner's reliance on the
figures is misplaced. Precise proportions should not be read into patent
drawings when the patent does not expressly provide such proportions.
Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1149 (Fed. Cir. 2005). But while
patent drawings are not working drawings drawn to scale, things patent
drawings show clearly are not to be disregarded. In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972); In re Heinrich, 268 F.2d 753, 755-56 (CCPA 1959). In
fact, "[ d]escription for the purposes of anticipation can be by drawings alone
as well as by words." In re Eager, 47 F.2d 951, 953 (CCPA 1931).
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Here, the exfoliating elements are depicted as much thicker than the
outer layer. See, e.g., Gregoire, Fig. 3. Further, Gregoire teaches that the
outer layer should be "fine enough not to mask the corrugation of the
underlying elements." Id. ,r 24. This is similar to the Specification's
teaching of "the thickness of at least one of the outer layers being less than
the average diameter of the yams so as to create a raised pattern at the
surface." Spec. ,r 15. Accordingly, there is sufficient evidence to support
the Examiner's finding that the exfoliating layer of Gregoire is taught to be
of greater thickness than the outer layer.
Appellants additionally argue that "Gregoire's disclosure of a thicker
center layer would not have guided a skilled artisan to the claimed series of
yams." Appeal Br. 12-13 (emphasis omitted). Appellants argue that the
"carded web" of Gregoire "does not indicate yams configured in parallel as
recited in claim 1." Id. at 12. This argument carries little weight as the
Examiner does not rely upon the carded web as teaching parallel yams.
Further, we note that Appellants have not introduced any evidence as to the
nature of the carded web of Gregoire.
Appellants also argue that Gregoire would not "achieve the effect of
the protrusions generated by the yams." Id. In support, Appellants argue as
follows:
Gregoire states the center layer, represented by feature 32 is
preferably a sheet similar to the first layer, represented by feature
2, as in Fig 1. Gregoire, ,r [0028]. Gregoire characterizes the first
layer as being "necessarily softer, since the exfoliating particles
are not felt through it or are felt to a lesser extent." Id., ,r [0025].
It would seem, therefore, that a configuration similar to Fig. 3 of
Gregoire would not achieve the effect of the protrusions
generated by the yams of the instant application.
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Appeal Br. 12. It is correct that Gregoire teaches that the exfoliating
elements would be less salient when the skin is in contact with first layer 2
of Figure 1 of Gregoire ( as opposed to upper layer 6 of Figure 1 ). This,
however, is not applicable to the embodiment of Figure 3 of Gregoire where
there are exfoliating elements on both sides of middle (central) layer 32. See
Answer 19.
For their final argument, Appellants assert that there is no evidence
that the thickness of the center layer is a result effective variable. Appeal
Br. 12-13. "A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective." In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Here, the Examiner
determines that "Gregoire establishes that the center layer is preferably
thicker, and in order to perform as a support layer, it is reasonable for one of
ordinary skill to expect that a thicker center layer would provide greater
support. Therefore, the thickness of the center layer is a result effective
variable." Answer 20. This is consistent with the record. Further, Gregoire
teaches that the thickness of the center layer affects the degree to which the
exfoliating element is felt when using the side opposite the protrusion.
Gregoire ,r 25. Accordingly, Appellants have not shown error in this regard.
CONCLUSION
For the reasons stated in the Final Rejection, the Examiner's Answer,
and above, the rejection of claims 1, 39-41, and 43-71 as obvious over
Gregoire in view of Groitzsch and Otsuka are affirmed.
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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
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