Ex Parte Chardon-Bras et al

Patent Trial and Appeal Board

Oct 27, 2017

12067655 (P.T.A.B. Oct. 27, 2017)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/067,655 04/09/2008 Maryvonne Chardon-Bras 0512-1457 3015
466 7590 10/31/2017
YOUNG fr THOMPSON
EXAMINER
209 Madison Street HICKS, VICTORIA J
Suite 500
Alexandria, VA 22314 ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
10/31/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARYVONNE CHARDON-BRAS and
FRANCOIS COURTET
Appeal 2017-001439
Application 12/067,6551
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Maryvonne Chardon-Bras and Francois Courtet (“Appellants”) appeal
under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office
Action (dated Oct. 23, 2015, hereinafter “Final Act.”) rejecting under 35
U.S.C. § 103(a) claims 23—27, 29—34, 39, 40, and 43 as being unpatentable
over Nguyen (US 5,175,046, iss. Dec. 29, 1992) and Curro et al. (US
6,808,791 B2, iss. Oct. 26, 2004, hereinafter “Curro”).2 We have
jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants’ Appeal Brief (hereinafter “Appeal Br.”), filed
March 11, 2016, the real party in interest is Thuasne. Appeal Br. 1.
2 Claims 1—22, 28, 37, 38, 44, and 45 are canceled. Id. Claims 35 and 36
are objected to by the Examiner, but otherwise are indicated as being
Appeal 2017-001439
Application 12/067,655
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellants’ invention is drawn to “a device for treating skin and
subcutaneous tissue disorders.” Spec. 1,11. 2—3.
Claims 39, 40, and 43 are independent. Claim 39 is illustrative of the
claimed invention and reads as follows:
39. Strap for treating skin and subcutaneous tissue disorders,
comprising a device comprising:
a first web of flexible material;
a second web of flexible material; and
a projecting structure which is joined to the first web and
comprises a plurality of discrete projecting elements, said
discrete projecting elements comprising parallelepiped pieces of
foam which are spaced apart from one another and are joined to
said first web;
wherein the device is bordered by two edges which do not
have said discrete projecting elements,
wherein the parallelepiped pieces of foam are reduced in
volume by pressure exerted upon them by said first web and said
second web, the first and second webs adhering directly to each
other between the discrete projecting elements, and
wherein the parallelepiped pieces of foam have respective
orientations that are irregular relative to an axis of symmetry of
each of the parallelepiped pieces of foam perpendicular to a plane
of one of said first and second webs.
allowable if rewritten in independent form, and claims 41 and 42 are
allowed. Final Act. 9. Claims 35, 36, 41, and 42 are not part of the instant
appeal.
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ANALYSIS
The Examiner finds that Nguyen’s device includes most of the
limitations of the independent claims including first web 12, second web 16,
and discrete projecting elements 14 formed by parallelepiped pieces of foam
whose volume is reduced using pressure exerted by first and second webs
12, 16, which “adher[e] to each other (via entanglement of fibers) between
the discrete projecting elements (14).” Final Act. 3. The Examiner further
finds that although Nguyen’s first and second webs 12, 16 are not “adhering
directly” to each other between discrete projecting elements 14, nonetheless,
Curro discloses “first (20) and second (40) webs adhering directly (‘melt
bond directly’) to each other between the discrete projecting elements (30).”
Id. The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art to modify Nguyen’s first and second webs 12, 16 to
“adhere directly to each other between the discrete projecting elements [14]
as taught by Curro . . . because this element is known to keep the webs
together as a laminate web, so that the laminate web behaves as a unitary
web in use, without unwanted delamination.” Id. at 3^4 (citing Curro, col.
15,1. 64-col. 16,1. 1).
Appellants argue that because the weight of Nguyen’s cover layer 16
is “inevitably smaller than the load necessary for the elements 14 to
deform,” Nguyen’s elements 14 “will not deform (reduce volume) under the
load exerted by cover layer 16 because the load is limited only to the weight
of the cover layer 16.” Appeal Br. 7. According to Appellants, Nguyen’s
cover layers 12, 16 and elements 14 are held together by friction and
entanglement of the fibers “brought about by compression,” but that “the
only compressive force remaining is the cover 16, which would not cause
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the elements to be reduced in volume,” because “the purpose of the structure
in NGUYEN is to allow elements 14 to achieve their ‘full potential’
absorbency.” Id. at 7—8 (citing Nguyen, col. 1,11. 46—50). Appellants assert
that Nguyen’s elements 14 inherently “regain their full volume and full
potential absorbency,” and, thus, the connection of Nguyen’s cover layers
does not include “any compressive force that would reduce the volume of
elements 14.” Id. at 8. Appellants contend that, moreover, “a broadest
reasonable interpretation of the claims consistent with the specification,”
requires that the reduction in volume of the foam is “measurable,” and not “a
theoretical reduction in volume induced by the mere contact of these pieces
of foam with the first and second webs.” Id. at 9.
The Examiner responds that Nguyen’s “superabsorbent elements (14)
are positioned between the support layer (12) and the cover layer (16) and
consequently, some degree of compression would be applied to the
superabsorbent elements (14) by the support and cover layers.” Examiner’s
Answer 11 (filed Sept. 2, 2016, hereinafter “Ans.”). The Examiner notes
that a “compressive force is taught by Nguyen throughout the specification.”
Id.
Appellants reply that to the extent the portions of Nguyen upon which
the Examiner relies disclose a compressive force, Nguyen does “not disclose
that such a compression would remain after the composite absorbent
structure [(20)] has been produced.” Reply Brief 4 (filed Nov. 1, 2016,
hereinafter “Reply Br.”). According to Appellants, the claims require that
the compressive force that reduces the volume of the foam is exerted “by the
first web and the second web,” not “by a machine.” Id. at 4—5. Appellants
also contend that Curro “is silent regarding this feature.” Id. at 5.
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Application 12/067,655
Appellants’ arguments are not persuasive because Appellants do not
explain adequately why no compressive force would remain after Nguyen’s
“frictional engagement and entanglement of fibers [occurs] . . . about by
compression.” Nguyen, col. 3,11. 21—22. As compression generates the
frictional engagement and entanglement of the fibers, the Examiner is on
solid ground in finding that “some degree of compression” would remain on
Nguyen’s elements 14 so that cover layers 12, 16 continue to be connected
to each other. Ans. 11; see also Nguyen, col. 3,11. 58—61 (“support layer 12
onto which is compressively attached . . . superabsorbent elements 14.”).
That is, the load compressing elements 14 is not only the weight of cover 16,
as Appellants argue, but also includes the compressive forces keeping layers
12, 16 connected together. Hence, because the force keeping Nguyen’s
layers 12, 16 and elements 14 connected together provides some degree of
compression, this is sufficient to establish that Nguyen discloses that the
“pieces of foam are reduced in volume by pressure exerted upon them by
said first web and said second web,” as called for by each of the independent
claims, so as to shift the burden to Appellants to show otherwise. See In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Appellants have not come forth
with any persuasive evidence or technical reasoning to satisfy such burden.
Moreover, Appellants’ assertion that Curro is also silent as to the
compression of the claimed foam pieces is not well taken. See Reply Br. 5.
Appellants cannot show nonobviousness by attacking Nguyen and Curro
individually when the rejection as articulated by the Examiner is based on a
combination of Nguyen and Curro. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Here, Curro specifically discloses that a
connection by entanglement or bonding causes at least the edge portions of
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bond site 50 between webs 20, 40 to be reduced in volume. See Curro, col.
8,11. 18—29; Fig. 17A. As such, because neither of Appellants’ claims nor
the Specification quantifies what constitutes a “measurable” reduction in
volume, and because the combined teachings of Nguyen and Curro result in
foam elements that are “reduced in volume,” such reduction is not merely “a
theoretical reduction in volume induced by the mere contact of these pieces
of foam with the first and second webs,” as Appellants argue. See Appeal
Br. 9.
Furthermore, although we appreciate that Nguyen would want to
achieve full absorbency potential, the portion of Nguyen upon which
Appellants rely relates specifically to gel blocking, where particles in prior
art structures agglomerate when they are not fixed. Nguyen, col. 1,11. 41—
50; see also Appeal Br. 8. Appellants do not explain adequately how this
problem relates to the fixed (by frictional engagement and entanglement of
fibers) elements of Nguyen. Nonetheless, even if elements 14 of Nguyen, as
modified by Curro do not “achieve their ‘full potential’ absorbency,” as
Appellants argue (see Appeal Br. 8), we note that if there are tradeoffs
involved regarding features, costs, manufacturability, or the like, such things
do not necessarily prevent the proposed combination. See Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine.”). In this case, any loss in
volume, and hence, in absorbency of elements 14, due to compression, is a
tradeoff that a person of ordinary skill in the art would balance against the
improved connection of foam elements 14 to cover layers 12, 16 in the
device of Nguyen, as modified by Curro. See Nguyen, col. 3,11. 40-45.
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Appellants also argue that because Nguyen already discloses a
laminate structure of dissimilar materials joined without using adhesive,
there is “no motivation to apply the teachings of CURRO et al. to the
composite absorbent structure 20 of NGUYEN, since the problem addressed
by CURRO et al. was already solved by NGUYEN.” Appeal Br. 10-11.
According to Appellants, the Examiner’s purported reason of “keep[ing]
layers together as a laminate web, so that the laminate web behaves as a
unitary web in use, without unwanted delamination” “would not have
provided a better incentive to apply the teachings of CURRO et al. to
NGUYEN,” because Nguyen’s layers already prevent “unwanted
delamination.” Id. at 11. According to Appellants, because Curro “is
specifically intended for the case in which the central layer cannot adhere to
the outer layers,” there would be “no incentive to apply” Curro’s teachings
to Nguyen. Reply Br. 3.,
We are not persuaded by Appellants’ argument because the fact that
the prior art may already perform adequately does not preclude a skilled
artisan from seeking to improve upon it. See Dystar Textilfarben GmBH &
Co, v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (desiring to
enhance commercial opportunities by improving a product or process is
universal—and even common-sensical). Here, Curro teaches that mechanical
interaction by entanglement is an alternate to melt bonding and could
include central layer 30 (see Curro, col. 8,11. 14—23). We, thus, agree with
the Examiner that melt bonding Nguyen’s layers 12, 16, as taught by Curro,
“provides an improved, more substantial securement” of the webs. Ans. 10.
We further agree with the Examiner that a person of ordinary skill in the art
would make the modification to have the “benefit of more securely adhering
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the first web, the second web and the discrete projecting elements to each
other in a manner that better prevents unwanted delamination of the
material.” Id. We do not find that choosing melt bonding, as taught by
Curro, to more securely adhere Nguyen’s webs would have been beyond
level of the skilled artisan. Thus, the Examiner is correct in concluding that
directly adhering Nguyen’s first and second webs to each other, according to
Curro, in a manner that better prevents unwanted delamination of the
material would have been obvious.
Appellants also argue that any advantage obtained by Curro is not
based on “adhering the two component webs directly to each other, but by
providing a ‘plurality of bonding sites [which] are sufficient’ to reach this
advantage.” Appeal Br. 12 (citing Curro, col. 15,11. 64—67). According to
Appellants, based on this teaching of Curro, a person of ordinary skill in the
art would have “increased the number of locations at which the support and
cover layers 12, 16 of NGUYEN are joined together,” by increasing the
number of elements 14, and would not “have adhered the support and cover
layers 12, 16 directly to each other between the superabsorbent elements
14.” Id. at 13. Appellants contend that the teachings of Curro are not
relevant to Nguyen because Nguyen attaches elements 14 to the support
layer whereas Curro does not. See Reply Br. 2—3.
We are not persuaded by Appellants’ arguments because an artisan
must be presumed to know something about the art apart from what the
references disclose. See In re Jacoby, 309 F.2d 513,516 (CCPA 1962). In
this case, a person of ordinary skill in the joining art would recognize that in
preventing delamination the number of bond sites cannot be separated from
the joining of webs 20, 40 directly to each other using melt bonding. See
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Curro, col. 7,11. 22—28. In other words, both elements work together to
prevent delamination. For example, having merely a plurality of sites that
bring webs 20, 40 together without melt bonding webs 20, 40 at such sites,
would not better prevent delamination. Neither would melt bonding webs
20, 40 at one bond site only. Appellants do not persuasively argue that the
plurality of bonding sites in Curro do not directly adhere webs 20, 40 to each
other, and are not between projecting elements 30. See Curro, Fig. 2.
Accordingly, we do not agree with Appellants’ proposition that Curro’s
prevention of delamination is not based on “adhering the two component
webs directly to each other.” See Appeal Br. 12.
Appellants also argue that because “the skilled person would have
considered the composite absorbent structure 20 of NGUYEN as being
equivalent to the central layer 30 of CURRO,” the support and cover layers
12, 16 of Nguyen would not be equivalent to the outer layers 20, 40 of
Curro, and the superabsorbent elements 14 of Nguyen would not be
equivalent to the central layer 30 of Curro. Appeal Br. 13. Appellants assert
that because Curro’s “central layer 30 needs to be provided as a continuous
layer,” whereas Nguyen’s elements 14 are discrete elements, “they can
therefore not be equivalent to the central layer 30.” Id. at 14. Thus,
according to Appellants, “the skilled [artisan] would therefore have provided
the composite absorbent structure 20 of NGUYEN as a central layer
sandwiched between the two outer layers 20, 40 of CURRO,” which would
not result in Nguyen’s cover layers 12, 16 being “adhered directly to each
other between superabsorbent elements 14.” Id.
We are not persuaded by Appellants’ arguments because such
arguments are not commensurate with the Examiner’s rejection. The
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Examiner did not modify Curro’s laminated web 10 by replacing central
layer 30 with Nguyen’s composite structure 20, as Appellants argue. Rather,
as noted above, the Examiner modifies Nguyen’s composite structure 20 to
adhere directly webs 12, 16 between elements 14. See Final Act. 3.
Appellants have not persuasively shown error in the Examiner’s findings or
reasoning in combining the teachings of Nguyen and Curro.
Appellants present additional arguments that the combined teachings
of Nguyen and Curro do not result in a reduced volume of foam elements 14,
as called for by each of the independent claims. Appeal Br. 14. According
to Appellants, due to the highly flexible material of Nguyen’s cover layers
12, 16, as modified by Curro, the biasing force exerted on superabsorbent
elements 14 would not have been sufficient “as a result of the local
deformation of the support and cover layers 12, 16 ... to cause reduction in
volume of the superabsorbent elements 14.” Appeal Br. 15. According to
Appellants, “a high biasing force would hinder expansion of the
superabsorbent elements 14 during water uptake and would therefore
diminish the efficiency of the composite absorbent structure 20, which
would be contradictory to the teachings of NGUYEN.” Id.
We are not persuaded by Appellants’ argument because attorney
argument cannot take the place of evidence in the record. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997). Here, Nguyen discloses a flexible
structure having cover layers 12, 16 made from a porous nonwoven material
with polyester fiber (thermoplastic material) and Curro discloses a flexible
structure having outer layers 20 and 40 made from a nonwoven web
including thermoplastic materials. Nguyen, col. 4,11. 1—6; col. 5,11. 6—8;
Curro, col. 6,11. 19—20 and 46—51. Given the similarity in the web materials
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of Nguyen and Curro, and furthermore, given Curro’s disclosure of a
reduced volume at the bond site (see Curro, col. 8,11. 18—29), Appellants’
position that the biasing force of Nguyen’s webs, as modified by Curro,
would not reduce the volume of foam elements 14 in untenable. Appellants
do not provide evidence or technical reasoning that persuasively explains a
difference in the webs of Nguyen and Curro that would prevent Nguyen’s
webs, as modified by Curro, from inducing sufficient biasing force to reduce
the volume of foam elements 14. Moreover, Appellants’ argument that a
reduced volume is contradictory to the teachings of Nguyen is not persuasive
because as discussed supra, any loss in volume due to compression is a
tradeoff that a person of ordinary skill in the art would balance against the
improved joining of the web to prevent delamination. See Final Act. 4.
In addition to the arguments presented supra, which we have found
unpersuasive for the reasons described above (see Appeal Br. 5—15), for the
first time in the Reply Brief, Appellants argue that neither Nguyen nor Curro
discloses a strap or a garment. See Reply Br. 5. This argument is untimely
and not in response to an argument raised by the Examiner for the first time
in the Answer. It will not be considered as Appellants offer no good cause
as to why the argument was not raised in the Appeal Brief. See 37 C.F.R.
§ 41.41(b)(2) (“Any argument raised in the reply brief which was not raised
in the appeal brief, or is not responsive to an argument raised in the
examiner's answer . . . will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”); In re Hyatt, 211 F.3d
1367, 1373 (Fed. Cir. 2000).
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In conclusion, for the foregoing reasons, we sustain the rejection of
under 35 U.S.C. § 103(a) of claims 23—27, 29—34, 39, 40, and 43, as
unpatentable over Nguyen and Curro.
SUMMARY
The Examiner’s decision to reject claims 23—27, 29—34, 39, 40, and
43 under 35 U.S.C. § 103(a) as unpatentable over Nguyen and Curro is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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