11413770 (B.P.A.I. Dec. 17, 2010)

Ex Parte Collias et al

Board of Patent Appeals and InterferencesDec 17, 2010

11413770 (B.P.A.I. Dec. 17, 2010)

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. 11/413,770 04/28/2006 Dimitris Ioannis Collias 10386 1916 27752 7590 12/17/2010 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER MATZEK, MATTHEW D ART UNIT PAPER NUMBER 1786 MAIL DATE DELIVERY MODE 12/17/2010 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 DIMITRIS IOANNIS COLLIAS and NORMAN SCOTT BROYLES ________________ Appeal 2010-001276 Application 11/413,770 Technology Center 1700 ________________ EDWARD C. KIMLIN, BRADLEY R. GARRIS, and CHARLES F. WARREN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE" (paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-001276 Application 11/413,770 2 Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-21. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appellants claim an expanded polymeric web comprising nanoparticles (claim 1). Further details regarding this claim subject matter are set forth in representative claim 1 which reads as follows: 1. An expanded polymeric web comprising: a) between about 0.1 and about 70 weight percent of a compound comprising nanoparticles, b) between about 30 and about 99.9 weight percent of a generally melt processable polymer, and c) between about 0.0 and about 50 weight percent of a compatibilizer, wherein the expanded polymeric web has been expanded by hydroformation of a base polymeric web, and has an air permeability that is greater than the air permeability of an expanded polymeric web of the melt processable polymer alone. The rejections set forth below are before us in this appeal. Claims 1-9, 11, 12, and 14-20 are rejected under 35 U.S.C. § 102(b) as anticipated by Brady (US 2003/0168776 A1, published September 2003). Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over Brady. Claims 10 and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Brady in view of the Mehta (US Patent 6,844,389 B2, issued January 2005). Appeal 2010-001276 Application 11/413,770 3 Finally, all appealed claims are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as unpatentable over the claims of copending applications 11/413,542, 11/413,546, and 11/434,371. We summarily sustain the provisional rejections based on obviousness-type double patenting since they have not been contested by Appellants in this appeal (Br. 6). We also sustain the § 102 and § 103 rejections for the reasons well stated in the Answer. We add the following comments for emphasis. Concerning the § 102 rejection, Appellants acknowledge that Brady discloses an expanded polymeric web comprising particles having a dimension as low as 500 nm but argue that the claim 1 term "nanoparticles" is limited to a dimension between 1 and 9 nm on the grounds that they have defined nanoparticles as having at least one dimension in the nanometer (singular) not several hundreds of nanometers (plural) range (Br. 3-4). Appellants do not identify the Specification disclosure which defines "nanoparticles" in the manner asserted above. Further, Appellants proffer no evidence that one with ordinary skill in this art, having read their Specification, would interpret the claim 1 term "nanoparticles" as limited to a dimension between 1 and 9 nm. For these reasons and the reasons expressed in the Answer, we find Appellants' argument to be unpersuasive. We are also unpersuaded by Appellants' argument that a web expanded by hydroformation as recited in independent claims 1 and 12 (but not independent claim 17) differs from the web of Brady which is expanded by ring-rolling (Br. 5). This argument is refuted by the Specification which Appeal 2010-001276 Application 11/413,770 4 expressly teaches that Appellants' web can be expanded by "hydroformation, vacuum formation, and other film expansion methods as are known in the art" (Spec. 4:7-8). Brady evinces that ring-rolling is a film expansion method known in the art. For the reasons stated above and in the Answer, the record reflects that the expanded webs claimed by Appellants and disclosed by Brady are indistinguishable and necessarily possess the same characteristics (e.g., the permeability characteristic of claim 1). Under these circumstances, it is appropriate to require Appellants to prove that the web of Brady does not actually possess the characteristics of their claimed web. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). On this record, Appellants have proffered no such proof. Concerning the rejection based on Brady and Mehta, Appellants argue that “[n]othing in either Brady or Mehta suggests that the underlying purpose of Brady may be accomplished after the addition of the Mehta reference” (Br. 6). Appellants are incorrect. The teaching in Brady that unspecified clay is a suitable additive would have suggested that the organically-treated montmorillonite clay taught by Mehta (and required by the rejected claims) would be a suitable additive in the web of Brady. The decision of the Examiner is affirmed. AFFIRMED bar Appeal 2010-001276 Application 11/413,770 5 THE PROCTER & GAMBLE COMPANY GLOBAL LEGAL DEPARTMENT - IP SYCAMORE BUILDING - 4TH FLOOR 299 EAST SIXTH STREET CINCINNATI, OH 45202