Ex Parte Desai et al

Patent Trial and Appeal Board

Aug 8, 2016

12981972 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/981,972 12/30/2010
22827 7590 08/08/2016
DORITY & MANNING, PA
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
FIRST NAMED INVENTOR
KeyurDesai
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.
KCX-1704
(64669253US01)
7543
EXAMINER
MELLOTT, JAMES M
ART UNIT PAPER NUMBER
1712
MAILDATE DELIVERY MODE
08/08/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte KEYUR DESAI, DEBORAH J. CALEWARTS, JIAN QIN,
JEFFREY F. WRENA, STEPHEN MICHAEL CAMPBELL, and
DONALD E. WALDROUP
Appeal2014-005248
Application 12/981,972
Technology Center 1700
Before CHUNG K. PAK, LINDA M. GAUDETTE, and WESLEY B. DERRICK,
Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-005248
Application 12/981,972
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision2
finally rejecting claims 1, 2, 4---6, 8-15, 17-22, and 26-28. See App. Br. 4. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
The invention relates to a process for applying additive compositions to a
base sheet, such as a tissue web, used to produce bath or facial tissues, paper
towels, and other similar products. Specification filed December 30, 2010
("Spec."), 2:8-14. The additive composition may improve softness and/or feel of
the substrate, may increase the strength, or otherwise alter another property of the
substrate. Id. at 6:27-29. Claim 1 is representative of the invention, and reads as
follows (emphasis added):
1. A process for applying an additive composition to a
surface of a substrate comprising:
applying an additive composition to a surface of a first roll;
transferring the additive composition from the surface of the
first roll to a surface of a second roll, the surface of the second roll
comprising a compressible material defining a pattern of raised
elements, each of the raised elements having a surface in which at
least one dimension of the surface is less than about 500 microns, the
raised elements being spaced apart a distance of less than about 500
microns measured from a center of one element to a center of an
adjacent element, wherein the pattern of raised elements comprises
rows of lines, each of the lines having a width of less than about 5 00
microns and each of the lines extending from one end of the second
roll to an opposite end of the second roll; and
applying the additive composition from the surface of the
second roll to a surface of a planar substrate, the planar substrate
containing pulp fibers, the additive composition containing a
1 Appellants identify the real party in interest as Kimberly-Clark Worldwide, Inc.
Appeal Brief filed October 18, 2013 ("App. Br."), 1.
2 Final Office Action mailed February 28, 2013 ("Final Act").
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Application 12/981,972
polymeric material and having a viscosity of at least 500 cps, the
additive composition covering at least 20% of the surface area of the
surface of the planar substrate, the planar substrate moving at a speed
of at least 500 ft/min during application of the additive composition.
Claim 26, the only other independent claim on appeal is substantially the same as
claim 1, but does not include the recitation shown in italics.
The Examiner maintains the following grounds of rejection on appeal (see
Final Act. 3-27; Examiner's Answer mailed February 10, 2014 ("Ans."), 2-12):
1. Claim 20 is rejected under 35 U.S.C. § 112, first paragraph, for failing
to comply with the written description requirement.
2. Claim 5 is rejected under 35 U.S.C. § 112, second paragraph as
indefinite, and under 35 U.S.C. § 112, fourth paragraph as being of improper
dependent form.
3. Claims 1, 2, 4--6, 8, 9, 11-15, and 17-22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dyer et al. (U.S. Patent Application Publication No.
2008/0073045 Al, published Mar. 27, 2008 ("Dyer")), Sun et al. (U.S. Patent No.
6,610, 174 B2, issued Aug. 26, 2003 ("Sun")), Hassan et al. (U.S. Patent No.
5,686,169, issued Nov. 11, 1997 ("Hassall")), Vinson et al. (U.S. Patent No.
5,851,352, issued Dec. 22, 1998 ("Vinson")) and Auhom et al. (U.S. Patent No.
4,908,240, issued Mar. 13, 1990 ("Auhom")).
4. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Dyer, Sun, Hassall, Vinson, and Auhom, and further in view of Monda et al. (U.S.
Patent Application Publication No. 2008/0295985 Al, published Dec. 4, 2008
("Monda")).
5. Claims 26-28 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Dyer, Hassan, Vinson, and Auhom.
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Application 12/981,972
Rejection of claim 20 under 35 U.S.C. § 112,jirst paragraph
Claim 20 depends from claim 1 and recites:
wherein the additive composition comprises ... [an] aqueous
dispersion having a viscosity of equal or greater than a value
calculated by an equation of y = 40e0·07X, wherein y represents
viscosity in a unit of centipoise and x is a percentage of an emulsifier
content calculated without water, and wherein x is less than about
61.6%.
The Examiner contends claim 20 fails to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph, because "the specification does
not contain clear support for the recitation of 'x is less than about 61. 6%'." Final
Act. 3; see also Ans. 11 ("[I]nstead of disclosing a range Appellant has instead
provided sufficient disclosure for a particular value which does not give rise to a
range.").
Appellants explain the upper limit of the recited range of the emulsifier
content "x", i.e., "about 61.6%," is derived by using 3000 cps as the "y" variable in
the equation y = 40e0·07x and solving for "x." App. Br. 14--15. In support of their
position, Appellants cite page 14, lines 18-19 and page 35, lines 1---6 of the
Specification. App. Br. 14.
The Specification discloses that
the additive composition applied to a surface of a substrate in
accordance with the present disclosure generally has a relatively high
viscosity. The additive composition, for instance, may have a
viscosity of greater than 500 cps, such as greater than about 800 cps.
For instance, the viscosity of the additive composition may range from
about 5 00 cps to about 3 000 cps.
Spec. 14: 15-19 (emphasis added). "In one embodiment, ... the additive
composition may comprise an aqueous dispersion." Id. at 21: 6-7. The
Specification further states:
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Application 12/981,972
As indicated above, the additive composition generally has a
viscosity of greater than about 500 cps, such as greater than about 800
cps. When the additive composition comprises an aqueous dispersion
as described above, the aqueous dispersion may have a viscosity of
equal or greater than a value calculated by an equation of y =
40e0·07X, where y represents viscosity in a unit of centipoise and xis a
percentage of an emulsifier content calculated without water.
Id. at 35: 1---6 (emphasis added).
To satisfy the written description requirement, a patent applicant must
"convey with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention. The invention is, for purposes
of the 'written description' inquiry, whatever is now claimed." Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991).
We have reviewed the Specification in its entirety, but do not find a clear
description of a process for applying an additive composition comprising an
aqueous dispersion having an emulsifier content of "less than about 61.6%" as
recited in claim 20. The description of an additive composition having a viscosity
ranging from about 500 cps to about 3000 cps on page 14 of the Specification
relates to an embodiment that is separate and distinct from the embodiment of the
additive composition described on page 35 of the Specification as comprising an
aqueous dispersion having a viscosity of equal or greater than a value calculated by
an equation of y = 40e0·07x. In other words, we do not find a description in the
Specification of an embodiment in which the additive composition is an aqueous
dispersion, contains an emulsifier (x), has a minimum viscosity (y) calculated
using the equation y = 40e0·07X, and has a viscosity in the range of about 500 cps to
about 3000 cps.
Even assuming, however, that one of ordinary skill in the art would
understand the Specification as describing such embodiment, we are not convinced
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Application 12/981,972
the ordinary artisan would understand that emulsifier content could be present in
an amount as high as 61.6%. Page 35, lines 1-6 of the Specification describe an
embodiment in which viscosity of an aqueous dispersion has a minimum value
based on emulsifier content. See Spec. 35: 1---6 ("[T]he additive composition
generally has a viscosity of greater than about 500 cps, such as greater than about
800 cps. . . . [T]he aqueous dispersion may have a viscosity of equal or greater
than a value calculated by an equation of y = 40e0·07x" (emphasis added)). There is
neither a description of a range for an emulsifier content nor a description of
calculating maximum emulsifier content (x) based on viscosity (y). One of
ordinary skill in the art, therefore, would understand from the description "a
viscosity of equal or greater than a value calculated by an equation of y = 40e0·07x"
(id. at 35:4--5) that the additive composition may have a viscosity of 3000 cps
when emulsifier is present in only trace amounts. It is not apparent from the
Specification, nor have Appellants provided evidence to show the ordinary artisan
would understand, that the invention encompasses an aqueous dispersion having an
emulsifier content as high as 61.6%, i.e., the amount at which the minimum
viscosity calculated by the equation y = 40e0·07x is 3000 cps. See App. Br. 14--15.
In sum, we agree with the Examiner that the Specification does not support
an aqueous dispersion having a viscosity over the entire claimed range for "x."
We, therefore, sustain the Examiner's rejection of claim 20 under 35 U.S.C. § 112,
first paragraph.
Rejection of claim 5 under 35 U.S.C. § 112, second and fourth paragraphs
Claim 1 includes the following limitation: a "second roll comprising a
compressible material defining a pattern of raised elements, ... wherein the
pattern of raised elements comprises rows of lines, ... each of the lines extending
from one end of the second roll to an opposite end of the second roll." Claim 5
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Application 12/981,972
depends from claim 1 and recites: "wherein the rows of lines are parallel to a
moving direction of the planar substrate."
The Examiner contends "it is physically impossible for the individual lines
on the second roll to extend from one end of the second roll to the second end of
the second roll[, as recited in claim 1,] and also be applied in a direction that is
parallel to the machine direction," as recited in dependent claim 5. Final Act. 4.
The Examiner determines "claim 5 is indefinite [under 35 U.S.C. § 112, second
paragraph,] because the limitation of claim 5 is contradictory to the limitation of
claim 1 in regards to the line features and thus one of ordinary skill in the art
would not reasonably understand what is being claimed." Id. The Examiner
further contends that "to meet the limitation of claim 5, the pattern on the second
roll could not possibly meet the limitation of claim 1." Id. at 5. The Examiner
concludes claim 5 is in improper dependent form [under 35 U.S.C. § 112, second
paragraph,] because claim 5 broadens, rather than limits, the scope of claim 1. Id.
Figure 4a of the present application is reproduced below:
{\
!
The Specification describes Figure 4a as "a perspective view of one embodiment
of a patterned roll that may be used to apply additive compositions." Spec. 6:4--5.
In the embodiment illustrated in Figs. 4a[,] ... raised elements 90
comprise line elements that extend from one end of the patterned roll
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Application 12/981,972
to an opposite end of the patterned roll. More particularly, the line
elements 90 are substantially linear and parallel with respect to one
another and are positioned so as to be perpendicular to the direction in
which a base sheet moves when contacted with the patterned roll 78.
Spec. 18 :20-25 (emphasis added). The Specification further discloses that
"elements 90 may appear on the patterned roll 78 according to various other
suitable patterns. For instance, in alternative embodiments, the line elements 90
may ... be positioned parallel to the direction of flow of the base sheet." Id. at
18:26-30.
Based on our review of the Specification, we agree with the Examiner that
"one of ordinary skill in the art would consider the opposite ends of a roll[, as
recited in claim 1,] to be the top and bottom of the cylinder (i.e. the cap ends of the
cylinder)." Ans. 10. Each of claim 1 and claim 5 recites a separate and distinct
embodiment of the second roll. We agree with the Examiner, therefore, that claim
5 is in improper dependent form, and affirm the rejection of claim 5 under 35
U.S.C. § 112, fourth paragraph.
A claim satisfies the definiteness requirement of 35 U.S.C. § 112, second
paragraph, when one skilled in the art understands the claim parameters as read in
light of the specification. BJ Servs. Co. v. Halliburton Energy Servs., 338 F.3d
1368, 1372 (Fed. Cir. 2003). Based on our review of the Specification, we
determine the ordinary artisan would understand the scope of claim 5.
Accordingly, we reverse the rejection of claim 5 under 35 U.S.C. § 112, second
paragraph.
Rejections of claims 1, 2, 4-6, 8-15, and 17-22 under 35U.S.C.§103(a)
The Examiner finds Dyer discloses a process for applying an additive
composition to a surface of a substrate that includes a step of applying the additive
composition from the surface of an offset gravure printer to a planar substrate
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Application 12/981,972
containing pulp fibers. Final Act. 6-7. The Examiner further finds Dyer's additive
composition contains a polymeric material having a viscosity of 626 cps and that
Dyer applies the additive composition so as to cover 20-60% of the surface area of
the planar substrate. Id. at 7. The Examiner finds Dyer discloses that the printed
additive can be applied in a preselected pattern such as a reticular pattern or a
series of discrete shapes, but does not teach the explicitly claimed pattern of raised
elements comprising rows of lines. Id.
The Examiner finds Sun discloses a method of applying polymeric reactive
compounds to fibrous webs in various patterns, including sinusoidal stripes applied
in the machine direction or cross direction, for the purpose of improving the
strength of the fibrous webs. Id. The Examiner further finds Sun describes the
stripes as having a width of less than 0.5 inches and covering about 50% of the
substrate. Id. Sun discloses the patterns can be applied by flexographic printing,
gravure printing, and offset printing. Sun 3:3-5, cited in Final Act. 8. The
Examiner finds one of ordinary skill in the art at the time of the invention would
have been motivated to print the additive composition of Dyer in a pattern of
sinusoidal stripes that span the entire width of the web that are less than 0.5 inches
wide, and cover about 50% of the substrate based on Sun's teaching that this
pattern improves the strength of the web. See Final Act. 8. Based on Sun's
disclosure that the uncoated regions are about the same width as the lines, the
Examiner finds the center-to-center distance between lines is about 400 microns.
Id. at 9.
The Examiner acknowledges the combination of Dyer & Sun does not teach
applying the additive composition to a first roll and transferring it to a second roll
for application to the planar substrate. Id. The Examiner finds Hassan discloses
that in a typical offset gravure printing process, a coating solution is applied to a
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Application 12/981,972
first roll that transfers the solution to a second patterned roll. Id. at 9-10 (citing
Hassall 7:24--45). The patterned roll then transfers the coating solution to a web to
form a pattern on the web. Id. at 10 (citing Hassall 7:35--45). The Examiner
determines "it would have been obvious to one of ordinary skill in the art at the
time of the invention to use the offset gravure printing method of Hassall ... to
apply the additive composition of Dyer to the tissue web of Dyer because Dyer
specifically teaches using an offset gravure printing system." Id. The Examiner
further determines
it would have been obvious to one of ordinary skill in the art at the
time of the invention to use a second roll that has a pattern of lines in
which each of the lines extend from one end of the second roll to the
opposite end of the second roll because it would have predictably
yielded a second roll that would be able to print the desired pattern of
the combination of Dyer & Sun.
Id. at 11.
The Examiner relies on Vinson for a teaching that the surface of the second
roller in an offset gravure printing process can have a compressible covering. Id.
at 12 (citing Vinson 14:42--45). The Examiner cites Auhorn for a teaching that
offset gravure printing is capable of operating at speeds of more than 2460 ft/min
(id. (citing Auhorn 8:57-9:2)), and determines "it would have been obvious to one
[of] ordinary skill in the art at the time of the invention to run the offset gravure
printing process of the combination of Dyer & Hassall at a speed of at least 500
ft/min" because offset gravure printing at that speed is recognized in the art (id.).
Appellants' traversal of the Examiner's rejections of claims 1, 2, 4--6, 8-15,
and 17-22 is based on contentions that Sun fails to disclose the claimed ranges for
the widths and separations of the pattern of lines recited in independent claim 1,
and that Sun teaches away from using viscosities above about 100 centipoise,
noting claim 1 requires an additive composition having a viscosity of at least 500
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Application 12/981,972
cps. App. Br. 7-10. As explained by the Examiner in the Response to Argument
section of the Answer, Appellants' arguments are not persuasive because Sun
discloses line widths and separations that overlap with the claimed ranges, and
Appellants have not provided persuasive evidence showing criticality or
unexpected results for the claimed ranges. See Ans. 3-6; In re Peterson, 315 F.3d
1325, 1330 (Fed. Cir. 2003) ("[T]he existence of overlapping or encompassing
ranges shifts the burden to the applicant to show that his invention would not have
been obvious."). Appellants' argument that Sun teaches away from using an
additive composition having a viscosity of 500 cps with a line pattern as recited in
the claims is unconvincing because Appellants have not shown error in the
Examiner's finding that Sun merely indicates a preference for, but does not
require, viscosities of 100 centipoise or less. See Ans. 7; Sun 6:19-20; cf Syntex
(U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1379-80 (Fed. Cir. 2005) ("A
statement that a particular combination is not a preferred embodiment does not
teach away absent clear discouragement of that combination."). Moreover, as
further explained by the Examiner (see Ans. 5-7), Appellants have not shown that
Sun's pattern could not be used with Dyer's additive composition which has a
viscosity within Appellants' claimed range (Dyer i-f 180, sample no. 3) and is
described by Dyer as useful for applying patterns using the same type of offset
gravure printing process (id. i-fi-1139-140, 146) used in Sun (Sun 3:3-5).
Appellants have not presented separate arguments in support of patentability
of any dependent claims. See App. Br. 6-11. Accordingly, we affirm the
rejections of claims 1, 2, 4---6, 8-15, and 17-22 under 35 U.S.C. § 103(a).
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Rejection of claims 26-28 under 35 U.S.C. § 103(a)
As noted above, claim 26 does not recite a specific pattern for the raised
elements. The Examiner, therefore, does not rely on Sun for a teaching of a stripe
pattern (see above discussion of the rejection of claim 1 ), but finds Dyer teaches a
pattern as recited in claim 26. Specifically, the Examiner, relying on Figure 5 and
paragraphs 141 and 143 of Dyer (see Final Act. 23-24), finds
Dyer discloses that the additive composition can be deposited with
features of 0.01 inches diameter and a surface coverage of 20-60%
(i.e. at 60% coverage of 0.01 inches diameter features, the produced
pattern is 60 dpi which in tum means that the features have a center to
center distance of 423.33 microns & at 20% coverage of 0.01 inches
diameter features the produced pattern is 20 dpi which in tum means
that the features have a center to center distance of 1270 microns --
the center to center distance of the features is between 423.33-1270
microns.
Final Act. 23. The Examiner finds the range for center to center spacing of the
circular features comprising Dyers' pattern overlaps the claimed range of "less
than 500 microns" (claim 26). Id. at 24. The Examiner relies on Hassall; Vinson;
and Auhom for a teaching or suggestion of the same claim limitations discussed
above in connection with the rejection of claim 1. Compare Final Act. 24--27 with
id. at 9-12.
Dyer discloses that "[t]he additive composition is applied to the base web
in a preselected pattern" (Dyer i-f 139) and each side of the paper web so as to
cover from about 15% to about 7 5% of the surface area of the web, and that "in
most applications, the additive composition will cover from about 20% to about
60% of the surface area of each side of the web" (id. i-f 141 ). Dyer discloses that
the additive composition can be applied in various patterns, including a reticular
pattern that is interconnected to form a net-like design on the surface (id. i-fi-1140,
145), dots (id. i-f 143; Fig. 5), and three elongated hexagons (id. i-f 144). Dyer
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Application 12/981,972
discloses that in one embodiment, the additive composition may be applied in a
pattern of dots, "spaced so that there are approximately from about 25 to about 35
dots per inch in the machine direction or the cross-machine direction," and that
"[t]he dots can have a diameter, for example, of from about 0.01 inches to about
0.03 inches." Id. i-f 143. Dyer discloses "one particular embodiment" in which the
dots have a diameter of about 0.02 inches and approximately 28 dots per inch
extend in either the machine direction or the cross-machine direction. Id. Dyer
discloses that in this embodiment, the dots can cover about 25% of the surface area
of the web. Id.
Appellants have persuasively argued that the Examiner's rejection is based
on an unsupported finding that Dyer discloses a surface area coverage of the web
in an amount of 20-60% when the additive composition is applied as a pattern of
dots. Reply Br. 8; see also App. Br. 11-12. The only pattern described in Dyer as
covering the surface area of the web in an amount of 40 to 60% is the pattern
comprised of three elongated hexagons. See Dyer i-f 144. In the table on page 12
of the Appeal Brief, Appellants provide calculations showing that the center to
center distances between dots in the pattern relied on by the Examiner range from
725-1048 microns, i.e., outside the claimed range of "less than about 500 microns"
(claim 26). Although Dyer teaches that the additive composition may be applied to
cover from about 20 to about 60% of the surface area of each side of the web (see
Dyer i-f 141 ), we agree with Appellants that Dyer does not teach clearly that this
range of surface coverage can be achieved using all of the disclosed patterns.
More specifically, Dyer does not disclose using a dot pattern to achieve a surface
area coverage of the additive composition in amounts that would result in a center
to center distance of the dots in an amount of "less than about 500 microns" (claim
26). Nor has the Examiner explained why one of ordinary skill in the art would
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have been motivated to modify Dyer's dot pattern to achieve the claimed spacing.
See Reply Br. 8-9.
In sum, Appellants have persuasively argued the Examiner's obviousness
determination as to claims 26-28 is based on an unsupported finding of fact.
Accordingly, we reverse the rejection of claims 26-28 under 35 U.S.C. § 103(a).
Order
We affirm: (1) the rejection of claim 20 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement; (2) the
rejection of claim 5 under 35 U.S.C. § 112, fourth paragraph as being of improper
dependent form; (3) the rejection of claims 1, 2, 4---6, 8, 9, 11-15, and 17-22 under
35 U.S.C. § 103(a) as unpatentable over Dyer, Sun, Hassall, Vinson, and Auhom;
and (4) the rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable over
Dyer, Sun, Hassall, Vinson, and Auhom, and further in view ofMoncla.
We reverse: (1) the rejection of claim 5 under 35 U.S.C. § 112, second
paragraph as indefinite; and (2) the rejection of claims 26-28 under 35 U.S.C.
§ 103(a) as unpatentable over Dyer, Hassan, Vinson, and Auhom.
No time period for taking any subsequent action in connection with this
appeal maybe extended under 37 C.F.R. §1.136(a)(l)(iv).
AFFIRMED-IN-PART
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