Ex Parte Dwiggins et alDownload PDFPatent Trial and Appeal BoardDec 30, 201613205268 (P.T.A.B. Dec. 30, 2016) Copy Citation 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. 13/205,268 08/08/2011 Carlton F. Dwiggins 42552/09326/11-545-US-ORD 1575 27530 7590 01/04/2017 Nelson Mullins Riley & Scarborough LLP IP Department 100 North Tryon Street 42nd Floor Charlotte, NC 28202-4000 EXAMINER CHOI, PETER Y ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 01/04/2017 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ip@nelsonmullins.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CARLTON F. DWIGGINS, PIERRE D. GRONDIN, RALPH A. MOODY III, and JOHN F. STEFFEN Appeal 2015-005629 Application 13/205,268 Technology Center 1700 Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and N. WHITNEY WILSON, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1—11 and 15-26. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). Appeal 2015-005629 Application 13/205,268 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants’ subject matter on appeal and is set forth below (with text in bold for emphasis): 1. A non woven fabric usable as a component in a personal hygiene product, said nonwoven fabric comprising; a first ribbon-shaped spunbond layer comprising first ribbon-shaped continuous filaments; a second ribbon-shaped spunbound layer comprising second ribbon-shaped continuous filaments; and a meltblown layer between said first ribbon-shaped spunbond layer and said second ribbon-shaped spunbond layer, wherein said meltblown layer is in direct contact with said first ribbon-shaped spunbond layer and said second ribbon-shaped spunbond layer, wherein said meltblown layer comprises meltblown fibers in an amount of at least 0.1% by weight of said nonwoven fabric and not greater than about 40% by weight of said nonwoven fabric, and wherein said meltblown layer has a basis weight no greater than 5 gsm, wherein the first ribbon-shaped spunbound layer, the second ribbon-shaped spunbound layer and the meltblown layer comprise a polyolefin, wherein said nonwoven fabric contains less than about 10 % by weight non-ribbon shaped spunbond filaments having an aspect ratio of less than about 1.5:1, wherein at least one of the first ribbon-shaped spunbound layer and the second ribbon shaped spunbond layer comprises at least 1 % by weight of the non-ribbon shaped spunbond filaments, and wherein said nonwoven fabric has a basis weight of at least 8 gsm and not greater than about 40 gsm and a pore size measured at 10% of cumulative filter flow of no more than about 27 microns. 2 Appeal 2015-005629 Application 13/205,268 The Examiner relies on the following prior art references as evidence of unpatentability: Catalan US Pub. No. 2006/0189956 A1 Aug. 24, 2006 Haggard US 6,471,910 B1 Oct. 29, 2002 Isele US Pub. No. 2006/0014460 A1 Jan. 19,2016 Brock US Pub. No. 2006/0141886 A1 June 29, 2006 Zucker US Pub. No. 2003/0129909 A1 July 10, 2003 THE REJECTIONS 1. Claims 1--11 and 15—26 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the enablement requirement. 2. Claims 1—11 and 16—24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Catalan in view of Haggard and Isele. 3. Claims 15 and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Catalan in view of Haggard and Isele, as applied to claims 1—11 and 16—24 above, and further in view of Brock. 4. Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Catalan in view of Haggard and Isele, as applied to claims 1—11 and 16—24 above, and further in view of Zucker. 3 Appeal 2015-005629 Application 13/205,268 ANALYSIS We select claim 1 as representative of all the claims on appeal, based upon Appellants’ presented arguments. 37 C.F.R. § 41.37(c) (1) (iv) (2014). Rejection 1 It is the Examiners basic positon that the Specification provides no guidance as to the initial pore size value which results in the claimed properties, for the reasons presented on pages 3—7 and 17—22, of the Answer, and therefore the Specification is not enabled. However, we are persuaded by Appellants’ arguments made on pages 6—10 of the Appeal Brief. Therein, Appellants convincingly explain how the initial pore size value is not necessary because the present application provides pore size measurement as a performance parameter or “in-use” value, which a person skilled in the art would reasonably find to be acceptable, relevant, and enabling for pore size characterization, without needing to know initial or pre-use pore sizes of the fabric. Appellants explain that initial pore sizes, if known, would not reveal any more about how to make and use the nonwoven than an in-use measure of the nonwoven product’s porosity, and that there is no evidence in the record to suggest that the industry typically expects to see initial pore size in combination with such a performance parameter value in order to be able to make the product. We agree. In view of the above, we reverse Rejection 1. 4 Appeal 2015-005629 Application 13/205,268 Rejections 2-4 We affirm Rejection 2 for the reasons expressed by the Examiner in the record, and add the following primarily for emphasis. It is the Examiner’s positon that the combination of Catalan in view of Haggard and Isele suggests the claimed subject matter for the reasons set forth on pages 8—15 and on pages 25—39 of the Answer. Therein, the Examiner expresses that overlaps in basis weights are prima facie obvious and alternatively optimizing such variables are prima facie obvious. Ans. 9. The Examiner also expresses that the claimed cross-section of the spun bond filaments would have been obvious based upon the teachings of Haggard and on the suitability for the intended purpose. Ans. 11. In a similar fashion, it is the Examiner’s position that the claimed amount of round fibers is prima facie obvious based upon the teachings of Haggard and on the suitability for the intended purpose. Ans. 12. Regarding the claimed pore size measured at 10% cumulative fiber and air permeability, it is the Examiner position that based upon the combination of applied references, including the teachings of Isele, it is reasonable to expect that the claimed pore size is taught because the combination sets forth a substantially similar structure and composition as claimed. Ans. 12—14. Appellant’s position is set forth on pages 10—20 of the Appeal Brief. Beginning on page 13 of the Appeal Brief, Appellants point to differences between their claimed subject matter and each of the applied references. However, as pointed out by the Examiner on pages 23—24 of the Answer, Appellants’ arguments do not address squarely what the combined teachings of the applied references reasonably would have suggested to one of ordinary skill in the art at the time of the invention. In re Merck & Co., 800 5 Appeal 2015-005629 Application 13/205,268 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (The test for obviousness “is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). As such, we are unpersuaded by such argument. Appellants also argue that Catalan does suggest use of a specific cross section of the fibers, that being round cross-sections. Appeal Br. 14—15. However, as expressed by the Examiner on pages 23—25 of the Answer, the test for obviousness “is what the combined teachings of the references would have suggested to those of ordinary skill in the art”. The Examiner relies upon Haggard for teaching the associated benefits of use of ribbon-shaped fibers. Ans. 24. As such, we are unpersuaded by such argument. Appellants also argue that Haggard teaches away from including non ribbon shaped and ribbon-shaped fibers for the reasons expressed on pages 16—17 of the Appeal Brief. However, we are unpersuaded by such argument for the reasons presented on pages 29-30 of the Answer. With regard to Appellants’ argument pertaining to liquid and gas permeability properties (Appeal Br. 16—17), we are also in agreement with the Examiner’s response made on pages 30—31 of the Answer. With regard to the claim limitation of the “pore size measured at 10% of cumulative filter flow of no more than about 27 microns”, Appellants argue that Isle refers to the pore size of the nanofiber layer and not of the nonwoven fabric. Appeal Br. 17—19. However, we are unpersuaded by such argument for the reason set forth on pages 31—33 of the Answer. Therein, the Examiner explains how Isle does suggest this limitation because Isle 6 Appeal 2015-005629 Application 13/205,268 teaches that the web comprises several layers wherein one or more layers can have a significant number of nanofibers. As the Examiner stated on pages 12—14 of the Answer (discussed, supra), the prior art combination teaches a substantially similar structure and composition as the claimed subject matter, so it is reasonable to expect that the claimed pore size measured at the claimed cumulative filter flow is either taught by the prior art combination, or naturally flows from the structure of the prior art combination.1 With regard to claims 3,11, and 16—24, Appellants discuss these claims on pages 23—25 of the Appeal Brief. Appellants argue that the recited properties of these claims are not taught by the applied references. In a similar fashion, we are unpersuaded by such argument for the reasons provided by the Examiner in the record (i.e., that such properties are either taught by the prior art combination, or naturally flows from the structure of the prior art combination). Ans. 37. Final Act. 13—14. In view of the above, we agree with the Examiner that a prima facie case has been met. We turn now to Appellants’ rebuttal evidence as set forth on pages 19—20 of the Appeal Brief. Applicants can rebut a prima facie case of obviousness by showing the criticality of the claimed range. The burden rests with Appellant to 1 In the case of Ex parte Obiaya, the court affirmed the Board of Patent Appeals and Interferences, which determined that the recognition of another advantage flowing naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise be obvious. See also In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979) (mere recognition of an inherent property in the prior art does not render patentable a known structure). There is no requirement that a reference must describe a limitation in haec verba. See In re Bode, 550 F.2d 656, 660 (CCPA 1977). 7 Appeal 2015-005629 Application 13/205,268 establish, inter alia, (1) that the comparisons are to the disclosure of the closest prior art, and (2) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). In the instant case, Appellants have not adequately explained how the evidence meets these criteria, and we note that it is not within the province of the Board to independently review Appellants’ data and ferret out possible evidence of unexpected results. On the contrary, the burden of establishing unexpected results rests squarely upon the party asserting them. Klosak, at 1088. We also refer to the Examiner’s stated response on pages 33—35 wherein the Examiner explains how Appellants’ results are not commensurate in scope with the claimed subject matter. In view of the above, we affirm Rejection 2. Because Appellants rely upon similar arguments for Rejections 3 and 4 (Appeal Br. 25—27), we likewise affirm these rejections for the reasons that we affirmed Rejection 2, and we also refer to the Examiner’s response made on pages 37—39 of the Answer in support thereof). DECISION Rejection 1 is reversed. Rejection 2 is affirmed. 8 Appeal 2015-005629 Application 13/205,268 TIME PERIOD 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). ORDER AFFIRMED 9 Copy with citationCopy as parenthetical citation