Ex Parte Efremova et al

Board of Patent Appeals and Interferences

Mar 28, 2011

11260356 (B.P.A.I. Mar. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NADEZHDA V. EFREMOVA, BRUCE M. SIEBERS,
LISHA YU, CHRISIAN L. SANDERS, GARY D. WILLIAMS,
NICHOLAS A. KRAFT, and SHENG-HSIN HU
____________

Appeal 2010-003842
Application 11/260,356
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
CATHERINE Q. TIMM, Administrative Patent Judges.

PAK, 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 2010-003842
Application 11/260,356

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 24 through 30, 33 through 35, and 38 through 44, all of
the claims pending in the above-identified application.2 We have
jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a nonwoven fabric,
fastening system…that includes an auto-adhesive material” (Spec. 1:6-7).
The nonwoven fabric fastening system includes first and second webs
having substantially the same composition positioned in a laminar surface-
to-surface relationship, with the first web being formed of a plurality of
extruded strands, at least some of which including an auto-adhesive material
(Spec. 4:20 and Spec. 9:5-9). According to page 9 of the Specification, the
first and second webs positioned in a laminar surface-to-surface relationship
are shown in Figure 3 which illustrates the entire surfaces of the first and
second webs being in continuous contact with one another. The
specification also defines “an auto-adhesive material” as follows:
As used herein, the term “auto-adhesive” refers to self-
adhesive properties of a material. An auto-adhesive is
substantially non-adhesive with respect to many other
materials. Some auto-adhesives may be repeatedly adhered
together and separated at service (e.g., room) temperature.
[(See Spec. 3:5-8.)]

Details of the appealed subject matter are recited in illustrative claims
24 and 33 reproduced from the Claims Appendix to the Appeal Brief as
shown below:

2 See generally the Appeal Brief (“App. Br.”) filed July 6, 2009, the
Examiner’s Answer (“Ans.”) filed October 1, 2009, and the Reply Brief
(“Reply Br.”) filed November 16, 2009.
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Application 11/260,356

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24. A fastening system comprising:
a nonwoven fabric that includes a first web and a second web,
wherein the first web is formed of a plurality of extruded strands where at
least some of the strands include an auto-adhesive material, wherein the
auto-adhesive material is a thermoplastic elastomer selected from the group
consisting of multiblock copolymers of radial, triblock and diblock
structures including non-rubbery segments of mono-and polycyclic aromatic
hydrocarbons; non-rubbery segments of substituted or unsubstituted
monocyclic arenes; rubbery segments of polybutadiene; and rubbery
segments of styrene butadiene, wherein the first web and second web are
positioned in a laminar surface-to-surface relationship, and wherein the first
web and second web have substantially the same composition; and
a foam layer that includes a surface having a plurality of free-standing
struts which are adapted to engage at least a portion of the plurality of
strands, at least some of the free-standing struts including an auto-adhesive
material that is similar to the auto-adhesive material in the nonwoven fabric.
33. A nonwoven fabric comprising:
a first web of extruded strands, the extruded strands being formed of a
first component and a second component with the first component being at
least partially formed of an auto-adhesive material, wherein the auto-
adhesive material is a thermoplastic elastomer selected from the group
consisting of multiblock copolymers of radial, triblock and diblock
structures including non-rubbery segments of mono-and polycyclic aromatic
hydrocarbons; non-rubbery segments of substituted or unsubstituted
monocyclic arenes; rubbery segments of polybutadiene; rubbery segments of
styrene butadiene; and a mixture of a polyethylene polymer and a block
copolymer; and
a second web of extruded strands, wherein the first web and second
web are positioned in a laminar surface-to-surface relationship, and wherein
the first web and second web have substantially the same composition.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following prior art reference (Ans. 2-3):
Mann US 5,085,655 Feb. 4, 1992
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Faass US 5,503,908 Apr. 2, 1996
Litchholt US 5,636,414 Jun. 10, 1997
Chen US 6,261,278 B1 Jul. 17, 2001
Seitter US 2002/0095130 A1 Jul. 18, 2002
Appellants seek review of the following grounds of rejection set forth
by the Examiner at pages 3 through 14 of the Answer:
1) Claims 24 through 30 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Litchholt, Seitter, and Mann;
2) Claims 33 through 35 and 39 through 44 under 35 U.S.C. §
103(a) as unpatentable over the combined disclosures of Litchholt and Chen;
and
3) Claims 33 through 35 and 38 through 44 under 35 U.S.C. §
103(a) as unpatentable over the combined disclosures of Faass and Chen.
(See App. Br. 3-4.)
FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUES, ANALYSIS,
AND CONCLUSION
Appellants contend, inter alia, that the applied prior art references as a
whole would not have led one of ordinary skill in the art to form the claimed
nonwoven web having first and second webs having substantially the same
composition positioned in a laminar surface-to-surface relationship with the
first web being formed of a plurality of extruded strands including an auto-
adhesive material (App. Br. 9-10, 13, and 16 and Reply Br. 1-2).
Thus, the dispositive question raised here is: Has the Examiner
demonstrated that the prior art references relied upon would have provided
any reason or suggestion which would have prompted one of ordinary skill
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in the art to form the claimed nonwoven web having first and second webs
having substantially the same composition positioned in a laminar surface-
to-surface relationship with the first web being formed of a plurality of
extruded strands including an auto-adhesive material within the meaning of
35 U.S.C. § 103(a)? On this record, we answer this question in the negative.
Under 35 U.S.C. § 103(a), the Examiner bears the initial burden of
supplying sufficient factual basis to establish a prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). To carry this burden, the
Examiner asserts (Ans. 5-8) that:
With regard to the limitation that the nonwoven fabric
includes a first web and a second web in a laminar surface to
surface relationship and wherein the first web and the second
web have substantially the same composition, it is noted that
mere duplication of parts has no patentable significance unless
a new and unexpected result is produced. In re Harza, 274 F.2d
669, 124 USPQ 378 (CCPA 1960). Therefore, in the absence
of a showing of a new and unexpected result it would have been
obvious to have duplicated the nonwoven layer of Litchholt by
adding and additional nonwoven layer to the structure of
Litchholt, and also it would have been obvious to have
employed a second nonwoven layer in order to provide a
reinforcement at the landing area to prevent tearing of the
landing area upon opening of the fastening system to
check the diaper, etc.
…
With regard to the limitation that the nonwoven fabric
includes a first web and a second web in a laminar surface to
surface relationship and wherein the first web and
the second web have substantially the same composition, it is
noted that mere duplication of parts has no patentable
significance unless a new and unexpected result
is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA
1960). Therefore, in the absence of a showing of a new and
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unexpected result it would have been obvious to
have duplicated the nonwoven layer of Faass by adding and
additional nonwoven layer to the structure of Faass, and also it
would have been obvious to have employed a second nonwoven
layer in order to provide a reinforcement at the landing area to
prevent tearing of the landing area upon opening of the
fastening system to check on the underlying limb to which the
bandage of Faass is applied, etc.

As well explained by Appellants at pages 4 through 16 of the Appeal
Brief, the Examiner has not demonstrated that the prior art references relied
upon would have provided any reason or suggestion which would have
prompted one of ordinary skill in the art to place first and second webs
having substantially the same composition, with the first web being formed
of a plurality of extruded strands including an auto-adhesive material, in a
laminar surface-to-surface relationship to form a nonwoven web as required
by the claims on appeal. Nowhere has the Examiner demonstrated that there
is some reason or suggestion in the applied prior art references to duplicate a
nonwoven layer containing, inter alia, a web made of a plurality of extruded
strands having an auto-adhesive material to arrive at the claimed invention.
Nor does In re Harza, 274 F.2d 669 (CCPA 1960) relied upon by the
Examiner demonstrate per se obviousness for duplicating any and all
arrangements, including the nonwoven web taught by Litchholt or Faass, to
arrive at the claimed invention. In re Ochiai, 71 F.3d 1565, 1570 (Fed. Cir.
1995) (no per se rule of obviousness exists). Unlike Harza, duplicating the
nonwoven web containing a web made of a plurality of extruded strands
having an auto-adhesive material taught by either Litchholt or Faass as
proposed by the Examiner would have rendered the web made of a plurality
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of extruded strands having an auto-adhesive material in the first nonwoven
web unsuitable for its intended purpose.
Even were we to agree with the Examiner that one of ordinary skill in
the art would have been led to duplicate the nonwoven web containing, inter
alia, a web made of a plurality of extruded strands having an auto-adhesive
material taught by either Litchholt or Faass, such modification would not
have resulted in the claimed invention as correctly asserted by Appellants at
pages 8 through 12 and 16 through 19 of the Appeal Brief and pages 2 and 3
of the Reply Brief. In particular, the Examiner has not shown that the
resulting two nonwoven webs correspond to a nonwoven web comprising a
first web formed of a plurality of extruded strands including an auto-
adhesive material and a second webs made substantially the same
composition as the first web placed in a laminar surface-to-surface
relationship as required by the claims on appeal. As correctly indicated by
Appellants at pages 16 through 19 of the Appeal Brief, the claimed laminar
surface-to-surface relationship requires the entire surfaces of the first and
second webs be in continuous contact with one another.

ORDER
Upon consideration of the record, and for the reasons set forth in the
Briefs and above, it is
ORDERED that the decision of the Examiner to reject claims 24
through 30 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Litchholt, Seitter and Mann is REVERSED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 33 through 35 and 39 through 44 under 35 U.S.C. § 103(a) as
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Application 11/260,356

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unpatentable over the combined disclosures of Litchholt and Chen is
REVERSED; and
FURTHER ORDERED that the decision of the Examiner to reject
claims 33 through 35 and 38 through 44 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Faass and Chen is
REVERSED.

REVERSED

sld

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