Ex Parte Gambier

Board of Patent Appeals and Interferences

Oct 31, 2007

10675559 (B.P.A.I. Oct. 31, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY J. BLENKE and PEIGUANG ZHOU
____________

Appeal 2007-2024
Application 10/266,440
Technology Center 1700
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Decided: October 31, 2007
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
61-95. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

INTRODUCTION
Appellants claim a laminated absorbent product having a component
to which is applied a material basis weight increasing agent for increasing
the material basis weight of the treated portion of the component by at least
about 10% (claim 61). Appellants further claim a laminated absorbent
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Application 10/266,440

product comprising a first material bonded to a second material with an
adhesive, such that the second material increases the material basis weight of
the first material (claim 79). The material basis weight increasing agent of
claim 61 and the adhesive used to bond the first and second materials of
claim 79 comprise an atactic polymer and an isotactic polymer having a
number-average molecular weight and degree of crystallinity as recited in
claims 61 and 79. Appellants disclose that the particular adhesive
composition is advantageous because it is stable over an extended period of
time and a single adhesive composition may be used throughout the entire
manufacturing process (Specification 53 and 54).
Claims 61 and 79 are illustrative:
61. A laminated absorbent product comprising a component wherein
at least a portion of the component comprises a material basis weight
increasing agent for increasing the material basis weight of the treated
portion of the component by at least about 10%, the material basis weight
increasing agent comprising an atactic polymer and an isotactic polymer, the
atactic polymer having a degree of crystallinity of less than about 20% and a
number-average molecular weight of from about 1,000 to about 300,000 and
the isotactic polymer having a degree of crystallinity of at least about 40%
and a number-average molecular weight of from about 3,000 to about
200,000.

79. A laminated absorbent product comprising a component
comprising a first material wherein at least a portion of the first material
comprises a second material bonded thereto for increasing the material basis
weight of the first material, the first material and second material being
bonded together with an adhesive composition, the adhesive composition
comprising an atactic polymer and an isotactic polymer, the atactic polymer
having a degree of crystallinity of less than about 20% and a number-
average molecular weight of from about 1,000 to about 300,000 and the
isotactic polymer having a degree of crystallinity of at least about 40% and a
number-average molecular weight of from about 3,000 to about 200,000.
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Application 10/266,440

The Examiner relies on the following prior art references as evidence
of unpatentability:
Yang US 5,539,056 Jul. 23, 1996
McCormack US 5,882,769 Mar. 16, 1999
Malowaniec US 6,428,525 B1 Aug. 6, 2002

The rejections as presented by the Examiner are as follows:
1. Claims 61-78 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Malowaniec in view of Yang.
2. Claims 79-95 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCormack in view of Yang.

With regard to claim 61, the Examiner finds that Malowaniec discloses
applying and controlling the thickness of the adhesive on the fastening
tongues 24 of diapers to control the adhesive force (Malowaniec col. 3, ll.
27-34), but that Malowaniec is silent regarding increasing the material basis
weight by “at least [about] 10%” and the adhesive composition used (Supp.
Ans. 3, 4, and 6)1. The Examiner finds that Yang discloses a “very flexible
and [very] strong” atactic-isotactic thermoplastic elastomer composition
useful in adhesives having the claimed degree of crystallinity and molecular
weight (Supp. Ans. 4 and 5). The Examiner concludes that it would have
been obvious to combine Yang’s adhesive with Malowaniec’s diaper
because Yang discloses that the composition is “very flexible and [very]
strong” and is suitable for use in a variety of applications, including diaper
waistbands (Supp. Ans. 5).

1 A Supplemental Examiner’s Answer was mailed on December 14, 2006 in
response to Appellants’ Substitute Appeal Brief filed September 19, 2006.
We cite to the Supplemental Examiner’s Answer in this opinion.
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The Examiner further determines that “the amount the weight is
increased by application of the agent or adhesive is a result[-]effective
variable” (Supp. Ans. 6). Citing to In re Aller, 220 F.2d 454, 456 (CCPA
1955), the Examiner concludes that it would have been obvious to optimize
the amount of adhesive such that the material basis weight increases by at
least about 10% because where the general conditions of a claim are
disclosed in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art (Supp. Ans. 7).
With regard to claim 79, the Examiner finds that McCormack discloses a
stretch-pillowed, bulked laminate that is formed by bonding a first layer and
a second layer so as to increase the material basis weight (Supp. Ans. 7).
The Examiner finds that McCormack does not disclose the claimed adhesive
composition (Supp. Ans. 8). As noted above with regard to claim 61, the
Examiner finds that Yang discloses the claimed adhesive composition
(Supp. Ans. 8-9). The Examiner concludes that it would have been obvious
to combine Yang’s adhesive with McCormack’s stretch-pillowed, bulked
laminate to produce a high-performance product having an adhesive that is
“very flexible and [very] strong” as disclosed by Yang (Supp. Ans. 9).
Appellants separately argue independent claims 61 and 79. Accordingly,
non-argued dependent claims 62-78 and 80-95 stand or fall with claims 61
and 79, respectively.

OPINION
35 U.S.C. § 103(a) REJECTION OVER MALOWANIEC IN VIEW OF
YANG: INDEPENDENT CLAIM 61

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Appellants argue that it would not have been obvious to optimally
increase the material basis weight of a treated portion of Malowaniec’s
diaper by “at least about 10%” because the Examiner has not established that
Malowaniec or Yang recognize material basis weight as a result-effective
variable (Br. 10-11)2. We agree.
Generally, it would have been obvious to optimize a variable only if
that variable is an art recognized result-effective variable. In re Antonie, 559
F.2d 618, 620 (CCPA 1977).
Malowaniec discloses that the adhesive coating thickness is a result-
effective variable for determining adhesive force (Malowaniec, col. 3, ll. 26-
34). Attempting to establish that Malowaniec discloses that material basis
weight is a result-effective variable, the Examiner indicates that by
optimizing “the amount of adhesive based on the desired level of adhesion
which depends directly on the amount applied . . . the percentage weight
increase [i.e., material basis weight] of the substrate would be affected”
(Supp. Ans. 7).
Though the adhesive thickness applied to the fastening tongues of
Malowaniec’s diapers will affect the material basis weight of the fastening
tongues, such affect does not establish that the art recognizes material basis
weight as a result-effective variable. The Examiner improperly speculates
that optimizing Malowaniec’s adhesive thickness (i.e., Malowaniec’s
disclosed result-effective variable) to achieve a desired adhesive force would
result in optimally increasing the material basis weight by “at least about
10%.” Because the Examiner has not established that the art recognizes that

2 Throughout this opinion citation to the Brief is based on the page number
located at the bottom of each page of the Substitute Appeal Brief filed
September 19, 2006.
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Application 10/266,440

material basis weight is a result-effective variable, it is impossible to
determine whether one of ordinary skill in the art would optimally apply the
adhesive to achieve an “at least about 10%” increase in material basis
weight. Antonie, 559 F.2d at 620.
For the above reasons, we reverse the Examiner’s § 103(a) rejection
of claims 61-78 over Malowaniec in view of Yang.

35 U.S.C. § 103(a) REJECTION OVER McCORMACK IN VIEW OF
YANG: INDEPENDENT CLAIM 79

Appellants argue that there is no motivation to combine Yang’s
adhesive with McCormack’s stretch-pillowed, bulked laminate (Br. 22).
Specifically, Appellants argue that there is no motivation to use Yang’s
adhesive composition over any other strong and flexible adhesive known in
the art with McCormack’s stretch-pillowed, bulked laminate (Br. 24).
Appellants argue that Wang (US 6,329,468 B1), which is not part of any of
the rejections on appeal, is analogous art and teaches away from using
atactic-isotactic polymer adhesives on nonwoven materials (Br. 24).
Appellants contend that because Wang teaches away, one of ordinary skill in
the art would not have used Yang’s atactic-isotactic polymer adhesive for
bonding nonwoven materials (Br. 24). Appellants argue that the Examiner
used impermissible hindsight in combining Yang’s adhesive with
McCormack’s stretch-pillowed, bulked laminate (Br. 24).
We have considered all of Appellants’ arguments and are unpersuaded
for the reasons below.
McCormack discloses a stretch-pillowed, bulked laminate, useful in
diapers and other absorbent articles, that comprises a first layer 12 bonded to
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a second layer 14 at bonding areas 16 (McCormack, col. 6, ll. 10-13).
McCormack discloses that the bonding of first layer 12 to second layer 14
may be achieved by using adhesives (McCormack, col. 3, ll. 38-42; col. 6, ll.
18-21 and 50-53).
Yang discloses a thermoplastic elastomer useful in adhesives that is
“very flexible and very strong” (Yang, col. 1, ll. 37-39; col. 20, l. 26).
Regarding Appellants’ arguments that Wang teaches away from using
Yang’s adhesive blend of atactic polymers and isotactic polymers with
nonwoven materials, we are unpersuaded because McCormack discloses that
the first and second layers may be made of materials other than nonwoven
materials (McCormack, col. 4, ll. 59-62). Furthermore, Appellants’ claim 79
does not require that the first material or the second material be nonwoven.
Therefore, any of McCormack’s disclosed materials for the first and second
layers, including, for example, woven materials, films, or knits, will satisfy
Appellants’ claimed first and second materials.
Moreover, Appellants have not proffered any evidence to show that
Wang’s and Yang’s adhesive blend of atactic and isotactic polymers contain
the same types of atactic and isotactic polymers. Therefore, we are unable to
determine whether Wang’s disclosure teaches away from using Yang’s
adhesive composition in McCormack’s laminate.
Contrary to Appellants’ impermissible hindsight and lack of
motivation arguments, the Examiner provides motivation directly from the
references. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).
Specifically, Yang’s disclosure to form a thermoplastic elastomer that is
“very flexible and very strong” and useful in adhesive compositions
provides motivation for using Yang’s adhesive composition with
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McCormack’s stretch-pillowed, bulked laminate, which is useful in making
diapers and absorbent articles (Supp. Ans. 5 and 7). Both of these
characteristics of Yang’s adhesive composition are desirable in diapers and
other absorbent articles where bending and stretching routinely occur.
For the foregoing reasons, we agree with the Examiner’s conclusion
that it would have been obvious to combine Yang’s adhesive composition
with McCormack’s stretch-pillowed, bulked laminate because Yang’s
adhesive composition is “very flexible and [very] strong” (Supp. Ans. 9).
Accordingly, we affirm the Examiner’s § 103(a) rejection of claims
79-95 over McCormack in view of Yang.

DECISION
We REVERSE the Examiner’s § 103(a) rejection of claims 61-78
over Malowaniec in view Yang.
We AFFIRM the Examiner’s § 103(a) rejection of claims 79-95 over
McCormack in view of Yang.
The Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED-IN-PART

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