Ex Parte Haines et al

Board of Patent Appeals and Interferences

Dec 27, 2007

09733472 (B.P.A.I. Dec. 27, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRAULIO A. POLANCO,
CHRISTOPHER DALE FENWICK,
DARRYL FRANKLIN CLARK,
BRYAN DAVID HAYNES,
KURTIS LEE BROWN,
CHAD MICHAEL FREESE and
ERIC SCOTT KEPNER
____________

Appeal 2007-3380
Application 10/749,805
Technology Center 1700
____________

Decided: December 27, 2007
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and THOMAS A.
WALTZ, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 1-22, 24-38, 40-46, 48, and 49,
Appeal 2007-3380
Application 10/749,805

which are the only claims pending in this application. We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
According to Appellants, the invention is directed to nonwoven webs
of substantially continuous A/B bicomponent crimped fibers having a
measured formation index value for one or both of a top surface of the web
and a wire (bottom) surface of the web, where the webs are produced
through use of an unheated fiber draw unit (FDU) (Br. 3).1 Independent
claim 1 and dependent claim 2 are illustrative of the invention and a copy of
these claims is reproduced below:
1. A nonwoven material comprising:

a) a web of substantially continuous A/B bicomponent crimped fibers,

b) the web having a percentage difference between a formation index of a
top side of the web and a formation index of a wire side of the web of less
than about 11%.

2. The nonwoven material according to Claim 1 wherein:

a) the web has a formation index averaging above about 37.6 on the top side
of the web when the web has a bulk to about 0.1 inches in the Z axis, or
wherein

b) the web has a formation index averaging above about 32.03 on the top
side of the web when the web has a bulk of over about 0.1 inches in the Z
axis.

The Examiner has relied upon the following prior art references as
evidence of unpatentability:

1 We refer to and cite from the “SECOND SUPPLEMENTAL APPEAL
BRIEF UNDER 37 C.F.R. § 41.37” dated Aug. 28, 2006.
2
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Application 10/749,805

Pike 5,382,400 Jan. 17, 1995
Suddeth 5,770,531 Jun. 23, 1998

ISSUES ON APPEAL
Claims 2-9, 20-22, 24-38, 40-46, 48, and 49 stand rejected under the
first paragraph of 35 U.S.C. § 112 as failing to comply with the enablement
requirement (Ans. 3).
Claims 1-15, 19-22, 24-30, 34-38, 40-46, 48, and 49 stand rejected
under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as obvious over Pike (Ans. 4).
Claims 16-18 and 31-33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pike in view of Suddeth (Ans. 5).2
Appellants contend that there is no legal basis for the Examiner’s
requirement of a correlation or “discernable trend” for the properties or
parameters of the web under the statute (App. Br. 5; Reply Br. 3).
Appellants contend that the formation index and bulk are measurable
properties, correlating with the basis weight, and all that is needed for
enablement is measurement of these properties, which is well within the
ordinary skill in this art (App. Br. 6; Reply Br. 2-3; Supp. Reply Br. 23).
Appellants further contend that the Examiner has not provided sufficient
factual findings with respect to the scope of the claims, undue
experimentation, or the ordinary level of skill in this art, to establish a prima
facie case of lack of enablement (App. Br. 6).

2 The Examiner has stated that the prior rejections under 35 U.S.C. § 112, ¶2,
and for obviousness-type double patenting have been withdrawn (Ans. 2:
¶(6)).
3 We refer to and cite from the “REPLY TO SUPPLEMENTAL
EXAMINER’S ANSWER” dated Mar. 9, 2007.
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Application 10/749,805

Appellants contend that the Examiner has not provided sufficient
factual findings from Pike to establish a prima facie case, since Pike
discloses a hot FDU process while the claimed nonwoven material is
produced by a cold FDU process (App. Br. 8). Appellants contend that their
Specification distinguishes between cold and hot FDU processes (App. Br.
8; Reply Br. 6).
Appellants contend that a correct interpretation of their data requires
the formation index to be determined from an average of 20 samples, and the
Examiner departs from this test procedure and views the measurements in
isolation in applying Pike against the claims (Reply Br. 6; Supp. Reply Br.
3).
The Examiner contends that the Specification does not teach a person
of ordinary skill in the art how the formation index correlates with the bulk
or basis weight of the web, and there is no discernible trend in these values
that would allow the artisan to arrive at these values and reproduce the
invention (Ans. 3-4 and 6; Supp. Ans. 2).
The Examiner agree with Appellants that Pike produces nonwoven
material by a hot FDU process but contends that Appellants’ Specification
acknowledges that hot FDU processes produce nonwoven materials that
possess the claimed properties at least for one sample (Ans. 7-9; Supp. Ans.
3).
Accordingly, we determine the following issues presented from the
record in this appeal: (1) Has the Examiner met the initial burden of
establishing that the claimed nonwoven materials could not be reproduced in
view of the disclosure in the Specification; and (2) Has the Examiner
established that the disclosure of Pike, as exemplified in the data from
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Appellants’ Specification, meets every limitation of claim 1 on appeal as
properly construed?4
We determine that the Examiner has not established a prima facie case
of lack of enabling disclosure for the reasons stated in the Briefs as well as
those reasons set forth below. Therefore, we REVERSE the rejection based
on § 112, first paragraph. However, we determine that the Examiner has
established a prima facie case of anticipation/obviousness in view of Pike
and the Specification data for the reasons stated in the Answers, as well as
those reasons set forth below. We note that Appellants have not contested
the application of Suddeth against several dependent claims (App. Br. 9),
and therefore we adopt the Examiner’s factual findings and conclusion of
law with regard to this rejection (Ans. 5). Therefore, we AFFIRM the prior
art rejections based on § 102(b)/§ 103(a) and § 103(a). Accordingly, the
decision of the Examiner to reject the claims on appeal is AFFIRMED.

OPINION
A. The Rejection under § 112, ¶ 1
The initial burden of proof rests with the Examiner in establishing, by
technical reasoning or other evidence, that Appellants’ Specification lacks
enabling disclosure to make or use the invention as claimed. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); In re Marzocchi, 439 F.2d

4 As correctly noted by the Examiner (Ans. 9), with regard to the rejection
over Pike, Appellants do not present arguments with specificity to any
particular claim (see the Briefs in their entirety). Therefore we select claim
1, the broadest independent claim, from the grouping of claims and decide
this ground of rejection on the basis of this claim alone. See 37 C.F.R. §
41.37(c)(1)(vii)(2004).
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220, 224 (CCPA 1971). Whether making and using the invention would
have required undue experimentation, and thus whether the disclosure is
enabling, is a legal conclusion based upon several underlying factual
inquiries. See In re Wands, 858 F.2d 731, 735 (Fed. Cir. 1988). It is not
necessary that the Examiner review all of the Wands factors5 to find a
disclosure non-enabling, but what is relevant depends on the facts. See
Amgen Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991).
On the record in this appeal, the only factual findings from the
Examiner are that “[t]here is no discernable trend between these values [the
data disclosed in the Specification]” (Ans. 4; Supp. Ans. 2) and that the
Specification does not teach a person of ordinary skill in the art how the
formation index “correlates” with the bulk or the basis weight of the web
(Ans. 3). However, as correctly argued by Appellants, there is no
requirement in the statute for a “discernable trend” in the data, nor that the
measured data “correlates” with each other (App. Br. 5; Reply Br. 3). The
Examiner has not established, or even alleged, that Appellants’ Specification
does not disclose a method of preparing the claimed nonwoven materials
(e.g., see Fig. 1 and text at Specification 10-11). As also correctly argued by
Appellants (App. Br. 6; Reply Br. 2), and not contested by the Examiner, all
of the data in question are the result of physical measurements known in the
art (i.e., formation index, bulk, basis weight, and fiber denier; see the
Specification 16-21). Therefore, we determine that the Examiner has not
met the initial burden of proof by advancing reasons or evidence why one of
ordinary skill in the art would not be able to make or use the invention as
claimed. We agree with Appellants that one of ordinary skill in this art

5 In re Wands, 858 F.2d at 735-37.
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would have recognized that bulk, basis weight, and formation index are
generally related, and also depend on other properties such as fiber density,
type of material, and fiber size (Reply Br. 2-3). Although some
experimentation might be necessary to reproduce Appellants’ results, the
Examiner has not established that this would require undue, rather than
routine, experimentation.
For the foregoing reasons and those stated in the Briefs, we cannot
sustain the Examiner’s rejection of claims 2-9, 20-22, 24-38, 40-46, 48, and
49 under the first paragraph of § 112 for lack of enabling disclosure.
B. The Rejection under § 102(b)/§ 103(a) over Pike
Implicit in our review of the Examiner’s anticipation/obviousness
analysis is that the claim must first have been correctly construed to define
the scope and meaning of each contested limitation. See Gechter v.
Davidson, 116 F.3d 1454, 1457, 1460 n.3 (Fed. Cir. 1997). As shown above
by the contentions of the Appellants and the Examiner, the only “contested
limitation” is whether claim 1 on appeal is limited to formation indices
based on one or more samples tested or is the claim limited to an “average”
formation index of twenty (20) samples (Rely Br. 6; Supp. Reply Br. 2-3;
Ans. 7-9; Supp. Ans. 3).
During prosecution before the Examiner, the Examiner must apply to
the verbiage of the proposed claims the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account any definitions or enlightenment
afforded by the original specification disclosure. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). “[P]articular embodiments appearing in a
specification will not be read into the claims when the claim language is
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broader than such embodiments.” Electro Med. Sys. S.A. v. Cooper Life
Sciences, 34 F.3d 1048, 1054 (Fed. Cir. 1994). The PTO should only limit
the claim based on an express disclaimer of a broader definition. See In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Applying these legal principles to the facts of this appeal, we
determine that the scope of claim 1 on appeal includes formation index
values from any number of samples and does not require a formation index
“averaging” twenty (20) samples. The plain language recited in claim 1 on
appeal does not require “averaging” or that the formation index is an average
value of any specific number of samples, but merely calls for “a formation
index” of the top side of the web and “a formation index” of the bottom
(wire) side of the web. Appellants’ Specification discloses that a formation
index value is based on light transmission/reflectance of the web and
measures sheet uniformity (3:14-17). Appellants define “Formation index”
as the M/K test formation index value, which is the quotient of the number
of pixels in the modal weight class of pixel light divided by the total number
of weight classes observed (Specification 8:12-19). The procedure for
measuring a “Formation index” is detailed by Appellants in the Specification
(19:21-21:10). Appellants disclose that for the formation indices measured
“[s]pecifically, 20 samples for the Formation index testing are cut from a
cross direction width strip of the nonwoven at locations throughout the strip”
(Specification 20:14-15). Although the Examples are all directed to
formation index averages of 20 samples (see Tables 2, 3, and 4;
Specification 33-34), we determine that there is no express disclaimer that a
formation index may not taken for a single sample or be an average of less
than (or more than) 20 samples. Therefore, we cannot read the particular
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embodiment of an average of 20 samples into the claimed formation index
when the claim language is broader than this embodiment.
In view of our claim construction discussed above, we determine that
the test data for “hot FDU” processes discloses formation index values
within the scope of claim 1 on appeal for nonwoven material comprising a
web made of substantially continuous A/B bicomponent crimped fibers (see
Ans. 4 and 7-9). The Examiner finds that the “hot FDU” data on page 34 of
the Specification is representative of the disclosure of Pike, and we
determine that Appellants have not contested this finding (Ans. 7-9; see the
Reply Br. and Supp. Br. in their entirety). We further note that not only Rep
1 for code 14 has top and wire formation index values with a difference of
less than 11% as required by claim 1 on appeal, but other samples such as
Reps 4 and 17 also meet this limitation, as would an average of these three
samples.
For the foregoing reasons and those stated in the Answer, we
determine that the Examiner has established a prima facie case of
anticipation in view of the reference evidence, which prima facie case has
not been adequately rebutted by Appellants’ arguments. Since anticipation
is the epitome of obviousness, we determine that the Examiner has also
established obviousness under § 103(a). Therefore, we affirm the
Examiner’s rejection of claim 1, as well as claims 2-15, 19-22, 24-30, 34-38,
40-46, 48, and 49 which stand or fall with claim 1.
C. The Rejection over Pike in view of Suddeth
As discussed above, Appellants do not contest or dispute the
Examiner’s application of Suddeth for the teaching of adding titanium
dioxide to fibers in absorbent products to provide a white coloration, merely
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repeating arguments against Pike (Ans. 5; App. Br. 9). Therefore, we adopt
the Examiner’s factual findings and conclusion of law regarding this
rejection.
D. Summary
The decision of the Examiner is affirmed.
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).
AFFIRMED

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