Ex Parte Helfman et al

Board of Patent Appeals and Interferences

Feb 13, 2012

11037977 (B.P.A.I. Feb. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/037,977 01/18/2005 Bradley David Helfman GOJ.P.122 6361
26360 7590 02/13/2012
RENNER KENNER GREIVE BOBAK TAYLOR &WEBER
FIRST NATIONAL TOWER, SUITE 400
106 SOUTH MAIN STREET
AKRON, OH 44308-1412
EXAMINER
BARHAM, BETHANY P
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
02/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRADLEY DAVID HELFMAN and JOHN H. VISCOVITZ
__________

Appeal 2011-006652
Application 11/037,977
Technology Center 1600
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
dissolvable pad. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1 and 3-13 are on appeal (App. Br. 1). We will focus on
claims 1 and 11, the only independent claims on appeal, which read as
follows:
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1. A dissolvable pad for delivery of a solution to a surface, the
dissolvable pad comprising:
a water-soluble substrate selected from a water-soluble starch-based
material and a polyvinyl alcohol material; and
a solution impregnating or surface coated on said water-soluble
substrate and released therefrom upon pressing and rubbing said water-
soluble substrate against a surface such that the solution is delivered and
rubbed onto the surface, said solution being released from the substrate
without contacting the substrate with water.
11. A dissolvable pad for delivery of a solution to a surface, the
dissolvable pad comprising:
a foam-like water-soluble substrate made of an extruded starch-based
material and including micro-voids; and
a solution selected from a cleaning solution and a sanitizing solution,
said solution being retained in said water-soluble substrate such that said
cleaning solution can be applied to a surface by rubbing the water-soluble
substrate against said surface, wherein said micro-voids serve to scrub said
surface and the application of water is not necessary for releasing the
cleaning solution from said water-soluble substrate.
Claims 1 and 3-13 stand rejected under 35 U.S.C. § 103(a) as obvious
over US 6,623,854 B2 to Bond issued September 23, 2003 (hereinafter
“Bond '854”) in view of US 2004/0202632 A1 to Gott et al. published
October 14, 2004 (hereinafter “Gott”) or US 5,895,780 to Tokosh et al.
issued April 20, 1999 (hereinafter “Tokosh”) and further in view of
US 2005/0087317 A1 to Rydell published April 28, 2005 (hereinafter
“Rydell”) (Ans. 4).
Claims 1 and 3-13 stand rejected under 35 U.S.C. § 103(a) as obvious
over US 7,077,994 B2 to Bond et al. issued July 18, 2006 (hereinafter
“Bond '994”) in view of Gott or Tokosh and further in view Rydell (Ans. 7).
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Claims 1 and 3-13 stand rejected under 35 U.S.C. § 103(a) as obvious
over EP 0,372,388 A2 to Kakiuchi et al. published June 13, 1990
(hereinafter “Kakiuchi”) in view of in view of Gott or Tokosh (Ans. 9).
PRINCIPLES OF LAW
A claim “composed of several elements is not proved obvious merely
by demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
relevant question is “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue.” Id.
I
The Examiner relies on Bond '854 for teaching “a multicomponent
fiber comprising a thermoplastic starch” and “nonwoven webs and
disposable articles comprising the multicomponent fibers” (Ans. 4). The
Examiner finds that “[Bond] '854 teaches that the naturally occurring starch
is preferably derived from corn, wheat and potato due to their economy and
availability, but also teaches rice” (id.). The Examiner also finds that
“[Bond] '854 teaches forming the fibers into disposable nonwoven substrates
and to form articles into hygiene, cleaning, surface treatment and medical
applications such as wipes” (id.). In addition, the Examiner finds that
“[Bond] '854 teaches that the fibers are environmentally degradable or
flushable wherein they dissolve, disperse, disintegrate, and/or decompose in
a septic disposal system such as a toilet to provide clearance without
clogging the toilet or any other sewage drainage pipe” (id. at 5).
The Examiner relies on Gott for teaching “a cosmetic agent contained
in a starch based carrier material comprising starches such as potato, corn,
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tapioca, rice etc, . . . specifically Eco-Maize, Eco-Foam, etc” (id.). The
Examiner finds that Gott “teaches that the carriers are extruded and form
foamed solids, like a honeycomb (which read on the instant ‘mi[cr]o-
voids[’])” (id.).
The Examiner relies on Tokosh for teaching “a soap composition with
a water soluble starch base such as Eco-Foam” (id.).
The Examiner concludes that it would have been obvious “to combine
[Bond] '854 in view of [Gott] or [Tokosh]” (id. at 6). In particular, the
Examiner finds:
One of ordinary skill in the art would know how to substitute
the specific fibers of corn, wheat, etc or Eco-Foam, etc of
[Tokosh] or [Gott] and for the generic natural fiber of [Bond]
'854 capable of being used in a wipe or cleansing product with
predictable results. Such a substitution of one vegetable fiber
for another would be within the purview of the skilled artisan.
(Id.)
The Examiner relies on Rydell for teaching “a readily dispersible wet
wipe for cleaning surfaces, comprising a substrate and a solution of at least
35% alcohol used to wet the substrate or a polyamide and less than 35%
alcohol” (id. at 5). The Examiner finds that Rydell “teaches that the liquid
wetting solution is applied to the substrate by spraying, coating, extrusion, to
the surface, by injection or pouring into a packaged portion of dry substrate”
(id.). The Examiner concludes that it would have been obvious “to combine
the teachings of [Bond] '854 in view of [Tokosh] or [Gott] and also [Rydell]
in order to learn how to impregnate, spray, coat, inject as taught by [Rydell]
the solution into the starch-based substrate of the wipe of [Bond] '854 in
view of [Tokosh] or [Gott]” (id. at 6).
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Findings of Fact
1. The Specification discloses that the “pad includes a ‘water
soluble substrate,’ which is to be understood to refer a suitable substrate that
is soluble in water, leaving no residual product” (Spec. 2: 26-27).
2. Bond '854 discloses multicomponent fibers comprising “a core
component comprising thermoplastic starch which is encompassed by
thermoplastic polymer component comprising a non-starch thermoplastic
polymer,” as well as “nonwoven webs and disposable articles comprising the
multicomponent fibers” (Bond '854, col. 1, ll. 44-60).
3. Bond '854 also discloses:
The fibers described herein are typically used to make
disposable nonwoven articles. The articles are commonly
flushable. The term “flushable” as used herein refers to
materials which are capable of dissolving, dispersing,
disintegrating, and/or decomposing in a septic disposal system
such as a toilet to provide clearance when flushed down the
toilet without clogging the toilet or any other sewage drainage
pipe. The fibers and resulting articles may also be aqueous
responsive. The term aqueous responsive as used herein means
that when placed in water or flushed, an observable and
measurable change will result. Typical observations include
noting that the article swells, pulls apart, dissolves, or observing
a general weakened structure.
(Id. at col. 9, ll. 33-45.)
4. According to the Declaration of Kristin E. Hartzell:
The thermoplastic polymer of component A [of Bond '854] is
not water soluble, and none of the large laundry list of “suitable
thermoplastic polymers” at col. 3, lines 19-40[, of Bond '854]
are water soluble. . . . The plain fact is that the products taught
in the '854 patent will not dissolve. Rather, while the starch
portion might dissolve, the thermoplastic portions will disperse,
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and, perhaps biodegrade if chosen to be biodegradable
thermoplastic polymers, but they will not dissolve. Thus a
water-soluble substrate is not taught in the '854 patent.
(Dec. ¶¶ 15-16.)
Analysis
Appellants have presented evidence indicating that the non-starch
thermoplastic polymer of the multicomponent fiber of Bond '854 is not
water-soluble (Finding of Fact (FF) 4). Thus, the evidence of record
supports Appellants’ position that Bond '854 does not teach a water-soluble
substrate.
We recognize that Bond '854 teaches that its articles may be
“flushable” or “aqueous responsive” and that the definitions of these terms
encompass articles that dissolve in water (FF 3). However, these definitions
also encompass articles that do not dissolve in water (id.). Thus, we do not
find that the inclusion of these definitions in Bond '854 is sufficient to rebut
Appellants’ evidence indicating that the non-starch thermoplastic polymer of
the multicomponent fibers of Bond '854 is not water-soluble.
The Examiner finds that “[o]ne of ordinary skill in the art would know
how to substitute the specific fibers of corn, wheat, etc or Eco-Foam, etc of
[Tokosh] or [Gott] and for the generic natural fiber of [Bond] '854 capable
of being used in a wipe or cleansing product with predictable results”
(Ans. 6). However, the Examiner has not adequately explained why it
would have been obvious to eliminate the non-starch thermoplastic polymer
from the fibers of Bond '854. Thus, we conclude that the evidence of record
supports the Appellants’ position that the “proposed substitution would still
result in a multi-component fiber . . . having a non-soluble component . . .
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and would therefore not yield the water-soluble substrate as required in the
present claims” (App. Br. 8).
Conclusion
The Examiner has not set forth a prima facie case that the claims
would have been obvious over Bond '854 in view of Gott or Tokosh and
further in view of Rydell. We therefore reverse the obviousness rejection
over these references.
II
The Examiner relies on Bond '994 for teaching “films comprising a
PHA copolymer/starch blend or thermoplastic starch” and “disposable
articles comprising the environmentally degradable films or laminates”
(Ans. 7). The Examiner finds that “[Bond] '994 teaches that the naturally
occurring starch is preferably derived from corn, wheat and potato due to
their economy and availability, but also teaches rice” (id.). The Examiner
also finds that “[Bond] '994 teaches that the disposable products such as
health care product and personal care products like cleansing wipes, wipes,
feminine hygiene, etc are environmentally degradable or flushable” (id.).
The Examiner relies on Gott, Tokosh, and Rydell substantially as
discussed above (id. at 8-9).
Findings of Fact
5. Bond '994 discloses “melt processed blended films comprising
a polyhydroxyalkanoate copolymer (PHA) and destructured starch” and
“[l]aminates comprising a first layer consisting essentially of a PHA
copolymer . . . and a second layer comprising either a PHA
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copolymer/destructured starch blend or thermoplastic starch” (Bond '994,
col. 3, ll. 42-47).
6. Bond '994 discloses that its films or laminates “are
environmentally degradable,” wherein the term “‘[e]nvironmentally
degradable’ is defined as being biodegradable, disintegratable, ‘aqueous-
responsive,’ dispersible, f1ushable, or compostable or a combination
thereof” (id. at col. 12, ll. 42-46).
7. According to the Declaration of Kristin E. Hartzell:
It is well-known to those of ordinary skill in the art that these
PHA’s are biodegradable, but not water-soluble. . . . A film
comprising a PHA copolymer/starch blend would not be water
soluble. Rather, the starch portion might be water soluble, such
that, as the starch portion dissolves in water, the remaining
PHA copolymer portion will be more “aqueous responsive” or
“dispersable”, as mentioned at col. 12, line 42-46, of the '994
patent, but the PHA portion, the presence of which is required
in the PHA copolymer/starch film or laminate of the '994
patent, will not dissolve in water. Thus the films taught are not
water soluble, rather, only a portion thereof is soluble, at best.
(Dec. ¶¶ 7-8.)
Analysis
Bond '994 discloses PHA-containing films or laminates that are
“environmentally degradable” (FF 5-6). The Examiner has not set forth a
prima facie case that these films or laminates are water-soluble.
In addition, Appellants have presented evidence indicating that the
PHA in the films of Bond '994 is not water-soluble (FF 7). Thus, the
evidence of record supports Appellants’ position that Bond '994 does not
teach a water-soluble substrate.
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The Examiner finds that “[o]ne of ordinary skill in the art would know
how to substitute the specific fibers of corn, wheat, etc or Eco-Foam, etc of
[Tokosh] or [Gott] and for the generic natural fiber of [Bond] '994 capable
of being used in a wipe or cleansing product with predictable results”
(Ans. 9). However, as with the first rejection, the Examiner has not
adequately explained why it would have been obvious to eliminate the PHA
from the films of Bond '994. Thus, we conclude that the evidence of record
supports the Appellants’ position that “the Examiner’s combination of
references . . . would fail to provide a water-soluble substrate as claimed”
(App. Br. 11).
Conclusion
The Examiner has not set forth a prima facie case that the claims
would have been obvious over Bond '994 in view of Gott or Tokosh and
further in view of Rydell. We therefore reverse the obviousness rejection
over these references.
III
The Examiner relies on Kakiuchi for teaching “a water-disintegrable
cleaning sheet comprising a web of water-dispersible fibers having
incorporated an aqueous cleaning agent containing an organic solvent”
(Ans. 10). The Examiner finds that Kakiuchi “teaches that the fibers include
non-wood vegetable fibers” (id.). The Examiner also finds that Kakiuchi
“teaches that the sheet has the aqueous cleaning solution incorporated,
sprayed or impregnated into it and is useful for cleaning or sterilizing” (id.).
In addition, the Examiner finds that Kakiuchi “teaches that the sheet is safe
to flush into the toilet” (id.).
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The Examiner relies on Gott and Tokosh substantially as discussed
above (id. at 10-11).
Findings of Fact
8. Kakiuchi discloses “a water-disintegrable cleaning sheet
comprising a web of water-dispersible fibers having incorporated thereinto a
water-soluble binder,” wherein “[e]xamples of suitable water-dispersible
fibers are wood pulp fibers, non-wood vegetable fibers, and synthetic fibers
such as rayon fibers and polyester fibers” (Kakiuchi 3: 3-15).
Analysis
The Examiner concludes that “[o]ne of ordinary skill in the art would
know how to substitute the specific vegetable fibers of corn, wheat, etc or
Eco-Foam of [Tokosh] or [Gott] and for the generic natural vegetable fiber
of [Kakiuchi] capable of being used in a wipe or cleansing product with
predictable results” (Ans. 11). We are not persuaded.
Kakiuchi specifically requires water-dispersible fibers (FF 8). The
Examiner has not adequately explained why it would have been obvious to
instead use water-soluble fibers.
Conclusion
The Examiner has not set forth a prima facie case that the claims
would have been obvious over Kakiuchi in view of Gott or Tokosh. We
therefore reverse the obviousness rejection over these references.

REVERSED

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