Ex Parte Lee et al

Patent Trial and Appeal Board

Jan 24, 2017

11130877 (P.T.A.B. Jan. 24, 2017)

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.
11/130,877 05/17/2005 Yann-Per Lee 8012DC 3766
27752 7590 01/26/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
VARGOT, MATHIEU D
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
01/26/2017 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YANN-PER LEE, SAEED FERESTEHKHOU,
and KEITH J. STONE
Appeal 2015-001521
Application 11/130,877
Technology Center 1700
Before CHUNG K. PAK, TERRY J. OWENS, and JENNIFER R. GUPTA,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 32, 34, and 35. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for making an apertured polymeric
film-based web. Claim 32 is illustrative:
32. A method for making an apertured polymeric
film-based web for use as an absorbent article topsheet, said
method comprising the steps of:
Appeal 2015-001521
Application 11/130,877
a. providing a vacuum forming structure comprising a
plurality of perforations, a first side and an opposing second
side;
b. extruding a resinous melt onto the first side of the
perforated vacuum forming structure;
c. providing a vacuum on the second side of the
perforated vacuum forming structure so that portions of the
resinous melt are drawn into the plurality of perforations to
form a film having a first plurality of apertures having a first
diameter and a height extending from a first surface of the film;
d. thereafter contacting the film having a first plurality of
apertures with needles or heatable pins to define a second
plurality of apertures having a second diameter that is greater
than the first diameter, wherein discrete needles or pins
associated with this step enables the first plurality of
apertures in areas not impacted by the discrete needles/pins to
remain substantially unaltered relative to their as-made state;
e. wherein the first surface of the film defines a wearer­
contacting surface of the web, and wherein the first surface of
the film is hydrophilic;
f. wherein sidewalls of the second plurality of apertures
extend in a direction away from the wearer-contacting surface.
The Rejections
Claims 32, 34, and 35 stand rejected under 35 U.S.C. § 103 over the
Appellants’ admitted prior art and provisionally on the ground of
nonstatutory obviousness-type double patenting over claim 17 of copending
Application No. 12/193,325.1
OPINION
We reverse the rejection under 35 U.S.C. § 103 and affirm the
provisional obviousness-type double patenting rejection.
1 For the Appellants’ admitted prior art the Examiner cites to the Appellants’
Patent Application Publication US 2005/0214506 A1 (Sep. 29, 2005)
(Ans. 2). For consistency we likewise do so.
2
Appeal 2015-001521
Application 11/130,877
Rejection under 35 U.S.C. §103
We need address only the sole independent claim, i.e., claim 32. That
claim requires forming apertures in a polymeric film first by vacuum
forming and then by discrete needles/pins.
The Appellants acknowledge that the prior art includes a method
wherein three dimensional surface structures (apertures 300) and fluid
transport apertures (310) are formed in a polymeric film by a
double-hydroforming process (150; Fig. 3) and that it was known in the art
to form apertures by vacuum forming and by mechanical methods including
heated needles and heated pins flflf 81—82, 91).
The Examiner finds that the Appellants admit that the known
aperture-forming methods are functional equivalents (Ans. 3—4, 6—9).
The Examiner does not point out any portion of the Appellants’
Specification which supports that finding, and the Appellants challenge the
finding (Reply Br. 3). Accordingly, we do not accept the finding as fact.
See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964). Consequently,
the Examiner’s conclusion based on the finding, i.e., that “[i]t would have
been obvious to one of ordinary skill in the art at the time invention to have
modified the double hydroforming process of the admitted prior art that
forms the article in instant Figure 3 with the well-known aperture forming
methods also taught in the prior art as disclosed in instant paragraphs
0080-0082, 0089 and 0091 since they are known to be functionally
equivalent” (Ans. 4), is not well taken.
The Examiner finds that “there are a limited number of methods by
which the three dimensional patteming/microaperturing and forming of
larger diameter fluid transport apertures are conventionally made” (Ans. 4),
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Appeal 2015-001521
Application 11/130,877
and based on that finding concludes that “it would have been obvious to one
of ordinary skill in the art to pick and choose suitable methods based on
availability and convenience” (id.).
The Examiner does not point to support in the Appellants’ admitted
prior art for that conclusion. In the Appellants’ admitted prior art relied
upon by the Examiner, both the three dimensional surface structures and the
fluid transport apertures are formed by the same method (hydroforming)
(150). The Examiner does not establish that the prior art discloses or would
have suggested, to one of ordinary skill in the art, use of different aperture
forming methods in sequence.
Thus, the record indicates that the rejection is based upon
impermissible hindsight in view of the Appellants’ disclosure. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art”). Accordingly, we reverse the rejection under 35 U.S.C. § 103.
Provisional obviousness-type double patenting rejection
The Appellants do not challenge the provisional obviousness-type
double patenting rejection (App. Br. 2). We therefore summarily affirm that
rejection.
DECISION/ORDER
The rejection of claims 32, 34, and 35 under 35 U.S.C. § 103 over the
Appellants’ admitted prior art is reversed. The rejection of claims 32, 34,
and 35 provisionally on the ground of nonstatutory obviousness-type double
patenting over claim 17 of copending Application No. 12/193,325 is
affirmed.
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Appeal 2015-001521
Application 11/130,877
It is ordered that the Examiner’s decision 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).
AFFIRMED
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