Ex Parte Liu et al

Board of Patent Appeals and Interferences

Apr 26, 2012

11022283 (B.P.A.I. Apr. 26, 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.
11/022,283 12/22/2004 Kou-Chang Liu KCX-909 (20654) 3024
22827 7590 04/26/2012
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
CORDRAY, DENNIS R
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
04/26/2012 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 KOU-CHANG LIU, LAURA LEIGH BOUDRIE,
MICHAEL JOHN SMITH, STEVEN PATRICK JONES, and
JOHN JERALD URLAUB
________________

Appeal 2010-012044
Application 11/022,283
Technology Center 1700
________________

Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek review of the Examiner’s rejection of claims 1-4, 6-8,
10, 11, 13, 14, 27, 28, 31, 32, and 36-39 of Application 11/022,283 pursuant
to 35 U.S.C. § 134. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
Background
The ’283 application discloses and claims tissue products that have
been treated with a polysiloxane softening agent. Spec. 1. Tissues treated
with such softening agents are known in the art; they often are hydrophobic,
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which is an undesirable property to impart to facial tissues. Id. The ’283
application teaches that this difficulty can be overcome through the addition
of a wettability agent to the softening agent. Id. at 2.
Claim 1 is representative:
1. (Rejected) A tissue product comprising:
at least one tissue web containing pulp fibers, the tissue product
having a first side and a second side;
a softening composition applied to at least one side of the tissue
product, the softening composition consisting essentially of
from about 5% to about 30% by weight of an amino-functional
polysiloxane . . .
and from about 70% to about 95% by weight of an ethoxylated
alcohol . . .
and wherein the softening composition is applied to the tissue
product in a manner and in an amount such that the tissue
product has a wet-out time of less than about 7 seconds and the
softening composition covers from about 95% to about 100% of
the surface area of the at least one side of the tissue sheet, the
softening composition being applied to the tissue product such
that the total solids add-on is from about 0.5% to about 5% by
weight.
Br. 19-20.
Rejections
The Examiner issued a series of rejections under 35 U.S.C. § 103(a):
1) Claims 1, 3, 6-8, 10, 11, 13, 27, 28, 36, 38, and 39 were
rejected over U.S. Patent No. 5,059,282 (“Ampulski ’282,”
issued Oct. 22, 1991) in view of U.S. Patent Application
Publication No. 2004/0118531 A1 (“Shannon,” June 24,
2004) or U.S. Patent No. 5,573,637 (“Ampulski ’637,”
issued Nov. 12, 1996),
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2) Claims 2 and 4 were rejected over Ampulski ’282 in view of
Shannon or Ampulski ’637 and further in view of U.S.
Patent No. 5,215,626 (“Ampulski ’626,” issued June 1,
1993),
3) Claims 8 and 14 were rejected over Ampulski ’282 in view
of Shannon or Ampulski ’637 and further in view of U.S.
Patent No. 6,514,383 B1 (“Liu,” issued Feb. 4, 2003).
4) Claims 31 and 32 were rejected over Ampulski ’282 in view
of Shannon or Ampulski ’637 and further in view of U.S.
Patent No. 6,238,682 B1 ( “Klofta,” issued May 29, 2001).
5) Claim 37 was rejected over Ampulski ’282 in view of
Shannon or Ampulski ’637 and further in view of U.S.
Patent Application Publication No. 2003/0118847 A1
(“Chuang,” June 26, 2003).
Discussion
Our review of these rejections requires us to consider two issues:
(1) whether Appellants have demonstrated the criticality of the claimed
relative amounts of polysiloxane and wettability agents in the claimed
softening composition as well as the total amount of the softening
composition applied to the tissue, and (2) whether the asserted references
disclose a tissue product with a wet-out time of less than about 7 seconds.
First, Appellants argue that the Examiner “overlooked the criticality
of Appellants claimed amounts” of polysiloxane and ethoxylated alcohol.
Br. at 9-11. Appellants do not dispute the Examiner’s finding that the
relative amounts of polysiloxane and wetting agent (surfactant) overlay the
claimed concentration ranges, rather Appellants point out that the ranges are
not specifically the same. Compare Br. 9 with Ans. 4. Appellants argue,
however, that the examples shown in the specification demonstrate that the
use of specifically claimed relative amounts of polysiloxane and ethoxylated
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alcohol “yield[s] a superior product that has an unusually low wet-out time.”
Id. at 10.
The data upon which Appellants rely, however, consist of five
samples. Two of the samples (i.e., samples 1 and 4) are embodiments of the
’283 application’s claims. The remaining three experiments are examples of
formulations well outside the scope of the claimed tissue products. See Spec.
17-18. As the Examiner correctly points out, with such a limited data set and
with data points so remote from the claimed ranges, it is not possible to
establish the criticality of the claimed amounts. Ans. 13-15. The only
specific conclusion that can be drawn from the data presented in the
specification is that increasing the amount of wettability agent used in the
tissue product decreases the wet-out time. This is an expected result, and the
data does not suggest that the wet-out times dramatically decrease when the
claimed relative amounts of polysiloxane and ethoxylated alcohol are used.
We, therefore, agree with the Examiner’s finding that the examples set
forth in the Specification do not sufficiently demonstrate the alleged
criticality of the claimed ranges of polysiloxane and ethoxylated alcohol.
Second, Appellants argue that the asserted prior art does not disclose
with sufficient specificity a tissue product with a wet out time of less than 7
seconds. Br. 11-12. Appellants’ arguments, however, are not sufficient to
overcome the rejection. Each of the three asserted references discloses
ranges of polysiloxane and ethoxylated alcohol that encompass the claimed
relative and total amounts of these compounds. Furthermore, Shannon
teaches the desirability of decreasing the wet-out time of the tissue product.
¶¶ 93-94. We agree with the Examiner’s stated reasons, Ans. 15-16, for
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concluding that the asserted references would have rendered this claim
limitation obvious.
Claim 39. The Examiner also rejected claim 39 as obvious over
Ampulski ’282 in view of Shannon or Ampulski ’637. In addition to the
arguments addressed above, Appellants present a separate argument for
reversal of the rejection of this claim. Claim 39 reads:
39. (Rejected) A tissue product comprising:
at least one tissue web containing pulp fibers, the tissue product
having a first side and a second side;
a softening composition applied to at least one side of the tissue
product,
the softening composition comprising from about 5% to about
30% by weight of an
amino-functional polysiloxane . . .
and from about 70% to about 95% by weight of an ethoxylated
propoxylated alcohol . . .
and wherein the softening composition is applied to the tissue
product in a manner and in an amount such that the tissue
product has a wet-out time of less than about 7 seconds and the
softening composition covers from about 95% to about 100% of
the-surface area of the at least one side of the tissue sheet, the
softening composition being applied to the tissue product such
that the total solids add-on is from about 0.5% to about 5% by
weight.
Br. 26-27 (emphasis added).
Appellants argue that none of the asserted prior art teaches the use of
an ethoxylated propoxylated alcohol. Br. 14-16. Shannon discloses the use
of ethoxylated and propoxylated alcohol as wettability agents. ¶ 67. Given
the similar structures and properties of ethoxylated alcohol and propoxylated
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alcohol and Shannon’s teaching that they are both useful as wettability
agents, it would have been obvious to a skilled artisan to combine the ethoxy
and propoxy groups in a copolymer for use as a wettability agent.
Claim 36. The Examiner also rejected claim 36 as unpatentably
obvious over Ampulski ’282 in view of Shannon or Ampulski ’637. Claim
36 is set forth below.
36. (Rejected) A tissue product as defined in claim 1, wherein
the softening composition is present substantially at the outer
surface of the at least one side of the tissue product.
Br. 26 (emphasis added).
Appellants argue that the prior art does not teach or suggest a tissue
product that satisfies the emphasized claim limitation. Br. 16. Indeed,
Appellants contend that the cited art teaches the contrary. Id. (citing
Ampulski ’282, col. 10, ll. 13-17). Ampulski ’282 discloses that the
polysiloxane is applied to one side of the tissue product and penetrates
through the entire thickness of the tissue paper so “that both surfaces [of the
tissue paper] have imparted thereto the benefits of polysiloxane.” Ampulski
’282, col. 10, ll. 13-17.
During prosecution, claims are to be given their broadest reasonable
interpretation, and the scope of a claim cannot be narrowed by reading
limitations into the claim. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). In this case, the Specification is devoid of any suggestion that the
Appellants meant for the term “substantially” to have other than its ordinary
meaning. Moreover, the Specification discloses various extents of tissue
coverage. For instance, the Specification states that the opposite sides can be
uniformly coated (Spec. 2, 4, 13); that the composition may cover from
about 20% to about 100% of the surface of each side (Spec. 4, 13); that the
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compostion may cover just a single side (Spec. 13); or that the composition
may be applied as fibers that do not penetrate through the entire thickness of
the web (Spec. 17). The Specification does not use the word “substantially”
in the context of any of the various embodiments.
We, therefore, construe the phrase “present substantially at the outer
surface” to require that the softening composition is present in a
considerable quantity at the outer surface of the tissue product. See, e.g.,
Webster’s Ninth New Collegiate Dictionary, 1176 (1985) (defining
substantial as considerable in quantity). Based on the breadth of the
Specification disclosures, the claim term does not exclude additional
penetration of the composition throughout the tissue.
When the claim language is properly construed, it is clear that
Ampulski ’282 teaches or suggests that the polysiloxane is present in a
considerable quantity at both surfaces of the tissue paper. We, therefore,
sustain the Examiner’s rejection of claim 36.
Claim 38. The Examiner also rejected claim 38 as unpatentably
obvious over Ampulski ’282 in view of Shannon or Ampulski ’637. Claim
38 is set forth below.
38. (Rejected) A tissue product as defined in claim 1, wherein
the total solids add-on of the softening composition is about 2%
by weight.
Br. 26
Appellants argue that none of the references obviate this add-on
amount. Br. 17. In fact, the claimed 2% by weight add-on amount falls
within the ranges taught by the references. E.g., Ampulski ’282, col. 2, ll.
41-45. Furthermore, as discussed above, Appellants have failed to provide
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any evidence that this claimed amount is critical to the success of their
claimed tissue product. We sustain the Examiner’s rejection of this claim.
Remaining Claims. Appellants argue for the patentability of claims
2, 4, 8, 14, 31, 32, and 37 based upon their dependence from claim 1 and its
asserted patentability. For the reasons set forth above, we have sustained the
Examiner’s rejection of claim 1. Thus, we also sustain the rejections of these
claims.
Conclusion
As discussed above, the Examiner’s rejections of claims 1-4, 6-8, 10,
11, 13, 14, 27, 28, 31, 32, and 36-39 of the ’283 application are sustained.
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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