Ex Parte McKiernan et al

Patent Trial and Appeal Board

Oct 18, 2012

11145353 (P.T.A.B. Oct. 18, 2012)

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.
11/145,353 06/03/2005 Robin Lynn McKiernan 9869M 3154
27752 7590 10/19/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
CRAIG, PAULA L
ART UNIT PAPER NUMBER
3778
MAIL DATE DELIVERY MODE
10/19/2012 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROBIN LYNN McKIERNAN and DONALD CARROLL ROE
__________

Appeal 2011-012188
Application 11/145,353
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
absorbent article. The Examiner rejected the claims as anticipated and as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Application 11/145,353

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Statement of the Case
Background
The invention is drawn to an absorbent article having a “stretch zone
comprising a slow recovery elastomer wherein said slow recovery elastomer
exhibits a normalized unload force of greater than about 0.04 N/mm
2
at
37°C; and said slow recovery elastomer exhibits at least about 20% post
elongation strain at 22°C after 15 seconds of recovery from a 400% strain”
(Spec 2, l. 28 to 3, l. 2).
The Claims
Claims 1-7, 9-20, and 23-25 are on appeal. Claim 1 is representative
and reads as follows:
1. An absorbent article having at least one stretch zone
comprising a slow recovery elastomer wherein:
a) said slow recovery elastomer exhibits a normalized
unload force of greater than 0.04 N/mm
2
at 37°C; and
b) said slow recovery elastomer exhibits at least 50% post
elongation strain at 22°C after 15 seconds of recovery from a
400% strain; and
c) said stretch zone is a linear stretch zone or a curvilinear
stretch zone.

The issues

A. The Examiner rejected claims 1, 3-7, 16, 20, and 23-25 under 35
U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Shah
1
(Ans. 4-5).
B. The Examiner rejected claims 1, 3-6, 20, and 23-25 under 35 U.S.C.
§ 103(a) as obvious over Krueger
2
(Ans. 6-7).

1
Shah et al., US 5,536,563, issued Jul. 16, 1996.
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C. The Examiner rejected claims 2 and 15 under 35 U.S.C. § 103(a) as
obvious over Shah and Datta
3
(Ans. 8).
D. The Examiner rejected claims 9-11 under 35 U.S.C. § 103(a) as
obvious over Shah and Lavon
4
(Ans. 9-11).
E. The Examiner rejected claims 13 and 14 under 35 U.S.C. § 103(a) as
obvious over Shah and Otsubo
5
(Ans. 11-12).
F. The Examiner rejected claims 17 and 18 under 35 U.S.C. § 103(a) as
obvious over Shah and Igaue
6
(Ans. 12-14).
G. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as obvious
over Shah, Igaue, and Bewick-Sonntag
7
(Ans. 14-15).
H. The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as obvious
over Shah, Igaue and Datta (Ans. 15-16).
I. The Examiner rejected claims 1-7, 9-20 and 23-25 on the ground of
nonstatutory obviousness-type double patenting over claims 1-15 and 22-31
of copending application 11/144,497 and claims 3-4 and 7-20 of copending
application no. 11/087,368 (Ans. 16-17).
A. 35 U.S.C. § 102(b) / § 103(a) over Shah
The Examiner finds that “Shah teaches an A-B-A block copolymer, in
which block A is styrene and block B is isoprene, which is the same polymer
referred to by Appellant as S-I-S; similarly, Shah teaches an A-B-A block

2
Krueger et al., US 5,501,679, issued Mar. 26, 1996.
3
Datta et al., US 2002/0165516 A1, published Nov. 7, 2002.
4
Lavon et al., US 5,669,897, issued Sep. 23, 1997.
5
Otsubo et al., US 5,916, 206, issued Jun. 29, 1999.
6
Igaue et al., US 5,188,627, issued Feb. 23, 1993.
7
Bewick-Sonntag et al., US 5,762,641, issued Jun. 9, 1998.
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copolymer in which block A is styrene and block B is butadiene, which is
the same polymer referred to by Appellant as S-B-S” (Ans. 4). The
Examiner finds that the “claimed values for the normalized unload force and
post elongation strain are considered by the Examiner to be inherent in Shah,
since the materials are substantially identical. The burden to show that this,
in fact, is not the case is shifted to Appellant” (Ans. 5).
Appellants contend that their “declarations illustrate that Shah‟s
examples are not slow recovery elastomers as claimed by Applicants” (App.
Br. 5). Appellants contend that “in choosing chemicals, unlike Shah,
Applicants use the solubility parameters and the glass transition temperature
to create a slow recovery elastomer” (App. Br. 7).
Appellants contend that “Shah fails to disclose, directly or indirectly,
a slow recovery elastomer as claimed by Applicants. Since Shah gives no
apparent reason or motivation to combine its chemical elements to achieve a
slow recovery elastomer, the rejection over Shah as obvious is erroneous and
should be reversed” (App. Br. 10).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Shah either anticipates or renders the
composition of claim 1 obvious?
Findings of Fact
1. The Specification teaches that “the term „slow recovery
elastomer‟ refers to elastomeric compositions that exhibit at least about 20%
post elongation strain at 22°C after 15 seconds of recovery as measured by
the Post Elongation Recovery Test and exhibit a normalized unload force at
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37°C of greater than about 0.04N/mm
2
as measured by the Two Cycle
Hysteresis Test” (Spec. 7, ll. 13-17).
2. The Specification teaches that “[p]articularly preferred block
copolymers include styrene-butadiene-styrene (S-B-S) and styrene-isoprene-
styrene (S-I-S) block copolymers. Such linear block copolymers of styrene-
butadiene-styrene (S-B-S) and styrene-isoprene-styrene (S-I-S) are
commercially available” (Spec. 13, l. 30 to 14, l. 2).
3. The Specification teaches that “[m]odifying resins should have
a sufficiently high average molecular weight such that the glass transition
temperature of the soft block is increased which results in an increase of post
elongation strain at 22°C after 15 seconds of recovery” (Spec. 14, ll. 6-8).
4. The Specification teaches that “[p]referred modifying resins
also include alicyclic terpenes, hydrocarbon resins, cycloaliphatic resins,
poly-beta-pinene, terpene phenolic resins, and combinations thereof” (Spec.
15, ll. 18-20).
5. Shah teaches an absorbent article where “the nonwoven sheet is
prepared from a thermoplastic, elastomeric composition disclosed herein and
the nonwoven sheet exhibits desired elastic and adhesive properties” (Shah,
col. 2, ll. 56-59).
6. Shah teaches that “[s]uitable block copolymers used in this
invention comprise at least two substantially polystyrene endblock portions
and at least one substantially ethylene/butylene midblock portion” (Shah,
col. 5, ll. 18-21).
7. Shah teaches that once “the midblock and endblock portions
have been separately formed, they can be linked. Typically, midblock
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portions can be obtained by polymerizing di- and tri-unsaturated C4-C10
hydrocarbons such as, for example, dienes such as butadiene, isoprene, and
the like, and trienes such as 1,3,5-heptatriene, and the like” (Shah, col. 4, ll.
51-57).
8. Shah teaches that “[a]ll resins do not necessarily work with
equal effectiveness as a midblock associating tackifying resin in the present
invention. Suitable midblock associating tackifying resins include synthetic
terpenes having a softening point of about 80°C. to about 115°C” (Shah, col.
6, ll. 45-49).
9. Appendix 1 of the Melik
8
Declaration is reproduced below:

8
Declaration of Dr. David Melik and Janet Neton, filed April 12,
2010.
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“Appendix 1 of this declaration reports the post elongation strain after 15
seconds of recover at 22 C in accordance with Applicants‟ Post Elongation
Recovery Test” (Melik Dec. 2).
10. The Melik Declaration teaches that Dr. Melik “prepared the
blends for each of Samples 1-10 disclosed in Appendix 1 of this declaration,
said preparation being in accordance with the formulas described in Table 1
and the methods described in Example 1 of USPN 5,536,563 to Shah”
(Melik Dec. 1-2).
11. The Melik Declaration teaches that Janet Neton “tested each of
the films at 22°C in accordance with Applicants‟ Post Elongation Recovery
Test” (Melik Dec. 2).
Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
“Inherency ... may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” MEHL/Biophile Int'l. Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999).
Analysis
We agree with the Examiner that the rejection over Shah presents a
reasonable prima facie case of obviousness, where the Examiner has
demonstrated identical components available for selection in the
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Specification (FF 1-4) and in Shah (FF 5-8) in forming the elastomers. The
Examiner reasonably relied upon the inherency doctrine to address the post
elongation strain and unload force functional requirements in formulating
the prima facie case.
However, in rebuttal to the prima facie case, Appellants provided the
Melik declaration which experimentally demonstrated that none of the ten
elastomer examples in Shah, properly prepared, satisfied the functional
requirements of claim 1 (FF 9-11).
In response to Appellants Declarations rebutting the prima facie case,
the Examiner finds that it “is the position of the Examiner that an affidavit
under 37 CFR 1.132, to be effective, must compare the claimed subject
matter with the closest prior art” (Ans. 17).
We are not persuaded by the Examiner‟s argument. There is rarely
closer prior art than the reference relied upon by the Examiner, here the
Shah patent. When an obviousness rejection is based on a combination of
components in the prior art reference as in the instant situation, the
comparison to show unexpected results need only be between the closest
prior art reference and the claimed invention. In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991); In re Chapman, 357 F.2d 418, 422
(CCPA 1966). It need not be between the claimed invention and the
invention suggested by the combined teachings in the prior art reference or
references. Chapman, 357 F.2d at 422. To do so would require Appellants to
compare the claimed invention against itself.
The Examiner finds that “as the formulations disclosed by Shah are
identical to those disclosed by Appellant, the elastomeric characteristics
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must also be identical. Shah‟s failure to recognize these characteristics is
irrelevant” (Ans. 20).
We are not persuaded. In order to properly invoke the inherency
doctrine, the Examiner must provide evidence or reasoning to suggest that
the product being claimed is necessarily identical to the product of the prior
art, and that the products are identical insofar as shown by the available
evidence. MEHL, 192 F.3d at 1365. Here, Appellants have provided
evidence that ten of the products produced by Shah are not identical in
function to those required by claim 1. The Examiner has failed to rebut this
declaration with any evidentiary basis or scientific reasoning which would
demonstrate that every combination copolymers and modifying resins would
necessarily result in elastomers with the slow recovery functional
requirements of claim 1.
Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that Shah either anticipates or renders the composition of claim 1 obvious.
B. 35 U.S.C. § 103(a) over Krueger
The Examiner finds that “Krueger teaches a slow recovery elastomer .
. . Krueger teaches blends of elastomers (col. 5, lines 1-44). The materials
specified in Krueger include the elastomeric polymers S-B-S, S-EB-S, and
S-I-S; and modifying resins such as terpene resin, polystyrene, indene,
coumarone, methylstyrene, and rosin” (Ans. 6). The Examiner finds that
“Krueger teaches modifying the elastomer to produce desired recovery times
and other recovery characteristics” (Ans. 6).
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The Examiner finds it obvious “to modify Krueger to include suitable
elastic characteristics, including the claimed unload force and recovery
time” (Ans. 7).
Appellants contend that there is no “disclosure in Krueger of a slow
recovery elastomer or of an elastomer having a normalized unload force or a
post elongation strain at 22°C after 15 seconds of recovery from a 400%
strain . . . or even of a need or desire to provide such an elastomer” (App. Br.
13). Appellants contend that “the evidence in the declarations and previous
responses discussed above strongly supports a reasonable conclusion that the
elastomers of Krueger do not necessarily exhibit Applicants‟ claimed unload
force and post elongation strain, and therefore are not necessarily slow
recovery elastomers” (App. Br. 14).
Appellants contend that there is not “any evidence or reasoning in the
Office Action that Applicants‟ claimed normalized unload force and post
elongation strain are recognized in the art” (App. Br. 15).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Krueger renders the composition of
claim 1 obvious?
Findings of Fact
12. Krueger teaches “non-tacky, microtextured, multi-layer
elastomeric laminates” (Krueger, col. 3, ll. 15-16).
13. Krueger teaches that
the elastomeric layer can be formed from non-heat-
shrinkable polymers such as block copolymers which are
elastomeric, such as those known to those skilled in the art
as A-B or A-B-A block copolymers. . . . Styrene/isoprene,
butadiene, or ethylene-butylene/styrene (SIS, SBS, or SEBS)
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block copolymers are particularly useful. Other useful
elastomeric compositions can include elastomeric
polyurethanes, ethylene copolymers such as ethylene vinyl
acetates, ethylene/propylene copolymer elastomers or
ethylene/propylene/diene terpolymer elastomers

(Krueger, col. 5, ll. 21-33).
14. Krueger teaches that “[t]ackifiers can also be used to increase
the adhesiveness of an elastomeric layer to a skin layer. Examples of
tackifiers include aliphatic or aromatic liquid tackifiers, polyterpene resin
tackifiers, and hydrogenated tackifying resins” (Krueger, col. 5, ll. 50-53).
15. Krueger teaches that “length of the film after shrink was then
compared to the length of the film after the 20 second hold period and the 15
length after stretch to determine the shrink mechanism in operation. The
results of this comparison is shown in . . . Table IX below” (Krueger, col.
23, ll. 14-18).
16. Table IX of Krueger is reproduced below:

Table IX shows shrink mechanims and stretch ratios.
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17. Krueger teaches that “[f]ast is when more than 15% recovery
occurred at seconds. Medium time is where greater than 15% recovery
occurred at 20 seconds. Slow time is where greater than 15% recovery was
not noted until 60 seconds after stretch” (Krueger, col. 23, ll. 36-40).
Analysis
The Examiner finds that “all the elastomers disclosed by Appellant as
suitable for the invention necessarily must have the claimed normalized
unload force and post elongation strain values” (Ans. 21).
We are not persuaded. The Examiner cites no evidence that every
elastomer listed by Appellants would necessarily satisfy the functional
requirements of claim 1. Table IX of Krueger demonstrates that only two
films out of seven tested showed a “slow” shrink mechanism (FF 15-17).
The evidence of record does not establish than any of the Krueger
elastomers are identical to the exemplary elastomers shown in the
Specification.
In combination with the Melik Declaration, which demonstrates that
none of Shah‟s ten elastomers satisfy the functional requirements of claim 1,
the preponderance of the evidence demonstrates that any particular prior art
elastomer does not necessarily and inherently satisfy the claim requirements
for a “slow recovery elastomer” with a normalized unload force greater than
0.04 N/mm
2
at 37 C and 50% post elongation strain at 22 C after 15 seconds
of recovery from a 400% strain (see Claim 1). See MEHL/Biophile Int’l.
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“Inherency ...
may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.”)
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Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that Krueger renders the composition of claim 1 obvious.
C.-H. 35 U.S.C. § 103(a)
Each of these rejections relies upon the underlying anticipation and/or
obviousness rejection over Shah. Having reversed the rejection of claim 1
over Shah, we necessarily reverse the obviousness rejections, which do not
cure the failure to teach or suggest a “slow recovery elastomer” with the
functional properties required by claim 1.
I. Double Patenting
We summarily affirm the obviousness-type double patenting
rejections. See Manual of Patent Examining Procedure § 1205.02 (“If a
ground of rejection stated by the examiner is not addressed in the appellant's
brief, that ground of rejection will be summarily sustained by the Board.”);
See also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (in which the
Board affirmed an uncontested rejection of claims under 35 U.S.C. 112,
second paragraph, and on appeal the Federal Circuit affirmed the Board‟s
decision and found that the appellant had waived his right to contest the
indefiniteness rejection by not presenting arguments as to error in the
rejection on appeal to the Board).

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SUMMARY
In summary, we reverse the rejection of claims 1, 3-7, 16, 20, and 23-
25 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35
U.S.C. § 103(a) as obvious over Shah.
We reverse the rejection of claims 1, 3-6, 20, and 23-25 under 35
U.S.C. § 103(a) as obvious over Krueger.
We reverse the rejection of claims 2 and 15 under 35 U.S.C. § 103(a)
as obvious over Shah and Datta.
We reverse the rejection of claims 9-11 under 35 U.S.C. § 103(a) as
obvious over Shah and Lavon.
We reverse the rejection of claims 13 and 14 under 35 U.S.C. § 103(a)
as obvious over Shah and Otsubo.
We reverse the rejection of claims 17 and 18 under 35 U.S.C. § 103(a)
as obvious over Shah and Igaue.
We reverse the rejection of claim 12 under 35 U.S.C. § 103(a) as
obvious over Shah, Igaue, and Bewick-Sonntag.
We reverse the rejection of claim 19 under 35 U.S.C. § 103(a) as
obvious over Shah, Igaue and Datta.

We summarily affirm the rejection of claims 1-7, 9-20 and 23-25 on
the ground of nonstatutory obviousness-type double patenting over claims 1-
15 and 22-31 of copending application 11/144,497 and claims 3-4 and 7-20
of copending application no. 11/087,368.

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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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