Ex Parte Mehawej

Board of Patent Appeals and Interferences

Nov 29, 2007

10274335 (B.P.A.I. Nov. 29, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FOUAD D. MEHAWEJ
____________

Appeal 2007-3164
Application 10/274,335
Technology Center 3700
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Decided: November 29, 2007
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Before CHARLES F. WARREN, THOMAS A. WALTZ , and
CATHERINE Q. TIMM, 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, 2, and 4-22. Claims 23-26
are the only other claims pending in this application but stand withdrawn
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Application 10/274,335

from consideration as directed to a non-elected invention (Br. 5).1 We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
According to Appellant, the invention is directed to an absorbent
article that includes a nonwoven web with synthetic polymer fibers, a first
surface, a second surface opposite the first surface, a first region
impregnated with superabsorbent polymer (SAP), the first region extending
into the nonwoven web from the first surface toward the second surface, and
a second region essentially free of SAP with this second region extending
into the nonwoven web from the second surface toward the first surface (Br.
7). Independent claim 1 is illustrative of the invention and a copy of this
claim is reproduced below:
1. An absorbent article comprising:

a nonwoven web comprising

synthetic polymer fibers;

a first surface;

a second surface opposite said first surface;

a first region impregnated with superabsorbent polymer such
that said superabsorbent polymer is present throughout the three dimensional
matrix of said nonwoven web including along fibers of said nonwoven web
and in interstices of said nonwoven web in the first region, said first region
extending into said nonwoven web from said first surface toward said
second surface, said superabsorbent polymer having been formed in situ in
said first region by impregnating said nonwoven web with an aqueous
superabsorbent polymer precursor composition and drying the aqueous
superabsorbent polymer precursor composition to form the superabsorbent
polymer, and

1 We refer to and cite from the “SUBSTITUTE APPEAL BRIEF” dated
Dec. 5, 2006.
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a second region essentially free of superabsorbent polymer, said
second region extending into said nonwoven web from said second surface
toward said first surface.

The Examiner has relied on the following prior art references as
evidence of unpatentability:
Chmielewski (‘207) 5,281,207 Jan. 25, 1994
Chmielewski (‘620) 6,068,620 May 30, 2000

ISSUES ON APPEAL
Claims 1, 2, 4, 5, 7, and 10-22 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Chmielewski ‘620 (Ans. 3).
Claims 1, 6, and 8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Chmielewski ‘207 (Ans. 5).
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Chmielewski ‘207 (Ans. 7).
Appellant contends that the only component of Chmielewski ‘620 that
includes SAP is central absorbing layer 340a but this layer does not include
first and second regions as specified in claim 1 on appeal (Br. 12-13; Reply
Br. 5). Appellant contends that to accept the Examiner’s rationale requires
“convoluted selective interpretation” of where the first and second surfaces
of the nonwoven web are located in the ‘620 patent (Br. 14). Appellant
further contends that even with the Examiner’s selective interpretation, the
Fig. 4 construction disclosed by the ‘620 patent does not meet the claimed
limitations (Br. 14; Reply Br. 4-5).
Appellant contends that the backsheet 16 of the ‘207 patent can’t be a
“first surface” within the scope of the claims since it is not part of and does
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not extend into absorbent layer 32 of the diaper (with a similar contention
regarding the facing sheet; Br. 15). Appellant also contends that the ‘207
patent employs a different method of preparation, describing the article as
containing particles or globules placed randomly, and does not disclose or
suggest impregnation (Br. 16).
The Examiner contends that the ‘620 patent discloses an absorbent
core comprising a single nonwoven web 35 including synthetic polymer
fibers with first and second surfaces, a first liquid storage region with SAP
throughout, and a second liquid acquisition region (tissue 350c) that is
“essentially free” of SAP (Ans. 4). The Examiner contends that a nonwoven
web can comprise a laminate of several layers (Ans. 8).2
The Examiner contends that the ‘207 patent discloses an absorbent
article comprising a single nonwoven web including synthetic polymer
fibers, first and second surfaces, a first region with SAP, and a second region
“essentially free” of SAP (Ans. 5-6). The Examiner contends that the
process limitations recited in claim 1 on appeal are in a product-by-process
format and do not distinguish the product from that taught in the ‘207 patent
(Ans. 6).
Accordingly, we determine that the issue presented from the record in
this appeal is as follows: Has the Examiner identified structures in the
absorbent articles of the ‘620 and ‘207 patents that read on claim 1 on appeal
as the claim language is properly construed?

2 The Examiner states that this fact is “well known in the art” and cites
Raley, US 4,761,322, as evidence (Ans. 8). However, we note that Raley
has not been included in any statement of the rejection (i.e., Ans. 3).
Therefore, we do not consider Raley as supporting evidence for the
Examiner’s finding. See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970);
Ex parte Raske, 28 USPQ2d 1304, 1304-05 (BPAI 1993).
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We determine that the Examiner has established a prima facie case of
anticipation and of obviousness in view of the reference evidence, which
prima facie cases have not been adequately rebutted by Appellant’s
arguments. Therefore, we AFFIRM all grounds of rejection presented in this
appeal essentially for the reasons stated in the Answer, as well as those
reasons set forth below.

OPINION
We determine the following factual findings (FF) from the record in
this appeal:
(1) Chmielewski ‘620 discloses an absorbent article comprising a
topsheet 30, a liquid impervious backsheet 32, and an
absorbent core comprising a nonwoven web 35 disposed
between the topsheet and the backsheet, where the absorbent
core comprises synthetic polymer fibers including a first
surface at the lower laminate (352, 352b), a second surface
opposite the first surface (348 and adjacent 350c), a first
liquid storage region with SAP throughout (350a), and a
second liquid acquisition region (tissue 350c), essentially free
of SAP (Ans. 4; see Fig. 4 of Chmielewski ‘620 and col. 1, ll.
12-17; col. 2, ll. 59-63; col. 3, ll. 6-11; col. 5, ll. 33-37; col. 8,
ll. 35-62; col. 9, ll. 35-40);
(2) Chmielewski ‘620 teaches that the absorbent core may be
more than one laminate, with each laminate having three
layers (upper, lower, and central fibrous layers), and at least
one, preferably both, of the central absorbing layers 350a,
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352a, comprise at least about 50-95% SAP (Abstract; col. 9, l.
41-col. 10, l. 2; col. 10, ll. 11-15);
(3) Chmielewski ‘207 discloses an absorbent article with a
nonwoven web comprising synthetic polymer fibers,
including a backsheet 16, a topsheet 12, a first region with
particles impregnated with SAP, and a second region
essentially free of SAP (Ans. 5-6; see Fig. 3 of Chmielewski
‘207 and the Abstract; col. 3, ll. 22-47);
(4) Chmielewski ‘207 teaches that the prior art has been directed
to “forming a concentration gradient of superabsorbent within
the absorbent structures to improve the liquid diffusion
process in the absorbent structures while reducing
possibilities for gel blocking to take place” (col. 1, ll. 56-61);
(5) Chmielewski ‘207 improves on the prior art by teaching that
the SAP material is preferably “disposed within a lower
portion of the absorbent layer to provide the area with a bulky
fibrous top layer where substantially less superabsorbent
material exists” (col. 2, ll. 27-31; see Fig. 3; see also Figs. 4-
5, where the resilient fibrous web 50 has “superabsorbent
material distributed in its bottom side” (col. 7, ll. 29-32)); and
(6) Chmielewski ‘207 teaches several methods of placing the
SAP in the web, including “spraying a monomer solution on
the web or saturating the web with a monomer solution
followed by polymerization of the monomer” (col. 5, ll. 10-
13), while also teaching that it may be desirable “to place
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more superabsorbent material in one area than in another”
(col. 5, ll. 19-21).
Under 35 U.S.C. § 102, every limitation of a claim must identically
appear, either explicitly or inherently, in a single prior art reference for it to
anticipate the claim. See Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed.
Cir. 1997). Implicit in our review of the Examiner’s anticipation analysis is
that the claim must first have been correctly construed to define the scope
and meaning of each contested limitation. Id. During examination
proceedings, claim language is given its broadest reasonable interpretation
as understood by one of ordinary skill in the art in view of the specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Graves,
69 F.3d 1147, 1152 (Fed. Cir. 1995). During ex parte prosecution, 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 of claim construction to the language
of claim 1 on appeal, we determine that claim 1 on appeal requires an
absorbent article with at least one nonwoven web comprising synthetic
polymer fibers, a first surface which is any surface within the web, a second
surface opposite the first surface, and a first region containing SAP such that
the SAP is present throughout the first region of the nonwoven web, with
this first region extending into the nonwoven web from said first surface
toward the second surface. We determine that the claimed nonwoven web is
not limited, nor do we find any express disclaimer of a broader definition,
i.e., the web can be one or more layers or laminates. See Bigio, 381 F.3d at
1325. The process limitations recited in claim 1 on appeal are included in a
product-by-process format, and therefore we must compare the claimed
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product with prior art products to determine if there is an identical or similar
product, regardless of how it is formed. See In re Wertheim, 541 F.2d 257,
271 (CCPA 1976) (the patentability of the products defined by product-by-
process claims, and not the processes for making them, is what must be
gauged in light of the prior art). Due to the unique nature of product-by-
process claims, and the inability of the PTO to make and compare products,
a lesser burden of proof is needed to make out a prima facie case of
unpatentability See In re Fessman, 489 F.2d 742, 744 (CCPA 1974). We
find no evidence in this record that the method of preparation of the SAP-
containing region as claimed produces a different article, nor do we find any
limitation in the claims as to whether the SAP is in particle, globule, or other
form.
We also determine that claim 1 on appeal requires a second region
“essentially free” of SAP, with the second region extending into the web
from the second surface toward the first surface. We determine that
“essentially free” is a relative term, and we find no basis in Appellant’s
specification on which to determine the meaning thereof. Accordingly,
giving these words their broadest reasonable interpretation as ordinarily
used, we determine that a region “essentially free” of SAP may be free of
SAP or contain some insignificant amount of SAP in an amount less than the
first region.
In view of our claim construction above, we determine that
Chmielewski ‘620 and ‘207 read on claim 1 on appeal. As shown by FF (3),
(4), and (5) listed above, we determine that the ‘207 patent shows and
describes the claimed absorbent article, including a second region that is free
of SAP (Fig. 3, region 36 at the top) and a first region that contains SAP
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(Fig. 3, SAP material 38), with the second region extending into the web
from the top (second) surface toward the bottom (first) surface, and the first
region extending in the opposite direction. We determine that the ‘207
patent clearly teaches that the absorbent structure should have a
concentration gradient of SAP from one surface to the opposite surface (FF
(4) and (5) listed above). Even assuming arguendo that the process
limitations of claim 1 on appeal result in a unique product, we determine that
the ‘207 patent discloses a method of placing the SAP into the web which is
the same as the claimed “impregnation,” i.e., “saturating the web with a
monomer solution” followed by polymerization to form the SAP in situ (FF
(6) listed above). Therefore, we determine that the ‘207 patent describes
every limitation in claim 1 on appeal as construed above.
As shown by FF (1) and (2) listed above, we determine that the ‘620
patent shows and describes the claimed absorbent article as construed above.
As shown in Fig. 4, we determine that the ‘620 patent describes an absorbent
article with a single nonwoven web 35 comprising synthetic polymer fibers,
with tissue layers 350c, 348, and 352b surrounding central absorbing layer
350 (the upper laminate) which contains SAP. Therefore, we determine that
this structure disclosed by the ‘620 patent describes a first surface at 352b, a
second surface opposite the first surface (at 348 and adjacent 350c), a first
region containing SAP throughout (upper laminate 350) extending into the
web from the first surface towards the second surface, and a second region
350c free of SAP extending into the web from the second surface 348 and
toward the first surface 352b. As we have construed the claim above, the
nonwoven web may contain a plurality of layers, including tissue layers, as
shown by Figs. 3 and 4 of the ‘620 patent. Therefore, we determine that the
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structure disclosed by the ‘620 patent describes every limitation required by
claim 1 on appeal as properly construed above.
With regards to Appellants’ arguments for the patentability of claims
6 and 8 (Br. 16-17), we determine that any region of the absorbent article
may be available (or capable) for contact with the wearer. We also
determine that the absorbent product of the ‘207 patent contains a second
region “essentially free” of SAP where the structure can include fibers of
two or more different polymers (col. 4, ll. 16-22).
With regard to the rejection of claim 9 based on § 103(a) over the
‘207 patent, we determine that “soft” is a relative term with no definition or
guidelines set forth in the Specification. Accordingly, absent any showing
by Appellants, we determine that “soft” includes the feel of the second
(resilient bulky fibrous structure 36) region disclosed by the ‘207 patent.
For the foregoing reasons and those stated in the Answer, we affirm
the rejections presented in this appeal. 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

cam
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Appeal 2007-3164
Application 10/274,335

JULIE POST
H.B. FULLER COMPANY
1200 WILLOW LAKE BLVD.
P O BOX 64683
ST. PAUL, MN 55164-0683

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