Ex Parte Mehawej

Board of Patent Appeals and Interferences

Sep 28, 2009

10066935 (B.P.A.I. Sep. 28, 2009)

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.
10/066,935 02/04/2002 Fouad D. Mehawej DA-047-US-01 4239
7590 09/28/2009
Julie Post
H.B. Fuller Company
1200 Willow Lake Blvd.
P.O. Box 64683
St. Paul, MN 55164-0683
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
09/28/2009 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 FOUAD D. MEHAWEJ
__________

Appeal 2009-003726
Application 10/066,935
Technology Center 3700
__________

Decided: September 28, 2009
__________

Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 2-35, 37, 39, and 42-48. We have jurisdiction under 35 U.S.C.
§ 6(b).
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STATEMENT OF THE CASE
Claim 44 is representative of the subject matter on appeal:
44. A disposable diaper having a core that comprises a composite
comprising:
superabsorbent polymer; and
a high loft nonwoven web comprising fibers,
said nonwoven web being impregnated with said superabsorbent
polymer,
said superabsorbent polymer having been formed in situ in said
nonwoven web by impregnating said nonwoven web with an aqueous
superabsorbent polymer precursor composition and drying said aqueous
superabsorbent polymer precursor composition to form a superabsorbent
polymer throughout the three dimensional matrix of said nonwoven web
including along the length of the fibers of said nonwoven web and in the
interstices of said nonwoven web,
said composite comprising from 10% by weight to about 90% by
weight superabsorbent polymer.

The Examiner relies on the following evidence:
Abuto US 5,788,684 Aug. 4, 1998
Chmielewski US 6,068,620 May 30, 2000
Chmielewski US 2003/0105441 Jun. 5, 2003

The Examiner rejected the claims as follows:
(A) Claims 2-10, 18-20, 26-30, 32-34, 37, 44, 45, and 47 under 35 U.S.C.
§ 102(b) as anticipated by, or in the alternative under 35 U.S.C.
§ 103(a) as unpatentable over Chmielewski ‘620.

(B) Claims 11-17, 21-25, 31, 38, and 46 under 35 U.S.C. § 103(a) as
unpatentable over Chmielewski ‘620.

(C) Claim 35 under 35 U.S.C. § 103(a) as unpatentable over Chmielewski
‘620 in view of Abuto.

(D) Claim 48 under 35 U.S.C. § 103(a) as unpatentable over Chmielewski
‘620 in view of Chmielewski ‘441.
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We affirm-in-part.

ANTICIPATION/OBVIOUSNESS
Issue (A)
The Examiner has rejected claims 2-10, 18-20, 26-30, 32-34, 37, 44,
45, and 47 as anticipated by, or obvious over Chmielewski ‘620 (Ans. 4-6).
The threshold issue raised by this rejection is whether the Examiner
has provided sufficient evidence to establish a prima facie case that
Chmielewski ‘620 describes or suggests a diaper with a composite core that
is structurally indistinguishable from the claimed composite core - despite
being produced by a different process - thereby shifting the burden of proof
to Appellant to prove that the cores are structurally different. If so, the
residual issue is whether Appellant’s burden has been met.
Findings of Fact
FF1 Independent claim 44 is directed to a disposable diaper with a
composite core comprising a high loft nonwoven fibrous web and from 10%
to about 90% by weight superabsorbent polymer (SAP), where the
composite core is made by impregnating the nonwoven web with an aqueous
superabsorbent polymer precursor composition and drying the composition
to form a superabsorbent polymer throughout the three dimensional matrix
of the nonwoven web, “including along the length of the fibers of said
nonwoven web and in the interstices of said nonwoven web”.
FF2 According to the Specification, the nonwoven web “can be
formed using a variety of methods including e.g., air-laying, [and] wet
laying” (Spec. 8: 8-9), and “includes synthetic polymer fibers of, e.g.,
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polyester, polyolefin (e.g. polypropylene, polyethylene, and copolymers of
polyolefins and polyesters), polyamide, polyurethane, polyacetonitrile, and
combinations thereof including copolymers thereof” (id. at 8: 1-4).
FF3 The Specification teaches that “[t]he superabsorbent polymer is
applied to the high loft web in the form of an aqueous composition, which
. . . can be dried according to various methods including, e.g., with air, heat
or a combination thereof” (Spec. 6: 6-19).
FF4 “The aqueous composition includes a superabsorbent polymer
precursor . . . and a crosslinking agent. As the aqueous composition dries,
the superabsorbent polymer precursor crosslinks to form the superabsorbent
polymer” (Spec. 6: 22-24).
FF5 Claim 44 does not require a crosslinking agent.
FF6 Chmielewski ‘620 describes a disposable diaper with a core
comprising a central absorbent laminate 340 made from a composite of a
fibrous or particulate superabsorbent polymer and at least one other fibrous
component (Chmielewski ‘620, col. 11, l. 47 to col. 12, l. 8). Laminate 340
comprises 50-95% superaborbent polymer by weight (id.).
FF7 The fibrous component of central absorbent laminate 340
preferably includes cellulose acetate fibers, polyacrylonitrile fibers,
polyester fibers, polyolefin/polyester bicomponent fibers, etc. (Chmielewski
‘620, col. 11, ll. 56-62).
FF8 In addition, “about 1-10% . . . by weight of thermally bondable
synthetic fibers can be added to the central laminate 340 to impart additional
wet strength . . . The preferred synthetic fibers are polyolefin/polyester fibers
and polyester/polyester bicomponent fibers” (Chmielewski ‘620, col. 12, ll.
59-65).
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FF9 Chmielewski ‘620 teaches that “laminate 340 can be made
using . . . conventional wet-laid nonwoven processes” such as coating a
porous substrate (e.g., wire mesh) with a solvent/water-based suspension of
the fibrous component (including thermally bondable fibers) and the
superabsorbent polymer, removing most of the water with a suction
dewatering device, rolling the dewatered composite between upper and
lower layers of tissue or a synthetic nonwoven web, and oven drying it,
thereby bonding the thermally bondable fibers in the wet laid middle layer,
and in the upper and lower layers (Chmielewski ‘620, col. 14, ll. 28 to col.
15, l. 3).
FF10 The ordinary meaning of the transitive verb “impregnate” is “to
cause to be filled, imbued, permeated or saturated . . . to permeate thoroughly”.1
Principles of Law
The initial burden of establishing unpatentability rests on the
Examiner. In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992).
Nevertheless, there are exceptions where the record justifies shifting the
burden to appellant to show a difference between the claimed invention and
the prior art. As explained in In re Best, 562 F.2d 1252, 1254-1255 (CCPA
1977):
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to

1 Definition of “impregnate, accessed August 24, 2009, at
http://www.merriam-webster.com/dictionary/impregnate
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require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

“Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102,
on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products.” Id. at 1255. “[W]hen the PTO shows sound basis for believing
that the products of the applicant and the prior art are the same, the applicant
has the burden of showing that they are not.” In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990).
Moreover, “[t]he patentability of a product does not depend on its
method of production. If the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim is unpatentable
even though the prior product was made by a different process.” In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citation omitted).
Analysis
The Examiner finds that Chmielewski ‘620 discloses an absorbent
article with composite core comprising a high loft nonwoven web and up to
80% by weight of a superabsorbent polymer, where the superabsorbent
polymer is present throughout the web (Ans. 11).
Appellant contends that the claimed and prior art composite cores are
made by different processes, resulting in articles that are “inherently
different” (App. Br. 13). Appellant contends that, according to the process
language of claim 44, the claimed composite core is formed in situ by
impregnating a nonwoven web with an aqueous superabsorbent polymer
precursor composition, and drying the composition so that the resultant
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superabsorbent polymer impregnates the web and forms “an essentially
continuous phase throughout the web including along the length of the fibers
and the interstices of the fibers” (App. Br. 12, 14).
Appellant contends that Chmielewski ‘620 “discloses a laminate that
includes a central absorbent layer formed by combining superabsorbent
polymer and fibers, and then forming a layer from the mixture” (App. Br.
10). Appellant contends that the superabsorbent polymer “is incorporated
simultaneously with the formation of the web in of Chmielewski [‘620]” (id.
at 14), and “[t]he resulting layer includes discrete particulate or fibrous SAP
strewn throughout the layer . . . [which] would normally tend to migrate out
the side edges . . . of the central absorbing layers” (id. at 10), if not “locked
within the absorbent layer . . . due to the pore size of the fibrous additive”
(id. at 11). Appellant contends that Chmielewski ‘620’s resultant layer is
not impregnated with the superabsorbent polymer, in other words, “the
presence of the SAP as discrete, individual superabsorbent particles or fibers
in the layer does not constitute superabsorbent polymer formed throughout
the three dimensional matrix of the nonwoven web including along fibers of
the nonwoven web and in the interstices of the nonwoven web” (id. at 11).
Appellant’s arguments are not persuasive. It’s true that the claimed
core is recited in the claim to be made by impregnating a preformed
nonwoven fibrous web with an aqueous solution of a superabsorbent
polymer precursor, and drying it, while Chmielewski ‘620’s core is made by
drying and rolling a solvent/water-based suspension of the fibrous
component (including thermally bondable fibers) and the superabsorbent
polymer. However, Appellant has not established that the fibrous
component in Chmielewski ‘620’s rolled and dried core is not in the form of
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a nonwoven web, especially in those cores with thermally bondable fibers.
Indeed, as discussed above, Appellant acknowledges that Chmielewski ‘620
incorporates superabsorbent polymer into the core “simultaneously with the
formation of the web” (App. Br. 14). As to the “having been formed in situ
. . . by impregnating” limitation, we note that a process limitation in a
product claim cannot establish novelty for a product that is otherwise
described in the prior art. SmithKline Beecham Corp. v. Apotex Corp., 439
F.3d 1312 (Fed. Cir. 2006).
Moreover, the fact that the superabsorbent polymer in Chmielewski
‘620’s core is mobile has nothing to do with whether the three dimensional
matrix of the nonwoven web is impregnated with the superabsorbent
polymer “including along the length of the fibers of said nonwoven web and
in the interstices of said nonwoven web,” as required by claim 44. The
ordinary meaning of impregnate is simply “to cause to be filled, imbued,
permeated or saturated . . . to permeate thoroughly” (FF10). Again,
Chmielewski ‘620’s product is made from a solvent/water-based suspension
of the fibrous component (including thermally bondable fibers) and the
superabsorbent polymer (FF9), i.e., a mixture in which the components
would reasonably be expected to be uniformly distributed. Appellant has
not explained why the superabsorbent polymer would not be uniformly
distributed (i.e., permeating) throughout the three dimensional matrix of the
core/web in the finished product as well.
Finally, to the extent Appellant implies that Chmielewski ‘620’s
finished core is inherently different from the claimed product because the
superabsorbent polymer is not crosslinked around the fibers of the non-
woven web, we acknowledge that Appellant’s Specification discloses an
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embodiment wherein the absorbent core is made from an “aqueous
composition [that] includes a superabsorbent polymer precursor . . . and a
crosslinking agent” (FF4), but claim 44 does not require a crosslinking agent
(FF5).
Conclusions of Law
The Examiner has provided sufficient evidence to establish a prima
facie case that Chmielewski ‘620 describes or suggests a diaper with a
composite core that is structurally indistinguishable from the claimed
composite core - despite being produced by a different process - properly
shifting the burden of proof to Appellant to prove that the cores are
structurally different. Appellant’s burden has not been met by argument or
evidence.

OBVIOUSNESS
Issue (B)
The Examiner has rejected claims 11-17, 21-25, 31, 38, and 46 as
unpatentable over Chmielewski ‘620 (Ans. 7-10).
The issue raised by this rejection is whether the Examiner has
established that a diaper with a composite core comprising a nonwoven web
with a density of less than 0.01 g/cm3, or less than 0.008 g/cm3 would have
been obvious over Chmielewski ‘620.
Analysis & Conclusions of Law
It is undisputed that Chmielewski ‘620 does not disclose the density
of the nonwoven web in the finished composite cores. The Examiner’s
position is that discovering the optimum or workable ranges for the density
of the web involves only routine skill in the art (Ans. 7-8).
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Appellant contends that Chmielewski ‘620 “discusses density with
respect to the overall density of the laminate construction” which includes
both the nonwoven web and the superabsorbent polymer (App. Br. 15), but
“fails to recognize that the density of a nonwoven web starting material is
important in optimizing the absorbency of a composite made therefrom or
that density of a nonwoven web is a variable to be optimized” (id. at 17).
Appellant identifies disclosure in the Specification demonstrating that “high
loft nonwoven webs (i.e., a nonwoven web having a density no greater than
0.01 g/cm3) with relatively less superabsorbent polymer can absorb more
water than more dense nonwoven webs with relatively more superabsorbent
polymer” (App. Br. 16).
The Examiner has not responded to Appellant’s evidence in any way.
Therefore, we agree with Appellant that the Examiner has not established
that a diaper with a composite core comprising a nonwoven web with a
density of less than 0.01 g/cm3, or less than 0.008 g/cm3 would have been
obvious over Chmielewski ‘620.
Accordingly, the rejection of claims 11-17, 21-25, 31, 38, and 46 as
unpatentable over Chmielewski ‘620 is reversed.

Issue (C)
The Examiner rejected claim 35 as unpatentable over Chmielewski
‘620 and Abuto.
The issue raised by this rejection is whether the Examiner has
established that a diaper with a composite core comprising a plurality of
strips of composite would have been obvious over Chmielewski ‘620 and
Abuto.
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Analysis & Conclusions of Law
Appellant contends that claim 35 depends from claim 44, and
therefore incorporates all of the limitations of claim 44. Appellant contends
that Abuto “do[es] not cure the deficiencies of Chmielewski [‘620]” and
therefore “lacks a required element of claim 35” (App. Br. 19).
Nevertheless, as discussed above, the Examiner has established a
prima facie case that Chmielewski ‘620 describes or suggests a diaper
meeting the limitations of claim 44, which Appellant has not overcome by
argument or evidence.
Accordingly, the rejection of claim 35 as unpatentable over
Chmielewski ‘620 and Abuto is affirmed.

Issue (D)
The Examiner has rejected claim 48 as unpatentable over
Chmielewski ‘620 in view of Chmielewski ‘441.
Additional Findings of Fact
FF11 Claims 48 was entered by amendment on November 17, 2005.
FF12 Chmielewski ‘441 was applied against claim 48 in the Final
Rejection mailed February 10, 2006, and had not previously been cited
against any claim in the application.
FF13 Appellant submitted a declaration under the provisions of 37
C.F.R. § 1.131 (Declaration of Fouad D. Mehawej, on April 7, 2006) to
establish that Chmielewski ‘441 is not available as prior art against the
claimed invention.
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FF14 The Examiner declined to enter or consider the declaration in
the Advisory mailed April 26, 2006, but did discuss another declaration filed
the same day under the provisions of 37 C.F.R. § 1.132.
FF15 Appellant filed an Appeal Brief on July 10, 2006.
FF16 In response to the Appeal Brief, the Examiner reopened
prosecution on October 31, 2007, but still did not consider the 37 C.F.R. §
1.131 declaration. This appeal ensued.
Analysis
Appellant has submitted a declaration under the provisions of 37
C.F.R. § 1.131 (Declaration of Fouad D. Mehawej, filed May 10, 2006) to
establish that Chmielewski ‘441 is not available as prior art against the
claimed invention.
The Examiner has not responded to the declaration or otherwise
acknowledged it, despite having reopened prosecution after the Declaration
was originally submitted.
Accordingly, the rejection of claim 48 as unpatentable over
Chmielewski ‘620 in view of Chmielewski ‘441 is reversed.

SUMMARY
(A) The rejection of claims 2-10, 18-20, 26-30, 32-34, 37, 44, 45, and 47
under 35 U.S.C. § 102(b) as anticipated by, or in the alternative under
35 U.S.C. § 103(a) as unpatentable over Chmielewski ‘620 is
affirmed.

(B) The rejection of claims 11-17, 21-25, 31, 38, and 46 under 35 U.S.C.
§ 103(a) as unpatentable over Chmielewski ‘620 is reversed.

(C) The rejection of claim 35 under 35 U.S.C. § 103(a) as unpatentable
over Chmielewski ‘620 in view of Abuto is affirmed.
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(D) The rejection of claim 48 under 35 U.S.C. § 103(a) as unpatentable
over Chmielewski ‘620 in view of Chmielewski ‘441 is reversed.

TIME PERIOD FOR RESPONSE
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)(2006).

AFFIRMED-IN-PART

lp

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