Ex Parte Noda et al

Patent Trial and Appeal Board

Nov 30, 2018

14368521 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/368,521 06/25/2014 Yuki Noda
22429 7590 12/04/2018
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4639-338 6088
EXAMINER
KIDWELL, MICHELE M
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteYUKINODA, TATSUYA TAMURA,
and AK.IRA HASHINO 1
Appeal2018-009236
Application 14/368,521
Technology Center 3700
Before JOHN C. KERINS, CHARLES N. GREENHUT, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Yuki Noda et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from
a final rejection of claims 1-8, 10-13, 15-20, 22, and 23. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Unicharm Corporation is identified as being the real party in interest.
Appeal Br. 2.
Appeal2018-009236
Application 14/368,521
THE INVENTION
Appellants' invention is directed to an absorbent article. Claim 1,
reproduced below, is illustrative:
1. An absorbent article comprising a liquid-permeable top
sheet, a liquid-impermeable back sheet and an absorbent body
between the liquid-permeable top sheet and liquid-impermeable
back sheet,
wherein the absorbent article has in an excretory opening
contact region a domed section that protrudes in the thickness
direction of the absorbent article,
the domed section includes part of the top sheet and a cushion
section disposed between the top sheet and the absorbent body,
the domed section has a center section and an outer peripheral
section placed at an outer peripheral in a planar direction of the
center section so as to surround the center section, and
the density of the cushion section at the outer peripheral section
is higher than the density of the cushion section at the center
section,
wherein the domed section is coated with a coating consisting
essentially of a blood modifying agent with an Inorganic
Organic Balance (IOB) of 0-0.60, a melting point ofno higher
than 45°C and a water solubility of no greater than 0.05 gin
100 g of water at 25°C, wherein the coating is configured to
infiltrate between blood cells of menstrual blood.
THE REJECTIONS
The Examiner rejects claims 1-3, 5-8, 10-13, 15, 17, 18, 22, and 23
under 35 U.S.C. § 103(a) as being unpatentable over Sato (WO 2011/065427
2
Appeal2018-009236
Application 14/368,521
Al, published Nov. 25, 2010), 2 in view ofNishioku (US 2010/0151054 Al,
published June 17, 2010);
The Examiner rejects claims 4, 7, 16, 19, and 20 under 35 U.S.C.
§ I03(a) as being unpatentable over Sato, in view ofNishioku and Nozaki
(US 7,279,613 B2, issued Oct. 9, 2007).
ANALYSIS
Each of independent claims 1 and 23 on appeal includes a limitation
requiring that the absorbent article have a domed section, with the domed
section having a coating "consisting essentially of' a blood modifying agent
having particular material properties, and being configured to migrate from a
top sheet to an absorbent body with menstrual blood. Appeal Br. 1 7, 23
(Claims Appendix). For both of the rejections on appeal, the Examiner cites
to Nishioku as disclosing a skin care composition, P ANACET 810, which
has material properties within the scope of those recited. Final Act. 4. The
Examiner concludes that it would have been obvious to modify the
absorbent article of Sato to include the P ANACET 810 composition, thus
rendering obvious the subject matter of claims 1 and 23. Id.
Appellants point out that the skin care agent in Nishioku includes not
only P ANACET 810, but also several other ingredients or materials, and
thus, the skin care agent does not "consist[] essentially of' PANACET 810.
As such, according to Appellants, adding the skin care agent of Nishioku to
the absorbent article of Sato will not result in that article having a coating
"consisting essentially of' the recited blood modifying agent. Appeal Br. 6-
2 The Examiner cites to the corresponding English-language PGPUB (US
2012/0226250 Al, published Sept. 6, 2012) in the rejection.
3
Appeal2018-009236
Application 14/368,521
7. The Examiner counters that the more limited transition phrase "consisting
essentially of' may be construed as being equivalent to the open-ended
transition term "comprising," in the absence of a clear indication in the
Specification or claims as to what the basic and novel characteristics of the
claimed composition actually are. Ans. 8 (quoting MPEP § 2111.03(III)).
The Examiner takes the position that there is no disclosure or claim
limitations setting forth such basic and novel characteristics, and the
rejections effectively construe the claims as requiring that the coating merely
include the blood modifying agent with its recited properties, and may also
include other compositions or ingredients. Appellants maintain that the
claims, as well as the Specification, include language setting forth that "'the
coating is configured to infiltrate between blood cells of menstrual blood,"'
which are the basic and novel characteristics of the claimed composition.
Appeal Br. 8.
The Examiner disagrees with Appellants' argument, maintaining that
construing the claim as "comprising" the claimed blood modifying agent is
appropriate, in that Appellants' Specification discloses "different
compounds including different materials but each continuing to produce a
material that meets" the claim limitations. Ans. 9.
The Examiner has not adequately established that the "consisting
essentially of' transitional phrase is to be construed as being equivalent to
the open-ended "comprising" transitional phrase. It is not germane that the
claims may encompass "different compounds including different materials,"
where, as here, the recited material properties are what give rise to the
claimed ability to infiltrate between blood cells of menstrual blood.
4
Appeal2018-009236
Application 14/368,521
As an alternative position advanced by the Examiner in the Answer,
and in addressing Appellants' argument that PANACET 810 is but one
ingredient in the skin care agent in Nishioku, the Examiner points out that
Appellants' Specification provides examples of compounds that include a
variety of materials, yet still meet the claimed material properties or
parameters. Ans. 11. The Examiner appears to attempt to use this as
justification to posit that, "[ a ]11 of the examples as provided by Nishioku
'consist essentially' of the medium chain fatty acid triglyceride (i.e.,
PANACET 810 ... )," notwithstanding that the cited example contains only
13% by mass of PANACET 810. Id. We fail to see how one follows the
other, and also fail to see how a composition including only 13% by mass of
one particular ingredient could be seen as "consisting essentially of' that
ingredient.
The Examiner has not adequately established that the proposed
modification to employ a skin care agent as disclosed by Nishioku in the
absorbent article of Sato would result in a coating consisting essentially of a
blood modifying agent having the material properties set forth in claims 1
and 23. With the claims stating that the coating is configured to infiltrate
between blood cells of menstrual blood, the claims may not be read as
having a coating "comprising" the recited blood modifying agent, nor has
the Examiner established that the Nishioku skin care agent would be
regarded by a person of ordinary skill in the art as "consisting essentially of'
the recited blood modifying agent.
The rejections of claims 1-3, 5-8, 10-13, 15, 17, 18,22, and23 as
being unpatentable over Sato and Nishioku, and claims 4, 7, 16, 19, and 20
as being unpatentable over Sato, Nishioku, and Nozaki are not sustained.
5
Appeal2018-009236
Application 14/368,521
DECISION
The rejections of claims 1-8, 10-13, 15-20, 22, and 23 under
35 U.S.C. § 103(a) are reversed.
REVERSED
6