Ex Parte Numano et al

Board of Patent Appeals and Interferences

Mar 12, 2010

10381695 (B.P.A.I. Mar. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KAZUKI NUMANO, KIYOSHI MIYAZAWA,
TAKAYUKI HISANAKA, and YOZO YAMADA
__________

Appeal 2009-012049
Application 10/381,695
Technology Center 1600
__________

Decided: March 15, 2010
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 14-20, 22-28, and 31-33.1 We have
jurisdiction under 35 U.S.C. § 6(b).

1 Claims 14-20 and 22-41 are pending, and claims 29, 30, and 34-41 stand
withdrawn from consideration. (App. Br. 2.)
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STATEMENT OF THE CASE
Claims 14, 19, 20, and 22 are representative of the claims on appeal,
and reads as follows:
14. Shorts, underwear or other clothes for infants or elderly persons
comprising:
at least one portion of the shorts, underwear or other clothes for
infants or elderly persons being coated with a urine odor reducing material
comprising a compound reactive with aldehydes, wherein the compound
reactive with aldehydes comprise one or more of the group comprising:
amino alcohols; organic amines, organic amine salts, compounds
producing organic amines by reaction; amides and mercapto group-
containing compounds.

19. Shorts, underwear or other clothes for infants or elderly persons as set
forth in claim 14, wherein the compound reactive with aldehydes is
accompanied by a pH buffering agent.

20. Shorts, underwear or other clothes for infants or elderly persons as set
forth in claim 19, wherein the pH buffering agent comprises an organic acid
selected from one of the group comprising: citric acid, tartaric acid, and
succinic acid.

22. Shorts, underwear or other clothes for infants or elderly persons as set
forth in claim 14, wherein the amino alcohols comprise one or more of the
group comprising: monoethanolamine, diethanolamine, and triethanolamine.

The Examiner relies on the following evidence:
Curry US 3,890,242 Jun. 17, 1975
Dairoku US 5,610,208 Mar. 11, 1997
Corzani US 6,933,420 B1 Aug.23, 2005

We affirm.

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ISSUE
The Examiner concludes that claims 14-20, 22-28, and 31-33 are
rendered obvious by the combination of Curry, Dairoku, and Corzani.
Appellants contend that the nexus between the claimed reaction and
the reduction in odor is not established, and the Examiner thus engaged in
impermissible hindsight to combine the references to arrive at the claimed
invention.
Thus, the issue on appeal is: Have Appellants demonstrated that the
Examiner relied on impermissible hindsight in combining the references as
suggested by the rejection to arrive at the claimed invention?

FINDINGS OF FACT
FF1 The Examiner rejects claims 14-20, 22-28, and 31-33 under 35 U.S.C.
§ 103(a) over the combination of Curry, Dairoku, and Corzani. (Ans. 3.)
FF2 The Examiner finds that Curry teaches an antibacterial composition
that may be applied to diapers and sanitary napkins. (Id.)
FF3 The Examiner further finds that Curry teaches that the compositions
“comprise dimethyloctylamine oxide (col. 5, line 8) and laurylpyridinium-5-
chloro-2-mercaptobenzothiazole, which comprise both mercapto group and
thioalcohol (col. 14, line 29),” as well as “amides, which comprise
formamide and acetamide groups (col. 2, line 61) and acetamide (col. 7, line
64).” (Id.)
FF4 Specifically, Curry teaches antibacterial detergent compositions that
comprise phenylbismuth bis(2-pyridinethiol 1-oxide), which has
antibacterial and anti-fungal activity. (Curry, col. 1, ll. 46-58.)
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FF5 Curry teaches that the compositions may be used on bandages,
diapers, sanitary napkins, and the like to prevent infections and odor. (Id. at
col. 2., ll. 51-52.)
FF6 The Examiner notes that Curry does “not disclose the use of citric,
tartaric, or succinic acid and also did not disclose mono-, di-, or tri-
ethanolamine.” (Ans. 4.)
FF7 The Examiner relies on Dairoku for teaching for teaching a water
absorbing agent and composition that has a high absorption capacity for
body fluids such as urine, blood, and other secretions. (Id.)
FF8 The Examiner finds that Dairoku teaches that the composition of
Dairoku may comprise a saturated organic acid such as citric acid, succinic
acid, and lactic acid. (Id. (citing Dairoku, col. 4, ll. 38-41).) The Examiner
finds further that Dairoku also teaches the use of diethanolamine and
triethanolamine. (Ans. 4 (citing Dairoku, col. 12, ll. 25-28).)
FF9 The Examiner concludes that a person of ordinary skill in the art
would have considered it obvious to add ethanolamines, as well as citric or
succinic acid as taught by Dairoku to the composition of Curry because
Dairoku teaches that the composition has a high capacity to absorb body
fluids such as urine, blood, and other secretion. (Ans. 4.)
FF10 The Examiner notes that the combination of Curry and Dairoku does
not teach the use of “organic amine salts to reduce offensive odor of body
fluids.” (Id. at 4.)
FF11 The Examiner relies on Corzani for teaching “an odor controlling
material and an absorbent article containing material for removing or
reducing odor of liquid compounds in body fluid.” (Id.) The Examiner
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finds that Corzani teaches the use of absorbent materials doped with one or
more dopants, such as amines and their salts. (Id.)
FF12 Specifically, Corzani teaches the use of one or more doping
impurities, which may be selected from fatty acids and derivatives thereof,
ammonia and amines and their salts, alcohols, aldehydes and ketones, and
heterocompounds. (Corzani, col. 2, ll. 16-25.)
FF13 The Examiner concludes that it would have been obvious to the
ordinary artisan at the time of invention to incorporate the amine salts of
Corzani in the substrate taught by the combination of Curry and Dairoku
because Corzani teaches the use of amines as dopants. (Id. at 4-5.)

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
In KSR Int’l v. Teleflex Inc., 550 U.S. 398, 415 (2007), the Supreme Court
rejected a rigid application of a teaching-suggestion-motivation test in the
obviousness determination. The Court emphasized that “the [obviousness]
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
Id. at 418.
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Under the correct obviousness analysis, “any need or problem known
in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.”
Id. at 420. Thus, for a prima facie case of obviousness to be established, the
references need not recognize the problem solved by Appellants. In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309,
1312 (Fed. Cir. 1992); Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. &
Int. 1985) (“The fact that appellant has recognized another advantage which
would flow naturally from following the suggestion of the prior art cannot
be the basis for patentability when the differences would otherwise be
obvious.”)

ANALYSIS
Appellants argue that the Examiner’s finding regarding Curry “is
more or less just a list of compounds which are also found in the claims,”
and does not touch on the relationship of the material and the reduction of
odors. (App. Br. 4.) Thus, according to Appellants, “[t]he nexus between
the claimed reaction and the reduction in odor is not established.” (Id. at 5.)
Appellants assert that in order address the concept of the aldehyde
reaction, the Examiner relies on Corzani. (Id. at 6.) According to
Appellants, however, Corzani teaches that the dopants may include
aldehydes, arguing further that the Examiner ignores that disclosure of
Corzani. (Id. at 6-7.) Appellants argue that the teachings of the three
references must be taken as a whole, and that “the hypothetical person of
ordinary skill is not going to ignore the fact that one of the compounds
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which are used to dope the particulate matter, is in fact an aldehyde and that
in light of the self-evident fact that an aldehyde would not react with an
aldehyde, would not be led to the position that the disclosure of an aldehyde
could be ignored and assume that the remaining compounds were intended
to react with such materials.” (Reply Br. 2.)
Appellants assert further that the Examiner “is completely
preoccupied with absorption,” and that “the hindsight knowledge of the
claiming of the amine salts as being one of the agents that react with
aldehydes has led to the cascade absorption proposals and has led rapidly
away from the claimed subject matter.” (App. Br. 8.)
As to the Examiner’s position that the compounds disclosed by the
references would inherently be able to react with an aldehyde, Appellants
assert that if the property is not disclosed or suggested there is no reason to
combine the references as suggested by the Examiner. (Reply Br. 3.)
Appellants’ arguments have been considered, but are not convincing.
Claim 1 is drawn to a composition. Specifically, claim 1 is drawn to shorts
or underwear, wherein a portion of the garment is coated with a with a urine
reducing material, wherein the urine reducing material is one or more of
“amino alcohols; organic amines, organic amine salts, compounds producing
organic amines by reaction; amides and mercapto group-containing
compounds.” Thus, a pair of shorts or underwear that has one of those
compounds is coated thereon meets the limitations of claim 1, whether or not
the prior art places the coating on the garment for the same reason as
Appellants, as the ability of the compound to react with an aldehyde is an
inherent property of the compound.
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First, as Curry teaches a diaper for an infant that treated with an
antimicrobial/anti-fungal (phenylbismuth bis(2-pyridinethiol 1-oxide)), as
well as a compound reactive with an aldehyde (dimethyloctylamine oxide
and laurylpyridinium-5-chloro-2-mercaptobenzothiazole, which comprise
both mercapto group and thioalcohol, as well as amides, which comprise
formamide and acetamide groups and acetamide), we find that Curry teaches
a composition that meets all of the limitations of claim 14, and as
anticipation is the epitome of obviousness, we affirm the rejection as to
claim 14. In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002)
Second, we do not agree that the combination of references does not
teach the composition of the dependent claims, and conclude that Appellants
have not demonstrated that the Examiner erred in combining the references
as set forth in the rejection.
The Examiner relied on Dairoku and Corzani for adding citric acid,
succinic acid, and lactic acid, as well the use of diethanolamine and
triethanolamine, in the composition of Curry, as required by, for example,
dependent claims 20 and 22. (See, e.g., FF6 and FF13.) As set forth by the
Examiner, Curry teaches a composition for treating a diaper or sanitary
napkin that comprises an antimicrobial, as well as a compound reactive with
an aldehyde (dimethyloctylamine oxide and laurylpyridinium-5-chloro-2-
mercaptobenzothiazole, which comprise both mercapto group and
thioalcohol, as well as amides, which comprise formamide and acetamide
groups and acetamide). Dairoku is drawn to an absorbent material for use in
diapers and sanitary napkin, which may comprise a saturated organic acid
such as citric acid, succinic acid, and lactic acid. Thus, it would have been
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obvious to the ordinary artisan at the time of invention to use the absorbent
material of Dairoku with the coating of Curry because both references teach
their use in diapers and sanitary napkins, Dairoku teaches improved
absorbent properties, and Curry teaches antimicrobial/ant-fungal properties,
as well as order control. The reason for combining the references, that is,
the increased absorption, does not have to be addressed to the same problem
addressed by Appellants’ invention, that is, odor control.
As to the addition of Corzani, it is also drawn to a composition that
absorbs a body fluid and controlling the odor of the material, wherein
Corzani uses a dopant. Thus, we agree with the Examiner that it would have
been obvious to the ordinary artisan at the time of invention to add the
dopant of Corzani to the composition taught by the combination of Dairoku
and Curry to obtain those improved odor controlling properties.
We recognize that Corzani teaches the use of an aldehyde as a dopant,
but Corzani also teaches other dopants, such as organic amines that fall
within the scope of the claims. The fact that Corzani teaches the use of
aldehyde as a dopant, as well as the use of organic amines as a dopant, does
not render the use of the organic amines any less obvious. KSR, 550 U.S. at
419 (“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.”).

CONCLUSION(S) OF LAW
We conclude that Appellants have not demonstrated that the Examiner
relied on impermissible hindsight in combining the references as suggested
by the rejection to arrive at the claimed invention.
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We thus affirm the rejection of claims 14-20, 22-28, and 31-33 under
35 U.S.C. § 103(a) over the combination of Curry, Dairoku, and Corzani.

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).

AFFIRMED

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