Ex Parte Numano et alDownload PDFBoard of Patent Appeals and InterferencesMar 12, 201010381695 (B.P.A.I. Mar. 12, 2010) Copy Citation 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We have jurisdiction under 35 U.S.C. § 6(b). 1 Claims 14-20 and 22-41 are pending, and claims 29, 30, and 34-41 stand withdrawn from consideration.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.) Appeal 2009-012049 Application 10/381,695 2 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. Appeal 2009-012049 Application 10/381,695 3 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.) Appeal 2009-012049 Application 10/381,695 4 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 Appeal 2009-012049 Application 10/381,695 5 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. Appeal 2009-012049 Application 10/381,695 6 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 Appeal 2009-012049 Application 10/381,695 7 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. Appeal 2009-012049 Application 10/381,695 8 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 Appeal 2009-012049 Application 10/381,695 9 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. Appeal 2009-012049 Application 10/381,695 10 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 alw LOWE, HAUPTMAN, HAM & BERNER, LLP 1700 DIAGONAL ROAD SUITE 300 ALEXANDRIA, VA 22314 Copy with citationCopy as parenthetical citation