Ex parte Pike

Board of Patent Appeals and Interferences

Sep 22, 2000

08522479 (B.P.A.I. Sep. 22, 2000)

Application for patent filed on August 30, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was not written for publication in a law
journal and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD D. PIKE
__________
Appeal No. 1998-0240
Application 08/522,4791
___________
ON BRIEF
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Before JOHN D. SMITH, WALTZ, and TIERNEY, Administrative Patent Judges.
TIERNEY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. §134 from the examiner’s final rejection of claims 1-7, 9-12,
14-17 and 25. Appellant has withdrawn claims 1-4, 6-7, 14-17 and 25 from appeal in order to reduce
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Application 08/522,479
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the number of issues on appeal. (Brief, p. 1 and Reply Brief, p. 1). Accordingly, this is a decision on
appeal which involves claims 5 and 9-12.
The Invention
The appellant's invention relates to a helically crimped multicomponent conjugate fiber
comprising a first thermoplastic polymer and a second thermoplastic polymer having different
solidification periods. A nucleating agent is present in the polymer having the shorter solidification
period or may be present in both polymers. (Specification, page 2, line 31 to page 3, line 10 and page
6, lines 14-19). Mineral particles are described as suitable nucleating agents for the polymers.
(Specification, page 6, line 24 to page 7, line 1). Desirably, the nucleating agent is present in an amount
ranging from about 0.005% to about 2% based on the total weight of the component composition.
(Specification, page 6, lines 20-23). A copy of the claims under appeal is set forth in the appendix to
the appellant's brief. Claims 5, which depends from claims 1-4, and claim 9 are illustrative of the
invention. Claims 1-5 and 9 read as follows:
1. A helically crimped multicomponent conjugate fiber comprising at least a first composition
and a second composition, said first composition comprising a first thermoplastic polymer and
said second composition comprising a second thermoplastic polymer, said first and second
thermoplastic polymers having different solidification periods, wherein at least one of said first
and second compositions contains an amount of nucleating agent effective to modify the level of
crimp within said fiber.
2. The conjugate fiber of claim 1 wherein said first and second thermoplastic polymers are
selected from polyolefins, polyamides, polyesters, vinyl acetate-based polymers, and blends
and copolymers thereof.
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3. The conjugate fiber of claim 2 wherein said nucleating agent is selected from sorbitol
nucleating agents; metal salts of benzoic acid, dicarboxylic acid and arylalkanoic acid; sodium
2,2'-methylene bis(4,6-di-t-butylphenyl) phosphate; and mineral particles.
4. The conjugate fiber of claim 3 wherein at least one of said component compositions
comprises between about 0.005% and 2.0%, based on the total weight of said composition, of
said nucleating agent.
5. The conjugate fiber of claim 4 wherein both said first and second compositions contain said
nucleating agent.
9. A helically crimped multicomponent conjugate fiber comprising at least a first composition
and a second composition, said first composition comprising a first thermoplastic polymer and
said second composition a second thermoplastic polymer, said first thermoplastic polymer
having a shorter solidification period and higher melting point than said second thermoplastic
polymer, wherein said first composition contains an amount of nucleating agent effective to
increase the level of crimp within said fiber.
The References
The prior art references of record relied upon by the examiner in rejecting the appealed claims
are:
Connor et al. (Connor) 5,366,786 Nov. 22, 1994
Pike et al. (Pike) 5,382,400 Jan. 17, 1995
Both Pike and Connor are available as a prior art references under 35 U.S.C. §102(a) or
§102(e). Additionally, we note that both Pike and Connor are assigned to Kimberly-Clark
Corporation, the assignee of the present application.
References Cited by the Board of Patent Appeals and Interferences
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Application 08/522,479
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The references cited by the Board are as follows:
Needham 5,366,675 Nov. 22, 1994
Bowen, Jr. 6,007,911 Dec. 28, 1999
Y. Lin et al., “The Effect of Pigments on the Development of Structure and Properties of
Polypropylene Filaments,” ANTEC 1991, pp. 1950-1954. (Y. Lin)
The Needham and Bowen patents are made of record and are cited on the attached PTO-892,
with copies of these patents attached to this decision. Y. Lin was previously made of record in the
Information Disclosure Statement, Paper No. 2, filed December 20, 1995.
The Rejections
(1) Claims 9-12 stand rejected under 35 U.S.C. § 112, first paragraph for being broader
than the enabling disclosure with respect to the term “higher melting point.”
(2) Claims 5, 9-12 stand rejected under 35 U.S.C. § 112, second paragraph as indefinite
due to the recitation of “between about” to define the amounts of nucleating agent present in the
compositions.
(3) Claim 9 stands rejected under 35 U.S.C. § 112, second paragraph as indefinite due to
the recitation “increase” with regards to the level of crimping.
(4) Claims 5 and 9-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Pike
in view of Connor.
Opinion
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We have carefully considered all of the arguments advanced by appellants and the examiner
and agree with appellants that the aforementioned rejections are not well founded. Accordingly, we
reverse the rejections.
1. The Rejections Under 35 U.S.C. § 112, Second Paragraph
The examiner has rejected claims 5 and 9-12 under 35 U.S.C. § 112, second paragraph for
failing to particularly point out and distinctly claim the subject matter which appellant’s regard as the
invention. Specifically, the examiner has taken issue with the terminology “between about 0.005% and
2.0%” in claims 5 and 12 and the language “effective to increase the level of crimp within said fiber” as
recited in claim 9.
For a lack of definiteness rejection under 35 U.S.C. § 112, second paragraph, the proper
standard for definiteness is whether a claim reasonably apprises those of skill in the art of its scope.
See In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994). Further,
reviewing a claim for definiteness requires a determination of whether those skilled in the art could
ascertain what is claimed when the claim is read in light of the specification. As discussed below, based
upon our reading of the claims and the specification as originally filed, the disputed claim language
reasonably apprises those skilled in the art of the scope of the claimed invention.
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As to the language “between about 0.005% and 2.0%,” the examiner has failed to meet the
burden that one skilled in the art would be unable to ascertain its scope. Here, the specific language
“between about 0.005% and 2.0%” is clear, but flexible. The language allows appellant to include both
the end points within the scope of the claim and also some finite amount beyond the end points.
As to the language “effective to increase the level of crimp within said fiber,” the examiner
argues that the degree of “increase in the level of crimp is not defined by the claim.”
The prior art reference Pike, however, describes a specific industry standardized test to measure the
crimp of the fiber. (Pike, col. 11, lines 32-33; “crimp was measured according to ASTM D-3937-
82.”). Accordingly, one skilled in the art would be able to ascertain the amount of crimping in a fiber
that does not contain a nucleating agent and compare it to the level of crimping in a fiber containing a
nucleating agent in order to determine if the amount of crimping was “increased.”
2. The Rejection Under 35 U.S.C. § 112, First Paragraph
The examiner has rejected claims 9-12 under 35 U.S.C. § 112, first paragraph as the
disclosure is only enabled for claims limited in accordance with the specification at page 5, line 12.
More particularly, the examiner states that:
However, according to page 5 supra the fast solidifying component polymer has a melting point
about 10 C or higher. Thus, claim 9 ‘higher melting point’ is broader in scope than the enablingo
disclosure. (Examiner’s Answer, page 4).
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The examiner does not appear to provide any reasoning as to why one skilled in the art would be
unable to make and/or use the invention recited in the claims. Furthermore, appellant’s specification
states that “the two component polymers may have similar melting points if their crystallization rates are
measurably different.” (Specification, page 5). As the specification describes the two component
polymers as having similar melting points or that the fast solidifying polymer may have a melting point
higher than the slower solidifying component, the claims are commensurate in scope with the subject
matter described in the specification such that one skilled in the art could make and/or use the claimed
invention.
3. The Rejection Under 35 U.S.C. § 103(a) over Pike in view of Connor
The examiner has rejected claims 5 and 9-12 under 35 U.S.C. § 103(a) over Pike in view of
Connor. Briefly, the examiner relies upon Pike as teaching a helically crimped multicomponent
conjugate fiber having a first component which can be polypropylene and a second component which
can be polyethylene. The examiner, however, finds that Pike is silent as to the presence of nucleating
agents. Connor is relied upon as teaching that it is well known in the art to incorporate nucleating
agents in amounts ranging from 0.1 to 0.3% into thermoplastic polymers to improve their bonding.
From this evidence, the examiner concludes that it would have been obvious to one skilled in the art to
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incorporate the amount of nucleating agent taught by Connor in the first and/or second component
filaments to improve the bonding of the filament.
It is well settled that to establish a prima facie case of obviousness, the prior art reference (or
references when combined) must teach or suggest all the claim limitations. See In re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970) (“All words in a claim must be considered in judging
the patentability of that claim against the prior art.”). Furthermore, any motivation to modify the prior
art references must flow from some teaching in the art that suggests the desirability or incentive to make
the modification needed to arrive at the claimed invention. In re Napier, 55 F.3d 610, 613, 34
USPQ2d 1782, 1784 (Fed Cir. 1995); In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888,
(Fed. Cir. 1991)(“When it is necessary to select elements of various teachings in order to form the
claimed invention, we ascertain whether
there is any suggestion or motivation in the prior art to make the selection made by the applicant.
[Citations omitted] ... The extent to which such suggestion must be explicit in, or may be fairly inferred
from, the references, is decided on the facts of each case in the light of the prior art and its relationship
to the applicants’ invention.”).
As urged by appellant, we conclude that the examiner has failed to establish a prima facie case
of obviousness as to claims 5 and 9-12 over Pike in view of Connor. As described by appellant, the
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Application 08/522,479
Appellant’s specification incorporates the disclosure of Pike by reference in its entirety. 2
(Specification, page 9, lines 11-14).
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claimed helically crimped multicomponent fibers may be bonded by heating the fiber to a temperature
above the melting point of the low melting point compound yet below the melting point of the high
melting point component. (See Brief, page 7, and Pike , col. 4, lines 37-43 and col. 9, lines 17-24). 2
Connor, however, describes the addition of a nucleating agent to a thermoplastic polymer, such as
polypropylene, in order to increase the bond strength of the thermally bonded fibers. (Connor, col. 2,
lines 39-51 and col. 3, lines 30-37). Furthermore, Connor specifically states that “the nucleating agent
additive can be considered to function as a bonding aid and not as an additive for enhancing fiber
strength.” (Connor, col. 3, lines 32-35). Accordingly, one skilled in the art reading the Connor
reference would expect that the addition of the nucleating agent to the Pike reference would increase
the bonding strength of the low melting point, thermally bonded fiber. Yet, one skilled in the art would
have no such expectation of improved bonding strength for the high melting point fibers as Pike teaches
that nonwoven fabric webs are produced at temperatures below the melting point of the high melting
point fiber and above the melting point of the low melting point fiber, i.e., only the low melting point
fiber melts to form bonds. Accordingly, the reference evidence relied on by the examiner fails to
establish a prima facie case of obviousness for incorporating a nucleating agent in thermoplastic
polymers having a shorter solidification period and/or higher melting point.
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Remand for Further Consideration of Pike’s Examples
As discussed above, appellant's invention relates to a helically crimped multicomponent
conjugate fiber comprising a first thermoplastic polymer and a second thermoplastic polymer having
different solidification periods. A nucleating agent is present in the polymer having the shorter
solidification period or may be present in both polymers. (Specification, page 2, line 31 to page 3, line
10 and page 6, lines 14-19). Mineral particles, such as talc, fumed alumina and fumed silica are
described as suitable nucleating agents for the polymers. (Specification, page 6, line 24 to page 7, line
1).
Pike describes a process for making nonwoven fabric made with multicomponent filaments
having a helical crimp. (Abstract and col. 1, lines 6-9). One method of obtaining the crimp is to select
a first and second component where the first component has a melting point less than the melting point
of the second component. (Col. 4, lines 15-19 and col. 6, lines 28-41). The first component
preferably comprises polypropylene or a random copolymer of propylene and ethylene and the second
component preferably includes polyethylene. (Col. 4, lines 19-23 and col. 6, lines 42-46). In all of the
examples of Pike, examples 1-22, Pike exemplifies a multicomponent fiber systems where the first fiber
contains 98% polypropylene and 2% TiO (titanium dioxide) concentrate and the second fiber contains2
98% polyethylene and 2% TiO concentrate. (Pike, examples 1-22). The TiO concentrate is a2 2
mixture of 50% by weight TiO and 50% by weight polypropylene. (Col. 11, lines 26-28). 2
Appeal No. 1998-0240
Application 08/522,479
Although this reference is not available as prior art against the claimed subject matter it has3
been cited as representative of the state of the art.
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Upon return of this application to the jurisdiction of the examiner, the examiner and appellant
should determine whether Pike’s exemplified TiO concentrate is encompassed by appellant’s2
“nucleating agents” especially in light of the specification’s clear teaching that mineral particles are
suitable nucleating agents. In particular, the examiner is directed to “The Effect of Pigments on the
Development of Structure and Properties of Polypropylene Filaments” by Y. Lin et al., ANTEC 1991,
pp. 1950-1954, which describes the effects of adding pigments to polypropylene fibers. Lin
specifically tested the effects of TiO as a white pigment for polypropylene. (Lin, page 1952, table 1). 2
In particular, the examiner’s attention is drawn to Lin’s statement that:
The pigment additions act as nucleating agents and change the crystallization kinetics and
morphology of spherulites. In the spinline the pigment additions cause crystallization to occur at
higher temperatures and at shorter distances from the spinneret during melt spinning. (Lin, page
1951, col. 2).
Additionally, the examiner is directed to Needham, U.S. Patent No. 5,366,675 which teaches that
titanium dioxide and talc are suitable nucleating agents for polyolefins, e.g., polyethylene, and that the
nucleating agents preferably have a particle size ranging from about 0.1 to 25 microns. (Needham, col.
2, lines 21-23, col. 4, lines 28-35 and col. 4, lines 46-48). Furthermore, the examiner is directed to
Bowen, Jr., U.S. Patent No. 6,007,991 which describes thermoplastic filaments having nucleating3
agents such as TiO and talc. (Abstract and col. 6, lines 2-3).2
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Accordingly, this application is remanded to the examiner for review and reconsideration of
appealed claims 5 and 9-12 in light of the examples of Pike and the additional references discussed
above.
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Conclusion
We reverse the examiner’s rejections and remand the case to the examiner for further
consideration.
REVERSED AND REMANDED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL P. TIERNEY )
Administrative Patent Judge )
MPT:pgg
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Douglas H. Tulley, Jr. (Patent Dept.)
Kimberly Clark Corp.
401 North Lake Street
Neenah WI 54956