Ex Parte Quincy et al

Board of Patent Appeals and Interferences

Feb 6, 2008

10328707 (B.P.A.I. Feb. 6, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROGER BRADSHAW QUINCY
and ELIZABETH DEIBLER GADSBY
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Appeal 2008-0917
Application 10/328,707
Technology Center 1700
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Decided: February 6, 2008
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 60, 61, 63-65, and 77-79.1 We have jurisdiction
under 35 U.S.C. § 6.

1 In a footnote on page 2 of the Brief, filed Feb. 5, 2007, (hereinafter Brief),
Appellants state that "dependent claim 76 is hereby canceled and removed
from consideration in the present application" and that, "[a]s such, claim 76
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Application 10/328,707

We AFFIRM.
Appellants claim a personal care absorbent article that comprises a
nonwoven web in a liquid-transmissive layer and/or a liquid-absorbent core
wherein the nonwoven web contains and an N-halamine compound and an
odor absorbent.
Further details regarding this claimed subject matter are set forth in
representative claims 60 and 61 which read as follows:
60. A personal care absorbent article that comprises at least one
liquid-transmissive layer and a liquid-absorbent core, wherein a nonwoven
web forms at least a portion of the liquid-transmissive layer, the liquid-
absorbent core, or combinations thereon, wherein the nonwoven web
contains an N-halamine compound in an amount of from about 0.1 to about
10% by weight and an odor adsorbent in an amount of 0.5% to about 20%
by weight, wherein after being aged at a temperature of 130ºF and a relative
humidity of 50% for 2 weeks, the nonwoven web exhibits a log reduction for
E. coli, S. aureus, P. mirabilis, or combinations thereof, of at least about 3,
measured after a contact period of 4 hours.

61. The personal care absorbent article of claim 60, wherein the
nonwoven web is substantially free from superabsorbents.

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Hagiwara 4,525,410 Jun. 25, 1985
Jordan 4,842,593 Jun. 27, 1989
Worley 6,548,054 B2 Apr. 15, 2003
is not recited in the attached claims Appendix." Due to non-compliance
with 37 CFR § 1.4(c), this footnoted statement has not effected cancellation
of claim 76. Nevertheless, we consider this claim to have been withdrawn
from the subject appeal by virtue of the afore-noted statement.
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All of the appealed claims are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Worley in view of Hagiwara and Jordan.
Like Appellants (Br. 7-11), we understand the Examiner's obviousness
position to be that it would have been obvious for one with ordinary skill in
this art to place Worley's combination of biocidal N-halamine particles and
odor absorbent (i.e., adsorbent) in the nonwoven web of Jordan's liquid
pervious top sheet or absorbent core at concentrations which fall within the
claim 60 ranges as evidenced by Hagiwara with respect to the absorbent
(i.e., adsorbent) concentration. Appellants argue that no motivation exists
for so combining the teachings of the applied references (id.). We cannot
agree.
It is undisputed that Worley teaches providing absorbent articles of
the type disclosed by Jordan and defined by claim 60 with biocidal polymer
beads of the type and at concentrations defined by claim 60 (Abstract; col. 5,
ll. 2-37). Likewise, there is no dispute that Worley teaches using the
aforementioned biocidal polymer beads in combination with odor absorbents
(i.e., adsorbents) (col. 5, ll. 41-55) as required by claim 60 or that Jordan
teaches absorbent articles comprising a liquid pervious top sheet and
absorbent core formed of nonwoven webs (col. 4, ll. 26-34 and 54-59)
containing antimicrobial agent in particulate form (col. 13, ll. 1-10).
Furthermore, there is no dispute that Worley’s odor absorbents include
zeolites, alumina and silica (col. 5, ll. 50-55), which, as evidenced by
Hagiwara (col. 2, ll. 19-26; col. 8, ll. 45-55), are known adsorbents.
In light of these undisputed findings, we conclude that it would have
been obvious for an artisan to employ Worley's biocidal beads as the
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Application 10/328,707

antimicrobial particulates used by Jordan in the nonwoven webs of the liquid
pervious top sheet and/or the absorbent core. Contrary to Appellants'
argument, an artisan would have been motivated to so combine these
reference teachings because Worley expressly teaches using his biocidal
beads in absorbent articles and Jordan expressly teaches providing his
absorbent articles with antimicrobial particulates. Therefore, the proposed
combination is the natural consequence of the directions provided by these
references as to how the respective inventions thereof are to be used by those
skilled in this art.
In providing the above-discussed combination, an artisan also would
have found it obvious to use Worley's biocidal beads in conjunction with an
odor absorbent (i.e., adsorbent) such as clay or zeolite since this is explicitly
taught by patentee as previously explained. While Worley does not disclose
any particular concentrations for this odor absorbent (i.e., adsorbent), an
artisan would have recognized concentration to be a result-effective
parameter as evinced by both Worley and Hagiwara. It is well settled that
the determination of workable values for a result-effective parameter would
have been obvious. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Under these circumstances, we further conclude that it would have been
obvious for the artisan to determine workable concentrations for Worley's
odor absorbent (i.e., adsorbent), thereby yielding concentrations within the
range defined by claim 60.
It is the Examiner's determination that the absorbent article resulting
from the applied prior art teachings would inherently possess the claim 60
characteristic "wherein after being aged at a temperature of 130ºF and a
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relative humidity of 50% for 2 weeks, the nonwoven web exhibits a log
reduction for E. coli, S. aureus, P. mirabilis, or combinations thereof, of at
least about 3, measured after a contact period of 4 hours" (Ans. para.
bridging 5-6). Appellants argue that the Examiner's inherency position has
not been established by fact and/or technical reasoning and that an absorbent
article having the compositional and structural features of claim 60 would
not necessarily possess the claimed log reduction as evidenced by certain
Specification data (Br. 4-7). This argument is unconvincing.
We recognize that the Examiner's inherency position must be
supported by a basis in fact and/or technical reasoning. Ex parte Levy,
17 USPQ2d 1461, 1464 (BPAI 1990). Here, the absorbent article resulting
from the Examiner's proposed combination of reference teachings possesses
each of the compositional and structural features required by claim 60.
Moreover, the biocidal polymer beads of Worley are explicitly and
repeatedly described as having significant biocidal effect with high log
reductions against each of the specific microorganisms recited in claim 60
(col. 5, ll. 56-64; Examples 2-3 at cols. 8-9; Example 5 at col. 12; and
especially Example 7 at cols. 13-14). These facts amply support the very
reasonable determination that Worley's biocidal polymer beads, when used
in the concentrations and environments taught by patentee and claimed by
Appellants, (1) would exhibit a significant biocidal effect having high log
reductions against the microorganisms under consideration and therefore (2)
would inherently possess the log reduction capability required by claim 60.
It follows that we are unpersuaded by Appellants' argument that the
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Examiner's inherency position is not supported by fact and/or technical
reasoning.
We also are unpersuaded by the argument that Specification data from
Samples 6, 8, 9, and 11 evince that the claim 60 log reduction capability
would not necessarily be possessed by the prior art combination proposed by
the Examiner. This data shows only that articles having 2.5 wt.% clay as
odor absorbent (i.e., adsorbent) possess the here-claimed log reduction
whereas corresponding articles having 16.7 wt.% superabsorbent as odor
absorbent do not. Such a showing does not evince that the Examiner's
inherency position is improperly based on probabilities or possibilities. This
is because, although Worley teaches using various materials as an odor
absorbent (or adsorbent) including clay and superabsorbent polymer (col. 5,
ll. 41-52), patentee does not require use of superabsorbent polymer as the
Examiner has correctly indicated (Ans. 7, 8, 9). Stated differently, Worley
teaches many combinations of biocidal polymer beads and odor absorbents
(i.e., adsorbents), which do not include superabsorbent polymers, including
the biocide and clay combination shown by Appellants' data to possess the
log reduction capability of claim 60. Accordingly, the Specification data
militates for rather than against a determination that such embodiments
would inherently possess the capability under consideration.
Furthermore, in combining the applied reference teachings in the
manner discussed above, an artisan would have been motivated to not use a
superabsorbent at a concentration which resulted in an unacceptable
diminishment of the previously discussed log reduction capabilities of the
biocidal polymer beads of Worley. Such diminishment is an antithetical to
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Worley's teachings and purpose, and the artisan would not have used biocide
and odor absorbent (i.e., adsorbent) combinations which militate against the
teachings and purpose of Worley. We emphasize that a person of ordinary
skill is also a person of ordinary creativity, not an automaton. KSR Int'l v.
Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007).
Finally, Appellants argue that the applied prior art contains no
teaching or suggestion of the claim 61 requirement that "the nonwoven web
be substantially free from 'superabsorbents'" (Br. 11). This argument is
without persuasive merit for the reasons detailed above. With regard to this
argument, Appellants state that, "[w]ithout intending to be limited by theory,
it is believed that superabsorbents can deactivate the halogen oxidant
responsible for the antimicrobial efficacy of halogenated antimicrobial
agents such as [the here-claimed] N-halamines" and that "[n]owhere does
any of the cited references recognize such an effect on the stability of the
antimicrobial agent" (id.). However, we perceive no reason why
obviousness requires the applied references to recognize Appellants'
unproven theory to which they do not intend to be limited. Regardless, in
determining whether the subject matter of a claim is obvious, neither the
particular motivation nor the avowed purpose of the inventor controls. What
matters is whether the objective reach of the claim extends to what is
obvious. KSR, 127 S. Ct. at 1741-42. As explained earlier, claim 61 extends
to obvious subject matter.
For the above stated reasons, we hereby sustain the § 103 rejection of
all claims on appeal as being unpatentable over Worley in view of Hagiwara
and further in view of Jordan.
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The decision of the Examiner is affirmed.
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).
AFFIRMED

cam

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