Ex Parte SCHOLZ et al

Patent Trial and Appeal Board

Nov 14, 2017

14487134 (P.T.A.B. Nov. 14, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/487,134 09/16/2014 MATTHEW T. SCHOLZ 64408US013 1040
32692 7590 11/16/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
DICKINSON, PAUL W
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW T. SCHOLZ, FRANCIS E. PORBENI,
JAY M. JENNEN, and KOREY W. KARLS
Appeal 2017-005026
Application 14/487,1341
Technology Center 1600
Before FRANCISCO C. PRATS, DEBORAH KATZ, and
ELIZABETH A. LaVIER, Administrative Patent Judges.
LaVIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner’s rejections of claims 21—23, 26—33, and 52—65. We have
jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we
REVERSE.
BACKGROUND
The Specification describes durable hydrophilic compositions, which
are preferably biocompatible and may be melt-processable. Spec. 2:20—22.
1 Appellants state the real party in interest is 3M Innovative Properties
Company. Appeal Br. 3.
Appeal 2017-005026
Application 14/487,134
These compositions may be used in various food safety, medical, and water
purification products. See id. at 22—23. Claim 21 is illustrative:
21. A nonwoven web of fibers, wherein the fibers comprise a
blend comprising:
at least one thermoplastic aliphatic polyester;
an alkyl, alkenyl, aralkyl, or alkaryl anionic surfactant
incorporated in the polyester; wherein the surfactant is selected
from the group consisting of alkyl sulfate, alkenyl sulfate,
alkaryl sulfate, aralkyl sulfate, alkylalkoxylated sulfate, alkyl
sulfonate, alkenyl sulfonate, alkaryl sulfonate, aralkyl sulfonate,
alkylalkoxylated sulfonate, alkvl phosphonate, alkenyl
phosphonate, alkaryl phosphonate, aralkyl phosphonate, alkyl
phosphate, alkenyl phosphate, alkaryl phosphate, aralkyl
phosphate, alkyl alkoxylated phosphate, di/CT-Cix)
sulfosuccinate salts, C8-C22 alkyl sarcosinate salts, C8-C22 alkyl
lactylate salts, and combinations thereof; wherein the surfactant
is present in a concentration sufficient to make the nonwoven
web durably hydrophilic and absorbent and instantaneously
wettable; and
a surfactant carrier;
wherein the fibers are 20 micrometers or less in diameter;
wherein the surfactant is soluble in the carrier at greater than
10% by weight such that the surfactant and carrier form a
visually transparent solution in a 1-cm path length glass vial
when heated to 150°C.
Appeal Br. 202 (Claims Appendix).
2 The pages of the Claims Appendix are unnumbered; for ease of reference we
refer to the Claims Appendix, which follows page 19 of the Appeal Brief, by
page numbers beginning with 20.
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Application 14/487,134
REJECTIONS MAINTAINED ON APPEAL
1. Claims 21—23, 26—33, 52—55, 57, 58, 64, and 65 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Bond3 and Matsushita.4
Ans. 2.
2. Claims 21—23, 26—33, and 52—65 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Bond, Matsushita, and Koenig.5
Ans. 5.
DISCUSSION
As to exemplary claim 21, the Examiner finds that Bond teaches each
of the claimed elements with the exception of the surfactant (see Final
Action 4—5), insofar as Bond discloses surfactants generally but not any of
those recited in claim 21 (see id. at 4 (citing Bond 68)). For surfactants
within the scope of claim 21, the Examiner turns to Matsushita. See id. at 5.
The Examiner finds it would have been obvious to incorporate Matsushita’s
surfactants into Bond because “Bond teaches combination of a thermoplastic
aliphatic polyester with an appropriate surfactant, and Matsushita discloses
appropriate surfactants for combination with thermoplastic aliphatic
polyesters for the making of microfibers.” Id. at 6.
Appellants argue, inter alia, that one of ordinary skill in the art would
not have combined Bond and Matsushita to arrive at claim 21 because the
references “are directed to opposing purposes.” Appeal Br. 17. Specifically,
Bond teaches spinnable, multicomponent fibers, in which a first component
3 Bond, US 2004/0096656 Al, published May 20, 2004.
4 Matsushita et al., US 6,515,054 Bl, issued Feb. 4, 2003.
5 Koenig et al., US 2004/0009210 Al, published Jan. 15, 2004.
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Application 14/487,134
includes a starch insolublizing agent and a thermoplastic polymer, and the
second component comprises a starch. Bond | 6. Bond teaches various
configurations for segmenting the first and second components (see, e.g., id.
at || 7, 69), and cautions that “[a] difficulty with adding the insolubilization
agent to the second component during processing is that such a composition
has very poor spinnability” (id. at | 6). Matsushita, on the other hand,
teaches biodegradable resins and molded products made therefrom (see
Matsushita Abstract). Matsushita lists starches among the exemplary
biodegradable organic fillers used in the resins (see id. at 5:54—6:36), and
explains that “it is preferable to beforehand treat the surface of the filler with
the . . . anionic surfactant, thereby enabling the filler to uniformly disperse
into the biodegradable resin” (id. at 6:57—60).
In other words, Bond places a physical barrier between starch and
other components of its fiber to prevent premature mixing (and its attendant
negative consequences for spinnability), whereas Matsushita encourages
using a surfactant to disperse starch uniformly throughout its resin. We
agree with Appellants that these teachings work at opposite purposes. As
Appellants explain, “[mjixing of the two separate components of Bond —
including mixing of the thermoplastic resin and starch — would ruin Bond by
insolublizing the starch and making fiber spinning impossible.” Appeal Br.
18.
The Examiner notes that starch “is only one filler taught by
Matsushita” (Ans. 8), but it is Bond, not Matsushita, that necessarily
includes starch. The Examiner does not explain why the ordinarily skilled
artisan would begin with Bond, which teaches spinnable starch fibers and
distinguishes itself over moldable compositions (see Bond 12), “to prepare a
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Application 14/487,134
moldable composition” (Final Action 6) lacking starch. In the absence of
such analysis, we cannot sustain the rejections, which both rely on
combining Bond with Matsushita in this manner.
CONCLUSION
We reverse the rejections of claims 21—23, 26—33, and 52—65.
REVERSED
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