Ex Parte Shannon

Board of Patent Appeals and Interferences

Oct 4, 2007

10955533 (B.P.A.I. Oct. 4, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS GERARD SHANNON
____________

Appeal 2007-2862
Application 10/955,533
Technology Center 1700
____________

Decided: October 4, 2007
____________

Before and EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-14, 17-21, and
23. Claims 15, 16, and 22 are also pending, but have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2007-2862
Application 10/955,533

The invention relates to a wiping product such as facial tissue, bath
tissue and paper towels. (Br. 2; claim 21). Claim 1 is illustrative of the
invention and is reproduced below:
1. A wiping product comprising a non-woven fibrous sheet
containing a deliquescent material and a friction reduction compound.

The Examiner relies on the following prior art references to show
unpatentability:
Kennedy US 4,390,438 Jun. 28, 1983
Viazmensky US 5,009,747 Apr. 23, 1991
Nielsen US 5,167,764 Dec. 1, 1992
Kato US 5,814,568 Sep. 29, 1998

The Examiner made the following rejections:
1. Claims 1-14 and 17-21 under 35 U.S.C. § 103 as unpatentable over
Kato in view of Nielsen and Kennedy.
2. Claim 23 under 35 U.S.C. § 103 as unpatentable over Kato in view
of Nielsen and Kennedy and further in view of Viazmensky.

BACKGROUND
The Examiner finds that Kato discloses the invention as claimed with
the exception of a polyethylene oxide friction reduction compound.
(Answer 3-4). The Examiner further finds that Nielson discloses the
addition of high molecular weight polyethylene oxide in the manufacture of
nonwoven/paper sheets to provide excellent slip characteristics and aid in
deterring the formation of clumps, tangles and bundles. (Answer 4). The
Examiner contends that it would have been obvious to one of ordinary skill
in the art at the time of the invention to add high molecular weight
2
Appeal 2007-2862
Application 10/955,533

polyethylene oxide to Kato’s product in order to achieve the advantages
disclosed in Nielson. (Answer 4).
Appellant concedes that the prior art discloses the addition of high
molecular weight polyethylene oxide as a process aid to improve formation
of wet laid paper webs. (Br. 4). However, Appellant argues that “while it
may be obvious to use” friction reduction compounds to make the wet laid
sheets of Kato, “it would not be obvious to add” these compounds to the
sheets of Kato. (Br. 4). More specifically, Appellant maintains that “[t]hose
familiar with papermaking will appreciate that the high molecular weight
polyethylene oxides have no mechanism by which they are retained by the
cellulose fibers during web formation. Consequently, these process aids
pass through the sheet during formation and exit the system with the process
water.” (Br. 4). Thus, Appellant contends that the Examiner’s proposed
combination would not result in a product containing a friction reduction
compound as claimed. (Br. 4).
ISSUE
Based on the contentions of the Examiner and the Appellant, the issue
before us is: Has the Examiner established, by a preponderance of the
evidence, that the combined teachings of the references disclose or suggest a
wiping product which inherently possesses the claimed friction reduction
compound?
For the reasons discussed below, we answer this question in the
affirmative.

3
Appeal 2007-2862
Application 10/955,533

RELEVANT FINDINGS OF FACT
1) Kato discloses a water absorbent paper or nonwoven fabric
“composed of short or long fibers of cotton, rayon, acetate, nylon,
polyester or the like.” (Col. 2, ll. 16-18).
2) The fabric is impregnated with 5-hydroxy-2-hydroxymethyl-γ-
pyrone as well as an additional organic acid such as adipic acid and/or
water-retaining agent such as magnesium chloride. (Col. 2, ll. 30-39).
3) Nielsen discloses a composite wet-formed matt comprising a
blend of cellulose acetate fibers, bicomponent fibers, and an aqueous
based organic solvent which solubilizes the surface of the cellulose
acetate fibers to permit bonding thereof. (Col. 3, ll. 27-34).
4) Nielsen teaches that the acetate fibers, bicomponent fibers and
solvents are dispersed in a system of water, thickener and dispersant.
(Col. 6, ll. 3-5).
5) According to Nielsen, suitable dispersing agents are synthetic,
long-chain, linear molecules such as polyethylene oxide, which are
deposited on and coat the fiber surface and make it slippery. (Col. 6, ll.
49-50, 60-63, 65-66). Nielsen states that the slip characteristic “aids in
deterring the formation of clumps, tangles and bundles.” (Col. 6, 63-65).
ANALYSIS AND CONCLUSIONS
Appellant does not dispute the Examiner’s conclusion that it would
have been obvious to add polyethylene oxide in the process used to form
Kato’s nonwoven/paper product. Rather, Appellant argues that the
polyethylene oxide would only serve to reduce coefficient of friction
between fibers during processing and would not be retained in Kato’s final
product. (Br. 4).
4
Appeal 2007-2862
Application 10/955,533

In our view, however, the Examiner set forth a reasonable basis to
conclude that at least some of the polyethylene oxide would be retained by
the fibers in Kato’s final product. (Answer 7-8). See In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (Where the claimed and prior
art products are identical or substantially identical in structure or
composition, or are produced by identical or substantially identical
processes, a prima facie case of either anticipation or obviousness has been
established.); In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed.
Cir. 1990) (“When the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”). Thus, the burden was properly
shifted to Appellant to establish that a non-woven sheet produced by
addition of polyethylene oxide as a dispersing agent would not result in “a
non-woven fibrous sheet containing . . . a friction reduction compound” as
claimed. See In re Best, 562 F.2d at 1255, 195 USPQ at 433 (The prima
facie case can be rebutted by evidence showing that the prior art products do
not necessarily possess the characteristics of the claimed product.). See also,
Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773,
779 (Fed. Cir. 1985). Appellant has not provided the requisite evidentiary
showing to meet this burden. Cf. In re Geisler, 116 F.3d 1465, 1471, 43
USPQ2d 1362, 1365 (Fed. Cir. 1997) (argument by counsel cannot take the
place of evidence).
Claims 18, 19, and 20 set forth specific amounts of friction reduction
compound in the claimed product. (Br. 4). According to Appellant, these
amounts are necessary for the product to be effective, but are not taught or
suggested by the prior art. (Br. 4). Appellant has not, however, directed us
5
Appeal 2007-2862
Application 10/955,533

to any evidence which establishes that a product manufactured in accordance
with the relied upon prior art would not necessarily or inherently contain
polyethylene oxide (i.e., friction reduction compound) in the amounts
claimed.
Appellant also contends that claim 21 is separately patentable because
Kato’s product is not a facial tissue, bath tissue, or paper towel. (Br. 4-5).
Appellant argues, more specifically, that “[t]he term ‘bath tissue’ is a
limitation in the claim and inherently carries with it a normal meaning,
including structural characteristics.” (Br. 5). This argument, even if correct,
is unpersuasive since claim 21 is not limited to bath tissue. Appellant has
not explained, for example, how the claim term “paper towel” patentably
distinguishes over Kato’s paper.
Because Appellant has not presented persuasive arguments or
evidence to overcome the Examiner’s prima facie showing of obviousness,
we affirm the rejection of claims 1-14 and 17-21 under 35 U.S.C. § 103 as
unpatentable over Kato in view of Nielsen and Kennedy.
Appellant does not present any additional substantive arguments with
respect to the rejection of claim 23. Accordingly, we also affirm the
rejection of claim 23 under 35 U.S.C. § 103 as unpatentable over Kato in
view of Nielsen and Kennedy and further in view of Viazmensky.
6
Appeal 2007-2862
Application 10/955,533

ORDER
The rejection of claims 1-14 and 17-21 under 35 U.S.C. § 103 as
unpatentable over Kato in view of Nielsen and Kennedy is affirmed.
The rejection of claim 23 under 35 U.S.C. § 103 as unpatentable over
Kato in view of Nielsen and Kennedy and further in view of Viazmensky 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)(i)(iv).
AFFIRMED

tf/ls

KIMBERLY-CLARK WORLDWIDE, INC.
CATHERINE E. WOLF
401 NORTH LAKE STREET
NEENAH, WI 54956
7