Ex Parte Shi

Patent Trials and Appeals Board

May 3, 2019

13561999 - (D) (P.T.A.B. May. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/561,999 07/30/2012
23556 7590 05/07/2019
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
FIRST NAMED INVENTOR
Bo Shi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
64783071 USOl 2928
EXAMINER
KASSA, TIGABU
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
05/07/2019 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):
Kimberlyclark. docketing@kcc.com
Tisha.Sutherland@kcc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BO SHI 1
Appeal 2018-008251
Application 13/561,999
Technology Center 1600
Before RICHARD M. LEBOVITZ, ELIZABETH A. LA VIER, and
RYAN H. FLAX, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to algal biomass fiber material
comprising at least one metal ion that is incorporated into a personal care
product. The Examiner rejected the claims under 35 U.S.C. § 103 as
obvious. Pursuant to 35 U.S.C. § 134, Appellant appeals the Examiner's
determination that the claims are unpatentable. We have jurisdiction for the
appeal under 35 U.S.C. § 6(b ). The Examiner's decision is affirmed.
STATEMENT OF THE CASE
Claims 1-5, 7-11, and 13-17 are pending and stand rejected by the
Examiner as follows:
1 The Appeal Brief ("Br." entered Jan. 8, 2018) lists Kimberly-Clark
Worldwide, Inc., as the Real Party in Interest. Appeal Br. 4.
Appeal 2018-008251
Application 13/561,999
1. Claims 1-5, 7-11, and 13-17 under pre-AIA 35 U.S.C. § I03(a) as
obvious in view of Zikeli et al. (U.S. Pat. No. 7,314,570 B2, issued Jan. 1,
2008; also published as U.S. Pat. Appl. Publ. 2005/0035057 Al, published
Feb. 2017, 2005) ("Zikeli") (all references to Zikeli are with respect the
published patent application), Ozer et al. (The Equilibrium and Kinetic
Modelling of the Biosorption of Copper (II) Ions on Cladophora crispata, I 0
ADSORPTION 317-326 (2005)) ("Ozer"), Fish et al. (U.S. Pat. No. 7,794,737
B2, issued Sept. 14, 2010) ("Fish"), and Fluhr et al. (Silver-loaded seaweed-
based cellulosic fiber improves epidermal skin physiology in atopic
dermatitis: safety assessment, mode of action and controlled, randomized
single-blinded exploratory in vivo study, 19 EXPERIMENT AL DERMATOLOGY
e9-e15 (2009)) ("Flohr"). Ans. 3.
2. Claims 1-5, 7-11, and 13-17 under pre-AIA 35 U.S.C. § I03(a) as
obvious in view of Quincy et al. (U.S. Pat. No. 7,582,308 B2, issued Sept. 1,
2009) ("Quincy"), Ozer, and Fish. Ans. 3 ( claim 19 was included in the
statement of the rejection, but the claim is canceled).
3. Claim 8 under pre-AIA 35 U.S.C. § I03(a) as obvious in view of
Quincy, Ozer, Fish, and Fluhr. Ans. 3 ( claim 18 was included in the
statement of the rejection, but the claim is canceled).
Independent claim 1, which is representative of the appealed claims, is
reproduced below (indentations added for clarity):
1. An algal biomass fiber material comprising
at least one metal ion selected from the group consisting
of copper, iron, manganese, potassium, silver, nickel, zinc,
cadmium and combinations thereof,
wherein use of the selected from antimicrobial activity,
odor removal, gas removal and combinations thereof,
2
Appeal 2018-008251
Application 13/561,999
wherein the algal biomass fiber material is derived from
Cladophora, Chaetomorpha, Rhizoclonium, or combinations
thereof, and
wherein the algal biomass fiber is incorporated within a
personal care product selected from tissue, towel, napkin,
disinfecting wipes, sanitizing wipes, baby care products,
incontinence articles, and feminine care products.
Br. 16 (Claims Appendix).
REJECTION BASED ON ZIKELI
The Examiner found that Zikeli discloses a molded body made of an
algal-based cellulosic material comprising the same heavy metals as required
by claim 1. Final Act. 2. The Examiner also found that Zikeli discloses that
the algae-based cellulosic material can be used as a personal care product as
recited in the claim. Id. 2-3.
The Examiner acknowledged that Zikeli does not disclose that the
algal material is "derived from Cladophora, Chaetomorpha, Rhizoclonium"
as recited in claim 1. Final Act. 3. However, the Examiner found that Ozer
describes the biosorption of Cu(II) ions ("copper" as recited in claim 1) by
Cladophora. Id. 3--4.
The Examiner further cited Fish for teaching that copper ions were
demonstrated to be effective "in removing amine and sulfur based classes of
odorous compounds" and thus would accomplish "odor removal" as recited
in the claims.
Based on these disclosures, the Examiner determined it would have
been obvious to one of ordinary skill:
to substitute the Ozer Cladophora algae based material for the
Zikeli algae derived material in view of the teachings of Ozer
that Cladophora crispate is successfully used as an adsorbing
3
Appeal 2018-008251
Application 13/561,999
agent due to a high adsorption capacity for Cu(II) ions (page
325, left column), that the binding capacity of the Cladophora
crispate is much greater than that disclosed by Zikeli (see,
Zikeli, [0074]) and Fish that Cu ions were demonstrated to be
effective in removing amine and sulfur based classes of odorous
compounds ( col 6, lines 41-52) ( claim 7). One of ordinary skill
would have been motivated to make the subs[t]itution in order
to decrease any odors from personal care products and would
have chosen the algal based material having a higher ion
binding capacity in order to obtain a greater removal of odors.
Final Act. 4. See also Ans. 6.
DISCUSSION
Appellant argues that Ozer describes bioremediation using a species
of algae, but makes no mention of its use in a personal care product "or what
copper or algae might do in such a product." Br. 4. Appellant further argues
that Fish does not describe algal materials as required by all the rejected
claims, but rather uses extrudates and nanoparticles made from other
materials. Br. 5. Appellant contends that "[s]tarting from using Cladophora
crispate disclosed in Ozer to find other products having similar functions as
those disclosed in Ozer, one skilled in the art would not look for extrudates
or nanoparticles similar to those disclosed in Fish." Id.
This argument does not persuade us that the Examiner erred. The
Examiner did not "start" with Ozer to meet the requirement of claim 1 of
"[a]n algal biomass fiber material comprising at least one metal ion" which
"is incorporated within a personal care product selected from tissue, towel,
napkin, disinfecting wipes, sanitizing wipes, baby care products,
incontinence articles, and feminine care products." The Examiner, as
explained above, "started" with the disclosure in Zikeli for its teaching of a
molded body comprised "particularly [ of] algae material" including "brown
4
Appeal 2018-008251
Application 13/561,999
algae, green algae, red algae, blue algae or mixtures of these." Zikeli ,r,r 44,
70. Zikeli discloses that the molded body is useable as a hygiene article and
in hygiene applications, and as an antibacterial sponge, bandaging gauze,
and sponge wipe (Zikeli ,r,r 81, 94, 105), meeting the personal care product
limitation of claim 1, or reasonably suggesting it. Zikeli discloses that the
molded body made of algae adsorbs heavy metals, such as copper, and can
be used to remove metals from a solution or serve as an antibacterial or
fungicidal article. Zikeli ,r,r 1, 17-19, 23, 70.
The Examiner turned to Ozer because, while Zikeli expressly teaches
a molded body made from algae, Zikeli does not teach the specific species of
Cladophora which is claimed. For this limitation, the Examiner cited Ozer
for its teaching of the biosorption of Cu(II) ions to Cladophora crispate,
establishing that it has the same heavy metal activity as the algae described
in Zikeli, making it obvious to use in Zikeli's product. While Ozer's
experiments were accomplished with copper, Ozer in its "Introduction"
section describes the broader context that "[ m Jany algae, yeasts, bacteria and
other fungi are known to be capable of concentrating metal species from
dilute aqueous solutions and accumulating them within their cell structure."
Ozer 317. Ozer was apparently studying the biosorption process using
biosorption of copper by the algae Cladophora as a model. Id. at 318. Thus,
Appellant's attempt to distinguish Ozer on the basis of its differences from
claim 1 fails to address the fact that the Examiner relied on Zikeli for the
disputed limitations.
Appellant also identifies deficiencies in Fish, such as its failure to
teach algal material and personal care products. Br. 5. However, the
Examiner only cited Fish for teaching the additional property of copper ( and
5
Appeal 2018-008251
Application 13/561,999
silver) as removing odorants. Final Act. 4. The Examiner did not rely on
Fish for any other limitation in the claim.
Appellant's arguments, addressed above, attack the Examiner's cited
and combined references individually. However, non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. In re Merck, 800 F .2d
1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413 (CCPA 1981).
Furthermore, whether the Examiner "started" her analysis of the prior art
with one particular reference, as Appellant argues, because it is the
combination of prior art over which the claims have been rejected.
Appellant describes the mechanism of metal transfer described in its
application, stating that such mechanism "is essential and fundamental" to
the claimed algal biomass fiber material. Br. 6. Appellant distinguishes
these properties from those of the material described in Fish. Id. However,
Fish was not relied upon for the claimed material. Rather, the Examiner
cited Zikeli and Ozer as teaching such subject matter. Appellant does not
address this combination, but instead attempts to distinguish the claims over
the combination of Fish and Ozer (Br. 6), when the latter two publications
were not cited to meet the limitation of the algal biomass fiber material. See
also Ans. 7.
Similarly, Appellant cites deficiencies in Fluhr with respect to the
algal biomass fiber material. Br. 7. But Fluhr was only cited by the
Examiner as evidence of the antimicrobial properties of silver-loaded-algae
(Final Act. 3), the same type of material disclosed by Zikeli (at ,r 80).
Appellant contends that the skilled worker would not know "what
happens when algal biomass fiber material interacts, for example, with urine,
6
Appeal 2018-008251
Application 13/561,999
feces, and menses. The safety of this interaction in a personal care article is
not addressed. Also not discussed is how an algal biomass fiber material
would need to be processed for use in a personal care article." Br. 7.
This argument is not persuasive for several reasons. First, the claims
are not limited to materials that come into contact with "urine, feces, and
menses." For example, claim 1 is also directed to a "tissue, towel, napkin,
[and] disinfecting wipe." Appellant did not establish that the only uses for
such products would be in the context of contact with "urine, feces, and
menses." Second, Zikeli discloses that its materials can be made into
hygiene articles (i-f 81 ), which include the claimed "feminine care products,"
and "sponge wipes" (i-f 105), which is a "wipe" as recited in claim 1. Thus,
Zikeli describes products which expressly meet the claim limitations.
Appellant states that it is "not discussed" by Zikeli how to process the
material into a personal care product (Br. 7), but identifies no deficiencies in
Zikeli's disclosure, which describes such products and how to make them.
See Zikeli, e.g., ,r,r 105-107.
For the foregoing reasons, and those in the Final Office Action and
Answer, the rejection of claim 1 as obvious in view of Zikeli, Ozer, Fish,
and Fluhr is affirmed. Claims 2-5, 7-11, and 13-17 fall with claim 1
because separate arguments for their patentability were not provided.
37 § C.F.R. 37( c )(1 )(iv).
REJECTIONS BASED ON QUINCY
The Examiner rejected the claims based on Quincy's disclosure of a
personal care absorbent article comprising an odor control composition.
Final Act. 5. The Examiner found that Quincy does not describe the odor
7
Appeal 2018-008251
Application 13/561,999
control composition to be comprised of algal biomass fibers as required by
all the rejected claims. Id. at 6. However, the Examiner stated that Ozer and
Fish "cure the deficiency." Id. The Examiner stated that "[o]ne of ordinary
skill would have been motivated to use the Oser [ sic, Ozer] high Cu capacity
particle-containing fibers in a personal care product in view of the teachings
of Fish that Cu ions were demonstrated to be effective in removing amine
and sulfur based classes of odorous compounds (col 6, lines 41-52)." Final
Act. 7.
We reverse this rejection. As argued by Appellant, neither Ozer nor
Fish describes the algal based material as useful in a personal care product.
Ozer teaches that algal-based-materials can be used to remove pollutants,
such as heavy metals, from aqueous solutions, but makes no mention of
using such materials for personal care products (Ozer 317). Fish describes
odor absorbing extrudates for personal care products, but not made from
algae (Fish, Abstract). The Examiner did not provide an adequate reason for
using the algal biomass fiber material of Ozer, which is described as useful
to remove heavy metals from a solution, as the odor reducing material for
Fish's personal care product.
The obviousness rejections of claims 1-5, 7-11, and 13-17 based on
Quincy are reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
8