Ex Parte Shi et al

Patent Trial and Appeal Board

May 31, 2016

13481125 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/481,125 05/25/2012
23556 7590 06/01/2016
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.
64786125US01 1332
EXAMINER
YAARY,ERIC
ART UNIT PAPER NUMBER
1747
MAILDATE DELIVERY MODE
06/01/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BO SHI, MICHAEL WILLIAM VEITH,
CANDACE DYLAN KRAUTKRAMER, and
THOMASGERARDSHANNON1
Appeal2014-008613
Application 13/481,125
Technology Center 1700
Before PETER F. KRATZ, CATHERINE Q. TIMM, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1-20 in the above-identified application. We have
jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Kimberly-Clark
Worldwide, Inc. Appeal Br. 1.
Appeal2014-008613
Application 13/481,125
BACKGROUND
Appellants' invention relates to "novel pulps comprising macroalgae
fibers and methods of manufacturing the same." Spec. 1 :20-21.
Independent claim 1 is representative:
1. A pulp sheet comprising from about 1 to about 30 weight
percent never-dried macroalgae pulp fibers, the pulp sheet
having a moisture content less than about 15 percent, a basis
weight of at least about 150 grams per square meter and an
MD Tensile Index greater than about 10 Nm/g.
Appeal Br. 5 (emphasis added). Claims 10 and 16 are the only other
independent claims. Id. at 6.
The Examiner maintains the following grounds of rejection:
I. Claims 1-9 under 35 U.S.C. § 103(a) as being obvious over U.S.
Patent No. US 5,743,999 [hereinafter Kamps] (issued Apr. 28, 1998) in view
of U.S. Patent Pub. No. US 2010/0206504 Al [Akiyama] (published Aug.
19, 2010), Yung Bum Seo et al., Optical Properties of Red Algae Fibers, 49
Indus. & Engineering Chemistry Res. 9830 (2010) [hereinafter Seo], Yung-
Bum Seo et al., Red Algae and Their Use in Papermaking, IOI Bioresource
Tech. 2549 (2010) [hereinafter Lee], and U.S. Patent No. 5,114,534
[hereinafter Rachor] (issued May 19, 1992). Final Action 3--4.
II. Claims 10-15 under 35 U.S.C. § 103(a) as being obvious over
Kamps in view of U.S. Patent Pub. No. US 2006/0137842 Al [Gamier]
(published June 29, 2006), Seo, and Lee. Final Action 4--5.
III. Claims 16, 17, and 19-20 under 35 U.S.C. § 103(a) as being
obvious over U.S. Patent Pub. No. US 2010/0319865 Al [Peterson]
(published Dec. 23, 2010) in view of Seo, and Lee. Final Action 5---6.
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Appeal2014-008613
Application 13/481,125
IV. Claim 18 under 35 U.S.C. § 103(a) as being obvious over Peterson,
Seo, and Lee, and further in view of U.S. Patent No. 5,522,967 [Shet]
(issued June 4, 1996). Final Action 6.
Appellants refer only to ground of rejection I, and present arguments
relating to claims 1-9 as a group, see Appeal Br. 2--4; therefore, we limit our
discussion to claim 1. Appellants' arguments and supporting Declaration
evidence for the patentability of claims 1-9, particularly those concerning
the MD Tensile Index limitation which is also a required limitation of claim
10, also directly apply to claims 10-15. Consequently, we determine that
Appellants' arguments were presented so as to apply with respect to ground
of rejection II, and we consider Appellants' failure to refer to claims 10-15
and Rejection II in the arguments presented at pages 2 and 3 of the Appeal
Brief to be an inadvertent omission. However, grounds of rejection III and
IV stand uncontested.
DISCUSSION
Regarding claim 1, the Examiner finds that Kamps teaches the
required basis weight, Seo teaches the required weight percent of microalgae
pulp, Lee teaches that the microalgae pulp is never dried, and Rachor
teaches the required moisture content. See Final Action 3--4. The Examiner
also finds that the required tensile strength would have been inherently
present in the prior art, because the composition formed from the combined
prior art references is substantially identical to the composition of claim 1.
See id. at 4.
Regarding the "never-dried" limitation of claim 1, the Examiner finds
that Lee teaches the use of never-dried microalgae pulp as an alternative that
could be used in place of dried fibers, see Final Action 3; Answer 6-7, and
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Appeal2014-008613
Application 13/481,125
that substituting the never-dried fibers into the combined disclosure of the
other prior art "would be expected to produce the same results [as]
Appellant's invention." Answer 7.
Appellants argue that neither Lee nor Seo teaches mixing never-dried
microalgae pulp with wood pulp, 2 and to the extent that such a mixture is
made in Seo, the red algae pulp is dried prior to mixing with the wood pulp.
See Appeal Br. 2-3. Appellants also cite evidence of unexpected results in
the use of never-dried microalgae pulp. See id. (citing Shannon Deel., May
25, 2013). According to Appellants, this evidence shows that the use of
dried microalgae pulp in a mixture with wood pulp corresponding with claim
1 would not result in a pulp sheet with the tensile strength required by claim
1, whereas the use of never-dried macroalgae in such a mixture would
unexpectedly increase the tensile strength. See id. at 3 (citing Shannon
Deel.; Spec. 10). The Examiner does not dispute this evidence, other than to
discount its significance, given that the evidence focuses on Seo' s use of
dried microalgae pulp rather than never-dried macroalgae as discussed by
Lee. See Answer 7.
We find Appellants' evidence that using never-dried macroalgae pulp
fibers in a mixture with wood pulp leads to an unexpected increase in tensile
strength to be persuasive. While Lee teaches the use of never-dried
macroalgae in the production of 100% macroalgae handsheets, neither Lee
nor Seo teaches mixing never-dried macroalgae with dried wood pulp, or
gives any indication that mixing in this way would lead to increased tensile
strength or other beneficial properties in comparison to the use of dried
2 The Examiner acknowledges that Lee does not teach mixing never-dried
microalgae pulp with wood pulp, but teaches the production of handsheets
containing 100% never-dried macroalgae pulp. See Answer 6.
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Appeal2014-008613
Application 13/481,125
macroalgae. Moreover, considering the number of variables involved in
producing a pulp sheet meeting the limitations of claim 1, and the possibility
of other factors that may affect tensile strength, we are not persuaded that
the tensile strength of claim 1 is either necessarily present in the combined
prior art, or is a natural result of the combination of elements disclosed in the
prior art. See Par Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773
F.3d 1186, 1195-96 (Fed. Cir. 2014).
For the above reasons, we determine that the evidence of
nonobviousness of claim 1, on balance, outweighs the evidence of
obviousness relied upon by Appellants, and we reverse the Examiner's
decision to reject claim 1. The Examiner's additional findings regarding
dependent claims 2-9 do not address the above deficiencies. Therefore, we
determine that the Examiner reversibly erred in rejecting claims 1-9. For
the same reasons, we determine that the Examiner reversibly erred in
rejecting claims 1 0-15.
Grounds of rejection III and IV are uncontested. These claims present
distinct patentability issues, because they omit the "MD Tensile Index"
limitation found in claims 1-15. See Appeal Br. 6-7. Therefore, we affirm
the Examiner's decision to reject claims 16-20. See In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to
require an applicant to identify the alleged error in the examiner's
rejections.").
DECISION
The Examiner's decision rejecting claims 1-15 is reversed.
The Examiner's decision rejecting claims 16-20 is affirmed.
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Appeal2014-008613
Application 13/481,125
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-IN-PART
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