Ex Parte Suarez

Board of Patent Appeals and Interferences

Jun 14, 2012

10517331 (B.P.A.I. Jun. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CLAUDIO MIGUEL SUAREZ
__________

Appeal 2011-004448
Application 10/517,331
Technology Center 3700
__________

Before MELANIE L. McCOLLUM, STEPHEN WALSH, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
transfer layer comprising a top layer of predominantly hydrophobic fibrous
material and an article for the absorption and retention of a liquid fluid
comprising such a transfer layer. The Patent Examiner rejected the claims as
anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

Appeal 2011-004448
Application 10/517,331

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STATEMENT OF THE CASE
Claims 11-27 are on appeal. Independent claim 11 is representative
and reads as follows:
11. A transfer layer for a liquid fluid and for application in an
absorbent article of personal use, the transfer layer comprising:
a top layer of predominantly hydrophobic fibrous material;
a bottom layer of predominantly hydrophilic material superimposed
on the top layer and joined to the top layer at a plurality of joining regions of
the top and bottom layers so as to form a plurality of channels at the joining
regions, a plurality of peaks being formed of the top and bottom layers
between adjacent ones of the plurality of channels, wherein a transversal
thickness of the top and bottom layers is lower at the joining regions than at
the peaks.

Independent claim 24 also recites “a top layer of predominantly hydrophobic
fibrous material.” (App. Br. 13-14, App‟x. A.)
The Examiner rejected claims 11-14 under 35 U.S.C. §102(b) as
anticipated by Roxendal,
1
and claims 18-27 under 35 U.S.C. § 103(a) as
unpatentable over Roxendal. Because the same issue is dispositive for both
of these rejections, we will consider them together.
For both the anticipation and obviousness rejections, the Examiner‟s
position is that Roxendal taught an article for the absorption and retention of
a liquid fluid comprising a transfer layer including a top layer (5d) of
predominantly hydrophobic fibrous material. (Ans. 3-4.) In the Response to
Argument, the Examiner noted that the Specification does not specifically
define the claim phrase “predominantly hydrophobic.” (Id. at 7.) The
Examiner explained that “[t]he terms „hydrophobic‟ and „hydrophilic‟ are

1
Patent Application Publication No. WO 99/27879 by Sofia Roxendal et al.,
published June 10, 1999.
Appeal 2011-004448
Application 10/517,331

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qualitative or relative terms concerning the relative degree of moisture
absorption or attraction of a material ….” (Id. at 7)(citation omitted).
According to the Examiner, considering the claim phrase “predominantly
hydrophobic” broadly, “Roxendal‟s top layer (5d) is of fibrous material that
is predominantly hydrophobic (low degree of moisture absorption) relative
to that of lower layer (5e).” (Id.)
Appellant contends that “Roxendal does not show or teach that the
transfer layer (5d) comprises a top layer of predominantly hydrophobic
fibrous material.” (App. Br. 6.) Appellant asserts that instead “Roxendal
merely discloses that a hydrophilicity gradient may be created in the z-
direction of the layer 5 by means of arranging fibres with increasing
hydrophilicity from the upper 5d towards the lower layer 5e.” (Id.)(citing
Roxendal 12 , ll. 14-16.) According to Appellant, while top layer (5d) may
be described as “less hydrophilic” than the lower layer (5e) such a
description does not suggest that the top layer (5d) is of predominantly
hydrophobic fibrous material, as recited by the claimed invention. (App. Br.
6.)
We agree with Appellant. As the Examiner noted, the Specification
does not define the term “predominantly” or the phrase “predominantly
hydrophobic.” The term “predominantly” is generally defined as “for the
most part: mainly.” (Merriam-Webster Online Dictionary.
2
) Therefore, we
find that a person of ordinary skill in the art at the time the invention was
made would have understood the phrase “predominantly hydrophobic” to
mean mostly or mainly hydrophobic. In other words, the claimed inventions

2
Merriam-Webster Online Dictionary, http://www.merriam-
webster.com/dictionary/predominantly (last visited June 11, 2012).
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Application 10/517,331

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require the top layer to comprise more hydrophobic fibrous material than
hydrophilic material. Roxendal‟s disclosure of the relative hydrophilicity of
its top layer as compared to its lower layer does not provide insight on
whether the fibrous material of the top layer itself is mostly or mainly
hydrophobic. Rather, Roxendal‟s teaching that the top layer is less
hydrophilic than a lower layer only suggests that the top layer may be
considered to be more hydrophobic than the lower layer, but not necessarily
made of predominantly hydrophobic fibrous material. Consequently, the
Examiner has not established that Roxendal disclosed each element of the
claimed invention.
Accordingly, we reverse both the anticipation and the obviousness
rejections.

REVERSED

cdc