Ex Parte Szypka

Board of Patent Appeals and Interferences

May 22, 2012

10545713 (B.P.A.I. May. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ANDREW J. SZYPKA
__________

Appeal 2011-000477
Application 10/545,713
Technology Center 3700
__________

Before FRANCISCO C. PRATS, STEPHEN WALSH, and
ERICA A. FRANKLIN, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to an animal
incontinence device that contains superabsorbent polymer particles. The
Examiner entered rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1-10, 23, and 25 stand rejected and appealed (App. Br. 5).
Claim 1, the only independent, is representative and reads as follows:

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1. An animal incontinence device, comprising:
a base layer of a liquid-impervious polymer film;
an intermediate absorbent layer consisting of superabsorbent polymer
particles and at least one adjuvant disposed intermediate at least
two layers of single-ply tissue, the particles bonded and secured
between the layers of tissue by the application of at least one of
heat and pressure; and
a top layer comprising a porous, hydrophilic, woven or non-woven
polymer fiber mat;
wherein the base and top layers are sealed together with an adhesive
and encapsulate the intermediate layer with the superabsorbent
polymer particles, the base layer larger in area than the top layer
so that at least one of the peripheral edges of the base layer is
folded up and over the peripheral edges of the top layer, the
adhesive disposed intermediate the perimeters of the top and
base layers to seal the base and top layers together at their
peripheral edges.

The following rejections are before us for review:
(1) Claims 1-10 and 23, rejected under 35 U.S.C. § 103(a) as obvious
over Melius1 and Spellman2 (Ans. 3-8);
(2) Claim 25, under 35 U.S.C. § 103(a) as obvious over Melius,
Spellman, and Glaug3 (Ans. 8-9).
DISCUSSION
In rejecting claim 1, the Examiner found that Melius described an
article substantially as claimed, except that Melius did not “expressly
disclose the article, wherein the base layer is larger in area than the top layer
so that each of the peripheral edges of the base layer [are] folded up and over
the peripheral edges of the top layer” (Ans. 5). To meet that feature, the

1 Melius et al., U.S. Patent No. 5,601,542 (issued February 11, 1997).
2 Spellman, U.S. Patent No. 3,626,899 (issued December 14, 1971).
3 Glaug et al., U.S. Patent No. 6,369,290 B1 (issued April 9, 2002).
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Examiner cited Spellman as teaching a “training pad for dogs” having that
configuration (id.). Based on the references’ teachings, the Examiner
reasoned:
All the elements of the claimed invention are known in
the art. One skilled in the art could have combined the known
elements by known means, yielding the predictable result of the
base layer larger in area than the top layer so that each of the
peripheral edges of the base layer is folded up and over the
peripheral edges of the top layer. It would have been obvious
to one having ordinary skill in the art at the time the invention
was made to modify the absorbent article of Melius with the
base layer, as taught by Spellman in order to improve the
fixation of layers.

(Id. at 6.)
Among other things, Appellant urges that rebuttal evidence regarding
long felt but unsolved need and commercial success was submitted in the
form of declarations under 37 C.F.R. § 1.132, but that the Examiner did not
properly consider it (App. Br. 15; see also Reply Br. 12 (“[I]n the
Examiner’s Answer . . ., the Examiner has again failed to address the
rebuttal evidence described at pages 15-16 of the Brief on Appeal . . . . The
Examiner has failed to properly consider the totality of the record in arriving
at his obviousness determination.”)).
It is well settled that an “examiner bears the initial burden of
presenting a prima facie case of obviousness. . . Once the examiner
establishes a prima facie case of obviousness, the burden shifts to the
applicant to rebut that case.” In re Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011). “However, once the applicant has come forward with rebuttal
evidence, the examiner must consider the totality of the evidence to
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determine whether the obviousness rejection should stand.” Id. (emphasis
added).
Here, we note that the Advisory Action entered November 2, 2009
contains some discussion regarding the evidence of secondary
considerations submitted by Appellant in the Rule 132 Declarations
submitted on October 6, 2009. The Examiner’s Answer, in contrast, does
not provide any assessment of the evidence advanced by Appellant to rebut
the Examiner’s prima facie case. Thus, it is not clear on this record that the
Examiner has properly considered the totality of the evidence in determining
whether to maintain the appealed rejections.
Also, in setting forth the prima facie case, the Examiner advances the
proposition that Spellman’s overlapping edge binding technique would have
“improve[d] the fixation of layers” of Melius’ article (Ans. 6), yet the
Examiner cites no specific portion of either reference in support of that
assertion, and our review of those references reveals no evidentiary support
for that premise. Moreover, the Examiner fails to articulate any other
specific reason why an ordinary artisan constructing a catamenial device, or
similar absorbent article according to Melius, would have been prompted to
adopt a construction technique used in a dog training pad intended to be
placed on the floor. As the Federal Circuit has noted, even post-KSR,
“[o]bviousness requires more than a mere showing that the prior art includes
separate references covering each separate limitation in a claim under
examination.” Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352,
1360 (Fed. Cir. 2011).
Further, in explaining the prima facie case, the Examiner cites to
column 6, lines 52-55, of Melius as describing the use of single-ply tissues
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in its article’s construction (Ans. 4). We do not, however, see any mention
of single-ply tissue in that portion of Melius, and in explaining the rejection
the Examiner has not provided any details as to why the materials described
at column 6 of Melius would have been understood to be single ply tissues,
or would suggest such a material.
Also, again in setting out the prima facie case, the Examiner does not
mention the top layer of the article in claim 1 until referring to its dependent,
claim 8, for which the Examiner cites column 6, lines 60-67 (Ans. 8).
However, that portion of Melius refers to the materials used to enclose the
superabsorbent material, rather than a mat to be placed on top of the
tissue-superabsorbent-tissue intermediate layer recited in claim 1. It is thus
unclear what portion of Melius’ article the Examiner finds as corresponding
to the top layer recited in claim 1.
In sum, because of the deficiencies discussed above in the Examiner’s
prima facie case, as well as the absence of an assessment of Appellant’s
rebuttal evidence of secondary consideration of non-obviousness, we are
compelled to reverse the Examiner’s rejection of claim 1, and its dependents,
as obvious over Melius and Spellman. As the Examiner’s rejection of claim
25 over Melius, Spellman, and Glaug does not address those deficiencies,
we reverse it as well.
SUMMARY
For the reasons discussed, the Examiner’s rejections are reversed.

REVERSED

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