Ex Parte Tang et al

Patent Trial and Appeal Board

May 9, 2017

11726087 (P.T.A.B. May. 9, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/726,087 03/20/2007 Ming Tang 10017.0003USU1 7727
44305 7590 05/10/2017
WITHERS & KEYS, LLC
P. O. BOX 2049
MCDONOUGH, GA 30253
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
05/10/2017 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 MING TANG and HAISU TANG
Appeal 2016-004799
Application 11/726,0871
Technology Center 1700
Before JEFFREY T. SMITH, ELIZABETH M. ROESEL, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1—4, 8—10, 13—15, 18-41, and 44—52. We
have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Global Resources
International, Inc. Appeal Br. 4.
Appeal 2016-004799
Application 11/726,087
STATEMENT OF THE CASE2
Appellants describe the invention as relating to “multi-layer articles
comprising outer layers of nonwoven fabric comprising water-soluble fibers
and a water-soluble polymeric film layer positioned between and bonded to
the outer layers of nonwoven fabric.” Appeal Br. 5. The material could be
used, for example, as a drape or linen for an operating room or as an article
of clothing. Spec.3 Tflf 2—9. Claim 1, reproduced below:
1. An article comprising:
a first layer of nonwoven fabric extending along a first
surface of the article, said first layer of nonwoven fabric
comprising water-soluble fibers;
a second layer of nonwoven fabric extending along a
second surface of the article, said second layer of nonwoven
fabric comprising water-soluble fibers; and
a polymeric film layer positioned between and bonded to
said first and second layers of nonwoven fabric, said polymeric
film layer consisting essentially of a water-soluble polymer alone
or in combination with at least one of (i) inorganic filler particles,
(ii) an antimicrobial agent, (iii) a softener, (iv) a colorant, and (v)
a flame retardant.
Appeal Br. 46 (Claims App.).4
2 In this decision, we refer to the Office Action dated March 12, 2012
(“Non-Final Act.”), the Appeal Brief filed September 26, 2012 (“Appeal
Br.”), the Examiner’s Answer dated July 30, 2013 (“Ans.”), and the Reply
Brief filed September 30, 2013 (“Reply Br.”).
3 Our citations are to the Specification as published as U.S. 2007/0238384
A1 (Oct. 11,2007).
4 The record includes the Examiner’s October 21, 2013, statement that
proposed amended claims filed October 11, 2012, were not entered.
Accordingly, the claims on appeal are those set forth in Appellants’ Claims
Appendix.
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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Mays et al. US 4,657,804 Apr. 14, 1987
(hereinafter “Mays”)
Brown US 5,151,314 Sept. 29, 1992
Topolkaraev et al. US 2003/0162013 Al Aug. 28, 2003
(hereinafter “Topolkaraev”)
Carlyle et al. US 2003/0216098 Al Nov. 20, 2003
(hereinafter “Carlyle”)
Nakagawa et al. US 2004/0247890 Al Dec. 9, 2004
(hereinafter “Nakagawa”)
Wilson Jr. et al. US 7,592,408 B2 Sept. 22, 2009
(hereinafter “Wilson Jr.”)
Wooley US 7,604,007 B1 Oct. 20, 2009
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 2, 8—10, 13—15, 18—23, 26—31, 34, and 44—52
under 35 U.S.C. § 103 as unpatentable over Carlyle in view of Topolkaraev.
Non-Final Act. 2.
Rejection 2. Claims 3, 32, 33, and 35—37 under 35 U.S.C. § 103 as
unpatentable over Carlyle in view of Topolkaraev and further in view of
Wooley. Id. at 8.
Rejection 3. Claims 4 and 305 under 35 U.S.C. § 103 as unpatentable
over Carlyle in view of Topolkaraev and further in view of Mays. Id. at 9.
Rejection 4. Claim 24 under 35 U.S.C. § 103 as unpatentable over
Carlyle in view of Topolkaraev and further in view of Brown. Id. at 10.
5 Claim 30 is also subject to Rejection 1. Non-Final Act. 2.
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Rejection 5. Claim 25 under 35 U.S.C. § 103 as unpatentable over
Carlyle in view of Topolkaraev and further in view of Wilson Jr. Id. at 12.
Rejection 6. Claims 38-41 under 35 U.S.C. § 103 as unpatentable
over Carlyle in view of Topolkaraev and further in view of Wooley and
Mays. Id. at 14.
Rejection 7. Claims 1, 2, 4, 8—10, 13—15, 18—23, 26—31, 34, 46, and
48—52 under 35 U.S.C. § 103 as unpatentable over Carlyle in view of
Nakagawa. Id. at 15.
Rejection 8. Claims 3, 32, and 33 under 35 U.S.C. § 103 as
unpatentable over Carlyle in view of Nakagawa and further in view of
Wooley. Id. at 19.
Rejection 9. Claim 24 under 35 U.S.C. § 103 as unpatentable over
Carlyle in view of Nakagawa and further in view of Brown. Id. at 20.
Rejection 10. Claim 25 under 35 U.S.C. § 103 as unpatentable over
Carlyle in view of Nakagawa and further in view of Wilson Jr. Id. at 21.
ANALYSIS
Rejections 1—6, generally
We review the appealed rejections for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ arguments, we
are not persuaded that Appellants identity reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the March 12, 2012,
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Office Action and the Answer except where otherwise stated. We add the
following primarily for emphasis.
Rejection 1
The Examiner rejects claims 1, 2, 8—10, 13—15, 18—23, 26—31, 34, and
44—52 as obvious over Carlyle in view of Topolkaraev. Non-Final Act. 2.
The Appellants challenge Rejection 1 based on claims 1,18, 30, 34, and 50
and do not separately argue claims 2, 8—10, 13—15, 19-23, 26—29, 31, 44-49,
51, or 52. Appeal Br. 8—17. We therefore limit our discussion to claims 1,
18, 30, 34, and 50, each of which is addressed under a separate heading
below. We group the claims as the Appellants did. Claims 2, 8—10, 13—15,
26—29, 31, and 44-49 are grouped with claim 1; claims 19—23 are grouped
with claim 18; claim 51 is grouped with claim 34; and claim 52 is grouped
with claim 50. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Claim 1
The Examiner finds that Carlyle teaches dissolvable melt-blown
nonwoven fabric that may be one or more layers of a laminate or composite
construct that may include other wovens, knits, nonwovens, foams, films, or
conforms for use, e.g., as a surgical gown. Non-Final Act. 3^4 (providing
citations to Carlyle). The Examiner finds that Carlyle does not specifically
recite the use of water soluble polymeric film positioned between two layers
of the nonwoven dissolvable fabric. Id. at 4. The Examiner, finds, however
that Topolkaraev teaches that typical disposable products include a
composite structure with a topsheet, a backsheet, and an absorbent structure
between the topsheet and backsheet. Id at 4 (providing citations to
Topolkaraev). The Examiner further finds that Topolkaraev teaches a
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biodegradable film containing a biodegradable polymer and a water soluble
polymer. Id. The Examiner concludes,
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to combine Topolkaraev
et al.’s biodegradable films with Carlyle et al.’s melt-blown
nonwoven fabric capable of dissolution, when it is desired to
produce a layered laminate or composite fabric provided with
enhanced ductility and breathability.
Id. at 6—7.
A preponderance of the evidence supports the Examiner’s findings
and conclusion. See, e.g., Carlyle Tflf 8, 10, 16, 20; Topolkaraev Tflf 2, 36.
Topolkaraev teaches that claim 1 ’s recited three layer structure is that of “[a]
typical disposable absorbent product” (Topolkaraev 12) and Topolkaraev
teaches use of a water soluble polymer resin as part of a film with “high
water vapor transmission rate and breathability” and good “ductility,
flexibility, and strength” {id. at || 31, 39). Use of the polymer and three
layer structure such as taught by Topolkaraev to create the composite such
as taught by Carlyle (Carlyle 116) would be no more than predictable use of
prior art elements according to their established functions. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007).
Appellants argue that neither Carlyle nor Topolkaraev teaches or
suggests laminates or composite constructions comprising a water-soluble
film component “consisting essentially of a water-soluble polymer alone or
in combination with at least one of (i) inorganic filler particles, (ii) an
antimicrobial agent, (iii) a softener, (iv) a colorant, and (v) a flame
retardant.” Appeal Br. 10-11. Appellants further argue that Topolkaraev
teaches away from such a film because its film includes a biodegradable
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polymeric component in addition to the water-soluble polymeric component.
Id. at 11.
The claim language “consisting essentially of’ is used to indicate, for
example, that “the invention necessarily includes the listed ingredients and is
open to unlisted ingredients that do not materially affect the basic and novel
properties of the invention.” PPG Indus., Inc. v. Guardian Indus. Corp., 156
F.3d 1351, 1354 (Fed. Cir. 1998). In order to distinguish the art based upon
the “consisting essentially of’ recitation, Appellants bear the burden of: (1)
showing the basic and novel characteristics of their claimed invention, and
(2) establishing how those characteristics would be materially changed by
any allegedly excluded component of an applied reference. See In re
DeLajarte, 337 F.2d 870, 873—74 (CCPA 1964). Here, Appellants have not
identified the basic and novel characteristics of their claimed invention.
Appellants argue that inclusion of Topolkaraev’s biodegradable
polymer would result in a polymeric film that is not completely water
soluble. Appeal Br. 12. Appellants, however, have not directed us to
evidence to establish this point and have not established that the claimed
invention is limited to a film that is completely water soluble. Moreover,
Topolkaraev and Appellants’ Specification are both concerned with
problems surrounding materials that are not water soluble or biodegradable
and attempt to address those same problems. See, e.g., Topolkaraev ]Hf 4—6,
11-13; Spec. Tflf 4—5.
Further, as the Examiner explains, Appellants’ Specification teaches
that its polymeric film may also comprise biodegradable materials. Ans. 4—
5; see also Spec. 141 (“the polymeric film layer . . . comprises one or more
biodegradable polymeric film-forming materials”). We also note that
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Appellants provide no evidence or argument that the inorganic filler
particles, antimicrobial agent, softener, colorant, or flame retardant recited
by claim 1 are completely water soluble. As such, the Specification,
recitations of claim 1, and evidence of record support that the scope of claim
1 does not exclude the use of biodegradable polymers along with water
soluble polymers. The biodegradable polymers of Topolkaraev therefore do
not provide a patentable distinction between the Carlyle/Topolkaraev
combination and claim 1.
Appellants’ teaching away and changed principle arguments are also
unpersuasive. Appeal Br. 11. Because the biodegradable polymers of
Topolkaraev do not provide a patentable distinction, their inclusion also
cannot be said to be a teaching away. Moreover, removal of these polymers
is not necessary so there would not be any change in the principle of
operation of Topolkaraev.
Appellants also argue that the references do not suggest combining
Carlyle’s non woven fabric layers and Topolkaraev’s film. Appeal Br. 10.
The Examiner, however, provides a reasoned basis with factual predicate for
the obviousness combination as explained above (see also, e.g., Non-Final
Act. 6—7; Ans. 10), and Appellants provide no evidence or argument
persuasively refuting the Examiner’s reasoning.
Because Appellants do not identify reversible error, we sustain the
Examiner’s rejection of claims 1, 2, 8—10, 13—15, 26—29, 31, and 44-49.
Claim 18
Claim 18 recites, “[t]he article of Claim 1, wherein at least one of the
first and second layers [i.e., one of the recited nonwoven fabric layers] is
soluble in water having a temperature of greater than 50°C.” Appeal Br. 47
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(Claims App.). The Examiner finds that Carlyle teaches nonwoven fabrics
that are soluble in water having a temperature of up to 72° F (i.e., 22.2 0 C).
Ans. 6—7; see also, e.g., Carlyle Abstract. The Examiner further finds that a
person of skill would understand that these same fabrics would also be
soluble at higher temperatures such as 50 °C. Ans. 7.6
Appellants argue that Carlyle would have to be modified to meet the
recitation of claim 18. Appeal Br. 13. This argument misapprehends the
scope of the claim. Claim 18 requires that the layer be soluble at greater
than 50 °C but does not forbid the layer from being soluble at lower
temperatures. Appellants do not persuasively refute the Examiner’s finding
that a person having ordinary skill in the art would understand Carlyle as
teaching fabric that that will be soluble at 22.2 °C and at temperatures above
22.2 °C, including 50 °C (Ans. 7). The Carlyle fabric is thus “soluble in
water having a temperature of greater than 50°C” as recited by claim 18.
Appellants’ argument therefore does not demonstrate Examiner error, and
we sustain the Examiner’s rejection of claims 18—23.
Claim 30
Claim 30 recites the first layer of claim 1 “further compris[ing] a
water repellant treatment.” Appeal Br. 49 (Claims App.). Appellants argue
that the combination of Carlyle and Topolkaraev does not teach this
recitation. Id. at 14. Although the Examiner’s third rejection (addressed
below; see also Non-Final Act. 10 (providing citations to Mays)) addresses
this recitation, the Examiner has not explained how this recitation is
6 Such a finding makes sense given the context of Carlyle as a whole and
also because solubility generally increases with temperature. See also
Carlyle 110 (referring to fabric “dissolvable in water temperatures equal to
or greater than 34° Fahrenheit”).
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suggested by the combination of Carlyle and Topolkaraev alone. See Ans. 7.
Therefore, based on the present record, we do not sustain this rejection.
Claim 34
Appellants’ argument as to claim 34 is substantially the same as the
argument with respect to claim 1. We also note that the Examiner finds that
finds the films of Topolkaraev meet claim 34’s further recitations (such as
breathability) (see, e.g., Non-Final Act. 4), and Appellants do not provide
any persuasive evidence or reasoning arguing this point (Appeal Br. 15—17).
Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that merely
asserting that applied prior art does not teach a recited limitation is not
substantive argument for separate patentability).
We therefore sustain the rejection of claim 34 and 51 for the reasons
explained above.
Claim 50
Claim 50 recites the claimed article “wherein said article comprises
overalls or scrubs.” Appeal Br. 52 (Claims App.). Both Carlyle and
Topolkaraev teach using their material as a scrub. See, e.g., Carlyle Fig. 2
(depicting a surgical gown), 12; Topolkaraev 169 (“The biodegradable film
of this invention can also be used to make . . . surgical gowns and other
disposable garments.”); Non-Final Act. 4. Accordingly, the Examiner’s
obviousness conclusion with respect to claim 50 is well-reasoned and
supported by a preponderance of the evidence. We sustain the Examiner’s
rejection of claim 50 and 52.
Rejections 2—6
For each of rejections 2 through 6, the Examiner relies on Carlyle and
Topolkaraev and refers to additional references as providing evidence that
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additional recitations of dependent claims are also obvious. Non-Final Act.
8—15 (providing citations to references). Appellants do not dispute the
Examiner’s findings regarding these additional references and do not
provide any persuasive evidence or argument disputing the Examiner’s
combination of references. Appeal Br. 18—32. Rather, Appellants’
argument regarding these additional rejections is substantially repetition of
arguments with regard to claim 1 and bare assertions, without further
substantial argument or evidentiary support, that a person of skill in the art
would not have reached the recited claim elements. These arguments are
thus unpersuasive for the reasons explained above. See also In re Lovin, 652
F.3d at 1357.
Rejections 7—10
The Examiner maintains the rejection of claims 1—4, 8—10, 13—15, 18—
34, 46, and 48—52 on Appeal based upon the Carlyle in view of Nakagawa
or based upon these two references combined with additional references.
Non-Final Act. 15—23. The Examiner finds that Nakagawa teaches a water-
disintegrable resin film similarly to Topolkaraev. Id. at 16; Nakagawa Title.
Because the grounds we sustain above are dispositive of all claims on
appeal, these grounds are cumulative, and we do not address them. Beloit
Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (holding that
UTC was “at perfect liberty” to decide matter based on single dispositive
issue).
DECISION
For the above reasons, we affirm the Examiner’s rejection of (1)
claims 1, 2, 8—10, 13—15, 18—23, 26—29, 31, 34, and 44—52 as obvious over
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Carlyle in view of Topolkaraev, (2) claims 3, 32, 33, and 35—37 as obvious
over Carlyle in view of Topolkaraev and further in view of Wooley, (3)
claims 4 and 30 under as obvious over Carlyle in view of Topolkaraev and
further in view of Mays, (4) claim 24 as obvious over Carlyle in view of
Topolkaraev and further in view of Brown, (5) claim 25 as obvious over
Carlyle in view of Topolkaraev and further in view of Wilson Jr., and (6)
claims 38-41 as obvious over Carlyle in view of Topolkaraev and further in
view of Wooley and Mays.
We reverse the Examiner’s rejection of claim 30 as obvious over only
Carlyle in view of Topolkaraev (while emphasizing that we affirm the
rejection of claim 30 as obvious over Carlyle in view of Topolkaraev in
further view of Mays).
We do not address the Examiner’s rejections (rejections 7—10) based
upon Carlyle and Nakagawa.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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