Ex Parte Taniguchi

Patent Trial and Appeal Board

Dec 31, 2012

10274160 (P.T.A.B. Dec. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/274,160 10/21/2002 Kenji Taniguchi COF-02171 4333
37398 7590 12/31/2012
TAIYO CORPORATION
401 HOLLAND LANE
Suite 407
ALEXANDRIA, VA 22314
EXAMINER
CHOI, PETER Y
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
12/31/2012 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 KENJI TANIGUCHI
____________________

Appeal 2011-009906
Application 10/274,160
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 6-8, 10-12, 19, 20, and 39-43 under 35 U.S.C. §
103(a) as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a fibrous web product, such as tissue paper,
impregnated with a water-containing gel composition and placed in a
packaging container (Spec. 4). The water-containing gel composition
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provides an improved feel, an improved ability to protect and moisturize the
skin, and the like (Spec. 1).
The water-containing gel composition contains a moisture retaining
component, a gelling agent, and water (id.). The moisture-retaining
component is glycerin (id.; Spec. 14). The gelling agent may be, among
others, a polysaccharide, or a polyglycerin saturated fatty acid ester such as
hexaglycerin monostearate (Spec. 5 and 17).
The impregnated fibrous web product is packaged in a packaging
container that is not completely sealed.
Claim 1 is illustrative:
1. A packaged water-absorbing sanitary fibrous web
product comprising:
a packaging container, and
a fibrous web product comprising a water-containing gel
composition that is impregnated in a fibrous web, wherein
the water-containing gel composition contains a moisture
retaining component, a gelling agent, and water,
the water is at least one of water retained by the moisture
retaining component and water absorbed from the atmosphere
by the moisture retaining component,
the moisture-retaining component is glycerin, and a mass
ratio of the glycerin and the water contained in the water-
containing gel composition is 10:2 to 7 when the absorption of
moisture has reached equilibrium,
the water-containing gel composition is in a gel state at a
temperature of 15°C to 25°C,
the fibrous web comprises paper, the raw material of
which is at least one selected from the group consisting of wood
fibers, non-wood vegetable plant fibers and rayon fibers,
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the fibrous web product is contained in the packaging
container, and
the packaging container is not completely sealed such
that the fibrous web product is always affected by the
environmental atmosphere.
(Claims App. at Br. 16.)
The Examiner rejects claims 1, 6, 10, 20, 39, 40, and 42 under 35
U.S.C. § 103(a) as obvious over Mackey1 in view of Osborne2, Eichhorn3,
and Hill4. To reject claims 7, 8, and 41, the Examiner adds Babayan5. To
reject claims 11, 12, and 19, the Examiner adds various other prior art
references as evidence of obviousness.6
OPINION
Appellant’s arguments against the obviousness rejections focus on the
Examiner’s rejection of claims 1 and 7. Therefore, our focus will also be on
the rejection of those claims.
CLAIM 1
With respect to the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Mackey in view of Osborne, Eichhorn, and Hill, Appellant’s
arguments (Br. 10-13) give rise to two issues:
A. Has the Examiner reversibly erred by ignoring the packaging
limitation in the last clause of claim 1; and

1 Mackey et al., US 5,624,676 patented Apr. 29, 1997.
2 Osborne et al., US 5,905,092 patented May 18, 1999.
3 Eichhorn et al., US 6,306,408 B1 patented Oct. 23, 2001.
4 Hill, US 6,202,845 B1 patented Mar, 20, 2001.
5 Babayan et al., US 3,637,774 patented Jan. 25, 1972.
6 We need not discuss the additional references. They are not material to the
issues on appeal.
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B. Has the Examiner reversibly erred in combining the teachings of
Mackey with those of Eichhorn?
We answer these questions in the negative for the following reasons.
A.
The first issue involves the last clause of claim 1. The last clause
recites that “the packaging container is not completely sealed such that the
fibrous web product is always affected by the environmental atmosphere”
(Claim 1 (emphasis added)).
Mackey teaches a sanitary fibrous web product (tissue paper) treated
with a lotion composition (Mackey, col. 1, ll. 6-9). The Examiner
acknowledges that Mackey does not disclose placing the lotioned tissue
paper in a packaging container, and relies upon Hill as showing the type of
container conventionally used as a package for transporting and dispensing
stacked wipes (Ans. 7-8). Hill discloses that the wet wipes are typically
folded and stacked within a covered container such as a tub-like container
having a lid or, alternatively, in a tub container having a dispensing aperture
(Hill, col. 1, ll. 42-46). The Examiner determines that the dispensing orifice
discussed by Hill appears to meet the claim limitation “that the container is
not completely sealed exposing the wipe to environmental atmosphere.”
(Ans. 8.)
Appellant contends that the Examiner is ignoring the word “always”
in the claim (Br. 10). According to Appellant, Hill’s container has a lid that
is sometimes closed (Br. 10-11). Appellant argues that Hill does not teach
or suggest that its wipes are always exposed to the environmental
atmosphere (Br. 11).
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As a first matter, we find that even though Hill depicts and discusses a
lidded container when describing the specific invention (Hill, col. 5, ll. 50-
55; Fig. 2), Hill also discloses that conventional containers were known that
alternatively included a dispensing aperture (Hill, col. 1, ll. 42-46 and col. 2,
ll. 2, ll. 43-65). By using “alternatively,” the disclosure implies that
containers with dispensing orifices but no lid were known in the art. Such a
container with a dispensing aperture would always expose the wipes to the
environmental atmosphere. See, especially, column 2, lines 46-52, which
describes a wipe as protruding through the orifice of the dispensing aperture.
As a second matter, there is no reasonable evidence indicating that the
lid described by Hill completely seals the container so as to exclude all
leakage of air into the container from the environmental atmosphere. Hill
does not describe the lid as airtight.
As a third matter, claim 1 is directed to a product, i.e., an article of
manufacture. Therefore, the claim must be interpreted as directed to a
tangible article, i.e., a structure that exists in one point in time. In re Nuijten,
500 F.3d 1346, 1356 (Fed. Cir. 2007). The word “always” must be viewed
as a limitation on the structure of the container and not in its temporal sense
as excluding some future change to the container such as the act of closing
an open lid. In a particular snapshot of time, the lid will be open to allow
dispensing of the wipes, and the open container will be capable of always
exposing the wipes to the environmental atmosphere should the lid remain
open. In terms of structural limitations on the claim, the language does not
actually exclude the lid of Hill.
Because Hill provides evidence that it was known in the art to place
wipes in a container that has a dispensing orifice that always exposes the
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wipes to the environmental atmosphere and, further, because the claim also
sweeps in the lidded embodiment of Hill, we cannot say that Appellant has
identified a reversible error in the Examiner’s claim interpretation and
findings with regard to the container of Hill.
B.
Appellant contends that the Examiner reversibly erred in combining
the teachings of Mackey with those of Eichhorn because Mackey teaches
away from the combination (Br. 11-13).
The Examiner applies Eichhorn as evidence that it was known in the
art to impregnate tissue paper with lotion. Mackey teaches substantially
immobilizing the lotion on the surface of the tissue paper (Mackey, col. 3, ll.
3-4.) According to Mackey, immobilizing the lotion on the surface allows
for the use of less lotion and avoids the problems of debonding and
decreased tensile strength found in the prior art tissues that had been treated
with mineral oil, which tends to impregnate the tissue (Mackey, col. 4, ll. 3-
8).
Mackey itself provides evidence that it was known to impregnate the
tissue paper with lotion (Mackey, col. 2, l. 54 to col. 3, l. 12). Mackey’s
invention is said to be an improvement over such impregnated tissue papers
(Mackey, col. 3, ll. 32-64). Even in Mackey’s inventive lotioned tissue
paper, some impregnation appears to occur. Mackey refers to the
immobilizing agent as “keeping the emollient primarily localized on the
surface (Mackey, col. 16, ll. 21-24).
Eichhorn discloses a composition applied to tissue products that can
contain glycerin, polysaccharide gelling agents, and water (Eichhorn, col. 1,
ll. 4-15 and col. 11, ll. 51-65). The composition penetrates into the tissue
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fiber web thereby influencing its softness and feel (Eichhorn, col. 15, ll. 11-
13). Therefore, Eichhorn provides further evidence that it was known in the
art to impregnate tissue paper with lotion compositions.
Appellant contends that allowing the lotion of Mackey to penetrate the
tissue paper would render Mackey’s product unusable (Br. 11). However,
the evidence as a whole does not support this argument. The evidence as a
whole indicates that it was known in the art to allow the lotion to penetrate
the tissue paper. The combination of the familiar elements appears to yield
no more than predictable results. KSR Int'l. Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007). While Mackey discloses that bonding and tensile strength
might be impacted, “just because better alternatives exist in the prior art does
not mean that an inferior combination is inapt for obviousness purposes.” In
re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012).
The evidence as a whole supports the Examiner’s finding that Mackey
does not “teach away” to such an extent that there is no prima facie case of
obviousness.
CLAIM 7
Claim 7 reads as follows:
The packaged fibrous web product of claim 1, wherein
the gelling agent is polyglycerin saturated fatty acid ester, and a
chain length of a fatty acid in the polyglycerin saturated fatty
acid ester is C12 to C22.
(Claims App. At Br. 17.)
The Examiner finds that Mackey teaches that the immobilizing agents
of that reference include polyhydroxyl fatty acid esters including glyceryl
monoesters of C16-C22 saturated fatty acids such as glyceryl monostearate
(Ans. 10, citing Mackey, column 18 lines 1-10). The Examiner
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acknowledges that Mackey does not appear to teach the specifically claimed
polyglycerin saturated fatty acid esters (id.). This group of fatty acid esters
includes, for instance, hexaglycerin monostearate (Spec. 17).
The Examiner turns to Babayan for the missing teaching, and
concludes that it would have been obvious to one of ordinary skill in the art
at the time the invention was made to
form the product of the prior art combination, wherein the
glyceryl monostearate [taught by Mackey] comprises the
polyglycerols, such as hexaglycerol monostearate, as taught by
Babayan, motivated by the desire of forming a conventional
dressing comprising a glycerin known in the art as being
predictably suitable for use in textile and pharmaceutical
applications as a gelling agent and where shelf-life at elevated
temperature is desired.

(Ans. 11).
Appellant contends that there is no motivation to combine Mackey
and Babayan (Br. 14).
The issue is: Has Appellant identified a reversible error in the
Examiner’s finding of a reason to select a polyglycerin saturated fatty acid
ester, such as hexaglycerin monostearate, as the polyhydroxyl fatty acid
ester of Mackey?
We answer this question in the negative for the following reasons.
Mackey describes a lotion applied to tissue paper where the lotion
includes glycerin and an immobilizing agent that can be a polyhydroxyl fatty
acid ester including glyceryl monoesters of C16-C22 saturated fatty acids
such as glyceryl monostearate (Mackey, col. 18, ll. 1-5).
Babayan discloses that polyglycerol esters such as those of Tables II,
III, and IIIA may be used in cosmetic formulations such as hand creams
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(Babayan, col. 7, l. 75 to col. 8, l. 18). That list of polycerol esters includes
hexaglycerol monostearate, (Babayan, Table III at cols. 5-6; Spec. 17).
There is no dispute on this record that hexaglycerol monostearate is the same
as hexaglycerin monostearate, and is a compound meeting the requirements
of claim 7 (Br. 21-23).
Babayan further states that when the polyglycerol ester is prepared
from completely or almost completely saturated oils or fatty acids, the
resulting product appears to be suited for creams and “[t]his type of product
is also admirably suited where shelf life at elevated temperature is required
for emulsions regardless of how thick or thin their fluidity may be.”
(Babayan, col. 8, ll. 36-42).
Babayan also discloses that polycerol esters maybe used as gelling
agents for mineral oils, vegetables oils, and glycols (Babayan, col. 10, ll. 23-
24). Babayan states that the stearates have been found to be particularly
effective for this use (Babayan, col. 10, ll. 24-25).
It is reasonable to conclude that one of ordinary skill in the art would
have reasonably expected the polyglycerol monostearates, such as the
hexaglycerol monostearate disclosed by Babayan, to be effective for
immobilizing the lotion of Mackey given its chemical similarities to the
compounds disclosed by Mackey, its known uses in lotions, and its known
gelling properties.
Appellant has not convinced us of a reversible error in the Examiner’s
finding of a reason to select the polyglycerol monostearates of Babayan for
use as the immobilizing agent of Mackey.
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CONCLUSION
Appellant does not advance any further arguments directed to the
other claims or other subsidiary rejections. We sustain the Examiner’s
rejections for the reasons presented above.
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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