Ex Parte Taniguchi

Board of Patent Appeals and Interferences

Jan 14, 2010

10274160 (B.P.A.I. Jan. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENJI TANIGUCHI
____________

Appeal 2009-008131
Application 10/274,160
Technology Center 1700
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Decided: January 14, 2010
____________

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

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-12, 19-21, and 25-37. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

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I. STATEMENT OF THE CASE
The invention relates to a fibrous web product, such as tissue paper,
toilet paper, paper towels, or the like, suitable for use for sanitary (hygienic)
purposes, in which a water-containing gel is contained in a fibrous web,
having improved feel and ability to protect and moisturize the skin (Spec. 1,
ll. 5-12; 3, ll. 13-25). Claims 1 and 12 are illustrative of the subject matter
on appeal:
1. A water-absorbing sanitary fibrous web product selected from
tissue paper, toilet paper, paper towels, and wipes in which a water-
containing gel composition is impregnated in a fibrous web, wherein the
water-containing gel composition contains a moisture retaining component,
a gelling agent, and water, and 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.
12. A fibrous web product in which a water-containing gel
composition is impregnated in a fibrous web, wherein the water-containing
gel composition contains a moisture retaining component, a gelling agent,
and water, and 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 and further wherein the water-containing gel
composition is a foamed gel composition having a finely porous structure.
The Examiner rejects claims 1, 3-6, 9, 10, and 21 under 35 U.S.C.
§ 102(b) as anticipated by DiPippo (US 6,033,675, issued Mar. 7, 2000).
The Examiner also rejects claims 7 and 8 under 35 U.S.C. § 103(a) as
obvious over DiPippo and claim 11 under 35 U.S.C. § 103(a) as obvious
over DiPippo in view of Sakurada (JP 07-258,972, published Oct. 9, 1995).
The Examiner rejects claims 1, 3-5, 9, 10, 12, 26-28, 32, and 33 under
35 U.S.C. § 102(b) as anticipated by Chaussee (US 5,334,325, issued Aug.
2, 1994). The Examiner also rejects claims 2, 7, 8, 19-21, 25, 30, 31, and
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35-37 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as obvious over Chaussee.
The Examiner rejects claims 1, 5, 6, 9, 10, 12, 28, 29, and 33 under
35 U.S.C. § 102(e) as anticipated by Scherr (US 2002/0142992, published
Oct. 3, 2002). The Examiner also rejects claims 2, 21, 25, and 37 under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Scherr, and claims 11 and 34 under 35 U.S.C.
§ 103(a) as obvious over Scherr in view of Sakurada.
Appellant argues claims 1-11 and 19-21 as a group and claims 12 and
25-37 as a group (Br. 10). However, Appellant also provides separate
arguments with respect to claim 11. Accordingly, we decide this appeal on
the basis of claims 1, 11, and 12.
II. DIPIPPO REFERENCE – CLAIM 1
A. ISSUE ON APPEAL
A first issue on appeal arising from the contentions of Appellant and
the Examiner is: has Appellant shown that the Examiner reversibly erred in
finding that DiPippo anticipates claim 1 because DiPippo does not teach a
product in the form of tissue paper, toilet paper, paper towels or wipes, and
does not teach a water absorbing function? We answer this question in the
negative.
B. FACTUAL FINDINGS
Appellant provides no definition to structurally define the term
“wipes” (see generally Spec.).
Appellant does not dispute the Examiner’s finding that DiPippo
teaches non-woven fabric impregnated with a water containing gel (see Br.
10; Ans. 3; DiPippo, Abstract, and col. 2, l. 64 to col. 3, l. 7).
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The Examiner has found that the burn dressing taught by DiPippo is
capable of functioning as one of tissue paper, toilet paper, paper towels, or
wipes (Ans. 9).
The Examiner has found that the “water absorbing function” of the
claimed material is a recitation of intended use (Ans. 9).
The Examiner has found that the water containing gel taught by
DiPippo comprising water, a gelling agent, and a moisture retaining
component inherently must have a water absorbing structure (Ans. 9).
DiPippo teaches a gel containing glycerin either alone or in a solution
of sorbitol (DiPippo, col. 4, ll. 37-46). Glycerin and sorbitol are the
preferred moisture retaining components disclosed in Appellants’
Specification (Spec. 14, l. 24 to 15, l. 2).
C. PRINCIPLES OF LAW
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
Language in an apparatus or product claim directed to the function,
operation, intent-of-use, and materials upon which the components of the
structure work that does not structurally limit the components or patentably
differentiate the claimed apparatus or product from an otherwise identical
prior art structure will not support patentability. See, e.g., In re Rishoi,
197 F.2d 342, 344-45 (CCPA 1952); In re Otto, 312 F.2d 937, 939-40
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(CCPA 1963); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971); In re
Yanush, 477 F.2d 958, 959 (CCPA 1973).
When a claimed product appears to be substantially identical to a
product disclosed by the prior art, the burden is on the Applicants to prove
that the product of the prior art does not necessarily or inherently possess
characteristics or properties attributed to the claimed product. In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA
1977).
D. ANALYSIS
Appellant contends that DiPippo is directed to a burn dressing and not
tissue paper, toilet paper, paper towels, or wipes, as recited in claim 1 (Br.
10). However, the Examiner contends that the limitation of claim 1 reciting
tissue paper, toilet paper, paper towels, or wipes merely states intended uses
that do not structurally define the fibrous web product over the burn dressing
taught by DiPippo, which is capable of functioning as one of these products
(Ans. 9).
Appellant also contends that DiPippo is not configured to perform the
recited “water absorbing” function recited in claim 1, but rather is
configured to therapeutically apply a gel to a burn (Br. 10). The Examiner
responds that the limitation is a statement of intended use and the
composition taught by DiPippo inherently is capable of absorbing water
since the gel includes all the claimed components (Ans. 9).
As correctly pointed out by the Examiner, “water-absorbing” as used
in the preamble phrase “water-absorbing sanitary fibrous web product” of
claim 1, “must result in a structural difference between the claimed
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invention and the prior art in order to patentably distinguish the claimed
invention from the prior art.” (Ans. 9.)
We agree with the Examiner that the recitation of a “water-absorbing”
function for the fibrous web product does not structurally define the product
over the structure taught by DiPippo. Appellant points to no structural
feature of the invention that would provide a “water absorbing” function to
distinguish over the structure disclosed by DiPippo. Indeed, DiPippo
contains the same moisture retaining component, glycerin and/or sorbitol,
taught as the preferred moisture retaining component of Appellant’s
invention. Accordingly, the Examiner’s finding that the water-absorbing
function is inherent in the structure taught by DiPippo is reasonable.
Further, the broadest reasonable interpretation of the term “wipes,”
i.e., an article that can be used to wipe another article, encompasses the
impregnated non-woven burn dressing taught by DiPippo, since Appellant
has provided no reason to limit the scope of the term to a narrower meaning.
The Examiner has provided sufficient evidence that the structure of
the burn dressing taught by DiPippo is substantially identical to the claimed
fibrous web product. Accordingly, the burden shifted to Appellant to show
that the burn dressing taught by DiPippo does not inherently function to
absorb water. Appellant has provided no such showing.
Appellant’s contentions do not address the Examiner’s specific
findings articulated in the rejection directed to the potential uses and
inherent properties of the burn dressing taught by DiPippo or explain why
these findings are deficient. In any event, the Appellant’s contentions fall
well short of rebutting the Examiner’s findings, and Appellant has provided
no grounds to conclude that the Examiner’s findings are unreasonable.
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Accordingly, Appellant has failed to show reversible error in the Examiner’s
rejection of claim 1 based on DiPippo.
III. CHAUSSEE – CLAIMS 1 AND 12
A. ISSUE ON APPEAL
A second issue on appeal arising from the contentions of Appellant
and the Examiner is: has Appellant shown that the Examiner reversibly
erred in finding that Chaussee anticipates claims 1 and 12 because Chaussee
does not teach a fibrous web product in the form of tissue paper, toilet paper,
paper towels or wipes, and does not teach a water absorbing function, and,
further, that Chaussee does not teach a foamed gel composition having a
finely porous structure, as recited in claim 12? We answer this question in
the affirmative with respect to the tissue paper, toilet paper, paper towels or
wipes limitation of claim 1, but in the negative with respect to the limitations
of claim 12.
B. FACTUAL FINDINGS
Chaussee teaches a gel that is suitable for use as a skin or hair
cleanser, such as a shaving gel or shampoo or can be formulated into a fabric
cleaner or other cleaning apparatus (Chaussee, col. 1, ll. 59-64).
The Examiner finds that “in order to clean a fabric it must at some
point be impregnated with the cleaning composition, thus the claim
limitations are met” (Ans. 4).
The Examiner also asserts that the fabric taught by Chaussee is
capable of functioning as one of tissue paper, toilet paper, paper towels, or
wipes (Ans. 10).
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The gel composition of Chausee post-foams into a lathered product
(Chaussee, col. 1, ll. 56-58). The Examiner finds that a finely porous
structure is inherent in the foamed composition of Chaussee (Ans. 11).
C. PRINCIPLES OF LAW
The principles of law provided above to address the first issue are
equally relevant to second issue on appeal presently discussed. Further,
“[t]o anticipate a claim, a prior art reference must disclose every limitation
of the claimed invention, either explicitly or inherently.” In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997). In order to anticipate, a reference
must identify something falling within the claimed subject matter with
sufficient specificity to constitute a description thereof within the purview of
§ 102. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978); Verve, LLC v.
Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002) (“A single
reference must describe the claimed invention with sufficient precision and
detail to establish that the subject matter existed in the prior art.”).
D. ANALYSIS
We agree with Appellant that the particular products of tissue paper,
toilet paper, paper towels, or wipes recited in claim 1 are not described by
Chaussee (Br. 11). The teaching lacks sufficient specificity in describing the
fabric to which the cleanser is applied. Without any description of fabric
structure in the reference, we cannot say that the reference describes, within
the meaning of § 102, “tissue paper, toilet paper, paper towels, or wipes.”
Accordingly, we cannot sustain the Examiner’s rejection of claim 1 as
anticipated by Chaussee.
However, claim 12 and the claims that depend therefrom do not recite
that the fibrous web product is tissue paper, toilet paper, paper towels, or
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wipes or that the fibrous web product is “water-absorbing.” Thus,
Appellant’s contention that these features are not taught or suggested by
Chaussee are not convincing with respect to claim 12.
Claim 12 requires that the water-containing gel composition be “a
foamed gel composition having a finely porous structure. Appellant
contends that such a finely porous structure is not taught or suggested by
Chaussee, without more (Br. 11). Appellant’s argument does not address the
Examiner’s specific findings articulated in the rejections directed to the
inherent finely porous property of the foamed gel taught by Chaussee or
explain why these findings are deficient. In any event, Appellant has
provided no grounds to conclude that the Examiner’s findings are
unreasonable.
The Examiner has provided sufficient evidence that the foamed gel
composition taught by Chaussee is substantially identical to the claimed
foamed gel composition. Accordingly, the burden shifted to Appellant to
show that the foamed gel composition taught by Chaussee does not
inherently have a finely porous structure. Appellant has provided no such
showing.
Accordingly, Appellant has failed to show reversible error in the
Examiner’s rejection of claims 12, 26-28, 32, and 33 based on Chaussee.
IV. SCHERR – CLAIMS 1 AND 12
A. ISSUE ON APPEAL
A third issue on appeal arising from the contentions of Appellant and
the Examiner is: has Appellant shown that the Examiner reversibly erred in
finding that Scherr anticipates claims 1 and 12 because Scherr does not teach
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a fibrous web product with a water-containing gel composition? We answer
this question in the negative.
B. FACTUAL FINDINGS
The Examiner relies on a gel composition taught by Scherr
comprising a highly hydrophilic sodium acrylate polymer that retains an
amount of water even after drying and a gel composition taught by Scherr
which is a stable hydrogel composition (Ans. 11-12; Scherr, ¶¶[0049]-
[0050] and [0064]).
C. PRINCIPLES OF LAW
A reference may be relied upon for all that it would have reasonably
suggested to one having ordinary skill in the art, including non-preferred
embodiments. Merck & Co v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir.
1989) (“[A]ll disclosures of the prior art, including unpreferred
embodiments, must be considered.”) (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976)).
D. ANALYSIS
Relying on paragraphs [0039] to [0041] of Scherr, Appellant contends
that Scherr teaches a foamed composition that is dry when formed as a
wound dressing, and thus does not teach a composition comprising water, as
recited in claims 1 and 12 (Br. 11). However, Appellant directs our attention
to only one embodiment taught by Scherr and fails to address the
Examiner’s finding directed to Example 6 of Scherr which clearly teaches
the inclusion of water in a final product.
Accordingly, Appellant’s contentions do not address the Examiner’s
specific findings in the rejections directed to the alternative embodiments
taught by Scherr or explain why these findings are deficient. The
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Appellant’s contentions fall well short of rebutting the Examiner’s findings,
and Appellant has provided no grounds to conclude that the Examiner’s
findings are unreasonable.
Accordingly, Appellant has failed to show reversibly error in the
Examiner’s rejection of claims 1 and 12 based on Scherr.
V. CLAIM 11 – DIPIPPO/SAKURADA AND SCHERR/SAKURADA
A. ISSUE ON APPEAL
A fourth issue on appeal arising from the contentions of Appellant and
the Examiner is: has Appellant shown that the Examiner reversibly erred by
failing to provide adequate motivation to combine the teachings of DiPippo
or Scherr with the teachings of Sakurada?
B. FACTUAL FINDINGS
The Examiner has articulated a reason for including the chitosan and
powdered silk taught by Sakurada in the wound dressing products taught by
DiPippo and Scherr, namely, that one of ordinary skill in the art would have
used included these additives to impart or enhance the antibacterial
properties of the burn dressing (Ans. 7-8).
C. PRINCIPLES OF LAW
In KSR Int'l Co. v. Teleflex Inc., the Supreme Court set aside any
“rigid” application of the teaching, suggestion, motivation (“TSM”) test,
advising that: “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” 550 U.S. 398, 421 (2007). The Supreme
Court clarified that “it can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does,” but that “the analysis
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need not seek out precise teachings [in the prior art] directed to the specific
subject matter of the challenged claim.” Id. at 418.
D. ANALYSIS
Appellant provides sweeping arguments that there is no motivation to
combine these references and the combination does not teach or suggest the
claimed invention. Yet, the Examiner has provided an articulated reason as
to why one of ordinary skill in the art would have combined the references.
Appellant’s arguments do not address the Examiner’s articulated reasoning
or explain why the reasoning is deficient. As such, Appellant’s statements
do not adequately rebut the Examiner’s prima facie case of obviousness.
Accordingly, Appellant has failed to show reversible error in the
Examiner’s rejection of claim 11 as obvious over either DiPippo or Scherr in
view of Sakurada.
VI. CONCLUSION
For the reasons discussed above, we cannot sustain the Examiner’s
rejection of claims 1, 3-5, 9, and 10 under 35 U.S.C. § 102(b) as anticipated
by Chaussee; however, we sustain the Examiner’s rejections of:
1. claims 1, 3-6, 9, 10, and 21 under 35 U.S.C. § 102(b) as
anticipated by DiPippo;
2. claims 12, 26-28, 32, and 33 under 35 U.S.C. § 102(b) as
anticipated by Chaussee;
3. claims 1, 5, 6, 9, 10, 12, 28, 29, and 33 under 35 U.S.C.
§ 102(e) as anticipated by Scherr;
4. claims 2, 7, 8, 19-21, 25, 30, 31, and 35-37 under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Chaussee;
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5. claims 2, 21, 25, and 37 under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Scherr;
6. claims 7 and 8 under 35 U.S.C. § 103(a) as obvious over
DiPippo;
7. claim 11 under 35 U.S.C. § 103(a) as obvious over DiPippo in
view of Sakurada;
8. claims 11 and 34 under 35 U.S.C. § 103(a) as obvious over
Scherr in view of Sakurada.
VII. DECISION
We affirm the Examiner’s decision.
VIII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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