Ex Parte Tyrrell et al

Board of Patent Appeals and Interferences

Sep 6, 2005

09746872 (B.P.A.I. Sep. 6, 2005)

The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

____________

Ex parte DAVID JOHN TYRRELL, CHANTEL SPRING BUHROW, DAVID ROLAND
OTTS, DUANE GERARD KRZYSIK, EARL DAVID BROCK, JAMES LOUIS CAHALL,
and SAMUEL QCHENG LIN

____________

Appeal No. 2005-1186
Application No. 09/746,872
____________

ON BRIEF
____________

Before PAK, OWENS, and PAWLIKOWSKI, Administrative Patent Judges.
PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 1-7, and 10-57.
Claims 1 and 21 are representative of the subject matter on
appeal, and are set forth below:
1. An absorbent article comprising:

(a) an outer cover;

(b) a liquid permeable bodyside liner that defines a
bodyfacing surface and that is connected in superposed
relation to the outer cover;

(c) an absorbent body that is located between the bodyside
liner and the outer cover; and
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(d) a composition on at least a portion of the bodyfacing
surface of the bodyside liner that includes from about 10
to about 90 weight percent of hydrophilic solvent, from
about 10 to about 90 percent by weight of high molecular
weight polyethylene glycol, from about 0 to about 40
percent by weight of C14 to C30 fatty alcohol, from about
0 to about 40 percent by weight of C14 to C30 fatty acid
and from about 0.1 to about 20 percent by weight of
decoupling polymer.

21. An absorbent article comprising:

(a) an outer cover;

(b) a liquid permeable bodyside liner that defines a
bodyfacing surface and that is connected in superposed
relation to the outer cover;

(c) an absorbent body that is located between the bodyside
liner and the outer cover; and

(d) a composition on at least a portion of the bodyfacing
surface of the bodyside liner that includes from about 10
to about 80 percent by weight of hydrophilic solvent,
from about 10 to about 90 percent by weight of high
molecular weight polyethylene glycol having a molecular
weight of at least about 720 daltons, from about 1 to
about 30 percent by weight of C14 to C30 fatty alcohol,
from about 1 to about 30 percent by weight of C14 and C30
fatty acid, from about 1 to about 10 percent by weight of
emulsifying surfactant having a combined HLB in a range
greater than 7, from about 0.1 to about 30 percent by
weight of natural fats or oils, from about 0.1 to about
10 percent by weight of sterols or sterol derivatives,
from about 0.1 to about 10 percent by weight of emollient
and from about 0.1 to about 20 percent weight of
decoupling polymer.

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Application No. 09/746,872

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Claims 1-7 and 10-57 stand rejected under 35 U.S.C. §103 as
being obvious over Krzysik in view of Klofta, and further in view
of Beerse.
The examiner relied upon the following references for
patentability.

Krzysik et al. (Kryzik) 6,149,934 Nov. 21,2000
Klofta et al. (Klofta) 6,238,682 May 29, 2001
Beerse et al. (Beerse) 6,294,186 Sep. 25, 2001

Appellants have grouped the claims into two groupings, as set
forth at the top of page 7 of the Brief. In accordance therein, we
consider claims 1 and 21 in this appeal. See former regulation 37
CFR § 1.192(c)(7)(2004) and compare current regulation 37 CFR
§ 41.37(c)(1)(vii)(September 13, 2004). Also see Ex parte Schier,
21 USPQ2d 1016, 1018 (Bd. Pat. App. & Int. 1991).
We have carefully reviewed the appellants’ brief, the
examiner’s answer, and the evidence of record. This review has led
us to conclude that the examiner’s rejection is well-founded.

OPINION
I. 35 U.S.C. § 103 rejection of claims 1-7, 10-34, 37-41, 43,
45-47, and 49-57 as being obvious over Krzysik in view of
Klofta, and further in view of Beerse

The examiner’s position for this rejection is set forth at
pages 3-5 of the answer.
Appellants’ essential arguments, as set forth on pages 6-11 of
the brief, include (1) that the examiner has failed to identify how
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the cited references suggest the desirability of modifying the
composition of Krzysik, to include components of Klofta and Beerse.
Appellants argue that the examiner does not explain why one of
ordinary skill in the art would pick and choose components from
Klofta to form a lotion for diapers. Secondly, appellants argue
that the examiner has failed to show a reasonable expectation of
success. We are not convinced by appellants’ arguments for the
following reasons.
Firstly, we refer to the examiner’s response in this regard,
made on pages 5-7 of the answer, and incorporate it as our own. We
add the following comments for emphasis.
We note that in order for a prima facie case of obviousness of
a claimed invention to be established, the prior art as applied
must be such that it would have provided one of ordinary skill in
the art with both a suggestion to carry out appellants’ claimed
invention and a reasonable expectation of success in so doing. See
In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed.
Cir. 1988). Both the suggestion and the expectation of success
must be found in the prior art, not in the appellants’ disclosure.
Id. We also note that obviousness can be established by combining
or modifying the teachings of the prior art to produce the claimed
invention where there is some teaching, suggestion, or motivation
to do so found either in the reference or in the knowledge
generally available to one of ordinary skill in the art. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
We again note that the prior art can be modified or combined to
reject claims as prima facie obvious as long as one of ordinary
skill in the art would have had a reasonable expectation of
success. In re Merck & Co., Inc., 800 F.2d 1091, 1097, 231 USPQ
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375, 379 (Fed. Cir. 1986). As explained below, we determine that
the examiner has set forth a prima facie case of obviousness.
The examiner has adequately established that the applied art
would have provided one of ordinary skill in the art with both the
suggestion to carry out appellants’ claimed invention and a
reasonable expectation of success in so doing. Id., In re Dow.
The examiner explains why substitution of the composition taught by
Klofta, in place of the composition of Krzysik, is suggested by the
applied art. As explained by the examiner on page 4 of the answer,
Klofta discloses a lotion composition. The lotion imparts a soft,
lubricious feel, and tends to be mild to the skin, thus mitigating
the potential for skin irritation. See column 1, lines 17-25 of
Klofta. Other benefits are listed at column 4, at lines 27-49 of
Klofta. These teachings support the examiner’s statement made on
page 4 of the answer that it would have been obvious to modify the
composition of Krzysik by substituting the composition of Klofta in
order to provide a lotion composition that kills viruses and
imparts a soft lubricious feel (among the other benefits taught by
Klofta).
With regard to the reasonable expectation of success criteria,
the lotion in Klofta is applied to paper products. See column 1,
lines 17-29. The lotion formulation in Krzysik is applied to
absorbent articles, such as diapers. See column 4, lines 19-29.
See also figure 1. As such, there exists a reasonable expectation
of success that the lotion formulation, that is applied to a paper
product of Klofta, would function as expected in the absorbent
article of Krzysik.
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With regard to the reference of Breece, the examiner relied
upon Breece for teaching that components such as sterol and a
decoupling polymer such as a polysaccharide, are well known in the
art as additives for compositions that are applied to substrate
products such as diapers, tissue type products, disposable
garments, etc. Answer, pages 4, 6, and 7.
In view of the above, therefore, and absent evidence of
unexpectedly superior results, we agree with the examiner’s prima
facie case of obviousness.
We therefore affirm the examiner’s rejection of claims 1 and
21 (along with claims 2-7, 10-20, 22-34, 37-57).

II CONCLUSION
The 35 U.S.C. §103 rejection of claims 1-7, 10-34, 37-41, 43,
45-47, and 49-57 is affirmed.
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No time period for taking any subsequent action in connection
with appeal may be extended under 37 CFR 1.136(a)(iv)(effective
Sept. 13, 2003); 69 Fed. Reg. 49960 (Aug. 12, 2004); 1286 Off. Gaz.
Pat. Office 21 (Sept. 7, 2004)).

AFFIRMED

CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP/lp

Appeal No. 2005-1186 Page 8
Application No. 09/746,872

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