Ex Parte Vogel et al

Patent Trial and Appeal Board

Feb 9, 2016

12791498 (P.T.A.B. Feb. 9, 2016)

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.
12/791,498 06/01/2010 Nathan John Vogel 64655783US01 2812
23556 7590 02/09/2016
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
CORDRAY, DENNIS R
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
02/09/2016 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 NATHAN JOHN
VOGEL, KENNETH JOHN
ZWICK, DAVID JAMES SEALY
POWLING, KROY DONALD
JOHNSON, and PETER SHAWN
LORTSCHER
____________

Appeal 2014-004236
Application 12/791,498
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants1 seek our review under 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 1–5, 7–16, and 18–23.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Appellants state that “Kimberly-Clark Worldwide, Inc.” is the real
party in interest (Appeal Brief filed September 23, 2013, hereinafter “Br.,”
1).
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Application 12/791,498

2

BACKGROUND
The subject matter on appeal relates to dispersible (i.e., flushable)
moist or wet wipes (Specification, hereinafter “Spec.,” 1, ll. 4–10; 2, l. 16).
Representative claim 1 is reproduced from page 8 of the Appeal Brief
(Claims Appendix) as follows:
1. A dispersible wet wipe comprising:
a wipe substrate comprising:
a tissue web consisting of cellulose fibers, wherein
said cellulose fibers have a fiber length of 3 mm or less,
and
a binder composition for binding together the
cellulose fibers, wherein said binder composition is
present at an add-on rate of between about 1 percent and
about 15 percent based on a total weight of the wipe
substrate; and
a wetting composition containing between 0.4 and 3.5
percent salt.

THE REJECTIONS
The Examiner rejected the claims as follows:

I. Claims 1–5, 7–9, 11–16, 18, and 20–23 under 35 U.S.C.
§ 103(a) as being unpatentable over Adams et al.
(“Adams”).2
II. Claims 10 and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Adams and Erikson et al. (“Erikson”).3

2 US 4,117,187 issued September 26, 1978.
3 US 5,578,170 issued November 26, 1996.
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Application 12/791,498

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(Examiner’s Answer entered December 5, 2013, hereinafter “Ans.,” at 2–5;
Final Office Action entered April 22, 2013, hereinafter “Final Act.,” at 5–
10.)4
DISCUSSION
We affirm these rejections for essentially the reasons set forth in the
Examiner’s Answer. Nevertheless, we add the following comments
primarily for emphasis.
I
In arguing for the reversal of Rejection I, the Appellants argue claims
1–5, 7–9, 11–16, 18, and 20–23 together and provide additional arguments
for claims 5, 16, 22, and 23 (Br. 5–7). We confine our discussion to claim 1,
which we select as representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv),
and address claims 5, 16, 22, and 23 to the extent they have been argued
separately in accordance with the rule.
The Examiner found that the Adams reference discloses “[a] wipe
consist[ing] of a nonwoven tissue web of fibrous material, preferably short
cellulosic fibers in the range of 1/16 to ½ inch [1.588 to 12.7 mm] in length,
a binder, and a wetting composition . . .” (Ans. 2). Additionally, the
Examiner found that the Adams reference discloses “short fibers allow for a
relatively soft feel while providing a web more susceptible to break up and
disintegration within a sewer system” (id.). Based on these findings, the
Examiner concluded that this teaching “embodies webs made of fibers
between 1.6 mm and 3 mm in length or, at least, making a web with fibers in

4 In the Answer at pages 5–6, the Examiner withdrew a final rejection under
35 U.S.C. § 112 ¶ 2, of claims 5, 16, 22 and 23 as being indefinite and a
final rejection under 35 U.S.C. 103(a) of claims 7,8, 20 and 21 as being
unpatentable of Adams and Murray et al. (US 7,442,278).
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4
the claimed range would have been obvious to one of ordinary skill in the art
to obtain a relatively soft feel and dispensability” (id. at 2–3).
The Appellants contend the general statement of Adams regarding the
fiber lengths “cannot be read to teach or enable creating a tissue web of
which substantially all cellulose fibers have a fiber length of 3 millimeters or
less, as currently claimed by Appellants” (Br. 4). The Appellants further
contend that the June 24, 2013 Declaration of Nathan John Vogel (Vogel
Decl.) provides evidence that, in view of Adams, a person of ordinary skill
in the art “would not have been motivated . . . to construct a flushable pre-
moistened wipe of fibers substantially 100% of which are 3 millimeters or
less in length because doing so with conventional formation techniques and
conventional amounts of binder would result in a wipe having insufficient
in-use strength” (id.).
Notwithstanding the Appellants’ mischaracterization of the claimed
fiber length requirement,5 Appellants’ arguments and proffered evidence fail
to reveal reversible error in the Examiner’s conclusion that the claimed fiber
length would have been obvious to a person having ordinary skill in the art
in view of Adams. Adams describes pre-moistened flushable tissue based
on non-woven tissue formed from cellulosic fibers disclosing a preference
for using shorter fibers (such as those 1/16 to ½ inch [1.588 to 12.7 mm] in
length) to achieve “a relatively soft feel desired in a toilet tissue, while
further providing a substrate that is more susceptible to mechanical break-up
and disintegration within the sewer system.” (Adams col. 2, ll. 1–5.)

5 Representative claim 1 requires “a tissue web consisting of cellulose fibers,
wherein said cellulose fibers have a length of 3 millimeters or less” and thus
requires all fibers 3 millimeters or less and not “substantially all” as argued
by the Appellants.
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According to Adams, when using short fiber lengths, “the major strength of
the web is provided by the adhesive binder rather than the mechanical
entanglement of the fibers of the web.” (Id. at col. 2, ll. 5–7.) Given these
teachings, we fully agree with the Examiner that the disclosure of Adams
embodies tissues made from fibers exclusively less than 3 mm, or in the
alternative, a tissue consisting of fibers 3 mm or less in length would have
been obvious to one of ordinary skill in the art at the time of the invention to
reap the benefits of using short fibers as established by Adams. In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie case of
obviousness.”). See also id. at 1330 (“[T]he existence of overlapping or
encompassing ranges shifts the burden to the applicant[s] to show that his
invention would not have been obvious.”).
The Appellants proffered evidence (in the form of the Vogel
Declaration) supporting the assertion that one of ordinary skill in the art at
the time of filing would not have been motivated to construct a pre-
moistened wipe of fibers substantially 100% of which are 3 millimeters or
less in length. Mr. Vogel opines that “one of skill in the art would not have
been motivated . . . to construct a flushable premoistened wipe of fibers
substantially 100% of which are 3 millimeters or less in length, because
doing so with conventional formation techniques and conventional amounts
of binder would result in a wipe having insufficient in-use strength” (Vogel
Decl. ¶ 5). However, we find this evidence fails to provide comprehensive
factual evidence to support that broad conclusion and, indeed, it appears to
be contradicted by experimental evidence reported in Adams. As the
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Appellants concede (Br. 5), Example 23 of Adams “disclose[s] a wet wipe
having the combination of (1) cellulose fibers substantially 100%, of which
have a fiber length of 3 mm or less; (2) an in-use (i.e., pre-soak) machine
direction tensile strength of greater than 300 g/in (118 g/cm); and (3) a post-
use (i.e., post-soak) machine direction tensile strength of less than 200 g/in
(78.7 g/cm).”
The Appellants further contend that the “Appellants have figured out
how to make a sheet that in particular embodiments has the combination of
shorter fibers (for optimized wastewater treatment), relatively modest
amounts of binder (keeping cost down), and, in particular embodiments,
relatively high in-use strength (so the wipe doesn’t shred or tear in use), and
relatively low post-use (i.e., post-soak) strength (so the wipe breaks up as
much as possible after flushing).” (Br. 4–5.) To the extent the argument is
made in support of unexpected results, we find the record deficient of factual
evidence (i.e., comparative experimental evidence) to support unexpected
results of the broadly drafted claims.
With respect to the individual arguments directed towards claims 5,
16, 22 and 23, the Appellants argue “if Adams had measured MD Wet
Tensile Strength, such values would almost certainly have been greater than
(but at least equal to) the CD Wet Tensile strength values that Adams does
provide” (Br. 5). Based on this, Appellants argue that Adams’s examples
are further away from the claims because substrates CD Wet Tensile values
“would almost certainly” exhibit post-soak MD Wet Tensile values higher
than the listed CD Tensile Strength. (Id.) Again, we find the record
deficient of factual evidence to support Appellants’ speculative assertions.
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Additionally, the properties broadly recited in the claims would follow
naturally from following the suggestions of the prior art. Ex parte Obiaya,
227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized
another advantage which would flow naturally from following the
suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise [have been] obvious.”).
II
In arguing for the reversal of Rejection II, the Appellants present no
additional arguments and, therefore, we maintain this rejection for
substantially the same reasons as set forth above.

SUMMARY
Rejections I and II are affirmed. Therefore, the Examiner’s final
decision to reject claims 1–5, 7–16, and 18–23 are affirmed.
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