Ex Parte Vogel et alDownload PDFPatent Trial and Appeal BoardFeb 9, 201612791498 (P.T.A.B. Feb. 9, 2016) Copy Citation 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). Appeal 2014-004236 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. Appeal 2014-004236 Application 12/791,498 3 (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). Appeal 2014-004236 Application 12/791,498 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. Appeal 2014-004236 Application 12/791,498 5 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 Appeal 2014-004236 Application 12/791,498 6 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. Appeal 2014-004236 Application 12/791,498 7 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 Copy with citationCopy as parenthetical citation