Ex Parte Weisman

Board of Patent Appeals and Interferences

Dec 2, 2011

10954039 (B.P.A.I. Dec. 2, 2011)

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.
10/954,039 09/29/2004 Paul Thomas Weisman 9395 3322
27752 7590 12/02/2011
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
CHOI, PETER Y
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
12/02/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL THOMAS WEISMAN
____________

Appeal 2011-001190
Application 10/954,039
Technology Center 1700
___________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-4, 6-14, 16-18, and 21-24. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal:
1. A material suitable for use in an absorbent article,
comprising:
a nonwoven web formed of a plurality of fibers, said
fibers having a cellular structure which defines a multiplicity of
open and closed cells therewithin, said cellular structure
comprising a polymeric material having a polymer density,
wherein said fibers have a fiber density that is less than said
polymer density; and wherein said nonwoven web has the
ability to absorb aqueous fluids with a liquid strike-through
time of less than about 10 seconds.
The Examiner maintains, and Appellant appeals, the following
rejections under 35 U.S.C. § 103(a):
a) claims 1-4, 6, 7, 18, 21 and 23 as unpatentable over the combined
prior art of Blades (US 3,227,784, issued Jan. 4, 1966), Steuber
(US 3,169,899, issued Feb. 16, 1965), and Gellert (US 3,901,238,
issued Aug. 26, 1975); and
b) claims 1-4, 6, 7, 18, 21 and 23 as unpatentable over the combined
prior art of Bair (US 4,965,129, issued Oct. 23, 1990) , Blades, and
Gellert;
c) claims 8-14, 22 and 24 as unpatentable over the combined prior art
of Blades, Steuber, and Ehrnsperger (WO 99/45875, published
Sept. 16, 1999);
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d) claims 8-14, 22 and 24 as unpatentable over the combined prior art
of Bair, Blades, and Ehrnsperger;
e) claims 16 and 17 as unpatentable over the combined prior art of
Blades and Steuber; and,
f) claims 16 and 17 as unpatentable over the combined prior art of
Bair and Blades.
MAIN ISSUES ON APPEAL
Appellant does not separately argue the claims in each ground of
rejection, nor does he separately argue the claims rejected separately from
grounds a and b (App. Br. 3-6). Accordingly, we select claim 1 for deciding
the issues on appeal.
Appellant does not dispute the Examiner’s finding that the claimed
fibers encompass the flashspun microcellular fibers of Blades (App. Br.;
Reply Br. generally). Rather, he contends that the rejections which are
based on the alternatively applied prior art applied combinations of Blades
and Steuber, or Bair and Blades, are improper because they do not teach or
suggest the use of these flashspun microcellular fibers for a nonwoven web.
Accordingly, the main issues on appeal are:
Did the Examiner reversibly err in determining that the nonwoven
web of claim 1 would have been obvious over the combined prior art of
Blades and Steuber, because, as alleged by Appellant, there is no suggestion
of using the microcellular fibers of Blades for an adsorbent nonwoven web
as exemplified in Steuber? (App. Br. 7-11; Reply Br. 7-11)
We answer this question in the negative, and affirm all of the § 103
rejections based on Blades and Steuber.
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Did the Examiner reversibly err in determining that the nonwoven
web of claim 1 would have been obvious over the combined prior art of Bair
and Blades, because, as alleged by Appellant, Bair does not teach that its
nonwoven fabric web is made of flashspun fibers as contended by the
Examiner?
We answer this question in the positive, and reverse all of the § 103
rejections based on Bair and Blades.
PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418.
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988).
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
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ANALYSIS
The § 103 Rejections based on Blades and Steuber
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections based on the Blades
and Steuber combination for essentially those reasons expressed in the
Answer, including the Response to Argument section, and we add the
following primarily for emphasis.
Appellant does not dispute the Examiner’s finding that the claimed
fibers encompass the flashspun microcellular fibers of Blades (App. Br.;
Reply Br. generally). The Examiner relied upon Steuber to exemplify that
nonwoven webs are known in the art to be made from similar flashspun
polymer fibers (see, e.g., Ans. 5-6, 24-25). The Examiner’s determination
that an artisan would have been motivated to use such known microcellular
fibers of Blades in a nonwoven web such as exemplified in Steuber (id.) is
reasonable.
Appellant’s contentions in the Brief are unpersuasive for the reasons
articulated by the Examiner (see App. Br. 11-13; Ans. 23-27; Reply Br. 7-
11). The Examiner aptly points out that contrary to Appellant’s remarks, he
did not rely upon a substitution of the plexifilamentary fibers of Steuber with
the microcellular fibers of Blades (Ans. 24), rather he relied upon Steuber
only to exemplify that “substantially similar [flashspun] fibers” of Steuber to
the flashspun fibers of Blades “are formed into a nonwoven” (id.).
Furthermore, it is now well established that ordinary creativity is presumed
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on the part of one of ordinary skill in the art. See KSR, 550 U.S. at 421(“[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). It is undisputed that Steuber exemplifies the use of flashspun
polymeric fibers for use as adsorbent nonwoven materials (App. Br.; Reply
Br. generally) and that Blades also teaches flashspun polymeric fibers (id.;
see e.g., Ans. 24-25). Notably, Appellant has not provided any persuasive
technical reasoning nor evidence that the fibers of Steuber are not
substantially similar to the fibers of Blades such that an artisan would have
predictably used the microcellular fibers of Blades for a nonwoven web
(App. Br.; Reply Br. generally).
As aptly pointed out by the Examiner, Blades teaches flashspun fibers,
filaments and yarns having a cellular structure with desirable properties that,
to a person of ordinary creativity, would have been predictably suitable for
use in nonwoven as well as woven fabrics (e.g., Ans. 24). See KSR, 550
U.S. at 415-16 (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”).
Indeed, Appellant admits that the fibers of Blades “have been used in
the art to create low density resilient nonwovens” (Spec. 2:18-23). An
applicant cannot defeat an obviousness rejection by asserting that the cited
references fail to teach or suggest elements which the applicant has
acknowledged are taught by the prior art. Constant v. Advanced Micro-
Devices, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a
patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.”) and In re
Nomiya, 509 F.2d 566, 571n.5 (CCPA 1975) (A statement by an applicant
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that certain matter is prior art is an admission that the matter is prior art for
all purposes).
In light of these circumstances, the preponderance of the evidence
supports all of the Examiner’s rejections based on the combination of Blades
and Steuber, and Appellant has not shown reversible error in the Examiner’s
determination that the subject matter of independent claim 1 (as well as all
the remaining not separately argued claims) would have been obvious,
within the meaning of 35 U.S.C. § 103, over the applied prior art based on
Blades and Steuber.
Accordingly, we sustain the § 103 rejections of all the claims on
appeal which are based on the Blades and Steuber combination.
The § 103 rejections based on Bair and Blades
On the other hand, with respect to the § 103 rejections based on the
Bair and Blades combination, we agree with Appellant that the Examiner’s
position is based on an erroneous finding that Bair teaches a nonwoven
fabric made from flashspun polymer fibers (App. Br. 12-13; Reply Br. 9-10).
The Examiner’s rejections are specifically based on the Examiner’s finding
that Bair at column 2, lines 41-68 teaches that its nonwoven fabric may be
made from flashspun fibers (see, e.g., Ans. 28). However, this finding is
erroneous as pointed out by Appellant (e.g., App. Br. 12-13; Reply Br. 9).
Specifically, we agree with Appellant that while Bair teaches that its
absorbent filler particles may be made of flashspun polyethylene, Bair does
not teach that its nonwoven outer fabric web (which surrounds the adsorbent
particles) may be made of flashspun polyethylene fibers (Reply Br. 9).
Since all of the Examiner’s rejections based on the Bair/Blades
combination rely upon on the above noted erroneous finding, we are
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constrained to reverse all of the § 103 rejections based on the Bair and
Blades combination.
DECISION
The decision of the Examiner is 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

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