11528884 (B.P.A.I. Jan. 10, 2011)

Ex Parte Wong et al

Board of Patent Appeals and InterferencesJan 10, 2011

11528884 (B.P.A.I. Jan. 10, 2011)

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. 11/528,884 09/28/2006 Arthur Wong 9165C 6924 27752 7590 01/11/2011 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER LONEY, DONALD J ART UNIT PAPER NUMBER 1783 MAIL DATE DELIVERY MODE 01/11/2011 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 ARTHUR WONG, LEAH M. WOOD, JEFFREY LAWRENCE FLORA, DOUGLAS MICHAEL MCGAHAN, ANDREW W. DELANWY, and RICK M. AUGUSTINE __________ Appeal 2009-013200 Application 11/528,884 Technology Center 1700 ____________ Before PETER F. KRATZ, and KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge MICHAEL P. COLAIANNI. Opinion Concurring-in-Part, Dissenting-in-Part filed by Administrative Patent Judge PETER F. KRATZ. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013200 Application 11/528,884 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 46 through 48. Claims 27 through 45, the other claims pending in this application, stand withdrawn from consideration by the Examiner. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The subject matter on appeal is directed to a cleaning sheet. Claim 46 is illustrative: 46. A cleaning sheet for removing particulates from a hard surface, said sheet comprising: a substrate having a length, a width and a thickness, said substrate having at least one pillow member, wherein said at least one pillow member has a void volume of at least 21 cm3/(gram of substrate) when said substrate is subjected to a compressive force of at least 0.5 g/cm2, said at least one pillow member conveys information to the user in the form of a logo and/or trademark. The Examiner maintains the following rejections: 1) Claim 46 under 35 U.S.C. § 103(a) over Wong (US 2001/0029966 A1, published Oct. 18, 2001); 2) Claim 46 under 35 U.S.C. § 103(a) over either Zilg (US 5,725,927, issued Mar. 10, 1998) or Marsan (EP 0032793 A2, published Jul. 29, 1981) in view of Wong; 3) Claims 47 and 48 under 35 U.S.C. § 103(a) over Wong and further in view of Applicants’ admission that logos with legs that extend radially outward was known in the art; and Appeal 2009-013200 Application 11/528,884 3 4) Claims 47 and 48 under 35 U.S.C. § 103(a) over either Zilg or Marsan in view of Wong and further in view of Applicants’ admission that that logos with legs that extend radially outward was known in the art. Since rejections (1) and (3) are merely cumulative to rejections (2) and (4), we vacate rejections (1) and (3).2 With respect to rejections (2) and (4), Appellants focus their arguments on features recited in claims 46 and 47. (App. Br. 6-8 and Reply Br. 2-3). Accordingly, we address Appellants’ arguments with respect to these claims only. See 37 C.F.R. § 41.37(c)(1)(vii). Rejections (2) and (4) ISSUE Did the Examiner err in determining that the applied prior art references would have suggested a cleaning sheet comprising a substrate having at least one pillow member, where the at least one pillow member has a void volume of at least 21 cm3/(gram of substrate) when the substrate is subjected to a compressive force of at least 0.5 g/cm2 as required by claims 46 and 47 within the meaning of § 103? We decide this issue in the negative. PRINCIPLES OF LAW 2 The rejections (1) and (3) are cumulative to the rejections (2) and (4) since the rejections are based on a similar claim construction and the applied prior art references disclose substantially the same information. (See Ans. 4-7). Because rejections (1) and (3) are merely cumulative to rejections (2) and (4), we vacate rejections (1) and (3). Appeal 2009-013200 Application 11/528,884 4 The term comprising or comprises is open-ended and does not exclude additional, unrecited elements. In re Baxter, 656 F.2d 679, 686-87 (CCPA 1981). “Many of appellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.” In re Self, 671 F.2d 1344, 1348 (CCPA 1982). As stated in In re Best: Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludtke, supra. Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness' under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. 562 F.2d 1252, 1255 (CCPA 1977) (footnote omitted). FINDINGS OF FACT (FF) We adopt the Examiner’s findings in the Answer and Final Office Action as our own. We add the following factual findings: 1. The Specification discloses that “[t]he . . . size of th[e] pores/voids have an impact on the ‘cleaning efficacy’ of the sheet. . . . As the size of the pores/voids decreases, the ‘cleaning efficacy’ of the sheet decreases as well.” (Spec. 3). 2. The Specification defines a “pillow member” as a “structure formed by at least two layers of fibrous material defining the outer surfaces of Appeal 2009-013200 Application 11/528,884 5 the structure and having a volume in between these two layers.” (Spec. 9). 3. Appellants do not specifically dispute the Examiner’s statement that Marsan and Zilg individually “disclose pillow shaped members formed on the surface of the sheet.” (Compare Ans. 4 with App. Br. 6-8 with Reply Br. 2-3). 4. Marsan teaches a cleansing article comprising a web having a “high usable void volume under compression.” (Marsan, p. 3). Marsan teaches applying a compression force to its cleansing article in the range of 7.75 g/cm2 to 15.5 g/cm2. (Marsan, p. 4) 5. Zilg teaches a cleaning cloth having island-like surfaces which contain filament loops. (Zilg, col. 2, ll. 44-45). Additional findings of fact may appear in the Analysis that follows. ANALYSIS Appellants argue that neither Marsan nor Zilg teach or would have suggested a cleaning sheet with a substrate having pillow members and a void volume of at least 21 cm3/(gram of substrate) when the substrate is subjected to a compressive force of at least 0.5 g/cm2 as required by claims 46 and 47 (App. Br. 6 and 7). Specifically, with respect to Marsan, Appellants argue that The Marsan void volume is measured at an applied pressure more than an order of magnitude greater than the pressure recited in the instant claim. The Final Office Action makes no correlation between the Marsan measurement and the claimed measurement. The resulting Marsan void volume is measured in percentage. Again, the Final Office Action makes no Appeal 2009-013200 Application 11/528,884 6 correlation between the Marsan measurement (in percentage) and the claimed measurement. (App. Br. 6) (emphasis omitted). With respect to Zilg, Appellants argue that “Zilg et al. is even less helpful than Marsan in arriving at the claimed invention.” (App. Br. 7). Appellants also argue that “[t]he Answer fails to recognize that the thickness measurement of a sheet is a function of the confining pressure used to measure thickness. The Answer fails to suggest a confining pressure or to even allege consistent confining pressures between the prior art and the claimed sheet.” (Reply Br. 2). In addition, Appellants argue that “[t]he claimed void volume is neither taught nor suggested to be a results effective variable in any of the references.” (App. Br. 7). Appellants also argue3 that “[t]he claimed invention specifies the void volume occurs in a pillow. The cited art does not disclose the use of their (different) material properties specifically for pillows. Instead, the cited art integrates such parameters across the sheet.” (App. Br. 7). With respect to Appellants’ arguments (App. Br. 6 and 7) that neither Marsan nor Zilg teach or would have suggested a void volume of at least 21 cm3/(gram of substrate) when the substrate is subjected to a compressive force of at least 0.5 g/cm2 as required by claims 46 and 47 and Appellants’ argument (Reply Br. 2) that “[t]he Answer fails to suggest a confining pressure or to even allege consistent confining pressures between the prior art and the claimed sheet,” Appellants’ arguments are unpersuasive of 3 We note that this argument does not appear to be supported by Appellants’ Specification since the Specification only discloses the void volume of the sheet itself. (See, e.g., Spec. 30-32 and Fig. 38). Appeal 2009-013200 Application 11/528,884 7 reversible error since they fail to address, and thus fail to show error in, the Examiner’s stated case. In this regard, we begin by noting that each of the claims is directed to a cleaning sheet comprised of a substrate having at least one pillow member. The Specification explains that the cleaning sheets having pillow members are capable of maintaining a relatively high void volume during use and have a higher cleaning efficacy. (Spec. 32). Turning our attention to the Examiner’s rejection, Appellants do not specifically dispute the Examiner’s finding that Zilg and Marsan individually “disclose pillow shaped members formed on the surface of the sheet [which corresponds to the claimed substrate].” (FF 3; see also FF 4 and 5). In addition, Marsan, for example, teaches applying a compression force (compressive force) to its cleansing article (cleaning sheet) in the range of 7.75 g/cm2 to 15.5 g/cm2, which overlaps the compressive force range of at least 0.5 g/cm2 required by the claims. (FF 4). Thus, since the structure of Marsan’s cleansing article (cleaning sheet) and Zilg’s cleaning cloth (cleaning sheet) corresponds to the claimed structure and that Marsan additionally discloses a compression force (compressive force) range that overlaps the claimed compressive force range, we like the Examiner, determine that that there is a reasonable basis to believe that Marsan’s cleansing article (cleaning sheet) and Zilg’s cleaning cloth (cleaning sheet) individually would have necessarily or inherently possessed the recited characteristic (i.e., the pillow member’s void volume) required by claims 46 and 47. (See Ans. 8). Accordingly, Appellants’ arguments are without persuasive merit. Appeal 2009-013200 Application 11/528,884 8 With respect to Appellants’ argument (App. Br. 7) that “[t]he claimed void volume is neither taught nor suggested to be a results effective variable in any of the references,” we find this argument unpersuasive of reversible error because the Examiner does not solely rely on optimizing a result effective variable to arrive at the claimed inventions. In this regard and in reference to our above discussion, the Examiner’s stated case is based on, for example, the structure of Marsan’s cleansing article (cleaning sheet) being identical to Appellants’ claimed cleaning sheet and Marsan’s disclosed compression force (compressive force) range, which overlaps the compressive force range recited in the claims. (Ans. 4-6 and 8). Accordingly, Appellants’ arguments are without persuasive merit. With respect to Appellants’ argument (App. Br. 7) that “[t]he claimed invention specifies the void volume occurs in a pillow. . . . the cited art integrates such parameters across the sheet,” we note that, contrary to Appellants’ argument, the claims do not exclude measuring the void volume across the sheet, which includes several pillow members, as argued by Appellants since claims 46 and 47 only require “at least one pillow member.” In addition, Appellants’ open-ended transitional claim language “comprising” recited in claims 46 and 47 does not exclude additional components such as additional pillow members. Baxter, 656 F.2d at 686-87. Moreover, we note that the “void volume occurs in a pillow” feature argued by Appellants is not claimed and thus is not required by either claim 46 or 47. See Self, 671 F.2d at 1348. Accordingly, Appellants’ argument is without persuasive merit. Appeal 2009-013200 Application 11/528,884 9 Thus, it follows that the Examiner did not err in determining that the applied prior art references would have suggested a cleaning sheet comprising a substrate having at least one pillow member, where the at least one pillow member has a void volume of at least 21 cm3/(gram of substrate) when the substrate is subjected to a compressive force of at least 0.5 g/cm2 as required by claims 46 and 47 within the meaning of § 103. DECISION Accordingly, we sustain the Examiner’s rejections (2) and (4). The Examiner’s cumulative rejections (1) and (3) are vacated. Accordingly, the Examiner’s decision is affirmed. AFFIRMED bar THE PROCTER & GAMBLE COMPANY GLOBAL LEGAL DEPARTMENT - IP SYCAMORE BUILDING - 4TH FLOOR 299 EAST SIXTH STREET CINCINNATI, OH 45202 Appeal 2009-013200 Application 11/528,884 1 KRATZ, Administrative Patent Judge, concurring-in-part, dissenting-in-part. I concur with the disposition of this appeal with respect to the Examiner’s rejection of claim 46 under 35 U.S.C. § 103(a) over either Zilg or Marsan in view of Wong and the Examiner’s rejection of claims 47 and 48 under 35 U.S.C. § 103(a) over either Zilg or Marsan in view of Wong and Applicants’ admission that that logos with legs that extend radially outward was known in the art. I would AFFIRM these rejections for substantially the reasons stated by the Examiner in the Answer. Regarding the rejection of claim 46 under 35 U.S.C. § 103(a) over Wong and the rejection of claim 47 and 48 under 35 U.S.C. § 103(a) over Wong in view of Applicants’ admission that logos with legs that extend radially outward was known in the art; however, I disagree with the decision of the majority to vacate these latter rejections. Rather, I would AFFIRM these latter rejections for substantially the reasons presented by the Examiner in the Answer. As correctly determined by the Examiner, Wong discloses a nonwoven cleaning sheet of increased pore volume enhances particle entrapment such that Wong would have been reasonably expected to suggest Appellants’ particularly claimed void volume to one of ordinary skill in the art upon the exercise of routine skill in determining the workable parameters for the cleaning sheet of Wong (Ans. 4 and 7). In this regard, it is manifest upon a reading of Wong that the disclosed and suggested cleaning sheet thereof includes a non-planar cleaning surface that includes macroscopic three-dimensionality with non-random raised regions of nonwoven material corresponding to the claimed “at least one pillow member,” which structure gives enhanced cleaning effect and obviously contributes void volume to the cleaning sheet of Wong (paras. 0006, 0031- Appeal 2009-013200 Application 11/528,884 2 0057 and 0079). Moreover and like Appellants, Wong plainly teaches that the disclosed cleaning sheets are useful for cleaning hard surfaces and may be employed with an elongated handle cleaning implement in so doing (paras. 0074-0077 and 0084-0086). This latter disclosure of Wong further supports the Examiner’s obviousness determination of the here-claimed subject matter over Wong alone or in combination with the admitted prior art.