Ex Parte Yananton

Board of Patent Appeals and Interferences

Aug 10, 2011

11169738 (B.P.A.I. Aug. 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.
11/169,738 06/30/2005 Patrick Yananton 1747 4053
33055 7590 08/10/2011
PATENT, COPYRIGHT & TRADEMARK LAW GROUP
4199 Kinross Lakes Parkway
Suite 275
RICHFIELD, OH 44286
EXAMINER
ANDERSON, CATHARINE L
ART UNIT PAPER NUMBER
3764
MAIL DATE DELIVERY MODE
08/10/2011 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 PATRICK YANANTON
____________________

Appeal 2010-005027
Application 11/169,738
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, MICHAEL C. ASTORINO, and
JAMES P. CALVE, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005027
Application 11/169,738
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
19. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to an open pore fibrous web. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An open pore fibrous web having a plurality of particles of
an active ingredient within the pores of the web, an adhesion
enhancing agent bonded to the fibers of said fibrous web and
said plurality of particles of an active ingredient, whereby said
particles are bonded to said fibers by said adhesion enhancing
agent.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hansen
Johnston
US 5,538,783
US 5,599,334
Jul. 23, 1996
Feb. 4, 1997

REJECTIONS
Claims 1-9 and 11-16 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Hansen.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hansen and Johnston.
Claims 17-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hansen.

Appeal 2010-005027
Application 11/169,738
3
OPINION
The Examiner’s rejections of claims 1, 2, 4-7, 11, 12, and 15-19 are
affirmed.
The rejection of claims 1-9 and 11-16 under 35 U.S.C. § 102(b) as
being anticipated by Hansen are argued under the same subheading1 but
Appellant provides separate remarks regarding claims 4, 6, 13 and 142.
Although the claims are not mentioned by number, Appellant also provides
remarks relevant to the limitations “high loft,” appearing only in claim 3,
and “microencapsulated” appearing only in claim 8.

1 37 CFR § 41.37(c)(1)(vii) provides:
Each ground of rejection must be treated under a separate
heading. For each ground of rejection applying to two or more
claims, the claims may be argued separately or as a group.
When multiple claims subject to the same ground of rejection
are argued as a group by appellant, the Board may select a
single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.
Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument
that the Board must consider the patentability of any grouped
claim separately. Any claim argued separately should be placed
under a subheading identifying the claim by number. Claims
argued as a group should be placed under a subheading
identifying the claims by number. A statement which merely
points out what a claim recites will not be considered an
argument for separate patentability of the claim.
2 Appellant also addresses claim 10 under in this section of the brief even
though, as the Examiner points out, claim 10 is rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hansen and Johnston and not 35 U.S.C.
§ 102(b) as being anticipated by Hansen.
Appeal 2010-005027
Application 11/169,738
4
Regarding the rejection of claims 1-9 and 11-16 under 35 U.S.C.
§ 102(b) as being anticipated by Hansen, Appellant argues that “Hansen
differs in all aspects from the present invention as described and claimed.”
App. Br. 7. Appellant provides an elaborate discussion regarding the
differences between the material described in Appellant’s Specification and
Hansen’s material without pointing to any specific language in claim 1 that
distinguishes the subject matter Appellant seeks patent protection for from
Hansen. App. Br. 7-10; Reply Br. 1-7. It is well established that limitations
not appearing in the claims cannot be relied upon for patentability. In re Self,
671 F.2d 1344, 1348 (CCPA 1982). “[T]he name of the game is the claim.”
In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998).
The Examiner finds Hanson’s discloses in column 3, lines 16-23, “a
fibrous web . . . having a plurality of particles of an active ingredient
adhered to the fibers by an adhesion enhancing agent.” Ans. 3. Appellant’s
arguments are based on the fact that Hansen employs either hydrogen or
coordinate covalent bonds to attach particles to a binder, read by the
Examiner as the claimed “adhesion enhancing agent,” which, in turn, forms
hydrogen bonds with the fibers. App. Br. 8-9; Reply Br. 2-7. In contrast, in
Appellant’s preferred embodiment the particles of an active ingredient do
not rely upon a chemical reaction to adhere to the fibers. Id. In order for
claim 1 to distinguish over Hansen we would need to interpret an “adhesion
enhancing agent” as excluding a substance that enhances the ability of a
material to form chemical bonds, essentially excluding chemical adhesion
from the meaning of the term “adhesion.” We would also need to interpret
“bonded” as meaning specifically non-chemically bonded.
[T]he PTO applies to the verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary
Appeal 2010-005027
Application 11/169,738
5
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). To read a claim in light
of the specification one must interpret limitations explicitly recited in the
claim, without reading limitations from the specification into the claim to
thereby narrow the scope of the claim by implicitly adding disclosed
limitations that are not recited in the claim. In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969). Although the claims are interpreted in light of the
specification, limitations from the specification must not be read into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). An applicant
is entitled to be his or her own lexicographer and may rebut the presumption
that claim terms are to be given their ordinary and customary meaning by
clearly setting forth a definition of the term that is different from its ordinary
and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).
Although the examples provided in Appellant’s Specification do not
employ chemical bonds, the Specification does not expressly define the term
“adhesion” as excluding adhesion by a chemical bond. Nor does the
Specification expressly define “bonded” to mean without a chemical bond.
Adhesion can refer to merely the sticking together of surfaces or parts and
bonded simply means connected or held together. See ACADEMIC PRESS
DICTIONARY OF SCIENCE AND TECHNOLOGY (1992) available at
http://www.credoreference.com/entry/apdst/adhesion. These definitions do
not require nor preclude the use of chemical bonds.3 Thus, given their

3 Also implying “adhesion” may or may not involve chemical bonds, IUPAC
Compendium of Chemical Terminology (2007) defines “Chemical
Appeal 2010-005027
Application 11/169,738
6
broadest reasonable interpretation, “adhesion” and “bonding” may involve
the use of hydrogen or coordinate covalent bonds as is done by Hansen.
Thus, we agree with the Examiner that Hansen discloses each and every
limitation and therefore anticipates claim 1. See Verdegaal Bros. v. Union
Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
Regarding the rejection of claim 4, we adopt the Examiner’s response
(Ans. 5-6) to Appellant’s argument as our own. The prior art only needs to
disclose one member of the Markush group to meet the claim.
Regarding the rejection of claims 17-19, the Examiner did not take
official notice of facts not in the record, as Appellant suggests. (App. Br. 14-
16). Rather, the Examiner found that selecting a particular particle size for a
given web amounts to the optimization of a result-effective variable, the
optimization of which would have been obvious to one having ordinary skill
in the art. Ans. 4-5; See, e.g., MPEP 2144.05. Hansen demonstrates that it
was known in the art that absorbency is directly related to the amount of
superabsorbent material. Col. 9, ll. 47-50. Hansen also demonstrates that
superabsorbent material was commercially available in particles of various
sizes col. 9, l. 63 – col. 10, l. 11. Thus choosing a particle size for a
particular web will directly affect the amount of superabsorbent material that
can be included in that web and therefore the overall absorbency. Appellant
has not persuasively argued that the Examiner’s position is incorrect.

The Examiner’s rejection of claims 3, 8-10, 13 and 14 are reversed.

Adhesion” as “[a]dhesion in which two bodies are held together at an
interface by ionic or covalent bonding between molecules on either side of
the interface.” available at .
Appeal 2010-005027
Application 11/169,738
7
“[H]igh loft4” recited in claim 3 is expressly defined in the
Specification to mean “a term for a fiber structure containing more air than
fiber. That is, the volume of the open cells represents more than half of the
volume of the fiber structure.” Spec. 6, para. [0031]. Just because Hansen’s
material can be described using the same adjective, “low-density,” that
Appellant uses to describe a “high loft” material, does not necessarily mean
that Hansen’s material meets the definition of “high loft” provided by
Appellant’s Specification. “[T]he PTO must apply the broadest reasonable
meaning to the claim language, taking into account any definitions presented
in the specification.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) quoting In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002).
Thus we agree with Appellant that the Examiner erred in rejecting claim 3,
and therefore, claims 9 and 10 which depend therefrom, by failing to
consider the definition of “high loft” provided in the Specification. App. Br.
11.
The Examiner doesn’t specifically mention “microencapsulated” as
recited in claim 8, but cites Example VIII of Hansen as disclosing the
“carrier compound” of claim 13. Ans. 3. We read claim 13 as similar in
scope and directed to, for example, the embodiment depicted in figures 5
and 6 of Appellant’s Specification. Hansen’s Example VIII includes fibers, a
binder and superabsorbent particles which are read by the Examiner as
“particles of an active ingredient” for purposes of parent claim 1. Hansen,
col. 22, ll. 10-43; Ans. 3. Hansen’s Example VIII does not disclose that the
superabsorbent particles are microencapsulated or that they sorb on a carrier
compound, as claimed. Nor does Hansen’s Example VIII disclose that an

4 We interpret this term to refer to “highloft,” without the space, as used in
the Specification.
Appeal 2010-005027
Application 11/169,738
8
active ingredient sorbs on the superabsorbent particles. Thus the Examiner
erred in rejecting claims 8, 13 and claim 14 which depends from claim 13, as
anticipated by Hansen since the Examiner failed to establish that Hansen
discloses each and every element of these claims. App. Br. 10-11.

DECISION
The Examiner’s rejections of claims 1, 2, 4-7, 11, 12, and 15-19 are
affirmed.
The Examiner’s rejection of claims 3, 8-10, 13 and 14 are reversed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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