Ex Parte Yhlen et al

Patent Trial and Appeal Board

Jun 27, 2016

12514911 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/514,911 05/14/2009
105718 7590 06/29/2016
SCA Hygiene Products AB
c/o Buchanan Ingersoll & Rooney, PC
1737 King Street, Suite 500
Alexandria, VA 22314
FIRST NAMED INVENTOR
Birgitta Yhlen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1018798-000534 4853
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
06/29/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BIRGITTA YHLEN, CATARINA LINNER,
JAN PETRUSSON, and JAN WASTLUND-KARLSSON
Appeal2014-001331
Application 12/514,911
Technology Center 3700
Before ANNETTE R. REIMERS, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Birgitta Yhlen et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner's decision rejecting claims 1-16 and 19-25. 1 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 An oral hearing was conducted on June 16, 2016.
Appeal 2014-001331
Application 12/514,911
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to an absorbent article. Spec. 1
(Title). Claim 1 is illustrative of the claims on appeal and is reproduced
below.
1. Absorbent article comprising a topsheet, a backsheet and
an absorbent core enclosed between said topsheet and said
backsheet, wherein said absorbent core comprises
(i) an anti-bacterial agent or, in an amount of at least
0.01 g per g dry absorbent core, at least one alkali metal or
alkaline earth metal chloride, and
(ii) an organic zinc salt.
Claims App. 1.
REFERENCES RELIED ON BY THE EXAMINER
Paul
Sun
Rune man
US 6,217,890 Bl
US 6,852,904 B2
US 2004/0227008 Al
Apr. 17, 2001
Feb. 8,2005
Nov. 18, 2004
THE RFJECTIONS ON APPEAL
(I) Claims 1, 2, 6, 11, 16, and 19--25 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Sun.
(II) Claims 1, 3-16, 19, 20, and 23-25 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Runeman and Sun.
(III) Claims 2, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Runeman, Sun, and Paul.
ANALYSIS
Rejection (I)
The Examiner finds that Sun discloses all the features recited in claim
1. Final Act. 4. In this regard, the Examiner finds that Sun teaches "at least
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Application 12/514,911
one alkali metal or alkaline earth metal chloride (col. 4, lines 39-42; col. 6,
lines 1-32), and (ii) an organic zinc salt (col. 4, lines 39-42; col. 6, line 66
through col. 7, line 2)." Final Act. 4. Summarizing the Examiner's findings
on this point, the Examiner states, "Sun teaches suitable chelating agents
include alkali metal salts (col. 6, lines 1--4). Therefore, Sun teaches the
claimed alkali metal and an organic salt." Final Act. 2 (emphasis added).
Appellants argue that the Examiner has not properly construed feature
(i) in claim 1, and that this feature is not satisfied by alkali metal per se. See
Appeal Br. 4--8. In this regard, Appellants assert "the only reasonable
interpretation of 'at least one alkali metal or alkaline earth metal chloride' is
'at least one alkali metal chloride or at least one alkaline earth metal
chloride."' Appeal Br. 6. In support of this argument, Appellants point to
various portions of the Detailed Description and to dependent claim 11,
which recites "[the absorbent] article according to claim 1, wherein the
absorbent core comprises the alkali metal chloride, wherein the alkali metal
chloride is sodium chloride." Claims App. 2 (emphasis added).
We agree with Appellants' interpretation of the language "at least one
alkali metal or alkaline earth metal chloride" in claim 1 to require "at least
one alkali metal chloride or at least one alkaline earth metal chloride."
Claim 11 depends directly from claim 11 and refers to "the alkali metal
chloride" the first time alkali metal chloride is mentioned. 2 Further, as in
claim 1 presently on appeal, the language "at least one alkali metal or
alkaline earth metal chloride" appears in original claim 1, and original claim
11 supports Appellants' interpretation as well. See Specification 26-27; see
2 The Final Action does not include a rejection of claim 11 under 35 U.S.C.
§ 112, second paragraph, for lack of antecedent basis for reciting "the alkali
metal chloride." See Final Act. 2--4.
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Application 12/514,911
also Preliminary Amendment (filed May 14, 2009). Thus, we disagree with
the Examiner's finding that Sun's disclosure of alkali metal satisfies the
requirement for "at least one alkali metal or alkaline earth metal chloride" in
claim 1.
Also in relation to feature (i) in claim 1, on page 4 of the Final Action,
the Examiner finds that Sun teaches "an absorbent core 25 enclosed between
the topsheet and the backsheet, wherein the absorbent core comprises (col. 7,
lines 10-15) (i) an antibacterial agent ((col. 2, lines 24--27; col. 4, lines 43-
48)." (Emphasis added). In the Answer, the Examiner reiterates this finding
(see Ans. 5), and further states, "even if one is persuaded that the claim is
interpreted to mean an alkali metal chloride, Sun still anticipates the claim in
that it teaches an antibacterial agent in the form of an organic acid (col. 4,
lines 45--47)" (Ans. 12). Thus, the Examiner finds that one of the alternative
substances recited in feature (i) of claim 1 is taught by Sun, and this would
satisfy the requirements of feature (i) regardless of whether the "alkali
metal" claim limitation in dispute should be interpreted as Appellants argue.
With respect to this alternative, Appellants assert that the acid to
which the Examiner refers is present only temporarily in Sun and not while
feature (ii) of claim 1 is present. See Reply Br. 3-5. Specifically,
Appellants state, "There is not a disclosure of both an organic zinc salt and
an organic acid. The organic acid relied upon by the Examiner is what is
transformed into the organic zinc salt." Reply Br. 5. As noted above, the
Examiner explains, in the Final Action, the basis for finding that Sun
discloses an absorbent core comprising an antibacterial agent. See Final Act.
4. However, Appellants do not provide arguments on this point in the
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Application 12/514,911
Appeal Brief 3 See Appeal Br. 4--8. Appellants provide no good cause for
their late inclusion of this new argument. See Reply Br. 3-5. Accordingly,
we find these new arguments to be untimely, as they are not responsive to
any new position raised in the Examiner's Answer, and we do not consider
them for the purposes of this appeal. See 37 C.F.R. § 41.41(b)(2) (2015)
("Any argument raised in the reply brief which was not raised in the appeal
brief, or is not responsive to an argument raised in the examiner's answer ...
will not be considered by the Board for purposes of the present appeal,
unless good cause is shown."). Consequently, based on the Examiner's
finding that Sun satisfies the requirements of feature (i) in claim 1 by
disclosing the anti-bacterial agent, we sustain the Examiner's rejection of
claim 1 as anticipated by Sun. In the Appeal Brief, Appellants do not make
separate arguments against Rejection (I) for any of claims 2, 6, 11, 16, and
19-25. See Appeal Br. 8 (stating "Claims 19 and 23 are independently
patentably [sic] for similar reasoning"). Thus, for the same reasons
discussed above with respect to the rejection of claim 1 as anticipated by
Sun, we likewise sustain the Examiner's rejection of claims 2, 6, 11, 16, and
19-25 as anticipated by Sun.
3 Although Appellants assert, generally, that Sun does not teach feature (i)
(see Appeal Br. 8), this general assertion does not amount to an argument
relating specifically to the Examiner's finding that Sun teaches an anti-
bacterial agent (Final Act. 4). See In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (holding that the Board had reasonably interpreted the same
language in the prior rule under 37 C.F.R. § 41.37(c)(l)(vii) (2004) as
requiring "more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art").
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Application 12/514,911
Claim 11and23-25
Appellants make arguments for claims 11 and 23-25 in the Reply
Brief (see Reply Br. 3) that were not presented in the Appeal Brief (see
Appeal Br. 4--8) without showing good cause for why these arguments were
not presented there. As discussed above, we do not address such untimely
arguments. See 37 C.F.R. § 41.41(b)(2) (2015).
Rejection (II)
The Examiner finds that Runeman discloses most of the features
required by claim 1, but does not explicitly teach an odor control agent as
claimed on the core of an absorbent article. See Final Act. 7-8.
Nonetheless, the Examiner finds that "Runeman also teaches the agent can
be present on any surface of the absorbent article (paragraph 003 3, 0051 [)]
which the examiner interprets to include the absorbent core," and "Sun
teaches an absorbent core comprising the same composition for odor control
purposes." Final Act. 8. The Examiner reasons, "[ o ]ne having ordinary skill
in the art at the time the invention was made would have been motivated to
modify the odor control agent of Runeman so that it can be incorporated into
the core for the benefits Sun teaches." Final Act. 8.
Appellants argue that Runeman teaches that it is important to keep the
lotion (agent) on the surface of the article, and that a person of ordinary skill
in the art reading Runeman would not include the lotion in the core as
recited in claim 1. See Appeal Br. 9-11 (referring to Runeman i-fi-f 14, 29).
In response, the Examiner states that "although Runeman teaches a
topsheet application, Runeman does suggest various modes of operation of
the invention and variations and changes may be made without departing
from the spirit of the invention (paragraph 0106)," and the Examiner
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reiterates that "Runeman additionally teaches the composition can be applied
to any surface of the absorbent article." Ans. 13.
We agree with Appellants on this issue. Runeman teaches that its
lotion is sprayed as an aerosol onto the absorbent article. See Runeman i-fi-13,
11. As for whether this lotion should be applied to the absorbent core,
Runeman states:
The fine droplets from the aerosol which lie in the
periphery of the sprayed string can easily be sucked down into
the absorbent core by the capillary forces of the absorbent core
or an acquisition layer. This reduces the absorbent capacity
and the acquisition rate of the absorbent article. Accordingly,
it is important to keep the lotion on the surface of the absorbent
article.
Runeman i-f 14 (emphasis added). Thus, Runeman teaches that application
of the lotion in the core should be avoided, as it reduces the absorbent
capacity of the article. Runeman takes measures to prevent this reduction in
absorbent capacity. See Runeman i129, 53. Accordingly, we find
Appellants' arguments on this point to be persuasive, and we do not sustain
the Examiner's rejection of claim 1 as unpatentable over Runeman and Sun.
For the same reason, we do not sustain the Examiner's rejection of
independent claims 19 and 23 as unpatentable over Runeman and Sun.
Claims 3-16, 20, 24, and 25 each depend from one of claims 1, 19, and 23,
and we therefore do not sustain the Examiner's rejection of these claims as
unpatentable over Runeman and Sun.
Re} ection (III)
The Examiner's use of Paul does not remedy the deficiency discussed
above regarding the Examiner's proposed combination of Runeman and
Sun. See Final Act. 11. Accordingly, we do not sustain the Examiner's
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Application 12/514,911
rejection of claims 2, 21, and 22 as unpatentable over Runeman, Sun, and
Paul.
DECISION
(I) We affirm the Examiner's rejection of claims 1, 2, 6, 11, 16, and
19-25 as anticipated by Sun.
(II) We reverse the Examiner's rejection of claims 1, 3-16, 19, 20,
and 23-25 as unpatentable over Runeman and Sun.
(III) We reverse the Examiner's rejection of claims 2, 21, and 22 as
unpatentable over Runeman, Sun, and Paul.
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)(l )(iv).
AFFIRMED-IN-PART
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