Appeal 2007-0625
Application 09/969,299
the Examiner has done (Answer 7), is not sufficient to anticipate the recited
limitation. The Examiner’s finding that “the fabrics disclosed by the prior
art would be at least capable of performing said function ‘absorbent’” (id.)
does not bridge the gap between the claimed invention and the Trinh
disclosure sufficiently to support a rejection under § 102.
OBVIOUSNESS UNDER § 103(a)
The § 103(a) Issue
Appellants contend “there is no motivation or suggestion to combine
the Trinh . . . and Brown-Skrobot references to arrive at Applicants’ claim
1.” (Br. 16.) Appellants further contend that Trinh “teaches away from the
teachings and disclosure of the Brown-Skrobot reference,” as Trinh
“specifically state . . . that their composition is not for use on human skin,
especially when an antimicrobial preservative is present in the composition
because skin irritation can occur.” (Br. 18 (emphasis Appellants).)
The Examiner responds: The skilled artisan would have been
motivated to apply Trinh’s composition “to the absorbent tampon disclosed
by Brown-Skrobot . . . by the excellent results disclosed by Brown-Skrobot
(see example 1-11) for the antibacterial and anti-toxin effect of glycerol
monolaurate against gram-positive bacteria[] with an expectation to have a
tampon that controls vaginal odors, bacterial growth and reduce[s] the risk
of the incidence of Toxic Shock Syndrome (TSS).” (Answer 8-9.)
The Examiner responds to Appellants’ “teaching away” argument as
follows: While “Trinh . . . discloses that ‘The compositions are preferably
not used directly on human skin because the preferred preservative may
cause skin irritation,’” Trinh “discloses clearly that the composition can be
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