Ex Parte Dairoku et al

Board of Patent Appeals and Interferences

Jun 28, 2011

11353238 (B.P.A.I. Jun. 28, 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.
11/353,238 02/14/2006 Yorimichi Dairoku 50685 3776
1609 7590 06/28/2011
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
06/28/2011 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 YORIMICHI DAIROKU, SHIN-ICHI FUJINO,
MOTOHIRO IMURA and SEIJI KATO
____________

Appeal 2010-002217
Application 11/353,238
Technology Center 1700
____________

Before CHARLES F. WARREN, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002217
Application 11/353,238

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 through 4, 9 through 12, 17, 19 through 25 and 27. We have
jurisdiction under 35 U.S.C. § 6.
Appellants’ invention relates “to a method for the production of a
water absorbent resin and to the resulting water absorbent resin.”
App. Br. 2. Claims 1 and 17 are illustrative:
1. A method for production of a water absorbent resin which
comprises:

a step of obtaining a polymer gel having a water
absorbing property,

a step of obtaining an agglomerated gel by adding an
aqueous fluid containing at least one additive selected from the
group consisting of thermal initiators, oxidizing agents and
reducing agents to the fine powder which is obtained in the
production of a water absorbent resin and has a weight average
particle diameter falling within the range of 10 to 150 µm,
wherein the amount of said aqueous fluid added is not less than
25 parts by weight but not greater than 150 parts by weight per
100 parts by weight of the fine powder, and

a step of drying while allowing said agglomerated gel
and said polymer gel to coexist, wherein a ratio (A/B) of the
solid content rate A (%) of the agglomerated gel to the solid
content rate B (%) of the polymer gel is not less than 1/3 but
not greater than 3 in said step of drying.

Appeal 2010-002217
Application 11/353,238

3
17. A water absorbent resin which comprises a polymer gel
having a water absorbing property and an agglomerated gel,
wherein said agglomerated gel consists of fine powders having
a weight average particle diameter falling within the range of
from 10 to 150 µm; ratio (A/B) of the solid content rate A (%)
of said agglomerated gel to the solid content rate B (%) of the
polymer gel is not less than 1/3 but not greater than 3, and the
amount of residual monomer is not lower than 0 but not higher
than 500 ppm.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Dairoku et al. US 6,458,921 B1 October 1, 2002
Kim WO 02/053605 July 11, 2002

Appellants, App. Br., request review of the following rejection from
the Examiner’s final office action:1
Claims 1-4, 9-12, 17, 19-25 and 27 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dairoku in view of Kim.2
OPINION
The prior art rejection
The dispositive issue on appeal is: Did the Examiner err in
determining that the combination of Dairoku and Kim would have led one
skilled in the art to form an agglomerated gel by the addition of an aqueous

1 The Examiner withdrew the rejection of claims 1-4, 9-12, 17, 19-25 and
27, rejected under 35 U.S.C. § 103(a) as being unpatentable over Dairoku in
view of Bailey. Ans. 3.
2 We note that the Examiner relied on the English equivalent of
WO 02/053605 to Kim (US 6,914,099 B2) in discussing the reference in the
rejection.
Appeal 2010-002217
Application 11/353,238

4
additive solution to reduce the residual monomer content as required by the
subject matter of independent claims 1 and 17?
We answer this question in the negative, therefore we affirm.
Appellants argue that neither Dairoku nor Kim form an agglomerated
gel as claimed. App. Br. 6, 7. According to Appellants, “[t]he agglomerated
gel within the ordinary meaning of the claimed invention refers to particles
that include multiple fine powders.” Id. at 7. The Examiner has pointed to a
specific portion of Dairoku (col. 11, ll. 33-49) where Dairoku forms a
particulate aggregate of a plurality of particles in the aqueous liquid. Ans. 8.
We are not persuaded by Appellants’ argument since Appellants have not
refuted the Examiner’s response.
Appellants also argue that Dairoku “does not disclose adding an
aqueous additive solution to fine particles of the water absorbent resin to
agglomerate the fines.” App. Br. 6. The Examiner is relying on Kim to
teach the addition of an additive to an aqueous solution to reduce the
residual monomer content by treating water absorbent particles. Ans. 8. We
find Appellants’ argument unpersuasive and agree with the Examiner that
the addition of Kim’s additive (peroxodisulfate) to the aqueous solution of
Dairoku to treat the particle aggregates will necessarily result in reduced
residual monomer content.
Appellants further argue that Dairoku “does not combine or mix
agglomerated fines containing an aqueous additive solution with a water
absorbing polymer gel and drying the agglomerated gel and the polymer gel
together where the solid content of the agglomerated gel and the solid
content of the polymer gel is within the claimed range” as claimed. App. Br.
Appeal 2010-002217
Application 11/353,238

5
6. Specifically, Appellants argue that the combination of Dairoku and Kim
does not disclose
the solid content ratio of the agglomerated gel and the polymer
gel of not less than 1/3 and not greater than 3 or adding an
amount of the aqueous fluid of not less than 25 parts by weight
and not greater than 150 parts by weight per 100 parts by
weight of the fine powder.
App. Br. 8-9.
We are unpersuaded by these arguments. Appellants’ statement that
Dairoku does not mix the aggregate powder with the polymer gel is
unsupported by the evidence. Further, the Examiner has pointed to specific
sections of Dairoku addressing the solid content ratio and the amount of
aqueous fluid used. Ans. 8. Appellants have not refuted the Examiner’s
position.
Appellants argue that Kim’s Examples 13-16 where only the polymer
gel is treated with the aqueous peroxodisulfate solution and Examples 17-20
where peroxodisulfate treated rehydrated and swollen fines are used show
“almost no difference between the residual monomer content in the two
Examples.” App. Br. 8 (emphasis omitted). We note that the Examples
referenced above illustrate two ways in which the additive can be added to
the polymer. Dairoku, col. 9, ll. 6-9. The Examiner relies on Examples 17-
20 to show that the resulting product of Kim will have residual monomer
content below 500 ppm. Ans. 9. We have considered Appellants’
arguments but are unpersuaded. Appellants have not adequately refuted the
Examiner’s position that Kim’s Examples 17-20 show that the use of an
additive (peroxodisulfate) will result in a product with a residual monomer
content below 500 ppm.
Appeal 2010-002217
Application 11/353,238

6
Appellants also argue that the examples in the Specification
“demonstrate that there is some interaction between the agglomerated gel
and the polymer gel when the agglomerated gel has the treating agent when
drying them together and that the interaction is not predictable or reasonably
expected.” App. Br. 12 (emphasis omitted). The Examiner responds that
the examples in the specification are not commensurate with the scope of the
present claims because the degree to which the residual monomer content is
lowered is dependent on the amount of peroxodisulfate added. However, the
resultant amount of residual monomer content is not recited in the present
claims. Ans. 12-13. We agree with the Examiner that the information
provided by the examples in the specification is insufficient evidence of
unexpected results.
Accordingly, we affirm the rejection of independent claims 1 and 17.
We address the dependent claims as follows.
Appellants argue that dependent “[c]laim 2 is not obvious for reciting
heating the aqueous fluid before adding to the fine powder in combination
with the process steps of claim 1.” App. Br. 18. We agree with the
Examiner that the primary reference Dairoku teaches the heating of the
aqueous liquid. Ans. 9.
Regarding dependent claims 3, 4, 11, 12, 19, 20, and 23 through 25,
identification of additional limitations of the claims is not in itself an
argument. See 37 C.F.R. § 41.37(c)(1)(vii).
Regarding dependent claims 9, 10, 21, 22 and 27, in addition to
merely pointing out additional limitations, Appellants provide a conclusory
statement that the combination of Dairoku and Kim does not disclose an
Appeal 2010-002217
Application 11/353,238

7
agglomerated gel. Appellants have not addressed the specific analysis by
the Examiner or the teachings of the prior art.
For the foregoing reasons and those presented by the Examiner, we
affirm the stated rejection.

ORDER

The rejection of claims 1through 4, 9 through 12, 17, 19 through 25
and 27 under 35 USC § 103(a) as unpatentable over the combined teachings
of Dairoku and Kim 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)(v).

AFFIRMED
bar