Ex Parte Ishizaki et al

Patent Trial and Appeal Board

Feb 19, 2016

11708342 (P.T.A.B. Feb. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111708,342 02/21/2007 Kunihiko Ishizaki
1609 7590 02/23/2016
Roylance, Abrams, Berdo
& Goodman, L.L. P.
PO Box 66372
Washington, DC 20035-6372
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.
53265 1527
EXAMINER
NUTTER, NATHAN M
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
02/23/2016 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):
docketing@roylance.com
jnorman@roylance.com
jcheung@roylance.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUNIHIKO ISHIZAKI and
KA TSUHIRO KAJIKA WA
Appeal2014-007369
Application 11/708,342
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
11, 14--17, 19,21--42,and44--51. Wehavejurisdiction. 35U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
STATEMENT OF CASE
Appellants 1 describe the present invention as "a process for
continuous production of water-absorbent resin product .... " Spec. 1:6-7.
1 According to the Appellants, the real party in interest is Nippon Shokubai
Co., Ltd. Of Osaka, Japan. App. Br. 1.
Appeal2014-007369
Application 11/708,342
The resin could be used, for example, in diapers. Id. at 15. Claims 11, 14--
17, 19, 21--42, and 44--51 are pending. Claims 11 and 17 are the only
pending independent claims, and we reproduce them below with emphasis
added to indicate key claim limitations:
11. A process for continuous production of a particulate
water-absorbent resin product in which a water-absorbent resin
is continuously produced via a classification step and a surface-
modifying step, said process comprising the steps of:
surface-modifying a water-absorbent resin obtained from
the classification step and comprising a water-swellable and
substantially water-insoluble crosslinked polymer having a
water-extractable component content of 0 to 50 mass %;
measuring at least one property of the resulting surface-
modified water-absorbent resin where the at least one property is
selected from the group consisting of absorption capacity
without load, absorption capacity under load, liquid
permeability, component content and particle diameter; and
changing a production condition in each of a pulverization
step, said classification step, and said surface-modifying step in
response to the resulting measurement of the at least one
property for the resulting surface-modified water-absorbent
resin,
and to obtain a yield of the water-absorbent resin per line
of not less than 20 t (metric tons)/day.
App. Br. 32 (Claims App.) (emphasis added).
1 7. A process for continuous production of a particulate
water-absorbent resin product comprising
continuously producing a water-absorbent resin via a
classification step and a surface-modifying step, and
measuring the particle diameter of the water-absorbent resin by
a laser diffraction scattering method in a dry manner, where the
water-absorbent resin has a water-swellable and substantially water-
insoluble crosslinked polymer having a water-extractable component
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Appeal2014-007369
Application 11/708,342
content of 0 to 50 mass %, wherein the water-absorbent resin has a
mass-average particle diameter of 300 to 600 µm and comprises
particles having a particle diameter of 850 to 150 µm when
determined by using a JIS-standard sieve in an amount of 95 to 100
mass%;
wherein the yield of the water-absorbent resin product per line
is not less than 20 t (metric ton)/day.
Id. at 33-34 (emphasis added).
REFERENCES
The Examiner relied upon the prior art below when rejecting the
claims on appeal:
US 6,254,990 B 1 July 3, 2001 Ishizaki et al.
(hereinafter "Ishizaki")
Hayashi et al.
(hereinafter "Hayashi")
US 2007/0225149 Al Sept. 27, 2007
REJECTIONS
The Examiner made the following rejections: 2
Rejection 1. The Examiner rejected claims 11, 16, 22-35, and 48-51
under 35 U.S.C. § 103 as unpatentable over Ishizaki. Final Act. 3.
Rejection 2. The Examiner rejected claims 11, 14-17, 19, 21--42, and
44-51under35 U.S.C. § 103 as unpatentable over Ishizaki and Hayashi.
Final Act. 6.
ANALYSIS
Rejection 1. The Examiner rejected independent claim 11 and
dependent claims 16, 22-3 5, and 48-51 as obvious over Ishizaki. Claim 11
2 The Examiner withdrew rejections pursuant to 35 U.S.C. § 112 and
35 U.S.C. § 102. Ans. 7. The Examiner also withdrew the rejection of
claim 17 as obvious under Ishizaki. Id.
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Appeal2014-007369
Application 11/708,342
requires "surface-modifying a water-absorbent resin" and then "measuring at
least one property of the resulting surface-modified water-absorbent resin."
Then, "in response to the resulting measurement of the at least one
property," the claim requires "changing a production condition in each of a
pulverization step, said classification step, and said surface modifying step."
We agree with Appellants that claim 11 requires a changing production
condition of each of these three steps. Reply Br. 2. The Examiner erred in
construing claim 11 as only requiring changing one production condition.
Ans. 8.
The Examiner did not find that Ishizaki discloses changing a
production condition of each of the three different steps (production,
pulverization, and classification) in response to a measurement of surface-
modified resin. The Examiner also did not articulate why changing a
precondition condition of all three different steps as a result of a
measurement of surface-modified resin would have been an obvious
modification of Ishizaki. Thus, we reverse the rejection of claim 11 as
obvious over Ishizaki. Because claims 16, 22-35, and 48-51 depend from
claim 11, we also reverse the rejection of these claims.
Rejection 2. The Examiner rejected claims 11, 14--17, 19, 21--42, and
44-51under35 U.S.C. § 103 as unpatentable over Ishizaki and Hayashi.
Hayashi relates to ceramics rather than absorbent resin production, and the
Examiner cites Hayashi "solely ... to show the measurement using laser
diffraction is known." Ans. 14. Thus, reference to Hayashi does not cure
deficiencies in the Examiner's analysis of claim 11 and Ishizaki.
Accordingly, we reverse this rejection with respect to claim 11 and claims
14--16, 22-36, and 48-51 (which depend on claim 11).
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Appeal2014-007369
Application 11/708,342
Claim 17 requires "measuring the particle diameter of the water-
absorbent resin by a laser diffraction scattering method in a dry manner."
Ishizaki does not teach laser diffraction. Hayashi only discusses laser
diffraction measurement of particles dispersed in water. Hayashi i-f 32.
Appellants explain that "[a]ttempting to measure the water-absorbent resin
particles in an aqueous dispersion ... would result in swollen hydrogel
particles such that a measurement of the swollen hydro gel particles would
not provide a measurement of the water-absorbent resin particles obtained
from the surface modifying step of the claimed invention." App. Br. 24.
The present record lacks any prior art demonstrating laser diffraction
scattering method performed "in a dry manner." The Examiner argues that
an artisan of ordinary skill would understand that the laser diffraction
disclosed in Hayashi could be used "in a dry manner" (Ans. 13-14), but the
record lacks evidence to support this position. Thus, we reverse the
rejection of claim 17 as obvious over the combination of Ishizaki and
Hayashi. Because claims 19, 21, 37--42, and 44--47 depend from claim 17,
we also reverse the rejection of these claims.
DECISION
For the above reasons, we reverse the Examiner's rejections of claims
11, 14--17, 19, 21--42, and 44--51 under§ 103.
REVERSED
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