Ex Parte Lopez Villanueva et al

Patent Trial and Appeal Board

Jun 10, 2016

13509951 (P.T.A.B. Jun. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/509,951 05/15/2012
4743 7590 06/14/2016
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
Francisco Javier Lopez Villanueva
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.
29827/46976 5239
EXAMINER
RIOJA, MELISSA A
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
06/14/2016 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCISCO JAVIER LOPEZ VILLANUEVA,
MARKUS LINSENBUHLER, MATTHIAS WEISMANTEL, and
BERND SIEGEL
Appeal2015-000999
Application 13/509,951
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-10, 12, and 15-19. We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part and enter a new ground of rejection
pursuant to our authority under 3 7 C.F .R. § 41. 50(b).
1 We cite to the Specification ("Spec.") filed May 15, 2012; Final Office
Action ("Final Act.") mailed Nov. 8, 2013; Advisory Action ("Adv. Act.")
mailed Feb. 24, 2014; Examiner's Answer ("Ans."); and Appellants' Appeal
Brief ("App. Br.") and Reply Brief ("Reply Br.").
2 Appellants identify BASF SE as the real party in interest. App. Br. 3.
Appeal2015-000999
Application 13/509,951
BACKGROUND
The subject matter involved in this appeal relates to water-absorbing
polymer particles and processes for preparing them. Spec 1. Claims 1 and
10 illustrate the subject matter on appeal and are reproduced from the
Claims Appendix of the Appeal Brief as follows:
1. A process for producing water-absorbing polymer
particles by polymerizing a foamed aqueous monomer solution
or suspens10n compnsmg
a) at least one ethylenically unsaturated monomer which
bears an acid group and has been neutralized to an extent of 25
to 95 mol%,
b) at least one crosslinker,
c) at least one initiator, and
d) at least one surfactant,
the monomer solution or suspension being polymerized
to a polymeric foam and predried to a water content of 5 to
30%, by weight, which comprises subsequently grinding the
predried polymeric foam; drying the resulting water-absorbing
polymer particles, and classifying the resulting water-absorbing
polymer particles.
10. A process for producing water-absorbing polymer
particles by polymerizing an aqueous monomer solution or
suspens10n compnsmg
a) at least one ethylenically unsaturated monomer which
bears an acid group and has been neutralized to an extent of 25
to 95 mol%,
b) at least one crosslinker, and
c) at least one initiator,
the monomer solution or suspension being polymerized
and dried, wherein the monomer solution or suspension
comprises water-absorbing polymer particles based on a ground
polymeric foam having a particle size of less than 250 µm.
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Application 13/509,951
REJECTIONS
The Examiner maintained the following grounds of rejection: 3
I. Claims 10, 12, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dahmen4 and Ishizaki. 5
II. Claims 1-9, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ishizaki and Graham. 6
III. Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ishizaki, Graham, and Dahmen.
DISCUSSION
I
Appellants neither refer to nor particularly argue against the
Examiner's rejection of claims 10, 12, 16, and 17 as unpatentable over
Dahmen and Ishizaki. 7 As such, Appellants do not persuade us of reversible
error contained in Rejection I, which we summarily sustain.
3 Ans. 2-9; Adv. Act. 2-6.
4 US 5,455,284, issued Oct. 3, 1995 ("Dahmen").
5 US 6,254,990 Bl, issued Jul. 3, 2001 ("Ishizaki").
6 US 5,385,983, issued Jan. 31, 1995 ("Graham").
7 Each of claims 12, 16, and 17 depends from claim 10, which is
independent. Appellants' incorrectly caption these claims as having been
rejected based on Ishizaki and Graham. App. Br. 10. However,
notwithstanding an apparent clerical error in the Advisory Action, see Adv.
Act. 5, the Examiner's articulated findings and obviousness determinations
concerning these claims plainly and consistently were based on Dahmen and
Ishizaki, not Ishizaki and Graham. Final Act. 9-11; Adv. Act. 5-6; Ans. 7-
9. See also Ans. 10, n. 1 (advising Appellants that claim 10 is rejected over
Dahmen and Ishizaki, not Ishizaki and Graham). Appellants do not
separately argue claim 10, 12, 16 or 17 in their Appeal Brief, App. Br. 10-
16, and their argument directed to claim 10 raised for the first time in the
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Application 13/509,951
II
With regard to Rejection II, Appellants argue that the Examiner erred
in determining that one of ordinary skill would have found it obvious to add
a post-grinding drying step to Graham's particle formation process where
Graham discloses that the material already is dried to the desired extent prior
to grinding. App. Br. 15. We agree.
We need only discuss claim 1, which is the sole independent claim
subject to Rejection II. That claim requires, inter alia, (i) drying a polymer
foam to a water content of 5 to 30 wt. %, (ii) grinding the dried polymer
foam to produce particles, and (iii) drying the so-produced particles. The
Examiner found, and Appellants do not dispute, that Ishizaki discloses (i)
and (ii); Ishizaki's process includes the steps of drying a polymer foam to a
water content of 15 wt. % or less, followed by pulverizing/grinding the so-
dried polymer foam to obtain particles. Compare Ans. 3 (citing Ishizaki col.
9, 1. 28-col. 10, 1. 32; Production Example 1) with App. Br. 12 (comparing
Ishizaki to the claimed invention).
The Examiner acknowledged that Ishizaki does not dry the particles
after they are formed by grinding/pulverization. See Ans. 12. For that
recitation, the Examiner relied on Graham for the proposition that two-stage
particle drying was known. Ans. 4, 10-11. In Graham, hydro gel particles
are dried, optionally in two stages, prior to being reduced to smaller
particles. Graham col. 7, 11. 19--43. However, as Appellants' correctly note,
App. Br. 11-12, Graham, like Ishizaki, discloses completion of the drying
Reply Brief does not address Dahmen or the Examiner's rejection of that
claim over Dahmen and Ishizaki, Reply Br. 2.
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Application 13/509,951
stages prior to grinding. Graham col. 7, 11. 41-43 ("Following completion of
drying, the pieces are more fully sized to form particles."). Thus, we agree
with Appellants that neither Graham nor Ishizaki teaches "distinct drying
steps with a step of grinding a predried foam between the drying steps."
App. Br. 13.
Neither are we persuaded by the Examiner's reasoning, Ans. 15, that
"minimizing water in the final particles [in Ishizaki] would be desirable so
that the particles have the capacity to absorb more water when they are used
as water-absorbing agents." Ishizaki's particles to which the Examiner
refers in the rejection are not the final particles, nor are they directly used as
water-absorbing agents. Rather, Ishizaki discloses these as intermediate
particles, which are subjected to further processing including simultaneous
surface-crosslinking and pulverization in the presence of water and organic
solvent. Ishizaki col. 20, 11. 25-37; Example 1. Although Ishizaki teaches
that a particular degree of dryness is desired prior to proceeding to the
surface-crosslinking/pulverization phase, we are persuaded by Appellants'
argument, App. Br. 15, that Ishizaki achieves that degree of dryness prior to
forming the particles through grinding. In support, Appellants direct our
attention to column 10, lines 11-32, in Ishizaki where it is stated that the
disclosed pre-grinding drying stage achieves a solid content "preferably
above 85 weight%, more preferably above 90 weight%, still more
preferably above 95 weight%." Appellants also point to Ishizaki's
Production Example 1 in which the pre-grinding drying step achieved a solid
content of95.4 weight%. Id. at 10-11.
For the foregoing reasons, we are persuaded that the Examiner has not
demonstrated by a preponderance of the evidence that one of ordinary skill
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would have had a reason to add a post-grinding drying step in Ishizaki.
Accordingly, we do not sustain Rejection II.
III
Because Rejection III is principally based on the same findings and
determinations underlying Rejection II, we do not sustain this rejection for
the reasons set forth above in connection with Rejection II.
New Ground of Re} ection
Each of claims 7-9 is rejected on a new ground under 35 U.S.C.
§ 102(b) as unpatentable over Ishizaki.
Claim 7 recites, "[ w ]ater-absorbing polymer particles prepared by the
process of claim 1." App. Br. A-1. Claims 8 and 9 recite the particles of
claim 7 having "a centrifuge retention capacity of at least 10 gig," and "a
saline flow conductivity of at least 10 x 10-7 cm3s/g," respectively.
Each of claims 7-9 is a product-by-process claim. It is well-settled
that "[i]f the product in a product-by-process claim is the same as or obvious
from a product of the prior art, the claim is unpatentable even though the
prior product was made by a different process." In re Thorpe, 777 F.2d 695,
697 (Fed. Cir. 1985). Moreover, where "the claimed and prior art products .
. . are produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product." In re Best,
562 F.2d 1252, 1255 (CCPA 1977). See also In re Marosi, 710 F.2d 799,
803 (Fed. Cir. 1983) ("Where a product-by-process claim is rejected over a
prior art product that appears to be identical, although produced by a
different process, the burden is upon the applicants to come forward with
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Application 13/509,951
evidence establishing an unobvious difference between the claimed product
and the prior art product.").
Here, the Examiner found that Ishizaki discloses a process for making
water-absorbent polymer particles that includes the same materials and steps
as are recited in claim 1, except that Ishizaki dries the polymer foam only
prior to grinding. Ans. 2-3. Notwithstanding Ishizaki's omission of a post-
grinding drying step, Ishizaki achieves a water content of 15 weight percent
or less, which is within the range recited in claim 1. Id.; Ishizaki col. 10, 11.
11-15. Appellants do not dispute the foregoing findings, App. Br. 7-16;
Reply Br. 1--4, which we hereby adopt as our own. In light of these
disclosures in Ishizaki, we find that it is reasonable to presume the particles
formed by Ishizaki' s process result in particles meeting the requirements
recited in claim 7, and, absent persuasive evidence to the contrary, that
Ishizaki's particles inherently would have exhibited the properties recited in
claims 8 and 9. Accordingly, we find each of claims 7-9 to be anticipated
by Ishizaki and, therefore, unpatentable. 8
CONCLUSION
We sustain the rejection of claims 10, 12, 16, and 17 under 35 U.S.C.
§ 103(a).
8 Claim 15 recites a hygiene article comprising particles according to claim
7. Because the relied-upon particles in Ishizaki are described as an
intermediate product, which is subjected to further processing before being
incorporated into a hygiene article, we do not include claim 15 in the new
ground of rejection.
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Application 13/509,951
We do not sustain the rejection of any of claims 1-9, 15, 18, and 19
under 35 U.S.C. § 103(a).
We enter a new ground of rejection, rejecting claims 7-9 under
35 U.S.C. § 102(b).
DECISION
The Examiner's decision is affirmed-in-part and a new ground of
rejection entered.
TIME PERIOD FOR RESPONSE
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
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Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affinned rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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