Ex Parte Mehawej et al

Board of Patent Appeals and Interferences

Jun 2, 2009

11007470 (B.P.A.I. Jun. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BFOUAD D. MEHAWEJ
and MEUGENE R. SIMMONS
____________

Appeal 2009-000999
Application 11/007,470
Technology Center 1700
____________

Decided:1 June 03, 2009
____________

Before EDWARD C. KIMLIN, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our Decision of February 9, 2009

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000999
Application 11/007,470

(“Decision”), wherein we affirmed the Examiner's rejection of all the
appealed claims under 35 U.S.C. § 103(a) as being unpatentable over Luizzi
in view of Seika.
We have thoroughly reviewed the arguments set forth by Appellants
in their Request. However, we remain of the opinion that the Examiner
properly rejected the appealed claims under 35 U.S.C. § 103(a).
Appellants submit that we misunderstood their burden since they
“were not under an obligation to provide evidence of unexpected results
since the burden had not shifted to Appellants” (Request 6, penultimate
para.). However, as set forth in our Opinion, we are in full agreement with
the Examiner that the applied prior art establishes a prima facie case of
obviousness for the claimed article comprising a thermoplastic composition
comprising spherical superabsorbent polymer particles having a median
particle diameter of from 20 µm to 30 µm. As stated in our Opinion, “Luizzi
also expressly discloses that ‘[t]he superabsorbent material is preferably a
superabsorbent particle having an average particle size less than 150 µm (p.
4, ll. 32-34)” (Decision 3, last para.). Since the particle size range disclosed
by Luizzi totally encompasses the claimed range of 20-30 µm, Luizzi
establishes the prima facie obviousness of the claimed superabsorbent
polymer particles. In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974).
Accordingly, contrary to Appellants’ argument, they do shoulder the burden
of rebutting the prima facie case of obviousness with evidence of non-
obviousness, such as evidence of unexpected results.
While Appellants’ Declaration may have presented a single
comparison with superabsorbent polymer particles representative of the
closest prior art, we remain convinced that “the Declaration evidence is
2
Appeal 2009-000999
Application 11/007,470

hardly commensurate in scope with the degree of protection sought by the
appealed claims” (Decision 5, second para.). As stated in our Opinion,
[w]hile the appealed claims are sufficiently broad to
encompass a myriad of thermoplastic compositions
comprising a variety of block copolymers in varying
amounts, as well as superabsorbent polymer particles,
plasticizing particles and plasticizing oils in varying
amounts, the Declaration is limited to a single, specific
thermoplastic composition that is representative of the
claimed invention

(id.).
We also reject Appellants’ statement that our Decision reflects a
misunderstanding of Einstein’s equation. Although citation of Einstein’s
equation is not necessary for a finding of obviousness of the claimed subject
matter, Appellants have not demonstrated any error in our statement that the
equation indicates that the viscosity of a solution is directly proportional to
the particle size of the particles suspended therein. Appellants’ statement
that “Einstein’s equation states that for dilute solutions viscosity is
proportional to the number of particles and the size of the particles in the
solution” (Request 2, last para.) is, indeed, an acknowledgement that the
solution viscosity is directly proportional to the size of the particles in the
solution, as well as to the number of particles. Manifestly, a parameter may
be directly proportional to more than one other parameter.
In conclusion, based on the foregoing, Appellants’ Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making any change therein.

DENIED
3
Appeal 2009-000999
Application 11/007,470

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

ssl

H.B. FULLER COMPANY PATENT DEPARTMENT
1200 WILLOW LAKE BLVD.
P.O. BOX 64683
ST. PAUL, MN 55164-0683

4