Ex Parte Qin et al

Board of Patent Appeals and Interferences

Mar 31, 2010

11153190 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JIAN QIN, SANDRA M. ROGERS,
MICHAEL J. NIEMEYER,
KENNETH R. JR. SCHUELER,
STEVEN M. HURLEY,
LAWRENCE H. SAWYER,
WHEI-NEEN HSU, MARK C. JOY,
SCOTT J. SMITH, MARKUS FRANK,
and NANCY B. LANGE
____________________

Appeal 2009-009911
Application 11/153,190
Technology Center 1700
____________________

Decided: March 31, 2010
____________________

Before MICHAEL P. COLAIANNI, JEFFREY T. SMITH, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 23, 25 through 28, 30
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through 32, and 34 through 62 which are all of the claims pending in the
above-identified application. We have jurisdiction pursuant to 35 U.S.C.
§ 6.
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal is directed to an absorbent structure.
Claim 1 is illustrative:
1. An absorbent structure comprising at least in
part a superabsorbent material comprising a crosslinked
superabsorbent polymer or combination of polymers
comprising from about 55 to about 99.9 weight percent
of polymerizable unsaturated acid group containing
monomers, the superabsorbent material having a
retention capacity (CRC) as determined by a Centrifuge
Retention Capacity Test of at lest about 25 g/g and a free
swell gel bed permeability (GBP) as determined by a
Free Swell Gel Bed Permeability Test of at least 575 x
10-9 cm2.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Kellenberger '335 5,149,335 Sep. 22, 1992
Smith 5,462,972 Oct. 31, 1995
Kellenberger '461 EP 0 339 461 A1 Nov. 2, 1989
Johnson WO 95/11932 May 4, 1995

The Examiner maintains the following rejections1, 2:

1 As is apparent from pages 5 through 8 of the Final Rejection (mailed on
Mar. 19, 2008) and pages 2, 3, and 6 of the Answer, the Examiner has
withdrawn both of the § 102(b)/§103(a) rejections of claims 15-17 and 38-40
over Johnson and over Smith. In addition, the Examiner entered new
grounds of rejection of claims 15-17 and 38-40 under § 103(a) over Johnson
and Kellenberger '461 and over Smith and Kellenberger '461.
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1) Claims 1-14, 18-23, 25-28, 30-32, 34-37, and 41-62 under
35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103(a) over
Johnson;
2) Claims 1-23, 25-28, 30-32, and 34-61 under 35 U.S.C. § 102(b) or,
in the alternative, under 35 U.S.C. § 103(a) over Kellenberger '335;
3) Claims 1-14, 18-23, 25-28, 30-32, 34-37, and 41-61 under 35
U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103(a) over Smith;
4) Claims 15-17 and 38-40 under 35 U.S.C. § 103(a) over Johnson
and Kellenberger '461; and
5) Claims 15-17 and 38-40 under 35 U.S.C. § 103(a) over Smith and
Kellenberger '461.

REJECTION (1): The rejection under § 102 or § 103 over Johnson

The § 102 rejection
ISSUE
Did the Examiner err in finding that Johnson teaches “a
superabsorbent material comprising a crosslinked superabsorbent polymer or
combination of polymers comprising about 55 to about 99.9 weight percent
of polymerizable unsaturated acid group containing monomers” as required
by claims 1, 23, 60, 61, and 62? We decide this issue in the affirmative.

PRINCIPLE OF LAW
As stated in Net MoneyIN, Inc. v. VeriSign, Inc.:

2 We vacate Rejections (2), (3), and (5) because these rejections are
cumulative to Rejections (1) and (4).

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[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the
claim, it cannot be said to prove prior invention of the thing claimed
and, thus, cannot anticipate under 35 U.S.C. § 102.
. . .

differences between the prior art reference and a claimed
invention, however slight, invoke the question of obviousness, not
anticipation. . . . see also In re Arkley, 59 C.C.P.A. 804, 455 F.2d 586,
587 (1972) (“[R]ejections under 35 U.S.C. § 102 are proper only
when the claimed subject matter is identically disclosed or described
in the prior art.” (emphasis and internal quotation marks omitted)).

545 F.3d 1359, 1371 (Fed. Cir. 2008).

In addition, as stated in Atofina v. Great Lakes Chem. Corp.,
although there is a slight overlap [i.e., the prior art's range of 0.001 to
1.0 percent slightly overlaps the claimed range of 0.1 percent to 5.0
percent], no reasonable fact finder could determine that this overlap
describes the entire claimed range with sufficient specificity to
anticipate this limitation of the claim. The ranges are different, not
the same. . . . the disclosure of a 0.001 to 1.0 percent range is not a
disclosure of the end points of that range. Thus, there is no
anticipation.

441 F.3d 991, 1000 (Fed. Cir. 2006).

FINDINGS OF FACT
1. The Specification discloses that "[t]he crosslinked superabsorbent
polymer is obtained by the initial polymerization of from about 55 to
about 99.9 wt. percent of polymerizable unsaturated acid group
containing monomers. Suitable monomers include those containing
carboxyl groups, such as acrylic acid." (Spec. ¶ [0037]).
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2. Appellants do not specifically dispute the Examiner's finding that
JOHNSON et al. discloses a particulate polymeric materials which is
a partially neutralized polymer of an ethylenically unsaturated
carboxylic monomer cross linked by a tryethylenic [sic] or higher
ethylenic cross linking agent. (Abstract; page 2, lines 24-28) . . . .
The polymerization is generally conducted on aqueous
monomer solution having a monomer content in the range 25 to 60%.
(Page 7, lines 11-13).

(Compare Ans. 3-4 with App. Br. 5-8 and 15-19, and Reply Br. 1-8).
In one of the sections relied upon by the Examiner, Johnson teaches that the
"polymeric material has been obtained by copolymerisation [sic] of
monoethylenically unsaturated carboxylic monomer and a polyethylenically
unsaturated cross linking agent . . ." (Johnson, p. 2, ll. 24-26). In that
regard, Johnson teaches that "[t]he monoethylenically unsaturated carboxylic
monomer is generally acrylic acid . . . It can be copolymerized with other
water soluble monomers but generally the polymer is a homopolymer of
acrylic acid." (Johnson, p. 6, ll. 29-33).

ANALYSIS AND CONCLUSION
Appellants argue that "it cannot be assumed that simply because two
superabsorbent polymers have similar starting materials . . . they will
inherently (i.e., necessarily) have the same properties [e.g., the claimed
amount of monomer]." (App. Br. 7). We agree.
The Examiner has not specifically identified an embodiment in
Johnson that teaches, inter alia, a crosslinked superabsorbent polymer or
combination of polymers that comprises from about 55 to about 99.9 weight
percent of polymerizable unsaturated acid group containing monomers as
required by claims 1, 23, 60, 61, and 62. (See generally, Ans. 3-5).
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In this regard, while Johnson teaches that polymerization is conducted
in a solution having a monomer, which may be a monoethylenically
unsaturated carboxylic monomer such as acrylic acid (polymerizable
unsaturated acid group containing monomers), in the amount of 25 to 60%,
Johnson does not disclose within the four corners of the document all of the
claimed limitations arranged in the same way as recited in the claims (i.e.,
the limitation "about 55 to about 99.9 weight percent of polymerizable
unsaturated acid group containing monomers" as recited in the claims 1, 23,
60, 61, and 62). This difference in polymerizable unsaturated acid group
containing monomers, "however slight, invoke[s] the question of
obviousness, not anticipation." Net MoneyIN, 545 F.3d at 1371.
In addition, although Johnson discloses a range having an end point of
60%, our reviewing court has held that "the disclosure of a . . . range is not a
disclosure of the end points of that range." Atofina , 441 F.3d at 1000.
(emphasis added).
Accordingly, because the Examiner directs us to no specific
embodiment in Johnson that teaches an amount of monomer falling within
the range required by claims 1, 23, 60, 61, and 62, we agree with Appellants
that there is no anticipation.
Thus, it follows that Appellants have identified reversible error in the
Examiner's finding that Johnson teaches the "about 55 to about 99.9 weight
percent of polymerizable unsaturated acid group containing monomers"
feature required by claims 1, 23, 60, 61, and 62.
Accordingly, for the reasons stated by Appellants in the Briefs and
above, we reverse the Examiner's decision rejecting claims 1-14, 18-23,
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25-28, 30-32, 34-37, and 41-62 under 35 U.S.C. § 102(b) as anticipated by
Johnson.

The § 103 rejection

Appellants argue the claims in five groups: (1) claims 1-22 and 46-52;
(2) claims 23, 25-28, 30-32, 34-45, and 53-59; (3) claim 60; (4) claim 61;
and (5) claim 62. (App. Br. 5-19 and Reply Br. 1-7).
With respect to claim group (1), we address Appellants' arguments
regarding the rejection with respect to claim 1 only, as argued by Appellants.
With respect to the claims in claim groups (2) through (4), Appellants
do not advance any specific argument regarding the rejection of the claims.
Id. Instead, in each of these claim groups, Appellants refer to arguments
made in connection with the rejection of claim 1 in claim group (1). Id.
Accordingly, we address Appellants' arguments regarding the rejection of
claims 23, 25-28, 30-32, 34-45, and 53-61 with respect to claim 1 only. See
37 C.F.R. § 41.37(c)(1)(vii).
With respect to claim group (5), we address Appellants' arguments
regarding the rejection with respect to claim 62 only, as argued by
Appellants.

Claim 1
ISSUE
Have Appellants identified reversible error in the Examiner's
determination that Johnson would have rendered obvious an absorbent
structure having a free swell gel bed permeability value within the range
required by claim 1? We decide this issue in the negative.
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ADDITIONAL FINDINGS OF FACT (FF)
3. The Examiner finds and Appellants do not specifically dispute that
[Johnson teaches that] . . . [a]mong the cross linking agents
taught by the reference is triallyamine. (Page 5, line 20) The
amount of cross linker may be selected within the conventional
range of 0.05 to 3%. (Page 6, lines 26-28) The degree of
polymerization or in the final polymer is usually at least 50%
and generally at least 70%. (Page 6, lines 33-37) The reference
further teaches subjecting the particles to a surface cross-linking
treatment. The surface cross linking may be brought about by
contact of the surfaces with an inorganic cross linking agent
such as aluminum sulphate, sodium aluminate or other
polyvalent metal compound. (Page 7, lines 25-36 - Page 8,
lines 1-2) The reference further teaches supplementing the
surface cross linking effect by treating the surface with finely
divided silica. (Page 8, lines 12- 14).

(Compare Ans. 4 with App. Br. 8-19 and Reply Br. 1-8).
4. Johnson teaches that "it is necessary to optimise [sic] the processes of
making the particulate superabsorbent material in order to obtain the
desired properties," such as maintaining a commercial centrifuge
retention capacity. (Johnson, p. 3, ll. 4-17). Johnson also teaches that
"there are several variables involved in the production of
superabsorbent particles (including initiation conditions, monomer
concentration, choice and amount of cross linking agent and surface
cross linking) there are several variables that can be adjusted in order
to obtain the required properties." (Johnson, p. 3, ll. 9-14).
ADDITIONAL PRINCIPLES OF LAW
The recitation of a property or characteristic not disclosed by the prior
art does not necessarily confer patentability to a composition or a method of
using that composition. See In re Skoner, 517 F.2d 947, 950 (CCPA 1975).
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“[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276 (CCPA 1980).
As stated in Ex parte Obiaya:
The test of obviousness under 35 U.S.C. § 103 is not the
express suggestion of the claimed invention in any or all of the
references, but what the references taken collectively would
suggest to those of ordinary skill in the art presumed to be
familiar with them. . . . The fact that appellant has recognized
another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious.

227 USPQ 58, 60 (BPAI 1985).
"[A]ppellants have the burden of explaining the data in any
declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka,
24 USPQ2d 1621, 1624 (BPAI 1992).

ANALYSIS AND CONCLUSION
Appellants argue that there is no "teaching or suggestion in Johnson,
et al. as to how one skilled in the art would modify the Johnson, et al.
disclosure to arrive at . . . [the claimed] superabsorbent material." (App. Br.
10). We disagree.
As correctly found by the Examiner at page 4 of the Answer, Johnson
teaches that "it is necessary to optimize the processes of making the
particulate superabsorbent material in order to obtain the desired properties,"
such as maintaining a commercial centrifuge retention capacity (CRC). (See
also FF 4). In this regard, given factual finding 4 above, Johnson teaches
that several variables such as initiation conditions, monomer concentration,
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choice and amount of cross linking agent and surface cross linking are result
effective variables that affect the centrifuge retention capacity (CRC) of a
superabsorbent material.
Thus, we agree with the Examiner that optimizing such result-
effective variables to suit the particular end use (i.e., superabsorbent material
having a commercial CRC value) would have been well within the ambit of
one of ordinary skill in the art. See Boesch, 617 F.2d at 276.
In addition, once the result-effective variables have been optimized to
suit the particular end use, we further determine that a GBP value within the
claimed range of at least 575 x 10-9 cm2 would follow naturally from the
suggestion of Johnson since Johnson's absorbent structure has substantially
the same ingredients and in substantially the same amounts as Appellants'.
See Obiaya, 227 USPQ at 60. (See FF 3). Accordingly, Appellants'
arguments are unpersuasive of reversible error.
Appellants also argue that

there is simply no reason or motivation to modify the teachings
of Johnson, et al. to arrive at applicants claimed absorbent
structure. As noted above, there is no disclosure in Johnson, et
al. of free swell gel bed permeability generally, or that
absorbent structures having applicants' claimed free swell gel
bed permeability are desirable.

(App. Br. 11-12). In addition, Appellants argue that

in this present case there must be an enabling disclosure of
superabsorbent material having a CRC as determined by a
Centrifuge Retention Capacity Test of at least about 25 g/g and
a GBP as determined by a Free Swell Gel Bed Permeability
Test of at least 575 x 10-9 cm2. However, as noted above,
Johnson, et al. do not mention GBP, much less describe how
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one skilled in the art would produce superabsorbent materials
having the claimed combination of CRC and GBP.

(App. Br. 12).
It is well settled that the recitation of a property not disclosed by the
prior art product does not necessarily confer patentability to the claimed
product. See Skoner, 517 F.2d at 950. In our case, while it is true that
Johnson does not expressly teach any GBP value, such argument is
unpersuasive because it fails to identify reversible error in the Examiner’s
determination that an absorbent structure having a GBP value within the
claimed range would have been obvious within the meaning of § 103.
Appellants also argue that

Johnson, et al. have in fact suggested that superabsorbent
materials made from similar starting materials will not
inherently have the same properties. For instance, Johnson, et
al. note that ideally a superabsorbent material would have
optimum properties for CRC, AUL, and rewet parameter tests,
but that superabsorbents having one desirable characteristic
(e.g., good AUL) may have undesirable characteristics for
another parameter (e.g., rewet parameters).

(App. Br. 12-13). While Johnson teaches at page 2, lines 12-15 that
superabsorbent materials having one desirable characteristic, such as good
AUL (absorption under load), "frequently give poor rewet test results,"
Appellants have not explained how these rewet test results correspond to the
claimed range of GBP values. Indeed, Johnson does not teach that
superabsorbents having a good CRC value also have a poor GBP value (i.e.,
one outside the claimed range). Accordingly, Appellants' arguments are
without persuasive merit.
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In an attempt to show that a GBP value within the claimed range
would not flow naturally from the modification of Johnson, Appellants argue
that "as noted above . . . the Johnson, et al. reference fails to . . . suggest [a]
superabsorbent material having a free swell gel bed permeability as set forth
in claim 1." (App. Br. 9 and 10). In that regard, Appellants argue that
[i]n the declaration, Mr. Qin discusses . . . absorbent products
that have an absorbent layer comprising in part a water soluble
resin that may comprise crosslinked polymers containing
acrylic acid salt and/or acrylic acid as the main monomer
content of the polymer. Two superabsorbent materials disclosed
as suitable superabsorbents . . . i.e., Favor 880 and Dow 2035
were tested for GBP, centrifuge retention capacity (CRC), and
absorbency under load. Through testing, it was determined that
neither of these absorbent polymers have the CRC and GBP
values recited in claim 1.

(App. Br. 7-8).

However Appellants' arguments and evidence are directed to two
superabsorbent materials (i.e., Favor 889 and Dow 2035) not relied upon by
the Examiner to arrive at the claimed invention. (See FF 3). In addition,
Appellants have not explained how the evidence provided in the Qin
Declaration with respect to Favor 880 and Dow 2035 is relevant to Johnson's
superabsorbent material relied upon by the Examiner. See Ishizaka, 24
USPQ2d at 1624.
Accordingly, Appellants' arguments and evidence are insufficient to
establish that a GBP value within the claimed range would not flow
naturally from the modification of Johnson.
Thus, it follows that Appellants have not identified reversible error in
the Examiner's determination that Johnson would have rendered obvious an
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absorbent structure having a free swell gel bed permeability value within the
range required by claim 1.

Claim 62

Appellants argue that "Claim 62 is submitted to be patentable over
Johnson, et al. because Johnson, et al. do not disclose or suggest each and
every element of claim 62." (App. Br. 18). In particular, Appellants argue
that "there is no disclosure or suggestion of superabsorbent polymers
comprising both a polyvalent metal salt and a surface crosslinking agent."
(App. Br. 18-19, FN 15). We disagree.
Johnson teaches that "surface cross linking using a dilute aqueous
solution of . . . [a] covalent cross linking agent [surface crosslinking agent],
preferably in combination with. . . [an] aluminum salt [polyvalent metal
salt]." (Johnson, p. 10). Stated differently, Johnson also teaches that
"surface cross linking may be brought about by contact . . . with . . .
aluminum sulfate [which is an aluminum salt] . . . Preferably, however, some
or all of the cross linking is by reaction with a material that reacts covalently
with the polymer." (Johnson, pp. 7 and 8). Accordingly, Appellants'
argument is without persuasive merit.

REJECTION (4): The § 103 rejection over Johnson and Kellenberger '461
With respect to Rejection (4), Appellants do not specifically argue any
feature unique to claims 15-17 and 38-40, each of which ultimately depends
from independent claim 1 or independent claim 23, but instead rely on the
arguments they presented in rejection (1), which apply to both claim 1 and
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claim 23. (Reply Br. 1-4). We, therefore, sustain the rejection of claims 15-
17 and 38-40 for the reasons given above.

ORDER
For the above reasons, Rejection (1)'s § 103 rejection and Rejection
(4) are sustained; Rejection (1)'s § 102 rejection is reversed; and cumulative
Rejections (2), (3), and (5) are vacated.
Accordingly, the Examiner's decision is affirmed.

TIME PERIOD
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)(2009).
AFFIRMED

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