Ex Parte Qin et al

Board of Patent Appeals and Interferences

Jan 21, 2011

11302031 (B.P.A.I. Jan. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/302,031 12/12/2005 Jian Qin 21812 9482
23556 7590 01/21/2011
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
01/21/2011 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 JIAN QIN, SCOTT SMITH, STAN MCINTOSH,
ANGELA LANG and DAVID BERGMAN
________________

Appeal 2009-015039
Application 11/302,031
Technology Center 3700
________________

Before RICHARD E. SCHAFER, RICHARD TORCZON and
MICHAEL P. TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal No. 2009-015039
Application No. 11/302,031

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Kimberly-
Clark Worldwide, Inc. [hereinafter “Appellant”], under 35 U.S.C. § 134(a),
from a final rejection of claims 1-28 and 30-39, the only claims on appeal.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Reference Relied on by the Examiner
Goldman et al. U.S. 5,599,335 Feb. 4, 1997

The Invention
This invention pertains to an absorbent diaper containing a
superabsorbent polymer material modified according to a certain process.
Independent claim 1 is representative of the invention and is
reproduced below (emphasis added):
1. An absorbent article comprising:
a topsheet;
a backsheet; and
an absorbent core disposed between the topsheet and the
backsheet;
wherein the absorbent core comprises a superabsorbent polymer
material comprising:
a) from about 55 to about 99.9% by weight of
polymerizable unsaturated acid group containing
monomer based on the superabsorbent polymer, and
b) from about 0.001 to about 5% by weight of internal
crosslinking agent based on the polymerizable
unsaturated acid group containing monomer;
wherein the superabsorbent polymer material has a degree of
neutralization of greater than about 25%;
wherein elements a) and b) are polymerized and prepared
into superabsorbent polymer particles further comprising the
following surface additives to form surface treated
superabsorbent polymer particles:
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i) from about 0.01 to about 5% by weight of surface
crosslinking agent based on the superabsorbent polymer
material;
ii) from about 0.01 to about 10% by weight of a
penetration modifier based on the superabsorbent polymer
material;
iii) from 0 to about 5% by weight of a multivalent metal
salt based on the superabsorbent polymer material;
iv) from 0 to 2% by weight of a surfactant based on the
superabsorbent polymer material;
v) from about 0.01 to about 5% by weight of an
insoluble, inorganic powder based on the superabsorbent
polymer material; and
vi) from about 0.01 to 5% by weight of a thermoplastic
polymer based on the superabsorbent polymer material,
wherein the surface treated superabsorbent polymer
particles have been heat-treated to form the superabsorbent
polymer material; and
wherein the superabsorbent polymer material exhibits a
centrifuge retention capacity of at least about 23g/g as measured by
the Centrifuge Retention Capacity Test, a free swell gel bed
permeability of at least about 100 Darcy as measured by the Free
Swell Gel Bed Permeability Test, and a superabsorbent material
shake-out of less than about 20%, as measured by the Oven Shake-
Out Test.
(Br. Claims App’x 8-9).

The Rejection on Appeal
Claims 1-28 and 30-39 are rejected under 35 U.S.C. § 103(a) as being
obvious over Goldman (Ans. 4).

B. ISSUE
Have Appellant’s demonstrated that their process of forming an
absorbent article results in an absorbent article having different properties
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than that of the prior art where both Appellant’s claimed product and the
prior art product melt thermoplastic to form an absorbent core?

C. FINDINGS OF FACT
1. Goldman teaches a diaper having a topsheet, a backsheet and an
intermediate absorbent core containing superabsorbent polymer material
(Goldman 31:51-63).
2. Goldman, like Appellant, discloses an absorbent core that contains a
fibrous matrix (Goldman 21:25-28 and Spec. 13:8-9)
3. Goldman teaches that heat-bonding thermoplastic material to the
fibrous matrix within the absorbent core increases “the average pore size”
(Goldman 25:15-19).
4. Goldman teaches that increasing pore size within the core improves
the “fluid acquisition properties” of the core “due to improved fluid
permeability” (Goldman 25:15-31).

D. PRINCIPLES OF LAW
A product that is defined at least in part in terms of the method or
process by which it is made represents a product-by-process claim. Bonito
Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 158 n. (1989). In
construing a product-by-process claim, the Federal Circuit has held 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).

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E. ANALYSIS
Applicant argues all the claims on appeal as a single group. We select
claim 1 as representative of the claims on appeal with the remaining claims
standing or falling with claim 1.
1. Appellant’s Claim 1 is a Product-By-Process Claim
Claim 1 requires an absorbent core that contains a superabsorbent
polymer material. Claim 1 defines the superabsorbent polymer material in
terms of the process by which it is made. Specifically, the superabsorbent
material is formed by a process involving treating superabsorbent particles
with thermoplastic polymers and subsequently heat treating the particles to
form the superabsorbent polymer material.
The Examiner states that claim 1 defines the claimed product in terms
of its process of manufacture and holds that claim 1 is a product by process
claim (Ans. 4). Appellant does not disagree with the Examiner’s
interpretation of the claim (Br. 4-6). We hold that Appellant’s claim 1 is a
product by process claim and analyze whether the claimed product has
characteristics that patentably distinguish it from prior art products.

2. Appellant’s Product is not Patentably Distinct over Goldman
Claim 1 requires a topsheet, a back sheet and an intermediate
absorbent core containing superabsorbent polymer material. Goldman, like
Appellant’s claim 1, teaches a topsheet, a backsheet, and an absorbent core
containing superabsorbent polymer material (Goldman 31:51-63). Both
Appellant and Goldman use thermoplastics to bind superabsorbent polymer
materials together to form absorbent cores (Claim 1 and Goldman 25:3-12).
Appellant’s claim 1 places a thermoplastic material on the surface of
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the superabsorbent particle and subsequently heats the thermoplastic particle
to form the core. Goldman differs from Appellant claim 1 in that Goldman
heats thermoplastic fibers and superabsorbent particles together such that the
thermoplastic fiber thermally bonds the superabsorbent particles to form an
absorbent core (Claim 1 and Goldman 25:3-12 and 30:18-24). Goldman
specifically teaches that its thermoplastic materials help create a matrix, or
web of fibers, and that its invention provides a gel-continuous fluid
transportation zone that moves body fluids throughout the absorbent core
(Goldman, 6: 61-7:12 and 25:7-12).
Appellant contends that Goldman fails to form an absorbent core via a
process of heat treating a superabsorbent particle having a thermoplastic on
its surface (Br. 6). Appellant’s claim is a product by process claim and as
such the product itself must have characteristics that patentably distinguish it
from the products of the prior art. Thus, Appellant’s arguments that
Goldman forms its absorbent core via a different process are unavailing. It
is the properties and characteristics of the composition that must be
compared. In analyzing the potential differences, Appellant does not
attempt to distinguish the product based upon the materials and proportions.
Appellant contends that the claimed heat treating of its thermoplastic
surface treated superabsorbent particles results in “unique properties” such
as forming a matrix that prevents particles from shaking out of the absorbent
core (Br. 6). Appellant, however, has not compared its claimed product with
that of Goldman. As found by the Examiner, one of ordinary skill in the art
would have expected Goldman and the claimed product to possess similar
characteristics and perform similarly when subjected to the recited test
procedures since both the Appellant’s absorbent core matrix and Goldman’s
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absorbent core matrix are formed by heat treating superabsorbent particles in
the presence of a thermoplastic polymer. Based on the record presented, we
hold that Appellant has failed to establish an unobvious difference between
the claimed product and that of Goldman.

F. CONCLUSION
Appellant’s have not demonstrated that their process of forming an
absorbent article results in an absorbent article having different properties
than that of the prior art.

G. ORDER
The rejection of claims 1-28 and 30-39 under 35 U.S.C. § 103(a) as
being obvious over Goldman 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).
AFFIRMED

Appeal No. 2009-015039
Application No. 11/302,031

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ak

Kimberly-Clark Worldwide, Inc.
Tara Pohlkotte
2300 Winchester Road
Neenah, WI 54956