Ex Parte Riegel et al

Patent Trial and Appeal Board

Oct 31, 2016

12668948 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/668,948 01/13/2010
4743 7590 11/02/2016
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
Ulrich Riegel
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.
29827/45184 1038
EXAMINER
W ASHVILLE, JEFFREY D
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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 ULRICH RIEGEL, THOMAS DANIEL, DIETER HERMELING,
MARK ELLIOTT, and STEP AN BRUHNS
Appeal2015-002796
Application 12/668,948
Technology Center 1700
Before BRADLEY R. GARRIS, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal the Examiner's final rejection of claims 1-8 and
10-15. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Final Office Action appealed from, mailed
January 13, 2014 ("Final Act."), the Appeal Brief dated June 26, 2014
("App. Br."), the Examiner's Answer to the Appeal Brief dated October 16,
2014 ("Ans."), and the Appellants' Reply Brief dated December 15, 2014
("Reply Br.").
2 Appellants identify BASF SE (BASF) as the Real Party in Interest.
App. Br. 4.
Appeal2015-002796
Application 12/668,948
The Claimed Invention
Appellants' disclosure relates to water-absorbing polymeric materials
that are said to have high fluid transportation and absorption performance,
processes for their production and the use in hygiene articles and packaging
materials. Spec. 1, 11. 5-7; Abstract. Claim 1 is representative of the claims
on appeal and is reproduced below from the Claims Appendix to the Appeal
Brief (App. Br. A-1 ):
1. A water absorbing material prepared by a process
comprising bringing particles of a non surface-crosslinked
water-absorbing polymer in contact with
a) at least one post-crosslinker,
b) 0.1 - 1.0 wt.% of at least one water-insoluble metal
phosphate, based on the non surface-crosslinked water-
absorbing polymer,
c) one or more nitrogen-containing water-soluble polymer
of which the nitrogen can be protonated, and
d) one or more hydrophobic polymer and heat-treating the
resulting particles at a temperature in a range from 120°C to
300°C.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Adachi et al.,
(hereinafter "Adachi")
Daniel et al.,
(hereinafter "Daniel")
Riegel et al.,
Schmidt et al.,
(hereinafter "Schmidt")
Riegel et al.,
(hereinafter "Riegel")
US 2005/0221980 Al Oct. 6, 2005
US 2005/0245684 Al Nov. 3, 2005
WO 2006/042704 A2 Apr. 27, 2006
US 2006/0178071 Al Aug. 10, 2006
US 2008/0125533 Al May 29, 2008
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Application 12/668,948
The Rejections
On appeal, the Examiner maintains the following rejections: 3
1. Claims 1--4, 7, and 10-13 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Riegel in view of Adachi.
Ans. 2; Final Act. 2.
2. Claims 5, 6, and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Riegel in view of Adachi and in further view of
Daniel. Ans. 5; Final Act. 3.
3. Claims 1, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Riegel in view of Schmidt. Ans. 12; Final Act. 3.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments for emphasis as
follows.
Rejection 1
Appellants argue claims 1--4, 7, and 10-13 as a group. We select
claim 1 as representative of this group and the remaining claims stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
3 The Examiner's rejections refer to and are based on the related U.S.
version, US 2008/0125533 Al, of the Riegel et al. international publication,
WO 2006/042704 A2. Ans. 2; see also App. Br. 12.
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Application 12/668,948
The Examiner finds that the prior art combination of Riegel and
Adachi suggests all of claim 1 's requirements and concludes that the
combination would have rendered claim 1 obvious. Ans. 2, 3. The
Examiner finds that Riegel teaches nearly all of claim 1 's limitations, but
that it does not teach the addition of a "hydrophobic polymer," as required
by the claim. Id. at 2 and 3 (citing Riegel, i-fi-13, 4, 50, 88, 148, 207). The
Examiner, however, relies on Adachi for teaching this missing limitation.
Id. at 3. In particular, the Examiner finds that Adachi teaches the inclusion
of a hydrophobic polymer with the surface crosslinking agent and explicitly
discloses a hydrophobic polymer as an additive that may be added to the
surface of the water absorbent polymer. Id. (citing Adachi, i-fi-158 and 101).
The Examiner finds further that Adachi teaches that the additives may be
used in concentrations of 1 to 30 mass%, but is preferably 0 to 1 mass% and
that the composition "delivers stable absorbing power regardless of salt
concentration, which is assisted by the coating of hydrophobic polymer." Id.
(citing Adachi, i-fi-f 102 and 104).
Based on the above findings regarding the teachings of the prior art,
the Examiner finds that one of ordinary skill in the art at the time of the
invention would have been motivated to modify the composition of Riegel
with the teachings of Adachi "to apply the correct concentration of an
additive of a hydrophobic polymer to 'deliver stable absorbing power
regardless of salt concentration."' Ans. 3 (quoting Adachi, i-f l 04 ).
Appellants argue that the Examiner's rejection should be reversed
because Riegel "does not teach or suggest any preference for any of the[]
diverse classes of disclosed coatings" nor "coating water-absorbing particles
with a hydrophobic polymer" and Adachi "provides no teaching or
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Application 12/668,948
suggestion that any of the[] various additives are preferable over another,
and [that] for a vast majority of the additives, provides no teaching or
suggestion with respect to any expected benefit." App. Br. 13.
In particular, Appellants contend that Adachi "provides a laundry list
of additives that may or may not be included during a surface crosslinking
step" and "illustrates a preference for hydrophilic additives" and fails to
teach or suggest "any reason, or to lead a person skilled in the art, to select a
hydrophobic polymer from the wide list of optional ingredients, which also
includes a hydrophilic polymer." App. Br. 14.
Appellants argue that a person of ordinary skill in the art would have
"no reasonable expectation of achieving the results [and benefits]
demonstrated by the claimed water absorbing material," namely, "providing
water-absorbing polymeric particles having a high saline flow conductivity
(SFC) combined with a high centrifuge retention capacity (CRC), high
absorbency under load (AUL), and high wicking ability (FHA)." App. Br.
15 and 17.
We are not persuaded by Appellants' arguments. Based on the record
before us and the combined teachings of the prior art as a whole, the
Examiner's finding that the combination of Riegel and Adachi suggests all
of claim 1 's limitations and reasoning for why one of ordinary skill would
have combined these teachings to arrive at Appellants' claimed invention are
supported by a preponderance of the evidence and based on sound technical
reasoning. Riegel, Abstract, i-fi-13, 4, 50, 88, 148, 207; Adachi, Abstract,
i-fi-158, 101, 102, 104. Appellants fail to direct us to sufficient evidence or
provide an adequate technical explanation to show why the Examiner's
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Application 12/668,948
articulated reasoning for combining the teachings of the prior art lacks a
rational underpinning or is otherwise based on some other reversible error.
Appellants' argument that Riegel does not teach or suggest any
preference for any of the diverse classes of coatings is not well-taken
because, as the Examiner found (Ans. 14), Riegel explicitly teaches the use
of a metal phosphate and a nitrogen-containing water soluble polymer as
claimed. In particular, Riegel teaches that 0.05% to 2.5% by weight of a
metal phosphate is coated on the particle and the inclusion of a water soluble
nitrogen-containing polymer such as "polyvinylamine." Riegel i-fi-13, 4, 50,
148.
Appellants' argument that Riegel does not teach coating water-
absorbing particles with a hydrophobic polymer is unpersuasive because it
attacks the references individually rather than the collective teachings of the
prior art as a whole. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Contrary to what Appellant argues, the Examiner relies on Adachi-not
Riegel- for teaching the inclusion of a hydrophobic polymer as an additive
to the surface of the water absorbent polymer. Adachi i-fi-1 5 8, 101.
We do not find Appellants' arguments regarding Adachi providing a
"laundry list of additives" and a "wide list of optional ingredients" (App. Br.
13, 14) persuasive because the fact that a reference suggests a multitude of
effective combinations does not render any particular formulation less
obvious. Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989). As the Examiner found (Ans. 2, 3), the combination of Riegel
and Adachi suggests all of claim 1 's limitations and one of ordinary skill in
the art would have been motivated to combine Riegel's and Adachi's
teachings to arrive at the claimed invention in order to apply the correct
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concentration of an hydrophobic polymer additive to "deliver stable
absorbing power, regardless of salt concentration." Adachi i-f 104; see also
KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any
need or problem known in the art can provide a reason for combining the
elements in the manner claimed). Appellants' argument, without more,
exposes no reversible error in the Examiner's analysis and factual findings in
this regard.
We are not persuaded by Appellants' arguments regarding no
reasonable expectation of achieving certain results and benefits
demonstrated by the claimed invention (App. Br. 15, 17) for the well-stated
reasons provided by the Examiner at pages 1 7-18 of the Answer. In
particular, we agree with the Examiner's finding that the Riegel and Adachi
references are in the same field of endeavor and that one of ordinary skill in
the art would have had a reasonable expectation of success in combining the
references' teachings in the manner found by the Examiner. Cf KSR, 550
U.S. at 416 ("The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.").
Moreover, we agree with the Examiner (Ans. 18, 19) that Appellants
have failed to persuasively argue or identify evidence of unexpected results
sufficient to weigh in favor of non-obviousness. Attorney argument, without
more, is insufficient to rebut or otherwise establish reversible error in the
Examiner's findings in this regard. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984) ("It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
the specification does not suffice.").
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Accordingly, we affirm the Examiner's rejection of claims 1--4, 7, and
10-13 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Riegel and Adachi.
Rejection 2
Appellants argue claims 5, 6, and 8 as a group. We select claim 5 as
representative of this group and claims 6 and 8 stand or fall with claim 5.
37 C.F.R. § 41.37(c)(l)(iv). Claim 5 depends from claim 1 and adds the
limitation:
wherein the non surface-crosslinked water-absorbing polymer is
brought in contact with
c) 10 - 1000 ppm of the one or more nitrogen-containing
water-soluble polymer of which the nitrogen can be protonated,
based on the non surface-crosslinked water absorbing polymer.
App. Br. A-2 (Claims App'x).
The Examiner finds that the combination of Riegel, Adachi, and
Daniel suggests all of claim 5 's limitations and concludes that the
combination would have rendered claim 5 obvious. Ans. 5-7 (citing Riegel,
i-fi-13, 4, 50, 88, 148, 207; Adachi, i-fi-158, 101, 102, 104; Daniel, Abstract, i-fi-1
25 and 38).
Appellants argue that this rejection should be reversed for the same
"reasons set forth above with respect to the nonobviousness of claims 1-4, 7,
and 10-13 over [the] combination of [Riegel and Adachi] and because
Daniel "fails to cure the deficiencies of [Riegel and Adachi]." App. Br. 18.
We do not find these arguments persuasive for the same reasons
discussed above in affirming the Examiner's rejection of claim 1. Moreover,
a naked assertion that the prior art fails to teach or suggest a claim's
limitations is not an argument in support of separate patentability. Cf In re
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Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011); see also 37 C.F.R.
§ 41.37(c)(l)(iv).
Accordingly, we affirm the Examiner's rejection of claims 5, 6, and 8
under 35 U.S.C. § 103(a) as unpatentable over the combination of Riegel,
Adachi, and Daniel.
Rejection 3
Appellants argue claims 1, 14, and 15 as a group. We select claim 15
as representative of this group and claims 1 and 14 stand or fall with claim
15. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 15 depends indirectly from claim 1 and adds the limitation
"wherein the one or more hydrophobic polymer comprises a polyurethane."
App. Br. A-3 (Claims App'x).
The Examiner finds that the combination of Riegel and Schmidt
suggests all of claim 15 's limitations and concludes that the combination
would have rendered claim 15 obvious. Ans. 12 and 13. In particular, the
Examiner finds that Schmidt teaches a "water-absorbing polymer coated
with a urethane hydrophilic polymer to produce absorbent structures having
water absorbing qualities" and that it is "more advantageous modification of
the surface whose integrity is preserved during the swelling and preferably
also during the lifetime of the hygiene article." Id. at 12 and 13 (citing
Schmidt, i-f 11 ).
Based on the above findings, the Examiner concludes that it would
have been obvious to one skilled in the art at the time of the invention "to
modify Riegel in view of Schmidt to add a urethane outer layer to provide a
'more advantageous modification of the surface whose integrity is preserved
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during the swelling and preferably also during the lifetime of the hygiene
article."' Ans. 13 (quoting Schmidt, i-f 11 ).
Appellants argue that this rejection should be reversed because: (1)
Schmidt does not "provide any further disclosure with respect to a claimed
hydrophobic polymer"; (2) Schmidt "fails to provide any advantage or
benefits of using a hydrophobic polyurethane, and discourages the use of a
hydrophobic polyurethane"; (3) the combination of references does not
suggest "an apparent reason to use a hydrophobic polyurethane" or a
"reasonable expectation of success" in doing so; (4) neither Riegel nor
Schmidt "discloses, or even addresses or considers, the wicking ability
(FHA) of a water-absorbing material"; and (5) "would not lead a person
skilled in the art to make the modifications necessary to achieve a high FHA
and high values of SFC, CRC, and AUL." App. Br. 19 and 20.
We are not persuaded by these arguments for the well-stated reasons
provided by the Examiner at pages 20--23 of the Answer. Moreover, based
on the record before us, we find that the Examiner's findings that the
combined teachings of Riegel and Schmidt suggest all of claim 15 's
limitations and stated rationale for why one of ordinary skill in the art would
have combined these teachings to arrive at the claimed invention are
supported by a preponderance of the evidence and based on sound technical
reasoning. Riegel, i-fi-13, 4, 50, 88, 148, 207; Schmidt, i-f 11.
Appellants' arguments, without more, are conclusory and reveal no
reversible error in the Examiner's analysis and factual findings in this
regard. De Blauwe, 736 F.2d at 705.
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Accordingly, we affirm the Examiner's rejection of claims 1, 14, and
15 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination
of Riegel and Schmidt.
DECISION/ORDER
The Examiner's rejections of claims 1-8 and 10-15 are affirmed.
It is ordered that the Examiner's decision 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
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