Ex Parte Riegel et alDownload PDFPatent Trial and Appeal BoardOct 31, 201612668948 (P.T.A.B. Oct. 31, 2016) Copy Citation 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 2 Appeal2015-002796 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. 3 Appeal2015-002796 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 4 Appeal2015-002796 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 5 Appeal2015-002796 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 6 Appeal2015-002796 Application 12/668,948 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."). 7 Appeal2015-002796 Application 12/668,948 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 8 Appeal2015-002796 Application 12/668,948 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 9 Appeal2015-002796 Application 12/668,948 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. 10 Appeal2015-002796 Application 12/668,948 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 11 Copy with citationCopy as parenthetical citation