Ex Parte Stueven et al

Patent Trial and Appeal Board

Feb 23, 2017

12438481 (P.T.A.B. Feb. 23, 2017)

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.
12/438,481 02/23/2009 Uwe Stueven 29827/44579 6063
4743 7590 02/27/2017
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
BUTLER, MICHAEL E
ART UNIT PAPER NUMBER
3653
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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 UWE STUEVEN, RUDIGER FUNK,
MATTHIAS WEISMANTEL, MEINHARD NITSCHKE,
FILIP MEES, and LEO VAN MIERT
Appeal 2015-0039171
Application 12/438,4812
Technology Center 3600
Before PHILIP J. HOFFMANN, ROBERT L. KINDER, and
BRUCE T. WIEDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 2—6, 8—10, 12—15, and 17—24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Our decision references Appellants’ Specification (“Spec.,” filed Feb. 23,
2009), Appeal Brief (“Appeal Br.,” filed July 25, 2014), and Reply Brief
(“Reply Br.,” filed Feb. 2, 2015), as well as the Final Office Action (“Final
Action,” mailed Nov. 13, 2013) and the Examiner’s Answer (“Answer,”
mailed Dec. 5, 2014).
2 Appellants indicate that BASF Aktiengesellschaft is the real party in
interest. Appeal Br. 5.
Appeal 2015-003917
Application 12/438,481
According to Appellants, the “invention relates to a process for
continuously classifying water-absorbing polymer beads by means of at least
one screen, at least one screen having at least one guide device on the screen
surface.” Spec. 1,11. 5—7. Claim 24 is the only independent claim. Appeal
Br., Claims App. We reproduce claim 24, below, with additional formatting.
24. A process for continuously classifying dried water­
absorbing polymer beads comprising[:]
deflecting dried polymer beads moving toward a screen at
least partly from an original direction of movement to the middle
of the screen by at least one first guide device on the screen
surface, and
guiding the polymer beads in a spiral path toward an exit
orifice at the edge of the screen by a second guide device,
wherein the water-absorbing polymer beads, during the
classification, have a water content below 15 wt % and have a
temperature of at least 40°C.
Id.
REJECTIONS AND PRIOR ART3
The Examiner rejects the claims as follows:
I. claims 24, 3—6, 8, 12, 14, and 17—20 under 35 U.S.C. § 103(a)
as unpatentable over Johnson (US 2007/0045158 Al, pub.
3 We list claim 24 first, where applicable, because claim 24 is the
independent claim from which each of the other claims depends. Also, we
reorder certain rejections relative to their order in the Final Action, and we
correct the spellings of “McKibben” and “Qin.”
2
Appeal 2015-003917
Application 12/438,481
Mar. 1, 2007) and Kamakura (JP 2003-320308, pub. Nov. 11,
2003)4;
II. claims 2 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Johnson, Kamakura, and Senda (US 4,233,159, iss. Nov. 11,
1980);
III. claim 9 under 35 U.S.C. § 103(a) as unpatentable over Johnson,
Kamakura, and Ruppe (US 3,290,836, iss. Dec. 13, 1966);
IV. claims 9 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Johnson, Kamakura, and McKibben (US 4,077,873, iss. Mar. 7,
1978);
V. claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Johnson, Kamakura, and Reed (WO 92/18171, pub. Oct. 29,
1992);
VI. claims 15 and 23 under 35 U.S.C. § 103(a) as unpatentable over
Johnson, Kamakura, and Qin (US 2004/0214499 Al, pub.
Oct. 28, 2004);
VII. claim 21 under 35 U.S.C. § 103(a) as unpatentable over
Johnson, Kamakura, and Weismantel (US 2008/0202987 Al,
pub. Aug. 28, 2008); and
VIII. claims 22 and 23 under 35 U.S.C. § 103(a) as unpatentable over
Johnson, Kamakura, and Smith (US 7,173,086 B2, iss. Feb. 6,
2007);
4 In this Decision, our references to Kamakura are to the English-language
translation Appellants filed with an Information Disclosure Statement on
September 29, 2009.
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Application 12/438,481
IX. claims 24, 3—6, 8, 12, 14, 20, and 22 under 35 U.S.C. § 103(a)
as unpatentable over Johnson and Buchholz (Fredric L.
Buchholz et al., Modern Superabsorbent Polymer
Technology, Wiley-VCH, 71-103(1998)) (“Buchholz”);5
X. claims 15 and 23 under 35 U.S.C. § 103(a) as unpatentable over
Johnson, Buchholz, and Qin;
XI. claims 24, 4, and 12 under 35 U.S.C. § 103(a) as unpatentable
over Allgaier (US Re. 26,555, iss. Mar. 25, 1969), Buchholz,
and Johnson.
Final Action 2—23; see also Answer 2.
ANALYSIS
Rejections I—VIII
With respect to the rejection of claim 24, from which claims 2—6, 8—
10, 12—15, and 17—23 depend, the claim recites, among other features, that
“the water-absorbing polymer beads, during the classification, have a water
content below 15 wt %.” Appeal Br., Claims App. The Examiner finds that
Kamakura teaches this limitation, stating that in Kamakura the “[wjater
absorbing content of the beads has a water content below 15% (129H126
discloses starting [at] 25[—]40% [then] going to 5%, so it must come to
the 5[—]15%.” Final Action 3. Based on our review of the cited portions of
Kamakura, especially paragraph 29, it is not entirely clear whether the
moisture content is being reduced by_ 0.7%-5.0% or to 0.7%-5.0%.
However, as Appellants point out, paragraph 9 of Kamakura states that
5 Although the Examiner purports to reject claim 11, we “[n]ote that
claim 11 was previously canceled from the application.” Appeal Br. 31.
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Application 12/438,481
“[the] invention is the method of. . . removing 0.7%[—]5% of moisture to
mass.” Kamakura 19. Thus, when Kamakura’s paragraph 29, which is
ambiguous, is read in view of paragraph 9, it appears that Kamakura
discloses removing 0.7%-5.0%. Therefore, we determine that the Examiner
fails to support adequately that Kamakura discloses that “the water­
absorbing polymer beads, during the classification, have a water content
below 15 wt %” as claimed.
Notwithstanding the above discussion, claim 24 also recites
deflecting dried polymer beads moving toward a screen at
least partly from an original direction of movement to the middle
of the screen by at least one first guide device on the screen
surface, and
guiding the polymer beads in a spiral path toward an exit
orifice at the edge of the screen by a second guide device.
Appeal Br., Claims App. (emphases added). The Examiner relies on
Johnson to disclose these limitations. Final Action 2; Answer 3. We do not
agree with Appellants that the rejection is in error because Johnson “fails to
teach or suggest both a first and a second guide on the same screen,” as the
argument exceeds the scope of the claim because the claim does not require
that both guide devices are, in fact, on the same screen. Appeal Br. 17.
However, we agree with Appellants that the claim limitations are not
met because Johnson’s “Fig[ure] 7B shows a spiral baffle 184 leading to a
material feed opening 120. This is the only guide device on the screen,”
while Johnson’s “spiral baffle 200 . . . transfers the product to a center
hole 202” of cooling deck 198. Id. at 15; see also Reply Br. 1,3; see also
Johnson 134. Although Johnson is not required to teach that both
baffles 184 and 200 are on the same deck or screen, Johnson must teach or
suggest, for example, that baffle 200 guides the material when the material is
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Application 12/438,481
on the same deck or screen on which baffle 184 is located. But, in Johnson,
baffle 200 guides the material on a screen that is not the same deck on which
baffle 184 is located, and, therefore, Johnson does not teach “deflecting
dried polymer beads . . .by at least one first guide device on the screen
surface, and guiding the polymer beads . . . toward an exit orifice at the edge
of the screen by a second guide device” as recited in claim 24. Appeal Br.,
Claims App. (emphases added). Because the Examiner does not provide
further explanation regarding how Johnson teaches the claimed guide
devices, the Examiner’s findings are inadequate to support the rejection.
Based on the foregoing, we do not sustain the rejection of claim 24, or
any of the rejections of dependent claims 2—6, 8—10, 12—15, and 17—23,
inasmuch as the Examiner does not establish that any other reference
remedies the above deficiency in the rejection of claim 24.
Rejections IX and X
The rejections of independent claim 24 and its dependent claims 3—6,
8, 12, 14, 15, 20, 22, and 23 rely on Johnson to disclose “deflecting dried
polymer beads ... by at least one first guide device on the screen surface,
and guiding the polymer beads . . . toward an exit orifice at the edge of the
screen by a second guide device.” Appeal Br., Claims App.; see also Final
Action 11; see also Answer 7—8. Thus, we do not sustain the rejections of
independent claim 24 and dependent claims 3—6, 8, 12, 14, 15, 20, 22,
and 23 for reasons similar to the reasons we do not sustain rejections I—VIII.
Rejection XI
The rejection of independent claim 24 and its dependent claims 4
and 12 appear to rely on a combination of Allgaier and Johnson to disclose
“deflecting dried polymer beads ... by at least one first guide device on the
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Application 12/438,481
screen surface, and guiding the polymer beads . . . toward an exit orifice at
the edge of the screen by a second guide device.” Appeal Br., Claims App.;
see also Final Action 21—22; see also Answer 12. The Examiner does not
explain adequately how the references are combined to provide the claimed
method using the two guide devices. Appeal Br. 40-41. For example, we
note that the Examiner appears to rely on Allgaier to disclose one screen
having one guide device (Final Action 22), but then appears to rely on
Johnson to disclose the claimed two guide devices {id. at 23). The Examiner
provides insufficient further explanation for us to understand how the guide
devices of Allgaier and Johnson are to be used together to guide materials on
a same screen, as required by claim 24. Thus, we do not sustain the
rejection of independent claim 24 and dependent claims 4 and 12.
DECISION
We REVERSE the Examiner’s obviousness rejections of claims 2—6,
8-10, 12-15, and 17-24.
REVERSED
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