Ex Parte Suzuki et al

Patent Trial and Appeal Board

Sep 27, 2016

12620104 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/620,104 11/17/2009
20999 7590 09/29/2016
FROMMER LAWRENCE & HAUG
745 FIFTH A VENUE- IOTH FL.
NEW YORK, NY 10151
FIRST NAMED INVENTOR
Migaku SUZUKI
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.
930055-2049.1 9903
EXAMINER
CHOI, PETER Y
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
prosecutiondocketing@flhlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIGAKU SUZUKI,
RYOICHI MATSUMOTO, and SHINGO MORI
Appeal2015-002893
Application 12/620, 104
Technology Center 1700
Before PETERF. KRATZ, GEORGE C. BEST, and MONTE T. SQUIRE,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 5, 6, 13-20, 33, and 34 and
of Application 12/620,104 under 35 U.S.C. § 103(a) as obvious. Final Act.
(March 27, 2014). Appellants 1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 DSG International Ltd. is identified as the real party in interest. Appeal
Br. 2.
Appeal2015-002893
Application 12/620, 104
BACKGROUND
The '104 Application describes an absorbent composite comprising
particles of an absorbent polymer. Spec. 1. The absorbent polymer
particles' surfaces are at least partially covered with cellulose micro fibrils.
Id. at 4.
Claim 1 is representative of the '104 Application's claims and is
reproduced below:
1. An absorbent composite comprising
hydratable fine fibers in the form of micro fibril obtained
from cellulose or a derivative thereof,
absorbent polymer particles, and
a short-cut staple fiber component having longer fiber
length than average diameter of the absorbent polymer
particles,
at least part of the surface of each of said absorbent
polymer particles being covered with said
hydratable fine fibers in the form of micro fibril,
the hydratable fine fibers in the form of micro fibril
being bonded with one another and having a
network structure holding the absorbent polymer
particles,
wherein the ratio of weight of said hydratable fine fibers in the
form of microfibril to weight of said absorbent polymer
particles is between 0.5 and 5 percent, and
the ratio of weight of said hydratable fine fibers in the form of
microfibril to weight of said short-cut staple fiber component is
in the range of from 115 to 511.
Appeal Br. 10 (Claims App.) (emphasis, some paragraphing, and indentation
added).
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Application 12/620, 104
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 5, 6, 13, 14, 33, and 34 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Assarsson2 and
Chmielewski. 3 Final Act. 2.
2. Claims 1, 2, 5, 6, 13-20, 33, and 34 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Assarsson,
Chmielewski, and Chen. 4 Final Act. 8.
DISCUSSION
Appellants argue for reversal of the appealed rejections on the basis of
limitations recited in independent claims 1 and 2. See Appeal Br. 7, 9.
Because Appellants do not present separate argument for the patentability of
any dependent claim, we shall confine our discussion to independent claims
1 and 2. The dependent claims will stand or fall with their parent
independent claim.
Rejection 1. The Examiner rejected claims 1 and 2 as unpatentable
over the combination of Assarsson and Chmielewski. Final Act. 2-8. For
the reasons set forth below, we reverse.
Claims 1 and 2 are directed to an absorbent composite comprising
absorbent polymer particles, a cellulosic microfibrils, and short-cut staple
fibers. Both of these claims specifically state that the weight ratio of the
2 US 3,901,236, issued August 26, 1975.
3 US 5,171,391, issued December 15, 1992.
4 US 5,436,066, issued July 25, 1995.
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Appeal2015-002893
Application 12/620, 104
microfibrils to the weight of the absorbent polymer particles is between 0.5
and 5%. See Appeal Br. 10.
In rejecting claims 1 and 2, the Examiner found that Assarsson
describes a hydrogel/wood pulp fiber composite comprised of at least 20%
by weight hydrogel particles. Final Act. 4. Assarsson further describes that
the fibers as enhancing the rate of fluid absorption by the hydro gel, retaining
fluid in close proximity to the hydrogel surface, and anchoring the hydrogel
particles within a fibrous matrix. Id. (citing Assarsson col. 4, 11. 47---64).
Based upon these findings the Examiner concluded that
Id.
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to form the hydrogel
composite of Assarsson, and adjusting, varying and optimizing
the ratio of fibers to particles, such as the claimed ratio wherein
the ratio is based only on the amount of hydro gel and fibers, as
taught and suggested by Assarsson, motivated by the desire of
forming a conventional hydrogel composite having the desired
rate of fluid absorption, fluid retention and anchoring properties
suitable for the intended application.
In the Final Action, the Examiner did not make an express finding
regarding particular ratio specified in independent claims 1 and 2, i.e., the
weight ratio of the microfibrils to the weight of the absorbent polymer
particles. Assarsson states that "[ t ]he ratio of the hydro gel to fiber has been
varied in a number of examples. The preferable limits range from about
80% fibers on the individual hydrogel particle down to about 10% fibers."
Assarsson col. 10, 11. 17-20. Our examination of Assarsson's disclosure
reveals that Assarsson is disclosing the weight percentage of the
fiber/hydrogel mixture comprised of fibers. See id. at col. 10, 11. 20-26; col.
11, 11. 19-21; Table I. Thus, expressed in terms of the ratio specified in
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Application 12/620, 104
independent claims 1 and 2, Assarsson describes an absorbent composite
comprising microfibrils and absorbent polymer particles, in which the
weight ratio of the microfibrils to the absorbent polymer particles is between
11 and 400%. 5
The range of the ratio of the weight of the microfibrils to the
absorbent polymeric particles described in Assarsson (11--400%) does not
overlap the claimed range (0.5-5%). Thus, Assarsson's description is not
sufficient to render the claimed range prima facie obvious. To establish the
prima facie obviousness of the claimed range, the Examiner must provide a
factually-supported reason why the combination of Assarsson and
Chmielewski would have suggested the use of a weight ratio within the
claimed range to a person of ordinary skill in the art at the time of the
invention. The Examiner concluded that a person of ordinary skill in the art
would have arrived at the claimed range through routine optimization of the
weight ratio. See Final Act. 4 (quoted above).
We are not persuaded by the Examiner's reasoning. Assarsson states
that "[i]n practice, it [has] been found that to obtain optimum fluid
absorption efficiencies, in situ, it is necessary to control certain variables
within specified limits." Assarsson col. 4, 11. 65-67. One of the variables
discussed in the following portion of Assarsson's Specification is the
5 In a hydro gel/fiber mixture that is 80% fiber, the weight ratio of fiber to
hydro gel is 80:20, i.e., 4: 1. Thus, the weight of the fiber in the composition
is 400% of the weight of the hydrogel particles. Similarly, in a
hydro gel/fiber mixture that is 10% fiber, the weight ratio of fiber to hydro gel
is 10:90, i.e., 1:9. Thus, the weight of the fiber in the composition is 11 % of
the weight of the hydrogel particles. See Spec. 40 (defining ratio as
(MFC/SAP x 100(%))).
5
Appeal2015-002893
Application 12/620, 104
proportion ofhydrogel to fiber. See id. at col. 5, 11. 17-27. As discussed
above, Assarsson describes the use of between 11 and 400% by weight
microfibrils to absorbent polymeric particles. Nothing in Assarsson suggests
that the amount of microfibrils should be reduced below 11 %. Furthermore,
each of microfibrils' functions identified by the Examiner (i.e., enhancement
of fluid absorption, fluid retention, and anchoring the absorbent polymeric
particles within a fibrous matrix) would be enhanced by increasing the
amount of micro fibrils. The Examiner, therefore, has not identified a reason
why a person having ordinary skill in the art would have decreased the
weight percentage of microfibrils below the range described in Assarsson.
In view of the foregoing, we reverse the rejection of claims 1 and 2 as
unpatentable over the combination of Assarsson and Chmielewski.
Rejection 2. The Examiner also rejected claims 1 and 2 as
unpatentable over the combination of Assarsson, Chmielewski, and Chen.
Final Act. 8-11.
Appellants argue that this rejection should be reversed for two
reasons: (1) the combination of references does not describe or suggest the
claimed range of the ratio of the weight of microfibrils to absorbent
polymeric particles, Appeal Br. 8; (2) the combination of references does not
describe or suggest the claimed range of the weight ratio of the microfibrils
to the short-cut staple fibers, id. at 8-9; and (3) the combination of
Assarsson, Chmielewski, and Chen is based upon improper hindsight
because there is no motivation to combine these references, id. at 9.
For the following reasons, we are not persuaded by Appellants'
arguments.
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Appeal2015-002893
Application 12/620, 104
First, Chen describes a composition comprising a hydrogel-forming
polymeric material and a micro-fiber. Chen col. 2, 11. 14--16. Chen further
states that
[ o ]ne embodiment of such an absorbent composition comprises
from about 80 to less than 100 weight percent of a hydrogel-
forming polymeric material and from about 20 to greater than 0
weight percent of a microfiber, wherein all weight percents are
based on the total weight of the hydrogel-forming polymeric
material and the microfiber in the absorbent composition; ....
Id. at col. 2, 11. 17-23. Thus, Chen describes a composition in which the
weight ratio of the microfiber to the absorbent polymeric particles is greater
than 0% and ranges up to about 25%.
Because Chen describes a composition in which the weight ratio of
microfibrils to absorbent polymeric particles has a value within a range (>0-
25%) that overlaps the claimed range (0.5-5%), the claimed range is prima
facie obvious. See In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (a
prima facie case of obviousness typically exists when the ranges of a
claimed composition overlap the ranges disclosed in the prior art); In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (same); In re Boesch, 617
F.2d 272, 275 (CCPA 1980).
Second, Chmielewski describes an absorbent product for use in
absorbent articles comprising an absorbent layer. Chmielewski Abstract.
The absorbent layer comprises "from about 10 to about 80% by weight of
hydrophilic resilient fibers and from 20 to about 90% by weight of
superabsorbent material." Id. at col. 2, 11. 20-23. Thus, Chmielewski
describes an absorbent layer comprising from short-cut staple fibers (i.e.,
Chmielewski' s hydrophilic resilient fibers) and superabsorbent material in a
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Appeal2015-002893
Application 12/620, 104
weight ratio between about 1 :4 and about 9: 1. This ratio, however, is not
recited in claims 1 and 2.
As discussed above, Chen describes the superabsorbent material as
comprising between >O and 25% microfibrils. See Chen col. 2, 11. 17-23.
The combination of Chmielewski and Chen, therefore, describes or
suggests an absorbent composition comprising microfibrils and short-cut
staple fibers in the weight ratio greater than 0 up to about 1:2.25. 6
Because the combination of Chmielewski and Chen describes or
suggests describes a composition in which the weight ratio of microfibrils to
short-cut staple fibers falls within a range that overlaps the claimed range
(1:5 to 5:1), the claimed range is prima facie obvious. See, e.g., Harris, 409
F.3d at 1341.
Third, the Examiner concluded that a person of ordinary skill in the
art would have been motivated to combine Assarsson, Chmielewski, and
Chen
by the desire of forming a conventional hydro gel composite
comprising a weight ratio and fiber diameter known in the art as
being predictably suitable for such composites, where improved
retention properties and the ability to incorporate large amounts
of water, in addition to the desired rate of fluid absorption, fluid
retention and anchoring properties, are suitable for the intended
application.
Final Act. 10. The Examiner further concluded that the person of ordinary
skill in the art also would have been motivated to combine the references
6 The low end of the range occurs when the ratio of microfibrils to absorbent
polymeric particles is at a minimum, which Chen describes as merely being
>O. At the high end of the range, micro fibrils comprise 20% of the super
absorbent material. Thus, the highest ratio described or suggested by the
combination of Chmielewski and Chen is (9 x 20%):1, i.e., 1.8:1.
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Application 12/620, 104
Id.
by the desire of forming a conventional disposable absorbent
article having known and predictably suitable amounts of
resilient fibers and superabsorbent particles, including known
and predictably suitable amounts of fine fibers and hydro gel,
based on the totality of the teachings of the prior art
combination.
Appellants' conclusory assertions are insufficient to identify
reversible error in these conclusions, nor have we identified any reversible
error based upon our own review. Accordingly, we affirm the rejection of
claims 1 and 2 as unpatentable over the combination of Assarsson,
Chmielewski, and Chen.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1, 2,
5, 6, 13, 14, 33, and 34 as unpatentable over the combination of Assarsson
and Chmielewski.
We, however, affirm the rejection of claims 1, 2, 5, 6, 13-20, 33, and
34 as unpatentable over the combination of Assarsson, Chmielewski, and
Chen.
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
Patent Owner:
FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE-10th FLOOR
NEW YORK, NY 10151
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