Ex Parte Toreki et al

Patent Trial and Appeal Board

Feb 16, 2018

12796708 (P.T.A.B. Feb. 16, 2018)

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.
12/796,708 06/09/2010 William Toreki QMTl.l 16-US 3395
102816 7590 02/21/2018
Oniok-MeH TWTinnlnaies; Tno
EXAMINER
902 NW 4th Street
Gainesville, EL 32608
ROGERS, JAMES WILLIAM
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
02/21/2018 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):
btoreki @ quickmedtech .com
patent @ quickmedtech. com
bliesenfeld @ quickmedtech. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM TOREKI, SUSAN LEANDER, and
GERALD M. OLDERMAN1
Appeal 2016-003905
Application 12/796,708
Technology Center 1600
Before ERIC B. GRIMES, DEBORAH KATZ, and JOHN E. SCHNEIDER,
Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal the rejection of claims 1, 3—5, 9, 10, 12, 14, 16—18,
22, 23, 25, and 31-342 in the instant case, seeking our review under 35
1 The real party-in-interest is reported to be Quick-Med Technologies, Inc.
(App. Br. 3.)
2 Claims 2, 6—8, 11, 13, 15, 19-21, 24, 26—30, and 35—79 were canceled.
(See App. Br. 34^40, Claims App’x.)
Appeal 2016-003905
Application 12/796,708
U.S.C. § 134(a). (App. Br. 1.) We have jurisdiction under 35 U.S.C. § 6(b).
Oral argument was held on February 1, 2018. We AFFIRM.
Appellants’ Specification is directed to water-absorbing resins, called
“superabsorbent polymers” or “SAPs,” which are useful in sanitary goods,
diapers, and wiping cloths, as well as condensation-preventing agents and
release-control agents for various chemicals. (Spec. 1:16—28.) Appellants
state that they have invented compositions having antimicrobial properties
by treating a superabsorbent polymer with hydrogen peroxide and,
optionally, a metal salt. (See Spec. 3:10-11 and 4:15—21.) The
Specification explains further that making these compositions “involves
swelling the superabsorbent polymer with an aqueous solution of hydrogen
peroxide, followed by drying the polymer.” (See Spec. 3:12—15.)
The Examiner made the following rejections of Appellants’ pending
claims:
Claims Reference! s) Basis Non-Final
Rejection3 4 5
1,3-5, 9, 10, 12, 14,
16-18,22, 23,25, and
31-34
SCA4 35 U.S.C. §§ 102(a)
and 102(e)
Pages 5—6
1,3-5, 9, 10, 12, 14,
16-18,22, 23,25, and
31-34
SCA 35 U.S.C. § 103(a) Page 10
1, 3, 4, 14, 16, 17, and
31-345
Borja6 35 U.S.C. § 102(b) Pages 7—8
3 Mailed September 8, 2014.
4 International Patent Application Publication WO 2008/058565 Al,
published May 22, 2008, filed by SCA Hygiene Products AB.
5 The Examiner withdrew the rejection of claims 9, 10, 12, 22, and 23 under
pre-AIA 35 U.S.C. § 102(b) as being anticipated by Borja. (See Ans. 2.)
6 U.S. Patent 6,350,794 Bl, issued February 26, 2002.
2
Appeal 2016-003905
Application 12/796,708
1,3-5, 14, 16-18, 25,
and 31—34
Borja in
view of Xia7
35 U.S.C. § 103(a) Pages 10-11
Appellants’ claim 17 is representative of the limitations in Appellants’
other independent claims8 and recites9:
An antimicrobial superabsorbent polymer in the form of a dried
powder or granular material,
wherein peroxide is sequestered within or on the surface of the
antimicrobial superabsorbent polymer, and
wherein said antimicrobial superabsorbent polymer further
comprises a metal salt,
produced by swelling to uniformly wet a cross-linked fully- or
partially-neutralized salt of an acrylic acid-based superabsorbent
polymer with an aqueous treatment solution, comprising 0.005 grams
to 0.2 grams of hydrogen peroxide per gram of the acrylic acid-based
superabsorbent polymer and a metal salt, in an amount suitable to treat
7 U.S. Patent Application Publication 2005/0214382 Al, published
September 29, 2005.
8 Independent claim 1 is similar to claim 17, but is broader, not requiring
that the superabsorbent polymer comprise a metal salt and not requiring a
specific level of reduction of viable bacteria in a liquid.
Like independent claim 17, independent claim 4 requires that the
antimicrobial superabsorbent polymer further comprise a metal salt, selected
from the group consisting of zinc, magnesium, and zirconium salts. (See
App. Br. 34—35, Claims App’x.) Claim 4 does not recite a limitation to
reduction in the amount of viable bacteria.
Independent claim 14 is similar to claim 17, requiring that the addition
of the recited antimicrobial superabsorbent polymer “to approximately
1,000,000 viable bacteria in about 11 milliliters of an aqueous liquid
produces at least a 3-log reduction of viable bacteria in said aqueous liquid.”
(See App. Br. 36, Claims App’x.) Claim 14 does not require that the
superabsorbent polymer include a metal salt.
9 Indentations added for clarity. See 37 C.F.R. § 1.57 (i)(“Where a claim
sets forth a plurality of elements or steps, each element or step of the claim
should be separated by a line indentation.”)
3
Appeal 2016-003905
Application 12/796,708
said superabsorbent polymer with at least 0.02 grams of the metal salt
per gram of superabsorbent polymer, followed by drying of the
swelled superabsorbent polymer,
wherein said metal salt is selected from the group consisting of
zinc, magnesium, and zirconium salts,
wherein said sequestered peroxide is available for sustained
[sic10], and
whereby addition of about 0.2 grams of the antimicrobial
superabsorbent polymer [SAP] to approximately 1,000,000 viable
bacteria in about 11 milliliters of an aqueous liquid produces at least a
3-log reduction of viable bacteria in said aqueous liquid.
(App. Br. 37, Claims App’x.) Thus, Appellants’ claim 17 is drawn to
antimicrobial superabsorbent polymer in the form of a dried powder or
granular material comprising a metal salt (zinc, magnesium, or zirconium
salt) and having the peroxide “sequestered” within or on the surface of the
polymer. Claim 17 further requires that when 0.2 grams of the antimicrobial
superabsorbent polymer is added to approximately 1,000,000 viable bacteria
in about 11 milliliters of an aqueous liquid, there is at least a 3-log reduction
of viable bacteria in the liquid.
Anticipation over SCA
The Examiner rejected all of Appellants’ pending claims under 35
U.S.C. § 102(b) over SCA. (See Non-Final Act. 5—6.)
10 Claim 17 appears to be missing one or more words to complete the
limitation “wherein said sequestered peroxide is available for sustained.”
(See Amendment of December 30, 2014, at 6.) Because this limitation does
not impact any of the issues on appeal or Appellants’ arguments, we do not
render any decision about it. In the event of further prosecution, the
limitation should be addressed.
4
Appeal 2016-003905
Application 12/796,708
Findings of Fact
1. SCA teaches superabsorbent polymers based on homo or
copolymers, which comprise at least one polymerizable unit having an acidic
group such as a poly(meth)acrylic acid, which are at least partially
neutralized. (See SCA 7—8.)
2. SCA teaches treating a superabsorbent polymer with a mixed
solution of peroxy compound and organic zinc salt. (See SCA 13.)
3. SCA includes an Example in which test cores of superabsorbent
material were treated with a solution of hydrogen peroxide and zinc
ricinoleate, either by dripping the solution onto the test core or by dipping
one side of the test core into the solution. (See SCA 16—17.)
4. SCA teaches that after the peroxide/zinc solution is applied to
the test core there is a one week wait before the core is tested for the ability
to absorb urine. (See SCA 16—17.)
5. SCA explains that an absorbent core of polymer is regarded as
“dry” after a test core having a specified thickness and diameter and
compressed to a specified bulk has been kept for at least one week at
ambient temperature (e.g. 20 °C) and a specified relative humidity. (See
SCA 11.)
6. SCA teaches that the amount of peroxy compound is most
preferably at least 1 x 10'3 g (0.001 g) peroxy compound per gram of dry
absorbent core and that it may not be economical to add more than 0.01 g or
0.1 gram peroxy compound per gram dry absorbent core. (See SCA 12.)
Analysis
Appellants argue that SCA does not teach “swelling to uniformly wet
the acrylic acid-based superabsorbent polymer with an aqueous treatment
5
Appeal 2016-003905
Application 12/796,708
solution comprising aqueous hydrogen peroxide, followed by drying of the
swelled superabsorbent polymer,” as required in claim 1 and reflected in the
other independent claims. (See App. Br. 8.)
We are not persuaded by this argument for several reasons. First, as
the Examiner determined, Appellants present product by process claims,
wherein the claimed polymer material is produced by swelling and drying.
(See Ans. 3.) Patentability depends on the nature of the product claimed, not
the process by which it is made. See In re Thorpe, 111 F.2d 695, 697 (Fed.
Cir. 1985) (“The patentability of a product does not depend on its method of
production. [Citation omitted] If 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.”). Thus, despite Appellants’ arguments, the technical aspects of
“swelling to uniformly wet” and “drying” the superabsorbent polymer do not
create a patentable difference from SCA unless these steps result in a
difference in the product.
According to Appellants’ Specification, it was “expected that HP
[hydrogen peroxide] would be completely removed from the SAP
[superabsorbent polymer] substrate by drying because it is relatively
volatile. However, a significant amount of antimicrobial effect was
observed for the dried SAP materials after treatment with HP.” (Spec. 21.)
This portion of Appellants’ Specification teaches that drying does not
destroy the antimicrobial effect; but it does not teach that drying creates or
alters the antimicrobial effect. Thus, this portion of Appellants’
Specification does not teach that drying the polymer results in a difference in
the resulting product.
6
Appeal 2016-003905
Application 12/796,708
Elsewhere, in regard to drying the superabsorbent polymer,
Appellants’ Specification states: “Attainment of constant weight is a useful
tool to measure extent of dryness; however, the attainment of constant
weight is not the actual factor that enables non-leachable attachment of the
antimicrobial to the substrate.” (Spec. 31.) Thus, in contrast to Appellants’
assertion that their Specification teaches “to dry the swelled polymer in
order to sequester the peroxide in or on the superabsorbent polymer” (App.
Br. 8 (emphasis added)), the Specification teaches that drying does not cause
the peroxide to attach to the polymer.
Appellants do not direct us to portions of their Specification or to
other evidence demonstrating that drying the polymer causes sequestration
of the peroxide. Neither do Appellants direct us to evidence that “swelling”
the polymer with solution causes sequestration of the peroxide differently
than any other way of adding solution. In the absence of evidence that these
steps produce a different polymer material, we agree with the Examiner that
the swelling and drying steps recited in Appellants’ independent claims do
not distinguish the products from the polymer taught in SCA.
We are also not persuaded by Appellants’ argument that SCA fails to
teach the superabsorbent polymer material claimed because the Example of
SCA teaches applying a peroxide solution to superabsorbent polymer and
drying it. Specifically, SCA teaches dipping a test core of polymer into a
peroxide solution and then waiting a week for testing, which would dry the
test core. (See SCA 16—17; see Ans. 5—6.)
Appellants attempt to distinguish the application of peroxide solution
to the polymer in SCA from the swelling recited in their claims by arguing
that SCA teaches using a minimum amount of fluid to ensure the absorption
7
Appeal 2016-003905
Application 12/796,708
capacity of the material is not impaired. According to Appellants, the small
amount of solution would be quickly absorbed in a localized manner and
would not swell the polymer. (See App. Br. 8, citing SCA 14—15; see Reply
Br. 6—7.) We are not persuaded by this argument because we do not find an
express teaching in SCA to use a minimum amount of peroxy solution. (See
Ans. 5.) SCA teaches using a high concentration peroxy solution to
“ensure[] that the absorption capacity of the superabsorbent material is not
impaired more than necessary” (SCA 14—15), but the portion cited by
Appellants does not indicate a volume. Appellants do not direct us to a
definition of “swelling” that would exclude dipping the test core into a
peroxy solution. Accordingly, we are not persuaded that SCA fails to teach
this processing step.
In regard to drying superabsorbent polymer, SCA teaches that an
absorbent core is regarded as “dry” after it has been kept for at least one
week at ambient temperature and a specified relative humidity. (SCA 11
(emphasis added); see Ans. 5—6.) According to this definition, the test core
of the Example in SCA would be considered to be dry by waiting one week
after dipping it into a peroxide solution. Because Appellants do not direct us
to a definition of “dry” in their own Specification that differs from the
definition provided in SCA,11 we are not persuaded that there would be a
difference in the product.
11 Appellants’ Specification provides that “thoroughly dried means, for
instance, that a substrate exposed to a solution of hydrogen peroxide is then
dried to a constant weight” (Spec. 31), but Appellants do not claim
“thoroughly drying” the superabsorbent polymer. (See Ans. 5—6.)
8
Appeal 2016-003905
Application 12/796,708
Appellants argue that the discussion of “dry” in SCA refers to a dry
absorbent “core” not a dry absorbent “article.” (See App. Br. 12; see also
Reply Br. 5.) We are not persuaded that this difference indicates the
material of SCA would not be dry as required in Appellants’ claims because
Appellants’ claims recite polymer in the form of dried powder or granular
material, not articles.
Appellants argue further that physical and functional properties
resulting from the claimed treatment distinguish the claimed polymer from
that taught in SCA. (See App. Br. 9-12.) According to Appellants, the
absorbent articles of SCA retain residual water from manufacture so as not
to impair the absorption capacity of the superabsorbent material more than
necessary. (See App. Br. 9-10, citing SCA 14—15.) The Example of SCA
contradicts Appellants’ argument because the Example teaches drying an
absorbent core after it has been dipped in a peroxy/metal salt solution. Thus,
the Example of SCA persuades us that the superabsorbent polymer taught in
SCA would have the same properties as Appellants’ claimed polymer
material. Appellants have not persuaded us otherwise. See In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990) ([W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”).
Appellants also argue that the level of incorporated hydrogen peroxide
in the absorbent articles of SCA differs from that of the claimed
superabsorbent polymer. (See App. Br. 10.) Although the claims recite an
amount of hydrogen peroxide used to swell the superabsorbent polymer,
Appellants’ claims do not recite any specific or relative level of hydrogen
peroxide ultimately incorporated into the polymer. (See Ans. 6—7.) We are
9
Appeal 2016-003905
Application 12/796,708
not persuaded that if there was a difference in the level of incorporated
hydrogen peroxide taught in SCA, it would be a patentable difference from
Appellants’ claimed polymer.12 (See Ans. 6—7.) Furthermore, we note that
SCA teaches using an amount of hydrogen peroxide that overlaps with the
amount recited in Appellants’ independent claims. (See SCA 12 (“the
amount of peroxy compound is . . . most preferably at least 1 x 1 O'3 g peroxy
compound per g of dry absorbent core. Beyond a certain amount of peroxy
compound (for instance 0.01 g or 0.1 g per g dry absorbent core), it may no
longer be economical to add further peroxy compound.”); see Ans. 6—7.)
Appellants argue further that the claimed polymers are antimicrobial
superabsorbent polymers, which kill bacteria, while the absorbent articles of
SCA are described to “suppress[] bacterial growth” and “maintain[] bacterial
flora.” (See App. Br. 10-11, citing SCA 2; see also SCA 4; see Reply Br.
12 In the Reply Brief, Appellants argue that Example 13 of their
Specification exemplifies a physical difference in the sequestration of
hydrogen peroxide in the claimed superabsorbent polymer. (See Reply Br.
5, citing Spec. 36—39.) Appellants do not explain why one of skill in the art
would not expect that the same results with the peroxide treated
superabsorbent polymers of SCA. Accordingly, even if Appellants had
directed us to Example 13 in their Appeal Brief, we would not have been
persuaded that it demonstrates a physical difference between the polymer of
SCA and the claimed polymer. See 37 C.F.R. § 41.41(b)(2) (“Any argument
raised in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner's answer, including any
designated new ground of rejection, will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.”)
10
Appeal 2016-003905
Application 12/796,708
5.) Specifically, in regard to claim 17, Appellants argue that SCA does not
teach a superabsorbent polymer “whereby addition of about 0.2 grams of the
antimicrobial superabsorbent polymer to approximately 1,000,000 viable
bacteria in about 11 milliliters of an aqueous liquid produces at least a 3-log
reduction of viable bacteria in said aqueous liquid” (App. Br. 37, Claims
App’x) for the same reasons. (See App. Br. 11—12.)
We disagree. SCA teaches that “maintaining the bacterial flora in the
urogenital region” is a desirable goal for absorbent articles. (See SCA 2
(emphasis added).) Because this goal relates to the flora in the body, not the
polymer material, we are not persuaded that it indicates the peroxide treated
superabsorbent polymer of SCA would fail to reduce the number of viable
bacteria by the recited degree if added to a solution of bacteria.
Furthermore, SCA teaches that the described invention “has the
function of suppressing bacterial growth.” (SCA 413.) We do not find this
teaching to be contradictory to Appellants’ claims as asserted. (See App. Br.
12 ; see Reply Br. 5.) Suppression of growth indicates “reduction” of viable
bacteria to the extent claimed. (See Ans. 8, citing the definition of
“antimicrobial” reported in Merriam-Webster.com as “destroying or
inhibiting the growth of microorganisms.”)
To support their arguments, Appellants present the declaration of
Inventor William Toreki as evidence that there was 100% incorporation of
hydrogen peroxide in dried antimicrobial superabsorbent polymer at lower
13 Appellants cite to page 2 of SCA for the teaching of bacterial growth
suppression (see App. Br. 11), but we do not find a discussion of that
activity on page 2.
11
Appeal 2016-003905
Application 12/796,708
hydrogen peroxide concentrations. (See App. Br. 13—14.) According to
Appellants, Dr. Toreki’s declaration shows that the amount of hydrogen
peroxide sequestered in the dried polymer can be predicted from the amount
used to swell the polymer. (See App. Br. 14.) Dr. Toreki’s declaration is
not persuasive because it has not been shown that the application of
peroxide solution to polymer in SCA would not achieve the same result. Dr.
Toreki does not mention SCA. Thus, his declaration does not persuaded us
that the process recited to produce the claimed superabsorbent polymer
results in a patentable difference from the superabsorbent polymer taught in
SCA.
Because we are not persuaded by Appellants’ arguments that the
Examiner erred in rejecting the independent claims as being anticipated by
SCA, we affirm the Examiner’s rejection. Appellants do not present
separate arguments for any of the other claims rejected under 35 U.S.C.
§ 102(b) over SCA. Accordingly, we affirm the rejection of the dependent
claims as well.
Anticipation over Borja
The Examiner rejected claims 1, 3, 4, 14, 16, 17, and 31—34 under 35
U.S.C. § 102(b) over Borja. (See Non-Final Act. 7—8; Final Act. 3.)
Findings of Fact
7. Borja teaches denture adhesive or stabilizer. (Borja 1:6—7.)
8. Borja teaches that prior art denture adherent powders have the
property of swelling to many times their original volume upon the addition
of water. (Borja 1:12—15.)
9. Borja teaches that its denture adhesive includes a polyethylene
oxide and a polycarbophil component. (Borja 1:62—64.)
12
Appeal 2016-003905
Application 12/796,708
10. Borja teaches that the polycarbophil component can be a
calcium salt of cross-linked polyacrylic acid that absorbs not less than 35
grams of solution per gram of absorbing polymer. (Borja 1:6—7 and 2:57—
67.)
11. Borja teaches that the denture adhesive can include
antimicrobial agents, such as hydrogen peroxide. (Borja 4:35 42.)
12. Borja teaches that the denture adhesive can include a
magnesium metal salt. (Borja 5:50-53.)
Analysis
Appellants argue that Borja fails to teach “a cross-linked fully- or
partially-neutralized salt of an acrylic acid-based superabsorbent polymer”
as required in Appellants’ independent claims. (See App. Br. 16.)
According to Appellants, Borja teaches a denture adhesive formulation
comprising a polyethylene oxide and a polycarbophil in combination. (See
App. Br. 17, citing Borja 1:62—67 and 2:3446.) Appellants argue that “[i]t
is erroneous to equate the combination mixture of Borja as being the same as
the antimicrobial superabsorbent polymer of [their] claims.” (App. Br. 17;
see Reply Br. 8.)
Claim 17 recites “[a]n antimicrobial superabsorbent polymer in the
form of a dried powder or granular material. . . wherein said antimicrobial
superabsorbent polymer further comprises a metal salt. . . .” (App. Br. 37,
Claims App’x (emphasis added).) The transitional term “comprising”
indicates that the claimed material encompasses components in addition to
the recited cross-linked salt of an acrylic acid-based superabsorbent
polymer. The Examiner finds that the addition of other ingredients such as a
metal salt or polyethylene oxide to the powdered polycarbophil would not
13
Appeal 2016-003905
Application 12/796,708
prevent sequestration of hydrogen peroxide. (See Ans. 11.) Thus,
Appellants’ claim 1714 encompasses a polymer with a combination of a
polycarbophil that is a calcium salt of cross-linked polyacrylic acid and
polyethylene oxide as taught in Borja (see FFs 9 and 10; Borja 1:62—64 and
2:57-67).
Appellants’ argument that the combination of polycarbophil and
polyethylene oxide “makes up the novel dental composition having its
properties . . .” (App. Br. 18) does not persuade us otherwise because the
Examiner’s rejection is not based on the novel properties of the final product
of Borja. Instead, the rejection is based on the teaching of superabsorbent
polymer with sequestered peroxide.
Appellants argue further that Borja fails to teach a process including
the steps of “swelling to uniformly wet the acrylic acid-based
superabsorbent polymer with an aqueous treatment solution comprising
aqueous hydrogen peroxide, followed by drying of the swelled
14 Appellants do not argue for the separate patentability of any of the
independent claims regarding the addition of polyethylene oxide in Borja.
We note, though, that Appellants’ independent claims 1 and 14 do not use
the term “comprising.” Nevertheless, Appellants’ Specification
acknowledges that water-absorbing resins can be a variety of chemical
forms, including polyethylene oxides. (See Spec. 1:20-24.) Because
Appellants’ claims 1 and 14 do not expressly exclude other polymers and in
light of the inclusion of other ingredients, such as metal salts, in Appellants’
invention, we determine that the broadest reasonable interpretation of claims
1 and 14 in light of the Specification encompasses material that includes
polyethylene oxide. See In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their broadest
reasonable construction consistent with the specification.”).
14
Appeal 2016-003905
Application 12/796,708
superabsorbent polymer,” as recited in claim 1. (See App. Br. 17—18.) As
explained above, Appellants’ independent claims are product-by-process
claims and, thus, patentability depends on the nature of the product recited.
See Thorpe, 111 F.2d at 697.
Appellants argue that the Examiner fails to show that the
superabsorbent polymer of Borja “produces at least a 3-log reduction of
viable bacteria” as required in claim 17. (See App. Br. 20.) We agree with
the Examiner that because the powder of Borja is within the scope of the
claimed polymer it will have the same antimicrobial effect claimed. (See
Ans. 13.) Appellants do not direct us to evidence otherwise.
Because we are not persuaded by Appellants’ arguments that the
Examiner erred in rejecting the independent claims as being anticipated by
Borja, we affirm the rejection.
Appellants argue separately for the patentability of claims 5, 18, 23,
and 25, citing the Examiner’s statement that Borja does not teach
magnesium, zinc, or zirconium acetate salts as required in those claims. (See
App. Br. 21.) These claims were not included in the Examiner’s rejection
under 35 U.S.C. § 102(b) over Borja as recited in the Final Office Action of
February 3, 2015 (see p. 3) or Examiner’s Answer (see p. 2). Accordingly,
Appellants’ argument is moot.
Because Appellants do not present separate arguments for any of the
other claims rejected under 35 U.S.C. § 102(b) over Borja, we affirm the
rejection.
15
Appeal 2016-003905
Application 12/796,708
Obviousness over SCA
The Examiner rejected claims 1, 3—5, 9, 10, 12, 14, 16—18, 22, 23, 25,
and 31—34 under 35 U.S.C. § 103(a) over SCA. (See Non-Final Act. 10.)
Appellants argue that there would not have been a motivation or
suggestion in the art to prepare a polymer as claimed by “swelling to
uniformly wet the acrylic acid-based superabsorbent polymer with an
aqueous treatment solution comprising aqueous hydrogen peroxide,
followed by drying of the swelled superabsorbent polymer,” particularly the
drying step. (See App. Br. 22—23.) For the reasons discussed above, we are
not persuaded that even if SCA fails to teach these process steps, the recited
product is unpatentable over SCA. (See Ans. 13—14.)
Appellants also argue that SCA fails to motivate or suggest to one of
ordinary skill in the art to design an absorbent article that kills bacteria. (See
App. Br. 23.) We are not persuaded by Appellants’ argument because, as
discussed above, the polymer of SCA “has the function of suppressing
bacterial growth.” (SCA 4; see Ans. 14.)
Appellants argue that the polymers of claims 1,3,9, 10, 14, 16, 22,
31, and 33, which do not recite a metal salt, would not have been obvious
because the Comparative Example in SCA teaches that hydrogen peroxide in
the absence of metal salt was not effective in suppressing ammonia
formation. (See App. Br. 24—25, citing SCA 17—19.) According to
Appellants, the inability to suppress ammonia indicates that the bacteria
producing ammonia were also not suppressed. (See App. Br. 25.) We are
not persuaded by this argument because the Comparative Example of SCA
reports ammonia formation only, not bacterial growth. (See SCA 17—18.)
SCA explains that “the peroxy compound, e.g. the hydrogen peroxide, has
16
Appeal 2016-003905
Application 12/796,708
the function of suppressing bacterial growth while the organic zinc salt, e.g.
the zinc ricinoleate removes the ammonia (NH3) actually formed.” (SCA 4.)
Thus, we are not persuaded that because peroxy compound alone fails to
suppress ammonia, it would not have been expected that peroxy compounds
alone would suppress bacterial growth.
Appellants also argue that because it was expected that drying would
remove the antimicrobial effects of hydrogen peroxide, there would not have
been a reasonable expectation of success in producing an antimicrobial
polymer material given the teachings of SCA. (See App. Br. 25—26.)
Because, as discussed above, SCA teaches a polymer that suppresses
bacterial growth, this argument is not persuasive.
Because we are not persuaded by Appellants’ arguments that the
Examiner erred in rejecting the claims as being rendered obvious by SCA,
we affirm the rejection.
Obviousness over Borja and Xia
The Examiner rejected claims 1, 3—5, 14, 16—18, 25, and 31—34 under
35 U.S.C. § 103(a) over Borja and Xia. (Non-Final. Act. 10—11.) Although
Borja fails to teach counter ions suitable for acetate, Xia teaches that zinc
acetate is a preservative. (See Xia 170, passim.)
Appellants present many of the same arguments posed for the
Examiner’s other rejections, including, for example, that neither Borja nor
Xia teaches the process steps recited in Appellants’ claims. (See App. Br.
27-31.)
Appellants also argue that because Borja relates to a denture
adhesives, the compositions it teaches are unlikely to be suitable for use as
components in tampons, sanitary napkins, diapers, or wipes because the
17
Appeal 2016-003905
Application 12/796,708
compositions of Borja would be likely to adhere to body cavities. (See App.
Br. 31-32 ; see Reply Br. 9.) We are not persuaded by this argument because
Appellants claim only superabsorbent polymer, not articles made with it.
(See Ans. 17.)
Because we are not persuaded by Appellants’ arguments that the
Examiner erred in rejecting the claims as being rendered obvious by Borja
and Xia, we affirm the rejection.
Conclusion
Upon consideration of the record and for the reasons given, the
rejections of claims 1, 3—5, 9, 10, 12, 14, 16—18, 22, 23, 25, and 31—34 are
sustained.
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
18