Ex Parte Wada et alDownload PDFBoard of Patent Appeals and InterferencesSep 24, 200810448456 (B.P.A.I. Sep. 24, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte KATSUYUKI WADA, HIROKO UEDA, KUNIHIKO IZHIZAKI, YOSHIO IRIE, and YASUHISA NAKASHIMA __________ Appeal 2008-4292 Application 10/448,456 Technology Center 1700 __________ Decided: September 24, 2008 __________ Before DEMETRA J. MILLS, LORA M. GREEN, and FRANCISCO C. PRATS, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a water absorbent composition. The Examiner has rejected the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2008-4292 Application 10/448,456 STATEMENT OF THE CASE Claims 9-16, 26-29, 33-35, 44-47, 50, and 51 are pending and on appeal (App. Br. 5). Claim 9 is representative and reads as follows: 9. A water-absorbent composition, being particulate, which contains not less than 70 mass % of a water-absorbent resin (A) having a cross-linking structure obtained by polymerizing an unsaturated monomer containing acid groups, wherein (1) not less than 1/3 and less than 3/4 of all molar quantities of an acid group is neutralized, and (2) an amount of particles whose particle diameter is less than 850μm and not less than 150μm is not less than 90 mass% with respect to the whole, and an amount of particles whose particle diameter is not less than 300μm is not less than 60 mass% with respect to the whole, and (3) a plant component (B) selected from the group consisting of polyphenol, flavones, and caffeine is included. The Examiner applies the following documents in rejecting the claims: Dairoku et al. US 5,422,405 Jun. 6, 1995 Miyake et al. US 6,469,080 B2 Oct. 22, 2002 Kasai et al. US 6,800,789 B2 Oct. 5, 2004 Dairoku et al. US 2002/0013394 A1 Jan. 31, 2002 Ueda et al. US 2003/0004479 A1 Jan. 2, 2003 Shiraimatsu JP-60-158861 Aug. 20, 1985 Pharmaceutical Co., Ltd (as translated) The following rejections are before us for review: Claims 9-16, 26-29, 33-35, 44-47, 50, and 51 stand rejected under 35 U.S.C. § 102(e) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Ueda or Miyake, in view of Dairoku ‘394 or Kasai (Ans. 3-4). 2 Appeal 2008-4292 Application 10/448,456 Claims 9-16, 26-29, 33-35, 44-47, 50, and 51 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dairoku ‘405 in view of JP-60-158861 (Ans. 4-5). ANTICIPATION/OBVIOUSNESS -- UEDA ISSUE The Examiner has rejected claims 9-16, 26-29, 33-35, 44-47, 50, and 51 as anticipated by Ueda or, alternatively, as obvious over Ueda in view of Dairoku ‘394 or Kasai (Ans. 3-4). The Examiner contends that Ueda anticipates the cited claims because it discloses a water-absorbent composition having the claimed mass % of a cross-linked polymer, with the claimed degree of neutralized acid moieties, weight average particle sizes ranging from 200 to 500 μm, and “oolong tea (semi-fermented tea) and black tea (fermented tea)” (Ans. 3), which the Examiner contends inherently “contain flavones, caffeine and polyphenols etc.” (id. at 4). Alternatively, the Examiner contends that Ueda would have rendered the rejected claims obvious in view of Dairoku ‘394 or Kasai, because one of ordinary skill in the art would have been prompted to include the gallic acid (a polyphenol) of Dairoku ‘394, or the gallic acid derivatives of Kasai, in Ueda’s compositions “because they are used to advantage in similar formulations, which are used for similar purposes” (id.). Appellants contend that the Examiner has failed to show that Ueda or either of the other cited references discloses or suggests a composition that meets all three of the claimed criteria that produce the advantageous composition recited in the claims (App. Br. 14). Specifically, Appellants contend, none of the cited references teaches or suggests “the important 3 Appeal 2008-4292 Application 10/448,456 feature of the particle size distribution (condition 2) recited in Applicants’ claims. The significance of this feature is evident from a comparison of Example 8 (page 137) and Comparative Example 9 (page 146) as set forth in Table 2 of the present specification” (id.). Appellants do not argue the claims subject to these grounds of rejection separately.1 We select claim 9 as representative of the rejected claims. See 37 C.F.R. § 41.37(c)(1)(vii). The issue with respect to the anticipation rejection, then, is whether the Examiner has made a prima facie case that Ueda meets all of the limitations recited in claim 9. The issue with respect to the obviousness rejection is whether the Examiner has made a prima facie case that one of ordinary skill in the art would have considered claim 9 obvious over Ueda in view of either Dairoku ‘394 or Kasai. FINDINGS OF FACT (“FF”) 1. Ueda discloses “a particulate water-absorbing composition [that] can provide especially excellent deodorizability and excellent absorption properties, and further, gel stability, to absorbent structures for sanitary materials such as disposable diapers, sanitary napkins and incontinent pads in the case where used in the absorbent structures” (Ueda [0001]). 1 Appellants urge that a number of claims are “patentable separately” from the independent claims (Reply Br. 5). However, Appellants do not present any specific argument directed to any particular independent claim, nor do Appellants specifically explain why the limitations of the dependent claims are patentable. “A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii). Because Appellants’ argument at best can be considered a mere listing of what the dependent claims recite, we do not consider it to be a separate argument for patentability. 4 Appeal 2008-4292 Application 10/448,456 2. Ueda discloses that its particulate water-absorbing composition “contains [a] water-absorbent resin in a major proportion, favorably, of not less than 70 weight %, more favorably, of not less than 80 weight %” (Ueda [0030]). 3. The water-absorbent resin in Ueda’s composition can be “partially- neutralized and crosslinked poly(acrylic acids)” (Ueda [0033]), in which “[t]he neutralization ratio of the above acid group is favorably adjusted into the range of 30 to 100 mol %, more favorably 60 to 90 mol %, still more favorably 65 to 75 mol %” (id. at [0036]). 4. Ueda discloses that its composition can contain a number of plant materials as deodorizers, including “green tea, black tea, and oolong tea” (Ueda [0079]). The Examiner finds, and Appellants do not dispute, that black tea and oolong tea inherently “contain flavones, caffeine and polyphenols etc.” (Ans. 4). 5. Ueda discloses the following regarding the size of the particles in its composition: The weight-average particle diameter is favorably in the range of 100 to 600 μm, more favorably 200 to 500 μm, and the proportion of particles having particle diameters of smaller than 106 μm is not more than 10 weight %, favorably not more than 5 weight %, more favorably not more than 3 weight %. (Ueda [0037].) 6. Dairoku ‘394 discloses a water absorbent composition that contains a cross-linked resin (Dairoku ‘394 [0002]), which can contain gallic acid (id. at [0050]). 5 Appeal 2008-4292 Application 10/448,456 7. Kasai discloses an absorbent article that contains a superabsorbent polymer (Kasai, col. 1, ll. 5-8), which can contain “antiinflammatory agents such as . . . tannin [and] gallic acid derivatives” (id. at col. 5, ll. 46-47). PRINCIPLES OF LAW “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden . . . of presenting a prima facie case of unpatentability. . . . After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. However, while the initial burden for showing anticipation rests on the Examiner, “when 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.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Regarding the question of obviousness, the Supreme Court has reaffirmed that under the controlling inquiry, “the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.” KSR Int' l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17- 18 (1966)). 6 Appeal 2008-4292 Application 10/448,456 Regarding the obviousness of claimed ranges close to those disclosed in the prior art, the Federal Circuit has stated that, “[i]n cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed.Cir.2003). Moreover, “a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties.” Id. Once a prima facie case of obviousness based on overlapping or close ranges has been established, however, “an applicant may rebut [the] prima facie case of obviousness by showing that the prior art teaches away from the claimed invention in any material respect.” Id. at 1331. Also, “when unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). ANALYSIS Appellants’ arguments do not persuade us that the Examiner failed to make a prima facie case that Ueda anticipates claim 9. Nor are we persuaded that the Examiner failed to make a prima facie case that claim 9 would have been obvious over Ueda in view of either Dairoku ‘394 or Kasai. Regarding the anticipation rejection, we agree with the Examiner that Ueda’s water-absorbing composition meets the limitations that the composition contains at least 70 mass percent of a cross-linked acidic polymer having not less than one-third and less than three-fourths of the acid 7 Appeal 2008-4292 Application 10/448,456 groups neutralized, and that the composition contains at least one of polyphenol, flavones, and caffeine (see FF 2-4). As to the disputed limitation, claim 9 recites “an amount of particles whose particle diameter is less than 850μm and not less than 150μm is not less than 90 mass% with respect to the whole, and an amount of particles whose particle diameter is not less than 300μm is not less than 60 mass% with respect to the whole.” Thus, claim 9 requires 90 mass percent of the particles in the composition to have a diameter of from 150 μm to less than 850 μm, with at least 60 mass percent of the particles having a diameter of at least 300 μm. Ueda discloses that its composition has a preferred “weight-average particle diameter . . . of . . . 200 to 500 μm, and the proportion of particles having particle diameters of smaller than 106 μm is not more than 10 weight %, favorably not more than 5 weight %, more favorably not more than 3 weight %” (Ueda [0037] (FF 5)). Given Ueda’s disclosure that the preferred weight average diameter of its particles of 200 to 500 μm falls entirely within the 150 to 850 μm range recited in claim 9, and Ueda’s disclosure that as little as less than three weight percent of the particles of its composition are smaller than 106 μm, we agree with the Examiner that it was reasonable to find that Ueda meets the limitation of claim 9 requiring 90% of the particles to be between 150 to 850 μm. Moreover, given that the preferred weight average diameter of its particles can be as high as 500 μm, a preponderance of the evidence also supports the reasonableness of the Examiner’s finding that Ueda meets the limitation in claim 9 requiring at least 60 mass percent of the particles 8 Appeal 2008-4292 Application 10/448,456 to have a diameter of at least 300 μm. We therefore agree with the Examiner that Ueda meets all of the limitations of claim 9. Appellants argue that the Examiner erred in finding that Appellants bear the burden of disproving anticipation (App. Br. 15). Appellants’ argument does not persuade us that the Examiner erred in maintaining the anticipation rejection over Ueda. We agree that the Examiner bears the initial burden of showing anticipation. In re Oetiker, 977 F.2d at 1445. However, as stated above, when the Examiner has provided “a 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.” In re Spada, 911 F.2d at 708. Thus, as stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (emphasis added): Where . . . the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product…. Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. Moreover, patentability is measured by a preponderance standard during examination. See Oetiker, 977 F.2d at 1445. In the instant case, as discussed above, given the particle size ranges disclosed by Ueda, we agree with the Examiner that it was reasonable to find that Ueda meets the particle size limitations of claim 9. Appellants have provided no specific argument or evidence 9 Appeal 2008-4292 Application 10/448,456 that undermines the Examiner’s reasonable finding. Thus, because a preponderance of the evidence supports the Examiner’s finding of anticipation, we affirm the Examiner’s rejection of claim 9 as anticipated by Ueda. Because they were not argued separately, claims 10-16, 26-29, 33-35, 44-47, 50, and 51 fall with claim 9. See 37 C.F.R. § 41.37(c)(1)(vii). Regarding the Examiner’s rejection of claim 9 as obvious over Ueda in view of Dairoku ‘394 or Kasai, Appellants do not dispute, and we detect no defect in, the Examiner’s reasoning that one of ordinary skill in the art would have been prompted to include the additives of Dairoku ‘394 or Kasai in the similar compositions of Ueda. Rather, Appellants argue, the Examiner has failed to make a prima facie case that one of ordinary skill in the art would have considered the claimed particle size obvious over Ueda in view of either Dairoku ‘394 or Kasai (App. Br. 14). We are not persuaded by this argument. As discussed above, we agree with the Examiner that Ueda meets all of the limitations in claim 9. It is well settled that “anticipation is the epitome of obviousness,” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) Moreover, given the significant overlap between the particle size range disclosed by Ueda as being suitable in its compositions and the particle size range recited in claim 9, we do not agree with Appellants that the Examiner has failed to show the prima facie obviousness of claim 9. See In re Peterson, 315 F.3d at 1329 (“[W]e 10 Appeal 2008-4292 Application 10/448,456 and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”). Appellants appear to argue (App. Br. 14) that the particle size limitation recited in claim 9 imparts unexpected properties to the claimed composition, as demonstrated by a comparison of Example 8 (Spec. 137) to Comparative Example 9 (id. at 146; see also Spec. 149 (Table 2)). However, it is well settled that “when unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter-Travenol Labs., 952 F.2d at 392. Because Appellants have not explained whether the data presented in the Specification is a comparison of the claimed subject matter to the closest prior art, it is not clear whether the results presented can be considered to be unexpected. Therefore, because we agree with the Examiner that claim 9 would have been prima facie obvious to a person of ordinary skill in the art in view of Ueda and Dairoku ‘394 or Kasai, we affirm the Examiner’s obviousness rejection of that claim. Because they were not argued separately, we also affirm the Examiner’s obviousness rejection of claims 10-16, 26-29, 33-35, 44- 47, 50, and 51 over those references. See 37 C.F.R. § 41.37(c)(1)(vii). 11 Appeal 2008-4292 Application 10/448,456 ANTICIPATION/OBVIOUSNESS -- MIYAKE ISSUE The Examiner has rejected claims 9-16, 26-29, 33-35, 44-47, 50, and 51 as anticipated by Miyake or, alternatively, as obvious over Miyake in view of Dairoku ‘394 or Kasai (Ans. 3-4). The Examiner contends that Miyake anticipates the cited claims because it discloses a water-absorbent composition having the claimed mass % of a cross-linked polymer, with the claimed degree of neutralized acid moieties, weight average particle sizes ranging from 300 to 500 μm, and “and extracts from leaves of Theaceae plants, flavonol, flavanols and tannin” (id. at 4). Alternatively, the Examiner contends that Miyake would have rendered the rejected claims obvious in view of Dairoku ‘394 or Kasai, because one of ordinary skill in the art would have been prompted to include the gallic acid (a polyphenol) of Dairoku ‘394, or the gallic acid derivatives of Kasai, in Miyake’s compositions “because they are used to advantage in similar formulations, which are used for similar purposes” (id.). Appellants direct the same arguments to the rejections over Miyake as were directed to the rejections over Ueda (see App. Br. 12-14). We select claim 9 as representative of the rejected claims. See 37 C.F.R. § 41.37(c)(1)(vii). The issue with respect to the anticipation rejection, then, is whether the Examiner has made a prima facie case that Miyake meets all of the limitations recited in claim 9. The issue with respect to the obviousness rejection is whether the Examiner has made a prima facie case that one of 12 Appeal 2008-4292 Application 10/448,456 ordinary skill in the art would have considered claim 9 obvious over Miyake in view of either Dairoku ‘394 or Kasai. FINDINGS OF FACT 8. Miyake discloses a “water-absorbent resin composition wherein the water-absorbent resin composition is excellent in the urine resistance and the light resistance, and becomes little colored” (Miyake, col. 1, ll. 8-10). 9. Miyake discloses that the water-absorbent resin used in its water- absorbent composition is most preferably composed of “partially-neutralized and crosslinked poly(acrylic acids)” (Miyake, col. 5, ll. 45-46). 10. Miyake discloses that “the ratio of the water-absorbent resin in the water-absorbent resin composition is usually not less than 75 weight %, preferably not less than 85 weight %, more preferably not less than 95 weight %, of the water-absorbent resin composition” (Miyake, col. 10, ll. 61-65). 11. Miyake discloses that, “[a]s to the neutralization ratio, preferably 50 to 95 mol %, more preferably 60 to 90 mol %, of acid groups are neutralized” (Miyake, col. 5, ll. 53-55). 12. Miyake discloses that its composition can contain extracts from Theaceae plants, such as tea plants, with the extracts’ components “includ[ing] flavonol, flavonols, organic polymers, or tannin” (Miyake, col. 9, ll. 32-33). 13. Miyake discloses that the water-absorbent resin “has a weight-average particle diameter in the range of preferably 100 to 600 μm, more preferably 200 to 500 μm” (Miyake, col. 10, ll. 59-61). 14. Miyake discloses that one method of obtaining the desired particle size is by particulating the resin during polymerization (Miyake, col. 6, ll. 13 Appeal 2008-4292 Application 10/448,456 24-40), drying the resin (id. at col. 6, ll. 46-52), and then obtaining the desired size particles by sieving: The . . . dried product is pulverized (if necessary) and then classified with a sieve of the predetermined size, with the result that a water-absorbent resin powder having an average particle diameter of about 10 to about 1,000μm, preferably about 100 to about 700 μm, more preferably about 300 to about 500 μm, and containing fine particles smaller than 106 μm in a ratio of not more than 5 weight %, preferably not more than 3 weight %, more preferably not more than 1 weight %, can be obtained. (Miyake, col. 6, ll. 53-61.) 15. Miyake discloses that the size of the particles removed from the composition through the sieve “is generally not larger than 300 μm, preferably not larger than 225 μm, more preferably not larger than 150 μm” (Miyake, col. 6, l. 67, through col. 7, l. 2). ANALYSIS Appellants’ arguments do not persuade us that the Examiner failed to make a prima facie case that Miyake anticipates claim 9. Nor are we persuaded that the Examiner failed to make a prima facie case that claim 9 would have been obvious over Miyake in view of either Dairoku ‘394 or Kasai. Regarding the anticipation rejection, we agree with the Examiner that Miyake’s water-absorbing composition meets the limitations requiring the composition to contain at least 70 mass percent of a cross-linked acidic polymer having not less than one-third and less than three-fourths of the acid groups neutralized, and that the composition contains at least one of polyphenol, flavones, and caffeine (see FF 9-12). With respect to the disputed limitations, we also agree with the Examiner that it was reasonable 14 Appeal 2008-4292 Application 10/448,456 to find that Miyake meets the limitation in claim 9 requiring 90 mass percent of the particles in the composition to have a diameter of from 150 μm to less than 850 μm, with at least 60 mass percent of the particles having a diameter of at least 300 μm. Specifically, Miyake discloses that its composition has a preferred average particle size diameter of “300 to about 500 μm, and contain[s] fine particles smaller than 106 μm in a ratio of not more than 5 weight %, preferably not more than 3 weight %, more preferably not more than 1 weight %” (Miyake, col. 6, ll. 57-61 (FF 14)). Moreover, Miyake discloses that a composition having that average particle size is prepared by sieving, with the removed particles being “generally not larger than 300 μm, preferably not larger than 225 μm, more preferably not larger than 150 μm” (Miyake, col. 6, l. 67, through col. 7, l. 2 (FF 15)). Given Miyake’s disclosure of a preferred average diameter of particles of 300 to 500 μm, which falls entirely within the 150 to 850 μm range recited in claim 9, and the disclosure that the product was prepared by sieving, and the disclosure that as little as one weight percent of the particles of its composition are smaller than 106 μm, we agree with the Examiner that it was reasonable to find that Miyake meets the limitation of claim 9 requiring 90% of the particles to be between 150 to 850 μm. Moreover, given that the preferred weight average diameter of its particles can be as high as 500 μm, and the disclosure that sieving is used to remove particles smaller than 300 μm (FF 15), we agree with the Examiner that it was reasonable to find that Miyake meets the limitation in claim 9 requiring at least 60 mass percent of the particles to have a diameter of at least 300 μm. 15 Appeal 2008-4292 Application 10/448,456 Thus, we agree with the Examiner that Miyake meets all of the limitations of claim 9. As discussed above, we agree with Appellants that the Examiner bears the initial burden of showing anticipation, In re Oetiker, 977 F.2d at 1445. However, in this case, for the reasons previously discussed, we find that the Examiner has provided a sufficiently sound basis for believing that the claimed product and Miyake’s products are the same, thus shifting the burden of showing that they are not to Appellants. See In re Spada, 911 F.2d at 708. Because Appellants have provided no specific argument or evidence that undermines the Examiner’s reasonable finding of anticipation, a preponderance of the evidence supports the Examiner’s anticipation rejection. We therefore affirm the Examiner’s rejection of claim 9 as anticipated by Miyake. Because they were not argued separately, claims 10- 16, 26-29, 33-35, 44-47, 50, and 51 fall with claim 9. See 37 C.F.R. § 41.37(c)(1)(vii). Regarding the Examiner’s rejection of claim 9 as obvious over Miyake in view of Dairoku ‘394 or Kasai, Appellants do not dispute, and we detect no defect in, the Examiner’s reasoning that one of ordinary skill in the art would have been prompted to include the additives of Dairoku ‘394 or Kasai in the similar compositions of Miyake. Rather, Appellants argue, as was the case regarding Ueda, the Examiner has failed to make a prima facie case that one of ordinary skill in the art would have considered the claimed particle size obvious over Miyake in view of either Dairoku ‘394 or Kasai (App. Br. 14). We are not persuaded by this argument. 16 Appeal 2008-4292 Application 10/448,456 It is well settled that “anticipation is the epitome of obviousness,” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Because we agree with the Examiner that Miyake meets all of the limitations in claim 9, we agree with the Examiner that one of ordinary skill in the art would have considered claim 9 prima facie obvious over Miyake and Dairoku ‘394 or Kasai. Moreover, given the significant overlap between the particle size range disclosed by Miyake as being suitable in its compositions and the particle size range recited in claim 9, we do not agree with Appellants that the Examiner has failed to show the prima facie obviousness of claim 9. See In re Peterson, 315 F.3d at 1329 (“[W]e and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”). Thus, because we agree with the Examiner that claim 9 would have been obvious to a person of ordinary skill in the art in view of Miyake and Dairoku ‘394 or Kasai, we affirm the Examiner’s obviousness rejection of that claim. Because they were not argued separately, we also affirm the Examiner’s obviousness rejection of claims 10-16, 26-29, 33-35, 44-47, 50, and 51 over those references. See 37 C.F.R. § 41.37(c)(1)(vii). OBVIOUSNESS -- DAIROKU ‘405 AND JP-60-158861 ISSUE Claims 9-16, 26-29, 33-35, 44-47, 50, and 51 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dairoku ‘405 in view of JP-60- 158861 (Ans. 4- 5). The Examiner cites Dairoku ‘405 as disclosing absorbent compositions having the claimed resins, degree of acid neutralization, and a 17 Appeal 2008-4292 Application 10/448,456 particle size of 300 to 600 μm (Ans. 5). The Examiner contends that the composition of Dairoku ‘405 contains deodorants, and cites JP ‘861 as disclosing water-absorbent resins containing “deodorizing extracts from theaceous plants, flavonol, flavanones and tannic acid” to meet the specific deodorants recited in the claims (id.) The Examiner contends that one of ordinary skill in the art would have considered it obvious “to use the deodorants of [JP ‘861] in the composition of Dairoku et al. (‘405) since they exhibit similar polymers in similar articles” (id.). Appellants contend that the Examiner has failed to show that either of the cited references discloses or suggests a composition that meets all three of the claimed criteria that produce the advantageous composition recited in the claims (App. Br. 16). Specifically, Appellants contend, neither of the cited references teaches or suggests “the important feature of the particle size distribution (condition 2) recited in Applicant’s claims. As previously stated, the significance of this feature is evident from a comparison of Example 8 (page 137) and Comparative Example 9 (page 146) as set forth in Table 2 of the present specification” (App. Br. 16-17). Appellants do not argue the claims subject to this ground of rejection separately. We select claim 9 as representative of the rejected claims. See 37 C.F.R. § 41.37(c)(1)(vii). The issue with respect to this rejection, then, is whether the Examiner has made a prima facie case that one of ordinary skill in the art would have considered claim 9 obvious over Dairoku ‘405 and JP ‘861. FINDINGS OF FACT 16. Dairoku ‘405 discloses “an absorbent resin which exhibits high level of absorption capacity under load as well as absorption capacity without load 18 Appeal 2008-4292 Application 10/448,456 and, when used in a sanitary material, manifests a particularly excellent quality” (Dairoku ‘405, col. 1, ll. 9-13). Dairoku ‘405 discloses that its resin is “advantageously used particularly in such sanitary materials as disposable diapers and sanitary napkins because it exhibits a high absorption capacity without load, preeminently excels in the absorption capacity under load” (id. at col. 2, ll. 59-63). 17. Dairoku ‘405 discloses that its resin can be “partially neutralized cross-linked polyacrylic acid” (Dairoku ‘405, col. 3, ll. 11-12), in which “the proportion of the unneutralized polyacrylic acid is desired to be in the range of 1 to 60 mol %, more preferably in the range of 10 to 50 mol %” (id. at col. 3, ll. 60-62). 18. Dairoku ‘405 discloses that “the absorbent resin as the base polymer obtained by solution polymerization in the form of amorphous fragments ha[s] an average particle diameter in the range of 100 to 1,000 μm, preferably in the range of 300 to 600 μm proves most desirable” (Dairoku ‘405, col. 4, ll. 45-49). 19. Dairoku ‘405 discloses that “the absorbent resin to be produced by this invention is allowed to incorporate therein such additives as deodorant, spice, inorganic powder, foaming agent, pigment, dye, hydrophilic filaments, fertilizer, oxidizing agent, reducing agent, water, and salts to acquire new functions” (Dairoku ‘405, col. 8, ll. 23-27). 20. JP ‘861 discloses “a water-absorbing agent that has a water-absorbing property and a deodorizing capability” (JP ‘861 at 1). JP ‘861 discloses that its agent is composed of a water-absorbing resin (id. at 3), and is “suitable for use in sanitary materials that require functions of absorbing moisture and eliminating odors or for other industrial purposes” (id. at 2). 19 Appeal 2008-4292 Application 10/448,456 21. JP ‘861 discloses that its composition can contain a deodorizing agent, and that “[t]he extract (b) from a leaf of a theaceous plant has such a deodorizing effect that is stronger than those of extracted substances from other plants. The extract (b) includes such constituents as flavonol, flavanones, organic polymers, tannic acid, and the like” (JP ‘861 at 4). ANALYSIS Appellants’ arguments do not persuade us that the Examiner failed to make a prima facie case that one of ordinary skill in the art would have considered claim 9 obvious in view of Dairoku ‘405 and JP ‘861. Specifically, we agree with the Examiner that one of ordinary skill in the art preparing the resin of Dairoku ‘405 for use in sanitary applications such as disposable diapers (FF 16), advised by Dairoku ‘405 of the desirability of including deodorants in the composition (FF 19), and also advised by JP ‘861 of the advantageousness of flavanones and polyphenols, such as tannic acid, as deodorizers in absorbent resins used in sanitary materials like disposable diapers (see FF 20, 21), would have been prompted by JP ‘861 to use its deodorants in the compositions disclosed by Dairoku ‘405. Moreover, we not agree with Appellants that one of ordinary skill in the art would only have arrived at the claimed particle size distribution through hindsight. Specifically, the preferred average particle size for the resin of Dairoku ‘405 is 300 to 600 μm (FF 18). That range is well within, or at least significantly overlapping, the requirement in claim 9 that 90 mass percent of the particles in the composition must have a diameter of from 150 μm to less than 850 μm, with at least 60 mass percent of the particles having a diameter of at least 300 μm. 20 Appeal 2008-4292 Application 10/448,456 As discussed above, “even a slight overlap in range establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d at 1329. We therefore agree with the Examiner that the particle size distribution recited in claim 9 would have been prima facie obvious to one of ordinary skill in view of the cited references. Moreover, as also discussed above, while Appellants aver that the claimed particle size yields a product having advantageous or unexpected properties (App. Br. 16-17), it is not clear that the data presented in the Specification (see Spec. 149 (Table 2)) compares a claimed embodiment to the closest prior art. It is therefore not clear that Appellants have presented any evidence sufficient to rebut the Examiner’s prima facie case of obviousness. See In re Baxter-Travenol Labs., 952 F.2d at 392. Because the Examiner has made a prima facie case that claim 9 would have been obvious to one of ordinary skill in the art in view of Dairoku ‘405 and JP ‘861, and because Appellants have not adequately rebutted that prima facie case, we affirm the Examiner’s rejection of claim 9 over those references. Because they were not argued separately, claims 10-16, 26-29, 33-35, 44-47, 50, and 51 fall with claim 9. See 37 C.F.R. § 41.37(c)(1)(vii SUMMARY We affirm the Examiner’s rejection of claims 9-16, 26-29, 33-35, 44-47, 50, and 51 under 35 U.S.C. § 102(e) as anticipated by Ueda. We also affirm the Examiner’s alternative rejection of claims 9-16, 26-29, 33-35, 44-47, 50, and 51 under 35 U.S.C. § 103(a) as obvious over Ueda in view of Dairoku ‘394 or Kasai. We affirm the Examiner’s rejection of claims 9-16, 26-29, 33-35, 21 Appeal 2008-4292 Application 10/448,456 44-47, 50, and 51 under 35 U.S.C. § 102(e) as anticipated by Miyake. We also affirm the Examiner’s alternative rejection of claims 9-16, 26-29, 33-35, 44-47, 50, and 51 under 35 U.S.C. § 103(a) as obvious over Miyake in view of Dairoku ‘394 or Kasai. We affirm the Examiner’s rejection of claims 9-16, 26-29, 33-35, 44-47, 50, and 51 under 35 U.S.C. § 103(a) as being unpatentable over Dairoku ‘405 in view of JP JP-60-158861. TIME LIMITS 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 LP NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 22 Copy with citationCopy as parenthetical citation