Ex Parte Wada et al

Board of Patent Appeals and Interferences

Sep 24, 2008

10448456 (B.P.A.I. Sep. 24, 2008)

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).
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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
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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.
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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]).
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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)).
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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
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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
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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
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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
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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).

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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
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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.
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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
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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.
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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.
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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
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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
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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).
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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.
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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,
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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

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