Ex Parte Weismantel et alDownload PDFPatent Trial and Appeal BoardMay 23, 201612521945 (P.T.A.B. May. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/521,945 07/01/2009 4743 7590 05/25/2016 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 FIRST NAMED INVENTOR Matthias Weismantel UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 29827/44626 4124 EXAMINER REDDY, KARUNA P ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 05/25/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHIAS WEISMANTEL, RUDIGER FUNK, LEIGH R. BLAIR, KEVIN D. HEITZHAUS, and BRUCE STOREY Appeal2014-007295 Application 12/521,945 Technology Center 1700 Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1-3, 5-10, 12, and 13 of Application 12/521,945 under 35 U.S.C. § 103(a) as obvious. Final Act. (June 19, 2013). Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we REVERSE. 1 BASF SE (BASF) is identified as the real party in interest. App. Br. 4. Appeal2014-007295 Application 12/521,945 BACKGROUND The '945 Application describes a process for the production of superabsorbent polymers. Spec. 1. The Specification describes the process as increasing conveyor belt speed to facilitate uniform release of a polymer gel from the conveyor belt to a dryer belt. Id. at 3: 11-13. The Specification further describes the process as modifying the degree of polymer gel neutralization to facilitate uniform distribution of the polymer gel on the dryer belt. Id. at 3:6-13. Claim 1 is representative of the '945 Application's claims and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A process for production of superabsorbent polymers compnsmg i) polymerizing a monomer solution in a polymerization reactor to form a polymer gel, the monomer solution comprising at least one ethylenically unsaturated acid-functional monomer, ii) conveying the formed polymer gel on an oscillating conveyor belt having a belt speed of at least 0.8 mis and transferring the formed polymer to a continuous through- circulation belt dryer, and iii) drying the polymer gel on the continuous through- circulation belt dryer wherein a water content of the polymer gel before drying is at least 30 wt.%. Appeal Br. A-1. 2 Appeal2014-007295 Application 12/521,945 REJECTIONS On appeal, the Examiner maintains2 the following rejections: 1. Claims 1, 5-10, 12, and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Becker3 and Buchholz. 4 Final Act. 5. 2. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Becker, Buchholz, and Dahmen. 5 Final Act. 7. DISCUSSION Appellants argue for the reversal of the rejections to dependent claims 2, 3, and 5-10 on the basis of limitations present in independent claim 1. See Appeal Br. 8. We, therefore, limit our analysis to claim 1 for the rejections of these claims. Dependent claims 2, 3, and 5-10 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellants separately argue for the reversal of the rejection of dependent claims 12 and 13. Id. 2 The Examiner has withdrawn the rejections of: (i) claims 1, 5-10, 12, and 13 as obvious over the combination of Becker and RD 427047 A and (ii) claims 2 and 3 as obvious over the combination of Becker, RD 427047 A, and Dahmen. (Ans. 5---6.) 3 W02005/103l19, published Nov. 3, 2005. We follow Appellants and the Examiner in citing US 2008/0021150 Al, published Jan. 24, 2008, as the English-language equivalent. 4 MODERN SUPERABSORBENT POLYMER TECHNOLOGY (Fredric L. Buchholz and Andrew T. Graham eds., 1998). 5 US Patent No. 6,403,700 Bl, issued June 11, 2002. 3 Appeal2014-007295 Application 12/521,945 Claim 1 is directed to a process for production of superabsorbent polymers comprising "conveying the formed polymer gel on an oscillating conveyor belt having a belt speed of at least 0.8 mis and transferring the formed polymer to a continuous through-circulation belt dryer .... " Similarly, claims 12 and 13 are directed to further limitations on the conveyor belt speed. Appellants argue that the Examiner erred by finding that the combination of Becker and Buchholz (with or without Dahmen) describes or suggests such steps of conveying the polymer gel on a conveyor belt having the requisite high belt speed and transferring the polymer gel to a dryer belt. Appeal Br. 19-23; Reply Br. 1--4. In rejecting claim 1, the Examiner relied on Buchholz, which discloses that "[t]he belt speed and the rate at which product is loaded to the dryer determine the depth of the product on the belt." Buchholz 90; see also Final Act. 6. The Examiner determined that the speed of the oscillating conveyor belt is a result-effective variable that can be optimized by one of ordinary skill in the art to obtain a desired product loading and depth on the dryer belt. Ans. 6. As explained by Appellants (e.g., App. Br. 16; Reply Br. 1-3), the Examiner's finding is not supported by a preponderance of the evidence. Our reviewing court's predecessor has held that a variable must be art-recognized as result-effective before it can be deemed to be subject to routine optimization. In re Antonie, 559 F.2d 618, 620 (CCPA 1977).6 On 6 The continuing viability of Antonie's reasoning has been called questionable in view of the Supreme Court's decision in KSR Int 'l Inc. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Ex parte Tatebe, 2012 WL 253455 at *6 (BPAI January 23, 2012). We, however, remain bound by Antonie until it is overruled. 4 Appeal2014-007295 Application 12/521,945 the record before us, we do not see where, or how, the prior art establishes that conveyor belt speed is a property which one skilled in the art would have recognized as a result-effective variable in the context of the claimed invention. The only evidence in this record is that there is not a recognized connection between (1) achieving a complete release of the sticky polymer gel from an oscillating conveyor belt and (2) high belt speed. See Appeal Br. Evidence Appendix A-14 (showing commercial oscillating conveyor belt speed is limited to the range of0.1---0.6 mis); see also Appeal Br. 16 (explaining that manufacturers of superabsorbent polymers and oscillating conveyers never considered increasing the belt speed greater than 0.6 mis). Accordingly, we cannot sustain the rejection of claim 1. We, therefore, reverse the rejections of claims 1-3 and 5-10 of the '945 Application because the Examiner has not properly made out a prima facie case of obviousness. Appellants present separate arguments urging the reversal of the rejection of claims 12 and 13. Appeal Br. 23. These claims recite further limitations on the conveyor belt speed to at least 1.2 mis (claim 12) or 1.6 mis (claim 13). For the reasons set forth above, the Examiner has not shown that belt speed is a response-effective variable. Accordingly, we also reverse the rejection of these claims. CONCLUSION For the reasons set forth above, we reverse the rejections of claims 1- 3, 5-10, 12, and 13 of the '945 Application. REVERSED 5 Copy with citationCopy as parenthetical citation