Ex Parte Wendker et alDownload PDFBoard of Patent Appeals and InterferencesSep 15, 201112093097 (B.P.A.I. Sep. 15, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte MARTIN WENDKER, NORBERT HERFERT, and PAUL WALTER McCORMACK __________ Appeal 2010-010980 Application 12/093,097 Technology Center 1700 __________ Before TONI R. SCHEINER, DEMETRA J. MILLS, and STEPHEN WALSH, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-010980 Application 12/093,097 2 STATEMENT OF CASE The following claim is representative. 1. A process for preparing water-absorbing polymers by polymerizing a monomer solution comprising (a) at least one ethylenically unsaturated, acid-bearing monomer, optionally at least partly neutralized, (b) from 0.05 to 0.5% by weight of at least one crosslinker based on the monomer a), (c) optionally one or more ethylenically unsaturated monomers copolymerizable with the at least one monomer a) and (d) optionally one or more water-soluble polymers, by polymerizing the monomer solution and aftertreating a resulting polymer with (e) from 0.1 to 0.25% by weight of at least one postcrosslinker comprising at least two groups that can form covalent bonds with acid groups of the polymer, based on the polymer, where the postcrosslinker is different from a polyol, and (f) from 0.1 to 0.25% by weight of at least one polyvalent cation based on the polymer, wherein the polyvalent cation is a metallic cation. Cited References Daniel et al. „684 US 2005/0245684 A1 Nov. 3, 2005 Daniel et al. „816 WO 2004/024816 A1 Mar. 25, 2004 Grounds of Rejection 1. Claims 1-12 and 15-16 are rejected under 35 U.S.C. § 103(a) for obviousness over Daniel „816 using Daniel „684 as the English translation. FINDINGS OF FACT The findings of fact are set forth in the Answer at pages 4-13. Additional findings of fact. Appeal 2010-010980 Application 12/093,097 3 1. The Specification states that component (e) (the postcrosslinker) is preferably oxazolidone or a diglycidyl (Spec. 7:22-26). 2. The Specification states that the amount of postcrosslinker is preferably 0.08-0.22% (Spec. 8: 4-5). 3. The Specification states that polyols can be used in the postcrosslinker solution (Spec. 8: 10-12). 4. For component (f), the Specification states that aluminum is a preferred polyvalent cation, and aluminum sulfate is the preferred cation-counterion. (Spec. 9: ll. 4-10.) 5. The Specification examples use diols in Examples 4, 5 and 7, and aluminum sulfate as providing the polyvalent cation (f). Discussion ISSUE The Examiner concludes that As to claims 1 and 15, Daniel et al. discloses a process for preparing a water absorbing polymer comprising (see abstract): a. At least one ethylenically unsaturated acid bearing monomer (acrylic acid). See paragraphs [0126] through [0127] of Daniel and paragraphs [0055] of Daniel, [0058] of Daniel and [0059] of Daniel for more information. b. From 0.01 to 14% by weight of a crosslinker based monomer. See paragraph [0057] of Daniel and [0126] of Daniel. Also see paragraphs [0061] through [0064] of Daniel. c. Is optional. d. Is optional. e. 0.08% by weight (it is noted that the prior art is open to up to 20 wt% of the postcrosslinker composition including polyols, thus overlapping the presently claimed Appeal 2010-010980 Application 12/093,097 4 range, see paragraph [0075] of Daniel) of oxazolidinone or diglycidyl compounds (a postcrosslinker not based on a polyol that has two groups that can form covalent bonds with acid groups) as a specific example/solution for postcrosslinking. See paragraphs [0081] through [0085], [0126] through [0127] of Daniel and abstract. It is noted that the example also comprises 0.02% sorbitan monolaurate (a polyol) and 3.5% 1,2-propanediol (a polyol), however these are not postcrosslinkers different than a polyol, therefore are not used in the calculation of the total amount of postcrosslinker. To further elaborate, the polyols do not read under ingredient (f), although they are postcrosslinkers. Since the claim is open to additional components (comprising), postcrosslinkers that do not encompass the specific postcrosslinker of component (f), such as polyol, can be present in the composition in any amount. f. 0.08 wt% by weight of aluminum sulfate (divalent cation). See paragraph [0090] of Daniel. Calculated and disclosed by applicants in the amendment filed on 03/10/2009. It is also noted that the prior art discloses a nitrogenous polymer, however this is not a metallic cation (thus not part of component f) thereby not factoring into calculations. It is noted that the prior art appears to define the aluminum sulfate is part (via the indentation after paragraph [0081] of Daniel) of the postcrosslinking solution (although it does not appear to be a crosslinker by itself) Thus, the prior art is open to up to 20 wt% of the postcrosslinker solution (or higher amounts of aluminum sulfate), thus overlapping the presently claimed range, see paragraph [0075] of Daniel and paragraph [0081] through paragraph [0090] of Daniel. Additionally, paragraph [0040] through paragraph [0042] of Daniel defines water-insoluble salts, such as calcium carbonate (divalent cation), that are added in amounts from 0.001 to 1 wt% with the nitrogenous polymer and Appeal 2010-010980 Application 12/093,097 5 postcrosslinking solution (see paragraph [0039] of Daniel). Thus, the overall amount of metallic polyvalent cation is clearly overlapping (0.001 to 21 wt%) with the instant claims. . . . Furthermore, it is the examiner's position that the amount of (b), (e) and (f) are result effective variables because changing them will clearly affect the type of product obtained (e.g. the amount of crosslinking and controlling tackiness regarding component f, see paragraph [0039] of Daniel). (Ans. 4-6.) As to claim interpretation, Appellants argue that polyols are excluded as postcrosslinkers in the claims. (App. Br. 15.) Appellants argue that they have “found the proper relationship between three independent variables to arrive at the unexpected results achieved by the presently claimed invention.” (Id. at 16.) Appellants argue that Daniel „684 discloses an amount of postcrosslinker that is 20% less than the presently claimed amount. (Id. at 18.) Appellants argue that Daniel „684 discloses a water- insoluble salt and does not teach adding a cation because it is bound to the anion. (Reply Br. 1.) The issue is: Do the claims exclude a polyol postcrosslinker? Does the cited prior art disclose or suggest the claimed amount of postcrosslinker? Does the prior art disclose a metallic cation, as claimed? PRINCIPLES OF LAW During ex parte prosecution, claims are to be given their broadest reasonable interpretation consistent with the description of the invention in Appeal 2010-010980 Application 12/093,097 6 the specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). “An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” Id. at 321. “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 134 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Woodruff, 919 F.2d 1575, 1578 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974). Prima facie obviousness has been found when the claimed range and the prior art range do not overlap, but are close enough that one skilled in the Appeal 2010-010980 Application 12/093,097 7 art would have expected them to have the same properties, shifting the burden to the applicant to show they are different. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997). ANALYSIS We agree with the Examiner‟s fact finding, statement of the rejection and responses to Appellants‟ arguments as set forth in the Answer. We find that the Examiner has provided sufficient evidence in the prior art to support a prima facie case of obviousness. We provide the following additional comment and note that other arguments of Appellants are addressed in the Examiner‟s Answer. As to claim interpretation, and in contrast to Appellants‟ argument, we agree with the Examiner that claim 1 only seeks to limit the amount of non-polyol postcrosslinker and that the claims do not exclude polyol postcrosslinkers. (Ans. 18-19.) This is particularly evident when the claims are interpreted consistent with the disclosure examples, which all include a non-polyol postcrosslinker and a polyol postcrosslinker. See Specification, Examples 4-7. We also agree with the Examiner that Daniel teaches 0.08 wt% of oxazolidinone (a nonpolyol postcrosslinker). (Id. at 19.) We conclude that the 0.08 wt% of non-polyol postcrosslinker of Daniel is close enough to the claimed 0.1 wt% non-polyol postcrosslinker to establish a prima facie case of obviousness and shift the burden to Appellants to show that the claimed process produces a product which differs from that of Daniel „684. Prima facie obviousness has been found when the claimed range and the prior art Appeal 2010-010980 Application 12/093,097 8 range do not overlap, but are close enough that one skilled in the art would have expected them to have the same properties, shifting the burden to the applicant to show they are different. Titanium Metals Corp. of America v. Banner, 778 F.2d at 783; In re Geisler, 116 F.3d at 1469. Daniel further discloses that the centrifuge retention capacity falls within the ranges claimed to be unexpected in view of process examples in the Specification. (Ans. 15.) Appellants argue that Daniel „684 discloses a water-insoluble salt and does not teach adding a cation because it is bound to the anion. (Reply Br. 1.) We are not persuaded. The claims do not recite that the cation must be water soluble. (Ans. 17-18.) Daniel „684 discloses that suitable cations include calcium and aluminum in an amount from 0.001 to 20% which reads on the claimed amount. (Daniel „684, paragraphs [0040] and [0042].) The Specification states that aluminum as in aluminum sulfate is a preferred polyvalent cation for step (f). CONCLUSION OF LAW The claims as recited do not exclude a polyol postcrosslinker. The cited references support the Examiner‟s obviousness rejection for the reasons of record. The cited references disclose the claimed amount of postcrosslinker and disclose a metallic cation, as claimed. 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 cdc Copy with citationCopy as parenthetical citation