Ex Parte Wendker et al

Board of Patent Appeals and Interferences

Sep 15, 2011

12093097 (B.P.A.I. Sep. 15, 2011)

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).
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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.
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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
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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
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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
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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
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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
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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
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