LG CHEM, LTD.

Patent Trials and Appeals Board

Dec 10, 2020

2020000349 (P.T.A.B. Dec. 10, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/027,535 04/06/2016 Wook Hwan Noh LGCHEM 3.3F-785 6855
86765 7590 12/10/2020
LGCHEM
Lerner, David, Littenberg, Krumholz & Mentlik, LLP
20 Commerce Drive
Cranford, NJ 07016
EXAMINER
NELSON, MICHAEL B
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
12/10/2020 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):
eOfficeAction@lernerdavid.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOOK HWAN NOH, JUN KYU KIM, JONG HYUK KWON,
YOUNG JAE HUR, and KI HAN KIM
Appeal 2020-000349
Application 15/027,535
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–5, 7–11, and 13. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
LG CHEM, LTD. (Appeal Br. 2).
Appeal 2020-000349
Application 15/027,535

2
CLAIMED SUBJECT MATTER
The claims are directed to a superabsorbent powder composition.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A superabsorbent polymer composition comprising: a
superabsorbent polymer and particles, wherein the particles are
attached on a surface of the superabsorbent polymer, wherein the
particles consist of aluminum hydroxide particles having an
average particle size of 2 µm to 50 µm, and wherein 70% by
weight or more of the aluminum hydroxide particles included in
the superabsorbent polymer is fixed on the surface of the
superabsorbent polymer,
wherein an anti-caking efficiency (A/C) of the
superabsorbent polymer composition is 30% or more, wherein the
anti-caking efficiency is represented by the following equation 3:
A/C(%) = W6(g)/W5(g) x 100 (Equation 3)
wherein W5(g) is the weight (g) of the superabsorbent
polymer composition, and W6(g) is the weight of the absorbent
polymer composition that has fallen, after evenly applying the
superabsorbent composition on a 10 cm flask dish, placing it in a
constant temperature and humidity chamber at a temperature of
40±3 °C and humidity of 70±3% for 10 min, and then inverting
the flask dish on a filter paper and gently tapping the dish three
times.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Shirai US 4,771,105 Sept. 13, 1988
Kimura US 5,164,459 Nov. 17, 1992
Sheldon US 6,436,418 B1 Aug. 20, 2002
Walden US 2009/0105389 A1 Apr. 23, 2009
REJECTIONS
The claims stand rejected as follows: 1) claims 1, 3–5, 7–11, and 13
under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point
Appeal 2020-000349
Application 15/027,535

3
out and distinctly claim the subject matter which the inventors regard as the
invention; 2) claims 1, 3–5, 7–10, and 13 under 35 U.S.C. § 103 over
Walden in view of Shirai and Kimura; and 3) claim 11 under
35 U.S.C. § 103 over Walden in view of Shirai, Kimura, and Sheldon.
OPINION
Rejection under 35 U.S.C. § 112, second paragraph
“[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a
particular area with a reasonable degree of precision and particularity.’”
Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d 1356, 1359 (Fed.
Cir. 2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)).
The Examiner concludes that “it is unclear if the 10cm value is the
radius or diameter of the dish” (Final Rej. 2).
The Examiner provides no evidence of uncertainty in the art as to
whether the width of a laboratory dish is specified by its radius or diameter.
Hence, the Examiner has not established that the Appellant’s claims are
indefinite in that respect.
The Examiner concludes that “‘gentle tapping’ renders the claim
scope unclear because it is unclear what level of tapping qualifies as
‘gentle’” (Final Rej. 2).
That conclusion is not well taken because the Examiner provides no
evidence that the term “gentle tapping” would have been unclear to one of
ordinary skill in the art.
The Examiner concludes that the “lack of a recitation of the amount of
composition that is distributed on the dish renders the claim unclear because
it makes it unclear how much exposed surface area the composition has for
the test” (Ans. 3).
Appeal 2020-000349
Application 15/027,535

4
The Appellant’s sole independent claim (1) requires “evenly applying
the superabsorbent composition on a 10 cm flask dish.” The claim is not
limited as to the amount or exposure of the evenly-applied superabsorbent
composition.
Thus, the Examiner has not established that the Appellant’s claims fail
to circumscribe a particular area with a reasonable degree of precision and
particularity. Accordingly, we reverse the rejection under
35 U.S.C. § 112(b).
Rejections under 35 U.S.C. § 103
The Appellant’s sole independent claim (1) requires that particles
attached on a surface of a superabsorbent polymer “consist of aluminum
hydroxide particles having an average particle size of 2 µm to 50 µm.”
Walden discloses that at least about 50 wt% of fine particles, which
can be aluminum hydroxide particles, attached to the surface of a
superabsorbent polymer “may have an average particle diameter (weight
average) in a range of from about 10 to about 1,000 µm” (¶ 81), and that
“[t]he content of fine particles having an average particles size greater than
150 µm is more than about 20 wt%” (¶ 82).
The Examiner finds (Ans. 20):
Walden discloses at least 99wt% of the particles have a size of
10-1,000 microns at [0081] and [0082] discloses an
embodiment in which more than 20wt% of the particles have a
size of 150 microns or more. Therefore, the narrower [0082]
cannot be held to invalidate the explicit, broader teachings of
[0081], which clearly encompasses, e.g., 99wt% of particles
having a size of 10 microns (within the claimed range). [0082]
must therefore be merely a narrowed embodiment (at best, a
preferred embodiment) of Walden.

Appeal 2020-000349
Application 15/027,535

5
Walden’s statement that “[t]he content of fine particles having an
average particles size greater than 150 µm is more than about 20 wt%”
(¶ 82) is a requirement, not a narrowed or preferred embodiment. The
Examiner does not establish, in view of that requirement, that Walden would
have suggested aluminum hydroxide particles having an average particle
size of 2 µm to 50 µm. The Examiner’s rejections under 35 U.S.C. § 103
appear, therefore, to be based upon impermissible hindsight in view of the
Appellant’s disclosure. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (“A rejection based on section 103 clearly must rest on a factual basis,
and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art”). Consequently we reverse those rejections.
CONCLUSION
The Examiner’s rejections are reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–5, 7–
11, 13
112(b) Indefiniteness 1, 3–5, 7–
11, 13
1, 3–5, 7–
10, 13
103 Walden, Shirai,
Kimura
1, 3–5, 7–
10, 13
11 103 Walden, Shirai,
Kimura, Sheldon
11
Overall
Outcome
1, 3–5, 7–
11, 13
REVERSED