LG Chem, Ltd.

Patent Trials and Appeals Board

Jun 4, 2021

2020003662 (P.T.A.B. Jun. 4, 2021)

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.
15/755,325 02/26/2018 Ju Eun Kim LGCHEM 3.3F-1324 5888
86765 7590 06/04/2021
LGCHEM
Lerner, David, Littenberg, Krumholz & Mentlik, LLP
20 Commerce Drive
Cranford, NJ 07016
EXAMINER
WHITELEY, JESSICA
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
06/04/2021 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 JU EUN KIM, GI CHEUL KIM,
SE YEOL PARK, and KI HYUN KIM
__________

Appeal 2020-003662
Application 15/755,325
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
BRIAN D. RANGE, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1, 3, 4, and 6–16. 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 Brief dated November 22, 2019, at 2.
Appeal 2020-003662
Application 15/755,325

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Claim 1, the sole independent claim on appeal, is reproduced below from the
Claims Appendix to the Appeal Brief. The limitations at issue are italicized.
1. A method for preparing a superabsorbent polymer, comprising:
thermal polymerizing or photopolymerizing a monomer
composition comprising water-soluble ethylenically unsaturated
monomers and a polymerization initiator to form a hydrogel polymer;
drying the hydrogel polymer;
grinding the dried polymer; and
surface crosslinking the ground polymer in the presence of a
surface crosslinking agent consisting of a polyhydric alcohol and
porous silica or clay to form the superabsorbent polymer, wherein the
polyhydric alcohol having a carbon number of 4 to 5 and having a
branched alkyl group.
Appeal Br. 14.2
On appeal, the Appellant seeks review of the Examiner’s rejection of claims
1, 3, 4, and 6–16 under 35 U.S.C. § 102(a)(1) as anticipated by Nogi.3,4
B. DISCUSSION
Claim 1 recites a method for preparing a superabsorbent polymer
comprising, inter alia, the step of
surface crosslinking [a] ground polymer in the presence of a surface
crosslinking agent consisting of[5] a polyhydric alcohol and porous
silica or clay to form the superabsorbent polymer, wherein the

2 Revised Appeal Brief dated January 21, 2020 (“Appeal Br.”), at 14.
3 US 2014/0042364 A1, to Nogi et al., published February 13, 2014 (“Nogi”).
4 The Examiner withdrew the anticipation rejection of claims 1, 4, 6, 7, 9, 10, and
12–16 based on Jung and the obviousness rejection of claims 3 and 11 based on the
combination of Jung and Nogi. Examiner’s Answer dated February 13, 2020
(“Ans.”), at 5.
5 See AFG Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239, 1245 (Fed. Cir.
2001) (“‘[C]losed’ transition phrases such as ‘consisting of’ are understood to
exclude any elements, steps, or ingredients not specified in the claim.”).
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polyhydric alcohol ha[s] a carbon number of 4 to 5 and ha[s] a
branched alkyl group.
Appeal Br. 14 (emphasis added).
The Examiner finds Nogi discloses a method of producing a polyacrylic acid
based water absorbent resin powder comprising, inter alia, the step of surface
crosslinking a pulverized polymer, wherein the surface crosslinking agent is a
polyhydric alcohol within the scope of claim 1 (i.e., neopentyl glycol). Final Act.
2–3 (citing Nogi ¶¶ 263, 757).6 The Examiner finds the surface crosslinking agent
is used in combination with a water-insoluble fine particle, such as silicon oxide or
clay. Final Act. 3 (citing Nogi ¶¶ 302, 307, 308).
The Appellant argues that the Examiner has failed to establish that Nogi
“teaches each and every element as arranged in claim 1 without the need for
picking and choosing.” Appeal Br. 3; see also In re Arkley, 455 F.2d 586, 587
(CCPA 1972) (To anticipate a claim, “the [prior art] reference must clearly and
unequivocally disclose the claimed [invention] or direct those skilled in the art to
the [invention] without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of the cited
reference.”).
The Appellant’s argument is supported by the record. Turning to the
paragraphs of Nogi relied on by the Examiner, Nogi’s paragraph 263 discloses
mixing an alkylene carbonate compound and a polyhydric alcohol compound,
wherein the polyhydric alcohol compound is preferably a C3-C6 polyhydric
alcohol. Appeal Br. 4. The Examiner finds that neopentyl glycol, a C-5
polyhydric alcohol, is described in Nogi’s paragraph 757 (Example 3-6). Final
Act. 3. However, paragraph 757 merely discloses that neopentyl glycol was

6 Final Office Action dated April 19, 2019.
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Application 15/755,325

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“stored in the melted state until use as a surface crosslinking agent.” Nogi’s
paragraph 758 (Example 3-6) describes the surface crosslinking agent as
“neopentyl glycol/propylene glycol/deionized water” which is outside the scope of
claim 1. See Appeal Br. 5–6 (arguing, in reference to Nogi’s Example 3-6, that a
water-insoluble fine particle is absent from the surface crosslinking solution and
propylene glycol is not a polyhydric alcohol having 4 to 5 carbons and does not
have a branched alkyl group as claimed).
The Examiner finds that Nogi’s paragraphs 302, 307, and 308 describe
water-insoluble fine particles. Final Act. 3. Those paragraphs are part of a section
titled “Ion Binding Surface Crosslinking Agent, Water-Insoluble Fine Particle.”
Nogi ¶ 302; Appeal Br. 6. Paragraph 307 discloses that “[e]xamples of the water-
insoluble fine particle include inorganic fine powders such as silicon oxide,
aluminum oxide, clay and kaolin, and organic fine particles such as calcium lactate
and a metal soap.” Paragraph 308 discloses:
It is preferable that the water absorbent resin powder of the
present invention contains simultaneously or separately further a
liquid permeability improving agent selected from a polyamine
polymer, a polyvalent metal salt (polyvalent metal cation), and a
water-insoluble fine particle, in addition to the surface crosslinking
agent.
We find that Nogi’s paragraphs 302, 307, and 308 do not “clearly and
unequivocally” disclose silica or clay in combination with the claimed polyhydric
alcohol. Arkley, 455 F.2d at 587 (emphasis added).
Finally, the Examiner directs our attention to Nogi’s paragraph 310 to
support a finding of anticipation. Ans. 4, 6. Paragraph 310 discloses:
Hereinafter, further, a polyhydric alcohol and/or α-
hydroxycarboxylic acid (salt) which are used in combination with an
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ion binding surface crosslinking agent, a water-insoluble fine particle,
or an ion binding surface crosslinking agent will be explained.
To arrive at the claimed surface crosslinking agent from the disclosure in
Nogi’s paragraph 310, one of ordinary skill in the art would need to select a
polyhydric alcohol and a water-insoluble fine particle, to the exclusion of all other
components disclosed therein. See AFG, 239 F.3d at 1245 (closed transitional
phrase “consisting of” is understood to exclude any elements, steps, or ingredients
not specified in the claim). Next, one of ordinary skill in the art would need to
select the neopentyl alcohol used in Nogi Example 3-6. Nogi ¶ 757. Finally, one
of ordinary skill in the art would need to select an inorganic fine power from the
water-insoluble fine particles disclosed in Nogi and then select silicon oxide or
clay from the disclosed inorganic fine powders. Nogi ¶ 307. We find that such
selections may be proper in an obviousness rejection where the evidence of record
provides a reason for making those selections. See Merck & Co. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (the disclosure of a multitude of effective
combinations does not render any particular formulation less obvious especially
where the claimed composition is used for the identical purpose taught by the prior
art). Such selections, however, are not proper in the anticipation rejection on
appeal. Arkley, 455 F.2d at 587.
In sum, the Examiner has failed to establish that the claimed surface
crosslinking agent is anticipated by Nogi. Therefore, the anticipation rejection of
claims 1, 3, 4, and 6–16 is not sustained.
C. CONCLUSION
The Examiner’s decision is reversed.

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Application 15/755,325

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In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 6–16 102(a)(1) Nogi 1, 3, 4, 6–16

REVERSED