SK INNOVATION CO., LTD et al.

Patent Trials and Appeals Board

Apr 6, 2021

2020002709 (P.T.A.B. Apr. 6, 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.
15/011,701 02/01/2016 Byoung-Tak YIM P67315DH20 7487
89340 7590 04/06/2021
The PL Law Group, PLLC
13800 Coppermine Road
FL 1-3
Herndon, VA 20171
EXAMINER
JONES JR., ROBERT STOCKTON
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
04/06/2021 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):
mail@thepllaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BYOUNG-TAK YIM, DU-YOUN KA, and
BYOUNG-CHEON JO
Appeal 2020-002709
Application 15/011,701
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
BRIAN D. RANGE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as SK Innovation Co., LTD and SK
Global Chemical Co., LTD. Appeal Br. 3.
Appeal 2020-002709
Application 15/011,701
2
CLAIMED SUBJECT MATTER
The claims are directed to a water-absorbing resin that is defined in
terms of (a) its content of water-soluble fraction, (b) an absorbency against
pressure property, and (c) a water-soluble fraction shear index property. See,
e.g., claim 16. Claim 16, reproduced below, is illustrative of the claimed
subject matter:
16. A water-absorbing resin, in which
[a] a content of a water-soluble fraction is 15 wt% or less based
on the total weight of the resin,
[b] an absorbency against pressure at 0.3 psi with respect to a
saline solution including sodium chloride at 0.9 wt% is 25
g/g or more, and
[c] a water-soluble fraction shear index A/B represented by the
following Expression 1 is in a range of 0.1 x 10-5 (s) to 10 x
10-5 (s):
A/B [Expression 1]
where A is an absolute gradient of viscosity with
respect to a shear rate of an ultrapure water solution with
a content of a water-soluble fraction of 0.2 wt% of the
water-absorbing resin, and is represented by the
following Expression 2, and B is a viscosity at a shear
rate of 10/s of an ultrapure water solution including a
water-soluble fraction of a water-absorbing resin after
immersing a water-absorbing resin in ultrapure water of
which the weight is 400 times the weight of the water-
absorbing resin and stirring a mixed solution at 300 rpm
for 60 minutes;
(Vis(100)-Vis(10))/(100-10) [Expression 2]
where Vis (100) is a viscosity of an aqueous
solution at a shear rate of 100/s, and Vis (10) is a
viscosity of an aqueous solution at a shear rate of 10/s.
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Application 15/011,701
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Appeal Br. 17 (Claims Appendix) (formatting added).
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Naumann WO 2013/101197 A12 July 4, 2013

REJECTION
Claims 16–20 are rejected under 35 U.S.C. § 102(a)(1) as anticipated
by or, in the alternative, under 35 U.S.C. § 103 as obvious over Naumann.
Final Act. 2.
OPINION
Like Appellant, Naumann describes forming a water-absorbing
polymer by crosslinking and polymerizing an acrylic acid monomer.
Compare Naumann ¶¶ 1–2, 9–12, 87, 89, with Spec. 2:17–21. There is no
dispute that Naumann does not report the specific properties that claim 16
recites. The Examiner’s rejection is based on a finding that Naumann
describes example absorbents inherently having the claimed properties given
the similarities in starting materials and processing to Appellant’s starting
materials and processing. Final Act. 2–3. Appellant contends that the
Examiner has not established a sound basis for that finding. Appeal Br. 5–
16. In making this argument, Appellant does not argue any claim separately
from independent claim 16. Appeal Br. 5–16. We select claim 16 as
representative for resolving the issues on appeal.

2 The Examiner cites to the U.S. equivalent, US 2015/0093575 A1,
published April 2, 2015. We will also cite to this document.
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Application 15/011,701
4
The Examiner and Appellant both recognize the well-settled law
involved. Compare Final Act. 2–3, with Appeal Br. 5. “Where . . . the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the [USPTO] can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.” In re Best, 562
F.2d 1252, 1255 (CCPA 1977). Similarities in the products and of the
process of making provide a reasonable basis to believe that the products are
the same. Id.; see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(“[W]hen the [USPTO] shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.”).
The Examiner’s inherency finding is based on the fact that Naumann
uses two internal crosslinkers to crosslink an acrylic acid and this method is
the same or similar to Appellant’s two-crosslinker method. Final Act. 2;
Ans. 3. Appellant contends that the Examiner is mistaken. According to
Appellant, Naumann uses only one crosslinker. Appeal Br. 10–12; Reply Br.
3–9.
A preponderance of the evidence supports the Examiner’s finding.
Specifically, Naumann teaches using the reaction product of diallylamine-
allylglycidyl ether (diallylamine-AGE) as one internal crosslinking agent
together with ethoxylated (3) trimethylolpropane triacrylate (Sartomer Co.’s
SR454) as a second crosslinking agent. See, e.g., Naumann ¶ 179
(describing a procedure of adding crosslinkers labeled “crosslinker 6”). That
these two crosslinking agents are separate is evidenced by the procedure of
adding the first crosslinking agent to the monomer mixture and only adding
SR454 to that mixture “right before polymerization.” See, e.g., Naumann ¶
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Application 15/011,701
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175 (crosslinker 2), ¶ 177 (crosslinker 4), ¶ 181 (crosslinker 8), ¶ 183
(crosslinker 10). Although the description of the crosslinker 6 procedure
omits the words “added to the monomer,” there is no convincing evidence
that the procedure is different from the other examples using SR454. See
Naumann generally. Indeed, other portions of Naumann indicate that
ethoxylated (3) trimethylolpropane triacrylate (Sartomer Co.’s SR454) is a
separate crosslinker. For instance, paragraph 89 describes alkoxylated
derivatives of trimethylolpropane triacrylate as a “second, different internal
crosslinker” from those listed in paragraph 87, which lists diallylamine-
based internal crosslinkers.
Appellant’s reliance on claim 1 of Naumann does not convince us
otherwise. Naumann’s claim 1 encompasses embodiments using amine-
based crosslinkers such as those listed in paragraph 87 as the first internal
crosslinker. Claim 6, which depends from claim 1, further requires “a second
internal crosslinker composition.” Thus, claims 1 and 6 support, rather than
detract from the Examiner’s finding.
As the Examiner has cogently explained, Naumann describes using
two internal crosslinkers, not just one, to form the example absorbents with
the “crosslinker 6” procedure. Ans. 6–10. Naumann teaches specific
examples in Table 6. Naumann describes crosslinker 6 as “Diallylamine-
AGE+0.035% SR454.” Naumann ¶¶ 178–179. As pointed out by the
Examiner, the two crosslinkers have different chemical structures and
would, thus, have different reactivities. Ans. 8. Appellant has not directed us
to convincing evidence on this record indicating that Naumann’s two
crosslinkers have the same reactivity. Appellant’s Specification indicates
that using two internal crosslinkers of different reactivity results in a base
resin of more uniform crosslinking density. Spec. 13:8–15. It is reasonable
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Application 15/011,701
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to conclude that Naumann’s two internal crosslinkers would likewise result
in more uniform crosslinking density as compared to absorbents made with
one crosslinker. At least, in the absence of evidence showing otherwise.
Appellant contends that Naumann’s additional crosslinker does not
necessarily improve the absorbency under load (AUL) and absorbency
against pressure (AAP) properties reported by Naumann and relies on
Naumann’s data reported in Tables 5 and 6. Appeal Br. 12; Reply Br. 10–13.
The problem is that Naumann does not report the properties that Appellant is
claiming. The burden is on Appellant to show that, in fact, the specific
properties they claim are not present in Naumann’s absorbents. Appellant
has not met that burden.
Appellant contends that there is a second condition (condition (ii)
using a polyvalent metal salt solution) that results in the properties they
claim. Appeal Br. 13–16. Because the Examiner relies on similarities
between Appellant’s two crosslinker embodiment and Naumann’s two
crosslinker embodiment, Appellant’s alternative embodiment using a
polyvalent metal salt is of little relevance to the question at hand, i.e.,
whether the Examiner reversibly erred in finding that the similarities
between Appellant’s and Naumann’s two crosslinker embodiments provide a
reasonable basis to believe Naumann describes absorbents having the
properties required by claim 16 and that Appellant has not shown, in fact,
that the Naumann’s absorbents fail to have the specific properties Appellant
claims. Appellant has not identified such an error.
Even if the Examiner had reversibly erred in finding anticipation by
inherency, there is still the alternative rejection based on obviousness. Final
Act. 3. The Examiner finds that even if the properties of Naumann’s
examples are not within the ranges of claim 16, obtaining those properties
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Application 15/011,701
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would have been obtainable through minor modifications to the quantity of
internal and surface crosslinking agents as recommended in Naumann and
within the ordinary skill in the art based on the known effects of internal and
external crosslinking on solubility and absorbance properties. Id., citing
Naumann ¶¶ 9–12, 102. Appellant does not dispute this. Appeal Br. 5–16;
Reply Br. 3–11. Like Appellant, Naumann seeks to form a superabsorbent
polymer useful in diapers by crosslinking an acrylic acid. Compare
Naumann ¶ 1, with Spec. 34:14–17. Optimizing the properties of Naumann’s
absorbent for such uses would have been a mere matter of routine
experimentation within the ordinary skill in the art. The legal principle at
issue in this case is old. In re Aller, 220 F.2d 454, 456 (CCPA 1955)
(“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.”). Appellant has not identified a reversible error in the
Examiner’s obviousness analysis.
CONCLUSION
The Examiner’s decision to reject claims 16–20 is AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16–20 102/103 Naumann 16–20

RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
Appeal 2020-002709
Application 15/011,701
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AFFIRMED