13957073 - (D) (P.T.A.B. Mar. 26, 2019)

Ex Parte Lösch et al

Patent Trials and Appeals BoardMar 26, 2019

13957073 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/957,073 08/01/2013 4743 7590 03/28/2019 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 FIRST NAMED INVENTOR Dennis Losch 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 29827/44578A 2188 EXAMINER KRYLOVA, IRINA ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 03/28/2019 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DENNIS LOSCH, MATTHIAS WEISMANTEL, MARCO KRUGER, and ANTJE ZIEMER Appeal2017-006136 Application 13/957 ,073 Technology Center 1700 Before DONNA M. PRAISS, JEFFREY R. SNAY, and MICHAEL G. MCMANUS, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 12-15, 17-20, and 22. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 We cite to the Specification ("Spec.") filed August 1, 2013; Final Office Action ("Final Act.") dated May 25, 2016; Appellant's Appeal Brief ("App. Br.") filed November 18, 2016; the Examiner's Answer ("Ans.") dated January 30, 2017; and Appellant's Reply Brief ("Reply Br.") filed March 1, 2017. 2 Appellant is Applicant, BASF SE, which the Appeal Brief identifies as the real party in interest. App. Br. 4. Appeal 2017-006136 Application 13/957 ,073 BACKGROUND The subject matter on appeal relates to water-absorbing polymer beads. Spec. 1. Claim 12-the sole independent claim on appeal-reads: 12. Water-absorbing polymer beads which have a centrifuge retention capacity of at least 30 gig and a permeability of at least 30 x 10-7 cm3s/g, and less than 30% of a measured moduli of elasticity of an outer bead surface has a value of less than 60% of the mean modulus of elasticity, wherein the polymer beads have a crosslinking gradient and comprise at least one cavity in the bead interior. App. Br. A-1 (Claims Appendix). REJECTI0NS 3 I. Claims 12-15, 19, 20, and 22 stand rejected under 35 U.S.C. Â§ 102(b )/103 (a) as anticipated by or obvious over Riegel, 4 alone or as evidenced by De Maria. 5 II. Claims 12-15, 17-20, and 22 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Riegel, Fritter, 6 Goldhirsch, 7 and De Maria. III. Claims 12-15, 19, 20, and 22 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Riegel, Losch, 8 and De Maria. IV. Claims 12-15, 17-20, and 22 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Riegel, Losch, Fritter, Goldhirsch, and De Maria. 3 A full statement of the rejections is found at pages 3-22 of the Answer. 4 WO 2006/082240 Al, published August 10, 2006. 5 US 4,515,859, issued May 7, 1985. 6 US 2005/0005869 Al, published January 13, 2005. 7 US 6,455,114 Bl, issued September 24, 2002. 8 WO 2006/077054 Al, published July 27, 2006. The Examiner considers, and Appellant does not dispute, that US 2008/0188821 Al, published August 7, 2008, is an English language version of Losch. Final Act. 11. 2 Appeal 2017-006136 Application 13/957 ,073 Rejection I OPINION "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros., Inc. v. Union Oil Co., 814 F .2d 628, 631 (Fed. Cir. 1987). The Examiner has the initial burden of establishing a prima facie case of anticipation by pointing out where all of the claim limitations appear in a single reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). With regard to claim 12, the Examiner finds that Riegel discloses water-absorbing polymer beads, but does not expressly describe that "less than 30% of a measured moduli of elasticity of an outer bead surface has a value of less than 60% of the mean modulus of elasticity," as claimed. Ans. 6. However, the Examiner states that Riegel's beads are produced by substantially the same process as that described in the Specification and, on that basis, finds Riegel' s beads "would inherently be expected to show consistent modulus of elasticity values," such as the particular values recited in claim 12. Id. Alternatively, the Examiner determines that the claimed elasticity property would be met by "assuming the normal distribution of modulus of elasticity values." Id. at 7. Appellant argues, inter alia, that the evidence of record does not support the above-noted inherency finding. App. Br. 15-16; Reply Br. 2. We agree. The Specification discloses forming the claimed beads by droplet polymerization of first and second monomers, with surface crosslinking being achieved by incorporating a crosslinker in the monomer solutions. 3 Appeal 2017-006136 Application 13/957 ,073 Spec. 2. Riegel, on the other hand, performs postcrosslinking by spraying crosslinker onto the surface of already formed polymer beads. Riegel 24-- 25. Appellant argues that spray postcrosslinking, such as that of Riegel, results in an inhomogenous distribution of crosslinker on the particle surface, leading to an increased deviation of the measured moduli of elasticity. App. Br. 16. Appellant points to Examples 1 and 2 of the Specification for support of the argument. Id. Example 1 involves beads formed by droplet polymerization of monomer solutions that include crosslinker. Spec. 15-16. Example 2 applied a postcrosslinking step by spraying a crosslinking solution to the beads from Example 1. Id. at 16. The Specification reports the beads from Example 1 exhibited distribution of moduli of elasticity within the claimed range, whereas the beads of Example 2 did not. Id.; see also App. Br. 5 ("The water-absorbing polymer particles prepared by Comparative Example 2 exhibited a non-uniform crosslink density on the surface, i.e., 50% (more than the claimed 'less than 30%') of the measured moduli of elasticity of the outer surface had a value of less than 90 kPa (i.e., 60% of the mean modulus of elasticity of 150 kPa. ). " Appellant's evidence in Examples 1 and 2 of the Specification is sufficient to demonstrate that the manner of surface crosslinking- dropletization polymerization crosslinking versus spray postcrosslinking- can affect the resulting distribution of elasticity moduli. Because Riegel describes a surface crosslinking technique that materially differs from that described in the Specification, we agree that the Examiner's inherency finding is not supported by a preponderance of evidence. The Examiner's alternative reasoning based entirely on an assumption that Riegel's beads 4 Appeal 2017-006136 Application 13/957 ,073 might have exhibited a normal distribution of elasticity moduli also is without evidentiary support. When relying on a theory of inherency, "the [E]xaminer must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex Parte Levy, 17 USPQ2d 1461, 1464 (BP AI 1990). "Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). For the foregoing reasons, we do not sustain the Examiner's anticipation rejection. 9 Re} ections II-IV Each of Rejections II-IV is premised in part on the same inherency finding discussed above in connection with Rejection I. None of the additionally cited references is relied upon for evidence concerning the claimed distribution of elasticity moduli. Accordingly, each of Rejections II-IV is not sustained for the same reasons given above in connection with Rejection I. 9 Although the Examiner states Rejection I as being based on anticipation and/or obviousness, no obviousness analysis is given. See Ans. 3-8. Accordingly, we also do not sustain the obviousness prong of Rejection I. 5 Appeal 2017-006136 Application 13/957 ,073 DECISION The Examiner's decision rejecting claims 12-15, 17-20, and 22 is reversed. REVERSED 6