Ex Parte Ueda et al

Board of Patent Appeals and Interferences

Apr 3, 2009

10148436 (B.P.A.I. Apr. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HIROKO UEDA, KATSUYUKI WADA and YOSHIO IRIE
__________

Appeal 2009-1224
Application 10/148,436
Technology Center 3700
__________

Decided:1 April 3, 2009
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
particulate water-absorbing composition. The Patent Examiner rejected the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-1224
Application 10/148,436

claims as obvious and, provisionally, for obviousness-type double patenting.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse the obviousness
rejection and vacate the provisional obviousness-type double patenting
rejection.

STATEMENT OF THE CASE
The claimed invention is a particulate water-absorbing composition
comprising a water-absorbent resin and a plant powder. The composition is
useful in sanitary articles such as diapers. (Spec. 1.) Water-absorbent resins
mixed with plant extracts were known to have deodorizing effects. (Id. at
3.) According to the Specification, improved deodorizing effects are
achieved when a composition has an “offensive-odor removal index” not
less that 180. (Id. at 4.) The index is computed using an equation that
accounts for the composition’s hydrogen sulfide removal ratio,
methylmercaptan removal ratio and ammonia removal ratio. (Id.) The
Specification explains how to measure removal, determine the ratios and
compute the index. (Id. at 45-47.)
Claims 1, 3-7, 9-16, 19-22, and 25-52, which are all the pending
claims, are on appeal.
The Examiner rejected the claims as follows:
• claims 1, 3-7, 9-16, 19-22, and 25-52 under 35 U.S.C. §103(a) as
obvious over Dairoku2 and Menzi3; and

2 U.S. Patent No. 5,422,405, issued to Dairoku et al., Jun. 6, 1995.
3 U.S. Patent No. 6,056,949, issued to Menzi et al., May 2, 2000.
2
Appeal 2009-1224
Application 10/148,436

• claims 1, 6, 7, 9, 10, 12, 17, 18, 23, and 24 under the doctrine of
nonstatutory obviousness-type double patenting over claims 1-4 of co-
pending Application No. 10/448,456.
Claim 1 is representative and reads as follows:
1. A particulate water-absorbing composition, which comprises a
Tracheophyta plant powder and a water-absorbent resin,
wherein the water-absorbent resin is a water-swellable and water-
insoluble crosslinked poly(acrylic acid (salt)) polymer of 30 to 100 mol % in
neutralization ratio having a surface portion and/or its vicinity treated by
crosslinking with a crosslinking agent and is contained in a proportion of not
less than 70 weight % in the particulate water-absorbing composition, and
wherein the particulate water-absorbing composition is in the range of 100 to
600 μm in weight-average particle diameter and not more than 10 weight %
in proportion of particles having particle diameters of smaller than 106 μm,
and
wherein the Tracheophyta plant powder passes through a mesh having
a mesh opening size of 850 μm, and
wherein the content of the Tracheophyta plant powder is in the range
of 0.001 to 20 weight parts per 100 weight parts of the solid content of the
water-absorbent resin, and
wherein said content of the Tracheophyta plant powder is an amount
effective for the particulate water-absorbing composition to exhibit an
offensive-odor removal index of not less than 180 wherein the offensive-
odor removal index is represented by the following equation:
offensive-odor removal index = 1.1 x hydrogen sulfide removal ratio
+ 2.0 x methylmercaptan removal ratio + 0.3 x ammonia removal ratio.

OBVIOUSNESS
The Issues
The Examiner’s position is that Dairoku disclosed all aspects of claim
1, but was silent as to the deodorant composition and odor removal index.
(Ans. 3.) The Examiner found that Menzi disclosed using a plant powder as
a deodorant in a diaper, and concluded it would have been obvious to
3
Appeal 2009-1224
Application 10/148,436

provide Menzi’s plant powder as the deodorant in Dairoku’s composition.
(Id. at 3-4.) The Examiner cited evidence to support findings and
conclusions that the claimed particle dimensions, composition proportions
and plant sources were either disclosed in the prior art or would have been
obvious. (Ans. 3-7.) According to the Examiner, “the ability of the plant
powder to remove hydrogen sulfide, methylmercaptan and ammonia from a
liquid in [sic, is] inherent to the chemical structure of the plant powder.” (Id.
at 6.) The Examiner thus found that because Menzi disclosed plant powders
of the type Appellants claim as capable of removing hydrogen sulfide,
methylmercaptan and ammonia, Menzi’s plant powder “inherently” met the
claim limitations. (Id.)
Appellants contend that Dairoku did not disclose a deodorant, an odor
reducing compound, or a component that is capable of adjusting the odor-
removal index. (App. Br. 7.)4 Appellants assert that Menzi concerned only
flavoring agents or fragrances. (Id.) Appellants argue that the invention “is
not simply the use of a masking agent, fragrance or perfume.” (Id.) “The
ability to modify the offensive-odor removal index of a particulate water-
absorbing composition is not disclosed or suggested in Dairoku et al. or
Menzi et al.” (Id. at 8.) Further, “[t]he odor-removal index is different from
the use of perfumes or other masking agents as in the cited patents.” (Id. at
9.) Appellants dispute that Menzi would have inherently provided the
claimed odor-removal index. (Id. at 13.) Appellants also dispute many
other limitations including the neutralization ratio, particle diameter, the
structure of Menzi’s powder, and limitations in specific claims.

4 “Corrected Brief on Appeal,” dated Nov. 16, 2007.
4
Appeal 2009-1224
Application 10/148,436

The issues with respect to this rejection are
whether Menzi’s “flavorant or odorant” would have inherently had the
odor-removal index required by the claims when combined with Dairoku’s
resin; and
whether the odor-removal index of the composition suggested by
Dairoku and Menzi could have been optimized by one having ordinary skill
in the art.

Findings of Fact
Dairoku
1. Dairoku described an absorbent resin for use in sanitary materials.
(Col. 1, ll. 7-14.)
2. The resin absorbed a large volume of water, formed a hydrogel, and
could be made with acrylic acid, crosslinked polyacrylic acid, or other
materials. (Col. 3, ll. 6-30.)
3. In an example embodiment, the proportion of unneutralized
polyacrylic acid would be 1 to 60 mol %. (Col. 3, ll. 60-63.)
4. The resin could be in the form of beads or spherical granules having
an average diameter in the range 100 to 1,000 μm. (Col. 4, ll. 37-49.)
5. The resin could optionally incorporate additives such as deodorant,
spice, and others. (Col. 8, ll. 22-27.)
Menzi
6. Menzi described spherical flavorant and odorant granulates having a
narrow particle size distribution. (Col. 1, ll. 5-8.)
7. The granulates could be used in diapers. (Col. 1, ll. 24-27.)
5
Appeal 2009-1224
Application 10/148,436

8. The particle sizes were about 0.02 to about 3.0 mm. (Col. 2, ll. 6-10.)
9. The flavorants and odorants included fruit or vegetable powder, food
fibers, herb powder, spice powder, tea powder, and others. (Col. 2, ll.
10-19.)

Principles of Law
Where claimed subject matter has been rejected as
obvious in view of a combination of prior art references, a
proper analysis under § 103 requires, inter alia, consideration
of two factors: (1) whether the prior art would have suggested
to those of ordinary skill in the art that they should make the
claimed composition or device, or carry out the claimed
process; and (2) whether the prior art would also have revealed
that in so making or carrying out, those of ordinary skill would
have a reasonable expectation of success.

In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991). The determination of
obviousness is made with respect to the subject matter as a whole, not
separate pieces of the claim. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, ___, 127 S. Ct. 1727, 1734 (2007).
“’Inherency . . . 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) (citation omitted); see also, In re Rijckaert, 9 F.3d 1531,
1534 (Fed. Cir. 1993) (rejection reversed because inherency was based on
what would result due to optimization of conditions, not what was
necessarily present in the prior art).

6
Appeal 2009-1224
Application 10/148,436

Analysis
We agree that the claimed invention is not “simply the use of a
masking agent, fragrance or perfume.” (App. Br. 7.) Instead, the claims
require that the overall composition have an “offensive-odor removal index”
defined by an equation that accounts for removal ratios of three offensive
gases. The Specification explains how the removal ratios for each of the
three offensive gases is measured, and how the index is computed. (Spec.
45-47.)
The Examiner concluded that the combined teachings of Dairoku and
Menzi would have yielded a composition inherently having the claimed
removal index “not less than 180.” (Ans. 8.) The Examiner also concluded
that a removal index greater than 180 would have been the result of applying
ordinary skill to “finding the optimum or workable range.” (Id.)
We disagree with the Examiner’s finding that plant powders will
inherently produce the claimed composition because the evidence provided
in the Specification shows that an index greater than 180 did not necessarily
result when plant powders were mixed with resins. Appellants refer to the
contrast between the Examples in Table 4 and the Comparative Examples in
Table 6. (App. Br. 11.) The Examples in Table 4 all have a removal index
greater than 180. (Spec. 80.) The Comparative Examples in Table 6 have
removal indices less than 180. (Spec. 82.) This evidence shows that
Menzi’s plant powders would not necessarily provide the claimed index.
Inherency is not established by probabilities or possibilities. Robertson,
169 F.3d at 745.
7
Appeal 2009-1224
Application 10/148,436

Appellants also argue that Dairoku does not disclose the amounts of
plant powder to use for achieving the claimed index. (App. Br. 10.) The
Examiner considered this a question of optimizing and found it was within
the skill in the art. (Ans. 8.) However, the Examiner has not pointed to
evidence that the prior art recognized the offensive-odor removal index as an
adjustable parameter. The odorants and flavorants that Menzi described
might have masked odors to some degree in any quantity, but evidence is
lacking that one of skill in the art was aware that hydrogen sulfide,
methylmercaptan or ammonia could be removed by Menzi’s plant powders.
Evidence is lacking that one of skill in the art at the time of Appellants’
invention was aware that the computed odor-removal index of the three
gases could be adjusted. “While the condition described may be an optimal
one, it is not ‘inherent’ in [the references]. Nor are the means to achieve this
optimal condition disclosed by [the references], explicitly or implicitly.”
Rijckaert, 9 F.3d at 1534; see also Manual of Patent Examining Procedure
(MPEP) § 2112 (IV.) (discussing Rijckaert). When “the parameter
optimized was not recognized to be a result-effective variable,” the invention
as a whole may not be obvious. In re Antonie, 559 F.2d 618, 620 (CCPA
1977); see also, MPEP §2141.02 (V. “DISCLOSED INHERENT
PROPERTIES ARE PART OF ‘AS A WHOLE’ INQUIRY”) (discussing
Antonie). Without evidence that the prior art recognized the offensive-odor
removal index, or an equivalent, as a result effective variable, we do not
agree that it would have been within the ordinary skill in the art to optimize
it.

8
Appeal 2009-1224
Application 10/148,436

NONSTATUTORY OBVIOUSNESS-TYPE DOUBLE PATENTING
In the Examiner’s Answer mailed Mar. 28, 2008, the Examiner
contended, provisionally, that certain claims in this application are
unpatentable over claims 1-4 in copending Application No. 10/448,456.
(Ans. 7.)
On Nov. 24, 2008, claims 1-4 were cancelled from copending
Application No. 10/448,456. As the claims on which the provisional
rejection is based were cancelled, we vacate this rejection, without prejudice
to the entry of a new rejection.

CONCLUSIONS OF LAW
The evidence does not support a conclusion that a composition
comprising Dairoku’s resin and Menzi’s flavorant or odorant would have
inherently had the odor-removal index required by the claims;
The evidence does not support finding that the odor-removal index of
the claims was recognized by Dairoku or Menzi as a result-effective
variable; and
The evidence does not support a conclusion that a person of ordinary
skill in the art could have optimized the odor-removal index of a
composition comprising Dairoku’s resin and Menzi’s flavorant or odorant.

SUMMARY
We reverse the rejection of claims 1, 3-7, 9-16, 19-22, and 25-52
under 35 U.S.C. §103(a) as obvious over Dairoku and Menzi; and
9
Appeal 2009-1224
Application 10/148,436

We vacate the rejection of claims 1, 6, 7, 9, 10, 12, 17, 18, 23, and 24
under the doctrine of nonstatutory obviousness-type double patenting over
claims 1-4 of co-pending Application No. 10/448,456.

REVERSED

cdc

Garrett V Davis
Royance Abrams Berdo & Goodman
Suite 600
1300 19th Street NW
Washington DC 20036
10