Evonik Corporation

Patent Trials and Appeals Board

Apr 6, 2020

14161962 - (D) (P.T.A.B. Apr. 6, 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.
14/161,962 01/23/2014 Gonglu Tian 2010P00023 US03 6167
109357 7590 04/06/2020
Evonik Corporation
Intellectual Property Management
299 Jefferson Road
Parsippany, NJ 07054-0677
EXAMINER
SOLIMAN, HAYTHAM
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
04/06/2020 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):
ipm-na@evonik.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GONGLU TIAN, DAVID L. BERGMAN JR., and YARU SHI

____________

Appeal 2019-003480
Application 14/161,962
Technology Center 1700
____________

Before JEFFREY T. SMITH, JEFFREY W. ABRAHAM, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 57–72.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Evonik Corporation as the real party in
interest. Appeal Brief filed October 9, 2018 (“Appeal Br.”) at 3.
2 Final Office Action entered March 7, 2018 (“Final Act.”).
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CLAIMED SUBJECT MATTER
Appellant claims a superabsorbent polymer for use in sanitary articles
(independent claim 57), and a particulate superabsorbent polymer
composition for use in sanitary articles (independent claims 63 and 67).
Appeal Br. 3–5. Claim 57 illustrates the subject matter on appeal, and is
reproduced below with contested subject matter italicized:
57. A superabsorbent polymer for use in sanitary articles
comprising
a polymerized monomer selected from an ethylenically
unsaturated carboxylic acid, ethylenically unsaturated
carboxylic acid anhydride, salts or derivatives thereof, and
an internal crosslinker agent comprising a silane
compound comprising at least one vinyl group or allyl group
and at least one Si–O bond, wherein the vinyl group or allyl
group is directly attached to a silicon atom,
wherein the superabsorbent polymer composition3 is a
particulate superabsorbent composition and having a Vortex
time of from about 20 to about 180 sec.

Appeal Br. 12 (Claims Appendix) (emphasis added and spacing
altered relative to original).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered January 28, 2019 (“Ans.”):
I. Claims 57–62 under 35 U.S.C. § 103(a) as unpatentable over
Graham et al. (US 2010/0056647 Al, published March 4, 2010) in view of
Ishizaki et al. (US 2007/0141338 Al, published June 21, 2007);

3 In the event of further prosecution of this application, we advise Appellant
and the Examiner to consider whether antecedent basis exists for “the
superabsorbent polymer composition” recited in claim 57.
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II. Claims 57–62 and 67–72 under 35 U.S.C. § 103(a) as
unpatentable over Newman (US 2008/0140037 Al, published June 12, 2008)
in view of Graham; and
III. Claims 63–664 under 35 U.S.C. § 103(a) as unpatentable over
Newman in view of Graham and Smith et al. (US 2008/0234420 Al,
published September 25, 2008).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 57–62 under 35 U.S.C. § 103(a) as unpatentable over Graham in view
of Ishizaki (Rejection I) for the reasons set forth in the Appeal Brief and
below, and we affirm the Examiner’s rejection of claims 57–62 and 67–72
under 35 U.S.C. § 103(a) as unpatentable over Newman in view of Graham
(Rejection II), and rejection of claims 63–66 under 35 U.S.C. § 103(a) as
unpatentable over Newman in view of Graham and Smith (Rejection III), for
the reasons set forth in the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s

4 Although the Examiner omitted claim 65 from the heading for this
rejection in the Final Action (Final Act. 8), the Examiner addresses claim 65
in the body of the rejection (Final Act. 10–11).
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rejections”)).
Rejection I
We first address the Examiner’s rejection of claims 57–62 under
35 U.S.C. § 103(a) as unpatentable over Graham in view of Ishizaki.
The Examiner finds that Graham discloses a composition “that can be
used as an absorbent” comprising a copolymer formed from ethylenically
unsaturated carboxylic acid monomers cross-linked using
triethoxyvinylsilane, which the Examiner finds “reads on the claimed
crosslinker.” Final Act. 2 (citing Graham ¶¶ 49, 80, 86, 122, 133, 142). The
Examiner finds that “Graham is silent with regards to the composition being
a particulate.” Final Act. 2.
The Examiner finds, however, that Ishizaki discloses a particulate
water-absorbing agent comprising “a crosslinked water-absorbing resin
obtained by crosslinking polymerization of an unsaturated monomer having
an acid group and/or salts thereof.” Final Act. 2 (citing Ishizaki ¶¶ 2, 137).
The Examiner finds that “Ishizaki teaches that the water absorbent
essentially contains agglomerate particles which significantly improves
liquid permeability under pressure.” Final Act. 2 (citing Ishizaki ¶ 14).
In view of these disclosures in Ishizaki, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time of
Appellant’s invention “to modify the invention of Graham by making the
composition into a particulate to improve the liquid permeability under
pressure of the absorbent.” Final Act. 2–3 (citing Ishizaki ¶ 14).
Appellant argues that Graham discloses copolymers that “can be used
as rheology modifiers, dispersants, stabilizers, promoters, or antimicrobials”
in “personal care compositions and products.” Appeal Br. 6 (citing Graham
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¶¶ 121, 133). Appellant argues that “[n]one of the uses in Graham relates to
an absorbent” and “Graham’s composition would act as a thickener, far
removed from it being considered as an absorbent polymer.” Appeal Br. 6.
Appellant argues that Graham’s “copolymers are never described as
superabsorbents,” and “the polymers of Graham are simply NOT
‘superabsorbent polymers.’” Appeal Br. 7, 8.
The Examiner responds to Appellant’s arguments in the Answer by
indicating that “Graham explicitly teaches that the ‘co-polymer[s] of the
invention are suitable for the preparation of personal car[e] composition[s] . .
. and tropical [sic] health care products and composition[s] . . . such as . . .
nonmedicated moisture absorbent powder.’” Ans. 13 (citing Graham
¶¶ 121, 122). In view of this disclosure, the Examiner asserts that “[a]
moisture absorbent powder, which contains the copolymer in question, is in
fact a powder that absorbs powder by utilizing the copolymer.” Ans. 13.
As Appellant points out (Appeal Br. 6), however, Graham discloses
that the copolymers described in the reference function to “thicken aqueous
formulations to provide aesthetically smooth-textured products that flow
smoothly and spread easily.” Graham ¶ 26. Graham discloses that “[i]n
addition to thickening, the instant copolymers are useful film formers,
spreading aids and deposition aids for products containing colorants and
emollient oils.” Graham ¶ 32. Graham discloses that the copolymers can,
therefore, be used “in personal care compositions and products, health care
compositions and products, household care compositions and products,
fabric care compositions and products, institutional and industrial
(collectively ‘I&I’) care products, and the like.” Graham ¶ 28.
Significantly, Graham discloses including the copolymers described in
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the reference in topical health and beauty aids, such as non-medicated
moisture-absorbent powder, rather than disclosing that the copolymers
themselves are moisture-absorbent. Graham ¶¶ 121, 122; see also Graham
¶ 123 (“[t]opical health and beauty aids that can include copolymers (e.g., as
spreading aids and film formers) include . . . powder products.”). The
Examiner does not identify any disclosure in Graham that indicates or would
have suggested that Graham’s copolymers themselves are absorbent, or
function as superabsorbent polymers, as recited in claim 57.
Although the Examiner also asserts in the Answer that
“superabsorbent” is “an intended use of the claimed material” (Ans. 13), the
recitation in claim 57 of a “superabsorbent polymer” is not an intended use,
but, rather, sets forth a function of the claimed polymer.
And although the Examiner also asserts in the Answer that “the
Applicant does not present any data to show the incapability of the prior art
[Graham’s copolymers] to perform in the same fashion as the claimed
invention” (Ans. 14–15), the Examiner bears the initial burden of providing
a reasonable basis for finding that Graham’s copolymers are capable of
functioning as a superabsorbent polymer. In re Schreiber, 128 F.3d 1473,
1477–78 (Fed. Cir. 1997). Only when the Examiner meets this burden does
the burden shift to the Appellant to show otherwise. Id. On the record
before us, however, the Examiner does not provide a sufficient factual basis
to show that the copolymers disclosed in Graham are capable of functioning
as superabsorbent polymers as recited in claim 57, particularly because, as
discussed above, the Examiner does not identify any disclosure in Graham
that indicates or would have suggested that the relied-upon copolymers
disclosed in the reference are absorbent.
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We, accordingly, do not sustain the Examiner’s rejection of claim 57,
and claims 58–62, which depend from claim 57, under 35 U.S.C. § 103(a) as
unpatentable over Graham in view of Ishizaki.
Rejection II
We turn now to the Examiner’s rejection of claims 57–62 and 67–72
under 35 U.S.C. § 103(a) as unpatentable over Newman in view of Graham.
Appellant presents arguments directed to independent claims 57 and
67, which Appellant argues together. Appeal Br. 8–9. We, accordingly,
select claim 57 as representative, and decide the appeal as to claims 57–62
and 67–72 based on claim 57 alone. 37 C.F.R. § 41.37(c)(1)(iv).
Newman discloses a superabsorbent polymer formed by polymerizing
monomers that include ethylenically unsaturated carboxylic acids and
ethylenically unsaturated carboxylic acid anhydrides. Newman ¶¶ 8, 20.
Newman discloses polymerizing such monomers in the presence of one or
more crosslinking agents to form a hydrogel, and processing the hydrogel
into a particulate. Newman ¶¶ 18, 38. Newman discloses that “various
combinations” of crosslinking agents can be used to produce the
superabsorbent polymers, including “polyvinyl compounds such as divinyl
benzene . . . and trivinyl benzene.” Newman ¶ 23; see also Newman ¶ 19
(“[m]ixtures of crosslinkers can be employed.”).
The Examiner finds that “Newman is silent with regards to the
crosslinker being a silane compound comprising at least one vinyl or allyl
group and at least one Si–O bond wherein the vinyl group or allyl group is
directly attached to the silicon atom.” Final Act. 4.
Graham, however, discloses a copolymer produced by polymerization
of a monomer mixture that includes hydroxyl-substituted alkyl
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(meth)acrylates, such as 2-hydroxyethyl methacrylate, 2-hydroxyethyl
acrylate, and 3-hydroxypropyl acrylate (ethylenically unsaturated carboxylic
acid derivatives), and crosslinking monomers. Graham ¶¶ 24, 80, 81.
Graham discloses that suitable crosslinking monomers include
divinylbenzene, trivinylbenzene, and tris-isopropoxyvinylsilane
(crosslinking agent comprising a vinyl group and at least one Si–O bond
where the vinyl group is directly attached to the silicon atom). Graham
¶¶ 83, 84, 86.
The Examiner determines that Graham thus “recognizes tris-
isopropoxyvinylsilane as [an] equivalent crosslinker to [the] divinyl benzene
and trivinyl benzene” crosslinkers disclosed in Newman. Final Act. 4. In
view of this disclosure in Graham, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art to use a tris-
isopropoxyvinylsilane crosslinker as disclosed in Graham to produce
Newman’s superabsorbent polymer. Final Act. 5–6.
Appellant argues that “divinyl and trivinyl benzenes are not
interchangeable with trisisopropoxyvinylsilanes and triethoxyvinylsilanes,
and interchanging them would produce very different products.” Appeal Br.
9. Appellant argues that “vinyl benzenes are non-hydrolysable compounds,
while siloxanes are hydrolysable,” and “vinyl benzenes are stable
crosslinkers that do not break once they are formed. In contrast, siloxane
crosslinkers would be readily broken by hydrolysis.” Id.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
As discussed above, Newman discloses that “various combinations”
of crosslinking agents, including divinyl benzene and trivinyl benzene, can
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be used to produce the superabsorbent polymers described in the reference,
which are formed by polymerizing monomers that include ethylenically
unsaturated carboxylic acids. As also discussed above, Graham discloses a
copolymer produced by polymerization of a monomer mixture that includes
ethylenically unsaturated carboxylic acid derivatives and crosslinking
monomers, and Graham discloses that suitable crosslinking monomers
include divinylbenzene, trivinylbenzene, and tris-isopropoxyvinylsilane.
In view of this disclosure in Graham of the suitability of using
divinylbenzene, trivinylbenzene, and tris-isopropoxyvinylsilane to crosslink
a copolymer produced by polymerization of a monomer mixture that
includes ethylenically unsaturated carboxylic acid derivatives, and
Newman’s disclosure of forming superabsorbent polymers by polymerizing
monomers that include ethylenically unsaturated carboxylic acids in the
presence of divinyl benzene and trivinyl benzene crosslinking agents, one of
ordinary skill in the art reasonably would have expected that tris-
isopropoxyvinylsilane could have been included in Newman’s combination
of crosslinking agents to successfully produce superabsorbent polymers
from monomers that include ethylenically unsaturated carboxylic acids.
Appellant does not direct us to any evidence to support Appellant’s
assertion that divinyl and trivinyl benzenes are not interchangeable with
trisisopropoxyvinylsilanes and triethoxyvinylsilanes. Appellant’s
unsupported arguments to the contrary do not constitute the necessary
evidence required to establish that tris-isopropoxyvinylsilane could not be
successfully included in Newman’s combination of crosslinking agents to
produce a superabsorbent polymer. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) (“An assertion of what seems to follow from common experience
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is just attorney argument and not the kind of factual evidence that is required
to rebut a prima facie case of obviousness.”); Icon Health & Fitness, Inc. v.
Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“[a]ttorney argument is
not evidence” and cannot rebut other admitted evidence); In re Schulze, 346
F.2d 600, 602 (CCPA 1965) (“Argument in the brief does not take the place
of evidence in the record.”).
We, accordingly, sustain the Examiner’s rejection of claims 57–62
and 67–72 under 35 U.S.C. § 103(a) as unpatentable over Newman in view
of Graham.
Rejection III
Finally, we turn to the Examiner’s rejection of claims 63–66 under
35 U.S.C. § 103(a) as unpatentable over Newman in view of Graham and
Smith. To address this rejection, Appellant refers to the arguments
Appellant presents for the Examiner’s rejection of claims 57–62 and 67–72
under 35 U.S.C. § 103(a) as unpatentable over Newman in view of Graham
(discussed above), and argues that Smith does not cure the deficiencies of
Newman and Graham. Appeal Br. 10. Because Appellant’s arguments do
not identify reversible error in the Examiner’s rejection of claims 57–62 and
67–72 under 35 U.S.C. § 103(a) as unpatentable over Newman in view of
Graham (Rejection II), Appellants arguments also do not identify reversible
error in the Examiner’s rejection of claims 63–66 under 35 U.S.C. § 103(a)
as unpatentable over Newman in view of Graham and Smith, for the reasons
discussed above in connection with Rejection II.

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CONCLUSION

Claims

35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
57–62 103(a) Graham,
Ishizaki
57–62
57–62, 67–
72
103(a) Newman,
Graham
57–62, 67–
72

63–66 103(a) Newman,
Graham, Smith
63–66
Overall
Outcome
57–72

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED