Ex Parte Hird et al

Patent Trial and Appeal Board

Jun 28, 2013

11724341 (P.T.A.B. Jun. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRYN HIRD and ERIC TED ADDINGTON
____________

Appeal 2011-007021
Application 11/724,341
Technology Center 3700
____________

Before FRED E. McKELVEY, JENNIFER D. BAHR, and
LINDA E. HORNER, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Bryn Hird and Eric Ted Addington (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-3, 5-8,
and 14-17. Claims 4 and 18-20 are canceled, and claims 9-13 are withdrawn
from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2011-007021
Application 11/724,341

2
THE INVENTION
Appellants’ claimed invention relates to “an absorbent article which
comprises synthetic polymeric materials derived from renewable resources,
where the materials have specific performance characteristics making them
particularly useful in said absorbent article.” Spec. 1, ll. 12-14. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An absorbent article having opposing longitudinal edges,
the absorbent article comprising:
a) a topsheet,
b) a backsheet joined with the topsheet,
c) an absorbent core disposed between the topsheet and
the backsheet, and
d) a first polymer exhibiting a 14C/C ratio of about 1.0 x
10-14 or greater, derived from a first renewable resource via at
least one first intermediate compound, wherein the first
polymer is synthetic, and wherein the first intermediate
compound is monomeric, and wherein the first polymer is
disposed in or incorporated into one or more elements of the
absorbent article, the elements selected from a group consisting
of the absorbent core, the top sheet, the backsheet, and a barrier
leg cuff.
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1-3, 5-8, 14, and 15 under 35 U.S.C. § 102(b) as anticipated
by, or in the alternative under 35 U.S.C. § 103(a) as unpatentable
over, Herrlein (US 2003/0153885 A1; pub. Aug. 14, 2003); and
2. Claims 16 and 17 under 35 U.S.C. § 103(a) as unpatentable over
Herrlein and Ronn (US 2004/0097897 A1; pub. May 20, 2004).
Appeal 2011-007021
Application 11/724,341

3
ISSUE
As to the first ground of rejection, Appellants have not argued the
patentability of claims 2, 3, 5-8, 14, and 15 apart from claim 1. We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2012). As to the
second ground of rejection, Appellants argue only that claims 16 and 17 are
believed to be patentable over Herrlein for at least the same reasons as
claim 1 and that Ronn does not cure the asserted deficiencies in Herrlein.
App. Br. 7-8. As such, the outcome of this appeal is decided on the basis of
claim 1.
The Examiner determined that “[s]ince Herrlein discloses the identical
[first polymer] as claimed, and the properties of the [first polymer] are
inherent to the structure of the [first polymer], Herrlein anticipates the
present claims.” Ans. 5; see also Ans. 4. Under the circumstances, the
Examiner determined that the burden shifted to Appellants to show a
difference between the polymers disclosed by Herrlein and the claimed first
polymer. Id. (citing In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980)).
Appellants argue that polymers derived entirely from renewable resources
typically have a 14C/C ratio in the claimed range, and that because Herrlein
does not address the derivation of the disclosed polymers, the Office cannot
show that the polymers of Herrlein necessarily possess the claimed 14C/C
ratio. Reply Br. 5. As such, Appellants contend that “the Office has not met
the threshold showing for shifting the burden to Applicants [to show a
nonobvious difference between the polymers disclosed in Herrlein and the
claimed polymer.]” Id.
Appeal 2011-007021
Application 11/724,341

4
The Examiner also stated that “[t]he derivation of the polymer from a
renewable resource via an intermediate compound is considered a product
by process limitation, since it discloses the method of forming the polymer.”
Ans. 3. The Examiner found that the article of Herrlein is the identical final
product as claimed. Id. Appellants argue that “there is a structural
difference in the final product” because “[p]olymers derived from a
renewable resource may have a 14C/C ratio one to three orders of magnitude
greater than the 14C/C ratio of polymers derived from petrochemicals.” App.
Br. 4.1
The issue before us is whether the Examiner’s determination that
Herrlein discloses a polymer that inherently possesses a 14C/C ratio of about
1.0 X 10-14 or greater is reasonable so as to shift the burden to Appellants to
show that the prior art polymer does not possess this characteristic.
FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Herrlein discloses an absorbent structure comprised of hydrogel-
forming absorbent polymers. Herrlein, para. [0057].
2. Herrlein discloses that “[h]ydrogel-forming absorbent polymers
suitable for the present invention . . . include . . . starch-acrylic acid
graft copolymers, partially neutralised starch-acrylic acid graft

1 Appellants have not asserted that the derivation of the polymer via an
intermediate compound results in a claimed structural difference as
compared to a polymer derived directly from a renewable resource without
an intermediate compound.
Appeal 2011-007021
Application 11/724,341

5
copolymers, . . . and slightly network crosslinked polymers of
partially neutralised polyacrylic acid.” Id. at para. [0058].
3. Herrlein discloses that “[e]xamples of these polymer materials are
disclosed in U.S. Pat. Nos. 3,661,875, 4,076,663, 4,093,776,
4,666,983, and U.S. Pat. No. 4,734,478.” Id.
4. Herrlein discloses that “[m]ost preferred polymer materials for use in
making hydrogel-forming particles are slightly network crosslinked
polymers of partially neutralised polyacrylic acids and starch
derivatives thereof” in which the hydrogel-forming particles comprise
from about 50 to about 95% neutralised, slightly network crosslinked,
polyacrylic acid. Id. at para. [0059].
5. The Specification describes that “[i]n certain embodiments, the
synthetic superabsorbent polymer comprising acrylic acid derived
from renewable resources may be formed from starch-acrylic acid
graft copolymers, partially neutralized starch-acrylic acid graft
copolymers, crosslinked polymers of polyacrylic acid, and crosslinked
polymers of partially neutralized polyacrylic acid.” Spec. 12, ll. 1-4.
6. The Specification describes that “[p]reparation of these materials is
disclosed in U.S. Patent Nos. 3,661,875; 4,076,663; 4,093,776;
4,666,983; and 4,734,478.” Id. at 12, ll. 4-6.
7. The Specification describes starch as a renewable resource. Id. at 8,
ll. 1-20.
8. The Specification describes that “[r]esearch has noted that fossil fuels
and petrochemicals generally have a 14C/C ratio of less than about 1 x
Appeal 2011-007021
Application 11/724,341

6
10-15. However, polymers derived entirely from renewable resources
typically have a 14C/C ratio of about 1.2 x 10-12.” Id. at 24, ll. 10-13.
PRINCIPLES OF LAW
“[W]hen the PTO 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.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(citations omitted).
Where … the claimed and prior art products … are produced by
identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his
claimed product.… Whether the rejection is based on
“inherency” under 35 U.S.C. § 102 on “prima facie
obviousness” under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (affirming rejection of claims
under § 102 or § 103).
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
Id. at 1254-55, quoting In re Swinehart, 439 F.2d 210, 212-13 (CCPA
1971); see also Fitzgerald, 619 F.2d at 67.
An examiner’s belief is reasonable where starting materials and
processing of the prior art are so similar to those disclosed by the applicant
that it reasonably appears that the claimed function or property would
Appeal 2011-007021
Application 11/724,341

7
naturally result when conducting the process as taught in the prior art. See
Spada, 911 F.2d at 708; Best, 562 F.2d at 1255.
ANALYSIS
Herrlein’s polymers include the same polymers listed in Appellants’
Specification. Facts 2, 4, and 5. The list in Herrlein includes polymers
derived from starch, which is a renewable resource. Facts 2 and 7.
According to Appellants’ Specification, research shows that such polymers
typically have a 14C/C ratio in the claimed range. Fact 8. Herrlein discloses
examples of these polymer materials by reference to the same five patents
that Appellants refer to in the Specification for the process of making the
claimed first polymer. Facts 3 and 6. The fact that Herrlein discloses the
same starting materials and the same process for making the polymer as
described in Appellants’ Specification provides a reasonable basis to find
that the polymer materials and processing of polymer materials in the prior
art are so similar to those disclosed by Appellants that the claimed 14C/C
ratio would naturally result when using the polymer materials made from the
processes as taught in Herrlein. As such, we find that the Examiner’s
inherency determination is reasonable.
The burden thus shifted to Appellants to prove that the polymers
shown to be in the prior art do not possess a 14C/C ratio as called for in
claim 1. Appellants have not provided persuasive argument or evidence to
establish any difference between the polymers of Herrlein and the claimed
polymers.
Appeal 2011-007021
Application 11/724,341

8
CONCLUSION
The Examiner’s determination that Herrlein discloses a polymer that
inherently possesses a 14C/C ratio of about 1.0 X 10-14 or greater is
reasonable so as to shift the burden to Appellants to show that the prior art
polymer does not possess this characteristic.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-3, 5-8,
and 14-17.
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).

AFFIRMED

hh