Ex Parte Kainth et al

Board of Patent Appeals and Interferences

May 18, 2012

11796585 (B.P.A.I. May. 18, 2012)

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.
11/796,585 04/28/2007 Arvinder P. Singh Kainth 64128661US01 3870
23556 7590 05/21/2012
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
TREYGER, ILYA Y
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
05/21/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ARVINDER P. SINGH KAINTH,
RICHARD N. DODGE II, and DAVID L. ZENKER
__________

Appeal 2011-002253
Application 11/796,585
Technology Center 3700
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
absorbent composition. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

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Statement of the Case
The Claims
Claims 1, 3-8, and 10-23 are on appeal. Claims 1 and 15 are
representative and read as follows:
1. An absorbent composition comprising:
a superabsorbent polymer composition having an
initial absorbent capacity of at least about 5 grams saline per
gram of superabsorbent polymer composition; and
a first triggering mechanism having a first release
time of between about 5 and 60 minutes;
wherein the superabsorbent polymer composition has
a second absorbent capacity of at least about 25% greater
than the first absorbent capacity as measured by the mcRC
Test;
a second triggering mechanism having a second
release time of between about 10 and 120 minutes and at
least about 5 minutes longer than the first release time;
wherein the superabsorbent polymer composition has
a third absorbent capacity of at least about 25% greater than
the second absorbent capacity as measured by the mCRC
Test.

15. An absorbent article comprising:
an absorbent core comprising a superabsorbent
polymer composition having an initial absorbent capacity of
at least about 5 grams saline per gram of superabsorbent
polymer composition; and
a first triggering mechanism having a first release
time of between about 5 and 60 minutes;
wherein the superabsorbent polymer composition has
a second absorbent capacity of at least about 25% greater
than the first absorbent capacity as measured by the mCRC
Test.

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The issue
The Examiner rejected claims 1, 3-8, 10-16, and 19-23 under 35
U.S.C. § 103(a) as obvious over Dodge
1
(Ans. 4-11).
The Examiner finds that “Dodge discloses the absorbent composition
comprising the anionic and/or cationic superabsorbent polymer . . . that is
identical to the polymers recited in the instant Specification (Page 13,
[0177], lines 6-12) and thus necessarily having initial absorbent capacity of
at least 5 grams saline per gram” (Ans. 4).
The Examiner acknowledges that “Dodge does not expressly disclose
the absorbent composition comprising two triggering mechanisms” (Ans. 5).
The Examiner finds that “[h]owever, there is nothing in the instant
claims that prevents the first triggering mechanism to be the same as the
second triggering mechanism, the difference in the release time may be very
well due to the different amount of substance exposed to the insult” (Ans. 5).
The Examiner finds “the first release time may be different from the second
release time, and would be a matter of optimization based on the specific
need for the released time” (Ans. 5).
Appellants contend that there “is no showing or suggestion of any
second trigger that would affect the absorption properties of the
superabsorbent polymer” (App. Br. 4). Appellants contend that “Dodge fails
to show a superabsorbent polymer composition that has a second absorbent
capacity of at least about 25% greater than the first absorbent capacity as
measured by the mCRC Test (App. Br. 4).

1
Dodge, II et al., US 6,689,934 B2, issued Feb. 10, 2004.
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Appellants contend that even “if one were to choose two compounds
from the list in Dodge, there is no reason it would be obvious to have one of
the triggering mechanisms have a release (delay) time, and the second
triggering mechanism to have another, and different, release (delay) time”
(App. Br. 5).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Dodge expressly or inherently
renders claims 1 and 15 obvious?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. The Specification teaches that:
superabsorbent materials, such as those having a low
absorbent capacity, for example by low neutralization levels,
can be triggered to swell to a higher absorbent capacity (i.e.,
a “step capacity” change) by a change in pH of the
superabsorbent environment. For example, superabsorbent
polymer compositions can be triggered to swell by the
addition of a basic or an acidic compound or solution. In
general, if the superabsorbent material is an anionic
superabsorbent material, then the triggering mechanism will
include a base. If the superabsorbent material is a cationic
superabsorbent material, then the triggering mechanism will
include an acid. In some aspects, a base or acid in the form
of a solid may be desirable. . . . Using weaker acids and/or
bases, such as citric acid or baking soda in the absorbent
composite can be safer . . .

(Spec. 38-39).
2. Dodge teaches “absorbent composites having improved fluid
handling properties and methods of making the absorbent fibrous or non-
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fibrous structure. The absorbent fibrous composites of this invention have a
high intake rate of liquid and a high liquid lock-up fraction” (Dodge, col. 1,
ll. 53-56).
3. Dodge teaches that “[w]ater-swellable, water-insoluble
superabsorbent materials suitable for all composite structures of this
invention include crosslinked anionic and cationic polymers” (Dodge, col. 8,
ll. 46-48).
4. Dodge teaches that by “„non-absorbent‟ it is meant that these
materials have an absorptive capacity not exceeding 5 grams of 0.9% by
weight aqueous sodium chloride solution per gram of material” (Dodge, col.
6, ll. 15-18).
5. Dodge teaches that “mixtures of superabsorbent compositions
are capable of neutralizing each other between the acidic and basic
components in-situ upon urine saturation in the absorbent products. Such in-
situ neutralization process enhances absorbency of the composition”
(Dodge, col. 11, ll. 55-59).
6. Dodge teaches that “non-polymer based acidic compounds
include organic acidic material . . . such as aliphatic and aromatic acids, for
example, citric acid” (Dodge, col. 12, ll. 18-20).
7. Dodge teaches that “non-polymer based basic compounds
include . . . sodium bicarbonate” (Dodge, col. 12, ll. 26-32).
8. Dodge teaches an “an intake rate of at least about 1.9 cc
liquid/second at 80% absorbent composite saturation and a liquid lock-up
fraction of at least about 0.70 at 50% superabsorbent material saturation”
(Dodge, col. 12, ll. 40-43).
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9. Dodge teaches that the “water-swellable, water-insoluble
superabsorbent material is present in the absorbent composite in a weight
amount of at least about 10% by weight, suitably from about 10% to 70% by
weight, alternatively from about 20% to 60% by weight, or from about 30%
to 50% by weight” (Dodge, col. 8, ll. 9-14).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
However, an invention “composed of several elements is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art…. [I]t can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
Id. at 418.
Analysis
Claim 15
Claim 15 is the broadest claim, requiring a “first triggering
mechanism having a first release time of between about 5 and 60 minutes”
where the release results in a “second absorbent capacity of at least about
25% greater than the first absorbent capacity”. Unlike Claim 1, Claim 15
does not require a second triggering mechanism.
Dodge teaches that “mixtures of superabsorbent compositions are
capable of neutralizing each other between the acidic and basic components
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in-situ upon urine saturation in the absorbent products. Such in-situ
neutralization process enhances absorbency of the composition”
(Dodge, col. 11, ll. 55-59; FF 5). Dodge teaches both anionic and cationic
polymers (FF 3) as well as acid and base triggering agents such as citric acid
and sodium bicarbonate (baking soda) (FF 6-7) which are chemically
identical to the formulations disclosed in the Specification (FF 1).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that an ordinary artisan would have reasonably found it obvious
over Dodge to form an absorbent article comprising a first triggering
mechanism which enhances the superabsorbent capacity (FF 2-7). Such a
combination is merely a “predictable use of prior art elements according to
their established functions.” KSR, 550 U.S. at 417.
We agree with the Examiner that when “the structure or composition
recited in the reference is substantially identical to that of the claims of the
instant invention, claimed properties or functions presumed to be inherent”
(Ans. 9). In particular, we agree that Dodge teaches the use of the same
components as Claim 15 and/or the Specification so that the Examiner
reasonably finds that Dodge‟s absorbent article composed of the same
superabsorbent polymer as that in the Specification (FF 1, 3) with the same
citric acid or sodium bicarbonate trigger (FF 1, 6-7) would inherently satisfy
the functional requirements of Claim 15. See In re Best, 562 F.2d 1252,
1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
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that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.”)
Appellants provide no evidence to rebut this inherency argument.
Instead, Appellants contend that the “triggering mechanism of the instant
invention has a first release time of 5 to 60 minutes. If this were the timing
shown by Dodge, then Dodge would fail to provide a very quick odor
neutralization” (App. Br. 6).
We are not persuaded. Claim 15 requires a release time of “about 5 to
60 minutes”, indicating that the release time can be of times shorter than 5
minutes without providing any specific minimum time that distinguishes the
triggering time of Dodge. In addition, Appellants‟ speculation that odor
neutralization must occur in less than 5 minutes lacks evidentiary basis. See
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney‟s argument in
a brief cannot take the place of evidence.”)
Claims 17-18
Appellants contend that “superabsorbent polymers may not always
operate the way one might hope due to gel blocking or other problems”
(App. Br. 6).
We are not persuaded. Dodge teaches that the amounts of
superabsorbent material may range for 10 to 70% by weight (FF 9),
overlapping the claimed range, and also teaching other ranges,
demonstrating that the amount of superabsorbent material is a results
effective variable. We therefore agree with the Examiner that the percentage
amount would have been routinely optimizable and that the discovery of an
optimum value of a results-effective variable is normally obvious. See In re
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Antonie, 559 F.2d 618, 620 (CCPA 1977); In re Aller, 220 F.2d 454, 456
(CCPA 1955). Appellants have provided no evidence or argument to rebut
the finding that the amount of superabsorbent material is a results-effective
variable or to demonstrate unexpected results with the claimed range.
Claim 1
Claim 1 is substantially narrower than Claim 15, requiring not only
the “first triggering mechanism having a first release time of between about
5 and 60 minutes” but also requiring a “second triggering mechanism having
a second release time of between about 10 and 120 minutes and at least
about 5 minutes longer than the first release time” (Claim 1).
The Examiner acknowledges that “Dodge does not expressly disclose
the absorbent composition comprising two triggering mechanisms” (Ans. 5).
The Examiner reasons that “the difference in the release time may be very
well due to the different amount of substance exposed to the insult” (Ans. 5).
Even if this were true, the Examiner has not established that the use of
a trigger would necessarily result in two different release times which differ
by about 5 minutes. “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.” MEHL/Biophile Int’l. Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999). In this context, there is no reason or
expectation that the trigger will inherently yield two different release times.
In this rejection, the Examiner only relies upon the conclusory
argument that “the first release time may be different from the second
release time, and would be a matter of optimization based on the specific
need for the released time” (Ans. 5).The Examiner has not provided any
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evidence or reason, based on either the prior art or scientific reasoning, to
incorporate two or more triggers into a superabsorbent article. “[R]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S.
at 418.
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Dodge expressly or inherently renders claims 15, 17, and 18 obvious.
The evidence of record does not support the Examiner‟s conclusion
that Dodge expressly or inherently renders claim 1.
SUMMARY
In summary, we affirm the rejection of claims 15, 17, and 18 claims
1, 3-8, 10-16, and 19-23 under 35 U.S.C. § 103(a) as obvious over Dodge.
Pursuant to 37 C.F.R. § 41.37(c)(1), we also affirm the rejection of claims
16 and 19-23 as these claims were not argued separately.
We reverse the rejection of claims 1, 3-8, and 10-14 under 35 U.S.C.
§ 103(a) as obvious over Dodge.

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

AFFIRMED-IN-PART

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