Ex Parte Kajikawa et al

Patent Trial and Appeal Board

Dec 28, 2018

12308803 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/308,803
21874 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
12/23/2008
01/02/2019
FIRST NAMED INVENTOR
Katsuhiro Kajikawa
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.
l 415791.986US9 5000
EXAMINER
KHAN, AMINA S
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATSUHIRO KAJIKA WA, SUMIO OKUDA,
KAZUMASA KONISHI and KUNIHIKO ISHIZAKI
Appeal2017-004120
Application 12/308,803
Technology Center 1700
Before CATHERINE Q. TIMM, RAEL YNN P. GUEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
December 19, 2014, decision finally rejecting claims 1-9 and 11-15 ("Final
Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify NIPPON SHOKUBAI CO., LTD., as the real party in
interest (Appeal Br. 4).
Appeal2017-004120
Application 12/308,803
CLAIMED SUBJECT MATTER
Appellants' disclosure is directed to a method for producing water
absorbent particles to obtain a water absorbent resin with good properties
and which is less likely to have colored foreign particles contained therein
(Abstract). Details of the claimed invention are set forth in claim 1, which is
reproduced below from the Claims Appendix of the Appeal Brief (emphasis
added):
1. A method for producing water absorbent resin powder
whose mass average particle diameter defined by sieve
classification is between 300 µm and 600 µm and which
contains less than 10% by mass of fine powder having a particle
diameter of 150 µm or less and has a surface cross-linked
structure,
said method being characterized by comprising:
a polymerization step in which an unsaturated monomer
aqueous solution is polymerized;
a drying step in which a hydrogel cross-linked polymer
obtained in the polymerization step is dried;
a surface treatment step in which the hydrogel cross-
linked polymer or a dried hydrogel cross-linked polymer is
subjected to a surface treatment; and
a sorting step, carried out after the surface-crosslinking in the
surface treatment step, in which with respect to a Lot, in which
particles of a foreign matter that is nonmagnetic and colored organic
substance are dotted in white water absorbent resin powder, which has
a yellow index YI:S 15, color sorting is carried out at least once so as
to sort and remove particles of a black or brown foreign matter
contained in the white water absorbent resin.
2
Appeal2017-004120
Application 12/308,803
REJECTIONS
I. Claims 1, 4, 5, 7-9, and 12-15 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Ishizaki2 in view of Nakahara. 3
II. Claims 3 and 6 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Ishizaki in view of Nakahara and further in view ofikeda. 4
III. Claim 2 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Ishizaki in view of Nakahara, Ikeda, and further in view of Doak. 5
IV. Claim 15 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Ishizaki in view of Nakahara, and further in view of Hatsuda. 6
DISCUSSION
The Examiner finds that Ishizaki teaches methods of producing
absorbent resin powders with mass average particle diameters in the range of
300-600 µm which contain less than 10 mass% of fine powder smaller than
150 µm (Final Act. 3, citing Ishizaki 20:1-15). The Examiner further finds
that Ishizaki discloses each of the remaining elements of claim 1, except that
"Ishizaki does not teach removing black or brown particles ... " (id.). The
Examiner finds that Nakahara, which is in an analogous art, teaches that
there is a high demand that water absorbent resins be white, which can be
achieved by having particles with a yellowing index value of 0-15 (id.,
citing Ishizaki ,r,r 5, 97). Therefore, according to the Examiner, it would
2 Ishizaki et al, US 7,193,006 B2, issued March 20, 2007.
3 Nakahara et al., US 2004/0110914 Al, published June 10, 2004.
4 Ikeda et al., US 6,784,996 B2, issued August 31, 2004.
5 Doak et al., US 6,497,324 B2, issued December 24, 2002.
6 Hatsuda et al., US 6,562,879 Bl, issued May 13, 2003.
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Appeal2017-004120
Application 12/308,803
have been obvious to modify Ishizaki's methods to remove all of the black
or brown colored particles with a yellowing index greater than 15 because
Nakahara teaches that water absorbent resins which are white (i.e. without
colored particles) are in high demand (id.).
Appellants argue that the combination of Ishizaki and Nakahara does
not teach or suggest each limitation of claim 1 (Appeal Br. 8). In particular,
Appellants argue that the final paragraph of claim 1 7 is not taught or
suggested by the cited art. Appellants argue that Ishizaki relates to a
technique of reducing yellowing of the entire water absorbent resin powder,
and does not teach or suggest anything about the presence of particles of
colored foreign matters or color sorting such particles from white particles
(Appeal Br. 9, citing Ishizaki Abstract, cols. 16, 24, and 25). According to
Appellants, Ishizaki does not involve the removal of specific black or
brown-colored particles and, therefore, is concerned with a different
technical concept than the claimed invention (Appeal Br. 9-10).
The Examiner does not disagree with this proposition generally, and
acknowledges that "Ishizaki does not teach removing black or brown
particles ... " (Final Act. 3). The Examiner relies on Nakahara as suggesting
removal of black or brown particles because it teaches that white particles
are preferred by consumers. Appellants also argue that Nakahara does not
7 "A sorting step, carried out after the surface-crosslinking in the surface
treatment step, in which with respect to a Lot, in which particles of a foreign
matter that is nonmagnetic and colored organic substance are dotted in white
water absorbent resin powder, which has a yellow index YI:S 15, color
sorting is carried out at least once so as to sort and remove particles of a
black or brown foreign matter contained in the white water absorbent resin"
( emphasis added).
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Appeal2017-004120
Application 12/308,803
specifically disclose removal of specific brown or black particles, but instead
is primarily concerned with overall color, as measured by YI (yellowing
index). Finally, Appellants argue - supported by declaration evidence - that
individual black or brown particles have no effect on overall YI of a sample
and, therefore, that a person of skill in the art reading Ishizaki and/ or
Nakahara would have had no reason to try to remove the individual black or
brown particles, because they have limited or no effect on the YI of the
overall sample (see, generally Appeal Br. 7-15; Reply Br. 3-9).
Appellants' arguments are persuasive. In particular, as explained by
Appellants (Reply Br. 8), Nakahara specifically states that there is a high
demand for white water absorbent resin so as to prevent an appearance of the
presence of foreign substances (Nakahara ,r 5). Nakahara also describes the
whiteness in terms of YI (Nakahara ,r 97). Thus, both Ishizaki and Nakahara
are concerned with the average appearance of the resin particles (i.e. their
YI), not the presence or absence of foreign particles. Appellants have
explained and demonstrated that the YI of a sample of resin powder is not
affected by the presence of individual brown or black-colored particles.
Accordingly, even if the teachings of Ishizaki and Nakamura were
combined as set forth in the rejection, the combination would not have
taught or suggested sorting and removing particles of a black or brown
foreign matter, as recited in claim 1.
Therefore, we reverse the rejection of claim 1 over Ishizaki and
Nakahara. Because the remaining claims all depend from claim 1, and the
additional references do not cure the deficiency outline above, we also
reverse the rejections of the remaining claims.
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Appeal2017-004120
Application 12/308,803
CONCLUSION
We REVERSE the rejection of claims 1, 4, 5, 7-9, and 12-15 under
35 U.S.C. § 103(a) as unpatentable over Ishizaki in view of Nakahara.
We REVERSE the rejection of claims 3 and 6 under 35 U.S.C. § 103(a)
as unpatentable over Ishizaki in view of Nakahara and further in view of
Ikeda.
We REVERSE the rejection of claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Ishizaki in view of Nakahara, Ikeda, and further in view of
Doak.
We REVERSE the rejection of claims 15 under 35 U.S.C. § 103(a) as
unpatentable over Ishizaki in view of Nakahara, and further in view of
Hatsuda.
REVERSED
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