Ex Parte Matsumoto et al

Patent Trial and Appeal Board

Jan 22, 2018

13499037 (P.T.A.B. Jan. 22, 2018)

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.
13/499,037 03/29/2012 Satoshi Matsumoto 59228 5954
35161 7590 01/22/2018
DTrKTNSON WRIGHT PT T C EXAMINER
1825 Eye St., NW LE, HOA T
Suite 900
WASHINGTON, DC 20006 ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
01/22/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte SATOSHI MATSUMOTO,
KUNIHIKO ISHIZAKI, KAZUSHI TORII,
SHIN-ICHI FUJINO, and KAZUHIKO SAKAMOTO
Appeal 2017-004254
Application 13/499,03 71
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellants filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision finally rejecting claims 56—67 and 69—74.2
We have jurisdiction under 35 U.S.C. § 6(b).3
1 Appellants identify the real party in interest as Nippon Shokubai Co., Ltd.
Appeal Br. 1.
2 Claims 49—55 have been withdrawn from consideration in view of the
Examiner’s determination of a lack of unity of invention. Final Office
Action (Final Act.) mailed Nov. 2, 2015 at 2.
3 Our Decision refers to Appellants’ Specification (Spec.) filed Mar. 29,
2012, Appellant’s Appeal Brief (Appeal Br.) filed Mar. 31, 2016, the
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Application 13/499,037
We AFFIRM.
The subject matter on appeal relates to a method for producing a
polyacrylic acid (salt)-based water absorbent resin (see, e.g., claim 56). The
inventors disclose there has been a problem of coloration over time and of
odor for water absorbing resins used for hygiene materials, such as
disposable diapers and sanitary napkins. Spec. Tflf 4, 8, 10. The inventors
disclose that their water absorbent resin has excellent anti-yellowing
performance, lacks odor, and exhibits excellent absorption capability. Id.
111,14.
Independent claim 56 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.* * 4 The limitation at issue is italicized.
56. A method for producing a polyacrylic acid (salt)-based
water absorbent resin, sequentially comprising the steps of:
storing or producing acrylic acid;
mixing acrylic acid containing a polymerization inhibitor
with water, a crosslinking agent, and optionally, a basic
composition, and/or neutralizing them, to prepare an aqueous
monomer solution;
polymerizing the aqueous monomer solution by use of a
polymerization initiator and/or irradiation with active energy
rays;
drying a water-containing gel-like crosslinked polymer
thus obtained; and
optionally carrying out surface crosslinking,
wherein the acrylic acid containing the polymerization
inhibitor has a water content of less than 80 ppm (by mass, the
same applies hereinafter), and/or the aqueous monomer solution
has a formic acid content of 1 to 700 ppm, relative to the
monomer, and/or the following conditions (1) to (3) are
Examiner’s Answer (Ans.) mailed Nov. 7, 2016, and Appellants’ Reply
Brief (Reply Br.) filed Jan. 6, 2017.
4 Appeal Br. 20.
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satisfied:
(1) the basic composition has an iron content of
0.007 to 7 ppm;
(2) 0.01 to 5 parts by mass of a cationic polymer is
mixed in the polymer, relative to 100 parts by mass of the
polymer, after the drying step; and
(3) 0.0001 to 5 parts by mass of formic acid is
allowed to be present and/or mixed in the monomer at the
time of polymerization and/or the polymer after the
polymerization, relative to 100 parts by mass of the
monomer at the time of polymerization and/or the
polymer after the polymerization, and wherein the
monomer at the time of polymerization has a formic acid
content of 0 to 700 ppm, relative to the monomer.
REJECTIONS ON APPEAL
I. Claims 56—59, 66, and 69-74 as being unpatentable
under 35 U.S.C. § 103(a) over Daniel5 in view of
Benderly;6
II. claims 60-63 as being unpatentable under 35 U.S.C.
§ 103(a) over Daniel and Benderly and further in view of
Bennett;7 and
III. claims 64, 65, and 67 as being unpatentable under 35
U.S.C. § 103(a) over Daniel and Benderly and further in
view of Goto.8
5 Daniel et al., US 2008/0114140 Al, published May 15, 2008 (“Daniel”).
6 Benderly et al., US 2005/0113605 Al, published May 26, 2005
(“Benderly”).
7 Bennett et al., US 2006/0089512 Al, published Apr. 27, 2006 (“Bennett”).
8 Goto et al., JP 07-242709 A, published Sept. 19, 1995 (“Goto”).
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B. DISCUSSION
Rejection I
Claims 56—59, 66, and 69-74 are rejected as being unpatentable under
35 U.S.C. § 103(a) over Daniel in view of Benderly.
Appellants submit arguments for claims 56 and claims 57—59, 66, and
69-73, which we address below. Appellants do not argue claim 74
separately from claim 56 and therefore we treat claims 56 and 74 as a group.
The Examiner sets forth findings with regard to claims 60-63 at page
3 of the Examiner’s Answer but does not include claims 60—63 in the
statement of the rejection at page 2 of the Examiner’s Answer. The
Examiner sets forth a rejection for claims 60—63 under § 103(a) at page 4 of
the Examiner’s Answer over Daniel, Benderly, and Bennett and finds Daniel
and Benderly do not disclose a neutralizing step including the relationship of
XI recited in claim 60. As such, the statement of the rejections at pages 2
and 4 of the Examiner’s Answer appear to be correct. Therefore, we treat
claims 60—63 as only rejected under § 103(a) over Daniel, Benderly, and
Bennett.
Claims 56 and 74
The Examiner finds Daniel discloses a method of producing a
polyacrylic acid-based water absorbent resin in which acrylic acid,
polymerization inhibitor, water, a crosslinking agent, and a basic
composition are mixed to form a monomer solution, the monomer solution is
polymerized to form a polymer gel, and the polymer gel is dried and surface
crosslinked. Ans. 2.
Appellants contend that Daniel does not disclose the use of a
polymerization inhibitor but instead discloses stable, solid sodium acrylate
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that does not need a polymerization inhibitor. Appeal Br. 6. However, the
Examiner finds Daniel discloses embodiments including acrylic acid
monomer and embodiments that lack a monomer. Ans. 6—7. Daniel
discloses neutralizing acrylic acid with a basic aqueous solution and a
crosslinker to form a supersaturated solution of sodium acrylate and acrylic
acid. Daniel 15, 29. Daniel discloses that polymerization of sodium
acrylate can be done with or without monomer in the solution and stabilizing
the monomer with an inhibitor. Id. 28, 39. In addition, Daniel discloses
heating (e.g., drying) and surface cross-linking particulate hydrogels and that
its resulting polymer is superabsorbent. Id. 9, 40. Thus, the disclosure of
Daniel supports the Examiner’s findings.
Appellants contend Daniel does not disclose an aqueous monomer
solution obtained from an acrylic acid containing a polymerization inhibitor
having a water content of less than 80 ppm. Appeal Br. 6. Appellants’
arguments are unpersuasive. Daniel discloses its “aqueous monomer
solutions are preferably produced from anhydrous sodium acrylate” and that
its monomer is acrylic acid or methacrylic acid, typically at 100% purity.
Daniel H 13, 26. Thus, the disclosure of Daniel suggests that the acrylic
acid monomer should be essentially free of water (i.e., anhydrous) and be
used in its aqueous polymerization process. To the extent Daniel does not
expressly disclose a technique to provide a lower water content acrylic acid,
such as an acrylic acid having a water content of less than 80 ppm, as recited
in claim 56, the Examiner finds Benderly demonstrates that such a water
content was known in the art for acrylic acid. Ans. 2, 5—6. Specifically, the
Examiner finds Benderly discloses reducing the water content to 80 ppm or
lower via the use of reactive drying agents. Id. Thus, Benderly discloses a
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technique for providing a low water content acrylic acid, such as Daniel’s
anhydrous and 100% pure acrylic acid.
Thus, in view of Daniel’s disclosure to use anhdryous acrylic acid
(i.e., low water content acrylic acid) as a monomer, the disclosure of Daniel
itself suggests using the technique of Benderly to provide an anhydrous
monomer for use in Daniel’s process. Appellants’ argument does not
consider the applied references as a whole and what they would have
suggested to one of ordinary skill in the art. “[T]he test for combining
references is not what the individual references themselves suggest but
rather what the combination of disclosures taken as a whole would suggest
to one of ordinary skill in the art.” In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
Appellants further argue that Benderly discloses a water content of 80
ppm, not a water content of less than 80 ppm, as recited in claim 56. Appeal
Br. 8—9, 13—14; Reply Br. 2—7.9 This argument is unpersuasive because
Benderly discloses “[rjesidual impurities in (meth)acrylic acid (M)AA) [sic],
particularly aldehydes and water, interfere with polymerization reactions
thereby adversely impacting polymer properties.” Benderly 12. Thus,
Benderly discloses that the amount of impurities, which includes water, in
9 One aspect of Appellants’ arguments is that Benderly discloses an increase
in water content can occur when using aldehyde treating compounds to
remove impurities. Reply Br. 3. However, as acknowledged by Appellants,
Benderly discloses that such an increase in water content is prevented by
monitoring and controlling the amount of aldehyde treating compound.
Appeal Br. 3; see also Benderly | 66. Moreover, Benderly does not disclose
what amount an “excess of aldehyde treating compounds” (Benderly | 66) is
or what water content can be achieved before an increase in water content
occurs due to an excessive amount of aldehyde treating compound being
used.
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acrylic acid is a result-effective variable (i.e., one that affects polymerization
and polymer properties).
“[Discovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276 (CCPA 1980). Further, “where the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.” In re Aller, 220
F.2d 454, 456 (CCPA 1955). However, Daniel discloses its “aqueous
monomer solutions are preferably produced from anhydrous sodium
acrylate.” Daniel 113. Daniel further discloses that its acrylic acid
monomer is typically 100% pure. Id. 126. Therefore, Daniel itself
discloses the use of a monomer that is essentially free of water. To the
extent Benderly does not expressly disclose that its technique achieves a
water content of less than 80 ppm it would have been obvious to one of
ordinary skill in the art to modify the acrylic acid of Daniel to have a water
content as low as possible, including values lower than the 80 ppm achieved
in Example 2 of Benderly, in view of Daniel’s preference for monomers that
are essentially free of water (i.e., anhydrous). Thus, the disclosures of
Daniel and Benderly support the Examiner’s findings regarding the water
content of claim 56 and the Examiner’s conclusion that it would have been
obvious to apply Benderly’s teachings in Daniel’s process.
Appellants further assert that Example 2 of Benderly achieves a water
content of 80 ppm (not less than 80 ppm) and higher water contents at
different times, other examples (e.g., Example 3) have a water content
greater than 80 ppm, and these disclosures suggest that the process of
Benderly cannot achieve a water content less than 80 ppm. Appeal Br. 10—
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11; Reply Br. 5—7. However, Appellants do not direct us to any evidence or
persuasive technical reasoning demonstrating the process of Benderly would
not be capable of achieving a water content of less than 80 ppm, as recited in
claim 56, particularly in view of Benderly’s disclosures that water is an
impurity that interferes with polymerization and lowering of water content.
Therefore, the arguments are also unpersuasive.
Moreover, with regard to Benderly’s disclosure of 80 ppm of water in
Example 2 (Benderly 178), a prima facie case of obviousness exists where
the prior art and claimed ranges overlap, as well as in those cases where the
claimed range and the prior art range, though not overlapping, are
sufficiently close that one skilled in the art would have expected them to
have the same properties. See, e.g., In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); Titanium Metals Corp. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). Here, the value of 80 ppm
water disclosed by Benderly and the water content range of less than 80 ppm
recited in claim 56 (which includes values close to 80 ppm) are sufficiently
close that one would have expected the polymer of Benderly to have the
same properties as the resin produced by the method of claim 56.
Appellants have not established otherwise either by persuasive technical
reasoning or an evidentiary showing.
Appellants contend that Daniel and Benderly are directed to different
reaction processes and materials and thus there would not have been a
reason to modify the process of Daniel in view of Benderly. Appeal Br. 12—
13. However, Appellants do not explain how the asserted differences would
have made a modification of Daniel’s process in view of Benderly
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nonobvious to one of ordinary skill in the art; Appellants merely cite
differences between the applied references. As discussed above, Daniel
discloses that its acidic monomer should be anhydrous. Daniel 113, 26.
This suggests that the ordinary artisan would have been motivated to apply
the techniques of Benderly to remove water in the acrylic acid used in
Daniel’s process. Moreover, as explained by the Examiner at pages 5—6 of
the Examiner’s Answer, both references are directed to polymerizing water
absorbent resin from acrylic acid. Therefore, Benderly’s disclosure of
impurity reduction for acrylic acid lends itself to application in the process
of Daniel.
Appellants contend Daniel and Benderly do not disclose or suggest
the prevention of coloration in a water absorbent resin and that the product
of Benderly’s process would be colored. Appeal Br. 6—12. As stated by the
Examiner at page 7 of the Examiner’s Answer, color suppression is not
recited in claim 56. Moreover, there is no requirement that the prior art
disclose properties asserted by Appellants. See In re Dillon, 919 F.2d 688,
693 (Fed. Cir. 1990) (“the statement that aprima facie obviousness rejection
is not supported if no reference shows or suggests the newly-discovered
properties and results of a claimed structure is not the law”). As a result,
Appellants’ arguments do not identify a reversible error.
Appellants also assert that the data in Table 1 of their Specification
demonstrates “the unexpected effect that the monomer solution obtained
from acrylic acid containing a polymerization inhibitor and having a water
content lower than 80 ppm, suppresses the rate of color deterioration.”
Appeal Br. 11. Only Example 1-1 in Table 1 of Appellants’ Specification
has a water content of less than 80 ppm, as recited in claim 56. Spec. 135.
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Thus, Table 1 presents a single data point (e.g., a water content of 64 ppm)
for the methods encompassed by claim 56. However, the scope of claim 56
would include various compositions, including those having water content
approaching 80 ppm. As such, the results asserted by Appellants are not
commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731,
743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
Further, Appellants have not compared the asserted unexpected results
with the closest prior art. For instance, Daniel discloses the use of an
anhydrous acidic monomer (Daniel 113, 26), which would be essentially
free of water. However, Appellants have not compared their asserted results
with Daniel’s disclosure of such a monomer. “[W]hen unexpected results
are used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.” In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). In addition, Appellants assert
unexpected results without presenting evidence of unexpected results.
Unexpected results must be established by factual evidence. Attorney
argument does not suffice. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir,
1997) (attorney argument is not the kind of factual evidence that is required
to rebut a prima facie case of obviousness); see also In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1994) (“Mere argument or conclusory statements in
the specification does not suffice.”).
Based on the foregoing, Appellants’ asserted evidence of unexpected
results is entitled to little weight. A preponderance of the evidence supports
the Examiner’s obviousness determination for claim 56.
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Claims 57—59, 66, and 69-73
Appellants present arguments for claims 57—59, 66, and 69-73. We
address these arguments together here for efficiency, not necessarily to
address them as a group of claims argued together.
Appellants contend it would not have been obvious to modify Daniel
in view of Benderly to provide the water content recited in claim 57. Appeal
Br. 14. This argument is unpersuasive for the reasons discussed above with
regard to claim 56.
For claim 58, Appellants argue paragraph 20 of Daniel does not
support the Examiner’s rejection. Id. at 14—15. The Examiner explains that
paragraph 28 of Daniel was cited in the rejection, not paragraph 20. Ans.
11. Appellants do not respond to the Examiner’s statement or findings
regarding paragraph 28.
With regard to claim 59, the Examiner concludes it would have been
obvious to select acrylic acid derived from a plant as a matter of selecting a
source. Id. at 3. Appellants assert that the Examiner has not set forth a
reasonable basis for the obviousness of using acrylic acid from a plant and
the applied references do not disclose this. Appeal Br. 15. This argument is
unpersuasive. Appellants have not cited evidence or persuasive technical
reasoning explaining how acrylic acid derived from a plant differs from
acrylic acid sourced a different way. In view of a reasonable expectation
that acrylic acid derived from a plant does not differ chemically from acrylic
acid derived from another source (e.g., synthetic means), it would have been
obvious to select the source of acrylic acid (e.g., from a plant) as a matter of
choice, as the Examiner concludes.
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Appellants set forth arguments for claims 66 and 69-73 at pages 15—
16 of the Appeal Brief by arguing the applied references do not disclose the
claimed features. The Examiner sets forth findings and rationales for claims
66 and 69-73 at pages 3^4 and 12—13 of the Examiner’s Answer.
Paragraphs 36, 39, 44, 46, 54, and 56 of Daniel support the Examiner’s
findings. Appellants do not respond to the Examiner’s statements in the
Examiner’s Answer. Therefore, a preponderance of the evidence in the
record supports the Examiner’s rejection of claims 66 and 69—73.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103 rejection of claims 56—59, 66, and
69-74.
Rejection II
Claims 60-63 are rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Daniel and Benderly and further in view of Bennett.
The Examiner finds Daniel and Benderly do not disclose or suggest a
neutralizing step according to the relationship recited in claim 60. Ans. 4,
13. The Examiner finds Bennett discloses the neutralization of acrylic acid
and a relationship between retention time and the contact area of liquid to
ensure adequate neutralization. Id. The Examiner concludes it would have
been obvious to determine values for retention times and contact area
through routine experimentation. Id. In other words, the Examiner
concludes it would have been obvious to determine values that are
encompassed by the relationships recited in claims 60 and 61 as a matter of
determining the workable or optimal ranges for result-effective variables
through routine experimentation.
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Appellants contend that Bennett is not directed to a process that
produces a polyacrylic acid (salt)-base water absorbent resin and that
Bennett does not disclose the claimed relationships or provide a rationale for
controlling neutralization, as recited in the rejected claims. Appeal Br. 16.
These arguments do not address the Examiner’s rejection and therefore do
not identify a reversible error.
Appellants further argue that Bennett does not disclose storing acrylic
acid, as recited in claim 62, or neutralizing acrylic acid within 96 hours after
purification, as recited in claim 63. Id. at 16—17. Claim 62 recites “wherein
the step of producing acrylic acid is connected by a pipeline to the steps of
producing a water absorbent resin via the step of storing acrylic acid.”
Claim 62 does not limit the method of storing or what length of time the
acrylic acid is stored. Thus, “storing” encompasses the flow of acrylic acid
through a pipe for a short time. Daniel discloses the addition of acrylic acid
solution to Daniel’s process. Daniel 134. Such a step would necessarily
include storing the acid in some manner for some amount of time, as stated
by the Examiner at page 12 of the Examiner’s Answer, and also provides at
least flowing the acid through a pipe for a short amount of time, which is
encompassed by “storing” in claim 62.
With regard to claim 63, the Examiner concludes it would have been
obvious to modify Daniel, as modified by Benderly, in view of Bennett to
provide a continuous neutralization step. Ans. 4, 13. Appellants’ argument
that Bennett does not disclose the storing time recited in claim 63 does not
address the Examiner’s rejection. Moreover, claim 63 encompasses
supplying acrylic acid to a neutralization system immediately after
purification because claim 63 only recites a maximum time of 96 hours.
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Therefore, to the extent the applied references do not expressly disclose a
time period for supplying acrylic acid to a neutralization system after
purification, it is reasonable to infer the immediate supply of acrylic acid to
a neutralization process when no time period is disclosed.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103 rejection of claims 60-63.
Rejection III
Claims 64, 65, and 67 are rejected as being unpatentable under 35
U.S.C. § 103(a) over Daniel and Benderly and further in view of Goto. For
the rejection of claims 64 and 65, the Examiner finds Goto discloses the
mixture of formic acid and a cationic amine, namely polyvinylamine. Ans.
5.
Appellants acknowledge the Examiner’s finding that Goto discloses
polyvinylamine but does not refute this finding because Appellants argue
that Goto does not disclose an acrylic acid containing an inhibitor or a
solution prepared from acrylic acid, mixing with a crosslinking agent, or the
water content of claim 56. Appeal Br. 17—18. As discussed above with
regard to claim 56, the combination of Daniel and Benderly suggests these
limitations.10
Appellants further assert that Goto does not disclose formic acid or a
cationic polymer mixed with a water absorbing resin in the claimed
amounts. Id. at 18. This argument is also unpersuasive because, as the
Examiner determines (Ans. 14), it would have been obvious to determine the
10 Appellants also assert that Goto does not disclose the addition of a
chelating agent, an inorganic reducing agent, or a—hydroxycarboxylic acid
(salt). Appeal Br. 18. These limitations are recited in claim 66, not claims
64, 65, or 67.
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workable amounts of Goto’s mixture of formic acid and cationic polymer
(i.e., polyvinylamine) via undue experimentation and provide mixture
amounts that fall within the range of claim 64, which is large in scope.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103 rejection of claims 64, 65, and 67.
C. DECISION
The decision of the Examiner is affirmed.
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).
AFFIRMED
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