Ex Parte Qin et al

Board of Patent Appeals and Interferences

Aug 9, 2012

11640042 (B.P.A.I. Aug. 9, 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.
11/640,042 12/15/2006 Jian Qin 64122763US01 5949
23556 7590 08/10/2012
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
MARCETICH, ADAM M
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
08/10/2012 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 JIAN QIN, RICHARD NORRIS DODGE II,
and PETER ROBERT ELLIKER
__________

Appeal 2011-007185
Application 11/640,042
Technology Center 3700
__________

Before ERIC GRIMES, LORA M. GREEN, and ULRIKE W. JENKS,
Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 involving claims
directed to chemically modified cellulose fiber. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
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Application 11/640,042

2
STATEMENT OF THE CASE
The present invention relates to an absorbent material which has low
capacity, less than 10 g/g, and a slow absorption rate. This material can be
used to improve the absorption of products by allowing effective distribution
of fluid into regions outside the point of insult to improve the overall
absorption efficiency of the product. (Spec. 2, ll. 21-27.)
Claims 1-10 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief (App. Br. 6). Claim 1 is the sole independent claim, and
representative of the claims on appeal, and reads as follows (emphasis
added):
1. An absorbent fiber comprising a cellulose fiber that has been
modified via chemical modification and acidification;
wherein the chemical modification is selected from
carboxymethylation resulting from a neutralized carboxymethyl
group, sulfonation, sulfation or phosphonation;
wherein the absorbent fiber comprises an agent that acidifies a
neutralized chemical modification agent;
wherein the absorbent fiber is substantially water-insoluble and water-
swellable; and
wherein the absorbent fiber exhibits a Centrifuge Retention Capacity
after four hours of between 1.4 and 8 grams per gram and an
absorption rate between 0.0001 and 0.01 sec
-1
.

The following grounds of rejection are before us for review:
The Examiner has rejected claims 1-7 and 9 under 35 U.S.C. § 102(a)
or in the alternative under 35 U.S.C. § 103(a) as unpatentable over Luo.
1
As
Appellants do not argue the claims separately, we focus our analysis on

1
Luo et al., US 2006/0137838 A1, published Jun. 29, 2006.
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claim 1, and claims 2-7 and 9 stand or fall with that claim. 37 C.F.R. § 41.37
(c)(1)(vii).
The Examiner has rejected claims 8 and 10 under 35 U.S.C. § 103(a)
as unpatentable over Luo in view of Ells.
2

ISSUE
The Examiner finds that “Luo discloses a cellulose fiber (¶ [0013]),
that is modified with at least one agent (¶ [0039]; [0050], [0057]), especially
the same agents as disclosed in the specification.” (Ans. 5.) The Examiner
further finds that Luo disclosed products with a Centrifuge Retention
Capacity overlapping the claimed range (id.), and that the absorption rates
are inherent in the product (id. at 6).
Appellants contend that the absorbent fiber of Luo is not the result of
a neutralization of a carboxymethyl group. “[T]he acetic acid is too weak to
acidify the sulfate groups in Luo or even the methyl carboxylate groups in
the chemically modified fibers . . . the added acid must be much stronger
acid than the conjugate acid of the group which is being acidified.” (App.
Br. 4.) According to Appellants, “acetic acid cannot function as an
acidifying agent.” (Id.)
Thus, the issue on appeal is has the Examiner established that Luo
anticipates or renders obvious the absorbent fiber of claim 1?

2
Ells et al., US 3,618,607, issued Nov. 9, 1971.
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Application 11/640,042

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FINDINGS OF FACT
FF1. We adopt the Examiner’s findings concerning the scope and content
of the prior art and conclusions as our own. (Ans. 3-8.)
FF2. Luo disclosed a procedure for making carboxymethyl cellulose that
takes kraft pulp, treats the pulp with sodium hydroxide, reacts the mixture
with monochloroacetic acid, followed by neutralizing the filtered pulp with
acetic acid. (Luo 8, ¶ 0102.)
FF3. Luo disclosed a carboxymethyl cellulose product having a
Centrifugation Capacity of 6.38 g/g. (Luo 8, ¶0104.)

PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims . . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).

ANALYSIS
Luo disclosed a method of making carboxymethyl cellulose (FF2).
Luo disclosed a neutralized carboxy methylcellulose that is prepared with a
neutralizing agent, acetic acid. (Final Office Action March 25, 2010, p. 4.)
The Examiner construes claim 1 and takes the position that “an agent that
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acidifies a neutralized chemical modification agent” includes agents that
achieve “both chemical modification and acidification.” (Id. at p. 2.)
According to the Examiner 3-chloropropionic acid, maleic acid, itaconic
acid, succinic acid, and citric acid are agents that acidify a neutralized
chemical modification agent. (Ans. 4.) The Examiner’s position is that Luo
disclosed a cellulose fiber modification using monochloroacetic acid which
is “also a powerful neutralizing agent that acidifies a chemical modification
agent.” (Id. at 8.)
Appellants assert that Luo did not disclose an absorbent fiber that
comprises an agent that “acidifies a neutralized chemical modification
agent.” (App. Br. 4.) Appellants assert that “the acetic acid is too weak” to
neutralize the chemically modified fibers. (Id.) Appellants further assert
that a much stronger acid, such as HCl, is required and direct attention to the
example provided in the Specification. (Id.)
We are not persuaded. The procedure disclosed in Luo followed the
steps of treating kraft pulp with sodium hydroxide, followed by the addition
of monochloroacetic acid, after the reaction was completed the sample was
filtered and then neutralized with acetic acid. (FF2.) The centrifuge
capacity of Luo’s product overlaps the claimed range (Ans. 5-6; FF3). We
agree with the Examiner’s reasoning that “Luo discloses the invention
substantially as claimed” (Ans. 5) and those limitations that are not disclosed
by Luo are an inherent feature of the product.
Moreover, the Specification does not define or limit “an agent that
acidifies a neutralized chemical modification agent.” “[W]hile it is true that
claims are to be interpreted in light of the specification and with a view to
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ascertaining the invention, it does not follow that limitations from the
specification may be read into the claims.” Sjolund v. Musland, 847 F.2d
1573, 1581 (Fed. Cir. 1988) (emphasis in original). Because the “agent that
acidifies” is not defined in the Specification, we will not limit the agent to
strong acids, such as HCl, as argued by Appellants.
Appellants’ arguments without more cannot overcome the prima facie
case made by the Examiner. Appellants assert that acetic acid cannot
function as an acidifying agent. (App. Br. 4.) “Attorneys’ argument is no
substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581
(Fed. Cir. 1989).
Appellants also draw our attention to the example found in the
Specification in Table 1 (Spec. 37). Table 1 compares the Centrifugation
Retention Capacity and the Absorption Rate of carboxymethyl cellulose
products that were made by first treating wood pulp with sodium hydroxide,
followed by the addition of dry monochloroacetic acid. The pulp was
washed and half of the resulting pulp was dried and designated as Na-Type
product. The other half of the pulp was treated with a methanol/HCl
solution followed by washing and drying, this product was designated H-
Type. (Spec. 36.) Based on sample No. 1-6
3
in Table 1 (Spec. 37) we find
there is no consistent pattern between the Na-Type and the H-Type product
that would lead the ordinary artisan to conclude treatment with HCl has a
consistent effect on the Centrifugation Retention Capacity of the fiber.

3
We cannot draw any conclusion about the data in sample 7 because there is
no corresponding Na-type fiber control represented at this data point.
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The Specification asserts that “Na-Type fiber with a high degree of
modification tends to have an increased degree of extractables which was
reflected by a reduction in centrifuge retention capacity (CRC) as measuring
time was increased.” (Spec. 37.) Again we do not find a consistent pattern
in Table 1 that supports this statement: while the paired samples 3/4 and 5/6
show a reduced CRC with longer times for the Na-type product, paired
samples 1/2 do not. Thus, based on the examples provided in the
Specification we find there is insufficient data to agree with Appellants that
a strong acid, like HCl, is required to achieve the claimed limitation that the
fiber “comprises an agent that acidifies a neutralized chemical
modification.” We conclude that the Examiner has met the burden of setting
out a prima facie case.

CONCLUSION OF LAW
We conclude that the preponderance of the evidence of record
supports the Examiner’s conclusion that Luo either anticipates or renders
obvious the invention of claim 1. We thus affirm the rejection of claim 1
under 35 U.S.C. § 102(a) as anticipated or in the alternative under 35 U.S.C
§ 103(a) as obvious, and as claims 2-7 and 9 stand or fall with that claim, we
affirm the rejection as to those claims as well. As Appellants do not present
separate arguments as to the rejection of claims 8 and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Luo in view of Ells (App. Br. 4), we also
affirm that rejection.

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SUMMARY
We affirm the rejection of claims 1-7 and 9 under 35 U.S.C. § 102(a)
or in the alternative under 35 U.S.C. § 103(a) as unpatentable over Luo.
We affirm the rejection of claims 8 and 10 under 35 U.S.C. § 103(a)
as unpatentable over Luo in view of Ells.
TIME PERIOD FOR RESPONSE
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

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