Ex Parte Stueven et al

Patent Trial and Appeal Board

Aug 29, 2016

12306790 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/306,790 12/29/2008
4743 7590 08/31/2016
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
Uwe Stueven
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.
29827 /44434 6945
EXAMINER
MANGOHIG, THOMAS A
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UWE STUEVEN, MATTHIAS WEISMANTEL, HEIDE
WILFRIED, MARCO KRUGER, VOLKER SEID I, STEP AN BLEI,
DENNIS LOSCH, RUDIGER FUNK, and ANNEMARIE HILLEBRECHT
Appeal2014-009851
Application 12/306,790
Technology Center 1700
Before ROMULO H. DELMENDO, MARK NAGUMO, and
JEFFREY R. SNAY, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 11,
13-18, 21, and 23-29.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants state that the Real Party in Interest is "BASF SE" (Appeal
Brief filed February 13, 2014, hereinafter "Appeal Br.," 3).
2 See Appeal Br. 7; Final Office Action delivered electronically on
September 13, 2013, hereinafter "Final Act.," 2-12.
Appeal2014-009851
Application 12/306,790
BACKGROUND
The subject matter on appeal relates to water-absorbing polymer
beads prepared by polymerizing droplets of a specified monomer solution in
a gas phase (Specification, hereinafter "Spec.," 1, 11. 6-10). According to
the Appellants, these "water-absorbing polymers are used to produce
diapers, tampons, sanitary napkins[,] and other hygiene articles, [as well as]
water-retaining agents in market gardening" (id. at 1, 11. 16-18).
Representative claim 11 is reproduced from page A-1 of the Claims
Appendix to the Appeal Brief, with key limitations indicated in italicized
text, as follows:
11. Water-absorbing polymer beads prepared by a
process comprising polymerizing droplets of a monomer
solution comprising
a) at least one ethylenically unsaturated monomer
bearing acid groups,
b) at least one crosslinker,
c) at least one initiator, and
d) water,
in a gas phase surrounding the droplets, wherein the monomer
solution comprises from 0.05 to 0.25% by weight solubilized
polyvalent cations based on monomer a) and the polymer beads
have a mean sphericity of at least 0.84, a mean diameter of at
least 150 µm, a content of hydrophobic solvents of less than
0.005%, by weight, and a permeability of at least 5 x 10-7
cm3 s/g, and wherein the polyvalent cations are distributed
throughout the water-absorbing polymer beads.
THE REJECTION
The Examiner rejected claims 11, 13-18, 21, and 23-29 under
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Application 12/306,790
- ,.. TT r"I _..,., n 1 f'\. - / "' ' ' ., ., rri • • ' ., /"1 • ro, LLr-Ti ...... .,,_ 1. • j) u.:s.c. s lUj~aJ as unpatemao1e over lorn et al. ~neremaner --1oncy m
view of Himori et al. (hereinafter "Himori JP '04 2 ")4 and Yamasaki et al.
(hereinafter "Y amasaki")5 (Examiner's Answer delivered electronically on
July 16, 2014, hereinafter "Ans.," 2-17; Final Act. 2-12).
DISCUSSION
I. Grouping of Claims
The Appellants argue the claims together (Appeal Br. 8-27).
Therefore, we confine our discussion to claim 11, which we select as
representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). By rule, claims 13-
18, 21, and 23-29 stand or fall with claim 11.
II. The Examiner's Findings, Analysis, and Conclusions
The Examiner found that Torii describes water-absorbent resin
particles having spherical or substantially spherical shapes, wherein the resin
particles are obtained by polymerizing at least an acrylic monomer bearing
an acid group (i.e., an ethylenically unsaturated monomer bearing an acid
group) and an internal crosslinker in the presence of an initiator and water
(Ans. 2) (citing Torii iii! 29, 31, 35, 36, 118). The Examiner further found
that the mass average resin particle diameter range of 100-600 µm disclosed
3 US 2005/0288182 Al published December 29, 2005.
4 JP P2005-226042A published August 25, 2005, which the Examiner refers
to as "Himori" and the Appellants refer to as "JP '042" (see, e.g., Ans. 4 and
Appeal Br. 12). Our citations of this reference are to the machine-generated
translation found in the record. The Appellants also cite to US
2006/0252899 Al published November 9, 2006 (hereinafter "US '899"),
which is said to be the corresponding United States application based on
Himori JP '042 (Appeal Br. 12).
5 US 4,446,261 issued May 1, 1984.
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Application 12/306,790
in Torii overlaps the Appellants' polymer bead mean diameter range "of at
least 150 µm" recited in claim 11 (Ans. 3) (citing Torii iJ 49). In addition,
the Examiner found that Torii describes a saline flow conductivity (SFC),
which the current Specification describes as indicative of permeability, of at
least 5 x 10-7 cm3 s/g (Ans. 3) (citing Torii iJ 53). Furthermore, the
Examiner found that Torii's resin particles would be free or essentially free
of hydrophobic solvents because Torii discloses only hydrophilic solvents
(Ans. 3) (citing Torii iJ 42--43).
The Examiner identified the differences between T orii' s disclosure
and the subject matter of claim 1 as follows: "Torii fails to disclose
explicitly water-absorbing polymer beads comprising solubilized polyvalent
metal cations distributed throughout the water-absorbing polymer beads, and
wherein said water-absorbing polymer beads have a mean sphericity of at
least 0.84" (Ans. 3). Regarding the sphericity, the Examiner found that
Himori JP '042 teaches that spherical water-absorbing resins avoid the
disadvantages of conventionally-ground water absorbing resins, which
impart skin irritability and result in inefficient packing (Ans. 4) (citing
Himori JP '042 iii! 1-3, 14, 40-41). The Examiner further found that
Yamasaki teaches that polyvalent metal salts of (meth)acrylic acid (i.e.,
solubilized polyvalent cations), when used in an amount from about 0.01 to
about 5% by weight, are suitable internal crosslinking agents for highly
absorbent bead-like polymers based on acrylic acid monomer (Ans. 3--4)
(citing Yamasaki col. 1, 11. 9-12; col. 2, 11. 20-22, 35-38, 44--45, 56-61).
The Examiner concluded from these findings that
it would have been obvious to one of ordinary skill in the art ... to
modify the water-absorbing polymer beads of Torii by optimizing the
sphericity of said beads as disclosed by Himori and by using the
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Application 12/306,790
polyvalent metal salts of acrylic acid and methacrylic acid of
Yamasaki as the internal crosslinking monomers
(Ans. 5). According to the Examiner (id.), "[t]he motivation for [optimizing
sphericity] would have been that optimized sphericity optimizes the skin-feel
and packing efficiency of the beads." Although the Examiner acknowledged
that Torii does not describe "polymerizing ... in a gas phase surrounding the
[monomer solution] droplets," recited in claim 11, the Examiner explained
that the patentability of a product claim depends on the product itself-not
by its method of production, citing In re Thorpe, 777 F.2d 695, 698 (Fed.
Cir. 1985), and that the burden of production properly shifted to the
Appellants to present evidence to support a conclusion that the recited
process limitations result in a product that is patentably different from the
prior art product (id.), citing In re Marosi, 710 F.2d 798, 802 (Fed. Cir.
1983). With respect to the selection of polyvalent metals salts of
(meth)acrylic acid as the internal crosslinking agent, the Examiner reasoned
that "the selection of a known material, which is based upon its suitability
for the intended use, is within the ambit of one of ordinary skill in the art"
(id. at 6).
III. The Appellants' Principle Contentions
The Appellants raise a number of arguments to support the contention
that the Examiner failed to articulate a sufficient reason that would have led
a person of ordinary skill in the art to combine the references in the manner
claimed. These arguments are summarized below.
A. Sphericity
Claim 11 requires the polymer beads to have "a mean sphericity of at
least 0.84" (Claims App.). The Specification defines "sphericity" (SPHT) as
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Application 12/306,790
SP HT = 47rAIU2
where A is the cross-sectional area and U is the cross-sectional
circumference, and "[t]he mean sphericity is the volume-average sphericity"
(Spec. 11, 11. 4-9).
The Appellants contend that Torii "teaches a preference for an
aqueous bulk polymerization, and only provides examples wherein a gel
polymerization is used .... wherein the polymer gel resulting from the
polymerization [is] 'pulverized' and 'fragmented"' (Appeal Br. 10) (citing
Torii ,-i,-i 34, 196). The Appellants argue that, because these polymers are
pulverized and fragmented, they are "non-spherical particles" (id. at 11 ).
According to the Appellants, polymer particles obtained by a standard bulk
polymerization method as described in Torii have "non-spherical" shapes
and become more spherical in shape only when water is added to swell the
particles (id.) (relying on Exhibit C, Evidence Appendix). The Appellants
urge that by indicating a preference for irregularly-shaped particles, Torii
"not only discourages and leads persons skilled in the art away from the
presently-claimed spherical polymer beads, but also provides no apparent
reason for a person skilled in the art to use spherical particles" (id.).
According to the Appellants, "the mean sphericity of polymer beads
prepared by customary solution polymerization [as disclosed in Torii] is
about 0.72 to about 0.78" (Appeal Br. 16) (citing Spec. 11, 32-35), which is
less spherical than the "mean sphericity of at least 0.84" specified for the
claimed polymer beads, as depicted in the microscopic photograph as
Exhibit G (Evid. App. at A-13).
The Appellants urge that although Himori JP '042 discloses
"approximately spherical" particles, the reference "fails to teach or suggest
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the very high sphericity, as claimed" and instead teaches other forms
indicative of other shapes (id. at 12) (citing Himori 'JP 042 iii! 32, 40). As
support, the Appellants rely on Figures 13-15 of US '899 (Evid. App. at A-
8-A-10), which is said to be an equivalent ofHimori JP '042, to show that
the prior art particles "are far from spherical" (Appeal Br. 12).
B. Polyvalent Cations Distributed Throughout Polymer Beads
The Appellants argue also that T orii "fails to teach or suggest adding
the multivalent metal salt to a monomer solution such that the multivalent
salt is present throughout the polymer particles" (Appeal Br. 11) (citing
Torii iii! 77, 94-140). According to the Appellants, Torii merely discloses
applying a water-soluble multivalent metal salt to the surfaces of the
polymer particles (id.).
Regarding Yamasaki, which the Examiner relied on for the polyvalent
metal cation limitations, the Appellants argue that the reference discloses
only a reverse phase polymerization process, which produces spherical
polymer beads that necessarily contain a residual amount of hydrophobic
solvent (Appeal Br. 13, 14) (relying on Declaration of Thomas Pfeiffer,
Evid. App. at A-14-A-16). According to the Appellants, the presence of
such residual hydrophobic solvents presents toxicity issues, requiring
expensive monitoring and removal equipment (id.). Additionally, the
Appellants contend that Yamasaki "provides no direction to select a
'polyvalent metal salt of (meth)acrylic acid' as a crosslinker from the
disclosed litany of crosslinking agents" (id.) (citing Yamasaki col. 2, 11. 35-
61 ). Furthermore, the Appellants question: "[W]here is the incentive for a
person skilled in the art to add 500 to 2500 ppm of a polyvalent metal cation
to a monomer solution (as claimed) when [Himori] JP '042 explicitly teaches
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that amounts greater than 100 ppm provide no beneficial effects[?]" (Appeal
Br. 20).
C. Unexpected Results
The Appellants argue that "the examples in the [S]pecification
illustrate the unexpected and unpredicted effects of the amount of polyvalent
cations on the claimed spherical polymer beads" (Appeal Br. 14).
Specifically, the Appellants urge that "[t]he Table at page 20 of the
[S]pecification shows that when a polyvalent cation is absent, the SFC
(saline flow conductivity) is unacceptably low" but "when a claimed amount
of [the] polyvalent cation is present throughout the polymer bead, the SFC
values are unexpectedly and drastically increased" while "CRC value
(centrifuge retention capacity which measures liquid absorption and
retention) remains relatively constant" (id. at 14-15).
IV. Opinion
Because the Appellants' arguments and relied-upon evidence fail to
identify a reversible error in the Examiner's rejection, we adopt the
Examiner's factual findings, analyses, legal conclusions, and rebuttal to the
Appellants' arguments as our own. We add the following for emphasis.
The Appellants are correct that Torii teaches that "irregularly-
pulverized particle[ s] obtained by pulverizing the polymer" are preferred
(see ,-i 36). But it is well-settled that a prior art reference is not limited to its
preferred embodiments. Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) ("[I]n a section 103 inquiry, 'the fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered."') (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
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As cogently pointed out by the Examiner (Ans. 8), Torii also
describes "a sphere shape" as well as "a substantially sphere shape" for the
polymer beads and, therefore, a person of ordinary skill in the art would
have drawn a reasonable inference that Torii's disclosure of "a sphere
shape" refers to spherical or nearly spherical shapes (iJ 36). Moreover,
Himori JP '042, which discloses gas phase polymerization of aqueous
monomer solutions to produce water-absorbent polymer beads, teaches that
approximately spherical beads (e.g., "the form of a real ball and an ellipse")6
are superior in terms of avoiding skin irritability and efficiency in packing
(iJiJ 19, 40-41 ). Thus, we share the Examiner's conclusion that the
collective teachings of Torii and Himori JP '042 would have prompted a
person of ordinary skill in the art to make spherical polymer beads, as
explicitly taught by Torii, in order to realize the benefits disclosed in Himori
JP '042 in terms of reduced skin irritability and efficient packing.
We find no persuasive merit in the Appellants' reliance on Figures
13-15 of US '899 as demonstrating that Himori JP '042 particles are not
spherical. The Appellants do not direct us to evidence that the particles
depicted in US '899's Figures 13-15 would not possess "a mean sphericity
of at least 0. 84" as recited in claim 11. Moreover, these Figures merely
depict examples and are not representative of the entire scope of Himori JP
'042's or US '899's disclosure, which plainly includes a teaching directed to
nearly spherical or spherical particles (Himori JP '042 iJ 40; US '899
iJ 159). As we stated above, a reference is not limited to its preferred
embodiments and therefore must be considered for all that it would have
6 The corresponding United States application, US '899, states that the
particles have a "true-spherical or oval shape as a whole" (iJ 159).
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taught or suggested to one of ordinary skill in the art. Jilferck, 874 F.2d at
807.
The Appellants' arguments based on the polyvalent cation limitations
are also unpersuasive. Here, the Appellants do not dispute the Examiner's
finding that the "solubilized polyvalent cations" recited in claim 11 can be
provided in the form of polyvalent metal salts of (meth)acrylic acid internal
crosslinking agents in the monomer solution, as disclosed in Yamasaki (col.
2, 11. 32-61) (Appeal Br. 13-14). Rather, the Appellants argue that
Yamasaki teaches a "litany of crosslinking agents" (Appeal Br. 13). But the
fact that a reference discloses a multitude of options does not necessarily
compel a conclusion of nonobviousness. Merck, 87 4 F .2d at 807 ("That the
[reference] discloses a multitude of effective combinations does not render
any particular formulation less obvious.").
Although Yamasaki teaches polymerization of an aqueous monomer
solution in a hydrocarbon, a person of ordinary skill in the art would have
reasonably expected that the polyvalent metal salt of (meth)acrylic acid
disclosed as an internal crosslinking agent in Yamasaki would also work as
an internal crosslinking agent in Torii's polymerization process. The
Appellants offer no technical explanation or evidence indicating that
Yamasaki' s polyvalent metal salt of (meth)acrylic acid internal crosslinking
agent would not be suitable in Torii's polymerization process.
Finally, we are in complete agreement with the Examiner's
assessment that the proffered unexpected results evidence (Spec. 20, Table
1) is insufficient. As pointed out by the Examiner (Ans. 14), Torii discloses
SFC and CRC values within the ranges recited in claim 11 (Torii ,-i,-i 51, 53).
The Appellants do not direct us to a comparison of the claimed product
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against the closest prior art, which is Torii. Ivforeover, the Appellants'
relied-upon evidence is limited in scope in terms of the polyvalent metal
cation (aluminum sulfate) and is therefore insufficient to support the broad
scope of claim 11.
SUMMARY
For these reasons, we uphold the Examiner's decision to reject claims
11, 13-18, 21, and 23-29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ).
AFFIRMED
11