Ex Parte Sun et al

Board of Patent Appeals and Interferences

Apr 26, 2010

10279769 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TONG SUN, JACEK DUTKIEWICZ, JIAN QIN,
XIAOMIN ZHANG, WERNER LONSKY, and YONG LI
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Appeal 2009-005750
Application 10/279,769
Technology Center 3700
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Decided: April 26, 2010
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Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005750
Application 10/279,769

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STATEMENT OF THE CASE
Tong Sun et al. (Appellants) appeal under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 1-9, 11, 12, and 14-23 under
35 U.S.C. § 102(b) as being anticipated by Qin (WO 98/24832, published
Jun. 11, 1998); claim 10 under 35 U.S.C. § 103(a) as being unpatentable
over Qin; and claim 13 under 35 U.S.C. § 103(a) as being unpatentable over
Qin and Palumbo (WO 96/17681, published Jun. 13, 1996). We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellants’ claimed invention is directed to “an absorbent structure
that forms a superabsorbent composition in situ.” Spec. 1:10-11.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An absorbent structure comprising:
a water-swellable, water-insoluble polymer; and
a fibrous material comprising individual fibers that have
an activating agent contained inside the supermolecular
structure of the individual fibers or attached to the surface of
the individual fibers by ionic or water-hydrolyzable covalent
bonds;
wherein the fibers release the activating agent upon
stimulation by an activator and the activating agent, upon
release from the fibers, causes an increase in the capacity of the
water-swellable, water-insoluble polymer to absorb water.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

Appeal 2009-005750
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OPINION
Claims 1-19 and 21-23
Independent claims 1 and 2 require that the activating agent be
“contained inside the supermolecular structure of the individual fibers” of
the fibrous material or attached to the surface of the individual fibers by
“ionic or water-hydrolyzable covalent bonds.” Claim 21 requires that the
activating agent be “contained inside the supermolecular structure of the
individual fibers” of the fibrous material. Claim 22 requires that the
activating agent be attached to the surface of the individual fibers by “ionic
bonds.” Claim 23 requires that the activating agent be attached to the
surface of the individual fibers by “water-hyrolyzable covalent bonds.”
Each of the Examiner’s rejections is grounded in part on the
Examiner’s finding that Qin satisfies each of these limitations. See Ans. 8-9.
The Examiner has not relied on Palumbo for any teaching directed to these
limitations, or articulated any reason as to why it would have been obvious
to a person of ordinary skill in the art to modify Qin’s absorbent product to
incorporate the activating agent inside the supermolecular structure or to
attach the activating agent to the surface of the individual fibers by either
ionic or water-hydrolyzable bonds. Appellants argue that Qin describes a
simple physical entrapment of the absorbent composition within or onto the
fibrous matrix, and does not teach or suggest that the activating agent be
contained within the supermolecular structure of the individual fibers or
chemically bonded, by ionic or water-hydrolyzable covalent bonds, to the
individual fibers. App. Br. 4. Accordingly, the issue presented in this
appeal is whether Qin describes an activating agent contained inside the
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supermolecular structure of the individual fibers or attached to the individual
fibers by ionic or water-hydrolyzable covalent bonds.
We find that Qin describes preparing an absorbent composition by
mixing together an acidic or basic water-swellable, water insoluble polymer,
substantially in its free acid or free base form, with a basic second material
or an acidic second material. Qin, p. 16. The materials disclosed by Qin for
the polymer material and for the second material are the same materials
disclosed by Appellants for the polymer material and the activating agent.
Qin, pp., 8, 9-10, and 12-13; Spec. 11:28 to 12:7 and 13:19-29. Qin
discloses that exemplary forms of the second material include particles,
flakes, fibers, films, and nonwoven structures. Qin, p. 13. Further, Qin
teaches that when the absorbent composition is used in absorbent disposable
products, the desired form of the second material is discrete particles, fibers,
or flakes. Id.
We further find that Qin discloses use of the absorbent composition in
conjunction with a fibrous matrix. Qin, p. 17. According to Qin, “the
fibrous matrix is formed so as to constrain or entrap the absorbent
composition within, or onto, its structure. The absorbent composition may
be incorporated into or onto the fibrous matrix either during or after the
formation of the general form of the fibrous matrix.” Id.
We find that Qin’s description of using an absorbent composition in
the form of flakes, particles, and fibers and constraining or entrapping the
absorbent composition within, or onto, the structure of the fibrous matrix
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suggests a physical entrapment onto or between fibers of the matrix, not an
entrapment inside the supermolecular structure1 of the fiber itself.
The Examiner finds that because Qin discloses the same absorbent
material and the same activating agent as described in Appellants’
Specification, Qin’s absorbent structure “is inherently capable of forming
the claimed covalent or ionic bonds by the sharing or donating of electrons
(Qin page 9, lines 1-2).” Ans. 8-9. This finding is insufficient to establish
that Qin describes, either explicitly or inherently, an activating agent
attached, by ionic or water-hydrolyzable covalent bonds, to the individual
fibers, as called for in several of Appellants’ claims. First, Qin’s description
of the capability of the basic material to act as an electron donor relates to
the interaction between the acidic or basic polymer first material and the
basic or acidic second material (Qin, pp. 7-9 and 11), not between the
second material (the activating agent) and the fibers of the fibrous matrix.
Further, the commonality between the acidic or basic polymer material and
the basic or acidic second material (activating agent) of Qin and those of
Appellants is insufficient, without taking into account the form of the
polymer and activating agent materials and the process used to incorporate
the absorbent composition into or onto the fibrous matrix, to establish a

1See, e.g., Nicholas J. Turro, Supramolecular structure and dynamics, Proc.
Nat’l Acad. Sci., USA (2005),
http://www.pnas.org/content/102/31/10765.full (last visited Apr. 21, 2010),
describing “supramolecular” or “supermolecular” structure by defining the
term “supermolecule” as “an assembly of molecules that is held together by
relatively weak intramolecular bonds.” See also McGraw-Hill Dictionary of
Scientific and Technical Terms (5th ed. 1994), defining “supermolecule” as
“A single quantum-mechanical entity presumably formed by two reacting
molecules and in existence only during the collision process.”
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reasonable basis to believe that Qin’s process will inherently2 result in the
second material (activating agent) of Qin’s absorbent composition being
attached to the surface of the individual fibers of the fibrous matrix by ionic
or water-hydrolyzable covalent bonds.
For the above reasons, the Examiner has not established, on the record
before us, that Qin describes, either explicitly or under principles of
inherency, an activating agent contained inside the supermolecular structure
of the individual fibers or attached to the individual fibers by ionic or water-
hydrolyzable covalent bonds. We therefore reverse the Examiner’s rejection
of claims 1-9, 11, 12, 14-19, and 21-23 as being anticipated by Qin. As
pointed out above, the Examiner has not relied on Palumbo for any teaching
directed to these limitations, or articulated any reason as to why it would
have been obvious to a person of ordinary skill in the art to modify Qin’s
absorbent product to incorporate the activating agent inside the
supermolecular structure or to attach the activating agent to the surface of
the individual fibers by either ionic or water-hydrolyzable bonds. Thus, we
also reverse the Examiner’s rejections of claim 10 as being unpatentable
over Qin and claim 13 as being unpatentable over Qin and Palumbo.

2 “Under the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates.” In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations
and internal quotation marks omitted). “Inherency, however, 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.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted).
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Claim 20
In contesting the rejection of claim 20 as being anticipated by Qin,
Appellants rely on the same argument, discussed above, that Qin does not
teach or suggest that the activating agent be contained within the
supermolecular structure of the individual fibers or chemically bonded, by
ionic or water-hydrolyzable covalent bonds, to the individual fibers. See
App. Br. 4-5. Appellants do not advance any additional arguments as to
why the subject matter of claim 20 is not anticipated by Qin. Claim 20,
however, unlike independent claims 1, 2, and 21-23, does not require that
the activating agent be contained inside the supermolecular structure of the
individual fibers or attached to the surface of the individual fibers by ionic or
water-hydrolyzable covalent bonds. Rather, claim 20 calls for a fibrous
material comprising fibers having an activating agent “contained thereon or
retained thereon.”3 Accordingly, Appellants’ arguments are not
commensurate with the scope of claim 20, and thus cannot be relied upon for
patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations
not appearing in the claims cannot be relied upon for patentability).
We sustain the Examiner’s rejection of claim 20 as being anticipated
by Qin.

DECISION
The Examiner’s decision is reversed as to claims 1-19 and 21-23, and
affirmed as to claim 20.

3 Qin’s description of forming the fibrous matrix “so as to constrain or
entrap the absorbent composition within, or onto, its structure” (Qin, p. 17),
appears to satisfy this limitation.
Appeal 2009-005750
Application 10/279,769

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED-IN-PART

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