Yoshihisa Ota et al.

Patent Trials and Appeals Board

Jan 30, 2020

14369113 - (D) (P.T.A.B. Jan. 30, 2020)

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.
14/369,113 06/26/2014 Yoshihisa Ota P24583US00 6278
38834 7590 01/30/2020
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 LEESBURG PIKE
SUITE 7500
TYSONS, VA 22182
EXAMINER
KIDWELL, MICHELE M
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
01/30/2020 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSHIHISA OTA, MOTOKO NISHIDA, and
MASATOSHI IKEUCHI
____________

Appeal 2019-0023171
Application 14/369,113
Technology Center 3700
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 5–13, and 15–17, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief
(“Appeal Br.,” filed June 21, 2018) and Reply Brief (“Reply Br.,” filed
January 28, 2019), and the Examiner’s Answer (“Ans.,” mailed December 3,
2018) and Final Office Action (“Final Act.,” mailed December 22, 2017).
2 Appellant identifies “LIVEDO CORPORATION” as the real party in
interest. Appeal Br. 2.
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Application 14/369,113

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We AFFIRM.
CLAIMED INVENTION
Appellant’s claimed invention “relates to technology for improving
the absorbing performance of an absorbent article such as a disposable
diaper and a sanitary napkin.” Spec. ¶ 1.
Claims 1 and 7 are the independent claims on appeal.3 Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A water-absorbent resin powder meeting the following
requirements (a) to (e):
(a) a bulk density: 0.45 g/ml to 0.62 g/ml;
(b) an absorption speed by a vortex method: 20 seconds to 50
seconds;
(c) a liquid-passing speed under load: 10 seconds or less;
(d) a moisture absorption blocking ratio: 5% or less; and
(e) a water-retaining capacity: 20 g/g to 45 g/g,
wherein the water-absorbent resin powder is obtained by
treating, with a surface modifier (B), a crosslinked polymer (A)
obtained by polymerizing a monomer composition containing: a
water-soluble ethylenically unsaturated monomer (a1) and/or a
hydrolyzable monomer (a2) producing the water-soluble
ethylenically unsaturated monomer (a1) by hydrolysis; and an
internal crosslinking agent (b), and
wherein the surface modifier (B) includes at least one
member selected from the group consisting of a carboxy-
modified polysiloxane having a carboxy equivalent of from 200
g/mol to 11,000 g/mol, an epoxy-modified polysiloxane having
an epoxy equivalent of from 200 g/mol to 11,000 g/mol, and an
amino-modified polysiloxane having an amino equivalent of
from 200 g/mol to 11,000 g/mol.

3 Claim 7 refers to the water-absorbent resin powder of claim 1 as shorthand.
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Application 14/369,113

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REJECTION
Claims 1, 2, 5–13, and 15–17 are rejected under 35 U.S.C. § 103 as
unpatentable over Ishizaki (WO 2005/092955 A1, pub. Oct. 6, 2005) and
Fujimura (US 2011/0301560 A1, pub. Dec. 8, 2011).

ANALYSIS
Appellant argues claims 1, 2, 5–13, and 15–17 as a group (see Appeal
Br. 5–6; Reply Br. 2–6). We select independent claim 1 as representative.
Claims 2, 5–13, and 15–17 stand or fall with independent claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Ishizaki and Fujimura fails to disclose or suggest the subject
matter of claim 1 (see Appeal Br. 18–23; Reply Br. 5–7).
Instead, we agree with, and adopt, the Examiner’s findings and
rationales as our own (see Final Act. 3–6; Ans. 7–9). We add the following
discussion for emphasis.
In rejecting claim 1, the Examiner finds that Ishizaki discloses all of
the claim limitations except that “the water-retaining capacity is 20g/g to
45 g/g and that the surface modifier is selected from the listed group” (Final
Act. 4). The Examiner finds that Fujimura discloses a surface modifier as
claimed and the Examiner determines that:
It would have been obvious to one of ordinary skill in the art to
substitute the surface modifier as taught by Ishizaki with the
specific surface modifier(s) as taught by Fujimura in order to
provide the article with an even absorption ratio and excellent
absorption performance thereby reducing skin irritation as
taught by Fujimura in at least [paragraphs 21 and 22].
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Final Act. 6.
Appellant argues that Fujimura’s hydrophobic substance (C) is not a
surface modifier (Appeal Br. 5). Instead, Appellant contends that Fujimura
discloses inorganic powder (D) as a surface modifier (id. at 6). Thus,
Appellant contends that one of ordinary skill in the art would have
substituted Fujimura’s inorganic powder for Ishizaki’s surface modifier, and
would have had no motivation to use Fujimura’s hydrophobic substance as a
surface modifier as proposed by the Examiner (id.).
Responding to Appellant’s argument in the Answer, the Examiner
points out that paragraph 105 of Fujimura “specifically states that the
content of the hydrophobic substance (C) is present on the surface of the
absorbent resin particle” (Ans. 9).
In paragraph 105, Fujimura discloses:
From the viewpoints of skin irritation resistance of an absorbent
article and leakage resistance of an absorbent article, the
content of the hydrophobic substance (C) present on the surface
of the absorbent resin particle is usually 0.001 to 1.0% by
weight, preferably 0.005 to 0.5% by weight, more preferably
0.01 to 0.3% by weight, and particularly preferably 0.01 to
0.1% by weight based on the weight of the crosslinked polymer
(A1).

Appellant does not address this disclosure in the Reply Brief.
In view of Fujimura’s teaching that the hydrophobic substance (C) is
present on the surface of the absorbent resin particle, we are not persuaded
of error in the Examiner’s finding that Fujimura discloses a surface modifier
as claimed.
We also are not persuaded of error by Appellant’s argument that the
Examiner’s proposed combination of Ishizaki and Fujimura is improper
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because it is based on the impermissible use of hindsight (Appeal Br. 6). In
this regard, we note the Examiner provides articulated reasoning with some
rational underpinning to support the obviousness determination (see Final
Act. 6 (citing paragraphs 21 and 22 of Fujimura)). See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)).
For the first time in the Reply Brief, Appellant argues that “one of
ordinary skill in the art would not apply the hydrophobic substance of
Fujimura to the water absorbing agent of Ishizaki” because doing so would
reduce the absorption speed of the material, which would cause discomfort
to the user (Reply Br. 2–6). Appellant reproduces Figure 1 of Fujimura and
states that “Example 1 of Fujimura has an absorption speed (Vortex method)
of 110 seconds” (id. at 5). According to Appellant:
It would be understood by those skilled in the art that the
absorption speed of absorbent resin particle is actually reduced
by the presence of the hydrophobic substance in the inside of
the particle and on the surface thereof.
Therefore, if the water absorbing agent of Ishizaki
included the hydrophobic substance of Fujimura, the absorption
speed (Vortex method) of the water absorbing agent would be
greater than 60 seconds.

(Id. at 5–6). For the same reasons, Appellant argues that the combination of
Ishizaki and Fujimura fails to disclose “(b) an absorption speed by a vortex
method: 20 seconds to 50 seconds,” as called for in claim 1 (id. at 6).
Initially, we note that the arguments presented by Appellant in the
Reply Brief are untimely because they were not presented in the Appeal
Brief, and Appellant has not attempted to show good cause for presenting
them for the first time in the Reply Brief. See 37 C.F.R. § 41.41(b)(2).
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Although we note that the Examiner did not have an opportunity to respond
to those arguments in the Examiner’s Answer, we will nevertheless address
them here.
Appellant’s arguments are not persuasive of Examiner error at least
because the Appellant’s conclusion that the Examiner’s proposed
combination would result in a material having an absorption speed greater
than 60 seconds is not adequately supported by record evidence. Appellant
does not dispute the Examiner’s finding that Ishizaki discloses, on page 43,
an absorbing agent having an absorption speed within the claimed range, i.e.,
“20 seconds to 50 seconds” (see Final Act. 3). Nor can Appellant
reasonably dispute this finding.4 Rather, Appellant contends that the
Examiner’s proposed modification of Ishizaki would result in an absorbing
agent having an absorption speed “greater than 60 seconds” (Reply Br. 6).
But even if Appellant is correct that using the hydrophobic substance of
Fujimura as a surface modifier would reduce the absorption speed of
Ishizaki’s absorbing agent by some amount, Appellant offers no evidence to
quantify its conclusion that the proposed modification would result in an
absorbing agent having an absorption speed “greater than 60 seconds.”
Mere conclusory statements that are unsupported by factual evidence are
entitled to little probative weight. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
On this point, we do not see how Appellant’s discussion (Reply Br. 4–6) of

4 See, e.g., Ishizaki, 43:20–23 (“Absorption speed of a water absorbing agent
of the present invention is shorter than 60 seconds, preferably 1 to 55
seconds, more preferably 2 to 50 seconds and most preferably 2 to 30
seconds.”)
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Fujimura’s Example 1 is germane to the rejection. The Examiner does not
propose to replace Ishizaki’s absorbing agent with the absorbent resin
particles of Comparative Example 1 of Fujimura. Rather, as noted above,
the Examiner proposes “to substitute the surface modifier as taught by
Ishizaki with the specific surface modifier(s) as taught by Fujimura” (Final
Act. 6). We further note that Fujimura discloses, in paragraph 105
(reproduced above) that “the content of the hydrophobic substance (C)
present on the surface of the absorbent resin particle is usually 0.001 to 1.0%
by weight.” Appellant has not shown that using such a small percentage by
weight of a hydrophobic substance as a surface modifier would result in any
particular quantified reduction in absorption speed, much less an absorption
speed greater than 60 seconds in particular. As such, Appellant’s argument
that the absorption speed of the Examiner’s proposed modification of
Ishizaki’s absorption agent “would be greater than 60 seconds” amounts to
attorney argument unsupported by record evidence.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also sustain the Examiner’s rejection
of claims 2, 5–13, and 15–17, which fall with claim 1.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5–13,
15–17
103(a) Ishizaki, Fujimura 1, 2, 5–13,
15–17

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Application 14/369,113

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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)(1)(iv).

AFFIRMED