Ex Parte Muthiah et al

Patent Trial and Appeal BoardAug 5, 2014

11605167 (P.T.A.B. Aug. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JENO MUTHIAH, GERALD K. WHITE, and DUANE R. RUBASH ____________ Appeal 2012-011343 Application 11/605,167 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, RICHARD M. LEBOVITZ, and N. WHITNEY WILSON, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims to a product for absorbing liquids. The product comprises a container partially filled with particles of superabsorbent polymeric powder. The Examiner has rejected the claims as anticipated under 35 U.S.C. § 102(b) and obvious under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 134. The Examiner’s rejections are reversed. Appeal 2012-011343 Application 11/605,167 2 I. STATEMENT OF CASE The claimed product is described in the Specification of the above- identified application as useful for “diapers, training pants, feminine care products, and the like or as a water collection, storage, and dispensing element for applications such as irrigation, erosion control, or plant watering and plant root growth control.” Spec. 1:6-9. Claims 15-23, 25, 26, and 28- 31 were finally rejected in the Office Action of December 1, 2011 and are the subject of this appeal. Appeal Br. 3 (dated April 15, 2012.) The Examiner rejected the claims as follows: 1. Claims 15-23, 25, 26, and 28-31 under 35 U.S.C. § 102(b) as anticipated by Cole.1 2. Claim 29 under 35 U.S.C. § 103(a) as obvious in view of Cole and Anderson.2 There are two independent claims, claims 30 and 31. Claim 31 differs from claim 30 only in reciting “said container comprising a first sheet joined with a second sheet” instead of “said container comprising a first film joined with a second film” as in claim 30. Appeal Br. 5. Claim 31 is objected to by the Examiner as a duplicate of claim 30. Answer 4. However, the Board only has jurisdiction to decide claim rejections, and therefore the objection to the claim shall not be considered in this decision. 35 U.S.C. § 134; 35 C.F.R. §§ 41.31(a)(1) and 41.39(a)(1). Claim 30 reads as follows (emphasis added): A product for absorbing liquids comprising a container partially filled with particles of superabsorbent polymeric powder to create free volume in said container for said particles 1 Cole, US 2004/0087923 A1, published May 6, 2004. 2 Anderson et al., US 2004/0142113 A1, published July 22, 2004. Appeal 2012-011343 Application 11/605,167 3 to expand into when in contact with a liquid, said container comprising a first film joined with a second film, said first film having an adhesive coated first side surface located on an inside surface of said container and an opposed second side surface located on an outside surface of said container and said second film having a first side surface located on an inside surface of said container and an opposed second side surface located on an outside surface of said container, said first film being sufficiently brittle for said particles of superabsorbent polymeric powder to penetrate and break through said first film, said first film having particles of superabsorbent polymeric powder of sufficiently large size to penetrate and break through said first and second side surfaces of said first film, said particles adhered to and extending through said first and second side surfaces of said first film through an opening created by penetration and breaking through said first film by said particles thereby creating further free volume for said particles to expand into when in contact with a liquid, said broken through particles spaced apart from each other to minimize touching of said broken through particles thereby enhancing liquid absorption rate and creating further free volume for said broken through particles to expand into when in contact with a liquid. III. ANTICIPATION REJECTION Claim 30 is directed to a “product for absorbing liquids comprising a container partially filled with particles of superabsorbent polymeric powder.” The container comprises “a first film joined to a second film.” The first film has “an adhesive coated first side surface located on an inside surface of said container.” The particles are adhered to the first side surface of the first film. The first film is “sufficiently brittle for said particles of superabsorbent polymeric powder to penetrate and break through said first film,” where the particles are “of sufficiently large size to penetrate and break through said first and second side surfaces of said first film.” The Appeal 2012-011343 Application 11/605,167 4 particles are “adhered to and extending through said first and second side surfaces of said first film through an opening created by penetration and breaking through said first film.” The Examiner found that Cole describes a core for an absorbent article with a porous substrate coated with an adhesive and superabsorbent particles (SAP) adhered to the substrate by the adhesive. Answer 5. The Examiner determined that Cole’s porous substrate with the adhered particles meets the claimed limitation of a “first film.” Id. The Examiner found that the SAP of Cole is “pressed” into the porous substrate. Answer 5. The Examiner found that the porous substrate, as recited in claim 30, is “sufficiently brittle and of a sufficient thickness to permit said particles to penetrate and break through said first sheet and create an opening in said first sheet upon application of pressure to said first sheet and said particles,” when the particles are pressed into the porous substrate (the “first film” of claim 30). Id. Appellants challenge the Examiner’s finding that Cole’s porous substrate is “sufficiently brittle for said particles of superabsorbent polymeric powder to penetrate and break through said first film” as recited in claim 30. Appeal Br. 13–14. Appellants contend that insufficient evidence has been provided by the Examiner that the particles in Cole “penetrate and break through said first and second side surfaces of” the brittle first film as required by the claim. Id. at 15. The Examiner’s reasoning is based on paragraphs 31 and 40 of Cole. Paragraph 30 has the following disclosure relied upon by the Examiner for the disputed “brittle” and “break through” limitations: Appeal 2012-011343 Application 11/605,167 5 The method includes adhering SAP [“superabsorbent polymeric powder” of claim 30] 14 to a porous substrate 18. At least a portion of the SAP 14 is pressed into the porous substrate 18 [“first film” of claim 30], thereby forming a core 11. The Examiner also relied on the following disclosure in Paragraph 40: A preferred form of SAP 14 is a granular or powdered material having a distribution of particle sizes ranging from about 45 μm to about 850 μm, preferably between about 106 μm and about 850 μm. The presence of some proportion of particles of small size may encourage effective penetration of such particles into the core 11. Based on this disclosure, the Examiner found Cole “clearly teaches that the core layer must be of sufficient brittleness to permit penetration and breaking of the core layer, otherwise the SAP particles would not be able to be pressed into the core layer as disclosed by Cole.” Answer 11. The Examiner’s finding is not supported by a preponderance of the evidence. The disclosure that SAP particles are “pressed” into the porous substrate (“first film” of claim 30) and penetrate into the “core” do not support a finding that the porous substrate is sufficiently brittle such that the particles “penetrate and break through said first and second side surfaces of said first film” as recited in claim 30. Figure 2, reproduced below, shows the core described by Cole, sandwiched between covers 12 and 20 (the labels are not part of the original figure, but have been added herein for clarity): Appeal 2012-011343 Application 11/605,167 6 Figure 2 shows the core 11 (not numbered) between covers 12 and 20. Cole ¶¶ 18, 31. The porous substrate is labeled 18, the adhesive is 16, and the SAP particles are 14. Cole discloses that the particles are pressed into the porous substrate 18 and that the particles penetrate into the core (id. at ¶¶ 14, 31, 40), but this disclosure does not necessarily mean the substrate 18 is brittle and that the particles penetrate both sides of the film as required by the limitations of claim 30. Rather, Cole discloses that the pressing “works the particles into the layer 18 and presses them into firmer contact with the fibers of layer 18.” Id. at ¶ 57. None of these disclosures in Cole require necessarily that the porous substrate is brittle or that the particles penetrate both sides of the porous substrate. Since the Examiner’s finding is not supported by sufficient factual evidence, the rejection of claim 30 is reversed. Dependent claims 15-23, 25, 26, 28, and 29 depend from claim 30, and incorporate all its limitations. The rejection of claims 15-23, 25, 26, 28, and 29 is therefore also reversed. Appeal 2012-011343 Application 11/605,167 7 Independent claim 31 contains the same disputed limitations found not to be disclosed by Cole. The rejection of claim 31 is also reversed. IV. OBVIOUSNESS REJECTION Claim 29, depends from claim 28, and further recites that the “first film is a member selected from the group consisting of polyvinyl chloride, copolymers of polyvinyl chloride and vinyl acetate, and ethylene vinyl acetate.” The Examiner found “Anderson discloses a superabsorbent polymer solution typically possesses sufficient wet adhesion to adhere to the intended substrate [0022]. The water based adhesive includes ethylene vinyl acetate [0022].” Answer 8 (brackets in the original). The Examiner determined it would have been obvious “to substitute the water based adhesive material of Anderson in the adhesive material of Cole, because the water based adhesive material of Anderson provides an increase to the adhesive and cohesive strength of the absorbent polymer solution.” Id. Claim 29 depends indirectly on claim 30. The Examiner did not provide evidence or scientific reasoning that, when such materials were used in Cole’s porous substrate, the porous substrate would have been “sufficiently brittle for said particles of superabsorbent polymeric powder to penetrate and break through said first film” where the particles are ”of sufficiently large size to penetrate and break through said first and second side surfaces of said first film.” The rejection of claim 29 is therefore reversed. REVERSED cdc