Ex Parte Nagasuna et al

Patent Trial and Appeal BoardOct 31, 2012

10416457 (P.T.A.B. Oct. 31, 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. 10/416,457 05/12/2003 Kinya Nagasuna 45080 4298 7590 11/01/2012 Roylance Abrams Berdo & Goodman Suite 600 1300 19th Street NW Washington, DC 20036 EXAMINER HAND, MELANIE JO ART UNIT PAPER NUMBER 3778 MAIL DATE DELIVERY MODE 11/01/2012 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 PATENT TRIAL AND APPEAL BOARD __________ Ex parte KINYA NAGASUNA, KENJI KADONAGA, AKIKO MITSUHASHI, and MOTOHIRO IMURA __________ Appeal 2011-006290 Application 10/416,457 Technology Center 3700 __________ Before TONI R. SCHEINER, ERIC GRIMES, and JACQUELINE WRIGHT BONILLA, Administrative Patent Judges. BONILLA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims directed to a water-absorbent resin particle comprising a crosslinked poly(acrylic acid (salt)) polymer. The Examiner has rejected the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-006290 Application 10/416,457 2 STATEMENT OF THE CASE The Specification describes an absorbent article comprising a liquid- diffusing member and a water-absorbent resin (also called a liquid-storing member), where the water-absorbent resin absorbs liquid from the liquid- diffusing member (Spec. 6, l. 25 – 7, l. 3; 9, l. 24 – 10, l. 2). The Specification teaches measuring the capillary absorption ability of a sample by a process that involves arranging the sample “in a position higher than the liquid surface of a physiological saline in a liquid-storing receptacle by several tens centimeters,” and then “measuring capillary absorption ability of sucking up a liquid against a negative pressure as caused by water column at the height” (id. at 8, ll. 1-7). In certain embodiments, the water-absorbent resin displays a capillary absorption capacity D of not less than 15 (g/g) at a height of 40 cm (id. at 9, l. 27 – 10, l. 2). In certain embodiments, the water- absorbent resin includes a crosslinked poly(acrylic acid (salt)) polymer “in a major proportion” (id. at 10, ll. 9-16). Claims 59, 61, 62, 64, 65, 68, 70 and 73 are on appeal. Independent claim 59 is representative and reads as follows: 59. Water-absorbent resin particles, which comprise a crosslinked poly(acrylic acid (salt)) polymer in a major proportion and display a weight-average particle diameter of 150 to 600 µm, a capillary absorption capacity D of not less than 30 (g/g) at a height of 0 cm, and a capillary absorption capacity D of not less than 15 (g/g) at a height of 40 cm, and display a capillary absorption index B at a height of 40 cm of not less than 0.4, wherein the capillary absorption index B = the capillary absorption capacity D at a height of 40 cm/the capillary absorption capacity D of at a height of 0 cm wherein the capillary absorption capacity D at a height of 40 cm is an absorption capacity calculated from the absorption quantity (g) Appeal 2011-006290 Application 10/416,457 3 of 0.44 g of the water-absorbent resin in a state where the liquid- absorbing position (H1) is 40 cm higher than the liquid surface height (H2) in a liquid-storing receptacle, under a load of 0.06 psi for 30 minutes. The claims stand rejected under 35 U.S.C. § 102(b) as anticipated by Young et al. (U.S. Pat. No. 6,107,538, issued Aug. 22, 2000), or in the alternative, under 35 U.S.C. § 103(a) as obvious over Young (Ans. 4). Issue Does the Examiner establish by a preponderance of the evidence that independent claim 59 is anticipated by (either expressly or inherently), or in the alternative, obvious over, Young? Findings of Fact 1. The instant Specification describes an absorbent article comprising a liquid-diffusing member and a water-absorbent resin (Spec. 6, l. 25 – 7, l. 3). 2. Although the Specification indicates that “the weight ratio of the water-absorbent resin is in the range of 75 to 90 weight % relative to the total weight of the liquid-diffusing member and the water-absorbent resin” (Spec. 10, ll. 14-16; see also id. at 44, l. 21 – 45, l. 9) as discussed by the Examiner (Ans. 4), the Specification does not define the phrase “major proportion” in relation to a crosslinked poly(acrylic acid (salt)) polymer included in the water-absorbent resin itself or what the phrase means generally (id.; see also, e.g., id. at 16, ll. 16-19; 34, ll. 8-12). 3. The Specification discloses that: Examples of the water-absorbent resin usable in the present invention include water-swellable crosslinked polymers that can be obtained by polymerizing hydrophilic monomers. Of the above, Appeal 2011-006290 Application 10/416,457 4 crosslinked poly(acrylic acid (salt)) polymers of which the major component is derived from acrylic acid or its salt are favorable. Specific examples thereof include: partially-neutralized crosslinked poly(acrylic acid) polymers (e.g. U.S. Pat. No. 4,625,001, U.S. Pat. No. 4,654,039, U.S. Pat. No. 5,250,640, U.S. Pat. No. 5,275,773, and EP 456136); crosslinked partially-neutralized graft polymers of starch-acrylic acid (U.S. Pat. No. 4,076,663); copolymers of isobutylene-maleic acid (U.S. Pat. No. 4,389,513); saponified copolymers of vinyl acetate-acrylic acid (U.S. Pat. No. 4,124,748); hydrolyzed (co)polymers of acrylamide (U.S. Pat. No. 3,959,569); and hydrolyzed polymers of acrylonitrile (U.S. Pat. No. 3,935,099). As to the crosslinked poly(acrylic acid (salt)) polymers, the acid group in the polymers is favorably neutralized in a ratio of 50 to 90 mol %, and examples of the salt include alkaline metal salts, ammonium salts, and amine salts. (Id. at 35, ll. 1-13.) This paragraph in the Specification corresponds to paragraph [0135] in the published version of the pending application, U.S. Pat. Appl. Publ. No. 2004/0019342, cited by the Examiner (Ans. 5). 4. Young describes a storage absorbent member having a high capillary suction capacity, where the member comprises a hydrogel-forming absorbent polymer and “polymeric foam materials derived from high internal phase water-in-oil emulsions („HIPEs‟)” (Young, col. 1, l. 65 – col. 2, l. 3, ll. 51-55). 5. In relation to hydrogel-forming absorbent polymers, Young discloses that such polymers may include “slightly network crosslinked polymers of partially neutralized polyacrylic acids and starch derivatives thereof” and that “[m]ost preferably, the hydrogel-forming absorbent polymers comprise from about 50 to about 95%, preferably about 75%, neutralized, slightly Appeal 2011-006290 Application 10/416,457 5 network crosslinked, polyacrylic acid (i.e., poly (sodium acrylate/acrylic acid))” (id. at col. 17, ll. 52-59). 6. Young also discloses that hydrogel-forming absorbent polymers have a “mass median particle size” that is generally “from about 20 to about 1500 µm, more preferably from about 50 [µ]m to about 1000 µm, and even more preferably from about 100 to about 800 µm” (id. at col. 19, ll. 9-12). 7. Table 1 in Young presents “CSAC = Capillary Sorption Absorbent Capacity” data for different Examples as follows: Table 1 summarizes capillary sorption absorbent capacity data for different storage absorbent members (id. at col. 50, ll. 51-66), including those described in Examples 1 and 3-6. Principles of Law The Examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If the Examiner fails to establish a prima facie case of unpatentability in the first instance, the rejection is improper and must be reversed. Id.; In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). Appeal 2011-006290 Application 10/416,457 6 Analysis The Examiner rejects independent claim 59 as anticipated by, or in the alternative, obvious over, Young (Ans. 4-6). Among other things, the Examiner asserts that: The resin particles disclosed by Young have a mass median (i.e. weight-average) particle diameter of 100-800 µm, which overlaps the claimed range of 150 to 600 µm, a capillary absorption capacity D of at least 15 g/g at a height of 0 cm, which overlaps the claimed range of not less than 30 (g/g) at a height of 0 cm. (Col. 7, lines 38-50, Col. 19, lines 9-12, Table 1, Example 1) The resin particles disclosed by Young also exhibit a “medium absorption height of at least about 40 cm”, where the capacity at 40 cm is 50% of that at 0 cm, or at least 7.5 g/g, which also overlaps the claimed range of not less than 15 (g/g) at a height of 40 cm. (Col. 7, lines 38-50, Table 1, Examples 1, 3) It is noted that, according to the claim, the claimed resin particles also reach a medium absorption capacity at 40 cm. (Ans. 4-5.) We agree with the Examiner that Young discloses resin particles having a diameter of 100-800 µm, i.e., a range that encompasses the diameter range of 150-600 µm recited in claim 59. In a section entitled “Hydrogel-Forming Absorbent Polymers” (Young, col. 16, l. 26 – col. 21, l. 28), Young indicates that “preferred” hydrogel-forming absorbent polymers include “neutralized, slightly network crosslinked, polyacrylic acid (i.e., poly (sodium acrylate/acrylic acid))” (FF 5) (see also Young, col. 17, ll. 44- 48). Thus, hydrogel-forming absorbent polymers described in Young include polymers that correspond to water-absorbent resin particles comprising a crosslinked poly(acrylic acid (salt)) polymer in a major proportion (FF 5). In addition, Young teaches that such hydrogel-forming Appeal 2011-006290 Application 10/416,457 7 absorbent polymers (i.e., water-absorbent resin particles) are “even more preferably from about 100 to about 800 µm” (FF 6). As discussed in more detail below, however, the Examiner errs when asserting that data presented in Table 1 and Examples 1 and 3 in Young describe water-absorbent resin particles having characteristics as claimed, i.e., resins comprising a hydrogel-forming absorbent polymer (a crosslinked poly(acrylic acid (salt)) polymer) having the capillary absorption capacities recited in claim 59 (Ans. 5, 9-11). Table 1 presents “CSAC” (i.e., Capillary Sorption Absorbent Capacity) of different Examples in terms of g/g at 0 cm and 35 cm, among other heights (FF 7). Examples 3 and 4 describe “HIPE” preparations, i.e., high suction polymeric foam materials, that do not include a hydrogel- forming absorbent polymer (Young, col. 48, l. 26 – col. 49, l. 60). Thus, data presented in Table 1 regarding these examples are not relevant to capillary sorption absorbent capacity (CSAC) of absorbent members comprising a hydrogel-forming absorbent polymer (relevant to the claimed resin particles). Examples 1, 5, and 6 in Young describe absorbent members comprising 50% of a hydrogel-forming absorbent polymer, i.e., 50% ASAP 2300, corresponding to water-absorbent resins (Young, Example 1 (id. at col. 46, ll. 16-22 (4 g. ASAP 2300 and 4 g. glass micro fiber)); Example 5 (id. at col. 50, ll. 24-32); Example 6 (id. at col. 50, ll. 41-50)). Claim 59 recites, however, capillary absorption capacities “of not less than 30 (g/g) at a height of 0 cm” and “not less than 15 (g/g) at a height of 40 cm.” Even assuming data relating to a height of 35 cm is relevant to that Appeal 2011-006290 Application 10/416,457 8 regarding 40 cm, Table 1 indicates that only Examples 3 and 4 (and not Examples 1, 5 or 6) display both relevant capillary absorption capacities as recited in claim 59. As discussed above, Examples 3 and 4 correspond to “HIPE” preparations (high suction polymeric foam material) that do not include a hydrogel-forming absorbent polymer. Comparing Examples 3 and 4 to other Examples, Table 1 suggests that including a relevant resin (assuming “ASAP 2300 is a crosslinked polyacrylic acid salt polymer,” as stated by the Examiner (Ans. 10)) in an absorbent member would cause capillary absorption capacities to go down, i.e., below one or more capillary absorption capacities recited in claim 59 (FF 7; see Young, col. 50, Table 1, Examples 1, 5, 6, Comp. A and B). The Examiner therefore errs in finding that Table 1 and Examples 1 and 3 in Young indicate that relevant resin particles in Young exhibit the capillary absorption capacities and capillary absorption index recited in claim 59. In relation to the “wherein” clauses in claim 59, the Examiner also asserts that “Young meets the limitations as to capillary absorption capacity and discloses a acrylic acid salt polymer identical to one disclosed by appellant (i.e. sodium salt of polyacrylic acid which is an alkaline metal salt of polyacrylic acid, see application Publication 2004/0019342, ¶0135).” (Ans. 5 (where “Publication 2004/0019342, ¶0135” refers to Spec. 35, ll. 1- 13)) (FF 3). The Examiner also states that Appellants have “not persuasively shown why the particle diameter, capillary absorption capacities and capillary absorption index of the claimed resin particles are not inherent properties of the resin and thus anticipated by Young, who Appeal 2011-006290 Application 10/416,457 9 discloses a resin composition identical to one disclosed by appellant” (Ans. 9, see also 11 (indicating that Appellants have the burden to show recited properties are not inherent)). Absent more from the Examiner, however, i.e., something more than noting that Young discloses a relevant sodium salt of polyacrylic acid polymer (FF 5) and a relevant size range generally (FF 6), and erroneously stating that Young discloses relevant capillary absorption capacities in Table 1 and Examples 1 and 3 (see, e.g., Ans. 5, 9-10), the burden does not shift to Appellants to establish that capillary absorbent capacities D and index B are not inherent to compositions described in Young. The Examiner has not adequately established that this is the situation described in In re Best, where “the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes,” so that “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The Examiner also does not point to any evidence indicating that one would have necessarily obtained resin particles displaying the capillary absorbent capacities as recited in claim 59 based on teachings in Young. This lack of evidence exists even assuming one used hydrogel-forming absorbent polymers comprising “from about 50 to about 95%, preferably about 75%, neutralized, slightly network crosslinked, polyacrylic acid (i.e., poly (sodium acrylate/acrylic acid))” as cited by the Examiner and disclosed in Young (Ans. 4 (citing Young, col. 17, ll. 55-59; FF 5)) and assuming one used such polymers having a diameter of about 100 to about 800 µm (FF 6). Appeal 2011-006290 Application 10/416,457 10 Nothing in Young or elsewhere in the record indicates that such hydrogel- forming absorbent polymers would necessarily have capillary absorbent capacities in the claimed range. Moreover, data presented in Table 1 suggest the contrary, as discussed above. Thus, the Examiner has not established by a preponderance of the evidence that Young expressly or inherently discloses the water-absorbent resin particles (such as hydrogel-forming absorbent polymers) recited in independent claim 59. Moreover, the Examiner has not established by a preponderance of the evidence that Young renders claim 59 obvious, especially in light of information in Table 1 suggesting that a storage absorbent member comprising a hydrogel-forming absorbent polymer (such as a relevant polymer in a major proportion) has less capillary absorption capacity, as compared to an absorbent member comprising a high surface area polymeric foam in the absence of a hydrogel-forming absorbent polymer, for example. Conclusion of Law We conclude that the Examiner has not established by a preponderance of the evidence that claim 59 is anticipated by (either expressly or inherently), or in the alternative, obvious over, Young. Because claims 61, 62, 64, 65, 68, 70, and 73 depend on independent claim 59, the Examiner has likewise not established by a preponderance of the evidence that any pending claims are anticipated by or obvious over Young. Appeal 2011-006290 Application 10/416,457 11 SUMMARY We reverse the rejection of claims 59, 61, 62, 64, 65, 68, 70, and 73 as anticipated by Young, or in the alternative, as obvious over Young. REVERSED alw