Ex Parte Zhang et al

Patent Trial and Appeal BoardOct 6, 2017

13172452 (P.T.A.B. Oct. 6, 2017)

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. 13/172,452 06/29/2011 Xiaomin Zhang 29827/46347 7303 4743 7590 10/11/2017 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 EXAMINER VASAT, PETER S ART UNIT PAPER NUMBER 3778 NOTIFICATION DATE DELIVERY MODE 10/11/2017 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 XIAOMIN ZHANG and MICHAEL A. MITCHELL Appeal 2015-0071821 Application 13/172,4522 Technology Center 3700 Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and ROBERT J. SILVERMAN, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1—15. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references the Appeal Brief (“Appeal Br.,” filed Dec. 16, 2014) and Reply Brief (“Reply Br.,” filed July 29, 2015), and the Examiner’s Answer (“Ans.,” mailed June 2, 2015) and Final Office Action (“Final Act.,” mailed July 21, 2014). 2 According to Appellants, the real party in interest is BASF SE. Appeal Br. 3. Appeal 2015-007182 Application 13/172,452 BACKGROUND According to the Specification, “[t]he present invention relates to ultrathin fluid-absorbent cores comprising a substrate layer, water-absorbent polymer particles and an adhesive, wherein the wet SAP shake out (SAPLoss) of water-absorbent polymer particles out of the fluid-absorbent core is less than 10% by weight.” Spec. 11. CLAIMS Independent claim 1 is representative of the claim on appeal, ft recites: 1. A fluid-absorbent core comprising a substrate layer, at least 75% by weight of water-absorbent polymer particles, and an adhesive, wherein the water-absorbent polymer particles comprise a basic salt of a polyvalent metal cation and a monovalent carboxylic acid anion on a surface and the wet SAP shake out of water-absorbent polymer particles out of the fluid- absorbent core is less than 10% by weight. Appeal Br., Claims App. A-l. REJECTIONS 1. The Examiner rejects claims 1—15 under 35 U.S.C. § 103(a) as unpatentable over Braig3 in view of Nakajima4 and Zhang.5 2. The Examiner rejects claims 1—15 under 35 U.S.C. § 103(a) as unpatentable over Braig in view of Zhang. 3 Braig et al., US 2009/0012488 Al, pub. Jan. 8, 2009. 4 Nakajima et al., US 2004/0058805 Al, pub. Mar. 25, 2004. 5 Zhang et al., US 2006/0004336 Al, pub. Jan. 5, 2006. 2 Appeal 2015-007182 Application 13/172,452 DISCUSSION We are persuaded by Appellants’ argument that the Examiner has not established that the prior art makes obvious a device as claimed in claim 1 including the requirement that “the wet SAP shake out of water-absorbent polymer particles out of the fluid-absorbent core is less than 10% by weight.” See Appeal Br. 20-21. As an initial matter, we note that neither Appellants nor the Examiner construe the claim phrase “wet SAP shake out.” However, we find the construction of this term is pertinent to a determination of whether the art of record teaches the aforementioned claim limitation. We find that the broadest reasonable interpretation of the claim phrase “wet SAP shake out” consistent with the Specification requires that the absorbent material is soaked in a suitable solution before shake out testing occurs. See Spec. 1 263 (describing how wet SAP shake out is determined, which includes laying a dry core sample in a specific amount of solution until “all free liquid has been absorbed by the core sample”); see also, Merriam- Webster.com “https://www.merriam-webster.com/dictionary/wet” (defining “wet” as an adjective meaning “consisting of, containing, covered with, or soaked with liquid (such as water)”). In both rejections of claim 1, the Examiner relies on Zhang as teaching a stretchable absorbent article with a fluid-absorbent core having a substrate layer that is at least 75% by weight water-absorbent polymer particles and having a wet SAP shakeout of particles that is less than 10% by weight. See Final Act. 4 (citing Zhang Abstract); see also Ans. 10 (citing Zhang Abstract). However, Zhang does not disclose that the sample is 3 Appeal 2015-007182 Application 13/172,452 soaked in solution before shake out testing. See Zhang || 124—130. In particular, Zhang discloses: To perform the Shakeout Test, the absorbent composite sample is laid at the center of the sample holder, and the sample holder is laid horizontally fiat (i.e. parallel to the floor) upon the wire screen employed to support the sample on the modified RX-24. The RX-24 then shakes the web at a frequency of approximately 520 cycles per minute for a period of five minutes. If any sheets of tissue paper or other material have been placed above or below the sample to facilitate the lifting or handling of the web samples, those sheets are removed prior to shaking. Zhang 1127; see also Singh645, 46, 58 (incorporated by reference into Zhang; describing a similar shakeout test; and further indicating that super absorbent materials are dried before testing). In response to Appellants’ argument that the art does not disclose the claimed wet shakeout loss, the Examiner first asserts that the Appellants “fail to make clear what the differences are” between dry and wet shakeout. Ans. 19. However, we find that the differences are self-evident in that the dry shakeout refers to shakeout that occurs during shakeout testing while the particles are dry and wet shakeout refers to shakeout that occurs during shakeout testing after the particles have been soaked in a suitable solution, as per the claim interpretation provided above. The Examiner has not shown that the dry shakeout disclosed in Zhang correlates in any way to the wet shakeout claimed. The Examiner also responds that because the art “discloses the surface treatment that the Appellants are seeking to patent, the article would inherently have a wet shakeout that is equivalent to the Appellants claimed 6 Singh et al., US 2002/0183703 Al, pub. Dec. 5, 2002. 4 Appeal 2015-007182 Application 13/172,452 wet shakeout.” Ans. 19; see also id. at 10. We understand the Examiner’s finding in this regard is that the shakeout is based solely on the “surface treatment” used because the Examiner does not explain how the rest of the structure claimed relates to the performance of the shake out test. However, Claim 1 is directed to a fluid-absorbent core comprising a substrate layer including at least 75% by water-absorbent polymer particles and an adhesive, and the claim further requires that the wet shake out “of the fluid- absorbent core is less than 10% by weight.” Thus, the claim requires more than a “surface treatment” and requires that the wet shakeout is related to the fluid-absorbent core as a whole. Further, the Specification provides evidence that different fluid-absorbent core substrate structures produce different results with respect to wet shake out. For example, Table 1 shows that the design of the substrate, i.e. whether it is nonwoven with square slots, nonwoven with round holes, or tissue paper with square slots, affects the results wet shake out for a given polymer-particle composition. Thus, we find that the Examiner’s assertion regarding inherency, as we understand it, lacks support on the record before us. For the foregoing reasons, we are persuaded of reversible error in both rejections of claim 1, which both rely on the erroneous finding that Zhang teaches the claimed wet shakeout properties claimed. Accordingly, we do not sustain the rejections of claim 1. We also do not sustain the rejections of the remaining claims, claims 2—15, for the same reasons. CONCLUSION We reverse the rejections of claims 1—15 for the reasons provided herein. REVERSED 5