SK GLOBAL CHEMICAL CO., LTD. et al.

Patent Trials and Appeals Board

Mar 27, 2020

15011731 - (D) (P.T.A.B. Mar. 27, 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.
15/011,731 02/01/2016 Du-Youn KA P69316DH05 5398
89340 7590 03/27/2020
The PL Law Group, PLLC
5875 Trinity Parkway
Suite 110
Centerville, VA 20120
EXAMINER
MANGOHIG, THOMAS A
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
mail@thepllaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DU-YOUN KA, JU-HEE KIM, BYOUNG-TAK YIM,
JU-EUN JUNG, and BYOUNG-CHEON JO
____________

Appeal 2019-003954
Application 15/011,731
Technology Center 1700
____________

Before MONTÉ T. SQUIRE, AVELYN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 7, 8, and 11–14.3 We have jurisdiction under
35 U.S.C. § 6(b).

1 In this Decision, we refer to the Specification filed Feb. 1, 2016 (“Spec.”);
Final Office Action dated June 18, 2018 (“Final Act.”); Appeal Brief filed
Nov. 13, 2018 (“Appeal Br.”); Examiner’s Answer dated Mar. 7, 2019
(“Ans.”); and Reply Brief filed Apr. 23, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies SK global Chemical Co., Ltd. as
the real party in interest. Appeal Br. 3.
3 Claims 1–6 are withdrawn and claims 9 and 10 are cancelled. Final Act. 2;
see also Claims Listing dated Feb. 21, 2018 included in the prosecution
history (same).
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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to an absorbent polymer and a method of
preparing the same. Spec. 1, 4–5; Abstract. Claim 7 illustrates the claimed
subject matter on appeal and is reproduced below from the Claims Appendix
to the Appeal Brief:
7. An absorbent polymer, having:
an absorbency under pressure (AUL) ranging from 20 to 45 g/g;
a phase angle (δ) of swollen gel ranging from 3 to 10 degrees;
and
a decrease in phase angle ranging from 3 to 35%.
Appeal Br. 14 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Chambers et al. (“Chambers”) US 5,145,906 Sept. 8, 1992
Kasai et al. (“Kasai”) US 6,580,014 B1 June 17, 2003
Sigma-Aldrich, Particle Size Conversion Table,
https://www.sigmaaldrich.com/chemistry/stockroom-reagents/learning-cente
r/technical-library/particle-size-conversion.html (last visited Nov. 11, 2017)
(“Sigma-Aldrich”).4

4 In the rejection, the Examiner refers to the “Sigma-Aldrich” reference as
the “Particle Conversion Table.” Ans. 3.
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REJECTION
On appeal, the Examiner maintains the following rejection: claims 7,
8, and 11–14 rejected under 35 U.S.C. § 103 as being unpatentable over
Chambers in view of Kasai, as evidenced by Sigma-Aldrich. Ans. 3.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejection based on the fact-finding and reasoning set forth in the Answer and
Final Office Action, which we adopt as our own. We add the following
primarily for emphasis.
In response to the Examiner’s rejection, Appellant presents argument
for the patentability of claim 7 but does not present separate argument for
the patentability of claims 8 and 11–14. Appeal Br. 6, 13. We select claim
7 as representative and claims 8 and 11–14 stand or fall with claim 7.
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Chambers and
Kasai, as evidenced by Sigma-Aldrich, suggests an absorbent polymer
satisfying the limitations of claim 7 and concludes the combination would
have rendered the claim obvious. Ans. 3–5 (citing Chambers, Title, 2:28,
2:35–55, 2:53–56, 3:1–2, 3:7–11, 6:59–7:30 (Example 1), 7:34–37 (Example
2), 10:21–11:7 (claim 1); Kasai, 4:1–11, 4:48–69; Sigma-Aldrich 1 (Particle
Size Conversion Table)).
Appellant argues the Examiner’s rejection of claim 7 is improper and
should be reversed because the claimed absorbent polymer and the absorbent
polymer of the prior art are not produced by identical or substantially
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identical processes. Appeal Br. 6 (arguing the “two processes are not
substantially identical to []each other”); see also Reply Br. 3 (same).
Appellant contends that, in contrast to the process described in the prior art,
the process used to produce the claimed absorbent polymer includes the
addition of polysaccharide either during the polymerization or between the
polymerization and the kneading steps. Appeal Br. 6. In particular,
Appellant contends that Chambers’ process differs from the process used to
produce the absorbent polymer of claim 7 because Chambers teaches the
addition of the polysaccharides to the initial monomer, i.e., before
polymerization, in an amount of 0 to 10 weight percent polysaccharide. Id.
at 9.
Appellant further argues it would not have been obvious to one of
ordinary skill in the art to have modified Chambers’ process based on
Kasai’s disclosure to arrive at the claimed invention. Appeal Br. 9–10. In
particular, Appellant contends that because Chambers teaches the amount of
polysaccharide relative to acrylic acid and Kasai teaches the amount of
polysaccharide added relative to the pulp fiber, a person of ordinary skill in
the art would not have had reason to modify the amount of polysaccharide
taught by Chambers based on Kasai’s teaching. Id. at 11; see also id. at 10
(arguing “there is no reason to modify Chambers by changing the amount
[of polysaccharide] into the amount taught by Kasai”).
Appellant also argues the Examiner’s rejection should be reversed
because the prior art product does not have the claimed phase angle. Appeal
Br. 13 (arguing “the absorbent polymer of Chambers in view of Kasai does
not have the claimed phase angle”). In particular, relying on the examples
and results provided in Tables 1 and 2 of the Specification (Spec. 26,
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29–30), Appellant contends that when the polysaccharides were added to the
initial monomer solution, i.e., before polymerization, in an amount of 0 to 10
weight percent polysaccharide, similar to the process described in Chambers,
“all the phase angles are over 10 degrees,” which falls outside the claimed
range. Id. at 12. Appellant contends the results rebut the Examiner’s
finding that the claimed product and the prior art product are identical or
substantially identical. Id. at 12.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based on the fact-finding and reasoning provided
by the Examiner at pages 3–7 of the Answer, which is supported by a
preponderance of the evidence. Chambers, Title, 2:28, 2:35–55, 2:53–56,
3:1–2, 3:7–11, 6:59–7:30 (Example 1), 7:34–37 (Example 2), 10:21–11:7
(claim 1); Kasai, 4:1–11, 4:48–69; Sigma-Aldrich 1 (Particle Size
Conversion Table).
As the Examiner finds (Ans. 3), Chambers discloses a super-absorbent
polymer having an absorbency under pressure of at least 28 g/g (Chambers
2:28), which overlaps the claimed range. As the Examiner further finds
(Ans. 4), Chambers discloses that the absorbent polymer comprises acrylic
acid, a crosslinking monomer, and a polysaccharide, wherein acrylic acid is
present in an amount of 90 to about 100 weight percent, and the
polysaccharide is present in an amount of 0 to about 10 weight percent, and
the polysaccharide is selected from materials including guar gum. Chambers
2:35–55, 2:53–56, 3:1–2, 3:7–11.
As the Examiner also finds (Ans. 4, 7), Kasai discloses an absorbent
article comprising a polysaccharide and a super-absorbent polymer, wherein
the polysaccharide is present in an amount of 10 to 200% by weight based
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on 100% by weight of the superabsorbent polymer and is selected from
materials including, kappa-carrageenan, guar gum, sodium alginate, among
others, and sodium alginate and kappa-carrageenan are preferred. Kasai
4:1–11, 4:48–69.
The Examiner also provides a reasonable basis, which is supported by
a preponderance of the evidence in the record, to evince why one of ordinary
skill would have combined the teachings of the cited art to arrive at the
claimed invention. In particular, as the Examiner determines (Ans. 4–5), it
would have been obvious to one of ordinary skill in the art at the time of the
invention to have replaced Chamber’s guar gum polysaccharide with the
sodium alginate or kappa-carrageenan polysaccharides of Kasai in the
amount prescribed because Kasai teaches that sodium alginate and
kappa-carrageenan are preferred polysaccharides for incorporation with
super-absorbent polymers from the standpoint of cost and solubility.
Kasai 4:1–11; see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007) (“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”).
As the Examiner finds and explains (Ans. 5), because the combination
of Chambers and Kasai suggests an absorbent polymer comprising acrylic
acid, a crosslinking agent, and a polysaccharide, which is substantially
identical to the absorbent polymer of Appellant’s invention (see Spec. 3–4
(describing an absorbent polymer having a composition, which includes
acrylic monomer, polysaccharide, and a cross-linking agent, wherein the
polysaccharide is included in an amount of 0.1 to 20% by weight to the
acrylic monomer in the polymer composition, and that the polysaccharide is
at least one selected from a group consisting of alginate and
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kappa-carrageenan, among other materials), Spec. 33 (original claim 1)), one
skilled in the art would have reasonably expected the absorbent polymer of
the prior art to have had the same phase angle properties as the claimed
absorbent polymer.
Thus, the burden shifts to Appellant to show that the absorbent
polymer of the prior art does not inherently possess the recited properties of
the claimed product. See In re Spada, 911 F.2d 705, 708–09 (Fed.
Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”); see also In re Best, 562 F.2d 1252,
1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, 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.”).
Appellant, however, has not carried that burden. Appellant’s
contentions that the process used to produce the claimed absorbent polymer
and the process described in the prior art are not substantially identical
(Appeal Br. 6) and that Chambers’ process differs from the process used to
produce the absorbent polymer of claim 7 because it teaches the addition of
the polysaccharides to the initial monomer before polymerization (id. at 9)
are not persuasive because, as the Examiner finds (Ans. 7), claim 7 does not
recite or require that the polysaccharide is combined or reacted with the
polymer composition nor does it specify when the polysaccharide is added to
the composition.
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Moreover, Appellant does not identify or direct us to persuasive
evidence in the record that adding the polysaccharide to the initial monomer
before polymerization or during the polymerization, for example, would
materially affect the polymer composition or otherwise result in an
absorbent polymer that is not identical or substantially identical to the
claimed product.
Appellant’s contentions that “the absorbent polymer of Chambers in
view of Kasai does not have the claimed phase angle” (Appeal Br. 13) and
the examples and results provided in Tables 1 and 2 of the Specification
show absorbent polymers all having phase angles that fall outside the
claimed range (id. at 17) are not persuasive because, as the Examiner finds
(Ans. 6–7), the data upon which Appellant relies upon is not commensurate
in scope with the claims. In particular, as the Examiner finds and explains
(Ans. 6–7), claim 7 does not recite any specific composition and/or method
of making such product, but all the data upon which Appellant relies upon is
drawn to a specific absorbent polymer made by a specific process.
Appellant’s contentions in this regard are also not well-taken because
they are based on what Appellant contends the Chambers reference teaches
individually, and not the combined teachings of the cited references as a
whole and what the combined teachings would have suggested to one of
ordinary skill in the art. One cannot show non-obviousness by attacking
references individually where the rejection is based on a combination of
references. See In re Keller, 642 F.2d 413, 425 (CCPA1981).
In particular, as Appellant acknowledges (Ans. 12), Examples 8–10,
14, and 15 are limited to the amount of polysaccharide ranging from 0.1 to
10%. The combined teachings of Chambers and Kasai, however, are not
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limited to an absorbent polymer having polysaccharide present in an amount
of 0 to about 10 weight percent, as taught by Chambers. Chambers 3:7–11.
Rather, as the Examiner finds (Ans. 7), based on Kasai’s teaching of the
polysaccharide being present in an amount of 10 to 200% by weight % of
the superabsorbent polymer (Kasai 4:48–69), the combined teachings of the
cited art would have suggested an absorbent polymer having polysaccharide
present in a range much broader than the range provided and tested by
Appellant in Examples 8–10, 14, and 15. Keller, 642 F.2d at 425
(explaining “the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art”). Thus, as the Examiner
finds (Ans. 6) and contrary to what Appellant argues, Example 11 of Table 2
of the Specification (Spec. 29–30), which is an absorbent polymer with
polysaccharide present in an amount of 20% and within the scope of the
combined teachings of Chambers and Kasai, does have a phase angle of 3.34
degrees that falls within the claimed range.
We find equally unpersuasive Appellant’s argument that it would not
have been obvious to one of ordinary skill to have modified Chambers’
process based on Kasai’s disclosure to arrive at the claimed invention
(Appeal Br. 9–10). Rather, as previously discussed above, we find that the
Examiner’s determination in this regard (Ans. 4–5, 7) is based on sound
technical reasoning, which is supported by a preponderance of the evidence.
Appellant’s mere disagreement with the Examiner’s factual findings
and reasoning for combining the references, without more, is insufficient to
establish reversible error. SmithKline Beecham Corp. v. Apotex Corp., 439
F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement . . . as
to the existence of factual disputes do not amount to a developed
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argument.”); see also KSR, 550 U.S. at 420 (explaining that any need or
problem known in the art can provide a reason for combining the elements in
the manner claimed).
Accordingly, we affirm the Examiner’s rejection of claims 7, 8, and
11–14 under 35 U.S.C. § 103 as obvious over the combination of Chambers
and Kasai, as evidenced by Sigma-Aldrich.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 8, 11–14 103 Chambers, Kasai,
Sigma-Aldrich
7, 8, 11–14

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