SK GLOBAL CHEMICAL CO., LTD. et al.Download PDFPatent Trials and Appeals BoardMar 27, 202015011731 - (D) (P.T.A.B. Mar. 27, 2020) Copy Citation 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 Appeal Br. 3. 3 Claims 1–6 are withdrawn and claims 9 and 10 are cancelled.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). Appeal 2019-003954 Application 15/011,731 2 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. Appeal 2019-003954 Application 15/011,731 3 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 Appeal 2019-003954 Application 15/011,731 4 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, Appeal 2019-003954 Application 15/011,731 5 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 Appeal 2019-003954 Application 15/011,731 6 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 Appeal 2019-003954 Application 15/011,731 7 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. Appeal 2019-003954 Application 15/011,731 8 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 Appeal 2019-003954 Application 15/011,731 9 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 Appeal 2019-003954 Application 15/011,731 10 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 Copy with citationCopy as parenthetical citation