DETAILED ACTION
Claims 1-14 were rejected in Office action mailed 01/26/2026
Applicant filed a response, amended claims 1, 3, 4, and 8, and canceled claim 2 on 04/23/2026
Claims 1 and 3-14 are pending
Claims 1 and 3-14 are rejected
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner’s Note
2. It is noted that there is inadvertent typographic error in item #4 in the previous Office action mailed 01/26/2026 "Claim 6 is objected to because of the following informalities: Claim 6, line 4" should have read as "Claim 4 is objected to because of the following informalities: Claim 4, line 6", to correctly indicate “T is a time (period)” as the objection set forth in item 4 in the Office action mailed 01/26/2026.
Claim Rejections - 35 USC § 103
3. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
4. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
5. Claims 1-11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Yorino et. al. (WO 2019221236 A1) (Yorino).
12. The Examiner has provided a machine translation of WO 2019221236 A1. The citation of the prior art in this rejection refer to the machine translation.
6. Regarding claim 1, Yorino teaches a production method for a water absorbent resin (Yorino, Abstract) that is a super absorbent polymer (SAP) (Yorino, p. 6, paragraph 3)
wherein the water absorbent resin may be surface-crosslinked (Yorino, p. 8, paragraph 6).
Yorino further teaches a preparation of SAP particles with surface-crosslinked layers (Yorino, p. 8, paragraph 6) that a incorporates a surface cross-linking step (Yorino, p. 20, paragraph 3) by heating (i.e. heat-treating) a mixture of the particulate hydrogel or particulate dry polymer containing a surface cross-linking agent (Yorino, p. 20, paragraph 4).
wherein the polymer uses acrylic acid monomers as the raw materials for the polyacrylic acid polymer particles (Yorino, p. 6, paragraph 4).
Yorino further teaches a drying apparatus (i.e. surface cross-linking reactor) (Yorino, p. 17, paragraph 7) that is the heating device in the heat treatment step detailed above is a stirring drying (Yorino, p. 20, paragraph 6)
wherein the peripheral speed (i.e. linear velocity) of the drying apparatus is usually 0.15 m/s to 25 m/s (Yorino, p. 18, paragraph 6) and the length of time for the heat treatment (i.e. residence time) at the surface crosslinking temperature is in the range of 10 minutes to 120 minutes, preferably 30 minutes to 90 minutes (Yorino, p. 20, paragraph 6).
Yorino further teaches a surface cross-linking step is taken place simultaneously with the drying step (Yorino, p. 20, paragraph 2)
wherein in this case the surface cross-linking step and the drying step are performed in one step, so that a more compact manufacturing method is possible (Yorino, p. 29, paragraph 2).
Yorino further teaches that the ATT index in the drying apparatus (i.e. surface cross-linking reactor) in the heat treatment step is in the range of 0.09 (i.e. linear velocity of 0.15 m/s * 1/6 hours (or 10 minutes) for heat treatment * (3600 / 1000)) to 180 (i.e. linear velocity of 25 m/s * 2 hours (or 120 minutes) for heat treatment * (3600 / 1000)), which overlaps with the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
7. Regarding claim 2, Yorino further teaches that the ATT index in the drying apparatus (i.e. surface cross-linking reactor) in the heat treatment step is in the range of 0.09 to 180, which encompasses the claimed range (Yorino, p. 18, paragraph 6 and Yorino, p. 20, paragraph 5).
8. Regarding claim 3, Yorino further teaches that the drying apparatus (i.e. surface cross-linking reactor) has means for agitating a material with stirring blades such as an arm, a paddle, and a cut disk (Yorino, p. 18, paragraph 2).
9. Regarding claim 4, Yorino further teaches that the drying apparatus (i.e. surface cross-linking reactor) that has a peripheral speed (i.e. linear velocity) derived from the diameter (i.e. one-half of the radius) of the trajectory stirring blade (i.e. rotating paddle) and the rotation speed of the stirring blade (Yorino, p. 18, paragraph 3)
wherein the rotation speed (in rpm) is inversely related to the time period (i.e. (1/T)) taken for one revolution of the stirring blade (i.e. rotating paddle) inside the drying apparatus (i.e. surface cross-linking reactor) (i.e., linear velocity=2*3.14*r/T, where in r is the radius of the trajectory stirring blade, and T is the time period taken to complete on revolution of the drying apparatus).
10. Regarding claim 5, as applied to claim 1, Although there is no disclosure that the specific method to determine the residence time is conformity with Equation 1-2, given that Yorino discloses residence as the presently claimed and absent evidence criticality how the residence is measured/determined, it is an examiner's position that residence time disclosed by Yorino to meet the claim limitation.
Alternatively, Yorino further teaches, in the dryer, the heat transfer area inside the dryer can be increased by increasing the number of heating tubes. The large heat transfer area enables drying in a short time and also reduces the residence time inside the apparatus (i.e., dryer), further reducing thermal damage (Yorino, p. 16, paragraph 6). Therefore, it is clear that reducing residence time inside the dryer would reduce thermal damage.
Yorino further teaches the time for the heat treatment at the surface crosslinking temperature is appropriately set according to the moisture content of the particulate hydrogel or particulate dry polymer, the type of the surface crosslinking agent, and the like (Yorino, p. 20, paragraph 5).
While Yorino does not explicitly teach an equation to calculate the residence time, as presently claimed, however, it would have been obvious to one of ordinary skill in the art to modify a residence time calculated with the claimed equation, including that presently claimed, in order to provide a desirable heat treatment time according to the moisture content of the particulate hydrogel or particulate dry polymer, the type of the surface crosslinking agent, and the like, without thermal damage of the water absorbent, and thereby arrived at the claimed invention.
11. Regarding claim 6, Yorino further teaches that the polyacrylic acid polymer particles are prepared with acrylic acid as the monomer group (Yorino, p. 10, paragraph 6) to form a hydrogel crosslinked polymer (i.e. water-containing gel polymer) (Yorino, p. 11, paragraph 4),
wherein the acrylic acid monomer is neutralized (Yorino, p. 11, paragraph 4) in the presence of an internal cross-linking agent (Yorino, p. 11, paragraph 8);
wherein there is a drying step of the hydrogel crosslinked polymer (i.e. water-containing gel polymer) (Yorino, p. 13, paragraph 4) and a pulverization step of the hydrogel crosslinked polymer (Yorino, p. 13, paragraph 4).
Alternatively, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Yorino meets the requirements of the claimed acrylic acid-based base polymer particles, Yorino clearly meets the requirements of the present claim.
12. Regarding claim 7, Yorino further teaches incorporates a surface cross-linking step (Yorino, p. 20, paragraph 3)
wherein the surface crosslinking temperature is preferably 100
°
C to 250
°
C, which encompasses the claimed range.
Yorino further teaches that when the surface cross-linking step is performed simultaneously with the drying step when the surface crosslinking agent is added is preferably 70 to 150 ° C. (Yorino, p. 19, paragraph 5), which overlaps with the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
13. Regarding claim 8, Yorino further teaches examples of surface crosslinking agents include one or more selected from the group consisting of polyols selected from the group consisting of ethylene glycol, propylene glycol, 1,3-propanediol, 1,4-butanediol, 1,6-hexanediol, and glycerol; one or more carbonate-based compounds selected from the group consisting of ethylene carbonate and propylene carbonate; an epoxy compound; an oxazoline compound; a polyamine compound; a mono- or di- oxazolidinone compound.
14. Regarding claim 9, Yorino further teaches that the addition amount of the surface cross-linking agent is included in an amount of 0.001 part by weight to 5 parts by weight, more preferably 0.001 part by weight to 3 parts by weight, and further preferably 0.001 part by weight to 2 parts by weight with respect to 100 parts by weight of the particulate hydrogel or dry polymer (i.e. acrylic acid-based base polymer particles), which encompasses the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
15. Regarding claim 10, Yorino further teaches a centrifuge retention capacity (CRC) of the of the water-absorbent resin (i.e. superabsorbent polymer) is preferably 5 to 70 g/g, more preferably 10 to 60 g/g, still more preferably 15 to 50 g / g, particularly preferably in terms of solid content 18 to 40 g/g (Yorino (p. 23, paragraph 10),
wherein the absorption against pressure (AAP) corresponds to the Absorbency Under Pressure of 0.7 psi (i.e. AUP) (Yorino, p. 9, paragraph 5),
wherein the AAP (i.e. AUP) of the water absorbent resin (i.e. superabsorbent polymer) is preferably 15 g/g - 30 g/g (Yorino, p. 30, paragraph 10).
Yorino further teaches that that the effective capacity (EFFC) of the water absorbent resin (i.e. superabsorbent polymer) ranges from 10 g/g to 50 g/g, which overlaps with the claimed range (see math below).
EFFC (lowest value) = (CRC(lowest value) + AAP(lowest value)) / 2
EFFC (lowest possible value) = (5 g/g + 15 g/g) / 2 = 10 g/g
EFFC (highest possible value) = (CRC(highest value) + AAP(highest value)) / 2
EFFC (lowest value) = (70 g/g + 30 g/g) / 2 = 50 g/g
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
16. Regarding claim 11, Yorino further teaches the water absorbent resin (i.e. superabsorbent polymer) has a saline flow conductivity (SFC) of 120 (*10-7cm3
∙
s/g) which falls into the recited range.
17. Regarding claim 13, Yorino further teaches that that the effective capacity (EFFC) of the water absorbent resin (i.e. superabsorbent polymer) ranges from 10 g/g to 50 g/g, which overlaps with the claimed range (see math in article 18 above), which overlaps with the claimed range (Yorino p. 23, paragraph 10 and p. 30, paragraph 10).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
18. Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Yorino as applied to claim 1 above, and further in view of Ahn et el. (CN 108026290 A) (Ahn).
19. The Examiner has provided a machine translation of CN 108026290 A. The citation of the prior art in this rejection refer to the machine translation.
20. Regarding claim 12, Yorino teaches the method of preparing a water absorbent resin (i.e. superabsorbent polymer) of claim 1. However, Yorino does not explicitly teach wherein a time (T-20), taken for 1 g of the superabsorbent polymer to absorb 20 g of an aqueous solution of sodium chloride and C12-C14 alcohol ethoxylate, is 129 seconds or less.
With respect to the difference, Ahn teaches a super absorbent polymer and preparation method thereof (Ahn, p. 2 paragraph 1)
wherein the wherein a time (T-20), taken for 1 g of the superabsorbent polymer to absorb 20 g of an aqueous solution of sodium chloride and C12-C14 alcohol ethoxylate, is 190 seconds or less, which encompasses the claimed range.
Ahn expressly teaches that water absorbent polymers are useful in hygienic materials, such as diapers (Ahn, p. 2, paragraph 3)
wherein superior performance of the water absorbent polymer in a diaper is dependent on high absorption rate and permeability for various liquids (Ahn, p. 2, paragraph 4).
Yorino and Ahn are analogous art as they are both drawn to a method of preparing a superabsorbent polymer.
In light of the motivation for preparing a water absorbent polymer with a high absorption rate as disclosed by Ahn above, it therefore would have been obvious to one of ordinary skill in the art to modify the water absorbent resin (i.e. superabsorbent polymer) of Yorino to have a higher absorption rate of liquids such as an aqueous solution of sodium chloride and C12-C14 alcohol ethoxylate, e.g., 1 g of the superabsorbent polymer to absorb 20 g of an aqueous solution of sodium chloride and C12-C14 alcohol ethoxylate, is 190 seconds or less, to be useful in diapers, and thereby arrive at the claimed invention.
21. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Yorino as applied to claim 11 above, and further in view of Brullot et. al. (WO 2020109601 A1) (Brullot).
22. Regarding claim 14, Yorino further teaches the water absorbent resin (i.e. superabsorbent polymer) has a saline flow conductivity (SFC) of 120 (*10-7cm3
∙
s/g), but doesn’t explicitly teach a saline flow conductivity (SFC) of 35 to 50 (*10-7cm3 ∙ s/g).
With respect to the difference, Brullot further teaches method of the present disclosure for steering a production process of the superabsorbent polymers (Brullot, p. 26, paragraph 3) with saline flow conductivity (SFC) values measured in Figure 10 (Brullot, p. 43, Figure 10)
PNG
media_image1.png
307
438
media_image1.png
Greyscale
Annotated Figure 10
wherein the superadsorbent polymers have an SFC of about 30 to about 80 (*10-7cm3
∙
s/g) or larger, which encompasses the recited range (Brullot, p. 43, Figure 10).
Brullot expressly teaches that an important requirement for the superabsorbent polymers is the ability of the hydrogel to conduct liquid (permeability) and distribute it (Brullot, p. 3, paragraph 4)
wherein permeability of superabsorbents is reported in the form of saline flow conductivity (SFC) (Brullot, p. 3, paragraph 4).
Brullot further teaches that further improvement of the properties of the crosslinked polymer particles (i.e. superabsorbent polymers) can be made with coatings (Brullot, p. 23, paragraph 3)
wherein suitable coatings for improving SFC are for example, inorganic inert substances, such as water- insoluble metal salts, organic polymers, cationic polymers and di- or polyvalent metal cations (Brullot, p. 25, paragraph 5).
Yorino and Brullot are analogous art as they are all drawn to production processes of superabsorbent polymers.
In light of the motivation to control the SFC as disclosed by Brullot, it therefore would have been obvious to one of ordinary skill in the art to modify water-absorbent resin (i.e. superabsorbent polymer) of Yorino to have suitable coatings that control the level of permeability (i.e. SFC), and thereby arrive at the claimed invention.
Response to Arguments
23. In response to amended claims 4 and 8, the previous claim objections are withdrawn.
24. In response to amended claim 3, the previous claim rejections of claim 3 under 35 U.S.C. 112(b) is withdrawn.
25. Applicants further argue:
“Yorino merely presents the tip speed and the heat treatment time as independent
operating parameters, and does not recognize the cumulative mechanical effect arising from their interaction like in Equation 1 as claimed, nor does it teach or suggest the need to define and control such an effect as an integrated parameter. In other words, the disclosed tip speed and heat treatment time in Yorino merely enumerate broad operable ranges, without any technical motivation toward a specific combinational relationship as in claimed Equation 1 or a critical range of ATT index being 1-3 as claimed.”
Remarks p. 6
The Examiner respectively traverses as follows:
While Yorino may not explicitly disclose the cumulative mechanical effect arising from their interaction like in Equation 1, it is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Given that Yorino teaches the ATT value of 0.09 to 180, which overlaps the presently claimed range, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art to select the ATT index in the drying apparatus (i.e. surface cross-linking reactor) (Yorino, p. 17, paragraph 7), included that presently claimed, to form the method of preparing a superabsorbent polymer, absent evidence to the contrary.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it is the examiner’s position that Yorino meets the claimed method of preparing a superabsorbent polymer, as presently claimed, absent evidence to the contrary. See item #6 of Office action set forth above.
26. Applicants further argue:
“The unpredictability of randomly selecting a tip speed and a heat treatment time is evidenced from the comparison data in the present application itself. As shown in Tables 1-2 of the present specification (reproduced below), even when individual parameters, i.e., the tip speed and the heat treatment time, fall within the ranges disclosed in Yorino, if the ATT index exceeds 3 as claimed (Comparative Examples 1-5), saline flow conductivity (SFC) and absorption rate (T-20) are significantly deteriorated. This clearly demonstrates that such deterioration is not a mere variation due to process deviation, but rather results from the accumulation of physical damage to the resin particles when the ATT index exceeds a certain critical threshold, leading to a marked decline in flow properties and absorption rate”
Remarks p. 7
The examiner respectively traverses as follows:
Firstly, the data is not commensurate in the scope of the claims. Specifically, the data only show a method of preparing a superabsorbent polymer with a specific acrylic acid-based base polymer particle (i.e. from acrylic acid monomer), a specific surface crosslinking agent (i.e., polyethylene glycol diacrylate) to form a specific type of surface-crosslinked layer in a specific surface crosslinking reactor and specific ATT indices (i.e., 2.4, 2.6, 2.9, 2.9, and 3.0), while the claims broadly recite a method of preparing a superabsorbent polymer, the method comprising a mixture including any amounts and types of acrylic acid-based base polymer particles in the presence of any amounts and types for a surface crosslinking agent to form any type of surface-crosslinked layer in any type of surface crosslinking reactor satisfying an ATT index of 1-3.
Additionally, the data does not show using the lower ends of the claimed ranges of the ATT index. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range of an ATT index of 1 to 3.
Therefore, it is the examiner’s position that Yorino meets the claimed method of preparing a superabsorbent polymer, as presently claimed, absent evidence to the contrary. See item #6 of Office action set forth above.
27. Applicants further argue:
“Similarly, in the instant case, Yorino is silent about the relationship between the tip speed and the heat treatment time, let alone that according to claimed Equation 1. Thus, one of ordinary skill in the art would have been motivated to optimize the tip speed and the heat treatment time in arriving at the claimed ATT index because there is no evidence that skilled artisans knew the claimed ATT index was a parameter of any importance or one worth optimizing and there was no reasonable rationale/evidence to support a conclusion that independently optimizing the tip speed and the heat treatment time would result the ATT index in the claimed ratio rather than numerous other ratios falling outside the scope of the claims, because simply, there are innumerable combinations of values.”
Remarks p. 6-7
The Examiner respectively traverses as follows:
While Yorino may not explicitly disclose the relationship between the tip speed and the heat treatment time according to claimed Equation 1, it is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Given that Yorino teaches the ATT value of 0.09 to 180, which overlaps the presently claimed range, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art to select the ATT index in the drying apparatus (i.e. surface cross-linking reactor) (Yorino, p. 17, paragraph 7), included that presently claimed, to form the method of preparing a superabsorbent polymer, absent evidence to the contrary.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it is the examiner’s position that Yorino meets the claimed method of preparing a superabsorbent polymer, as presently claimed, absent evidence to the contrary. See item #6 of Office action set forth above.
28. Applicants further argue:
“Accordingly, controlling the ATT index within a specific range is not a mere selection of numerical values, but rather constitutes a critical technical means for minimizing physical damage to the resin caused by mechanical forces. Yorino contains no teaching or suggestion regarding the causal relationship between such physical damage and deterioration of properties, nor does it disclose or imply that such effects should be managed through an integrated parameter.”
Remarks p. 7-8
The Examiner respectively traverses as follows:
While Yorino may not explicitly disclose minimizing physical damage to the resin caused by mechanical forces, it is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Given that Yorino teaches the ATT value of 0.09 to 180, which overlaps the presently claimed range, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art to select the ATT index in the drying apparatus (i.e. surface cross-linking reactor) (Yorino, p. 17, paragraph 7), included that presently claimed, to form the method of preparing a superabsorbent polymer, absent evidence to the contrary.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it is the examiner’s position that Yorino meets the claimed method of preparing a superabsorbent polymer, as presently claimed, absent evidence to the contrary. See item #6 of Office action set forth above.
29. Applicants further argue:
“As discussed above, claim 1 is patentable over Yorino. The secondary references, Ahn and Brullot, do not cure the deficiencies as obviating references. Accordingly, Applicant respectfully submits that a prima facie case of obviousness is not established, and requests withdrawal of the rejections.”
Remarks p. 8
The Examiner respectively traverses as follows:
Firstly, Yorino already teaches a method of preparing a superabsorbent polymer according to claim 1.
Additionally, it is noted that while Ahn does not disclose all the features of the present claimed invention, Ahn is used as teaching reference, namely a time (T-20) taken for 1 g of the superabsorbent polymer to absorb 20 g of an aqueous solution of sodium chloride and C12-C14 alcohol ethoxylate is 190 seconds or less, in order to be useful in diapers, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Thirdly, it is noted that while Brullot does not disclose all the features of the present claimed invention, Brullot is used as teaching reference, namely the superadsorbent polymers have an SFC of about 30 to about 80 (*10-7cm3
∙
s/g) or larger, in order to have suitable coatings that control the level of permeability (i.e. SFC), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Therefore, it is the examiner’s position that Yorino in view of Ahn meets the claimed method of preparing a superabsorbent polymer, as presently claimed, absent evidence to the contrary. See item #20 of Office action set forth above.
Therefore, it is the examiner’s position that Yorino in view of Brullot meets the claimed method of preparing a superabsorbent polymer, as presently claimed, absent evidence to the contrary. See item #22 of Office action set forth above.
Conclusion
30. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
31. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Remy Frederic Lalisse whose telephone number is (571)272-1819. The examiner can normally be reached Monday - Friday, 10:00 - 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached at (571)270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.F.L./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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