DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
The disclosure is objected to because of the following informalities:
The text in Table 1 is excessively blurry. A more legible copy is required.
In Paragraph [0120], under the heading “<Comparative Example 1>, the procedure begins, “The procedure of Comparative Example 1 was repeated, except…”. Since the procedure in Paragraph [0120] is itself describing Comparative Example 1, the recited phrase appears to refer to Comparative Example 1 in error.
Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Miyake (U.S. 2005/0113252 A1).
Regarding claim 1, Miyake teaches a water-absorbent resin composition (Miyake, [0043]-[0168]), comprising water-absorbent resin particles and an activated carbon disposed on surfaces of the water-absorbent resin particles (Miyake, [0108]-[0110], [0166]).
Miyake does not explicitly teach that when, while stirring 50 g of physiological saline at 24.9°C at 600 rpm in a 300 mL thermally insulated container, 10 g of the water-absorbent resin composition is added and swollen, the water-absorbent resin composition has a heat release rate of 0.10°C/sec or more and 1 .00°C/sec or less until temperature increases by 2°C. However, Miyake’s water-absorbent resin composition is produced in accordance with the conditions described in the instant Specification and has the disclosed compositional properties:
Condition
Instant Specification
Miyake
Monomer
Preferred: (meth)acrylic acid and salts thereof in an amount of 70 to 100 mol% of water-soluble ethylenically unsaturated monomers ([0052])
Preferably bases of acrylic acid and/or aqueous salts of acrylic acid in an amount of 80 to 100 mol% among monomers ([0046])
Monomer degree of neutralization
Preferably 50 to 80 mol% ([0055])
Preferably 50 mol to 99 mol% ([0047])
Polymerization
method
Aqueous polymerization, emulsion polymerization, or reversed phase suspension polymerization ([0048])
Preferably aqueous solution polymerization ([0044])
Internal crosslinking agent
(poly)ethylene glycol diglycidyl ether, (poly)propylene glycol diglycidyl ether, and (poly)glycerin diglycidyl ether are “still more preferably used” ([0058]) in an amount of preferably 0.000001 to 0.02 mol/mol monomer ([0059])
Polyethylene glycol diacrylate in an amount of, e.g., 0.0003 mol/mol monomer ([0151])
Surface crosslinking agent
Preferred are polyglycidyl compounds including (poly)ethylene glycol diglycidyl ether ([0077]) in an amount of preferably 0.00001 to 0.01 mol/mol monomer ([0078])
Multivalent alcohols selected from a list including (poly)ethylene glycol diglycidylether ([0073]) in an amount of 0.001 to 10 parts by weight with respect to the water-absorbing resin particles ([0078])
Activated carbon
Preferably has a median particle size of from 1 to 500 μm ([0021]) and is present in an amount of preferably 0.05 to 10% by mass ([0028])
Additive selected from a list including activated carbon ([0110]) in an amount of “especially preferably” 0.1-3% by weight ([0117]); exemplified as 0.5% by weight 100μm activated carbon ([0166])
Median resin particle diameter
“Even more preferably” 280 to 450 μm ([0045])
Weight-average of “Especially preferably” 350 to 450 μm ([0121])
Saline water retention
“Still more preferably” 30 g/g or more and 50 g/g or less ([0040])
“Especially preferably” 34 g/g or more; exemplified as 36 g/g ([0166])
Because Miyake’s water-absorbent resin composition is substantially identical in composition and is prepared using substantially identical conditions as the instant invention, Miyake’s water-absorbent resin composition would behave in the same way as instantly claimed when subjected to swelling in physiological saline, including the claimed heat release rate. It has been held that where claimed and prior art products are produced by identical or substantially similar methods, a prima facie case of anticipation or obviousness has been established. MPEP 2112.01, citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). It would not be reasonable to expect different results when performing identical or at least substantially similar steps. Accord, MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (stating that “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”). See also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (stating the “general rule that merely discovering and claiming a new benefit of an old process cannot render the [old] process again patentable”).
In the alternative where Miyake’s conditions for preparing the water-absorbent resin composition only produce a range of heat release rates close to or overlapping with those of the instant invention, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to have selected the overlapping portion of the heat release rates because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 2, Miyake teaches or, alternatively, renders the water-absorbent resin composition according to claim 1 obvious, as discussed above, wherein the activated carbon content is 0.5% by mass (Miyake, [0116] of Example 3, referring to [0157] of Example 1, where 0.5 parts by weight of activated carbon is relative to 100 parts by weight resin).
Regarding claims 3 and 6, Miyake teaches or, alternatively, renders the water-absorbent resin composition according to claims 1 and 2 obvious, as respectively discussed above, wherein the activated carbon has an average particle size of 100 μm (Miyake, [0166]). While Miyake does not explicitly teach that the activated carbon has a median particle size of 1 μm or more and 500 μm or less, the majority of Miyake’s particles would be in sizes around 100 μm, with a median value of around 100 μm and certainly within the claimed range of 1 μm or more and 500 μm or less. Miyake’s average particle size of 100 μm therefore discloses the claimed range with sufficient specificity to constitute anticipation. See MPEP 2131.03.II. For this not to be the case, Miyake’s particle size distribution would need to have many particles below 1 μm and many particles above 500 μm. There is no reason to expect that Miyake’s activated carbon would have such an unusual particle size distribution.
Regarding claims 4 and 7, Miyake teaches or, alternatively, renders obvious an absorbent material comprising the water-absorbent resin composition (Miyake, [0178], “The particle-shape water-absorbing resin material obtained by the producing method according to the present invention, which has an excellent absorbing property, is suitably applicable to, for example: hygienic/sanitary materials (body fluid absorbing products)”) according to claims 1 and 2, respectively (see rejection of claims 1 and 2 under 35 U.S.C. 102/103 above).
Regarding claims 5 and 8, Miyake teaches or, alternatively, renders obvious an absorbent article comprising the absorbent material according to claims 4 and 7, respectively (Miyake, [0178], incontinent pad; see rejection of claims 4 and 7 under 35 U.S.C. 102/103 above).
Conclusion
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
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