Appeal No. 2005-2667
Application 08/943,125
containing any “superabsorbent polymer which absorbs greater than about 100 times its weight
in water” in the claimed method of lubricating a surface, encompassed claim 43, and the
lubricating compositions containing any “superabsorbent polymer which absorbs greater than
about 100 times its weight in water and is a polymer of acrylic acid, an acrylic ester,
acrylonitrile, acrylamide, co-polymers thereof or mixtures thereof” in the claimed method of
lubricating a surface, encompassed in the remainder of the rejected claims, would have been
described to one skilled in this art within the meaning of § 102(b) by the Geursen references.
The examiner takes the position that the Geursen references teach compositions which
contain “a superabsorbent material” that is disclosed to be “capable of absorbing and holding a
comparatively large quantity of water” which can be made from absorbent derivatives of
polyacrylic acid including homo- and copolymers derived from acrylic acid and acrylamide
(answer, page 3) (‘223 reference, page 6, ll. 5-32; ‘304 reference, col. 3, ll. 33-67). In the
statement of the ground of rejection, the examiner does not identify any specific polymer
disclosed per se in the Geursen references as meeting the subject claim limitations, but contends
that
Geursen incorporates the teachings of Arroyo et al (Arroyo) EP 0,351,100[4,5] that the
[superabsorbent material] includes the ARIDALL[TM] polymers that are known to
absorbs greater than 100 times its weight in water. Appellant makes admission on
record at page 21 to the bridging paragraph of pages 22-23 of the instant specification
that conventional known [superabsorbent material] that absorbs greater than 100 times
its weight in water of the Admitted Prior Art are the [superabsorbent material] used in
the instant claims. Appellant makes admission on record at line 17 of [page 22] of the
instant specification that the ARIDALL[TM] POLYMERS of the Admitted Prior Art of
Arroyo is the [superabsorbent material] used in the instant claims. [Answer, page 4.]
Contrary to appellant’s contentions (brief, page 14; reply brief, page 2), the Geursen
references teach that insoluble superabsorbent materials that can be used include those
“mentioned in . . . [Arroyo]” which are described as “derived from an aqueous solution
comprising an acrylate polymeric material which combines acrylic acid and sodium acrylate
4 European Patent Application published January 17, 1990.
5 We cannot find Arroyo in a PTO-892, a PTO-1449 or elsewhere in the official electronic file
of the USPTO for this application. Thus, if the examiner cannot locate evidence in the official
electronic file of the USPTO for this application that Arroyo was made of record, the examiner
should make it of record.
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