Ex Parte Boulineau et al

Board of Patent Appeals and Interferences

Jun 29, 2004

09562686 (B.P.A.I. Jun. 29, 2004)

1 The appellants inadvertently stated in their Brief that
“[t]his is an appeal from the Office action mailed on September
4, 2002 finally rejecting claims 27-36, all of the claims in the
Application.” The Notice of Appeal entered May 19, 2003 clearly
indicated that the appellants appeal “from the last decision of
the examiner” and that the last decision of the examiner involved
(continued...)
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL S. BOULINEAU
and THOMAS J. MORAVEC
____________
Appeal No. 2004-0676
Application No. 09/562,686
____________
ON BRIEF
____________
Before PAK, TIMM, and JEFFREY T. SMITH, Administrative Patent
Judges.
PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 27 through 37, which are all
of the claims pending in the above-identified application.1
Appeal No. 2004-0676
Application No. 09/562,686
1(...continued)
the rejections of claims 27 through 37 which are all of the
claims in the application. The appellants also questioned the
propriety of the examiner’s rejections of claims 27 through 37 in
their Brief and Reply Brief. Accordingly, we presume that the
appellants’ appeal is directed to the examiner’s final rejection
of claims 27 through 37.
2
APPEALED SUBJECT MATTER
Claim 27 is representative of the subject matter on appeal and
reads as follows:
27. A method of preparing water-repellent coatings on optical
substrates comprising thermal vapor coating said optical substrate
with at least one organosilane compound in a vacuum, wherein said
thermal vaporization comprises:
impregnating a non-sintered porous inorganic oxide matrix
material with at least one compound selected from the group
consisting of silane, siloxane and siloxazane compounds;
evaporating the at least one organosilane compound from the
matrix material in a vacuum of no more than 10-3 mbar at 200/C to
600/C; and
depositing the evaporated at least one organosilane compounds
on the surface of an optical substrate heated to 30/C to 300/C;
REFERENCE
The examiner relies on the following prior art references:
Tully et al. (Tully) 4,387,195 Jun. 7, 1983
Dombrowski et al. (Dombrowski) 5,853,800 Dec. 29, 1998
Appeal No. 2004-0676
Application No. 09/562,686
2 Except for the rejections set forth below, the examiner
has withdrawn those rejections set forth in the final Office
action mailed February 20, 2003. See the Answer, pages 3 and 4.
3
REJECTION
The appealed claims stand rejected as follows2:
1) Claim 31 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as
their invention;
2) Claims 27 through 37 under 35 U.S.C. § 112, first paragraph,
as failing to provide written description for the subject
matter presently claimed; and
3) Claims 27 through 31 under 35 U.S.C. § 103 as unpatentable
over the combined disclosures of Dombrowski and Tully.
OPINION
We have carefully reviewed the claims, specification and prior
art, including all of the evidence and arguments advanced by both
the examiner and the appellants in support of their respective
positions. This review has led us to conclude that the examiner’s
Sections 112 and 103 rejections are well founded. Accordingly, we
affirm the examiner’s decision rejecting the claims on appeal under
Sections 112 and 103. However, pursuant to the provision of 37 CFR
Appeal No. 2004-0676
Application No. 09/562,686
4
§ 1.196(b)(2003), we denominate our affirmance of the examiner’s
Section 103 rejection as including a new grounds of rejection. Our
reasons for these determinations follow.
We turn first to the examiner’s rejection of claim 31 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicants regard as their invention. According to the
examiner (Answer, page 5):
Claim 31 depends from claim 17, a cancelled claim. As
such, it is impossible for one of ordinary skill in the
art to determine the metes and bounds of the claimed
subject matter.
The appellants do not dispute this determination. See the Brief
and the Reply Brief in their entirety. Accordingly, we affirm the
examiner’s decision rejecting claim 31 under 35 U.S.C. § 112,
second paragraph.
Normally, a claim which fails to comply with the second
paragraph of § 112 will not be analyzed as to whether it complies
with other statutory grounds for patentability since to do so would
of necessity require speculation with regard to the metes and
bounds of the claimed subject matter. See In re Steele, 305 F.2d
859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962); In re Wilson, 424
F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Nevertheless, in
Appeal No. 2004-0676
Application No. 09/562,686
5
this instance, in an effort to avoid piecemeal appellate review and
to avoid judicial and administrative inefficiency (see Ex parte
Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993) and Ex
parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984)), we will presume
that claim 31 is dependent claim 27, the only independent claim in
this application.
We turn next to the examiner’s rejection of claims 27 through
37 under 35 U.S.C. § 112, first paragraph, as failing to provide
written description for the subject matter presently claimed.
According to the examiner (Answer, page 4):
Claim 27 recites “...in a vacuum of no more than 10-3
mbar...” at line 9 of the claim. Originally-filed claim
2 and page 12 of the specification disclose a pressure of
from 10-3 to 10-5 mbar. This range does not include
pressures below 10-5 mbar. The originally-filed
disclosure does not reasonably convey that the inventors
had possession of pressures from <10-5 mbar to 0 mbar.
In response, the appellants argue (Brief, page 11) that:
The maximum limit of 10-3 Mbar is clearly disclosed and a
preferred range of 10-3 Mbar to 10-5 Mbar was specifically
disclosed. The minimum number is a matter of convenience
and to one skilled in the art is an arbitrary point. As
the only critical limit is the maximum point and the
other point is finite (the pressure cannot go below 0.0
Mbar), the concept of less than 10-3 Mbar is clearly
deisclosed [sic., disclosed] in the specification and the
term should be acceptable.
Appeal No. 2004-0676
Application No. 09/562,686
6
We initially note that the written description requirement
found in the first paragraph of 35 U.S.C. § 1l2 is separate from
the enablement requirement of that provision. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561-63, 19 USPQ2d 1111, 1115-17 (Fed.
Cir. 1991); In re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472
(CCPA 1977), cert. denied, 434 U.S. 1064 (1978). As the court
stated in In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
(Fed. Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of
the later claimed subject matter, rather than the
presence or absence of literal support in the
specification for the claimed language. (citations
omitted)
The fact that one skilled in the art might realize from reading a
disclosure that something is possible is not a sufficient
indication to that person that the something is a part of an
appellant's disclosure. See Barker, 559 F.2d at 593, 194 USPQ at
474. Precisely how close the original description must be to the
claimed subject matter to comply with the written description
requirement must be determined on a case-by-case basis.
In the present case, there is no dispute that the claim
limitation “a vacuum of no more than 10-3 mbar” embraces a pressure
Appeal No. 2004-0676
Application No. 09/562,686
7
range below 10-5 mbar, i.e., <10-5 mbar to 0 mbar. However, the
specification, as originally filed, discloses (page 17, lines 3-6)
that:
On reaching a stable final vacuum, for instance in the
range between 10-3 and 10-5 mbar, the evaporation of the
compound of the formula I, II, III and/or IV [in a porous
inorganic oxide matrix material] is brought about by
heating at temperatures of from 200 oC to 600 oC, or 300
oC to 500 oC.
This original specification then goes on to exemplify evaporating
the claimed compound in a porous inorganic oxide matrix material
within such pressure range, i.e., a pressure of 3 x 10-5 mbar. See
page 18. There simply is nothing in the application disclosure, as
originally filed, which reasonably conveys the concept of employing
a pressure range of 10-5 mbar to 0 mbar (included by the claimed
language “no more than 10-3 mbar”) to evaporate the claimed
compound in a porous inorganic oxide matrix material to coat
optical substrates. See Lockwood v. American Airlines Inc., 107
F.3d 1565, 1571, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997)(“One shows
that one is ‘in possession’ of the invention by describing the
invention, with all its claimed limitations, not that which makes
it obvious...”); In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578,
1583, citing In re Wertheim, 541 F.2d 257, 263-64, 191 USPQ 90, 97
(CCPA 1976)(Where embodiments of the claimed invention encompassed
Appeal No. 2004-0676
Application No. 09/562,686
8
by the claims “are completely outside of the scope of the
specification, then the examiner or the Board need only establish
this fact to make out a prima facie case.”). Indeed, the
appellants do not refer to any specific sections of the original
disclosure to demonstrate that such concept is supported by the
written description therein. See the Brief and the Reply Brief in
their entirety.
It follows that the claims on appeal, by virtue of including
the pressure of <10-5 mbar to 0 mbar not disclosed in the original
disclosure, violate the written description requirement of 35
U.S.C. § 112, first paragraph. Hence, we affirm the examiner’s
decision rejecting claims 27 through 37 under 35 U.S.C. § 112,
first paragraph, as lacking written descriptive support for the
invention presently claimed.
We turn next to the examiner’s rejection of claims 27 through
31 under 35 U.S.C. § 103 as unpatentable over the combined
disclosures of Dombrowski and Tully. The appellants do not dispute
the examiner’s finding that Dombrowski teaches:
Dombrowski teach a method of preparing water-
repellent coatings on optical substrates comprising
thermal vapor coating said optical substrate with
organosilane compounds in a vacuum [claim 1, c. 5, 1.30 -
c. 6, 1. 2], wherein said thermal vaporization comprises:
Appeal No. 2004-0676
Application No. 09/562,686
9
impregnating a porous inorganic oxide matrix
material with silane, siloxane, and/or siloxazane
compounds [claim 1, c. 6, 11. 5-6 and c. 1, 11. 53 - 55];
evaporating the compounds from the matrix material
in a vacuum of from 10-3 to 10-5 mbar at 300/ to 500/C
[claim 1. c. 6, 11. 20-21].
depositing the evaporated compounds on the surface
of an optical substrate heated to 50/ to 300/C [claim 1,
c. 6, 11. 20-21].
The examiner notes that the organosilicon compounds of
formula (I) may be silanes or siloxanes, with typical
examples being perfluoroalkoxylanes [c. 2, 1. 58 - c. 3,
1. 12]. The temperature range of 300/C to 500/C, taught
by Dombrowski, lies within the claimed range of 200/ to
600/C. The temperature range of 50/ to 300/C, taught by
Dombrowski et al., also lies within the claimed range of
30/ to 300/ C, sharing an endpoint at 300/C. Also, the
range of from 10-3 to 10-5 overlaps that of no more than
10-3 claimed, sharing an endpoint at 10-3.
The appellants only argue that (1) Dombrowski does not teach
or would not have suggested employing “a non-sintered porous
inorganic oxide matrix material” in the above vapor coating method
as required by the claims on appeal and (2) the showing in the
specification and the Rule 132 declaration of record demonstrates
that the claimed invention imparts unexpected results, thereby
rebutting any inference of obviousness. See the Brief and the
Reply Brief in their entirety. We do not agree.
As indicated supra, Dombrowski specifically teaches employing
“a porous inorganic oxide matrix” to the coat optical substrate
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Application No. 09/562,686
10
with the claimed compounds. Although Dombrowski exemplifies a
porous inorganic oxide matrix made of a sintered inorganic oxide
material, it does not limit its porous inorganic oxide matrix to
only those made of sintered inorganic oxide materials. See column
3, lines 44-55 and column 4, lines 63-64. Had Dombrowski intended
to limit its porous inorganic oxide matrix to those made of
sintered inorganic oxide materials, it would have included the word
“sintered” to the phrase “porous inorganic oxide matrix” as is done
in reference to a porous matrix used in a prior vapor coating
process at column 2, lines 15-17. However, Dombrowski employs the
generic terminology “a porous inorganic oxide matrix” in its
specification and claims to encompass both sintered and non-
sintered inorganic oxide matrix materials. Thus, from our
perspective, Dombrowski as a whole would have suggested to one of
ordinary skill in the art the employment of either a sintered or
non-sintered porous inorganic oxide matrix in its vapor coating
process within the meaning of 35 U.S.C. § 103. See, e.g., Merck &
Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807, 10 USPQ2d
1843, 1846 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re
Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962).
Appeal No. 2004-0676
Application No. 09/562,686
11
Having determined that Dombrowski would have rendered the
claimed subject matter prima facie obvious, we review the showing
in the specification and the Rule 132 declaration referred to by
the appellants to determine whether the claimed subject matter
imparts unexpected results. Our review supports the examiner’s
factual finding that the showing is not commensurate in scope with
the claims on appeal. See In re Clemens, 622 G.2d 1029, 1035, 206
USPQ 289, 296 (CCPA 1980); In re Greenfield, 571 F.2d 1185, 1189,
197 USPQ 227, 230 (CCPA 1978). While the showing is limited to
employing two specific porous inorganic oxide matrix materials
adsorbed with a specific organosilane compound under specific
coating conditions to produce two specific coated substrates, the
claims on appeal are not so limited. The appellants simply have
not proffered sufficient factual evidence to demonstrate that the
showing limited to employing specific porous compositions,
organosilane compound and coating conditions is predictive of those
employing materially different porous inorganic oxide materials
having different porosities, materially different organosilane
compounds and patentably different vapor coating conditions covered
by the claims on appeal.
Appeal No. 2004-0676
Application No. 09/562,686
12
In view of the foregoing, we affirm the examiner’s decision
rejecting claims 27 through 31 under 35 U.S.C. § 103. However,
pursuant to the provision of 37 CFR § 1.196(b), we denominate this
affirmance as including a new ground of rejection inasmuch as we
rely on a new rationale based on Dombrowski alone in affirming the
aforesaid Section 103 rejection.
As a final point, in the event of further prosecution, the
examiner is to review the content of the English translation of JP
05-215905 referred to in Dombrowski to determine whether it teaches
or would have suggested the coating compounds recited in claims 32
through 37.
CONCLUSION
In summary, we affirm the examiner’s decision rejecting claim
31 under 35 U.S.C. § 112, second paragraph, claims 27 through 37
under 35 U.S.C. § 112, first paragraph, and claims 27 through 31
under 35 U.S.C. § 103. However, as indicated supra, we denominate
our affirmance of the aforementioned Section 103 rejection as
including a new grounds of rejection.
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b). 37 CFR
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Application No. 09/562,686
13
§ 1.196(b) provides, “[a] new ground of rejection shall not be
considered final for purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant(s) may file a single request for rehearing
within two months from the date of the original decision
. . . .
37 CFR § 1.196(b) also provides that the appellant(s), WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection
to avoid termination of proceedings (37 CFR § 1.197(c)) as to the
rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the claims
so rejected, or both, and have the matter reconsidered by
the examiner, in which event the application will be
remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant(s) elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
Appeal No. 2004-0676
Application No. 09/562,686
14
the examiner unless, as a mere incident to the limited prosecution,
the affirmed rejection is overcome.
If the appellant(s) elect prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to the Board of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED; 196(B)
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
Appeal No. 2004-0676
Application No. 09/562,686
15
CKP/lp
Appeal No. 2004-0676
Application No. 09/562,686
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