Ex parte Allen et al.

Board of Patent Appeals and Interferences

Aug 13, 1998

07793889 (B.P.A.I. Aug. 13, 1998)

Application for November 18, 1991. According to the appellants the1
application is a continuation-in-part of Application 07/632,032, December 21, 1990; which
is a continuation of Application 07/318,536, filed March 3, 1989, now U.S. Patent No.
5,026,624, issued June 25, 1991; which is a continuation-in-part of Application
07/292,173, filed December 30, 1988, now U.S. Patent No. 4,940,651, issued July 10,
1990.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT D. ALLEN, RICHARD A. DAY, DONALD H. GLATZEL,
WILLIAM D. HINSBERG, JOHN R. MERTZ, DAVID J. RUSSELL,
and GREGORY M. WALLRAFF
_________
Appeal No. 95-4203
Application 07/793,8891
_________
ON BRIEF
_________
Before DOWNEY, JOHN D. SMITH and GARRIS, Administrative Patent Judges.
DOWNEY, Administrative Patent Judge.
Appeal No. 95-4203
Application 07/793,889
Appellants state on page 10 of their amended brief that “None of the2
references teach a 28 to 57% [sic] polyol resin and a 43-72% tetrabromo resin as recited
in claim 21. This singular statement does not constitute an argument in support of the
group claims 21-24 vis-a-vis the obviousness rejection made by the examiner.
2
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-
24. Claims 25-42 remaining in the application are drawn to a non-elected invention and
accordingly are not before us.
The subject matter on appeal is directed to photoimageable cationically
polymerizable epoxy based coating material. 2
In their brief, appellants have grouped (1) claims 1, 2, 4-16 and 17-20
together (2) claim 3 on its own and (3) claims 21-24 together. However, appellants did not
present any arguments why the claims as grouped are separately patentable. The
examiner has correctly noted appellants’ failure in the examiner’s answer (page 2) and
appellants have not challenged the examiner’s position by way of petition under 37 CFR §
1.181. Accordingly, we will decide the appeal and decline to consider the patentability of
the claims separately in reaching our decision. Ex parte Schier, 21 USPQ2d 1016, 1019
(Bd. Pat. App. & Int. 1991); Ex parte Ohsumi, 21 USPQ2d 1020, 1022 (Bd. Pat. App. & Int.
1991). Having found that all the claims stand or fall together, we direct our attention to
claim 1 which is illustrative of the invention and reads as follows:
Appeal No. 95-4203
Application 07/793,889
3
1. A photosensitive cationically polymerizable epoxy based imaging system
comprising:
an epoxy based resin system having solids comprising between about 10%
and about 90% by weight of a polyol resin having a molecular weight between 60,000 to
about 130,000;
between about 10% and about 90% by weight of a brominated epoxy resin
of a low molecular weight;
from about 0.1 to about 15 parts by weight of a cationic photoinitiator
capable of initiating polymerization in said epoxidized resin system upon exposure to
actinic radiation;
said resin system being further characterized by having an absorbance of
light in the 330 to 700 nm region of less than 0.1 for a 2 mil thick film.
The references relied upon by the examiner are:
Crivello 4,138,255 Feb. 6, 1979
Santorelli 4,578,425 Mar. 25, 1986
Bauer 4,693,961 Sep. 15, 1987
I.
Claims 1-24 stand rejected under 35 U.S.C. § 112, first paragraph, for lack
of description of the claimed molecular weight range of 60,000 - 130,000.
The specification discloses molecular weight ranges of 40,000 -130,000 and 60,000-
90,000. The examiner concedes that the claimed range is within the disclosed ranges in
the instant specification, however he contents that the range of 60,000-130,000 is not.
We reverse this rejection. 35 U.S.C. § 112 does not require that the
invention claimed be described in ipsis verbis in order to satisfy the description
Appeal No. 95-4203
Application 07/793,889
4
requirement. In re Lukach, 442 F.2d 967, 969, 169 USPQ 795, 796 (CCPA 1971). The
examiner argues lack of literal support for the claimed molecular weight range and
provides no reasons why a description not in ipsis verbis is insufficient. The examiner
also argues that the claimed range was deemed by appellants to be critical. However, the
examiner does not provide any evidence to support this argument. In our view, the
disclosure of molecular weight ranges of 40,000 - 130,000 and 60,000 - 90,000 is
sufficient to establish that the range of 60,000 - 130,000 is part of appellants’ invention. In
re Blaser, 556 F.2d 534, 538, 194 USPQ 122, 125 (CCPA 1977); In re Eickmeyer, 602
F.2d 974, 981-982, 202 USPQ 655, 662-663 (CCPA 1979); In re Wertheim, 541 F.2d
257, 265, 191 USPQ 90, 98 (CCPA 1976).
II.
Claims 1-24 stand rejected under 35 U.S.C.§ 103 as unpatentable over
Bauer in view of Santorelli and Crivello.
After careful consideration of the arguments of appellants and the examiner
and of the record before us, we find ourselves in agreement with examiner that appellants’
claimed invention would have been obvious to one of ordinary skill in the art at the time of
appellants’ invention over the applied prior art. Accordingly, the aforementioned rejection
will be affirmed.
Appeal No. 95-4203
Application 07/793,889
A discussion of Santorelli is not necessary of our decision.3
5
Bauer teaches epoxy mixture photopolymerizable compositions containing
products of epichlorohydrin and bisphenol A, photinitiator, and other conventional
additives. Bauer’s epoxy resin has a molecular weight of 20,000 to 60,000 (column 1, line
59). This molecular weight touches the claimed range of between 60,000 to about
130,000. Bauer also teaches the use of brominated epoxies at column, 2, lines 43-47
(see also Example 4 at column 7). Bauer does not teach the use of a cationic
photoinitiator. Crivello teaches an epoxy photopolymerizable compositions containing
products of epichlorhydrin and bisphenol A are polymerized with cationic photoinitiators. It
is the examiner’s position that one of ordinary skill in this art would have found it obvious to
cationically cure the Bauer epoxy resin mixture with a reasonable expectation of success. 3
We agree.
Appellants argue that Bauer is deficient because he lacks a teaching to use
a cationic photoinitiator for his epoxy resin system, he includes free radical initiator in his
system and he employs a epoxy resin having a molecular wight of 20,000 -60,000.
Appellants also argue That Crivello dose not teach combining specific epoxy resins of the
claimed invention with the Crivello photoinitiator. Lastly, they argue that there is no
suggestion to combine Crivello’s cationic photinitiator with Bauer’s free radical
polymerization system. We do not find appellants’ argument persuasive. Initially we note
Appeal No. 95-4203
Application 07/793,889
6
that Bauer broadly teaches the addition of a photoinitiator to his epoxy system. He
teaches that these substances are known and he then identifies various compounds as
examples. This list, in our view, is exemplary and not-limited to those compounds named.
Bauer’s epoxy resin materials, like that of Crivello, include epichlorohydrin-bisphenol A
products and are useful in photoimaging systems (See Bauer column 4, lines 11-21 and
examples 1-14 and Crivello column 5, lines 20-25 and example 7). Hence, in our view
there is ample motivation to employ any and all known photoinitators, inclusive of Crivello’s
cationic photoinitators, for epoxy resin materials from the teachings of the applied prior art
with the reasonable expectation of success. Appellants’ view that it is required that a
second reference suggest the modification of the first reference is without merit. The
suggestion to modify the art to produce the claimed invention need not be expressly stated
in one or all of the references used to show obviousness. “Rather the test is what the
combined teachings of the references would have suggested to those of ordinary skill in
the art.” In re Keller, 642 F.d. 413,
425, 208 USPO 871,881 (CCA 1981) Appellants’ argument that Bauer includes a free
radical initiator in his epoxy system is not persuasive. The instant claims by virtue of the
term “comprising” do not exclude the addition of a free radical initiator. In re Baxter, 656
F.2d 679, 686, 210 USPQ 795, 802 (CCPA 1981). As noted previously, the upper end of
Appeal No. 95-4203
Application 07/793,889
Bauer’s teaching of an epoxy resin of molecular weight of 20,000 to 60,0004
is sufficiently close to a claimed molecular weight range of “greater than 60,000...” to have
rendered the claimed molecular weight prima facie obvious.
Titanium Metals Corp v. Banner, 778 F.d 775, 782-783, 227 USPQ 773, 779
(Fed. Cir. 1985).
7
Bauer’s epoxy resin molecular weight touches that of appellants’ claimed lower end and
thus Bauer employs an epoxy resin within the scope of the claims. 4
Based on the foregoing, we agree with the examiner’s conclusion that one
having ordinary skill in the art would have found the claimed subject matter prima facie
obvious within the meaning of 35 U.S.C. § 103. Appellants advance no arguments with
respect to objective evidence of nonobviousness. In re Johnson, 747 F.d 1456, 1460, 223
USPQ 1260, 1263 (Fed. Cir. 1984).
In summary, the 35 U.S.C. § 112 rejection is reversed and the 35 U.S.C.
§ 103 rejection is affirmed .
Appeal No. 95-4203
Application 07/793,889
8
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136 (a).
AFFIRMED
MARY F. DOWNEY )
Administrative Patent Judge )
)
)BOARD OF PATENT
JOHN D. SMITH )
Administrative Patent Judge ) APPEALS AND
)
)INTERFERENCES
BRADLEY R. GARRIS )
Administrative Patent Judge )
Appeal No. 95-4203
Application 07/793,889
9
Richard M. Goldman
International Business Machines Corp.
Intellectual Property Law N50/251-2
1701 North Street
Endicott, NY 13760