Ex Parte Basheer et al

Board of Patent Appeals and Interferences

Apr 26, 2010

11099399 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RAFIL A. BASHEER
and DEREK B. WORKMAN
____________________

Appeal 2009-009264
Application 11/099,399
Technology Center 1700
____________________

Decided: April 26, 2010
____________________

Before MICHAEL P. COLAIANNI, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

COLAIANNI, 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 1 through 7, 9 through 13, and 15
through 21. We have jurisdiction pursuant to 35 U.S.C. § 6.
We REVERSE.

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STATEMENT OF THE CASE
The subject matter on appeal is directed to, inter alia, a thermosettable
composition.
The Examiner maintains the following rejections:
(1) claims 1-4, 6, 7, and 9-11 under 35 U.S.C. § 102(b) as anticipated by
Andrews (EP 0240459 A1, published Oct. 7, 1987, as translated) as
evidenced by Patnaik (Handbook of Inorganic Chemicals, p. 397, 2003);
(2) claims 1 and 5 under 35 U.S.C. § 102(b) as anticipated by Teiichi (US
2003/0069331, published Apr. 10, 2003) as evidenced by Patnaik;
(3) claims 12 and 13 under 35 U.S.C. § 102(b) as anticipated by Andrews as
evidenced by Patnaik;
(4) claims 15 and 16 under 35 U.S.C. § 102(b) as anticipated by Andrews as
evidenced by Patnaik;
(5) claims 17-19 under 35 U.S.C. § 102(b) as anticipated by Teiichi as
evidenced by Patnaik; and
(6) claims 20 and 21 under 35 U.S.C. § 103(a) as unpatentable over Teiichi
as evidenced by Patnaik and further in view of Andrews.

REJECTIONS (1), (3), and (4)
ISSUE
Did the Examiner reversibly err in finding that Andrews teaches
iodine or iodine-127 covalently bound to a crosslinked resin or crosslinking
agent as required by claims 1, 12, and 15? We decide this issue in the
affirmative.

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FINDINGS OF FACT
1. The Specification discloses that an organo-iodine crosslinking agent
may be triiodophenol. (Spec. 9). The Specification discloses that the
"radiopacifying agents (e.g., organo-iodine crosslinking agents) are . .
. covalently bound to the polymer matrix upon curing." (Spec. 2).
2. Andrews teaches a hardenable mixture containing an epoxy resin, a
latent hardener (which is known to be a curing agent), and an
accelerator. (Andrews, pp. 5-6). Andrews teaches that this
accelerator may be formed by reacting via heat a substituted phenol,
which may be 2, 4, 6 - triiodophenol, with a nitrogen base, which may
be an amine, "until a clear fluid is obtained, which is followed by
cooling, in order to obtain a solid product." (Andrews, p. 16; see also
Andrews, pp. 12-13). In addition, Andrews states that
Another production possibility [of the accelerator:] . . . the
phenol is dissolved in alcohol, generally in methanol, ethanol or
isopropanol, or in hydrocarbon, such as, for example, toluol, at
room temperature or with moderately increased temperature,
and the nitrogen base is slowly added to the obtained solution,
is also preferred. During the addition is formed a precipitate of
the desired product.

(Andrews, p. 16). Andrews teaches that this solid reaction product is
"generally available in salt form." (Andrews, p. 16).
3. Andrews also teaches that "[t]he precipitate is filtered, washed and
dried. The dried product is brought to powdery state before use."
(Andrews, p. 16). In this regard, Andrews teaches that "[t]he excess
amount of amine [is] . . . removed . . . during filtering in the
production of the product." (Andrews, p. 17).
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ANALYSIS AND CONCLUSION
We begin by noting that claim 1 requires, inter alia, that "an organo-
iodine crosslinking agent hav[e] [a] covalently bound iodine-127 isotope."
Claims 12 and 15 require, inter alia, that an iodine or iodine-127 is
covalently bound to a crosslinked resin.
Appellants argue that Andrews fails to disclose these features required
by claims 1, 12, and 15. (App. Br. 7, 13, and 14). We agree.
The Examiner states that Andrews teaches the inventions recited in
claims 1, 12, and 15 because "all of the claimed components [e.g.,
components such as an epoxy resin and triiodophenol] are present in . . .
[Andrews'] composition [and thus] it is inherent that the composition would
behave in the same way as the" claimed compositions. (Ans. 8; see also
Ans. 11). Specifically, the Examiner states that "[i]t is [not] germane to the
[claimed inventions] . . . whether Andrews et al. call[] the organo-iodine
compounds [triiodophenol] hardeners/crosslinking agents or accelerators.
Whichever terminology is used, the compound [triiodophenol] is in the
composition with the epoxy resin." Id. In addition, the Examiner states that
that since "an accelerator accelerates [or affects] the curing reaction . . . it is
a compound/'agent' which affects the curing reaction." (Ans. 8).
Contrary to the Examiner's statements, Andrews does not disclose the
limitations of claims 1, 12, and 15 requiring that iodine or iodine-127 be
covalently bound to a crosslinking agent or a crosslinked resin.
In this regard, given Factual Finding 2 above, Appellants correctly
argue that Andrews does not teach using triiodophenol as a crosslinking
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agent but instead teaches using triiodophenol as an ingredient in the
formation of an accelerator, which is used to accelerate crosslinking. (App.
Br. 9-10). In this regard, Appellants correctly argue that Andrews'
accelerator, which is a solid reaction product brought to a powdery state
formed by reacting triiodophenol (known to be an alcohol) and a nitrogen
base, is "chemically" different from Appellants' crosslinking agent. (Id; see
also FF 2). Indeed, Andrews teaches that its solid reaction product
(accelerator) is "generally available in salt form," which is known to be
ionically bound. (Andrews, p. 16).
Thus, it is unclear to us how Andrews' solid reaction product
(accelerator made from, inter alia, triiodophenol), which is in the form of a
salt and thus is ionically bound, can have iodine-127 covalently bound to a
crosslinking agent (e.g., triiodophenol, which is known to be an alcohol) as
required by claim 1. In addition, because of these differences, it is unclear to
us how Andrews' accelerator, which is chemically different from
Appellants' crosslinking agent, can react with a resin to form a crosslinked
resin that has iodine or iodine-127 covalently bound to it as required by
claims 12 and 15. The Examiner simply has not provided any credible
evidence or persuasive explanation to support the finding that Andrews'
iodine is covalently bound to a crosslinked resin or crosslinking agent as
required by claims 1, 12, and 15.
The Examiner also states that "a residual amount of the preferred
compound will remain in the composition." (Ans. 9). In other words, the
Examiner finds that some of Andrews' unreacted triiodophenol used to form
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the accelerator will remain in Andrews' accelerator when it is brought to a
powdery state. (See also FF 2 and 3).
The Examiner, however, does not direct us to any credible teaching or
persuasive explanation as to how any unreacted triiodophenol will remain in
Andrews' accelerator when it is brought to a powdery state. In this regard,
Andrews teaches that prior to being brought to a powdery state, the product
is "filtered, washed and dried." (FF 3). Thus, it is unclear to us how any
unreacted triiodophenol, which is known to be an alcohol, will remain in
Andrews' accelerator after it has been filtered, washed, and dried.
Indeed, as correctly stated by Appellants, "[i]t is pure speculation as to
whether the accelerators of Andrews et al. would have any residual
unreacted iodo-substituted phenols." (Reply Br. 4).
Thus, it follows that the Examiner reversibly erred in finding that
Andrews teaches iodine or iodine-127 covalently bound to a crosslinked
resin or crosslinking agent as required by claims 1, 12, and 15.

REJECTIONS (2), (5), and (6)

ISSUE
Did the Examiner reversibly err in finding that Teiichi teaches an
iodine or iodine-127 covalently bound to a crosslinked resin or crosslinking
agent as required by claims 1 and 17? We decide this issue in the
affirmative.
PRINCIPLE OF LAW
For Appellants' claimed inventions to be anticipated, the reference
must "direct those skilled in the art to the compound without any need for
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picking, choosing, and combining various disclosures not directly related to
each other.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
ANALYSIS AND CONCLUSION
With respect to rejections (2) and (5), the Examiner states that "[since
Teiichi teaches] in at least two embodiments [i.e., o-iodophenol and p-
iodophenol are listed as examples of phenolic compounds used in the
production of phenolic resins at ¶ [0048]], the instant composition is taught
even though other embodiments are also possible in the reference. Even
though these specific compounds are not used in an example, they are still
disclosed." (Ans. 9). In addition, the Examiner states that "Teiichi et al.
teaches curing agents for epoxy resins fitting the formula (I) on page 4. The
R groups disclosed can be selected from a discreet number of predictable
choices listed in paragraph 43, one of which is a halogen atom [e.g., an
iodine atom]." (Ans. 9).
However, we agree with Appellants' arguments at pages 10 and 11 of
the Appeal Brief that selecting iodine in Teiichi's formula (I) or the
compound containing iodine at Teiichi's paragraph [0048] requires selection
from a "multitude of possibilities." Indeed, arriving at Appellants'
inventions requires picking and choosing in the disclosure of Teiichi. This
picking and choosing is not sufficient to establish a prima facie case of
anticipation.
Thus, it follows that the Examiner reversibly erred in finding that
Teiichi teaches an iodine or iodine-127 covalently bound to an crosslinked
resin or crosslinking agent as required by claims 1and 17.
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With respect to rejection (6), because the Examiner relies on, inter
alia, the findings relating to claim 17 for rejection (6) and does not provide
any explanation as to why the disputed claim limitation would have been
rendered obvious, we reverse the rejection.

ORDER
In summary, all of the rejections made by the Examiner are reversed.
REVERSED

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