Ex parte Bilkadi

Board of Patent Appeals and Interferences

Sep 29, 1998

07857701 (B.P.A.I. Sep. 29, 1998)

Application for patent filed March 25, 1992. Said
application is a continuation of Serial No. 07/401,832, filed
on September 1, 1989, now abandoned, which is a continuation-
in-part of Serial No. 07/180,057, filed on April 11, 1988, now
abandoned.
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journal and (2) is not binding precedent of the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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ZAYN BILKADI
________________
Appeal No. 94-3812
Application 07/857,7011
________________
ON BRIEF
________________
Before RONALD H. SMITH, METZ and JOHN D. SMITH, Administrative
Patent Judges.
METZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
Appeal No. 94-3812
Application 07/857,701
2
examiner's refusal to allow claims 1 through 5, 7 through 11,
13 through 17, 30 and 34. Claims 6, 18 through 29 and 31
through 33, the only other claims remaining in this
application, have been withdrawn
from consideration as claims directed to a previously non-
elected invention and, accordingly, form no issue in this
appeal.
THE INVENTION
The claimed invention is directed to an article which
comprises an unprimed metal surface which is silver, brass,
nickel or aluminum. The metal article has adhering thereto an
abrasion resistant, transparent to visible light, moisture
resistant coating which comprises colloidal inorganic
particles embedded in a cured polymer prepared from a monomer
of a polyethylenically unsaturated amide of acrylic acid.
Claim 1 is reproduced below for a more facile
understanding of appellant's claimed invention.
1. An article comprising an unprimed metal surface
selected from the group consisting of silver, brass,
nickel and aluminum having adhered thereto an abrasion
resistant, transparent to visible light, moisture
resistant coating comprising 33.3 to 66.7% by weight of
Appeal No. 94-3812
Application 07/857,701
3
colloidal inorganic particles embedded in a radiation
cured crosslinked polymer matrix of a polymer formed from
the cure of monomers comprising polyethylenically
unsaturated amide of acrylic acid.
BACKGROUND
Appellant noted this appeal on October 18, 1993 (Paper
Number 20). His brief was filed on December 27, 1993 (Paper
Number 22). The examiner filed his Answer on February 17,
1994 (Paper Number 23). In his Answer, the examiner included
a statement of the outstanding grounds of rejection,
specifically: (1) Claims 30 and 34 stand rejected under 35
U.S.C. 112, first and second paragraphs, based on several
different theories; (2) claims 1 through 5, 7 through 11, 13
through 17, 30 and 34 stand rejected under the judicially
created doctrine of obviousness double patenting; and, (3)
claims 1, 13, 30 and 34 stand rejected as being unpatentable
under 35 U.S.C. § 103 from Kojima et al. considered with
Dessauer and Aoyama et al. Additionally, the examiner entered
a new ground of rejection of claims 1 through 5, 7 through 11,
13 through 17, 30 and 34 as being unpatentable under 35 U.S.C.
§ 103. Appellant was given two months from the date of the
Answer in which to file a reply to the new ground of
rejection. The examiner also noted in his Answer that the
Appeal No. 94-3812
Application 07/857,701
The Program and Resource Administrator's reference to2
the amendment of February 1, 1996 in the Remand is not
understood as there is no amendment of February 1, 1996, in
the record.
4
claims in appellant's appendix to his brief were not the
claims on appeal.
On March 14, 1994, appellant filed a reply brief
responding to the new ground of rejection and a separate
amendment on even date (Paper Numbers 24 and 25,
respectively). On April 21, 1994, the examiner filed a
supplemental Answer to appellant's reply brief wherein the
examiner modified his new ground of rejection (Paper Number
26). The application was received at the Board of Patent
Appeals and Interferences (the Board) on August 5, 1994. On
October 21, 1996, the application was remanded to the examiner
by one of the Board's Program and Resource Administrators for:
(1) the signature of the Supervisory Primary Examiner
approving the new ground of rejection; (2) stating the status
of the amendment of March 14, 1994 ; and, (3) requiring a2
correct appendix to the brief containing the claims on appeal
(Paper Number 27).
The examiner responded to the remand in a paper captioned
"Examiner's Answer" and filed on October 30, 1996, and
Appeal No. 94-3812
Application 07/857,701
The examiner's reference to the Supplemental Examiner's 3
Answer mailed April 2, 1994, is an obvious error. Said
Supplemental Examiner's Answer was mailed on April 21, 1994.
5
required, inter alia, "a new complete brief", including an
appendix with the correct copy of the claims on appeal (Paper
Number 28). On page 2 of Paper Number 28, the examiner
maintained the rejections of the claims 1, 4, 5, 8, 9, 11, 14,
16, 30 and 34 under 35 U.S.C. § 103 for reasons expressed in
Paper Numbers 23 and 26. Appellant was given one month from3
the date of Paper Number 28 to file a new brief "that fully
complies with 37 C.F.R. § 1.192(c)." Appellant timely filed a
"new complete brief" on December 2, 1996 (November 30, 1996,
was a Saturday, Paper Number 29). The appellant's brief was
acknowledged in a paper captioned "THIRD SUPPLEMENTAL
EXAMINER'S ANSWER" and filed on January 24, 1997 (Paper Number
30).
THE REFERENCES
The references of record which are being relied on by the
examiner as evidence of obviousness are:
Dessauer 4,311,783 Jan. 19,
1982
Aoyama et al. (Aoyama) 4,384,011 May 17,
1983
Appeal No. 94-3812
Application 07/857,701
6
Kojima et al. (Kojima) 4,542,088 Sep. 17,
1985
Reilly, Jr. 4,576,975 Mar. 18,
1986
Bilkadi 4,885,332 Dec. 5, 1989
Lucey 5,180,757 Jan. 19,
1993
THE REJECTIONS
Claims 30 and 34 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to satisfy the written description
requirement of the statute with respect to the formula for the
unsaturated amide. Claims 30 and 34 stand rejected under 35
U.S.C. § 112, first paragraph, as lacking an adequate written
description in the specification for the phrase "said monomers
are free of acryloxy silanes and epoxy silanes", and because
the formulae in claims 30 and 34 are not "described" in
appellants' disclosure. Claims 30 and 34 stand rejected under
35 U.S.C.
§ 112, second paragraph, because the claims set forth an
improper divalent -N- radical in the formulae in claims 30 and
34 and, because when "m" is 1.05, the claimed compound is not
a polymer as required by the claim. Claims 1 through 5, 7
through 11, 13 through 17, 30 and 34 stand rejected under the
judicially created doctrine of obviousness double patenting
Appeal No. 94-3812
Application 07/857,701
Appellant's separate arguments concerning Claims 6, 7,4
10, 13, 15, 18, 23 and 24 are moot since these claims are not
rejected under 35 U.S.C. § 103.
7
from the claims of Bilkadi considered with Reilly, Jr. Claims
1, 4, 5, 8, 9, 11, 14, 16, 30 and 34 stand rejected under 35
U.S.C. § 103 as being unpatentable from the disclosure of
Kojima considered with Dessauer and Aoyama. Claims 1, 4, 5,
8, 9, 11, 14, 16, 30 and 34 stand rejected under 35 U.S.C. §
103 as being unpatentable from the disclosure in Lucey
considered with Dessauer.
Except for the arguments at pages 19 and 20 of
appellant's brief (Paper Number 29) concerning the rejection
of claims 4, 5, 11, 14 and 16 under 35 U.S.C. § 103 ,4
appellants have failed to argue with any reasonable degree of
specificity the patentability of any other claim.
Accordingly, except for the above-noted claims, the
patentability of all the claims stands or falls with
independent claim 1 and we shall decide the patentability of
all the claims based on the patentability of claim 1. In re
Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir.
1987); In re Kroekel, 803 F.2d 705, 709, 231 USPQ 640, 642
(Fed. Cir. 1986). See also 37 CFR 1.192(c)(7), first sentence.
Appeal No. 94-3812
Application 07/857,701
In re Berg, 140 F.3d 1428, 1431, 46 USPQ2d 1226, 12295
(Fed. Cir. 1998).
8
THE OBVIOUSNESS DOUBLE PATENTING REJECTION
We shall reverse this rejection. While we agree with the
examiner's implicit conclusion that only a so-called "one-way"
test was necessary here because Bilkadi's assignee, the
Minnesota Mining and Manufacturing Company could have filed
the appealed claims and the Bilkadi claims in one application
and, thus, appellant's assignee effectively controlled the
rate of prosecution , for reasons set forth below we find that5
the examiner has not established a prima facie case of
obviousness.
On page 10 of Paper Number 23, the examiner concedes that
Bilkadi claims neither a metal surface nor a polyacrylamide
radiation cured crosslinked polymer. The examiner relies on
the disclosure in Bilkadi in columns 7 and 8 that his coatings
may be applied to metal and the disclosure in Reilly, Jr. at
column 11, Example 5 where aluminum is allegedly coated with a
polyacryoyl monomer and silica gel as evidence that the
appealed claims would have been obvious from Bilkadi's claims.
Additionally, the examiner considers Reilly, Jr. to teach the
equivalence of polyacryloyl monomers and polyacrylamides for
Appeal No. 94-3812
Application 07/857,701
9
coating compositions for metals containing silica gel. The
examiner concludes that:
It would have been obvious to employ the polyacrylamide
of Reilly, Jr. as the polyacryloyl monomer of Bilkadi
considering the equivalency between the polyacryloyl
esters of Bilkadi and polyacrylamide established in
Reilly, Jr. for equivalent colloidal silica-containing
metal coating formulations.
We disagree.
In the first instance, Reilly, Jr. does not teach the
equivalence of polyacryloyl esters of Bilkadi and
polyacrylamides. Reilly, Jr. describes Micheler ketone
analogs (MKA's) as photoinitiators for addition-polymerizable
compounds. Useful water-insoluble polymerizable compounds
include compounds which could be described as polyacryoyl
esters. The acrylamides disclosed by Reilly, Jr. as useful
are described as water-soluble polymerizable compounds. Thus,
except for the fact that each of the aforementioned compounds
may be polymerized by the MKA's, it is not understood where
the alleged "equivalence" for Bilkadi's coating composition is
found. Further, the silica gel in the example in column 12 of
Reilly, Jr. is only used at a level of about 5 weight percent.
Accordingly, we find that the appealed claims would not have
been obvious from the claims of Bilkadi considered with
Appeal No. 94-3812
Application 07/857,701
10
Reilly, Jr.
THE REJECTIONS UNDER 35 U.S.C. § 112
We agree with the examiner that the formulae recited in
claims 30 and 34 are not described, in the sense of 35 U.S.C.
§ 112, first paragraph, in appellant's original disclosure.
As correctly noted by the examiner, the formula at page 11 of
the specification depicts for the substituent "X" either "-O-"
or "NHR ". The amides claimed in claims 30 and 34 do not2
include a hydrogen attached to the nitrogen atom. Thus, we
agree with the examiner that appellant's original disclosure
neither describes in haec verba nor reasonably conveys to a
person of ordinary skill in the art that appellant was
possessed of the compounds now claimed by them in claims 30
and 34.
In reaching the above conclusion we have not overlooked
appellant's argument that the "-NHR " is a divalent linking or2
bridging group. Nevertheless, if the recited group were a
divalent linking group then "R " would have to be a divalent2
linking group. Mere inspection of the values recited for
"R ", that is, hydrogen or an alkyl group of from 1 to 42
carbon atoms, establishes the error in appellant's position.
Appeal No. 94-3812
Application 07/857,701
We note in passing that in claim 34, "m" is defined as 6
ranging both from 1.05 to 5.95 and from 1 to 6. Indeed,
after the recitation in claim 34 concerning the absence of
silanes, the values for all the claimed substituents are
11
Moreover, the submission of the Hoechst Celanese product sheet
does not support appellant's position. Suffice it to say that
the compounds on the product sheet represent neither compounds
as claimed in claims 30 and 34 nor compounds as described at
page 11 of the specification.
We agree with appellant with respect to the recitation in
claim 34 regarding the absence of acryloxy silanes and epoxy
silanes. We find the disclosure at page 5, lines 24 through
30 reasonably conveys to persons of ordinary skill in the art
that at the time appellant filed his application, he
recognized that acryloxy and epoxy silanes were undesirable
because they were not resistant to steam and extended exposure
to moisture. Accordingly, the limitation in claim 34 excluding
them is "described" in the sense of 35 U.S.C. § 112, first
paragraph.
We find no merit in the examiner's position with respect
to either the so-called "dangling" valence of the substituent
"-NR -" in claims 30 and 34 or with respect to the value of2
"m" in claims 30 and 34. We consider it to be apparent that6
Appeal No. 94-3812
Application 07/857,701
repeated. Thus, we cannot comprehend the scope and content of
what appellant is attempting to claim in claim 34.
We also note that the compounds of claims 30 and 34, 7
designated as amides of acrylic acid, are only acrylamides
when
R is hydrogen.2
12
the so-called "dangling valence" for nitrogen is attached to
the "R -(Y) " moiety. Concerning the value of "m" in claims 301 n
and 34, we find the examiner has misinterpreted appellant's
disclosure at page 12, lines 2 through 6. It is clear that
"m" is only 1.05 to 5.95 when a mixture of acrylic and
methacrylic compounds are used. Only when either an acrylic or
methacrylic compound is used does "m" have a value of two to
six. Accordingly, the rejection under 35 U.S.C. § 112,7
paragraph two, is reversed.
THE REJECTIONS UNDER 35 U.S.C. § 103
We shall affirm the reaction over the combination of
Kojima considered with Dessauer and Aoyama. As correctly
noted by the examiner, Kojima discloses that metals, such as
aluminum plates (column 10, lines 8 through 14), may be coated
with a curable composition comprising a bisacrylamide (column
6, lines 19 through 24) and colloidal silica or alumina
(column 5, lines 49 through 59). Similarly, Dessauer
Appeal No. 94-3812
Application 07/857,701
13
describes coating a metal substrate (column 8, lines 49
through 57) with a curable monomer such as bisacrylamide
(column 6, lines 9 through 52) and silica gel (column 5, lines
19 through 22). Aoyama coats a metal such as copper, iron,
chromium, nickel, stainless steel or aluminum (column 4, lines
63 through 67) with a blend of bisacrylamide column 3, lines
33 through 65) and an inorganic filler such as silica (column
4, lines 38 through 47) in amounts which include the amounts
claimed by appellant.
We agree with the examiner that the subject matter of
claim 1 would have been prima facie obvious to a person of
ordinary skill in the art at the time appellant's invention
was made. Appellant has argued that using the claimed level
(33.3 to 66.7 weight percent) of colloidal silica is neither
taught nor suggested by the prior art. However, the examiner
has performed a calculation using the disclosure of Aoyama
which establishes that by following Aoyama's express
disclosure, the claimed amounts are obtained. While appellant
has had abundant opportunities to address the examiner's
calculations he has declined to do so. Accordingly, we accept
the examiner's calculations as accurate and agree with his
conclusion based on his calculation.
Appeal No. 94-3812
Application 07/857,701
14
Additionally, Dessauer describes "minor amounts", as
appellant acknowledges, and we find the terminology "minor
amount" to mean less than fifty percent. Thus, Dessauer
suggests the claimed loading level of colloidal silica. To
the extent it is appellant's position that Kojima is silent on
the issue of colloidal silica loading, we remind appellant
that where, as here, the rejection is founded on a combination
of references it is improper to consider the references
individually for what they disclose. Rather, the references
must be considered together for what their combined
disclosures would have fairly suggested to a person of
ordinary skill in the art.
Although appellant has recognized in his brief that the
examiner has rejected the claims under 35 U.S.C. § 103 as
being unpatentable from the disclosure of Lucey considered
with Dessauer, we have searched appellant's brief for a
discussion of the appellant's arguments against the rejection
but have found none. Rather, there is a discussion at pages
14 through 17 addressing a rejection of the claims over a
combination of references (Reilly, Jr., taken with Lucey and
Costanza) not before us. It is not until the second full
paragraph on page 17 of the brief that we find any discussion
Appeal No. 94-3812
Application 07/857,701
15
of Lucey and Dessauer. Therein, appellant argues that the
proposed combination of Lucey with Dessauer would not yield
the article of claim 1 because there is no basis for
concluding that substituting for the filler in Lucey the
filler in Dessauer would yield a transparent coating.
Nevertheless, we find nothing in the art relied upon
which would indicate that such a coating is not transparent to
visible light. Appellant's mere argument to the contrary is
not adequate to overcome the fact that Lucey discloses that
filled compositions have good resistance to humidity which is
one of appellant's alleged properties for his coating. We are
satisfied that this property alone would have motivated a
person skilled in the art to have added a filler to Lucey's
curable vinyl monomer compositions. Moreover, Lucey
recognizes that the amount of filler used depends on the
ultimate final use for the composition (column 18, lines 33
through 56). Finally, the disclosure of fumed silica in
column 19, line 40, which is a form of colloidal silica, would
have motivated an ordinarily skilled person in the art to use
the colloidal silica of Dessauer in Lucey's composition.
Accordingly, we shall affirm the rejection of the claims as
unpatentable form the disclosure of Lucey considered with
Appeal No. 94-3812
Application 07/857,701
It is not clear from this record that a prior art8
search in the plumbing fixtures and metallized adhesive
tape art has been made by the examiner.
16
Dessauer.
Notwithstanding our affirmance of the prior art
rejections, we have considered appellant's separate arguments
for patentability at pages 19 and 20 of his brief. We agree
with appellant that neither the plumbing fixture of claim 4
nor the metallized surface of an adhesive tape of claim 5 is
either taught or fairly suggested by the prior art on which
the examiner has relied. Accordingly, the rejections of8
claims 4 and 5 under 35 U.S.C. § 103 are reversed. We do not
find persuasive, however, appellant's argument concerning the
loading level of colloidal silica in claim 11, 14 and 16. We
find the prior art teaches broad levels of addition which
encompass the amount claimed in claims 11 and 16. Claim 14,
however, ultimately depends from claim 3 which depends from
claim 1 and does not recite the higher level of colloidal
silica argued as a patentable distinction.
Having concluded that the examiner has made out a prima
facie case of obviousness with respect to the appealed subject
matter, it is necessary for us to consider appellants'
Appeal No. 94-3812
Application 07/857,701
17
rebuttal evidence, if any, and to reconsider the prima facie
case anew in light of all the evidence. In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). However,
appellants have neither presented any rebuttal evidence nor
advanced any arguments with respect to any probative showing
of surprising or unexpected results represented by objective
evidence in this record. Accordingly, the prima facie case of
obviousness stands unrebutted.
SUMMARY
The rejection of claims 30 and 34 under 35 U.S.C. § 112,
first paragraph, is AFFIRMED. The rejection of claims 30 and
34 under 35 U.S.C. § 112, second paragraph, is REVERSED. The
rejection of claims 1 through 5, 7 through 11, 13 through 17,
30 and 34 under the judicially created doctrine of obviousness
double patenting is REVERSED. The rejection of claims 1, 8,
9, 11, 14, 16, 30 and 34 under 35 U.S.C. § 103 is AFFIRMED.
The rejection of claims 4 and 5 under 35 U.S.C. § 103 is
REVERSED.
The decision of the examiner is AFFIRMED-IN-PART.
Appeal No. 94-3812
Application 07/857,701
18
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R. §
1.136(a).
AFFIRMED-IN-PART

RONALD H. SMITH )
Administrative Patent Judge )
)
)
)
ANDREW H. METZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN D. SMITH )
Administrative Patent Judge
)
AHM/gjh
Appeal No. 94-3812
Application 07/857,701
19
Mark A. Litman
3M Office of Intellectual
Property Counsel
P.O. Box 33427
St. Paul, MN 55133-3427