Ex parte Boluk et al.

Board of Patent Appeals and Interferences

Jul 20, 1998

07942400 (B.P.A.I. Jul. 20, 1998)

Application for patent filed September 9, 1992.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MEHMET Y. BOLUK, MICHAEL S.
JARRELL, BARBARA J. BRYMER
and GERMAIN ARCHAMBAULT
_____________
Appeal No. 96-0126
Application 07/942,4001
______________
ON BRIEF
_______________
Before KIMLIN, GARRIS and PAK, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1 through 10 which are all of the claims in the
application.
The subject matter on appeal relates to a deicer
Appeal No. 96-0126
Application 07/942,400
We note that, on page 3 of the Brief, the appellants request amendments to the2
specification and claim 1 relating to the recited equation for determining the value w.
This requested amendment should have been filed as a separate paper rather than as part
of the Brief (see 37 CFR § 1.4(c) and MPEP § 1206 at page 1200-6 (Rev. 3, July 1997))
and has not been entered (or otherwise responded to) by the examiner. Thus, the
aforementioned equation remains unamended in the form originally filed. Further comments
regarding this equation and the appellants’ requested amendment thereto will be made in
the opinion section of this Brief.
2
composition having improved anti-icing properties consisting
essentially of a glycol, a pH-adjusting agent and a surfactant
in an amount sufficient to cause the composition to have a
certain contact angle on aluminum and a certain surface
tension to thereby provide a spreading wetting value w of 0 to
about -5 dynes per centimeter. Further details of this
appealed subject matter are set forth in representative
independent claim 1 which reads as follows:2
1. A deicer composition having improved anti-icing
properties consisting essentially of from about 25% to about
95% by weight based on the weight of the total composition of
glycol selected from the group consisting of ethylene glycol,
diethylene glycol, triethylene glycol, polyethylene glycol,
propylene glycol, dipropylene glycol, glycerol, and mixtures
thereof; a pH-adjusting agent in an amount sufficient to
provide a pH of 7 to about 10; and at least one nonionic or
anionic surfactant, or mixtures thereof, in an amount
sufficient to cause the composition to have a contact angle 2
on aluminum of 0 to about 35E and a surface tension * of about
15 to about 40 dynes per centimeter, to provide a spreading
wetting value w of 0 to about -5 dynes per centimeter in the
equation w = (cos 2 +1); optionally, a corrosion inhibitor;
the remainder of the composition being water.
Appeal No. 96-0126
Application 07/942,400
The appellants have separately grouped and argued the appealed claims as3
follows: claims 1-8, claim 9 and claim 10; see page 3 of the Brief and page 2 of the
Answer.
3
The following references are relied upon by the examiner
as evidence of obviousness:
Konig-Lamer et al. (Konig-Lamer) 4,358,389 Nov. 9,
1982
Ma et al. (Ma) 4,954,279 Sep.
4, 1990
Seaman 4,978,469 Dec. 18,
1990
Claim 1 stands rejected under 35 USC § 103 as being
unpatentable over Ma, while claims 1 through 10 stand rejected
under 35 USC § 103 as being unpatentable over Ma and Konig-
Lamer in view of Seaman.3
We refer to the Brief and Reply Brief and to the Answer
for a complete exposition of the opposing viewpoints expressed
by the appellants and the examiner concerning the above noted
rejections.
OPINION
For the reasons which follow, we will sustain each of the
above noted rejections, and we will make a new rejection of
Appeal No. 96-0126
Application 07/942,400
4
appealed claims 1 through 10 under the second paragraph of 35
USC § 112 pursuant to our authority set forth in 37 CFR §
1.196(b).
As indicated earlier at footnote 2, the appellants have
attempted to amend the equation defined by independent claim 1
and thus implicitly have acknowledged that the claimed
equation is inaccurate due to the absence of the symbol *.
However, this claim is also inaccurate in that the recitation
?+1? should read -- -1 -- as reflected on pages 8 and 10 of the
specification. In this regard, we understand that the
appellants have unsuccessfully attempted to amend this aspect
of the specification so that the equation on pages 8 and 10
would read ?+1? in accordance with claim 1 rather than ?-1? in
accordance with the original equation disclosure.
Nevertheless, it is clear that the original equation
disclosure is in fact accurate and concommitantly that the
appellants’ attempted amendment to the specification
disclosure would have rendered the equation inaccurate. This
is because the original equation disclosure on specification
pages 8 and 9 (i.e., ?w = * (cos 2 -1)?), when solved with the
appellants’ disclosed and claimed * and 2 values, yields w
Appeal No. 96-0126
Application 07/942,400
5
values within the here disclosed and claimed range (i.e., 0 to
about -5 dynes per centimeter). On the other hand, were the
equation amended so that ?-1? reads ?+1?, the resultant values
for w would be positive in nature and far outside of the
appellants’ disclosed and claimed range.
It is well settled that claim terminology must accurately
define an applicant’s invention in order to comply with the
second paragraph of 35 USC § 112. In re Knowlton, 481 F.2d
1357, 1366, 178 USPQ 486, 492 (CCPA 1973). Because the
equation defined by independent claim 1 is inaccurate in the
two respects discussed above, this claim and all of the other
claims on appeal (each of which refers back to claim 1) are
hereby rejected under the second paragraph of 35 USC § 112 for
failing to particularly point out and distinctly claim the
appellants’ invention. As indicated earlier, we make this new
rejection pursuant to our authority under 37 CFR § 1.196(b).
Normally, a claim which fails to comply with the second
paragraph of § 112 will not be analyzed as to whether it is
patentable over the prior art. This is because such an
analysis would necessarily require speculation with regard to
the metes and bounds of the rejected claim. See In re Wilson,
Appeal No. 96-0126
Application 07/942,400
6
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970) and In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). In
this instance, however, it would be particularly desirable to
avoid the inefficiency of piecemeal appellate review. See Ex
parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984). Therefore,
in our discussion below, we will assess the examiner’s § 103
rejection as though appealed claim 1 properly recited the
equation for w as set forth on specification pages 8 and 10.
On the record before us, the composition defined by
appealed claim 1 does not appear to distinguish over the
composition disclosed by Ma. According to the appellants,
patentee’s composition requires a thickening agent which, it
is argued, is excluded by the claim language ?consisting
essentially of?. We cannot agree.
In the second full paragraph on page 12 of the
specification, the appellants disclose that their composition
?can optionally contain...propylene oxide/ethylene oxide
copolymers... in the range of from about 0.01% to about 5% by
weight based on the total weight of the composition?. This
disclosure leads us to the determination that the presence of
Appeal No. 96-0126
Application 07/942,400
Further regarding this issue, we emphasize that it is the appellants’ burden4
of showing that components in Ma’s composition would materially affect the basic and
novel characteristics of the here claimed composition. In re De Lajarte, 337 F.2d 870,
873-874, 143 USPQ 256, 258 (CCPA 1964).
7
such polymers at such concentrations would not materially
affect the basic and novel characteristics of the appellants’
composition and thus would not be excluded by the ?consisting
essentially of? language of appealed claim 1. In re
Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 896 (CCPA
1963) (?consisting essentially of? renders the claim open to
the inclusion of unspecified ingredients which do not
materially affect the basic and novel characteristics of the
composition). This is significant since the thickening
agents and corresponding concentrations disclosed by Ma
include the appellants’ afore-mentioned propylene
oxide/ethylene copolymers and concentrations (e.g., see lines
56 through 68 in column 5). Thus, notwith-standing the
appellants’ arguments to the contrary, it is clear to us that
appealed claim 1 includes, rather than excludes, these
thickening agent copolymers and concentrations of Ma.4
We recognize that Ma fails to disclose the contact angle,
surface tension and spreading wetting characteristics defined
Appeal No. 96-0126
Application 07/942,400
8
in appealed claim 1. Nevertheless, because the ingredients
and concentrations encompassed by this claim correspond to the
ingredients and concentrations disclosed by Ma, it is fair to
believe that patentee’s compositions contain these recited
characteristics of the here claimed compositions, and it is
fair to require the appellants to shoulder the burden of
proving otherwise. Whether the rejection is based on
?inherency? under 35 USC § 102, on ?prima facie obviousness?
under 35 USC § 103, jointly or alternatively, the burden of
proof is the same, and its fairness is evidenced by the
inability of the Patent and Trademark Office to manufacture
products or to obtain and compare prior art products. In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977).
In light of the foregoing, we hereby sustain the
examiner’s § 103 rejection of claim 1 as being unpatentable
over Ma.
For analogous reasons, we also sustain the examiner’s §
103 rejection of independent claim 1 and dependent claims 2
through 8 as being unpatentable over Ma and Konig-Lamer in
view of Seaman. The appellants’ arguments concerning the
Konig-Lamer and Seaman references are not well taken. In any
Appeal No. 96-0126
Application 07/942,400
9
event, the appellants have stated that
?[t]he Examiner cites Konig-Lamer to add
corrosion inhibitors to the teachings of
Ma, and cites Seaman to add non-ionic
surfactants to the teachings of the other
two references? (Brief, page 8),
and only certain dependent claims require such features which
dependent claims the appellants have grouped as standing or
falling with independent claim 1 (e.g., see footnote 3,
supra).
As for claims 9 and 10, the processes defined thereby are
either taught or would have been suggested by Ma’s explicit
disclosure concerning de-icing and anti-icing. By way of
explanation, the repression recited in claim 9 would
necessarily occur with Ma’s composition since it corresponds
to the here claimed composition as explained previously.
Further, the claim 10 feature of additional de-icing using
less fluid would be practiced under a variety of circumstances
during the process of Ma. For example, this feature would be
practiced at the last stage of a single de-icing operation or
at a subsequent operation wherein a lesser quantity of de-
icing fluid would be used to remove a lesser quantity of ice.
Appeal No. 96-0126
Application 07/942,400
10
For the above stated reasons, we additionally sustain the
examiner’s § 103 rejection of process claims 9 and 10 as being
unpatentable over Ma and Konig-Lumer in view of Seaman.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CHUNG K. PAK )
Administrative Patent Judge )
Appeal No. 96-0126
Application 07/942,400
11
Union Carbide Chemicals
& Plastics Co., Inc.
Law Department - E134
39 Old Ridgebury Road
Danbury, CT 06817-0001