Ex Parte Czayka et al

Board of Patent Appeals and Interferences

Jun 19, 2009

10726273 (B.P.A.I. Jun. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL A. CZAYKA,
CARLOS VARGAS-ABURTO, and ROBERTO M. URIBE
____________

Appeal 2009-003319
Application 10/726,273
Technology Center 1700
____________

Decided:1 June 19, 2009
____________

Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 2-4, 10-14, and 19-

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-003319
Application 10/726,273

30. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 2 and 19 are illustrative:
2. A method of making a thickened compound comprising:

preparing a composition consisting essentially of at least one
unsaturated oligomer resin, and at least one unsaturated monomer, and

non-reversibly, partially crosslinking said composition a
predetermined amount by irradiation to provide a stable, partially
crosslinked composition, wherein the viscosity of said composition is
increased and further wherein the partially crosslinked composition is
capable of being further crosslinked.

19. A molding compound consisting essentially of:

at least one unsaturated oligomer resin;

at least one unsaturated monomer; and

optionally, at least one free radical initiator;

wherein said compound is non-reversibly crosslinked by irradiation within a
predetermined amount to provide a stable, partially crosslinked compound,
and wherein the partially crosslinked compound is capable of being further
crosslinked.

The Examiner relies upon the following references in the rejection of
the appealed claims (Ans. 3):
Parker (hereafter Parker ‘544) 3,300,544 Jan. 24, 1967
Parker (hereafter Parker ‘950) 3,429,950 Feb. 25, 1969
Mitani 4,327,145 Apr. 27, 1982
Lane 5,985,785 Nov. 16, 1999
Mathur 6,063,864 May 16, 2000
Miwa (as translated) JP 54120675A Sept. 19, 1979
(hereafter JP ‘675)
2
Appeal 2009-003319
Application 10/726,273

Iwasaki (as translated) JP 401251791A Oct. 06, 1989
(hereafter JP ‘791)

Appellants’ claimed invention is directed to a method of making a
thickened compound from a composition consisting essentially of at least
one unsaturated oligomer resin, at least one unsaturated monomer and,
optionally, a free radical initiator and various other additives. The method
entails partially crosslinking the composition with irradiation.
Appealed claims 19-26 stand rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Mitani or Parker ‘950. Claims 19-26 also stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Parker ‘950 in view of
Parker ‘544, JP ‘675 and JP ‘791. Claims 2-4, 10-14, and 19-30 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Mitani or
Parker ‘950 in view of Mathur, Lane, or JP ‘675.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter is unpatentable over the cited prior art.
Accordingly, we will sustain the Examiner’s rejections for essentially those
reasons expressed in the Answer.
Concerning the § 102 / § 103 rejections of claims 19-26 over Mitani
and Parker ‘950, there is apparently no dispute that both references describe
a composition comprising an unsaturated oligomer resin and an unsaturated
monomer that is non-reversibly crosslinked by irradiation to produce a
partially crosslinked compound. The principal issue on appeal is whether
the “consisting essentially of” language of the claims excludes from the
3
Appeal 2009-003319
Application 10/726,273

recited composition the isocyanates of Mitani and the quinone modifiers of
Parker ‘950.
It is well settled that, when an applicant contends that the claim
language “consisting essentially of” excludes non-recited components that
are disclosed in a prior art reference, the burden is on the applicant to show
that the inclusion of the reference’s components materially affects the basic
and novel characteristics of the applicant’s claimed composition. In re De
Lajarte, 337 F.2d 870, 873-74 (CCPA 1964).
In the present case, Appellants have not demonstrated that the
inclusion of Mitani’s isocyanates or the quinone modifiers of Parker ‘950 in
the claimed composition would materially affect its basic characteristic as a
molding compound. Appellants maintain that the inclusion of other
thermoplastic components would de facto alter the properties of the final
product, e.g., “the inclusion of isocyanates, as in Mitani, carries with it
certain hazards” (App. Br. 11, last para.). However, Appellants have not
established that the presence of such hazards would change the basic
characteristic of the claimed composition as a molding compound. As
pointed out by the Examiner, “virtually all chemicals carry with them a
certain health hazard” (Ans. 7, second para.).
Furthermore, if the test was would the addition of a non-recited
component change the properties of the claimed composition, any distinction
between the claim language “consisting essentially of” and “consisting of”
would be rendered meaningless. Manifestly, the inclusion of a component
not recited in a claimed composition would necessarily change at least some
property to some extent. However, such a change in a property generally
does not alter the basic characteristic of the composition as, in this case, a
4
Appeal 2009-003319
Application 10/726,273

molding compound. Likewise, Appellants have not established that the
quinone modifiers of Parker ‘950 would change the basic characteristic of
the claim composition when added thereto.
Moreover, Appellants have not persuaded us that the exclusion of
Mitani’s isocyanates and the quinone modifiers of Parker ‘950 from a
molding compound comprising an unsaturated oligomer resin and an
unsaturated monomer would have been non-obvious to one of ordinary skill
in the art. It is well settled that the omission of a feature disclosed by the
prior art along with its attendant function is a matter of obviousness for one
of ordinary skill in the art. In re Thompson, 545 F.2d 1290, 1294 (CCPA
1976); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); In re Larson, 340 F.2d
965, 969 (CCPA 1965). Here, Appellants have not shown that the
elimination of the isocyanates of Mitani and the quinone modifiers of Parker
‘950 is not done without loss of the benefits associated therewith.
Appellants also have not rebutted the Examiner’s conclusion that it
would have been obvious for one of ordinary skill in the art to utilize the
electron beam source disclosed by Mathur, Lane, or JP ‘675 to crosslink the
compositions of Mitani and Parker ‘950. We are not persuaded by
Appellants’ argument that Mathur discloses complete polymerization and
crosslinking. We are satisfied that the Examiner properly concluded that it
would have been obvious for one of ordinary skill in the art to determine the
dosage of radiation commensurate with the degree of crosslinking desired.
As a final point, we note that Appellants base no argument upon
objective evidence of non-obviousness, such as unexpected results. Indeed,
as noted by the Examiner, appealed claims 10 and 26 illustrate that
Appellants contemplated the inclusion of a variety of additives in the
5
Appeal 2009-003319
Application 10/726,273

molding compound other than those specifically recited in the independent
claims.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

ssl

HAHN LOESER & PARKS, LLP
ONE GOJO PLAZA
SUITE 300
AKRON, OH 44311-1076
6