Ex parte Gibson

Board of Patent Appeals and Interferences

Apr 13, 1998

08083987 (B.P.A.I. Apr. 13, 1998)

Application for patent filed June 28, 1993.1
-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journal and (2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte CHARLES A. GIBSON
________________
Appeal No. 97-0113
Application No. 08/083,9871
________________
ON BRIEF
________________
Before WINTERS, Administrative Patent Judge, McKELVEY, Senior
Administrative Patent Judge, and PAK, Administrative Patent
Judge.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
This appeal is from a decision of the primary examiner
rejecting claims 2, 3, 5, 6, 8 and 16 under 35 U.S.C. § 103 as
unpatentable over (1) the combined disclosures of Niebruegge
et al. (U.S. Patent No. 4,731,165) and Latimer (U.S. Patent No.
4,956,506); and (2) the combined disclosures of Moss et al. (U.S.
Appeal No. 97-0113
Application No. 08/083,987
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Patent No. 3,131,132), Niebruegge et al. and Latimer.
Technically, claim 1 also remains in the application, although
applicant has withdrawn this claim from the appeal. See the
Appeal Brief, page 2, first paragraph. Accordingly, the appeal
with respect to claim 1 is dismissed. On return of this
application to the Examining Group, both applicant and the
examiner should ensure that claim 1 is canceled from the
application.
On consideration of the record, including applicant's Appeal
Brief (Paper No. 19), the Examiner's Answer (Paper No. 20) and
the Reply Brief (Paper No. 21), it is
ORDERED that the examiner's decision rejecting claims
2, 3, 5, 6, 8 and 16 on both prior art grounds is reversed.
The Latimer reference, entitled "Vapor-Phase Hydration of
Olefins to Alcohols in Series Reactors With Intermediate Alcohol
Removal," is not within the field of applicant's endeavor. Nor
is this reference reasonably pertinent to the particular problem
with which applicant was involved, namely, the color
contamination of alkanolamines or alkyleneamines. Accordingly,
we find that Latimer is from a non-analogous art. In re Wood,
599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979).
Assuming arguendo that Latimer is not from a non-analogous
art, nevertheless, we agree with applicant that both prior art
Appeal No. 97-0113
Application No. 08/083,987
-3-
rejections are predicated on the impermissible use of hindsight.
The examiner has not established that a person having ordinary
skill in the art, armed only with the cited references and not
relying on information imparted by the specification, would have
arrived at the claimed subject matter as a whole. The examiner
has not established that a person having ordinary skill would
have arrived at the method defined in independent claim 16,
including the limitation that added water is maintained in the
liquid phase at a temperature of 201 to about 230EC and a
pressure of about 1 to about 100 psig, based only on teachings
found in the prior art.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
FRED E. McKELVEY ) BOARD OF PATENT
Senior Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge )
Union Carbide Chemicals
& Plastics Co., Inc.
Law Dept. E205
39 Old Ridgebury Rd.
Danbury, CT 06817-0001
Appeal No. 97-0113
Application No. 08/083,987
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