Ex parte GRAIVER et al.

Board of Patent Appeals and Interferences

Feb 27, 1998

07990262 (B.P.A.I. Feb. 27, 1998)

Application for patent filed December 11, 1992. 1
According to appellants, this application is a continuation of
Application 07/439,751, filed November 21, 1989, now abandoned;
which is a continuation of Application 07/128,250, filed
December 3, 1987, now abandoned; which is a division of
Application 06/809,090, filed December 12, 1985, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DANIEL GRAIVER and OSAMU TANAKA
________________
Appeal No. 95-0246
Application 07/990,2621
________________
ON BRIEF
________________
Before WINTERS, JOHN D. SMITH and WARREN, Administrative Patent
Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision rejecting
claims 1 through 13, 21 and 23, which are all of the claims
remaining in the application.
Appeal No. 95-0246
Application 07/990,262
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Claim 1 is representative:
1. A method for making clear, stable, aqueous micro-
emulsions of polydiorganosiloxane which comprises: sequentially
adding a precursor emulsion comprised of cyclopolydiorgano-
siloxane, surfactant, and water to a polymerization medium
comprised of water and an effective amount of a polymerization
catalyst while mixing wherein the rate of addition of the
precursor emulsion is effective to form a clear, stable
microemulsion which has polydiorganosiloxane droplets of less
than 0.15 micron average size, and which contains a surfactant to
polydiorganosiloxane weight ratio of 0.15 to 5.
The references relied on by the examiner are:
Hyde et al. (Hyde) 2,891,920 June 23, 1959
Findlay et al. (Findlay) 3,294,725 Dec. 27, 1966
All of the appealed claims stand rejected under 35 U.S.C.
§ 103 as unpatentable over the Findlay reference, considered
alone or in combination with Hyde.
DISCUSSION
Initially, we observe that the subject matter of this appeal
was reviewed by another merits panel of the Board of Patent
Appeals and Interferences (Board) in parent application Serial
No. 07/439,751. See Paper Nos. 12 and 14 of the parent file
(Appeal No. 91-3171). In the instant application, appellants
have added claims 21 and 23, not previously considered by the
Board. Appellants further rely on factual evidence submitted in
this application but not previously before the Board.
Specifically, appellants rely on the Gee affidavit, filed under
the provisions of 37 CFR § 1.132, executed December 11, 1992, and
Appeal No. 95-0246
Application 07/990,262
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on the Gee affidavit, filed under the provisions of 37 CFR
§ 1.132, executed June 21, 1993.
In light of the new record, we have taken a step back and
re-evaluated the patentability of appellants' claimed subject
matter over the cited prior art. On reflection, we agree with
appellants that the rejections under 35 U.S.C. § 103 are not
sustainable. We agree with the position and reasons succinctly
stated in appellants' Appeal Brief, and we add the following
comments for emphasis only.
Neither the Findlay reference alone, nor Findlay in
combination with Hyde, is sufficient to support a conclusion of
obviousness of claims 1 through 13, 21 and 23, requiring pre-
emulsification and sequential addition "wherein the rate of
addition of the precursor emulsion is effective to form a clear,
stable microemulsion." Accordingly, neither Findlay alone, nor
Findlay considered in combination with Hyde, establishes a prima
facie case of obviousness of the appealed claims.
Even assuming arguendo that the examiner had established a
prima facie case of obviousness, the objective evidence of non-
obviousness relied on by appellants is sufficient to rebut any
such prima facie case. Note particularly the Gee affidavit,
executed June 21, 1993, showing the criticality of sequentially
adding precursor emulsion to the polymerization medium. Also
Appeal No. 95-0246
Application 07/990,262
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note the Gee affidavit, executed December 11, 1992, reproducing
Example 14 of Findlay which the previous merits panel labeled
"the closest prior art." The claimed method produces a clear,
stable aqueous microemulsion, whereas Findlay's Example 14 gives
rise to an emulsion which is "milky white in appearance" (Gee
affidavit, executed December 11, 1992, page 3).
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Appeal No. 95-0246
Application 07/990,262
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Patent Department - Mail C01232
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Midland, MI 48686-0994