Ex parte Grizante et al.

Board of Patent Appeals and Interferences

Sep 1, 1998

07961160 (B.P.A.I. Sep. 1, 1998)

Application for patent filed October 15, 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not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte REDONDO E. GRIZANTE, ANTONIO ZAOPO
and LUCA CASTELLANI
__________
Appeal No. 96-1076
Application No. 07/961,1601
__________
ON BRIEF
__________
Before GARRIS, WEIFFENBACH and WALTZ, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 13 through 16. The only other claims in the
application, which are claims 1 through 12 and 17 through 20,
stand withdrawn from further consideration by the examiner as
Appeal No. 96-1076
Application No. 07/961,160
2
being directed to a nonelected invention or a nonelected
species.
The subject matter on appeal relates to a cable coating
formed by a polymeric mixture of a first thermoplastic polymer
which consists of an aromatic polyester of isophthalic and
terephthalic acid with bisphenol A and a second thermoplastic
polymer consisting of an elastomeric polyether-ester block
copolymer having particular Shore D hardness and Vicat
softening point characteristics. The mixture possesses an
ultimate elongation not lower than 50%. This appealed subject
matter is adequately illustrated by independent claim 13 which
reads as follows:
13. A cable coating formed by a polymeric mixture
characterized in that it comprises from from [sic] 50 to 80
parts (w/w) of a first thermoplastic polymer which is
amorphous, highly resistant to flames and combustion, and
consists of an aromatic polyester of isophthalic and
terephthalic acid with bisphenol A, and from about 20 to 50
parts (w/w) of at least a second thermoplastic polymer
consisting of an elastomeric polyether-ester block copolymer,
having a Shore D hardness greater than 50 and a Vicat
softening point greater than 170EC, said mixture having an
ultimate elongation not lower than 50% when the amount of the
second polymer is the lowest one and a higher ultimate
elongation as the amount of said second polymer increases.
Appeal No. 96-1076
Application No. 07/961,160
The appealed claims will stand or fall together; see2
page 5 of the Brief.
3
The references relied upon by the examiner as evidence of
obviousness are:
Cella et al. (Cella) 4,690,997 Sep. 1,
1987
Penneck WO 89/00756 Jan. 26,
1989
(PCT Application)
Claims 13 through 16 stand rejected under 35 U.S.C. § 103
as being unpatentable over Penneck taken with Cella .2
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
rejection.
OPINION
We will sustain this rejection.
We agree with the examiner’s ultimate conclusion that the
coatings claimed by the appellants are indistinguishable from
the coatings disclosed by Penneck.
Appeal No. 96-1076
Application No. 07/961,160
4
In support of their contrary view, the appellants argue
that the appealed claims are directed to polymeric mixtures
which do not encompass the cross-linked polymer material of
Penneck. This argument is unpersuasive for a number of
reasons.
In the first place, the independent claim language
“coating formed by a polymeric mixture” does not distinguish
over a polymeric mixture which is ultimately cross-linked into
a coating as in the Penneck reference. In this regard, we are
mindful of the appellants’ argument that “it is clear from the
specification that appellants’ claimed mixture is an end
product which is not to be cross-linked” (Reply Brief, page
2). From our perspective, however, the subject specification
militates against this argument by expressly disclosing that
the polymeric mixtures may undergo “some structural
modification” (see Specification page 7, second full
paragraph).
Secondly, even if the appealed claims excluded a
condition wherein the first and second thermoplastic polymers
are cross-linked with each other, these claims still would not
distinguish over the subject matter disclosed by Penneck.
Appeal No. 96-1076
Application No. 07/961,160
5
This is because the aromatic polymer and the aliphatic polymer
of Penneck (which correspond to the here claimed first and
second thermoplastic polymers) need not be cross-linked with
each other as the appellants seem to believe. As correctly
indicated by the examiner, Penneck expressly discloses in the
last paragraph on page 17 of the reference that “the aliphatic
polymer may be highly crosslinked [i.e., with itself] while
the aromatic polymer remains substantially uncrosslinked”.
Concerning this matter, it is appropriate to emphasize the
appellants do not even allege that the appealed claims exclude
an embodiment wherein one of the here claimed thermoplastic
polymers has been cross-linked with itself.
The appellants additionally seem to argue that Penneck
contains no teaching or suggestion of an elongation not lower
than 50% as required by the claims on appeal. This is clearly
incorrect. Penneck expressly discloses that his “polymeric
material ... will preferably have an elongation to break of at
least 50% and especially at least 100%” (see the last sentence
in the first full paragraph on page 16).
Finally, the appellants point out that the Penneck
reference contains no teaching or suggestion of the here
Appeal No. 96-1076
Application No. 07/961,160
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claimed Shore D hardness or Vicat softening point values.
While the examiner acknowledges this point, she notes that
“the polyetheresters taught at the bottom of page 13 through
page 14 [of the Penneck reference] encompass the
polyetheresters specified in the claims” (Answer, page 4), and
the appellants do not contend otherwise. Since Penneck’s
polyether-esters include those claimed by the appellants, it
is reasonable to believe that these polyether-esters possess
the here claimed Shore D hardness and Vicat softening point
values and concomitantly reasonable to require that the
appellants prove the contrary. Whether the rejection is based
on “inherency” under 35 U.S.C. § 102, on “prima facie
obviousness” under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same and its fairness is evidenced
by the PTO’s inability 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). On this record, the
appellants have not carried their burden of showing that
Appeal No. 96-1076
Application No. 07/961,160
It is appropriate to clarify that Shore D hardness and3
Vicat softening point should be regarded as characteristics of
the here claimed second thermoplastic polymer rather than
“result effective variables” of the process by which these
polymers are made as the appellants seem to imply (e.g., see
the paragraph bridging pages 3 and 4 of the Reply Brief).
7
Penneck’s polyether-esters and the characteristics possessed
thereby differ from those here claimed .3
For the above stated reasons, we will sustain the
examiner’s § 103 rejection of claims 13 through 16 as being
unpatentable over Penneck taken with Cella.
The decision of the examiner is affirmed.
Appeal No. 96-1076
Application No. 07/961,160
8
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge)
)
)
)
CAMERON WEIFFENBACH ) BOARD OF
PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge)
Appeal No. 96-1076
Application No. 07/961,160
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