Ex parte HANI et al.

Board of Patent Appeals and Interferences

Oct 22, 1998

07978531 (B.P.A.I. Oct. 22, 1998)

Application for patent filed November 19, 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not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RAHIM HANI AND CYNTHIA M. WARD
__________
Appeal No. 94-3726
Application 07/978,5311
___________
ON BRIEF
___________
Before WILLIAM F. SMITH, GARRIS and WALTZ, Administrative
Patent Judges.,
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claim 1 through 11, which are
the only claims in this application.
According to appellants, the invention is directed to a
multi-step process for preparing a storage stable dispersion
Appeal No. 94-3726
Application 07/978,531
2
of a
solid biocide (brief, page 2). Claims 1 and 11 are
illustrative of the subject matter on appeal and are
reproduced below:
1. A process for preparing a storage stable dispersion
of a solid biocide which comprises the steps of:
(a) forming a biocide/carrier concentrate
containing 1 to 70 percent biocide by mixing a solid biocide
and a liquid carrier until a desired particle size for said
biocide is obtained;
(b) heating said mixture of biocide concentrate and
a heat swellable polymer to an elevated temperature of between
about 50EC and about 120EC to cause said polymer to swell by
carrier absorption into said polymer, thereby providing a
swelled polymer plus biocide mixture in said carrier
characterized by an increased viscosity sufficient to provide
a hot dispersion; and
(c) cooling said hot dispersion under continuous
stirring to a temperature of between about -20EC and about
40EC to provide a storage-stable dispersion having a viscosity
of between about 2,000 and about 30,000 centipoise.
11. The storage-stable composition produced by the
process of claim 1.
The examine relies upon the following references as
evidence of obviousness:
Tirpak et al. (Tirpak) 3,911,135 Oct. 7,
1975
Rei et al. (Rei '080) 4,683,080 Jul. 28,
Appeal No. 94-3726
Application 07/978,531
We note that appellants request reversal of an2
outstanding rejection under 35 U.S.C. § 102(b) on page 7 of
the brief. We can find no such outstanding rejection in the
record before us. Accordingly, we will only consider the
outstanding rejection under 35 U.S.C. § 103.
3
1987
Rei et al. (Rei '657) 5,102,657 Apr. 7,
1992
Yeager 835,936 Mar. 3,
1970
(Canadian Patent)
Appellants cite and rely upon the following
reference in their brief:
Webster's Ninth New Collegiate Dictionary, pp. 365 and 1123
(Merriam-Webster Inc., Springfield, Mass.)
This merits panel cites and relies upon the following
references not previously of record:
O’Connor et al. (O’Connor) 5,319,000 Jun. 7,
1994
(filed May 8, 1992)
Anderson et al. (Anderson) 5,639,803 Jun. 17, 1997
(filed Aug. 19, 1991)
Claims 1 through 11 stand rejected under 35 U.S.C. § 103
as unpatentable over "the combined teachings of Yeager, Rei et
al (080) and (657) and Tirpak." (answer, page 3). We reverse2
this rejection for reasons which follow.
Pursuant to the provisions of 37 CFR § 1.196(b), we make
Appeal No. 94-3726
Application 07/978,531
4
the following new rejections: (1) claim 10 is rejected under
35 U.S.C. § 112, fourth paragraph, since claim 10 does not
specify a further limitations of the subject matter claimed in
the claim it depends upon; (2) claim 11 is rejected under 35
U.S.C. § 102(e) as anticipated by O'Connor or Anderson; (3)
claims 1 through 11 are rejected under 35 U.S.C. § 103 as
unpatentable over O'Connor or Anderson; and (4) claims 1
through 11 are rejected under the judicially created doctrine
of obviousness-type double patenting over claims 1, 7 through
12 and 14 of O'Connor or claims 1 through 5 of Anderson.
OPINION
A. The Claimed Subject Matter
As our initial inquiry into a review of the examiner's
rejection under § 103, we must analyze the claimed language to
determine the scope and meaning of each contested limitation.
See Gechter v. Daivdson, 116 F.3d 1454, 1457, 43 USPQ2d 1030,
1032 (Fed. Cir. 1997). During patent examination, the claims
must be interpreted as broadly as their terms reasonably
allow. See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989).
Appeal No. 94-3726
Application 07/978,531
5
The claimed subject matter on appeal is directed to a
process of preparing a storage stable dispersion of a solid
biocide comprising three steps, i.e., mixing a solid biocide
and a liquid carrier until a desired particle size for said
biocide is obtained, heating this mixture with a heat
swellable polymer to a temperature of 50 to 120EC. to provide
a hot dispersion, and cooling the hot dispersion under
continuous stirring to produce a product with the desired
viscosity.
Appellants urge that the claimed subject matter is
directed to a dispersion of a solid biocide, where the biocide
is clearly not dissolved in a solvent for otherwise the
product could not be properly termed a "dispersion" (brief,
page 4, and reply brief, page 1-5). All of the prior art
applied by the examiner does use a solvent to form a solution
of the solid biocide (see Yeager, page 3, lines 15-18, and the
abstracts of Rei '080, Rei '657, and Tirpak). The examiner
concludes that the language of the appealed claims does not
exclude the solvent of the applied prior art (final rejection,
page 2, see also the answer, page 4-5). The examiner
considers a "dispersion" to be "generic to solution" (answer,
Appeal No. 94-3726
Application 07/978,531
6
page 5) and notes that appellants have provided no evidence
that their blended product is not a solution of the biocide in
the carrier (id., page 6).
During ex parte prosecution, "the PTO applies to the
verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description
contained in applicant's specification.” See In re Morris,
127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997).
In appealed claim 1, step (a) requires mixing a solid biocide
with a liquid carrier resulting in a desired particle size for
the biocide/carrier concentrate (emphasis added). All of the
applied references mix a solid biocide with a solvent to
produce a solution (e.g., see Tirpak, column 2, lines 54-60,
and Yeager, Example I). If the solvents of the applied
references are considered to be the “liquid carrier” of
appealed claim 1, as apparently argued by the examiner, the
resulting concentrate of the references will not contain
Appeal No. 94-3726
Application 07/978,531
7
“particles” or a “desired particle size” but will yield a
homogenous solution. See Tirpak, column 2, line 60; Rei ‘080,
column 2, lines 59-63, column 4, lines 50-53; Rei ‘657, column
2, lines 39-42, column 6, lines 34-53; and Yeager, page 4,
line 20.
Appellants define biocide dispersions as solid particles
of biocide dispersed in a liquid with the problems of settling
over time and increases in viscosity such that the dispersions
solidify during storage (specification, page 2, lines 5-18).
Appellants teach adding the solid biocide powder to a carrier
and mixing at high speed until “smooth” (see Example 1 and 2).
B. The Examiner’s Rejection
As discussed above, giving the broadest reasonable
meaning to the words of the claim in their ordinary usage as
they would be understood by the artisan, taking into account
the written description in the specification, the requirements
of step (a) in appealed claim 1 are not disclosed or suggested
by Tirpak, Rei ‘080, Rei ‘657, and Yeager.
Although not specifically addressed by the examiner,
appealed claim 11 is in product-by-process form, i.e., the
product produced by the process of claim 1. It is the
Appeal No. 94-3726
Application 07/978,531
8
patentability of the products defined by product-by-process
claims, and not the processes for making them, that must be
gauged in light of the prior art. See In re Wertheim, 541
F.2d 257, 271, 191 USPQ 90, 103 (CCPA 1976). A rejection
under §§ 102 or 103, jointly or alternatively, is proper where
the prior art discloses a product that reasonably appears to
be either identical or only slightly different from the
product claimed in a product-by-process claim. See in re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980),
and the Manual of Patent Examining Procedure, § 2113, 6th ed.,
Rev. 3, July 1997. The examiner bears a lesser burden of
proof in making a case of prima facie obviousness for product-
by-process claims because of their peculiar nature than would
be the case when a product is claimed in the more conventional
fashion. See In re Fessman, 489 F.2d 742, 744, 180 USPQ 324,
326 (CCPA 1974).
Even considering the product-by-process form of appealed
claim 11, we do not agree with the examiner that the applied
prior art reasonably shows a product identical to or slightly
different than the claimed product in view of our
Appeal No. 94-3726
Application 07/978,531
9
interpretation of the claim language in step (a) of claim 1.
The particles present in the claimed dispersion would have
produced a different product than the prior art solutions
which have no particles present.
In addition to the foregoing requirements of step (a) in
appealed claim 1, step (b) requires heating the
biocide/carrier concentrate and a heat swellable polymer to a
temperature of 50 to 120BC. to cause the polymer to sell and
absorb the biocide/carrier concentrate and produce a hot
dispersion. None of the references applied by the examiner
discloses or teaches this particular heating step. The
applied references teach heating the biocide and a solvent to
promote solubility but fail to teach heating any
biocide/carrier with a heat swellable polymer in the
temperature range required by appealed claim 1. See Tirpak,
column 2, lines 55-59, Example 1, Rei ‘080, column 4,
line 51, column 8, lines 59-63; Rei ‘657, column 6, lines 45-
53; and Yeager, Example I.
The examiner advances the reasoning that “since heating
is generally employed to enhance dispersability it is
Appeal No. 94-3726
Application 07/978,531
10
reasonable to conclude that the two blends’ mixing could be
effected thereby.” (answer, page 4). Although this reasoning
may be correct, the examiner has failed to explain why it
would have been obvious to heat the biocide concentrate and
polymer to the claimed temperature range. Yeager does not
heat the biocide solution and polymer at all to effect mixing.
Tirpak teaches heating to a very high temperature (300 to
400BF.) To form a homogenous composition (column 4, lines 42-
46). The Rei patents teach melting or softening the polymer
to promote mixing (e.g., se Rei ‘080, column 9, lines 54-61).
The examiner has not shown or explained why the temperature
limitations recited in step (b) of appealed claim 1 would have
been obvious in view of the applied prior art.
The examiner has also failed to address the limitation of
step (c) in appealed claim 1 other than mere reference to
cooling per see (answer, page 4).
The legal conclusion regarding obviousness relies on a
factual foundation, including the definition of the scope and
content of the prior art. See Panduit Corp. V. Dennison Mfg.
Co., 810 F.2d 1561, 1566-68, 1 USPQ2d 1593, 1595-97 (Fed. Cir.
Appeal No. 94-3726
Application 07/978,531
11
1987). “Where the legal conclusion of obviousness is not
supported by facts it cannot stand.” See In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967). For the
foregoing reasons, we conclude that the examiner has failed to
establish a sufficient factual basis to support a prima facie
case of obviousness. Accordingly, the rejection of claims 1
through 11 under U.S.C. § 103 as unpatentable over Tirpak, Rei
‘080, Rei ‘657, and Yeager is reversed.
C. Rejections Pursuant to 37 CFR § 1.196(b)
(1) The Rejection Under § 112, Fourth Paragraph
Claim 10 is rejected under the fourth paragraph of 35
U.S.C. § 112 because this dependent claim contains a reference
to a claim previously set forth (claim 1) but fails to specify
a further limitation of the subject matter claimed. Claim 10
specifies that the cooling of step (c) in claim 1 is carried
out in the presence of continuous stirring. However, claim 1,
step (c), “cooling said hot dispersion under continuous
stirring”. Thus claim 10 does not further limit the subject
matter claimed in claim 1.
(2) The Rejection Under § 102(e)
Appeal No. 94-3726
Application 07/978,531
Note that appellants' U.S. filing date is Nov. 19, 1992,3
while the filing date of O'Connor is May 8, 1992, and the
filing date of Anderson is at least Aug. 19, 1991.
12
Both O’Connor and Anderson qualify as prior art under §
102(e) since they are patents granted on an application for
patent “by another” filed in the U.S. before the invention
thereof by the applicant (see 35 U.S.C. § 102(e) (1975).3
Claim 11 is rejected under 35 U.S.C. § 102(e) as
anticipated by O’Connor or Anderson. As previously discussed,
claim 11 is in product-by-process form. Therefore, we look to
the prior art for the disclosure of a product that reasonably
appears to be identical to the product claimed, i.e., a
dispersion of biocide particles and carrier in a heat swollen
polymer with a viscosity of between about 2,000 and about
30,000 centipoise (see claim 1). See In re Fitzgerald, 619
F.2d at 70, 205 USPQ at 596.
O’Connor discloses two embodiments for preparing a
storage stable dispersion, with the second embodiment
comprising the step of heating a mixture of (a) a dispersion
of a solid biocide in a plasticizer and (b) a plastisol
containing a carrier selected from the group consisting of
Appeal No. 94-3726
Application 07/978,531
13
phthalic acid derivatives and epoxidized soybean oil, to an
elevated temperature of between 30 to 100BC. to provide a
mixture characterized by an increased viscosity sufficient to
form a stable dispersion upon cooling (column 2, lines 10-19,
and claim 7). Typical cooling, as taught for the first
embodiment, is to -20 to 40BC. to provide a mixture having a
viscosity of between 2,000 and 30,000 centipoise (see column
2, lines 4-9, and claim 1). Suitable resins useful in the
plastisol include poly(vinylchloride) (column 3, lines 48-63).
The solid biocide is added to a liquid carrier and mixed at
high speed, then heated with the plastisol to form a hot
dispersion, with subsequent cooling to produce a stable
dispersion with a viscosity of 8500 centipoise (see Example 2
in column 6).
Anderson also discloses two embodiments of forming a
storage stable liquid dispersion of a biocide, with the second
embodiment comprising the steps of heating a mixture of a
biocide, a carrier and a heat swellable polymer to a
temperature of about 50 to 120BC. to cause the polymer to
swell, with subsequent cooling to a temperature of -20 to
40BC. to provide a storage stable mixture having a viscosity
Appeal No. 94-3726
Application 07/978,531
14
of between 2,000 and 30,000 centipoise (column 2, lines 4-21).
The biocide/carrier/polymer mixture is prepared by mixing a
carrier with a biocide, mixing at high speed until “smooth” to
form a preliminary dispersion, and then combining this
preliminary dispersion with heat swellable polymer and more
carrier (see Example 1 in column 5).
Anderson discloses that the original biocide starting
material is in the form of a wet filter cake and thus this
water must be removed (see Example 1 in column 5; compare with
Example 1 in column 5 of O’Connor). As a matter of claim
interpretation, the introductory “comprises” in line 2 of
appealed claim 1 opens the claim to the inclusion of other
materials and steps, such as the inclusion of water and its
subsequent removal. See In re Baxter, 656 F.2d 679, 686, 210
USPQ 795, 802 (CCPPA 1981); cf. Ex parte Hoffman, 12 USPQ2d
1061, 1063-64 (Bd. Pat. App. & Int. 1989).
The biocide/carrier/heat swollen polymer storage stable
dispersion of O’Connor reasonably appears to be a product
identical to that produced by the process of appealed claim 1.
Similarly, the biocide/carrier/heat swollen polymer storage
Appeal No. 94-3726
Application 07/978,531
15
stable dispersion of Anderson reasonably appears to be a
product identical to that produced by the process of claim 1
since the inclusion of water, with its subsequent removal in
the first step, would not reasonably appear to alter the
characteristics of the final product since the viscosity range
and storage stable dispersion characteristics of the Anderson
product are disclosed
as the same as appellants’ claimed product.
(3) The rejection Under 35 U.S.C. § 103
Claims 1 through 11 are rejected under 35 U.S.C. § 103
as unpatentable over O'Connor or Anderson.
As discussed above, O'Connor discloses a process for
preparing a storage stable dispersion of a solid biocide
comprising forming a biocide/carrier concentrate with high
speed mixing until smooth, heating the concentrate with a heat
swellable polymer to between 30 to 100EC., with subsequent
cooling provide a storage stable dispersion having a range of
viscosity wihtin the range of appealed claim 1. See O'Connor,
column 2, lines 10-19, and Example 2. The amounts of each
component, high speed mixing, the various biocides, carriers
Appeal No. 94-3726
Application 07/978,531
Anderson does teach the effect of stirring at ambient4
temperature but does not teach stirring during cooling (see
Example 7 in column 7).
16
and resins are all disclosed by O'Connor (column 2, line 35 -
column 4, line 63, compare with the limitations of dependent
claims 2-10).
Similarly, Anderson discloses the same process as
O'Connor but, as discussed above, teaches starting with a wet
biocide which necessitates removal of the water in step (a).
See Anderson, column 2, line 4 - column 4, line 56, and
Example 1. As also discussed above, the term "comprises" in
appealed claim 1
renders the scope of the claim inclusive of such components as
water and the step of water removal. See in re Baxter, supra.
The only limitation of appealed claim 1 that is not
disclosed or taught by O'Connor or Anderson is the "continuous
stirring' that is recited in step (c) while the hot dispersion
is being cooled. However, we take notice that stirring to4
facilitate cooling was well known and would have been well
within the ordinary skill in the art. See In re Sovish, 769
F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985) (Skill is
Appeal No. 94-3726
Application 07/978,531
17
presumed on the part of those practicing in the art).
Accordingly, for the foregoing reasons, we conclude that the
subject matter of claims 1 through 11 would have been obvious
based on the disclosure and teachings of O'Connor or Anderson.
(4) The Rejection of Obviousness-type Double Patenting
Claims 1 through 11 are rejected under the judicially
created doctrine of obviousness-type double patenting over
claims 1, 7 through 12 and 14 of O'Connor or claims 1 through
5 of Anderson. It is noted that the present assignee is the
assignee of the O'Connor and Anderson patents while Rahim Hani
is a common
inventor of this application and the O'Connor and Anderson
patents.
In obviousness-type double patenting rejections, one must
determine whether the claims of the later filed application
would have been obvious in view of the claims of the earlier
patent. See In re Goodman, 11 F.3d 1046, 1052, 29 USPQ2d 2010,
2015 (Fed. Cir. 1993). Any analysis employed parallels the
guidelines for analysis of a § 103 obviousness determination.
See In re Longi, 759 F.2d 887, 892-93, 225 USPQ 645, 648
Appeal No. 94-3726
Application 07/978,531
It should be noted that he term "plastisol" in claim 75
of O'Connor refers to a mixture of a heat swellable resin and
a carrier (see column 2, lines 35-38).
18
(Fed. Cir. 1985).
Claims 7 through 12 of O'Connor are directed to the
second embodiment of the process of O'Connor, with claim 14
directed to the product produced by the process of claim 7.
Claims 1 through 5 of Anderson are directed to the second
embodiment of the process disclosed by Anderson. Although
Anderson does not claim the product of the process of claims
1-5, the resulting product of Anderson's process would be
indistinguishable from the here claimed product since the
process steps are essentially the same as in appealed claim 1,
as discussed above.
As noted above, the analysis of obviousness-type double
patenting parallels the obviousness determination outlined
above for the rejection under 35 U.S.C. § 103, except that the
claims of the earlier filed patents form the basis for the
obviousness determination. The claims of O'Connor set forth
the same process as in appealed claim 1 except that the5
cooling step is not specifically recited. However, O'Connor
Appeal No. 94-3726
Application 07/978,531
19
specifically claims the cooling step parameters for the first
embodiment to prepare a storage stable dispersion (see
O'Connor, claim 1, step (c)). It would have been obvious to
the artisan that the same cooling step as recited in
O'Connor's first embodiment in step (c) of claim 1 could
reasonably be employed to fulfill the language "to form a
stable dispersion upon cooling" in claim 7. As previously
discussed, appellants' claimed limitation of cooling while
"continuously stirring" would have been within the ordinary
skill in the art since it was well known that stirring
facilitates the cooling process.
The dependent claim limitations recited in appealed
claims 2 through 10 are all disclosed in claims 7 through 12
and 14 of O'Connor except for the use of a high speed mixer at
a certain rpm range as set forth in claim 9. However, the use
of a specific mixer and mixing speed to produce the desired
mixing would have been well within the ordinary skill in the
art, especially since the desired mixing of step (a) in claim
1 and the desired mixing of claim 7 in O'Connor produces the
same result, i.e., a preliminary dispersion of a solid biocide
in a carrier or plasticizer.
Appeal No. 94-3726
Application 07/978,531
20
Similarly, the discussion above regarding the scope of
"comprises" in the appealed claims as including the use of a
"wet" biocide as a starting material in Anderson, with
subsequent removal of the water (see claim 1 of Anderson),
equally applies here in the analysis of obviousness-type
double patenting. As previously discussed, appellants' claimed
limitation of "continuous stirring" while cooling would have
been within the ordinary skill in the art as it was well known
to facilitate cooling by stirring.
The dependent claim limitations of appealed claims 2
through 10 are all disclosed in claims 1 through 5 of Anderson
except for the limitation of appealed claim 9 of using a high
speed mixer at certain rpms to produce the mixture of step (a)
in appealed claim 1. However, the use of a specific mixer an
mixing speed would have been well within the ordinary skill in
the art, especially since the desired mixing of step (a) in
appealed claim 1 and step (a) in claim 1 of Anderson produces
the same result, i.e., a preliminary dispersion of a solid
biocide in a carrier.
Appeal No. 94-3726
Application 07/978,531
21
For the foregoing reasons, we conclude the appealed
claims would have been obvious in view of the clims of the
earlier filed O'connor or Anderson patents.
D. Summary
The rejection of claims 1 through 11 under 35 U.S.C. §
103 as unpatentable over the combined teachings of Tirpak, Rei
'080, Rei '657, and Yeager is reversed.
Pursuant to the provisions of 37 CFR § 1.196(b), the
following new grounds of rejection have been made. Claim 10
is rejected under 35 U.S.C. § 112, fourth paragraph. Claim
11 is rejected under 35 U.S.C. § 102 (e) as anticipated by
O'Connor or Anderson. Claims 1 through 11 are rejected under
35 U.S.C. § 103 as unpatentable over O'Connor or Anderson.
Claims 1 through 11 are rejected under the judicially created
doctrine of obviousness-type double patenting in view of
claims 1, 7 through 12 and 14 of O'Connor or claims 1 through
5 of Anderson.
This decision contains a new grounds of rejection
pursuant to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997,
by final rule notice, 62 Fed. Reg. 53, 131, 53, 197 (Oct. 10,
1997), 1203 off. Gaz. Pat. & Trademark Office 63,122 (Oct 21,
Appeal No. 94-3726
Application 07/978,531
22
1997) ). 37 CFR § 1.196 (b) provides that, "A new ground of
rejection shall not be considered final for purposes of
judicial review."
37 CFR § 1.196 (b) also provides that he appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (§
1.197 (c) ) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under §
1.197 (b) by the Board of Patent Appeals and
Interferences upon the same record . . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
Reversed - 37 CFR § 1.196 (b)
WILLIAM F. SMITH )
Administrative Patent Judge )
)
Appeal No. 94-3726
Application 07/978,531
23
)
) BOARD OF PATENT
BRADLEY R. GARRIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
TAW:kis
Dale Lynn Carlson
Olin Corporation
350 Knotter Drive
P.O. Box 586
Cheshire, CT 06510-0586