Ex parte Hergenrother et al.

Board of Patent Appeals and Interferences

Oct 14, 1998

08146696 (B.P.A.I. Oct. 14, 1998)

Application for patent filed November 1, 1993. 1
According to appellants, this application is a division of
Application No. 07/722,743, filed June 28, 1991, now U.S.
Patent No. 5,260,123, issued November 9, 1993.
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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journal and (2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte WILLIAM L. HERGENROTHER and DANIEL F. GRAVES
________________
Appeal No. 96-0819
Application No. 08/146,6961
________________
ON BRIEF
________________
Before WINTERS, SOFOCLEOUS and KIMLIN, Administrative Patent
Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0819
Application No. 08/146,696
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This appeal was taken from the examiner's decision
rejecting claims 1 through 24, which are all of the claims
remaining in the application.
Claim 1 is representative:
1. A block copolymer elastomer having a number average
molecular weight of at least about 100,000 and comprising
alternating blocks of
(A) a polysiloxane; and
(B) a copolymer of a 1,3-conjugated diene and a monovinyl
aromatic compound. [Emphasis added.]
The reference relied on by the examiner is:
Kendrick et al. (Kendrick) 3,691,257 Sep. 12, 1972
The issue presented for review is whether the examiner
erred in rejecting claims 1 through 24 under 35 U.S.C. § 103
as unpatentable over Kendrick.
DISCUSSION
We shall not sustain this rejection.
Each independent claim on appeal recites a block
copolymer "having a number average molecular weight of at
least about 100,000." In our judgment, the Kendrick reference
is insufficient to support a conclusion of obviousness of
claims containing that limitation.
Appeal No. 96-0819
Application No. 08/146,696
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As correctly found by the examiner, Kendrick discloses a
block copolymer having the same alternating blocks recited in
appellants' claims. The salient difference between Kendrick's
block copolymer and appellants' block copolymer is the
characteristic of molecular weight. All of the appealed
claims recite a block copolymer "having a number average
molecular weight of at least about 100,000." Kendrick,
however, does not disclose the outer limits of number average
molecular weight for his block copolymer. Notably, no upper
limit is disclosed. Kendrick merely states that, for his
purposes, it is "preferable to employ block copolymers or
[sic] relatively low molecular weight, e.g., from 2,000 to
50,000" (see Kendrick, column 3, lines 9 through 13).
Kendrick's working examples teach relatively low molecular
weights (EXAMPLE 1, copolymer A has a molecular weight of
10,000; EXAMPLE 3, copolymer B has a molecular weight of
41,000; and EXAMPLE 5, copolymer C has a molecular weight of
10,000).
According to the examiner, it would have been obvious to
modify Kendrick's block copolymer by increasing its number
average molecular weight to "at least about 100,000" because
Appeal No. 96-0819
Application No. 08/146,696
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(1) the reference places no numerical limitation on molecular
weight; (2) the reference teaching of a molecular weight range
from 2,000 to 50,000 is merely a preferred range; (3) the
Appeal No. 96-0819
Application No. 08/146,696
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reference teaching is generic to any molecular weight; (4) the
reference generically encompasses block copolymers having a
molecular weight within appellants' claimed range; and (5) the
reference directs a person having ordinary skill in the art to
prepare a block copolymer having the same alternating blocks
recited in appellants' claims and having any molecular weight.
See the Examiner's Answer, page 4. We disagree.
We have no doubt that the prior art could be modified in
the manner proposed by the examiner to arrive at the instantly
claimed invention. This is apparent from a review of
appellants' specification and claims. However, the mere fact
that the prior art could be so modified would not have made
the modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, the cited
prior art suggests a relatively low number average molecular
weight, e.g., from 2,000 to 50,000. See Kendrick, column 3,
lines 9 through 13; and EXAMPLES 1, 3, and 5. Kendrick would
not have led a person having ordinary skill to the claimed
block copolymer, having a number average molecular weight of
Appeal No. 96-0819
Application No. 08/146,696
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at least about 100,000, without the impermissible use of
appellants' disclosure as a
Appeal No. 96-0819
Application No. 08/146,696
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guide. In this regard, note the relatively large difference
between the upper limit of Kendrick's preferred range (50,000)
and the lower limit of the claimed range (at least about
100,000). On these facts, we find that appellants suggest the
desirability of a number average molecular weight of at least
about 100,000, but the cited prior art does not.
The examiner argues that Kendrick is "generic to any
molecular weight" (Answer, page 4, lines 12 and 13); that
Kendrick encompasses block copolymers having a molecular
weight within appellants' claimed range; and that Kendrick
directs a person having ordinary skill to prepare a block
copolymer having any molecular weight. However, we are not
aware of any such
per se rule of obviousness whereby a generic teaching with
respect to molecular weight is sufficient to reach appellants'
specific claim limitation. On the contrary, every case,
particularly those raising the issue of obviousness under
§ 103, must necessarily be decided on its own facts. Cf. In
re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir.
1992) (court declines to extract from Merck & Co. v. Biocraft
Labs. Inc., 874 F.2d 804, 806-09, 10 USPQ2d 1843, 1845-48
Appeal No. 96-0819
Application No. 08/146,696
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(Fed. Cir.), cert. denied, 493 U.S. 975 (1989), the rule that,
regardless how broad,
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Application No. 08/146,696
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a disclosure of a chemical genus renders obvious any species
that happens to fall within it).
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
MICHAEL SOFOCLEOUS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
clm
Appeal No. 96-0819
Application No. 08/146,696
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Daniel N. Hall
Bridgestone/Firestone, Inc.
1200 Firestone Parkway
Akron, OH 44317