Ex parte Hoover et al.

Board of Patent Appeals and Interferences

Aug 27, 1998

08068445 (B.P.A.I. Aug. 27, 1998)

Application for patent filed May 27, 1993. 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journal and (2) is not binding precedent of the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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES F. HOOVER and PAUL D. SYBERT
____________
Appeal No. 95-4199
Application No. 08/068,4451
____________
ON BRIEF
____________
Before SOFOCLEOUS, PAK and WALTZ, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 12, which are all of the claims
pending in the application.
Appeal No. 95-4199
Application No. 08/068,445
2
The subject matter on appeal relates to thermoplastic
terpolymers having particular polysiloxane, aromatic polyester
and polycarbonate segments. See specification, page 1,
lines 6-8. These terpolymers are said to exhibit “non-
Newtonian melt viscosities, advantageous low temperature
properties and resistance to solvents, chemicals, hydrolysis
and to photodecomposition.” See specification, page 1, lines
9- 11.
Cl aims
1 and 8
ar e
re prese
ntative of the subject matter on appeal and read as follows:
1. A thermoplastic terpolymer, which comprises:
(a) about 1 to about 50 weight percent of a repeating or
recurring polysiloxane unit, based on the total weight of the
terpolymer, of the formula:
where R and R are each independently selected from hydrogren,1 2
hydrocarbyl, or halogen-substituted hydrocarbyl; D is an
integer of from about 10 to about 120; and Y is hydrogen,
Appeal No. 95-4199
Application No. 08/068,445
3
alkyl or alkoxy; and (b) about 99 to about 50% by weight of
the terpolymer of polycarbonate segments and aromatic
polyester segments consisting essentially of from about 80 to
about 10% by weight, relative to the total weight of the
carbonate and aromatic ester segments in the terpolymer, of
polycarbonate units of the formula:
Appeal No. 95-4199
Application No. 08/068,445
4
where R and R are each selected from hydrogen, hydrocarbyl or3 4
halogen-substituted hydrocarbyl; and from 20 to 90% by weight,
relative to the total weight of the carbonate and aromatic
ester segments in the terpolymer, of aromatic diester units of
the formula:

where A is phenylene.
8. A process for the production of a terpolymer which
comprises introducing phosgene into a stirred two phase
mixture comprising:
(1) a siloxane, terminated by phenolic hydroxyls, of the
structu re:
where R and R are selected from hydrogen, hydrocarbyl or1 2
halogen-substituted hydrocarbyl; where D is an integer of from
about 10 to about 120; and Y is selected from hydrogen,
hydrocarbyl, halogen-substituted hydrocarbyl and alkoxy,
(2) a
bisphenol , of the
structure :
Appeal No. 95-4199
Application No. 08/068,445
5
where R and R are selected from hydrogen, hydrocarbyl and3 4
halogen-substituted hydrocarbyl; and
(3) an aromatic dicarboxylic acid halide having the
structure
O O
5 5
X—————C——A——C—————X
where A is phenylene and X is chloro or bromo, in the presence
of sufficient aqueous alkali to maintain an alkaline pH and in
the presence of a substantially water-immiscible solvent; and
in the presence of
(4) an effective molecular modifying amount of a
monohydric phenol.
The references of record relied upon by the examiner are:
Vaughn Jr. 3,419,634 Dec. 31, 1968
Schmidt et al. (Schmidt) 4,681,922 Jul. 21,
1987
Okamoto 0376052 Jul. 04, 1990
(Published European Patent Application)
Claims 1 through 12 stand rejected under 35 U.S.C. § 103
as unpatentable over Schmidt in view of Okamoto and Vaughn Jr.
Having carefully considered the respective positions
advanced by the appellants in the brief and the examiner in
the answer, it is our conclusion that the above-noted
rejection is not sustainable. In rejecting claims under 35
U.S.C. § 103 the examiner bears the initial burden of
Appeal No. 95-4199
Application No. 08/068,445
6
presenting a prima facie case of obviousness. In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). Only if that burden is met does the
burden of coming forward with evidence or argument shift to
the applicants. Id. If the examiner fails to establish a
prima facie case, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988).
With respect to product claims 1 through 7 and 12, the
examiner takes the position that it would have been obvious to
provide propylene-phenylene on the end of the polysiloxane
segment of the polysiloxane/polyester (carbonate) block
copolymer described in Schmidt inasmuch as the secondary
references, such as Vaughn Jr., teach that “using a
polysiloxane having a Si-C
[C includes propylene-phenylene] linkage in a polysiloxane-
polycarbonate copolymer yields a product which has improved
hydrolytic stability.” See Answer, page 4. Although we do
not doubt that it would have been obvious to employ a silicon-
propylene-phenylene linkage in a polysiloxane-polycarbonate
Appeal No. 95-4199
Application No. 08/068,445
7
copolymer, we do not agree that it would have been obvious to
employ such linkage in the polysiloxane-polyester (carbonate)
copolymer described in Schmidt. We find no evidence, and the
examiner has not supplied any, that would have suggested the
desirability of employing propylene-phenylene between
polysiloxane and polyester. The examiner simply fails to
supply sufficient facts to establish a prima facie case of
obviousness within the meaning of 35 U.S.C. § 103.
With respect to process claims 8 through 11, the examiner
asserts that “appellants’ claimed method is conventional in
the art for preparing polysiloxane-polycarbonate-polyester
copolymers as can be seen in Example 4 of the Schmidt
reference”. See Answer, page 5. Rather than explaining why
it would have been obvious to employ the claimed reactants, as
well as produce the claimed terpolymers in the alleged
“conventional” method, the examiner relies on In re Durden,
763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985). Id. However,
as held by In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed.
Cir. 1995), the use of per se rules is not condoned in
applying the test for obviousness. Obviousness requires a
factual analysis involving taking the claimed subject matter
Appeal No. 95-4199
Application No. 08/068,445
We note that the subject matter of this appeal is2
related to that of Appeal No. 95-4228, Application 08/062,485,
commonly assigned with a common inventor to this application.
In Appeal No. 95-4228, the examiner relies on published
International Application WO 80/00084 as the primary reference
in rejecting the claims in Application 08/062,485. Upon
return of this application, the examiner is advised to
consider WO 80/00084 to determine whether it affects the
patentability of the claims in this application. Published
International Application WO 80/00084 is attached to this
decision.
8
as a whole and comparing it to the prior art to determine
whether the prior art as a whole would have suggested to one
of ordinary skill in the art the claimed subject matter. The
examiner, however, has not supplied any factual evidence that
would have suggested the desirability of employing the claimed
reactants, much less forming the claimed terpolymers.
Accordingly, the examiner has not satisfied his burden of
presenting a prima facie case of obviousness within the
meaning of 35 U.S.C. § 103.
In view of the foregoing, the decision of the examiner
rejecting claims 1 through 12 is reversed.2
REVERSED
Appeal No. 95-4199
Application No. 08/068,445
9
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 95-4199
Application No. 08/068,445
10
John L. Young
General Electric Company
One Plastics Avenue
Pittsfield, MA 01201
Appeal No. 95-4199
Application No. 08/068,445
11
CKP/jrg
JENINE GILLIS
Appeal No. 95-4199
Serial No. 08/068,445
Judge PAK
Judge WALTZ
Judge SOFOCLEOUS
Received: 25 Aug 98
Typed: 25 Aug 98
DECISION: REVERSED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Remanded: Yes No
Brief or Heard
Group Art Unit: 1501
Index Sheet-2901 Rejection(s): ___________
Acts 2: ____
Palm: ____
Mailed: Updated Monthly Disk: ____
Updated Monthly Report: ___