Ex parte KETELS et al.

Board of Patent Appeals and Interferences

Feb 20, 1998

07804160 (B.P.A.I. Feb. 20, 1998)

Application for patent filed December 6, 1991. 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journal and (2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HENDRIKUS H. T. M. KETELS and CINZIA A. RITA DI FEDE,
and HERMANNUS B. SAVENIJE
____________
Appeal No. 94-4034
Application No. 07/804,1601
____________
ON BRIEF
____________
Before JOHN D. SMITH, PAK and WARREN, 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 5 through 14. The examiner has withdrawn
the rejection of claims 15 through 20 subsequent to the appeal.
See Answer, pages 2 and 4.
Claim 5 is representative of the subject matter on appeal
and reads as follows:
Appeal No. 94-4034
Application No. 07/804,160
At page 2 of the Answer, the examiner has withdrawn2
the remaining rejections made in the final Office action
dated February 2, 1993.
2
5. A polymer mixture comprising:
(A) 20-60 parts by weight of polyphenylene ether resin;
(B) 40-70 parts by weight of polystyrene resin, high-impact
polystyrene resin, or a mixture thereof;
(C) 5-20 parts by weight of an impact strength agent; and
(D) 2-10 parts by weight of talcum,
wherein component (C) comprises a mixture of 2 linear
block copolymers.
The references of record relied upon by the examiner are:
Kosaka et al. (Kosaka) 4,483,958 Nov. 20, 1984
Abe et al. (Abe) 5,086,105 Feb. 04, 1992
(Filed Dec. 11, 1989)
Claims 5 through 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Kosaka and Abe.2
We have carefully reviewed the entire record before us,
including each of the arguments and comments advanced by the
examiner and appellants in support of their positions. This
review leads us to conclude that the examiner’s § 103 rejection
is well-founded. Accordingly, we will sustain the examiner’s §
103 rejection. Our reasons for this determination follow.
As a preliminary matter, we note the examiner’s statement
(Answer, page 2) that the appealed claims stand or fall together
because appellants do not state that the appealed claims do not
stand or fall together. Nowhere do appellants dispute this
Appeal No. 94-4034
Application No. 07/804,160
3
examiner’s statement. Accordingly, for purposes of this appeal,
we will consider the issues as they apply to claim 5, the
broadest claim on appeal. See 37 CFR § 1.192(c)(5)(1993);
now 37 CFR § 1.192(c)(7).
Appellants do not argue that the Kosaka reference discloses
a polymer composition containing the claimed amounts of a
polyphenylene ether, a rubber modified high impact polystyrene,
an impact modifier (thermoplastic block elastomer) and an
inorganic filler. See Brief, page 5. Also, appellants
acknowledge at page 5 of the Brief that “[o]ne of the nineteen
inorganic fillers that are mentioned [in the Kosaka reference] is
talc.” Compare In re Petering, 301 F.2d 676, 681,133 USPQ 275,
280 (CCPA 1962) (a prior art genus containing only 20 compounds
anticipated a claimed species within the genus because “one
skilled in [the] art would *** envisage each member” of the
genus). Note also that Abe describes talc as the preferred
inorganic filler in a similar polymer composition. See Abe,
the abstract.
Appellants argue that the Kosaka reference teaches or
suggests using only a single impact modifier (a single linear
block copolymer), rather than two impact modifiers (a mixture of
two linear block copolymers). See Brief, page 5. However, as
Appeal No. 94-4034
Application No. 07/804,160
4
correctly noted by the examiner at page 4 of the Answer, Kosaka
teaches that thermoplastic block elastomers (impact modifier),
such as a mixture of styrene-conjugated diolefin block
copolymers, can be employed in the polymer composition. See
Kosaka, column 3, lines 16-39. Thus, we agree with the examiner
that Kosaka and Abe as a whole would have rendered the claimed
subject matter prima facie obvious to one of ordinary skill in
the art within the meaning of 35 U.S.C. § 103.
Even were we to accept appellants’ argument that the Kosaka
reference describes employing only one of the listed styrene-
conjugated diolefin block copolymers in the polymer composition,
our conclusion would not be altered. In the first place, it
would have been prima facie obvious to combine two styrene-
conjugated diolefin block copolymers, each of which is taught by
the Kosaka reference to be useful for the same purpose, in order
to form a composition which is to be used for the very same
purpose. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069,
1072 (CCPA 1980). In the second place, it would have been prima
facie obvious to employ the block elastomers of the type
described by the Kosaka reference either individually or in
combination since the examiner states at page 4 of the Answer
Appeal No. 94-4034
Application No. 07/804,160
5
and appellants do not dispute that Abe teaches at column 6, lines
45-68, that “impact modifiers such as the rubber-like materials
can be [employed] individually or as mixtures thereof “ in a
similar polymer composition.
Appellants also argue that the examples in the specification
rebut the prima facie case of obviousness proffered by the
examiner. See Brief, page 6. The examples show a comparison
between two compositions having specific impact modifiers
individually (designated as B* and C*) and a composition having a
mixture of the same two specific impact modifiers (designated as
I). See specification, pages 6-8. According to appellants, the
showing in the specification examples demonstrates that the
claimed composition employing two impact modifiers imparts
unexpected results over that described in the applied prior art
references. See Brief, page 6. We are not persuaded by this
argument.
First, it is not enough for appellants to show that the
results for appellants’ invention and the comparative examples
differ. Appellants have the burden of showing that the
differences are significant and unexpected. See In re Freeman,
474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973)(the burden of
showing unexpected results rests on appellants who rely on them);
Appeal No. 94-4034
Application No. 07/804,160
6
In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (CCPA
1971)(the difference in results must be significant and of
practical advantage). This, appellants have not done. In fact,
the specification does not even state that these differences are
“unexpected”. See In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d
1362, 1365 (Fed. Cir. 1997).
Second, the showing in the specification examples is not
reasonably commensurate in scope with the degree of the
protection sought by appealed claim 5. See In re Grasselli,
713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980).
While the showing is limited to employing a particular polymer
composition having specific portions of specific ingredients,
including two specific impact modifiers, appealed claim 5 is not
so limited. Appellants, however, have not offered any evidence
to support that the demonstrated results based on a single
representative polymer composition can reasonably be extrapolated
to the plethora of polymer compositions having multifarious
ingredients (including multifarious impact modifiers) embraced
by appealed claim 5.
Appeal No. 94-4034
Application No. 07/804,160
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Thus, having considered all of the evidence or record, we
determine that the evidence of obviousness, on balance, outweighs
the evidence of nonobviousness. Hence, we agree with the
examiner’s conclusion that the claimed subject matter as a whole
would have been obvious to one of ordinary skill in the art .
Thus, we affirm the examiner’s decision to reject claims 5
through 14 under 35 U.S.C. § 103.
The decision of the examiner is affirmed.
Appeal No. 94-4034
Application No. 07/804,160
8
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JOHN D. SMITH, )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK, ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES F. WARREN, )
Administrative Patent Judge )
Appeal No. 94-4034
Application No. 07/804,160
9
Gary L. Loser, Esq.
General Electric Company
One Plastics Avenue
Pittsfield, MA 01201
CKP/jrg
APPEAL NO. 94-4034 - JUDGE PAK
APPLICATION NO. 07/804,160
APJ PAK
APJ WARREN
APJ SMITH, JOHN D.
DECISION: AFFIRMED
Typed By: Jenine Gillis
DRAFT TYPED: 19 Feb 99
FINAL TYPED: