Ex Parte Kirk et al

Board of Patent Appeals and Interferences

Jan 17, 2012

11759442 (B.P.A.I. Jan. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SETH M. KIRK, GERALD R. SPARTZ, MARVIN E.
JONES, STEVEN J. PACHUTA, and JOHN S. HUBERTY
____________

Appeal 2010-009846
Application 11/759,442
Technology Center 1700
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and KAREN M.
HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-9. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a method of making a fluorinated electret article
which comprises treating a nonconductive polymeric article in a plasma that
contains a fluorine-containing species and a nitrogen-containing species to
place fluorine and nitrogen atoms on the surface of the polymeric article and
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"causing the nitrogen atoms to be present on the surface of the polymeric
article at a level greater than the background value" (claim 1).
Further details regarding this claim subject matter are set forth in
representative claim 1, the sole independent claim on appeal, which reads as
follows:
1. A method of making a fluorinated electret article, which method
comprises:

(a) treating a nonconductive polymeric article in a plasma generated in
a controlled atmosphere that contains a fluorine-containing species and a
nitrogen-containing species to place fluorine and nitrogen atoms on a surface
of the polymeric article, the treatment occurring at a pressure less than
atmospheric and causing the nitrogen atoms to be present on the surface of
the polymeric article at a level greater than the background value; and

(b) imparting a persistent electric charge to the polymeric article.
The references listed below are relied upon by the Examiner as
evidence of obviousness:
Byrnes 3,479,269 Nov. 18, 1969
Penfold 4,031,424 Jun. 21, 1977
Yanagihara 4,693,799 Sep. 15, 1987
Jones WO 00/01737 Jan. 13, 2000
Under 35 U.S.C. § 103(a), the Examiner rejects:
claims 1, 2, 4, 5, and 7-9 as unpatentable over Jones in view of
Yanagihara;
claim 3 as unpatentable over the references applied against claim 1 in
view of Byrnes; and
claim 6 as unpatentable over the references applied against claim 1 in
view of Penfold.

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Appellants present arguments directed to independent claim 1 and
dependent claims 3, 4, and 7 only (App. Br. 3-5). The remaining dependent
claims on appeal will stand or fall with the argued claims from which they
depend.
We will sustain the above rejections for the reasons expressed in the
Answer and below.
The Examiner finds that Jones teaches a method of making a
fluorinated electret article which comprises treating a polymeric article in a
plasma "that contains a fluorine species (p. 3, l. 5-14) from a fluorocarbon
and a nitrogen species (p. 7, l. 11 or p. 7, l. 16), which would inherently
place fluorine and nitrogen on the surface" (Ans. 4).
Appellants argue that, "[a]lthough [Jones'] use of NF3 may inherently
place some nitrogen on the surface, there is no evidence that nitrogen would
be placed on the surface at a level above the background value [as required
by claim 1]" (App. Br. para. bridging 3-4). In this regard, Appellants point
out that comparative Example 5c in their Specification uses NF3 but obtains
nitrogen on the article surface only at the background value (id.).
In response, the Examiner indicates that comparative Example 5c of
the Specification does not adequately represent the teachings of Jones (Ans.
7-8). Specifically, the Examiner emphasizes that Jones expressly teaches
combinations of fluorine-containing species and nitrogen-containing species
(including nitrogen gas) and that such combinations of species are used in
Specification Examples 5, 9, and 11 which yield nitrogen values in the
ranges claimed by Appellants (id.). These circumstances lead the Examiner
to determine that "the claimed result (nitrogen atoms present at a level
greater than the background [value]) would flow naturally from the Jones
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process in combining various fluorine-containing species together, or by
combining a fluorine-containing species with inert gas diluents such as
nitrogen" (id. at para. bridging 8-9).1
The Examiner's determination is well-founded. On this record, there
is no dispute that Jones teaches, or at least would have suggested,
combinations of fluorine-containing species and nitrogen-containing species
corresponding to the species combinations of Examples 5, 9, and 11 which
yield nitrogen levels in the ranges defined by claim 1 (as well as claim 7). It
follows that Jones' method wherein such species combinations are employed
would inherently also yield the claimed nitrogen levels.
While Appellants' claimed advantage (i.e., nitrogen levels greater than
the background value) was not recognized by Jones, this fact does not
support patentability of the claimed method. Stated differently, the fact that
Appellants have recognized another advantage which would flow naturally
from following Jones' teaching or suggestion cannot be the basis for
patentability when the differences, if any, would otherwise have been
obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
For the reasons stated above and in the Answer, the argument and
evidence presented in this appeal weigh most heavily in favor of the
Examiner's unpatentability determination in the § 103 rejection of
independent claim 1 and separately argued dependent claims 4 and 7. We

1 We observe that Appellants are in a favorable position to provide evidence
on the issue of whether the claimed nitrogen levels would flow naturally
from the method of Jones. This is because the Jones reference and the
subject application share a common inventor and the same assignee.
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sustain, therefore, the § 103 rejection of claims 1, 2, 4, 5, and 7-9 as
unpatentable over Jones in view of Yanagihara.2
Appellants' separate argument regarding dependent claim 3 does not
even address the Byrnes reference, much less show error in the Examiner's
conclusion that Byrnes would have suggested using the claim 3 pressure in
the method of Jones (App. Br. 4; cf., Ans.5). As a consequence, we also
sustain the § 103 rejection of claim 3 as unpatentable over Jones,
Yanagihara, and Byrnes.
Finally, we sustain the § 103 rejection of claim 6 as unpatentable over
Jones, Yanagihara, and Penfold since Appellants present no additional
arguments against this rejection.
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(v).
AFFIRMED

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2 A discussion of Yanagihara is unnecessary for resolution of the issues
raised by this rejection.