Ex parte MASSE et al.

Board of Patent Appeals and Interferences

Jul 14, 1998

08090854 (B.P.A.I. Jul. 14, 1998)

Application for patent filed July 12, 1993.1
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for publication in a law journal and (2) is not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MICHAEL A. MASSE
and JAMES R. ERICKSON
_____________
Appeal No. 95-1948
Application 08/090,8541
______________
ON BRIEF
_______________
Before KIMLIN, GARRIS and WALTZ, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is the decision on an appeal from the final rejection
of claims 1, 3 through 11 and 13 through 18 which are all of the
claims remaining in the application.
The subject matter on appeal relates to a process of curing
epoxidized polymers of conjugated dienes containing aromatic
moieties by exposing the polymers to ultraviolet radiation in the
Appeal No. 95-1948
Application 08/090,854
The appealed claims will stand or fall together as explained on page 22
of the Answer, and the appellants have not contended otherwise on the record
before us.
2
presence of a photoinitiator which comprises reducing the amount
of irradiation necessary to achieve an effective cure by adding
to the polymer a photosensitizer that absorbs UV radiation in a
wavelength range not obscured by the polymer. This appealed
subject matter is adequately illustrated by independent claim 1
which reads as follows:
1. In a process of curing epoxidized polymers of
conjugated dienes which contain aromatic moieties by exposing the
polymers or a formulation containing such polymers to ultraviolet
radiation in the presence of a photoinitiator, the improvement
which comprises reducing the amount of irradiation necessary to
achieve an effective cure by adding from 0.05 to 0.5 parts per
hundred polymer of a photosensitizer which absorbs UV radiation
in a wavelength range which is not obscured by the polymer to the
polymer prior to or during irradiation.
The reference relied upon by the examiner as evidence of
obviousness is:
Erickson et al. (Erickson) 5,229,464 Jul. 20, 1993
All of the claims on appeal stand rejected under 35 USC
§ 103 as being unpatentable over Erickson.2
We refer to the Brief and to the Answer for a complete
exposition of the opposing viewpoints expressed by the appellants
Appeal No. 95-1948
Application 08/090,854
3
and the examiner concerning the above noted rejection.
OPINION
This rejection will be sustained. Since we agree with the
findings of fact, conclusions of law and responses to arguments
set forth in the Answer, we will adopt these findings,
conclusions and responses as our own. We add the following
comments for emphasis and completeness.
The appellants argue that Erickson contains ?no example of a
combination of a photoinitiator which absorbs in the same
wavelength region as the aromatic moieties with a photosensitizer
which absorbs in a different wavelength region? (Brief, page 4).
This argument is unpersuasive for two reasons. In the first
place, obviousness under § 103 simply does not require
exemplification in a reference. In the second place, the
independent claims on appeal do not require ?a combination of a
photoinitiator which absorbs in the same wavelength region as the
aromatic moieties with a photosensitizer which absorbs in a
different wavelength region?.
The appellants also argue that ?there is no recognition of
the problem which the present invention solves? (Brief, page 4).
As pointed out above, however, the independent claims are not
Appeal No. 95-1948
Application 08/090,854
We here emphasize that the appellants have not contested in their Brief3
the examiner’s obviousness conclusion with respect to the photosensitizer amounts
defined by the independent claims on appeal.
4
limited to the features argued by the appellants and therefore do
not appear to be limited to the problem/solution which the
appellants have described in their specification. In any event,
it is a well settled general rule that merely discovering and
claiming a new benefit of an old process cannot render the
process again patentable even when the claimed process may not be
entirely old. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d3
1934, 1936 (Fed. Cir. 1990).
Finally, with regard to the appellants’ general reference to
?unexpected improved results? (Brief, page 4), we point out that
the record of this appeal contains no evidence that the results
achieved by a process of the scope defined by the independent
claims are different, much less unexpected, relative to the
results achieved by the process of Erickson.
For the reasons set forth above and in the Answer, we hereby
sustain the examiner’s § 103 rejection of claims 1, 3 through 11
and 13 through 18 as being unpatentable over Erickson.
The decision of the examiner is affirmed.
Appeal No. 95-1948
Application 08/090,854
5
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS WALTZ )
Administrative Patent Judge )
Appeal No. 95-1948
Application 08/090,854
6
Donald F. Haas
Shell Oil Co.
Intellectual Property
P.O. Box 2463
Houston, TX 77252-2463