Ex parte Muller et al.

Board of Patent Appeals and Interferences

Apr 28, 1998

08124227 (B.P.A.I. Apr. 28, 1998)

Application for patent filed September 21, 1993. Appellants claim1
priority based on Japanese application 4-262348 filed September 30, 1992.
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journal and (2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HARALD D. MULLER and YOSHINOBU UEBA
_____________
Appeal No. 95-4716
Application 08/124,2271
______________
ON BRIEF
_______________
Before: SCHAFER, Administrative Patent Judge, and
McKELVEY, Senior Administrative Patent Judge, and
WALTZ, Administrative Patent Judge.
McKELVEY, Senior Administrative Patent Judge.
Decision on appeal under 35 U.S.C. § 134
The appeal is from a decision of the Primary Examiner
rejecting claims 11-24 as being unpatentable under 35 U.S.C.
§ 103 over Engler I (U.S. Patent 4,111,857) "in view of" Engler
III (U.S. Patent 4,089,857), Inokuchi (European Patent
Application 0 204 419 published December 10, 1986) and Gemmell
("A Straightforward Approach to the Synthesis of Unsymmetrical
Appeal No. 95-4716
Application 08/124,227
- 2 -
Tetrathioalkyl Tetrathiafulvalene Derivatives," 33 Tetrahedron
Letters 3923-26 (1992)).
Upon consideration of the record, including APPELLANTS'
BRIEF ON APPEAL (Paper 13), the EXAMINER'S ANSWER (Paper 14) and
the REPLY BRIEF (Paper 15), it is
ORDERED that the decision of the examiner rejecting
claims 11-24 is reversed.
The prior art fails to describe or render obvious the first
step in independent claims 11 or 12 (treating 1,3,4,6-tetrathia-
pentalene-2,5-dione at a temperature of 30EC or lower in an
alcohol solution containing an alkali metal alkoxide in an inert
atmosphere to form 1,3-dithiolate dianion). Accordingly, the
claimed processes, as a whole, would not have been rendered
obvious by the prior art cited by the examiner. The examiner's
reliance (Examiner's Answer, page 4) on In re Durden, 763 F.2d
1406, 226 USPQ 359 (Fed. Cir. 1985) is misplaced. See In re
Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995).
REVERSED
______________________________
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
)
Appeal No. 95-4716
Application 08/124,227
- 3 -
______________________________)
FRED E. McKELVEY, Senior ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
THOMAS WALTZ )
Administrative Patent Judge )
Appeal No. 95-4716
Application 08/124,227
- 4 -
cc:
SUGHRUE, MION, ZINN, MACPEAK & SEAS
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