Ex parte Ouyang et al.

Board of Patent Appeals and Interferences

Sep 25, 1998

08038588 (B.P.A.I. Sep. 25, 1998)

Application for patent filed March 26, 1993.1
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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journal and (2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JIANGBO OUYANG, PHILIP D. DECK
and WILLIAM L. HARPEL
________________
Appeal No. 96-3906
Application No. 08/038,5881
________________
ON BRIEF
________________
Before WINTERS, GRON and WEIMAR, Administrative Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-3906
Application No. 08/038,588
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This appeal was taken from the examiner's decision
rejecting claims 1, 2 and 4 through 6. Claims 8 through 13,
which are the
only other claims remaining in the application, stand
withdrawn from further consideration by the examiner as
directed to a non-elected invention.
Claim 1, which is illustrative of the subject matter on
appeal, reads as follows:
1. A method for preparing metal surfaces for the
application of paint and siccative coatings thereto comprising
adding an effective amount to said metal surfaces of an
aqueous solution of citric acid, a hydroxycarboxylic acid
salt, a nonionic surfactant having an HLB of about 3 to about
8 and sodium xylene sulfonate.
The references relied on by the examiner are:
Austin 3,879,216 Apr. 22, 1975
Holder et al. (Holder) 4,789,406 Dec. 6, 1988
King et al. (King) 4,599,116 July 8, 1986
VanEenam 5,080,831 Jan. 14, 1992
Claims 1, 2 and 4 through 6 stand rejected under
35 U.S.C. § 112, second paragraph, as indefinite. Claims 1, 2
and 4 through 6 also stand rejected as based on a
specification which does not comply with the description and
enablement requirements of 35 U.S.C. § 112, first paragraph.
Finally, claims 1, 2 and 4 through 6 stand rejected under
Appeal No. 96-3906
Application No. 08/038,588
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35 U.S.C. § 103 as unpatentable over the combined disclosures
of Austin, Holder, King and VanEenam.
Appeal No. 96-3906
Application No. 08/038,588
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DISCUSSION
Initially, we note that applicants proffered an amendment
after Final Rejection on August 17, 1995 (Paper No. 12). The
examiner denied entry of that amendment in the Advisory Action
mailed August 30, 1995 (Paper No. 13). Therefore, the
examiner's reference to claim language "now claimed in the
amendment after final" makes little sense (Examiner's Answer,
page 8, lines 1 and 2). A correct copy of claim 1 on appeal
is reproduced supra.
Respecting the rejection of claims 1, 2 and 4 through 6
under 35 U.S.C. § 112, second paragraph, the examiner states
that reciting "an effective amount" in claim 1 is indefinite
because "the claim fails to state the function which is to be
achieved by using said an effective amount" (Examiner's
Answer, page 3, third paragraph). This rejection is
manifestly untenable. Pending claims in a patent application
are read, not in a vacuum, but rather in light of the
supporting specification. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971). Here, it is abundantly
clear from the specification that "an effective amount" refers
to an amount of the aqueous solution effective to clean the
Appeal No. 96-3906
Application No. 08/038,588
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metal surface and prepare same for painting. For example, see
the specification, page 2, lines 20 through 24; and
Appeal No. 96-3906
Application No. 08/038,588
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page 8, lines 1 through 5. It is the examiner's burden, in
setting forth a rejection under 35 U.S.C. § 112, second
paragraph, to explain why the specification does not conclude
with one or more claims particularly pointing out and
distinctly claiming the subject matter which appellants regard
as their invention. The examiner has not satisfied that
burden here. This rejection is reversed.
Again, in setting forth the rejection of claims 1, 2 and
4 through 6 under 35 U.S.C. § 112, first paragraph, the
examiner has the burden of establishing that the original
specification does not provide written descriptive support for
the invention now claimed and that the claims are based on a
non-enabling disclosure. Again, the examiner has not
satisfied that burden. With respect to written descriptive
support, the examiner argues that the original specification
does not support the recitation "preparing metal surfaces for
the application of paint" (Examiner's Answer, paragraph
bridging pages 3 and 4). The argument lacks merit. The
entire thrust of the original specification relates to
cleaning metal surfaces and preparing same for the application
of paint, using appellants' aqueous cleaning solution. With
Appeal No. 96-3906
Application No. 08/038,588
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respect to enablement, the examiner does not explain why he
doubts the truth or accuracy of any statement in the
supporting disclosure. Nor does the examiner back up
assertions of his own with acceptable evidence or reasoning
inconsistent with the contested statement. Therefore, the
examiner has not established a prima facie case of lack of
enablement. In re Armbruster, 512 F.2d 676, 677, 185 USPQ
152, 153 (CCPA 1975). This rejection is reversed.
In rejecting claims 1, 2 and 4 through 6 under 35 U.S.C.
§ 103, the examiner begins with Austin's disclosure of an
oxide remover solution and the application of that solution to
a metal surface to be cleaned. According to the examiner, the
oxide remover solution is an aqueous acidic solution
preferably containing citric acid and a nonionic surfactant.
As stated by the examiner, the difference between Austin's
method and the claimed method is that Austin does not disclose
a hydroxy-carboxylic acid salt (e.g., sodium citrate) or
sodium xylene sulfonate in the oxide remover solution. Nor
does Austin disclose a nonionic surfactant "having an HLB of
about 3 to
Appeal No. 96-3906
Application No. 08/038,588
Nonionic surfactants are often characterized in terms2
of their HLB (hydrophile-lipophile balance) number. See Kirk-
Othmer, 22 Encyclopedia of Chemical Technology 360-62 (3d ed.,
John Wiley & Sons, Inc. 1983) (copy enclosed with this
opinion).
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about 8."2
According to the examiner, it would have been obvious to
modify Austin's oxide remover solution by adding (1) sodium
citrate, per the teachings of Holder and King; and (2) sodium
xylene sulfonate, per the teachings of VanEenam (Examiner's
Answer, paragraph bridging pages 6 and 7). Further, the
examiner says, it would have been obvious to adjust the HLB of
Austin's nonionic surfactant in the range of about 3 to about
8 "to obtain optimum results" (Examiner's Answer, page 7,
first full paragraph). The examiner argues that a person
having ordinary
skill in the art, by modifying Austin's method in this way,
would have arrived at the instantly claimed method. The
argument lacks merit. Certainly, the prior art could be
modified in the manner proposed by the examiner. This can be
seen from a review of appellants' specification and claims.
However, merely because the prior art could be so modified
Appeal No. 96-3906
Application No. 08/038,588
On return of this application to the Examining Corps,3
the examiner should ensure that dependent claim 6 is canceled.
Claim 6 reiterates the limitation appearing in claim 1 that
the nonionic surfactant has an HLB from about 3 to about 8.
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would not have made the modification obvious unless the prior
art suggested the desirability of the modification. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). Here, the examiner does not point to any portion or
portions of the cited references establishing how or why the
prior art "suggested the desirability of the [proposed]
modification." In re Gordon, 733 F.2d at 902, 221 USPQ at
1127.
We also invite attention to King's disclosure suggesting
that the HLB number of the surfactant, or at least one of the
combination of surfactants disclosed by King, is preferably
controlled within at least about 12 up to about 15, and
especially from about 13 to about 15 (King, column 4, line 62
through column 5, line 41). This being the case, it would
appear that King tends to teach away from, not toward, the
claimed
invention which requires a nonionic surfactant "having an HLB
of about 3 to about 8."3
Appeal No. 96-3906
Application No. 08/038,588
Claim 6, therefore, does not "specify a further limitation of
the subject matter claimed." 35 U.S.C. § 112, fourth
paragraph.
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According to the examiner, it would have been obvious to
modify Austin's method, per the teachings of Holder, King, and
VanEenam, "because all references are from the same technical
endeavor" (Examiner's Answer, page 7, line 1). That, however,
is not sufficient reason or justification to support the
rejection under 35 U.S.C. § 103. It does not follow, merely
because all references are from the same field of endeavor,
that the cited
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Application No. 08/038,588
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prior art suggests the desirability of the proposed
modification
of Austin's method.
The Patent and Trademark Office has the burden under
35 U.S.C. § 103 to establish a prima facie case of
obviousness. It can satisfy this burden only by showing some
objective teaching in the prior art or that knowledge
generally available to one of ordinary skill in the art would
lead that individual to combine the relevant teachings of the
references. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). The examiner has not satisfied that
burden here. On this record, the examiner has not established
that there is adequate suggestion or incentive stemming from
the prior art which would have led a person having ordinary
skill to combine the references in the manner proposed.
Rather, the examiner has engaged in a hindsight reconstruction
of the claimed invention, using appellants' disclosure as a
template and selecting elements from references to fill the
gaps. In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888
(Fed. Cir. 1991). The rejection under 35 U.S.C. § 103 is
reversed.
Appeal No. 96-3906
Application No. 08/038,588
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For the reasons set forth in the body of this opinion, we
do not sustain the rejections under 35 U.S.C. § 112, first or
second paragraphs, or the rejection under 35 U.S.C. § 103.
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
TEDDY S. GRON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ELIZABETH C. WEIMAR )
Administrative Patent Judge )
clm
Appeal No. 96-3906
Application No. 08/038,588
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Philip H. Von Neida
Betz Laboratories, Inc.
4636 Somerton Road
Trevose, PA 19053