Ex parte SACRIPANTE et al.

Board of Patent Appeals and Interferences

May 5, 1998

08264264 (B.P.A.I. May. 5, 1998)

Application for patent filed June 23, 1994. The application is said to be a1
division of application 08/144,964, now U.S. Patent 5,348,831. The real party in
interest is Xerox Corporation.
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journal and (2) is not binding precedent of the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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GUERINO G. SACRIPANTE, MELVIN D. CROUCHER,
and STEPHAN V. DRAPPEL

_____________
Appeal No. 96-2574
Application 08/264,2641
______________
ON BRIEF
_______________
Before: SOFOCLEOUS and GARRIS, Administrative Patent Judges,
and McKELVEY, Senior Administrative Patent Judge.
McKELVEY, Senior Administrative Patent Judge.
Decision on appeal under 35 U.S.C. § 134
Appeal No. 96-2574
Application 08/264,264
- 2 -
The appeal is from a decision of the Primary Examiner
rejecting claims 17-18, 20, 23-24 and 27-28 as being
unpatentable under 35 U.S.C. § 103 over Japanese patent 06-
111627, published April 22, 1994. We reverse.
The difference between the claimed process and the
process described in the Japanese patent is that applicants
claim the use of a polyoxyalkylenediamine (second formula in
claim 17) to make a polyesterimide resin whereas the Japanese
patent describes only the use of alkylene diamines (e.g.,
ethylene diamine and trimethylenediamine) and aromatic
diamines (e.g., 4,4'-diamino-diphenyl methane and 4,4'-
diaminodiphenyl ether) (translation, pages 12-13). On the
record before us, we find no reason (sometimes referred to as
a teaching, a suggestion or motivation), for substituting a
polyxoyalkylenediamine in the process described in the
Japanese patent for making polyesterimides.
To be sure there is an unchallenged statement by the
examiner (final rejection, page 4) that "the use of
polyoxyalkylenediamines to produce polyesterimides is well
known in the art." However, the mere fact that a
polyoxyalkylene-diamine may have been used to make some
Appeal No. 96-2574
Application 08/264,264
- 3 -
otherwise unidentified polyesterimide does not establish that
it would have been obvious to use a polyoxyalkylenediamine in
the process described by the Japanese patent. Compare In re
Baird, 16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir. 1994) and In re
Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992).
In large measure the examiner has bottomed his rejection
on In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985).
More to the point, in our view, is the rationale set out in
In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995).
REVERSED
______________________________
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
______________________________)
BRADLEY R. GARRIS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS
AND
)
INTERFERENCES
)
______________________________)
FRED E. McKELVEY, Senior )
Appeal No. 96-2574
Application 08/264,264
- 4 -
Administrative Patent Judge )
Appeal No. 96-2574
Application 08/264,264
- 5 -
cc:
Ronald Zibelli, Esq.
Eugene O. Pazazzo, Esq.
XEROX CORPORATION
Xerox Square - 020
Rochester, NY 14644