Ex parte SLACK et al.

Board of Patent Appeals and Interferences

Jun 16, 1998

08018830 - (D) (B.P.A.I. Jun. 16, 1998)

Application for patent filed February 18, 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publication in a law journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM E. SLACK
and HERSEL T. KEMP, II
_____________
Appeal No. 95-0801
Application 08/018,8301
______________
ON BRIEF
_______________
Before GARRIS, OWENS and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 through 6, which are
all the claims in this application.
According to appellants, the invention is directed to a
Appeal No. 95-0801
Application 08/018,830
2
process of preparing polyisocyanates having isocyanurate
structure which comprises heating an organic isocyanate at a
temperature of 100-300EC. in the presence of a catalyst
containing components (a) and (b)(main brief, page 2). Claim
1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A process for the preparation of a
polyisocyanate having isocyanurate structure which comprises
heating an organic polyisocyanate, or mixtures thereof, to a
temperature of from about 100 to 300EC in the presence of a
catalytic amount of
(a) a compound selected from the group consisting of
i) lithium salts of aliphatic or aromatic
monocarboxylic or dicarboxylic acids
ii) lithium salts of hydroxyl group containing
compounds having from 1 to 3 hydroxyl
groups per compound, wherein said hydroxyl
groups are directly attached to an aromatic
ring, and
iii) lithium hydroxide; and
(b) an organic compound containing at least one
hydroxyl group for a period of from about 1 minute to about
240 minutes.
The examiner has relied upon the following reference in
support of the rejection for lack of enablement under the
Appeal No. 95-0801
Application 08/018,830
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first paragraph of 35 U.S.C. § 112:
Robin 4,412,073 Oct. 25, 1983
Claims 1 through 6 stand rejected under 35 U.S.C. § 112,
first paragraph, as the enablement of the specification is not
commensurate in scope with the claims (answer, page 1, last
paragraph, and the paragraph bridging pages 2-3). We reverse
this rejection for reasons which follow.
OPINION
The examiner states that appellants’ disclosure is
enabling only for claims limited to catalyst component (a)(i)
containing a total of from about 1 to 36 carbon atoms,
component (a)(ii) where the aromatic ring contains a total of
from 6 to 18 carbon atoms, and to component (b) containing
from 1 to 4 hydroxyl groups and having about 1 to 18 carbon
atoms (answer, paragraph bridging pages 2 and 3). The
examiner’s position is ?that the claims should be limited to
the inclusion of the clearly defined species of compounds
which the appellants have disclosed as being operative in a
process for the preparation of a polyisocyanate having an
Appeal No. 95-0801
Application 08/018,830
4
isocyanurate structure.? (answer, page 3). The examiner
additionally takes the position ?that the specification would
not enable any person skilled in the art to practice the
process defined by each of the rejected claims without undue
experimentation.? (answer, page 3). The examiner advances the
reasoning that catalytic systems are generally considered
unpredictable and specifically the catalysis of isocyanurate
forming processes by alkali metal derivatives takes place
unpredictably (answer, page 3, citing column 2, lines 34-38,
of Robin).
The specification, when filed, must enable one skilled in
the particular art to use the invention without undue
experimentation. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988). The specification must teach
those of skill in the art how to make and use the invention as
broadly as it is claimed. See In re Goodman, 11 F.3d 1046,
1050, 29 USPQ2d 2010, 2013 (Fed. Cir. 1993). However, it is
well settled that the initial burden of establishing lack of
enablement under the first paragraph of 35 U.S.C. § 112 lies
with the examiner. See In re Wright, 999 F.2d 1557, 1561, 27
Appeal No. 95-0801
Application 08/018,830
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USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Marzocchi, 439 F.2d
220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971).
We find that the examiner has not met this initial burden
of establishing lack of enablement. We agree with the
examiner that many catalytic processes are unpredictable. See
In re Angstadt, 537 F.2d 498, 502, 190 USPQ 214, 218 (CCPA
1976). However, the examiner’s reliance on Robin to show
unpredictability in the catalysts of the claimed process is
misplaced. Robin, at column 2, lines 34-41, discloses that
the onset of catalytic activity of alkali metal catalysts in
the preparation of isocyanurates is unpredictable but does not
teach that the components of the catalyst per se are
unpredictable.
Additionally, it must be noted that the examiner only
attempts to show the unpredictability of catalysts in the art
but fails to analyze any other factors involved in the
determination of undue experimentation. See In re Wands,
supra. As stated by the court in In re Angstadt, supra, each
case must be determined on its own facts. However, here, as
in Angstadt, appellants have provided those skilled in the art
Appeal No. 95-0801
Application 08/018,830
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with a large but finite list of catalyst components (see the
specification, pages 3-6), have actually carried out 25
examples of varying scope, and have presented guidelines
requiring only simple, routine experimentation. We find that
the evidence as a whole negates the examiner’s position that
persons of ordinary skill in this art must engage in undue
experimentation to determine what catalyst components will
work. The key word is ?undue?, not experimentation. See In re
Angstadt, 537 F.2d at 503, 190 USPQ at 219.
For the foregoing reasons, we find that the examiner has
failed to meet the initial burden of presenting any evidence
or reasoning as to why appellants’ disclosure is insufficient
to
enable one of ordinary skill in the art to carry out the
invention as claimed. Accordingly, the rejection of claims 1
through 6 under 35 U.S.C. § 112, first paragraph, is reversed.
Appeal No. 95-0801
Application 08/018,830
7
REVERSED
)
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS WALTZ )
Administrative Patent Judge )
Patent Department
Appeal No. 95-0801
Application 08/018,830
8
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