Ex parte SOMMERFELD et al.

Board of Patent Appeals and Interferences

Aug 24, 1998

08043620 - (D) (B.P.A.I. Aug. 24, 1998)

Application for patent filed April 7, 1993. According 1
to appellants, this application is a continuation of Application
No. 07/662,539, filed February 28, 1991, now abandoned; which is
a continuation-in-part of Application No. 07/414,417, filed
September 29, 1989, now abandoned; which is a continuation-in-
part of Application No. 07/162,966, filed March 2, 1988, now
abandoned.
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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journal and (2) is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte EUGENE G. SOMMERFELD and FRANK L. SCHADT III
________________
Appeal No. 95-3734
Application No. 08/043,6201
________________
ON BRIEF
________________
Before WINTERS, OWENS and WEIMAR, Administrative Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision rejecting
claims 1 through 23, 40 through 42 and 99. Claims 24 through 39
and 46 through 98, which are the only other claims remaining in
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the application, stand withdrawn from further consideration by
the examiner as directed to a non-elected invention.
THE INVENTION
The invention relates to a class of interpenetrating polymer
networks which are dispersible in conventional coating solvents.
According to appellants, such dispersions are useful in preparing
protective and/or decorative film coatings and are particularly
useful in photosensitive or imaging formulations such as photo
resists, sodder masks, and the like.
Claims 1 and 99, which are illustrative of the subject
matter on appeal, read as follows:
1. A composition of matter comprising an interpenetrating
polymer network containing at least two polymer networks which
(a) are polymerized and/or crosslinked in the immediate
presence of one another, and
(b) are dispersible in a solvent with the proviso that at
least one of the polymer networks is formed by
polymerization in a solvent and that one of the
following takes place in formation of two polymer
networks:
(i) the two polymer networks are formed sequentially
wherein the second polymer network is formed in a
solvent dispersion of the first formed polymer
network, or
(ii) the two polymer networks are formed simultaneously
or substantially simultaneously by independent and
non-interfering mechanisms of polymerization.
[Emphasis added].
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99. A composition of matter comprising an interpenetrating
polymer network wherein:
(a) at least two distinct polymer networks from [sic] the
interpenetrating polymer network and
(b) the interpenetrating polymer network is dispersible in
a solvent. [Emphasis added].
THE REFERENCES
The prior art references relied on by the examiner are:
Skinner et al. (Skinner) 4,128,600 Dec. 5, 1978
Jones 4,235,972 Nov. 25, 1980
Simpson 4,361,676 Nov. 30, 1982
Wright et al. (Wright) 4,377,661 Mar. 22, 1983
Roemer et al. (Roemer) 4,396,476 Aug. 2, 1983
Arkles et al. (Arkles) 4,970,263 Nov. 13, 1990
THE REJECTIONS
Claims 1 through 23, 40 through 42 and 99 stand rejected
under 35 U.S.C. § 102 as anticipated by or, in the alternative,
under 35 U.S.C. § 103 as unpatentable over "Skinner, Arkles,
applicants' disclosure (SPEC, pages 1, 2 (top)), Jones, Wright,
Roemer and/or Simpson" (Examiner's Answer, page 3, second
paragraph). Claims 1 through 23, 40 through 42 and 99 also stand
rejected under 35 U.S.C. § 112, first and second paragraphs, "as
the claimed invention is not described in such full, clear,
concise and exact terms as to enable any person skilled in the
art to make and use the same, and/or for failing to particularly
point out and distinctly claim the subject matter which applicant
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regards as the invention" (Examiner's Answer, page 5, first
paragraph).
DELIBERATIONS
Our deliberations in this matter have included evaluation
and review of the following materials: (1) the instant
specification, including all of the claims on appeal; (2) the
Appeal Brief; (3) the Examiner's Answer; (4) the above-cited
references relied on by the examiner; (5) the Sommerfeld
Declaration executed November 18, 1992; (6) the Schadt
Declaration executed December 2, 1992; (7) the Schadt
Supplemental Declaration executed February 4, 1993; and (8) the
Sperling Declaration executed December 22, 1993.
On consideration of the record, including the above-listed
materials, we reverse the examiner's rejections.
DISCUSSION
In setting forth the prior art rejection of claims 1 through
23, 40 through 42, and 99, the examiner argues that the claimed
and prior art products reasonably appear to be identical or
substantially identical, or are produced by identical or
substantially identical processes. Under these circumstances,
the examiner argues, the Patent and Trademark Office (PTO) can
require appellants to prove that the prior art products do not
necessarily or inherently possess the characteristics of their
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claimed product. Specifically, according to the examiner, the
PTO can require appellants to prove that the prior art products
do not necessarily or inherently possess the physical property
"dispersible in a solvent" recited in the appealed claims. With
this line of reasoning, the examiner rejects all of the appealed
claims concurrently for anticipation by inherency under 35 U.S.C.
§ 102 and for obviousness under 35 U.S.C. § 103. See In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
On this record, however, the examiner has not established
that any of the above-cited prior art references or the
publications referenced in the specification, page 1, do, in
fact, disclose products which reasonably appear to be identical
or substantially identical to the claimed products. On the
contrary, it would appear that conventional interpenetrating
polymer networks of the prior art cannot be dispersed in solvents
because extensive network formation far beyond the gel point
leads to an interpenetrating polymer network which has
substantially infinite molecular weight and which is considered
to extend throughout the volume of the polymerized material
(specification, page 7, lines 22 through 28). In contrast, the
claimed compositions are dispersible in a solvent. They are
prepared, for example, by incorporating just sufficient
crosslinking precursor so that polymerization terminates before
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or near, i.e., substantially at, the gel point (specification,
page 17, lines 6 through 9).
In short, the examiner has not adduced sufficient evidence
to support a conclusion that the claimed and prior art products
reasonably appear to be identical or substantially identical.
The examiner has not established that the claimed and prior art
products are produced by identical or substantially identical
processes. Accordingly, the PTO cannot here require appellants
"to prove that the prior art products do not necessarily or
inherently possess the characteristics of [their] claimed
product." In re Best, 562 F.2d at 1255, 195 USPQ at 433. On
this record, the examiner has not established a prima facie case
of anticipation under 35 U.S.C. § 102 or obviousness under
35 U.S.C. § 103, and the burden of persuasion has not shifted to
the appellants to rebut any such prima facie case. We therefore
find it unnecessary to discuss the Sommerfeld Declaration
executed November 18, 1992; the Schadt Declaration executed
December 2, 1992; or the Sperling Declaration executed
December 22, 1993; all designed to rebut a prima facie case of
unpatentability under 35 U.S.C. § 102 or 35 U.S.C. § 103.
The prior art rejection is reversed.
We next consider the rejection of claims 1 through 23, 40
through 42, and 99 under 35 U.S.C. § 112, first and second
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paragraphs. Having carefully reviewed the examiner's statement
of this rejection, we find no argument, evidence, or reasoning
which would serve to support a conclusion that the appealed
claims do not particularly point out and distinctly claim the
subject matter which appellants regard as their invention.
Accordingly, we summarily reverse the rejection to the extent
that it is predicated on 35 U.S.C. § 112, second paragraph.
Respecting the first paragraph of 35 U.S.C. § 112, the
examiner focuses on the issue of enablement and whether the scope
of protection sought is supported and justified by the
specification disclosure. In this regard, our reviewing court
has made it clear that the PTO must substantiate its rejection
for lack of enablement with reasons. As stated in In re
Armbruster, 512 F.2d 676, 677-78, 185 USPQ 152, 153 (CCPA 1975),
quoting from In re Marzocchi, 169 USPQ 367, 369-70 (CCPA 1971):
[I]t is incumbent upon the Patent Office, whenever a
rejection on this basis is made, to explain why it
doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of its
own with acceptable evidence or reasoning which is
inconsistent with the contested statement.
Here, according to the examiner, the specification lacks adequate
guidelines enabling any person skilled in the art to make and use
the claimed invention throughout its scope. The examiner does
not, however, explain why he doubts the truth or accuracy of any
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statement in the supporting disclosure or back up assertions of
his own with acceptable evidence or reasoning inconsistent with
the contested statement. In re Armbruster, 512 F.2d at 677-78,
185 USPQ at 153.
We have carefully reviewed the specification, which contains
an exhaustive disclosure pertaining to the claimed
interpenetrating polymer network. The specification discloses,
inter alia, the monomeric precursors, including crosslinking
precursors, and the amounts of those precursors required to make
the claimed products. The specification further discloses the
process and process conditions necessary for preparing the
claimed interpenetrating polymer network, the physical properties
possessed by the claimed interpenetrating polymer network, and
applications of the claimed interpenetrating polymer network, for
example, photoresist applications. Finally, the specification
includes thirteen working examples. All in all, we have no doubt
that the specification imparts sufficient information and
guidelines enabling any person skilled in the art to make and use
the claimed invention throughout its scope. We therefore reverse
the non-prior art rejection, to the extent that it is predicated
on 35 U.S.C. § 112, first paragraph.
Where, as here, the examiner has not established a prima
facie case of lack of enablement under 35 U.S.C. § 112, first
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paragraph, or of indefiniteness under 35 U.S.C. § 112, second
paragraph, we find it unnecessary to discuss the Supplemental
Schadt Declaration executed February 4, 1993. That declaration
was offered to rebut any such prima facie case.
The examiner's decision rejecting claims 1 through 23, 40
through 42, and 99 on prior art and non-prior art grounds is
reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ELIZABETH C. WEIMAR )
Administrative Patent Judge )
Appeal No. 95-3734
Application No. 08/043,620
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Andrew G. Golian
Patent Division
Legal Dept.
E.I. du Pont de Nemours & Co.
Wilmington, DE 19898