Ex parte STATZ

Board of Patent Appeals and Interferences

Sep 21, 1998

08021741 (B.P.A.I. Sep. 21, 1998)

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(2) is not binding precedent of the Board.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. 46
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT J. STATZ
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Appeal No. 95-4387
Application 08/021,7411
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ON BRIEF
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Before KIMLIN, WEIFFENBACH and WARREN, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
This is an appeal under 35 U.S.C. ' 134 from the decision of the examiner finally rejecting
claim 27, the sole claim in the application.
We will not sustain the ground of rejection of the appealed claim under 35 U.S.C ' 103
over Ohmae et al. in view of Coran et al. and further in view of EP >139.2,3 It is well settled that

1 Application for patent filed February 23, 1993. According to appellant, this application is a
continuation-in-part of application 07/315,291, filed February 24, 1989, now abandoned, which is
a continuation-in-part of application 07/193,630, filed May 13, 1988, now abandoned.
2 The references relied on by the examiner with respect to the ground of rejection are listed at
Appeal No. 95-4387
Application 08/021,741
- 2 -
in order to establish a prima facie case of obviousness, A[b]oth the suggestion and the reasonable
expectation of success must be found in the prior art and not in applicant=s disclosure.@ In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). Thus, a prima facie case of
obviousness is established by showing some that objective teaching or suggestion in the applied
prior art taken as a whole and/or knowledge generally available to one of ordinary skill in the art
would have led that person to the claimed invention, including each and every limitation of the
claim, without recourse to the teachings in appellant's disclosure. See generally In re Oetiker,
977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring).
We have carefully considered the record before us in this appeal and conclude therefrom
that the examiner has failed to make out a prima facie case of obviousness with respect to
appealed claim 27. We cannot agree with the examiner that the combination of references
provides evidence that one of ordinary skill in this art would have been motivated to employ less
than 40 percent by weight of the thermoplastic copolyester resin in the adhesive resin
compositions of Ohmae et al. in order to arrive at the invention set forth in claim 27, in view of
the following teaching in this reference:
If the [thermoplastic copolyester resin] component (A) is less than 40% by weight and
the components (B) [, an ethylene copolymer having at least one functional group
selected from, inter alia, an epoxy group or a carboxylic acid group,] and (C) [, an
optional component which is a thermoplastic resin other than the resin (A),] the adhesion
of the resulting composition to polar group-containing synthetic resins, particularly, a
soft polyvinyl chloride resin, is seriously reduced; that is, the inherent characteristic of
the component (A) is lost. [Col. 5, lines 40-46; emphasis ours.]
Thus, one of ordinary skill in this art interested in adhesive resin compositions would not have
looked to the teachings of Coran et al, which are directed to thermoplastic resin compositions, for
motivation to employ a lesser amount of the thermoplastic copolyester resin, such as 30 weight
percent as required by claim 27, in the adhesive resin compositions of Ohmae et al. because there
would have been no reasonable expectation of successfully obtaining an adhesive resin
composition in doing so. Even in view of the difference in the properties of the resin

page 2 of the answer. We refer to these references in our opinion by the name associated
therewith by the examiner.
3 The examiner has withdrawn the grounds of rejection under ' 103 based on EP= 139 or Epstein
in view of Coran et al. (answer, page 3).
Appeal No. 95-4387
Application 08/021,741
- 3 -
compositions taught in these references, we further conclude that one of ordinary skill in this art
would not have considered the teachings of Coran et al. with respect to the adhesive resin
compositions of Ohmae et al. for two reasons. First, Ohmae et al. discloses that at least one of
the functional groups of component (B) can be an epoxy group, which functional group is not
disclosed in Coran et al. And, second, where the functional group of component (B) of Ohmae et
al. is a carboxylic acid group, there is no indication in Ohmae at al. that the carboxylic acid groups
are neutralized to any extent while they are completely neutralized in Coran et al. We also
conclude that one of ordinary skill in the art would not have found the requisite motivation to
adjust the amount of thermoplastic resin which may be present in the adhesive compositions of
Ohmae et al. in the teachings of EP =139 because we find that, unlike Ohmae et al. and Coran et
al., this reference does not disclose the use of a thermoplastic polyester resin in the crosslinkable
polymer compositions taught therein (e.g., page 2, lines 20-30).
Accordingly, in view of the differences in the teachings of the applied references, we
conclude that the combination of references would not have reasonably suggested the claimed
invention to one of ordinary skill in this art. In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
The examiner=s decision is reversed.
Reversed
Appeal No. 95-4387
Application 08/021,741
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EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Craig H. Evans
E.I. Du Pont De Nemours and Co.
Legal - Patents
Wilmington, DE 19898