Ex parte WOO

Board of Patent Appeals and Interferences

Sep 23, 1998

07956107 (B.P.A.I. Sep. 23, 1998)

Application for patent filed October 2, 1992. 1
According to appellant, this application is a division of
Application No. 07/727,472, filed July 9, 1991, now U.S.
Patent No. 5,176,943, issued January 5, 1993.
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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journal and (2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte EDWARD J. WOO
________________
Appeal No. 95-3989
Application No. 07/956,1071
________________
ON BRIEF
________________
Before KIMLIN, PAK and OWENS, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-3989
Application No. 07/956,107
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This is an appeal from the final rejection of claims 1-
12, all the claims remaining in the present application.
Claim 1 is illustrative:
1. An antistatic composition, comprising:
(a) 100 parts by weight of, ethylenically unsaturated,
nonfluorinated copolymerizable, radiation curable monomers;
(b) from 0.5 to 5.0 parts by weight of a nonionic
perfluoro surfactant; and
(c) from 0.5 to 5.0 parts by weight of an ionic perfluoro
surfactant.
The examiner relies upon the following references as
evidence of obviousness:
Keough 4,623,594 Nov. 18, 1986
Sato et al. (Sato) 57-42741 Mar. 10, 1982
(Japanese Kokai publication)
Yamamoto et al. (Yamamoto) 64-46739 Feb. 21, 1989
(Japanese Kokai publication)
It is evident from illustrative claim 1 that appellant's
claimed invention is directed to an antistatic composition
comprising an ethylenically unsaturated, nonfluorinated,
copolymerizable, radiation curable monomer, a nonionic
perfluoro surfactant and an ionic perfluoro surfactant.
According to appellant, the claimed composition can be cured
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Application No. 07/956,107
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with radiation to form an abrasion-resistant, transparent,
stable antistatic coating for optical recording media.
Appealed claims 1-12 stand rejected under 35 U.S.C.
§ 112, second paragraph. The appealed claims also stand
rejected under 35 U.S.C. § 112, first paragraph. In addition,
appealed claims 1-12 stand rejected under 35 U.S.C. § 102(b)
or, in the alternative, under 35 U.S.C. § 35 U.S.C. § 103 as
being unpatentable over either Sato or Yamamoto. Finally,
claims 1-12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Sato, Yamamoto and Keough.
Upon careful consideration of the opposing arguments
presented on appeal, we find that none of the examiner's
rejections are sustainable.
We consider first the rejection of the appealed claims
under 35 U.S.C. § 112, second paragraph. According to the
examiner, the claims are indefinite because "[t]he term
'monomer' is not clearly distinctive of the term 'prepolymer'
as used and disclosed by applicant (specification, page 9)"
(page 5 of Answer).
In making a rejection under 35 U.S.C. § 112, second
paragraph, it is incumbent upon the examiner in the first
Appeal No. 95-3989
Application No. 07/956,107
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instance to establish with objective evidence or compelling
scientific reasoning that one of ordinary skill in the art
would not understand the meaning and scope of the criticized
language when such language is read in light of the
specification and state of the prior art. In re Sneed, 710
F.2d 1544, 1548,
218 USPQ 385, 388 (Fed. Cir. 1983). Appellant's
specification, at page 9, line 1, expressly teaches that it is
preferable that substantially all of the prepolymers are
monomeric in form, and, at page 8, lines 24-27, the
specification teaches that ethylenically unsaturated compounds
having acrylic, methacrylic, vinyl and allyl functional groups
are exemplary of such prepolymers. In light of this
disclosure the examiner has not established on this record
that one of ordinary skill in the art would have difficulty in
understanding which monomers having acrylic, methacrylic,
vinyl and allyl groups would be suitable as copolymerizable,
radiation curable monomers. Also, the examiner has not
explained why one of ordinary skill in the art would not be
guided in this determination by the materials identified by
trade name in the specification examples. The fact that the
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Application No. 07/956,107
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examiner considers the materials of the applied references to
be within the scope of the claims is irrelevant to the
definiteness of the claim term "monomer." (See page 5 of
Answer.)
The examiner's rejection of the appealed claims under
35 U.S.C. § 112, first paragraph, is similarly flawed. The
examiner states "[t]here is no disclosure of material under
the designation 'monomer' or 'prepolymer' sufficient to give
the specific guidance necessary to make and use the
composition invention of this application" (page 5 of Answer).
Again, the examiner has the initial burden of establishing
departures from requirements of § 112, first paragraph, such
as lack of enablement, by compelling reasoning or objective
evidence. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ
561, 563 (CCPA 1982); In re Marzocchi, 439 F.2d 220, 223, 169
USPQ 367, 369 (CCPA 1971). In the present case, the examiner
has not satisfied his burden of demonstrating that the
aforementioned descriptions at pages 8 and 9 of the present
specification, as well as in the examples, would not describe
the claimed monomers to one of ordinary skill in the art or
enable such an artisan to practice the claimed invention
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without undue experimentation. In particular, we are in
substantial agreement with the position advanced by appellant
at page 15 of the Brief.
We now turn to the rejection of the appealed claims under
35 U.S.C. § 102/§ 103 over Sato. Although there is no dispute
that Sato discloses the claimed nonionic perfluoro surfactant
and ionic perfluoro surfactant in a polymeric composition, we
agree with appellant that Sato does not describe, within the
meaning of § 102, or render obvious under § 103, the presently
claimed radiation curable monomer. Sato expressly discloses
at page 2 of the translation that the invention relates to
plastic compositions wherein "plastics" is defined as "natural
and synthetic elastomers, plastomers, and heat-curing resins."
At page 6 of the translation, second paragraph, the reference
lists specific plastics. We find no factual basis for the
examiner's position that the generic term "plastics" includes
materials which are known as monomers. Compositions that are
molded by heat-curing are normally thermosetting polymers.
Also, all the working examples of Sato treat a polymerized,
cured sample with the surfactants. The examiner has not
explained why it would have been obvious for one of ordinary
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skill in the art to depart from the teachings of Sato and add
the surfactants to an uncured monomer composition, as required
by the appealed claims.
We will also not sustain the examiner's § 102/§ 103
rejection of the appealed claims over Yamamoto. Yamamoto
discloses a radiation curable composition that may contain a
wide variety of curable components, including monomers. The
composition of Yamamoto also includes a fluoric surfactant
that can be ionic, nonionic and amphoteric. The referenced
composition also includes a defoaming agent that can be
selected from alcohols, fatty acids, fatty acid esters,
polypropylene or polyethylene glycols, amines, amides, ethers,
phosphoric acid esters, metal soaps, silicone oils and
surfactants which contain perfluoroalkyl groups and phosphorus
atoms. According to appellant, the surfactant which serves as
the defoaming agent can be either ionic or nonionic.
Consequently, although it is possible to select from the
Yamamoto disclosure a radiation curable component, a fluoric
surfactant and a defoaming agent that meets the requirements
of the appealed claims, we agree with appellant that Yamamoto
would have provided no guidance to one of ordinary skill in
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the art to formulate the claimed composition. In our view,
one of ordinary skill in the art would have arrived at the
claimed composition only by serendipity, rather than from the
requisite suggestion by the prior art. Accordingly, we find
no description of the claimed invention in support of the
examiner's rejection under § 102, and we further find that the
claimed invention would not have been obvious to one of
ordinary skill in the art within the meaning of § 103.
Finally, we concur with appellant that the appealed
claims would not have been obvious over the combined teachings
of Sato, Yamamoto and Keough. The examiner states at page 4
of the Answer that Keough discloses formulations employing a
mixture of ionic and nonionic surfactants. However, like
appellant, we find no such disclosure in the reference.
Furthermore, Keough does not disclose or suggest perfluoro
antistatic agents and, therefore, Keough would have provided
no teaching or suggestion of substituting a monomer in the
polymeric formulation of Sato which comprises a mixture of
ionic and nonionic perfluoro antistatic agents. In addition,
the antistatic agents of Keough are reactive with the electron
radiation curable prepolymer, whereas appellant submits that
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the perfluoro surfactants of Sato and Yamamoto are not
electron beam reactive. We note that the examiner has not
rebutted this argument of appellant.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
clm
Appeal No. 95-3989
Application No. 07/956,107
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3M Office of Intellectual Property
Counsel
P.O. Box 33427
St. Paul, MN 55133-3427