Ex parte Arita et al.

Board of Patent Appeals and Interferences

Jun 21, 1999

08004890 (B.P.A.I. Jun. 21, 1999)

Application for patent filed January 21, 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(2) is not binding precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte YOSHIHIRO ARITA,
KIYOSHI KAWAMURA, KENTA KANAIDA,
and SATOSHI YAMADA
__________
Appeal No. 96-0641
Application 08/004,8901
__________
ON BRIEF
__________
Before KIMLIN, GARRIS, and SPIEGEL, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 3 through 8, 10 and 11 which are all of the claims
Appeal No. 96-0641
Application No. 08/004,890
2
remaining in the application.
The subject matter on appeal relates to an aqueous resin
composition comprising an oxazoline group-containing polymer,
a carboxyl group-containing polymer and an acidic compound-
amine salt catalyst which is formed from at least one acid
selected from the group consisting of phosphoric acid,
phosphorous acid, hydrochloric acid, sulfuric acid, nitric
acid and an organic sulfonic acid. The appealed subject
matter also relates to a curing process which utilizes the
aforementioned composition. This subject matter is adequately
illustrated by independent claim 3 which reads as follows:
3. An aqueous resin composition comprising in an aqueous
medium an oxazoline group-containing polymer (A), a carboxyl
group-containing polymer (B), and an acidic compound-amine
salt catalyst (C) in an amount of from 0.1 to 10% by weight
based on the total weight of the oxazoline group-containing
polymer (A) and the carboxyl group-containing polymer (B), the
acidic compound from which the acidic compound-amine salt
catalyst (C) is formed being at least one acid selected from
the group consisting of phosphoric acid, phosphorous acid,
hydrochloric acid, sulfuric acid, nitric acid and an organic
sulfonic acid.
The references relied upon by the examiner as evidence of
obviousness are:
Miller et al. 4,113,674 Sep. 12, 1978
(Miller)
Keskey et al. 4,644,032 Feb. 17, 1987
Appeal No. 96-0641
Application No. 08/004,890
3
(Keskey)
BASF 30 48 493 Jul. 15, 1982
(German)
All of the claims on appeal stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Keskey in view of the BASF
German reference or Miller. According to the examiner, “[i]t
would have been obvious to use any of the catalyst or acid
salt compounds of Miller or BASF in the Keskey composition”
(answer, page 4).
We can not agree and therefore can not sustain the above
noted rejection.
For obviousness under 35 U.S.C. § 103, there must have
been a suggestion as well as a reasonable expectation of
success for the modification here proposed by the examiner.
In re O’Farrell, 853 F.2d 894, 903-904, 7 USPQ2d 1673, 1680-
1681 (Fed. Cir. 1988). In this case, however, the applied
prior art contains neither the requisite suggestion nor
reasonable expectation of success for providing the
composition of Keskey with an acidic compound-amine salt
catalyst of the type taught by the secondary references.
This is because the polymer reactants (i.e., an oxazoline
Appeal No. 96-0641
Application No. 08/004,890
4
group-containing polymer and a carboxyl group-containing
polymer) of Keskey are entirely different from the reactants
which are catalyzed in the German reference and Miller
respectively. For example, in the German reference, the
reaction of N-vinylimidazol in the presence of hydroxyammonium
sulfate to produce N-vinylimidazol polymerides (e.g., see
Example 1 of the translation) has no apparent similarity at
all to Keskey’s aforementioned reaction. As a consequence,
this prior art would not have provided an artisan of ordinary
skill with motivation or a reasonable expectation of success
in using the hydroxyammonium sulfate of the German reference
as a catalyst for the composition of Keskey. Likewise, while
Miller discloses using catalysts such as ammonium sulfate to
produce poly-2-alkyl-2-oxazolines by the ring opening
polymerization of oxazoline monomers (e.g., see lines 6
through 27 in column 1), the examiner points to nothing and we
perceive nothing in Miller’s disclosure which would have
provided motivation or a reasonable expectation of success in
using such catalysts for reacting an oxazoline group-
containing polymer with a carboxyl group-containing polymer as
desired by Keskey.
Appeal No. 96-0641
Application No. 08/004,890
5
In light of the foregoing, it is clear to us that we can
not sustain the examiner’s section 103 rejection of claims 3
through 8, 10 and 11 as being unpatentable over Keskey in view
of the German reference or Miller.
Appeal No. 96-0641
Application No. 08/004,890
6
The decision of the examiner is reversed.
REVERSED
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Carol A. Spiegel )
Administrative Patent Judge )
tdc
Appeal No. 96-0641
Application No. 08/004,890
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