Ex parte BASIL et al.

Board of Patent Appeals and Interferences

Jan 12, 1999

08048866 (B.P.A.I. Jan. 12, 1999)

Application for patent filed April 14, 1993. According1
to appellants, the application is a continuation-in-part of
Application 07/300,663, filed January 23, 1989, now abandoned,
which is a continuation-in-part of Application 06/914,857,
filed October 3, 1986, now U.S. Patent No. 4,799,963, issued
January 24, 1989.
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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journal and (2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOHN D. BASIL, ROBERT M. HUNIA
and CHIA-CHENG LIN
________________
Appeal No. 95-0808
Application 08/048,8661
________________
ON BRIEF
________________
Before WILLIAM F. SMITH, JOHN D. SMITH and OWENS,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-0808
Application 08/048,866
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This is an appeal from the examiner’s final rejection of
claims 1-10. Claims 11-20, which are the only other claims in
the application, stand withdrawn from consideration by the
examiner as being directed toward a nonelected invention.
THE INVENTION
Appellants’ claimed invention is directed toward an
optically transparent coating composition which reduces
transmission of ultraviolet radiation. The composition
consists essentially of 1) an alkoxide which has a recited
general formula and is partially hydrolyzed, and 2) the
reaction product of tetraalkylsilicate and cerium oxide.
Appellants state that this composition is useful for forming
coatings on plastics such as polycarbonate which protect the
plastics from damage caused by ultraviolet radiation
(specification, page 1). Claim 1 is illustrative and reads as
follows:
1. An optically transparent coating composition which
reduces transmission of ultraviolet radiation consisting
essentially of:
a. a partially hydrolyzed alkoxide of the general
formula R M(OR') wherein R is an organic radical, M isx z-x
selected from the group consisting of silicon, aluminum,
titanium, zirconium and mixtures thereof, R' is a low
molecular weight alkyl radical, z is the valence of M, and x
Appeal No. 95-0808
Application 08/048,866
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is less than z and may be zero except when M is silicon; and
b. the reaction product of tetraalkylsilicate and
cerium oxide.
THE REFERENCES
Fujioka et al. (Fujioka) 4,405,679 Sep. 20,
1983
Basil et al. (Basil) 4,799,963 Jan. 24,
1989
H. Schroeder, “Oxide Layers Deposited from Organic Solutions”,
in 5 Physics of Thin Films 134-39 (G. Haas and R.E. Thun eds.,
Academic Press 1969).
THE REJECTIONS
Claims 1-10 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Basil. Claims 1-10 stand rejected under
35 U.S.C. § 103 as being obvious over Fujioka in view of
Schroeder. Claims 1-10 stand rejected under 35 U.S.C. § 112,
first and second paragraphs, on the grounds that the claimed
invention is not described in such full, clear, concise and
exact terms as to enable a person of ordinary skill in the art
to make and use the invention, and for failing to particularly
point out and distinctly claim the subject matter which
Appeal No. 95-0808
Application 08/048,866
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appellants regard as the invention.
OPINION
The application before us is a continuation-in-part of
Application 07/300,663 which previously was before the board
(Appeal No. 92-2464). In that case, the only independent
claim read as follows:
1. An optically transparent coating composition
which reduces transmission of ultraviolet
radiation consisting essentially
of:
a. an alkoxide of the general formula R M(OR’) x z-x
wherein R is an organic radical selected
from the group consisting of alkyl,
vinyl, phenyl, methoxyethyl, (-glycidoxypropyl
and (-methacryloxypropyl, M is selected from
the group consisting of silicon, aluminum,
titanium, zirconium and mixtures thereof,
R’ is an alkyl radical which forms a
hydrolyzable alkoxide, z is the valence of M
and x is less than z and may be zero, partially
hydrolyzed such that a portion of OR’ is
replaced with hydroxyl groups; and
b. the reaction product of tetraethylorthosilicate
and cerium oxide.
The board affirmed rejections of all of the claims under 35
Appeal No. 95-0808
Application 08/048,866
In the present case, an obviousness-type double2
patenting rejection over claims 1-20 of Basil has been
overcome by a terminal disclaimer (advisory action mailed on
February 18, 1994, paper no. 6).
Appellants’ reply brief was not entered by the examiner3
(letter mailed on August 26, 1994, paper no. 11) and,
therefore, is not before us for consideration.
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U.S.C. § 102(e) over Basil, under 35 U.S.C. § 103 over Fujioka
in view of Schroeder, and under the judicially-created
doctrine of obviousness-type double patenting over claims 1-20
of Basil, and reversed rejections under 35 U.S.C. § 112, first
and second paragraphs. 2
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with the
examiner that appellants’ claimed invention is anticipated by
Basil and would have been obvious to one of ordinary skill in
the art at the time of appellants’ invention over Fujioka in
view of Schroeder. Accordingly, the aforementioned3
rejections under 35 U.S.C. §§ 102(e) and 103 are affirmed.
However, we reverse the rejections under 35 U.S.C. § 112,
first and second paragraphs.
Appeal No. 95-0808
Application 08/048,866
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Appellants state that the claims stand or fall in five
groups (brief, page 3). Appellants, however, do not point out
the relevance of the limitations of the dependent claims to
the patentability of these claims. Consequently, dependent
claims 2-10 stand or fall with independent claim 1 from which
they directly or indirectly depend. See In re Burckel, 592
F.2d 1175, 1178-9, 201 USPQ 67, 70 (CCPA 1979); In re Herbert,
461 F.2d 1390, 1391, 174 USPQ 259, 260 (CCPA 1972); 37 CFR
§ 1.192(c)(5)(1993). We therefore address only claim 1.
Rejection under 35 U.S.C. § 102(e) over Basil
Basil discloses optically transparent coating
compositions which reduce the transmission of ultraviolet
radiation (col. 2, lines 16-20). As acknowledged by
appellants (brief, page 5), in Basil’s Example III, the
composition includes a mixture of tetraethylorthosilicate and
cerium oxide under conditions in which the
tetraethylorthosilicate is partially hydrolyzed.
Tetraethylorthosilicate falls within the general alkoxide
Appeal No. 95-0808
Application 08/048,866
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formula recited in appellants’ claim 1.
Appellants argue that Basil does not disclose reacting
cerium oxide with tetraethylorthosilicate and adding the
reaction product to a partially hydrolyzed alkoxide (brief,
pages 5-6). This argument is not well taken because these
steps are not required by appellants’ claim 1. The claim
merely requires the presence of a partially hydrolyzed
alkoxide of the recited formula which, as stated above, can be
tetraethylorthosilicate, and the reaction product of cerium
oxide and tetraethylorthosilicate. Thus, Basil’s Example III
anticipates appellants’ claim 1 if some of the
tetraethylorthosilicate in that example reacts with at least
some of the cerium oxide.
In Basil’s Example III, the mixture of cerium oxide and
tetraethylorthosilicate is stirred at 60EC for 2 hours. In
the only example in appellants’ specification (page 6), the
mixture of tetraethylorthosilicate and cerium oxide is stirred
for 4 hours at room temperature. Although the stirring time
in Basil’s Example III is less than that in appellants’
Appeal No. 95-0808
Application 08/048,866
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example, the temperature is much higher. Thus, it reasonably
appears that if a reaction product is formed between the
tetraethylorthosilicate and cerium oxide in appellants’
example, a reaction product of
these components also is formed in Basil’s Example III. See
In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657-58 (Fed.
Cir. 1990). In such a situation, the burden shifts to
appellant to provide evidence that the product in Basil’s
Example III does not necessarily or inherently include the
reaction product recited in appellants’ claim 1. See In re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In
re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977); In re Fessmann, 489 F.2d 742, 745, 180 USPQ 324, 326
(CCPA 1974). The reason is that the Patent and Trademark
Office is not able to manufacture and compare products. See
Best, 562 F.2d at 1255, 195 USPQ at 434; In re Brown, 459 F.2d
531, 535, 173 USPQ 685, 688 (CCPA 1972). Because appellants
have not carried this burden, we affirm the rejection under 35
U.S.C. § 102(e) over Basil.
Appeal No. 95-0808
Application 08/048,866
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Rejection under 35 U.S.C. § 103 over
Fujioka in view of Schroeder
In Example 4 of Fujioka, a colorless, transparent
overcoat composition is formed by mixing (-glycidoxypropyl
trimethoxy-silane and tetraethoxysilane, i.e.,
tetraethylorthosilicate, to effect hydrolysis. The (-
glycidoxypropyl trimethoxysilane falls within the scope of the
alkoxide recited in appellants’ claim 1.
Fujioka does not disclose inclusion of cerium oxide in his
overcoat compositions, but teaches that the compositions may
contain an ultraviolet absorbent (col. 8, lines 21-34).
Schroeder teaches that cerium oxide is one of four
disclosed metal oxides which are depositable from organic
solutions and which exhibit an especially steep rise of
absorption in the near ultraviolet range, and that layers
which contain these metal oxides serve as efficient cutoff
filters for shorter-wave ultraviolet radiation (page 137).
In our opinion, the teaching by Schroeder that cerium
oxide is an effective ultraviolet ray absorbent in layers
would have fairly suggested, to one of ordinary skill in the
art, use of
Appeal No. 95-0808
Application 08/048,866
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cerium oxide as the ultraviolet ray absorbent in Fujioka’s
overcoat layer composition. In Fujioka’s Example 4, the
reaction mixture is left standing at room temperature for more
than 20 hours. Appellants’ specification (page 6) indicates
that stirring a mixture of tetraethylorthosilicate and cerium
oxide for 4 hours at room temperature produces a reaction
product. Thus, it reasonably appears that if a reaction
product is formed in appellants’ example, then including
cerium oxide in Fujioka’s mixture, which stands at the same
temperature for a much longer time period, also would produce
a reaction product.
Appellants argue that Fujioka does not disclose cerium
oxide and that Schroeder does not disclose or suggest the
reaction product of cerium oxide and tetraalkylsilicate or the
addition of the reaction product to the partial hydrozylate of
an alkoxide (brief, page 5). This argument is not persuasive
because appellants are attacking the references individually
when the rejection is based on a combination of references.
See In re Keller, 642 F.2d 413, 426, 208 USPQ 871, 882 (CCPA
1981); In re Young, 403 F.2d 754, 757-58, 159 USPQ 725, 728
Appeal No. 95-0808
Application 08/048,866
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(CCPA 1968).
For the above reasons, we conclude, based on the
preponderance of the evidence of record, that appellants’
claimed
invention would have been obvious to one of ordinary skill in
the art within the meaning of 35 U.S.C. § 103.
Rejections under 35 U.S.C. § 112,
first and second paragraphs
A claim complies with 35 U.S.C. § 112, second paragraph,
if the claim language is as precise as the subject matter
permits and if, when read in light of the specification, the
claim reasonably apprises those skilled in the art both of the
utilization and scope of the invention. See Shatterproof
Glass v. Libby-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ
634, 641 (Fed. Cir. 1985).
The examiner argues that claim 1 indicates that the
formula recited therein is that of a partially hydrolyzed
alkoxide and that the formula therefore should contain at
least one hydroxyl group (answer, page 3). This argument is
not well taken because in view of appellants’ specification
Appeal No. 95-0808
Application 08/048,866
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(pages 4-5), it is clear that the recited general formula
refers to the alkoxide before hydrolysis, and that the claim
recites that this alkoxide is partially hydrolyzed.
The examiner argues that appellants’ claim 1 does not
specify the length or molecular weight of the alkyl chain, and
that the claim therefore is meaningless (answer, pages 3 and
5). Claims are analyzed not in a vacuum but, rather, in light
of the application disclosure and the prior art. See In re
Kroekel, 504 F.2d 1143, 1146, 183 USPQ 610, 612 (CCPA 1974);
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238-39 (CCPA
1971). The examiner’s argument is not persuasive because the
examiner has not explained why, in view of appellants’
specification and the prior art, the meaning of “low molecular
weight alkyl radical” in appellants’ claim 1 would not have
been reasonably clear to one of ordinary skill in the art.
Regarding enablement, a predecessor of our appellate
reviewing court stated in In re Marzocchi, 439 F.2d 220, 223,
169 USPQ 367, 369-70 (CCPA 1971):
[A] specification disclosure which contains a
teaching of the manner and process of making and
Appeal No. 95-0808
Application 08/048,866
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using the invention in terms which correspond in
scope to those used in describing and defining the
subject matter sought to be patented must be taken
as in compliance with the enabling requirement of
the first paragraph of § 112 unless there is reason
to doubt the objective truth of the statements
contained therein which must be relied on for
enabling support. . . .
. . . .
. . . it 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. Otherwise, there would be no need for
the applicant to go to the trouble and expense of
supporting his presumptively accurate disclosure.
The examiner argues that “organic radical” in appellants’
claim 1 encompasses an infinite number of species which are
beyond the scope of the invention and encompasses an enormous
number of compounds which would not be expected to be useful
(answer, pages 3 and 5). The examiner, however, does not
provide the required evidence or reasoning in support of this
assertion. Consequently, the examiner’s argument is not
convincing. We note that a claim is not indefinite merely
because it is broad. See In re Gardner, 427 F.2d 786, 788,
166 USPQ 138, 140 (CCPA 1970); In re Borkowski, 422 F.2d 904,
Appeal No. 95-0808
Application 08/048,866
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909, 164 USPQ 642, 645-6 (CCPA 1970). We further note that
the examiner does not address the rejected claims
individually, and that the examiner’s reasoning clearly does
not apply to claim 3 which recites six organic radical species
and to claims 4 and 5 which each recite a single organic
radical specie.
For the above reasons, we do not sustain the rejections
under 35 U.S.C. § 112, first and second paragraphs.
DECISION
The rejections of claims 1-10 under 35 U.S.C. § 102(e) as
being anticipated by Basil, and under 35 U.S.C. § 103 as being
obvious over Fujioka in view of Schroeder, are affirmed. The
rejections of claims 1-10 under 35 U.S.C. § 112, first and
second paragraphs are reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Appeal No. 95-0808
Application 08/048,866
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WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-0808
Application 08/048,866
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Donna L. Seidel
Patent Department
PPG Industries, Inc.
One PPG Place
Pittsburgh, PA 15272
TJO/ki