Ex parte Basset et al.

Board of Patent Appeals and Interferences

Oct 31, 2000

08320726 (B.P.A.I. Oct. 31, 2000)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DOMINIQUE BASSET,
ALAIN BOUILLOUX, and YVES LE DU
__________
Appeal No. 1997-2924
Application No. 08/320,726
__________
HEARD: Oct. 25, 2000
__________
Before JOHN D. SMITH, GARRIS, and OWENS, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the refusal of the
examiner to allow claims 1 through 3 and 10 as amended
subsequent to the final rejection. These are all of the
claims pending in the application.
Appeal No. 1997-2924
Application No. 08/320,726
2
The subject matter on appeal relates to an article of
manufacture having at least one weld line such as an
automobile fender made by injection molding via a composition
comprising a polyamide, a polypropylene and a resin
compatibilization agent, for example, maleinized
polypropylene. Further details of this appealed subject
matter are set forth in representative independent claim 1
which reads as follows:
1. An article of manufacture comprising per hundred parts
by weight a mixture of (i) 65 to 68 parts by weight of
polyamide, (ii) 20 to 30 parts by weight of a polypropylene
having a melt flow index, measured at 230EC/2.16 kg, lower
than 0.5, and (iii) 4 to 8 parts by weight of a resin
compatibilization agent selected from the group consisting of
maleinized polypropylene, maleinized polypropylene grafted
with PA6, and maleinized polypropylene grated with PA66/12 and
including at least one weld line, wherein (a) the ratio of the
viscosities of the polyolefin (ii) to the polyamide (i),
measured at a shear rate higher than 100 s , is greater than-1
0.70, and (b) the quantity of polyamide (i) is sufficient for
the elongation at break of said article to be greater than
10%.
The references relied upon by the examiner as evidence of
obviousness are:
Fukui et al (Fukui) 5,206,284 Apr.
27, 1993
Glotin et al. (Glotin)(EP) 0 342 066 Nov. 15,
1989
Appeal No. 1997-2924
Application No. 08/320,726
3
Nagao et al. (Nagao) (JP) 1-284785 Jun. 21, 1991
All of the appealed claims are rejected under 35 U.S.C.
§ 103 as being unpatentable over Nagao and Glotin in view of
Fukui.
For the reasons which follow, we cannot sustain this
rejection.
As argued by the appellants and recognized by the
examiner, none of the applied references discloses an article
of manufacture which includes a weld line. Nevertheless, the
examiner concludes that such an article made from a
composition in accordance with the appealed claims would have
been suggested by these references. This is because, in the
examiner’s view, the reference disclosures are generic to
articles having a weld line and to compositions of the type
defined by the appealed claims. We cannot agree.
It is well established that obviousness under 35 U.S.C.
§ 103 requires a suggestion to modify and a reasonable
expectation of success. In re O’Farrell, 853 F.2d 894, 903-
04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988).
This requirement for obviousness is not satisfied by the
applied references in light of their aforenoted deficiency
Appeal No. 1997-2924
Application No. 08/320,726
4
with respect to an article having a weld line and a
composition appropriate for making such an article. That is,
because of this deficiency, the references contain no guidance
concerning the manufacture of such an article or the
development of a composition suitable therefor. As a
consequence, even if the applied references are “generic” to
articles and compositions of the type claimed by the
appellants as urged by the examiner, there is simply nothing
in these references which would have suggested manufacturing
an article having a weld line via a composition in accordance
with the independent claim on appeal based upon a reasonable
expectation of success as required by 35 U.S.C. § 103.
Thus, even assuming an artisan were motivated to
manufacture an article having a weld line via the generic
compositions of the applied prior art, there is nothing in
this prior art which would have suggested modifying these
generic compositions in such a manner as to result in the
specific composition having the specific characteristics
defined by the independent claim before us. Likewise, the
references plainly contain nothing which would have given the
artisan a reasonable expectation for believing that the
Appeal No. 1997-2924
Application No. 08/320,726
5
resulting composition would be successful for the manufacture
of an article having a weld line. In re O’Farrell, id.
On the record of this appeal, it is only the appellants’
own disclosure which provides any basis for using the
composition of the appealed claims for manufacturing an
article having a weld line with a reasonable expectation that
such a use would be successful. Viewed from this perspective,
we believe the examiner has unwittingly fallen victim to the
impermissible application of hindsight in formulating the
rejection under consideration. W.L. Gore & Assocs. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Under the foregoing circumstances, it is our
determination that we cannot sustain the examiner’s section
103 rejection of the appealed claims as being unpatentable
over Nagao and Glotin in view of Fukui.
The decision of the examiner is reversed.
REVERSED
John D. Smith )
Administrative Patent Judge )
)
Appeal No. 1997-2924
Application No. 08/320,726
6
)
)
Bradley R. Garris ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Terry J. Owens )
Administrative Patent Judge )
BRG:tdl
Appeal No. 1997-2924
Application No. 08/320,726
7
PENNIE AND EDMONDS
1155 Avenue of the Americas
New York, NY 10036-2711