Ex Parte Bidstrup et al

Board of Patent Appeals and Interferences

Jul 3, 2003

09023470 (B.P.A.I. Jul. 3, 2003)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.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 DAVID ELTON BIDSTRUP
and
LESLIE MITCHELL BLAIR

Appeal No. 2002-1190
Application No. 09/023,470

ON BRIEF

Before KIMLIN, WALTZ and MOORE, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 and
4-11. Claims 12-14 have been deemed allowable by the examiner.
Claim 1 is illustrative:
1. A process for stabilizing and whitening melt-fabricable
fluoropolymer resin having total unstable fraction of no more
than 0.3%, comprising melt extruding said resin in the presence
of alkali metal nitrate to obtain fluoropolymer resin having
improved color and/or stability, said resin being free of boron
nitride.
Appeal No. 2002-1190
Application No. 09/023,470
1 The examiner has withdrawn the rejections based on prior
art (see page 3 of Answer).
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The examiner does not rely upon prior art in the rejection
of the appealed claims.
Appellants' claimed invention is directed to a method for
stabilizing and whitening a melt-fabricable fluoropolymer resin
having no more than 0.3% of total unstable fraction. The method
entails incorporating an alkali metal nitrate in the resin before
it is extruded, with the proviso that the resin is "free of boron
nitride" (claim 1).
Appealed claims 1 and 4-11 stand rejected under 35 U.S.C.
§ 112, first paragraph, description requirement.1
Appellants submit at page 4 of the Brief that "[c]laims 1
and 4-11 stand of [sic, or] fall together with respect to issues
1 and 2" (second paragraph). Since appellants' issue 1 concerns
the § 112, first paragraph rejection, all the appealed claims
stand or fall together with claim 1.
We have thoroughly reviewed each of appellants' arguments
for patentability. However, we are in complete agreement with
the examiner that appellants' specification, as originally filed,
does not provide descriptive support for the claimed subject
matter within the meaning of § 112, first paragraph.
Accordingly, we will sustain the examiner's rejection.
Appeal No. 2002-1190
Application No. 09/023,470
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As recognized by appellants, the relevant inquiry is whether
the original specification reasonably conveys to one of ordinary
skill in the art that appellants had in their possession the
concept of what is presently claimed. In re Anderson, 471 F.2d
1237, 1244, 176 USPQ 331, 336 (CCPA 1973). In particular,
although appellants acknowledge that the claim language "said
resin being free of boron nitride" is not disclosed in the
specification, the dispositive issue on appeal is whether
appellants' original specification would reasonably convey to one
of ordinary skill in the art that the fluoropolymer resin
comprising alkali metal nitrate is free of boron nitride before
extrusion.
Like the examiner, we find nothing in the original
specification or the present record which indicates that
appellants conveyed the concept of processing only fluoropolymer
resins that are free of boron nitride. On the contrary,
appellants indicate in their Brief that one of the contemplated
utilities for their extruded resin is wire insulation, and
Buckmaster, of record, discloses that it was known in the art
that foamed fluoropolymer resins are used for wire insulation
because of a lower dielectric constant, and that "boron nitride
is attractive because it is thermally stable, chemically inert,
has excellent electrical properties . . . is white and has low
Appeal No. 2002-1190
Application No. 09/023,470
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toxicity" (column 1, lines 31-35). Accordingly, absent evidence
to the contrary, we find it reasonable to conclude that one of
ordinary skill in the art would have understood the present
invention to be inclusive of compositions comprising the known
boron nitride as a nucleating agent. We are not persuaded by
appellants' argument that because one of the purposes of the
present invention is not to form bubbles during extrusion, "the
presence of boron nitride would be inimical to Applicants'
process" (page 5 of Brief, first paragraph). Manifestly, there
is a clear distinction between the formation of unwanted, random
bubbles and deliberate homogenous foaming. As noted by the
examiner, there is no disclosure or suggestion in the present
specification that foaming the extruded fluoropolymer is inimical
to appellants' invention.
Appellants cite Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd.
Pat. App. & Int. 1993) as legal support for the propriety of the
claimed negative limitation in the absence of its disclosure in
the specification. However, unlike in Parks, there is no
declaration evidence of record which establishes that one of
ordinary skill in the art would have recognized that the claimed
extrusion process must be conducted on a fluoropolymer resin that
is free of boron nitride (see Parks at page 1236, last
paragraph). It is well settled that appellants' arguments in the
Appeal No. 2002-1190
Application No. 09/023,470
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Brief cannot take the place of objective evidence. In re
Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974).
Concerning appellants' reference to "the practice in the
European Patent Office" (page 6 of Brief, penultimate paragraph),
such practice has no bearing on proceedings before this Board.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
THOMAS A. WALTZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JAMES T. MOORE )
Administrative Patent Judge )
ECK:clm
Appeal No. 2002-1190
Application No. 09/023,470
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