Ex parte Bindelle

Board of Patent Appeals and Interferences

Feb 19, 1999

08003401 (B.P.A.I. Feb. 19, 1999)

Application for patent filed January 12, 1993. 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not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEAN-PAUL BINDELLE
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Appeal No. 95-3615
Application No. 08/003,4011
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HEARD: February 8, 1999
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Before GARRIS, WALTZ and KRATZ, 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 and 3 through 6 as amended
subsequent to the final rejection. The only other claim
remaining in the application, which is claim 13, stands
allowed by the examiner.
Appeal No. 95-3615
Application No. 08/003,401
2
The subject matter on appeal relates to a continuous
process for removing residual monomer from an aqueous latex of
a synthetic polymer. This appealed subject matter is
adequately illustrated by independent claim 1 which reads as
follows:
1. A continuous process for removing residual monomer
from an aqueous latex of a synthetic polymer comprising:
treating said latex of a synthetic polymer containing
residual monomer by passage through a heat exchanger
comprising a closed chamber divided into two distinct
superposed parts, an unobstructed upper part placed under
reduced pressure and adapted to communicate with a plant for
recovery of the residual monomer, and a lower part equipped
with a partitioning bounding two separate extended and
adjoining circuits, one of the circuits being traversed by the
latex to be treated and being maintained in communication, via
a top face extending over its entire path with the upper part
of the chamber, and the other circuit, isolated from the upper
part of the chamber, being traversed by a heat-transfer fluid
maintained at a temperature of about 40 to 100°C, said latex
to be treated and said heat-transfer fluid traversing their
respective circuits in opposite directions, and
removing said residual monomer.
No references have been relied upon by the examiner in
the rejection before us.
According to the examiner, "[c]laims 1 and 3-6 are
rejected under 35 U.S.C. § 112, first paragraph, as the
disclosure is enabling only for claims limited to a process
Appeal No. 95-3615
Application No. 08/003,401
3
for removing residual monomer from an aqueous latex, wherein
the aqueous latex comprises polyvinyl chloride, a vinyl
chloride copolymer, a rubber polymer or well-known functional
equivalents of these polymers. The claims are not enabled for
any other synthetic polymer latex. Further clarification is
required. See MPEP
§ 706.03(n) and 706.03(z)" (Answer, pages 2-3).
We cannot sustain this rejection.
We share the appellant’s basic position that on the
record of this appeal the examiner has failed to carry his
burden of establishing a prima facie case that the disclosure
of this application would not enable one with ordinary skill
in the art to practice the here claimed invention without
undue experimentation. In re Strahilevitz, 668 F.2d 1229,
1232, 212 USPQ 561, 563 (CCPA 1982). In this regard, we
reiterate the appellant’s point that many of the examiner’s
proffered reasons for doubting enablement are based upon
speculation, some of which are patently erroneous, rather than
evidence.
As for the examiner’s concern that experimentation would
be required to practice the process defined by the appealed
Appeal No. 95-3615
Application No. 08/003,401
4
claims, it is appropriate to emphasize that the test for undue
experimentation vis à vis enablement is not merely
quantitative since a considerable amount of experimentation is
permissible, if it is merely routine or if the specification
in question provides a reasonable amount of guidance. Ex
parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986);
cf., In re Brandstadter, 484 F.2d 1395, 1407, 179 USPQ 286,
294-295 (CCPA 1973). From our perspective, the record
reflects that any experimentation required to practice the
appellant’s claimed invention would be routine rather than
undue for an artisan with ordinary skill.
In making the rejection before us, the examiner in
essence has attempted to limit the appellant to claims
involving the specific materials disclosed in the subject
specification. However, to provide effective incentives,
claims must adequately protect inventors. To demand that the
first to disclose shall limit his claims to what he has found
will work or to materials which meet the guidelines specified
for "preferred" materials in a process such as the one here
involved would not serve the constitutional purpose of
Appeal No. 95-3615
Application No. 08/003,401
5
promoting progress in the useful arts. In re Goffe, 542 F.2d
564, 567, 191 USPQ 429, 431 (CCPA 1976).
In light of the foregoing, we cannot sustain the
examiner’s § 112, first paragraph, rejection of claims 1 and 3
through 6.
Appeal No. 95-3615
Application No. 08/003,401
6
The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
bae
Appeal No. 95-3615
Application No. 08/003,401
7
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