Ex Parte Bloom

Board of Patent Appeals and Interferences

Mar 24, 2008

10428146 (B.P.A.I. Mar. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL D. BLOOM
____________

Appeal 2008-0963
Application 10/428,146
Technology Center 1700
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Decided: March 24, 2008
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHARLES F. WARREN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-56. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.

Appeal 2008-0963
Application 10/428,146

Appellant claims a composition comprising a triacylglycerol oil (e.g.,
a heat polymerized triacylglycerol oil) which has been hydrogenated and
which has carbon-carbon bonds between triacylglycerol units of the oil
(claim 1).
Representative claim 1 reads as follows:
1. A composition comprising a hydrogenated heat polymerized
triacylglycerol oil, said hydrogenated heat polymerized triacylglycerol oil
having carbon-carbon bonds between triacylglycerol units of said oil.

The references set forth below are relied upon by the Examiner as
evidence of unpatentability.
Morgan 2,519,492 Aug. 22, 1950
Kodali 6,291,409 B1 Sep. 18, 2001

Claims 1, 5-9, 37-41, and 49-56 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Morgan.
Claims 2-4 and 29-35 are rejected under 35 U.S.C. § 102(b) as
anticipated by, or alternatively under 35 U.S.C. § 103(a) as being
unpatentable over Morgan.
Claims 42-48 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over, Morgan.
Claims 1-49 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Kodali.
Claims 50-56 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kodali in view of Morgan.
The above-noted rejections cannot be sustained for the reasons
expressed below.
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Appeal 2008-0963
Application 10/428,146

The Rejections based on Morgan
As correctly argued by Appellant (App. Br. 15-38; Reply Br. 7-9), the
hydrogenated alkyd resins of Morgan do not anticipate the hydrogenated
triacylglycerol oil having carbon-carbon bonds between triacylglycerol units
required by the rejected claims. The Examiner attempts to rebut this
argument as follows:
Appellants [sic] … continue to insist that the prior art,
Morgan, does not possess the triacylglycerol structure as
claimed in view of page 16 of the Appeal Brief. However,
appellants [sic] fail to recognize that "triacyl" means three
"acyl" units and each "acyl" unit is represented by the structure
as shown in the following table. The structure of "glycerol" is
also shown in the table. As shown in the table, the structure
disclosed in Morgan clearly possesses the triacylglycerol
structure as claimed.

(Ans. 17.)
This rebuttal is unpersuasive. Appellant has correctly explained
that, during examination proceedings, claims should be given their
broadest reasonable interpretation consistent with the Specification
and should be read in light of the Specification as they would be
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Appeal 2008-0963
Application 10/428,146

interpreted by one of ordinary skill in the art (Reply Br. 3). In re Am.
Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
Examiner has provided no support whatsoever for the above-quoted
proposition that the rejected claims would be interpreted by an artisan
consistent with Appellant’s Specification to include the hydrogenated
alkyd resin structure of Morgan. On the other hand, Appellant has
presented substantial argument and evidence that the Examiner’s
claim interpretation is improper (Reply Br. 4-9). Significantly, this
argument and evidence have not been specifically addressed by the
Examiner.
Under these circumstances, we find that Morgan does not
anticipate the so-rejected claims. Moreover, this deficiency is not
supplied in the § 103 rejections since the Examiner’s obviousness
analysis does not address the flaw of the § 102 rejection. Therefore,
we cannot sustain either the § 102 or the § 103 rejections based on
Morgan.
The Rejections based on Kodali
All of the rejected claims require carbon-carbon bonds between
triacylglycerol units. According to the Examiner, “the cyclo-
propanation process of Kodali does not remove all the triacylglycerol
units," and therefore “the Examiner has a reasonable basis that the
resins of Kodali … inherently possess the carbon-carbon bonds
between triacylglycerol units as claimed when crosslinked or
oxidized” (Ans. para. bridging 15-16). We cannot agree with the
Examiner’s inherency position.
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Appeal 2008-0963
Application 10/428,146

We understand that Kodali’s cyclopropanation process yields a
product which may often include a number of triacylglycerols that
have not been cyclopropanated (col. 3, ll. 31-42). However, in the
absence of appropriate polymerization or crosslinking, such a product
will not contain the required carbon-carbon bonds, and there is no
teaching or suggestion in Kodali of polymerizing or crosslinking
patentee’s product. To the contrary, Kodali’s cyclopropanation
method decreases a propensity of the fatty acyl group towards
oxidation and/or polymerization (col. 12, ll. 43-45).
The Examiner’s inherency position may be based on the
possibility that crosslinking of Kodali’s product could occur thereby
yielding the carbon-carbon bonds under consideration. However,
such a possibility is inadequate to establish inherency as Appellant has
correctly explained (App. Br. 42). To establish inherency, the
evidence must make clear that the missing descriptive matter is
necessarily present in the prior art. In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999). Inherency may not be established by
probabilities or possibilities, and therefore the mere fact that a certain
thing may result from a given set of circumstances is not sufficient.
Id.
For these reasons, we cannot the § 102 rejection of claims 1-49
as being anticipated by Kodali. Furthermore, since the infirmity of
this rejection is not cured or even addressed by the Examiner’s
obviousness position, we also cannot sustain the § 103 rejection of
claims 50-56 as being unpatentable over Kodali in view of Morgan.

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Appeal 2008-0963
Application 10/428,146

CONCLUSION
The decision of the Examiner is reversed.
REVERSED

cam

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