Ex parte BOARDMAN et al.

Board of Patent Appeals and Interferences

Sep 29, 1998

07626904 (B.P.A.I. Sep. 29, 1998)

Application for patent filed December 13, 1990.1
Notwithstanding the examiner’s entry authorization (see2
Paper No. 21), the amendment filed September 12, 1994 (see
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not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte LARRY D. BOARDMAN and JOEL D. OXMAN
__________
Appeal No. 95-0331
Application No. 07/626,9041
__________
ON BRIEF
__________
Before JOHN D. SMITH, GARRIS and WARREN, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 2,
3, 5, 7-13, 15-17, 19, 20, 22, 24, 26-32, 34-36, 42, 43, 46-
51, 56, 57, 59, 61-63 and 65-87 . The only other claims2
Appeal No. 95-0331
Application No. 07/626,904
Paper No. 20) has not been physically entered.
2
remaining in the application, which are claims 52-55, have
been allowed by the examiner.
The subject matter on appeal relates to a hydrosilation
process and composition as well as to the products made
thereby which involves a particular type of platinum catalyst
and a particular type of free-radical photoinitiator. This
appealed subject matter is adequately illustrated by
independent claim 3, a copy of which taken from the
appellants’ Brief is appended to this decision.
The references relied upon by the examiner in the prior
art rejections before us are:
Gruber 4,017,652 Apr. 12,
1977
McDowell 4,169,167 Sep. 25,
1979
Drahnak 4,530,879 Jul. 23,
1985
Eckberg 4,587,137 May 6,
1986
Appeal No. 95-0331
Application No. 07/626,904
The examiner’s provisional rejection under the doctrine3
of obviousness-type double patenting over the claims of
Application 07/626,905 has been nullified by the fact that
this application is now abandoned.
We observe that dependent claim 62 does not appear to4
further restrict parent claim 24 as required by the fourth
paragraph of 35 U.S.C. § 112. The appellants and the examiner
should address and resolve this issue in any further
prosecution that may occur.
3
In support of her double patenting rejections, the
examiner has also relied upon the claims of U.S. 4,916,169
(Boardman) and the claims of Application 07/627,009 . 3
All of the claims on appeal are rejected under the4
doctrine of obviousness-type double patenting over the claims
of Boardman in view of Drahnak, Eckberg and McDowell.
All of the claims on appeal also are provisionally
rejected under the doctrine of obviousness-type double
patenting over the claims of the ‘009 application in view of
Drahnak, Eckberg and McDowell.
All appealed claims except claims 10, 29, 78 and 84 are
rejected under 35 U.S.C. § 103 as being unpatentable over
Drahnak taken with Eckberg in view of McDowell or Gruber or
alternatively in view of only McDowell.
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Application No. 07/626,904
4
Finally, “[c]laims 10, 29, 78 and 84 are rejected under
35 U.S.C. § 103 as being unpatentable over Drahnak and Eckberg
as applied to claims 9, 28, 77 and 83 above, and further in
view of Boardman ‘169" (Answer, page 13).
As a preliminary matter, we point out that the appellants
have stated that the appealed claims stand or fall together;
see page 10 of the Brief.
OPINION
For the reasons which follow, we will sustain each of the
above noted rejections except for the examiner’s § 103
rejection of claims 10, 29, 78 and 84.
THE OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTION
It is appropriate to initially address the appellants’
argument that, “[a]ccording to In re Braat, 19 U.S.P.Q.2d 1289
(Fed. Cir. 1991), a ‘two-way’ determination is necessary in
order to sustain a rejection for obviousness-type double
patenting” (Brief, page 11). This is incorrect. In fact,
under the circumstances of the case at bar, a “one-way”
analysis is the proper test for assessing the merits of the
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Application No. 07/626,904
5
subject rejection for the reasons fully detailed in In re
Emert, 124 F.3d 1458, 44 USPQ2d 1149 (Fed. Cir. 1997).
Furthermore, the record before us on this appeal necessarily
leads us to a “one-way” analysis of this rejection since the
only arguments presented by the appellants concern a “one-way”
as opposed to a “two-way” determination.
Regarding these arguments, we discern no persuasive merit
in the appellants’ contention that, because the catalyst
claimed by Boardman and the catalyst disclosed by Drahnak are
dissimilar, it would not have been obvious to replace the
former with the latter. In our view, it would have been
obvious for one with ordinary skill in the art to replace the
claimed catalyst of Boardman with the catalyst of Drahnak in
order to obtain the disclosed advantages associated therewith
(e.g., see lines 47 through 57 in column 2 and lines 53
through 61 in column 3). Moreover, there would have been a
reasonable expectation that the replacement would have enjoyed
success since Drahnak expressly discloses using his catalyst
for effecting hydrosilation reactions of the type claimed by
Boardman (as well as by the appellants). In re O’Farrell, 853
F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
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Application No. 07/626,904
6
Additionally, we agree with the examiner’s conclusion
that it would have been obvious for one with ordinary skill in
the art to provide the process and composition claimed by
Boardman with photoinitiators of the type taught by McDowell
in view of Eckberg’s teaching of using photoinitiators
generally in hydrosilation reactions involving platinum
catalysts. In this latter regard, we are mindful of the
appellants’ argument that McDowell contains no disclosure
relating his photoinitiators to processes involving
hydrosilation reactions and platinum catalysts. From our
perspective, however, this deficiency of McDowell is supplied
by Eckberg. That is, Eckberg’s aforementioned teaching of
using photoinitiators generally in hydrosilation reactions
involving platinum catalyst would have led an artisan with
ordinary skill to a reasonable expectation that the specific
photoinitiators of McDowell (which correspond to those here
claimed) would be successful in the catalytic hydrosilation
processes and compositions claimed by Boardman.
For the above stated reasons, we will sustain the
examiner’s rejection of all the appealed claims under the
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Application No. 07/626,904
7
obviousness-type double patenting doctrine over the claims of
Boardman in view of Drahnak, Eckberg and McDowell.
THE PROVISIONAL OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTION
The appellants’ arguments against the merits of this
rejection correspond to those previously discussed with
respect to the obviousness-type double patenting rejection
over the claims of Boardman. These arguments are unpersuasive
for reasons analogous to those set forth previously. We also
will sustain, therefore, the examiner’s provisional rejection
of all the appealed claims under the obviousness-type double
patenting doctrine over the claims of the ‘009 application in
view of Drahnak, Eckberg and McDowell.
THE § 103 REJECTIONS
Like the examiner, we conclude that it would have been
obvious for an artisan with ordinary skill to use the
hydrosilation catalyst of Drahnak in combination with a
photoinitiator in accordance with Eckberg’s teaching of using
photoinitiators and catalysts together in a hydrosilation
process or composition and to employ as a specific
photoinitiator those of the type taught by McDowell or Gruber.
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Application No. 07/626,904
8
As indicated earlier, the artisan would have been motivated to
combine these prior art teachings in order to obtain the
advantages taught by Drahnak to attend use of his catalyst as
well as the advantages taught by Eckberg to attend use of a
photoinitiator and catalyst together in the hydrosilation
reactions under consideration. Further, the artisan would
have had a reasonable expectation of successfully effecting
such reactions using Drahnak’s catalyst in light of patentee’s
explicit teachings with respect thereto and using the specific
photoinitiators of McDowell or Gruber in light of Eckberg’s
teachings of employing photoinitiators generally in
combination with platinum catalysts to effect hydrosilation
reactions. O’Farrell, Id.
In addition to the unpersuasive arguments previously
addressed, the appellants argue that the teachings of Drahnak
and Eckberg are in conflict and thus not combinable.
Specifically, the appellants point out that “the composition
of Eckberg would be expected to react prematurely at room
temperature because of the nature of the precious metal or
precious metal-containing catalyst that Eckberg utilizes”
whereas “[t]he catalyst of Drahnak ... would not be expected
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9
to activate a hydrosilation reaction at temperatures below
about 50°C in the absence of actinic radiation” (Brief, page
21, emphasis in original). Contrary to the appellants’
belief, their above quoted point militates for rather than
against combining the teachings of Eckberg and Drahnak in the
manner proposed. That is, an artisan would have been yet
further motivated to use the catalyst of Drahnak rather than
the catalyst of Eckberg in order to avoid the plainly
undesirable premature reaction referred to by Eckberg.
Finally, the appellants argue that both Drahnak and
Eckberg are silent with respect to curing by visible
radiation. This argument is unpersuasive because none of the
independent claims on appeal requires curing by visible
radiation and because the appealed claims stand or fall
together as noted earlier in this decision. In any event, the
argument lacks persuasive merit. While Drahnak may prefer use
of ultraviolet radiation for curing, he discloses using
actinic radiation generally (see lines 13 through 16 in column
9) and more specifically any radiation source emitting
radiation below about 4000 Angstroms (see lines 20 and 21 in
column 9), thereby suggesting the use of visible light.
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10
Further, patentee explicitly teaches using radiation having
wavelengths of 3900 Angstroms (see line 46 in column 9), and a
3900 Angstrom wavelength is applicable to both the longest
ultraviolet radiation wavelength and the shortest visible
radiation wavelength (e.g., see Hackh’s Chemical Dictionary,
3rd edition, page 716, copy attached).
Under these circumstances, we also will sustain the § 103
rejection of all appealed claims except for claims 10, 29, 78
and 84 as being unpatentable over Drahnak taken with Eckberg
in view of McDowell or Gruber or in view of only McDowell.
However, we cannot sustain the examiner’s § 103 rejection
of claims 10, 29, 78 and 84 “as being unpatentable over
Drahnak and Eckberg as applied to claims 9, 28, 77 and 83
above, and further in view of Boardman ‘169.” On the record
before us, the Boardman reference does not appear to be prior
art, and the examiner has offered utterly no exposition in
support of her implicitly-held contrary view. It follows that
the examiner has failed to carry her initial burden of
establishing a prima facie case of obviousness with respect to
the claims under consideration.
SUMMARY
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Application No. 07/626,904
11
We have sustained each of the rejections advanced on this
appeal except for the § 103 rejection of claims 10, 29, 78
and 84.
The decision of the examiner 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
JOHN D. SMITH )
Administrative Patent Judge)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge)
Appeal No. 95-0331
Application No. 07/626,904
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David L. Weinstein
3M Office of Patent Counsel
P.O. Box 33427
St. Paul, MN 55133-3427
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APPENDIX
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15