Ex parte Brandon

Board of Patent Appeals and Interferences

Jan 8, 1998

07901722 (B.P.A.I. Jan. 8, 1998)

Application for patent filed June 22, 1992.1
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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law journal and (2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RICHARD L. BRANDON
_____________
Appeal No.95-1250
Application 07/901,7221
______________
ON BRIEF
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Before KIMLIN, WEIFFENBACH and WARREN, Administrative Patent Judges.
WEIFFENBACH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of
claims 1-3 and 17-24. In an amendment under 37 CFR § 1.116 filed December 17, 1993 (Paper No.
9), applicant canceled claims 17, 18, 22 and 23. In the Answer, for the first time the examiner states
that claim 24, added by an amendment filed August 24, 1993 (Paper No. 7) and rejected over prior
Appeal No. 95-1250
Application 07/901,722
The second sentence of 37 CFR § 1.142(a) states: “If the distinctness and independence of the inventions be2
clear, such requirement will be made before any action on the merits; however, it may be made at any time before final
action in the case at the discretion of the examiner” (emphasis ours).
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art of record in the final rejection dated September 14, 1993 (Paper No. 8, p. 6), “is drawn to a non-
elected invention that is a combination of the sub-combination polymer composition that was elected
by original presentation for prosecution on the merits ...” (Answer, p. 1). According to the examiner,
he “regrets this oversight and notes that this claim has not been argued separately from the
composition claimed by Appellant at any point throughout prosecution or in the brief for appeal”
(Answer, p. 1). Regrets or not, the examiner’s restriction was improper at the time it was made in
the prosecution. Under the second sentence of 37 CFR § 1.142(a), a restriction must be made before
final action. For judicial economy, we will not consider claim 24 as having been withdrawn from2
consideration. For the foregoing reasons, we will consider this appeal as from the final rejection of
claims 1-3, 19-21 and 24, the only claims remaining in the application.
The Claimed Subject Matter
The claims on appeal are directed to a phenolic resin developer. Claim 1 is illustrative of the
claimed subject matter:
1. A phenolic developer resin having free carboxyl groups represented by the
formula:
Appeal No. 95-1250
Application 07/901,722
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where n is 0 to 100, the phenolic units of the resin being directly bonded to one another through
positions ortho or para to the OZ group; Z is selected from the group consisting of H and an ester
linkage with a pyromellitic dianhydride moiety; and Y is present at a position meta or para to the OZ
group and is selected from the group consisting of a halogen atom, an aryl group, a phenylalkyl
group, an alkyl group, a carboxyl group of the formula -COOR where R is H, an alkyl group or a
phenylalkyl group, an alkoxy group, an aryloxy group, and an amino group of the formula - NR R1 2
where R and R are the same or different and represent H or an alkyl group.1 2
The Prior Art
The following prior art references are relied upon by the examiner in support of the rejections
of the claims:
Hayashi et al. (Hayashi) 3,874,895 Apr. 1, 1975
Pokora et al. (Pokora) 4,647,952 Mar. 3, 1987
Nikolaev et al. (Nikolaev), “Curing a Novolak Phenolformaldehyde Resin with Pyromellitic
Appeal No. 95-1250
Application 07/901,722
The English translation of this reference was prepared by The Ralph McElroy Translation Company.3
The ground of rejection set forth in the examiner’s answer is different from that set forth in the final rejection4
(Paper No. 8). In his final rejection, the examiner made two grounds of rejection. The first was a rejection of claims 1-3
under 35 U.S.C. § 103 as being unpatentable over Pokora in view of Hayashi and Nikolaev. The second was a rejection
of claims 17-24 under 35 U.S.C. § 103 as being unpatentable over Pokora in view of Hayashi and Nikolaev.
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Dianhydride,” Plast. Massy, Vol. 9, pp. 66-67 (1989) (an English translation of the
original article written in the Russian language).3
The Rejection
Claims 1-3, 19-21 and 24 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Pokora taken with Hayashi together either alone or in view of Nikolaev. According to appellant,4
all of the claims stand or fall together (brief, p. 4).
Opinion
We have carefully considered the respective positions advanced by appellant and the examiner.
However, for the reasons set forth below, we will not sustain the examiner's rejection for obviousness
under 35 U.S.C. § 103.
Under 35 U.S.C. § 103, the initial burden of establishing a prima facie case of obviousness
rests on the examiner. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1967); In re Piasecki, 745 F.2d 1468, 1471-1472, 223 USPQ 785, 787-788
(Fed. Cir. 1984). This burden is satisfied by showing that the prior art would have suggested the
claimed invention to one having ordinary skill in the art. In re Lalu, 747 F.2d 703, 705, 223 USPQ
Appeal No. 95-1250
Application 07/901,722
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1257, 1258 (Fed. Cir. 1984). This suggestion must be found in the prior art, not in applicant's
disclosure. In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
After careful review of the prior art references cited by the examiner, none of the references are seen
to suggest the developer resin as set forth in the claims on appeal.
The developer resin disclosed by appellant is the reaction product of the phenolic resin taught
by Pokora with pyromellitic dianhydride (1,2,4,5-benzene tetracarbonxylic dianhydride). While
appellant acknowledges that phenol-formaldehyde condensates are widely used color developers,
appellant , like Pokora, points out that “[b]ecause such resins are prepared from formaldehyde, there
is a concern that they may be unsafe from both the standpoint of their manufacture and their use in
recording materials.” Pokora developed a formaldehyde free phenolic resin color developer.
According to appellant, the invention claimed herein is an improvement over Pokora’s resin.
The developer resin set forth in the claims on appeal requires an anhydride moiety comprising
at least four carboxyl groups. Hayashi teaches preparing a color developer which comprises an acidic
phenolic polymer and an organic carboxylic acid. The phenolic polymers contemplated by Hayashi
are phenolaldehyde polymers and phenol-acetylene polymers (col. 4, lines 6-19), neither of which are
within the scope of the claimed phenol polymers set forth in Pokora. The organic acids contemplated
by Hayashi contain up to three carboxyl groups (col. 3, lines 12-43). Hayashi does not teach or
suggest using anhydrides, let alone acids having at least four carboxyl
Appeal No. 95-1250
Application 07/901,722
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groups. The examiner has based his conclusion of obviousness on what he considers the apparent
similar reaction conditions disclosed by Hayashi and conditions set forth in appellant’s single example.
We do not find this analysis as being a basis for supporting obviousness. The examiner’s analysis
does not explain how one skilled in the art would be led to the improved developer compound as
claimed herein in the absence of any suggestion or teaching in Hayashi of using an organic acid having
at least four carboxyl groups and reacting the organic acid with a formaldehyde free phenol as
disclosed by Pokora. For these reasons, we find that the examiner has not made out a prima facie
case of obviousness for the rejection of claims 1-3, 19-21 and 24 over Pokora in view of Hayashi.
As for the rejection of the claims over Pokora in view of Hayashi and Nikolaev, this rejection
too must fall. Nikolaev does not make up for the deficiencies of Hayashi. Although Nikolaev teaches
reacting a novolak phenolformaldehyde with pyromellitic dianhydride, the reference teaches away
from the claimed invention. Appellant’s basic phenol is a formaldehyde free phenol while Nikolaev
is limited solely to curing phenolformaldehyde resins. Moreover, there is no suggestion in the
reference that the phenolic resin cured with pyromellitic dianhydride would be useful as a developer.
The examiner has not provided any analysis of the prior art as to how one skilled in the art would
have been led from the combined teachings of Pokora, Hayashi and Nikolaev to the claimed phenol
resin developer as set forth in the claims on appeal. We conclude that the only suggestion to combine
a pyromellitic anhydride with Pokora’s phenolic resin came from appellant’s disclosure, and not from
the teachings of the prior art. Accordingly, the rejection of claims 1-3, 19-21 and 24 over Pokora
in view of Hayashi and Nikolaev is reversed.
Appeal No. 95-1250
Application 07/901,722
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For the foregoing reasons, we conclude that the examiner has not made out a prima facie case
of obviousness. In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
Accordingly, the examiner’s rejection of claims 1-3,19-21 and 24 under 35 U.S.C. § 103 is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CAMERON WEIFFENBACH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Appeal No. 95-1250
Application 07/901,722
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THOMPSON, HINE and FLORY
2000 COURTHOUSE PLAZA NE
P.O. BOX 8801
DAYTON, OH 45401-8801