Ex parte BREUER et al.

Board of Patent Appeals and Interferences

Sep 23, 1998

08072210 - (D) (B.P.A.I. Sep. 23, 1998)

Application for patent filed June 4, 1993.1
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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(2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte OLAF K. BREUER, HANS F. VERMEIRE,
and CAROLINE R. N. MAES
____________
Appeal No. 96-2407
Application 08/072,2101
____________
ON BRIEF
____________
Before GARRIS, GRON, and WARREN, Administrative Patent Judges.
GRON, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
Introduction
This is an appeal under 35 U.S.C. § 134 from an
Appeal No. 96-2407
Application 08/072,210
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examiner’s final rejection of Claims 9-12, all claims pending
in this application.
Claims 9-12 stand rejected under 35 U.S.C. § 103 as being
unpatentable in view of the combined teachings of Cha, U.S.
Patent 4,877,566, issued October 31, 1989; Boessler et al.
(Boessler), U.S. Patent 4,199,486, issued April 22, 1980; and
Lundberg et al. (Lundberg), U.S. 4,143,185, issued March 6,
1979.
All claims stand or fall together (Appeal Brief, p. 2) with
Claim 9. Claim 9 reads:
9. A process for preparing elastosol, comprising
the
steps of:
preparing a block copolymer comprising at least one
polymer block A derived predominantly from a monovinyl
aromatic compound and at least one, optionally
hydrogenated
polymer block B derived predominantly from a conjugated
diene, wherein the content of monovinyl aromatic compound
is at least 40% by weight based on the weight of the
block
copolymer,
turning the block copolymer into particles having a
particle size of less than 800 micron; and
dispersing the block copolymer particles in an oil
at
room temperature;
wherein the weight ratio of the block copolymer to the
oil
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is in the range of from 0.1 to 10.
Discussion
Cha (1) grinds styrene butadiene rubber into particles
having a diameter of less than 500 microns, (2) adds an oil to
the particles to form a composition, (3) heats the composition
to approximately 40 to 70 C., and (4) mixes the compositionO O
for
adding ester gum, calcium carbonate and a coloring agent to
the composition and injection molding the modified composition
so to produce a sticky, rubber-based form. The composition
prepared by steps (1) to (4) of Cha's method differs from the
method appellants claim in a number of aspects.
Cha does not expressly teach that the styrene butadiene
rubber he employs is a styrene butadiene block copolymer.
However, Cha states (Cha, col. 2, lines 10-12), “A
particularly suitable styrene butadiene rubber product is
manufactured by Shell Chemical Co. and sold under the
tradename Cariflex.” In the first office action mailed
November 17, 1993, the examiner stated (Paper No. 6, p. 3,
para. 1):
Cha discloses non-toxic compositions containing
styrene-butadiene rubber and . . . oils. See Col. 2[,]
line[s] 13-18. As preferred rubber component Cha
Appeal No. 96-2407
Application 08/072,210
This application appears to be assigned to Shell Oil2
Company. We presume that the assignee of the present
application
is well able to deny the truth of the examiner’s allegations
with regard to Cariflex, a product manufactured by Shell
Chemical Co..
If Cariflex is the tradename of a styrene-butadiene3
block copolymer whose styrene blocks may comprise “at least
40% by weight” of the block copolymer, we presume that
appellants would have disclosed that material information to
the examiner in accordance with 37 CFR § 1.56.
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discloses Cariflex styrene-butadiene rubbers. Cariflex
is a trade name which, in case of styrene-butadiene
rubbers, stands for triblock S-B-S copolymers with
various styrene/butadiene ratio[s]. Choise [sic,
Choice] of S-B-S rubbers with higher S/B ratio (40% and
above) would have been obvious for an ordinary artisan if
the end product (such as a toy) with resinous properties
(rather than elastomeric properties) is desired. Cha
explicitly states that the rubber used in his
invention should be present in particles of less than 0.5
mm (500 micron[s]).
Applicants’ response filed February 28, 1994 (Paper No. 8, p.
2) did not deny the examiner’s allegation that Cariflex is a
styrene-butadiene block copolymer. Accordingly, we find that2
Cha’s styrene-butadiene rubber is a styrene-butadiene block
copolymer. However, the examiner acknowledged that Cha does
not teach that the styrene blocks of his preferred styrene
butadiene block copolymers (Cariflex) comprise “at least 40%
by weight” of the block copolymer as is required by the method
appellants claim. Nevertheless, the examiner argues that Cha3
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reasonably would have suggested to persons having ordinary
skill in the art that the styrene block of the styrene
butadiene block copolymers suitable for use in the process he
describes may comprise “at least 40% by weight” of the block
copolymer. We find that the examiner’s argument has no
factual basis. We fail to see how persons having ordinary
skill in the art would have been led by Cha’s disclosure to
make toys without elastomeric properties when Cha’s invention
is a method for making “sticky,” elastomeric toys. See Cha’s
Claim 1.
Appellants have continuously argued, and the examiner has not
denied, that “sticky,” elastomeric styrene-butadiene rubbers
would have a low styrene content.
Next, appellants point to the fact that Cha adds oil to
rubber “heated to approximately 40 to 70 C., and mixed for 10O O
to 20 minutes. The heating and mixing steps are important to
ensure that the oil is blended with the rubber and becomes
absorbed by the rubber” (Cha, col. 2, l. 34-39). According to
the method appellants' claim, the block copolymer particles
are to be dispersed “in an oil at room temperature” (Claim 9).
Cha appears to teach away from room temperature dispersion.
Appeal No. 96-2407
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The combined teachings of Boessler and Lundberg do not
remedy the deficiencies in Cha’s teaching and vice versa.
While Boessler and Lundberg may describe conventional methods
for preparing plastisols using block and/or graft copolymers,
the methods each describes are said to be particularly suited
to the preparation of plastisols using high-temperature
melting block copolymers which do not appear to include either
high styrene content styrene-butadiene block copolymers of the
type employed in the process appellants claim or low styrene
content sticky, elastomeric styrene-butadiene block copolymers
of the type said to be utilized by Cha. Moreover, the record
does not reasonably suggest that styrene-butadiene block
copolymers would be suitable for preparing plastisols of the
type described by Boessler and Lundberg. Neither Boessler nor
Lundberg describe styrene-butadiene copolymers. Put simply,
there is no reasonable suggestion in the combined prior art
teachings to prepare plastisols by conventional methods using
styrene-butadiene block copolymers comprising at least 40%
styrene. We find that the examiner’s rejection is based more
on impermissible hindsight than prior art teachings.
Cognizant of the deficiencies of the applied prior art
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teachings and his initial burden to establish a prima facie
case of unpatentability under 35 U.S.C. § 103, the examiner
cites
In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985), in
support of unpatentability under section 103. The examiner
argues (Examiner’s Answer, p. 4):
Although both Lundberg and Boessler disclose processes
involving different block and/or graft copolymers, the
process used is an obvious process for making a
dispersion
of the claimed block copolymer because the Boessler and
Lundberg processes would be expected to work for other
starting materials such as claimed styrene-diene
copolymers in view of the fact that Boessler does not
place any specific limitations on the Tg of the core
polymer. The starting material, therefore, is an obvious
choice to the one skilled in the art for making a
dispersion
of that starting material. In re Durden, [supra] . . . .
The rejection finds no per se rule support from Durden. “When
the references cited by the examiner fail to establish a prima
facie case of obviousness, the rejection is improper and will
be overturned.” In re Ochiai, 71 F.3d 1565, 1569, 37 USPQ2d
1127, 1131 (Fed. Cir. 1995). Here, as was the case in Ochiai,
at 1570, 37 USPQ2d at 1132 (footnote omitted):
[T]he examiner incorrectly drew from Durden, a case
turning on specific facts, a general obviousness rule:
namely, that a process claim is obvious if the prior
art references disclose the same general process using
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“similar” starting materials. No such per se rule
exists.
Mere citation of Durden . . . or any other case as a
basis
for rejecting process claims that differ from the prior
art by their use of different starting materials is
improper, as it sidesteps the fact-intensive inquiry
mandated by section 103.
We have considered all the factual evidence and arguments
presented in this case. We hold that the combined prior art
teachings cited against the claimed invention do not prima
facie establish its unpatentability under 35 U.S.C. § 103.
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Conclusion
We reverse the examiner’s rejection of Claims 9-12 under
35 U.S.C. § 103 as being unpatentable in view of the combined
teachings of Cha, Boessler, and Lundberg.
REVERSED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Teddy S. Gron ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Charles F. Warren )
Administrative Patent Judge )
tdc
Appeal No. 96-2407
Application 08/072,210
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K.M. Tackett
Shell Oil Company
Intellectual Property
P.O. Box 2463
Houston, TX 77252-2463