Ex parte CAI et al.

Board of Patent Appeals and Interferences

Apr 16, 1998

08179793 (B.P.A.I. Apr. 16, 1998)

Application for patent filed January 11, 1994.1
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(2) is not binding precedent of the Board.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. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GANGFENG CAI
AND ROBERT G. GASTINGER
_____________
Appeal No. 95-3400
Application 08/179,7931
______________
ON BRIEF
_______________
Before CAROFF, KIMLIN and OWENS, Administrative Patent Judges.
CAROFF, Administrative Patent Judge.
Appeal No. 95-3400
Application 08/179,793
2
DECISION ON APPEAL
This decision on appeal relates to the final rejection of
claims 1-14. The only other claims pending in the involved
application, claims 15-23, stand withdrawn from consideration by
the examiner pursuant to 37 CFR § 1.142(b) as being drawn to non-
elected inventions and, thus, are not before us.
The claims are directed to a bulk polymerization process for
producing a poly(thioether ether) by reacting at least one
aliphatic C - C dithiol with diallyl ether.2 10
Appellants acknowledge on page 2 of their brief that all of
the claims on appeal stand or fall together. Accordingly, we
will limit our consideration to claim 1, the broadest independent
claim, which reads as follows:
1. A process for making a poly(thioether ether), said
process comprising reacting diallyl ether with an aliphatic C -C2 10
dithiol in a bulk polymerization process under free-radical
conditions to produce a poly(thioether ether).
Claims 1-14 stand solely rejected under 35 U.S.C. § 112,
first paragraph, for lack of an enabling disclosure, particularly
with regard to disclosure of a practical utility for the
polymeric products produced by the claimed process.
Appeal No. 95-3400
Application 08/179,793
3
We shall not sustain this rejection essentially for the
reasons stated in appellants’ brief.
It is incumbent upon the examiner, if he has any doubts as
to enablement or utility of a claimed invention, to support his
assertions with objective factual evidence or cogent technical
reasoning. In re Armbruster, 512 F.2d 676, 677-78, 185 USPQ 152,
153 (CCPA 1975); In re Marzocchi, 439 F.2d 220, 223, 169 USPQ
367, 369 (CCPA 1971). The examiner’s answer is totally lacking
in this regard. Indeed, the examiner’s assertions here are
entirely speculative in nature. Therefore, we conclude that the
examiner has failed to establish a prima facie case of
nonenablement or lack of utility.
Moreover, we agree with appellant that the disclosure in
their specification is sufficient to satisfy the first paragraph
requirements of 35 U.S.C. § 112. Specifically, the specification
includes a number of working examples and a clear statement on
page 8 of utility as follows:
The poly(thioether ether)s and hydroxy-terminated
poly(thioether ether)s of the invention contain no
thermally sensitive S-S linkages or hydrolytically
unstable -O-CH -O- groups. This feature makes the2
polymers of the invention attractive intermediates for
formulating polyesters, polycarbonates, and
polyurethanes, especially those applications for which
thermal and hydrolytic stability are important
concerns.
Appeal No. 95-3400
Application 08/179,793
4
This utility corresponds to the recognized utility of similar
sulfur-containing polymers in the art as discussed in the
“Background of the Invention” section of appellants’
specification. To satisfy the enablement or utility requirement
of the statute, an applicant need not teach or explain in detail
that which is apparently known in the art. In re Howarth,
654 F.2d 103, 105-06, 210 USPQ 689, 691-92 (CCPA 1981).
As for the examiner’s focus on a single nonexemplified
embodiment of the claimed invention, e.g., use of 1,10-
decanedithiol as a reactant, we again note that the examiner’s
comments regarding this embodiment are entirely speculative in
nature. In any event, the statute does not necessarily require
an appellant to exemplify or establish operability/utility for
every single embodiment within the scope of the claims. In re
Dinh-Nguyen, 492 F.2d 856, 858, 181 USPQ 46, 47-48 (CCPA 1974);
In re Kamal, 398 F.2d 867, 872, 158 USPQ 320, 323-24 (CCPA 1968).
Appeal No. 95-3400
Application 08/179,793
5
For the foregoing reasons, the decision of the examiner is
reversed.
REVERSED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
EDWARD C. KIMLIN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-3400
Application 08/179,793
6
Jonathan L. Schuchardt
ARCO Chemical Company
3801 West Chester Pike
Newtown Square, PA 19073