Ex parte Capone et al.

Board of Patent Appeals and Interferences

Jan 27, 1999

08264870 (B.P.A.I. Jan. 27, 1999)

Application for patent filed June 24, 1994.1
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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journal and (2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GARY J. CAPONE and HENRY G. CHIN
________________
Appeal No. 96-0892
Application No. 08/264,8701
________________
ON BRIEF
________________
Before CAROFF, KIMLIN and WEIFFENBACH, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
13, all the claims in the present application. Claim 1 is
illustrative:
1. A fiber formed from an acrylonitrile polymer, said
Appeal No. 96-0892
Application No. 08/264,870
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fiber comprising a delustrant and an optical brightener,
wherein said fiber is characterized by a brightness value of
at least about 79.
The examiner relies upon the following references as
evidence of obviousness:
Mathes et al. (Mathes) 4,307,152 Dec. 22, 1981
Hähnke et al. (Hähnke) 4,607,071 Aug. 19, 1986
As is readily apparent from illustrative claim 1,
appellants' claimed invention is directed to an acrylonitrile
polymer comprising a delustrant and an optical brightener.
The delustrant can be titanium dioxide while the optical
brightener can be a benzimidazole or derivative thereof. The
claimed fiber has a brightness value of at least about 79.
According to appellants, "[t]he fibers of the present
invention surprisingly achieve optical characteristics similar
to cotton and superior to prior art synthetic fibers without
application of the undesirable bleaching steps described
above" (page 2 of Brief).
Appealed claims 1-13 stand rejected under 35 U.S.C. § 103
as being unpatentable over Hähnke in view of Mathes.
Upon careful consideration of the opposing arguments
presented on appeal, we concur with appellants that the
applied prior art fails to establish a prima facie case of
Appeal No. 96-0892
Application No. 08/264,870
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obviousness for the claimed subject matter. Accordingly, we
will not sustain the examiner's rejection.
The examiner relies upon Hähnke for disclosing an
acrylonitrile polymer comprising a titanium dioxide delustrant
and a benzimidazole optical brightener. However, the flaw in
the examiner's reasoning is that although Hähnke discloses a
class of dyestuffs that may comprise a benzimidazole moiety,
the examiner has not established that the referenced dyestuffs
qualify as optical brighteners. Appellants cite the Man-Made
Fiber and Textile Dictionary for the art-recognized
definitions of "dyestuff" and "optical brightener" (see page 5
of Brief). According to appellants, a "dyestuff" is defined
as "substances which add color to textiles by absorption into
the fiber," whereas "optical brightener" is defined as "a
colorless compound which, when applied to fabric, absorbs the
ultraviolet rays in light and emits them in the visible
spectrum." Unfortunately, the examiner has not addressed this
cogent argument made by appellants. Consequently, in the
absence of any factually-based rationale by the examiner that
the benzimidazole-containing dyestuffs of Hähnke meet the
definition of an optical brightener, we must conclude that the
Appeal No. 96-0892
Application No. 08/264,870
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examiner has not made out a prima facie case of obviousness
for appellants' claimed invention.
Appellants devote the second section of their Brief to
the argument that the comparative data found in their
specification is evidence of nonobviousness, i.e., unexpected
results. On the other hand, we have reviewed the Examiner's
Answer in vain for any response to appellants' argument or
analysis of the specification data. This lack of response by
the examiner, in and of itself, warrants a summary reversal of
the examiner's rejection. In any event, since we find that
the examiner has not established a prima facie case of
obviousness, we decline to address the probative value of
appellants' specification data.
As a final point, we note that the examiner has limited
the search of the claimed invention to Class 524. Perhaps,
the examiner would find that a search of the textile arts
would be fruitful.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
Appeal No. 96-0892
Application No. 08/264,870
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MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
EDWARD C. KIMLIN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CAMERON WEIFFENBACH )
Administrative Patent Judge )
clm
Appeal No. 96-0892
Application No. 08/264,870
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Kenneth D. Goodman
Arnold, White & Durkee
P.O. Box 4433
Houston, TX 77210