Ex Parte Cheng

Board of Patent Appeals and Interferences

Mar 31, 2010

11001252 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MING CHENG
__________

Appeal 2009-004445
Application 11/001,252
Technology Center 1700
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Decided: March 31, 2010
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Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1-5, 7-26, 31, 32, 34, and 35. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.

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Application 11/001,252

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Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A composition comprising

(a) at least one branched copolymer comprising the reaction
product of

(1) at least one ethylenically-unsaturated monomer,
(2) at least one N-substituted maleimide monomer,
(3) at least one crosslinker comprising at least two
ethylenically-unsaturated functional groups,
(4) at least one free radical initiator, and
(5) at least one chain transfer agent, the mole ratio of
crosslinker to chain transfer agent being less than about 1.25:1;
and

(b) at least one thermosetting resin.

Br., Claims Appendix.1
The following Examiner’s rejections are before us on appeal:2
(1) Claims 1-5, 7-26, 31, 32, 34, and 35 are provisionally rejected
on the ground of non-statutory obviousness-type double patenting as
unpatentable over claims 1-20 of copending Application 11/000,854 in view
of JP 359.3

1 Appeal Brief dated April 10, 2008.
2 The Examiner indicates that the “35 U.S.C. 103(a) rejections over Japanese
Patent No. 6-293815 and Japanese Patent No. 6-293815 in view of Japanese
Patent No. 5-306359” were withdrawn in the Advisory Action dated
November 21, 2007. Examiner’s Answer dated April 28, 2008 (“Ans.”), at
2.
3 Japanese Patent 05-306359 published November 19, 1993. We refer to the
English translation of record in the instant Application.
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(2) Claims 1-5, 7-26, 31, 32, 34, and 35 are rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Kanto,4 Nield,5 JP
359, and Müller.6
B. ISSUES
The Appellant does not contest the provisional obviousness-type
double patenting rejection and indicates that “Applicant is willing to submit
a terminal disclaimer at the appropriate time.” Br. 12. Therefore, the
provisional obviousness-type double patenting rejection is summarily
affirmed.
As for the § 103(a) rejection on appeal, the Appellant argues the
patentability of claims 1-5, 7-26, 31, 32, 34, and 35 as a group. Thus, the
sole issue on appeal is:
Has the Appellant identified harmful error in the Examiner’s
conclusion that the composition recited in claim 1 would have been obvious
to one of ordinary skill in the art in view of the combined teachings of
Kanto, Nield, JP 359, and Müller?
For the reasons set forth below and in the Examiner’s Answer dated
April 28, 2008, we answer this question in the negative.
C. DISCUSSION
The Examiner found that Kanto and Nield each discloses a copolymer
within the scope of claim 1 that may be blended with a synthetic resin or
other synthetic polymeric materials. The Examiner found that neither Kanto
nor Nield discloses that the copolymers may be combined with a
thermosetting resin as recited in claim 1. Ans. 5-6. Thus, the Examiner

4 US 5,998,556 to Kanto et al. issued December 7, 1999.
5 US 3,766,142 to Nield et al. issued October 16, 1973.
6 US 7,091,283 B2 to Müller et al. issued August 15, 2006.
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relied on JP 359 to establish that it would have been obvious to one of
ordinary skill in the art to combine the copolymers disclosed in Kanto and
Nield with a thermosetting resin, such as an epoxy resin. Ans. 6, 9-10.
The Examiner also found that neither Kanto nor Nield discloses that
the mole ratio of crosslinker to chain transfer agent is “less than about
1.25:1” as recited in claim 1. Accordingly, the Examiner relied on Müller to
establish that it would have been obvious to one of ordinary skill in the art to
use the crosslinkers and chain transfer agents of Kanto and Nield in amounts
within the claimed range. Ans. 7.
The Appellant argues:
In order for the skilled artisan to derive the present invention
from the teachings of the cited references, he/she would have to
pick and choose from the numerous monomers described in the
various references and somehow arrive at a collection of
monomers that are effective for providing a branched
copolymer capable of modifying known thermosetting resins.

Br. 16.
Any judgment on obviousness involves some amount of selection
among the teachings of the prior art. The question is whether such selection
would have been outside the skill of the ordinary artisan. In this case, the
Appellant does not contend that one skilled in the art would have had to
exercise more than ordinary skill to arrive at a copolymer within the scope of
claim 1 that is useful with an epoxy resin based on the teachings of Kanto,
Nield, and JP 359. For this reason, the Appellant’s argument is not
persuasive of harmful error.
The Appellant also argues that the terpolymer disclosed in JP 359
does not contain a crosslinking agent, and thus, fails to suggest the use of the
claimed copolymer. Br. 16.
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This argument fails to consider the prior art as a whole. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (test for obviousness “is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art”). The Examiner did not rely on JP 359 to teach the
claimed copolymer. Rather, the Examiner relied on JP 359 to establish that
combining the copolymers of Kanto and Nield with an epoxy resin, as
recited in claim 1, would have been obvious to one of ordinary skill in the
art. Ans. 6, 9-10. Significantly, the Appellant does not dispute the
Examiner’s position.
Finally, the Appellant argues:
[T]he overall teaching of the Muller reference encompasses
crosslinking agents outside the scope of the present invention,
and Muller’s inventive focus is so clearly different than that of
the present invention, one skilled in the art is provided with no
reason to turn to Muller’s teachings for the foregoing mole
ratio.

Br. 15; see also Br. 17.
The Appellant’s discussion does not focus on the combined teachings
of Müller and Kanto or Müller and Nield. That is, the Appellant does not
explain why the teachings of Müller would not have suggested using the
crosslinkers and transfer agents of Kanto and Nield in amounts within the
claimed range.7 See Keller, 642 F.2d at 425 (test for obviousness “is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art”). The mere fact that Müller’s “inventive focus”

7 The Examiner correctly found that Müller discloses a crosslinker to transfer
agent ratio of 0.33:1 to 1:1. Ans. 7, 9; see also Müller 15:13-15. This range
is encompassed by the range of “less than about 1.25:1” recited in claim 1.
Br., Claims Appendix.
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may be different than the Appellant’s “inventive focus” is not persuasive of
nonobviousness.
We further add that a change in concentration is not normally a
patentable modification absent a showing that the claimed range is critical.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d
454, 456 (CCPA 1955). In this case, the Appellant does not direct us to any
evidence establishing that the claimed ratio is critical.
D. DECISION
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 C.F.R. § 1.136(a).

AFFIRMED

PL Initial:
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