Ex parte Clark

Board of Patent Appeals and Interferences

Jun 29, 2001

08476980 (B.P.A.I. Jun. 29, 2001)

This application is directed to subject matter which is closely related to the subject matter1
claimed in Application No. 08/436,086, filed May 8, 1995, which is the subject of Appeal No. 1998-2196,
currently before the Board. We have considered the two appeals together.
There appears to be some confusion as to the claims currently pending in this application. The2
Brief at page 2 indicates that claims 1, 6, 7, 27 - 29 and 31 remaining pending. The examiner does not
disagree. (Answer, page 1). However, claims 14 - 24, 30, 32, and 33 were withdrawn from consideration by
the examiner in the Office action of July 21, 1997 (Paper No. 14) and we find no indication in this record that
these claims have been canceled.
The opinion in support of the decision being entered today was not written for publication
and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BRIAN CLARK
____________
Appeal No. 2000-1980
Application No. 08/476,9801
____________
ON BRIEF
____________
Before WILLIAM F. SMITH, ROBINSON, and ADAMS, Administrative Patent Judges.
ROBINSON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the examiner's final
rejection of claims 1, 6, 7, 27 - 29 and 31. Claims 14 -24, 30, 32, and 33 stand withdrawn
from consideration by the examiner and are not before us on appeal.2
Appeal No. 2000-1980
Application No. 08/476,980
2
Claim 1 is illustrative of the subject matter on appeal and read as follows:
1. An article comprising a surface functionalized polyaryl addition polymer
having at least about 5% of the aryl groups in said polyaryl addition polymer to a depth of
100A, as determined by ESCA substituted with a functionalized nitrogen-containing group,
with the remaining aryl groups substantially unsubstituted with said functionalized nitrogen-
containing group.
The references relied upon by the examiner are:
Kenyon et al. (Kenyon) 3,981,775 Sep. 21, 1976
Janata 4,151,049 Apr. 24, 1979
Okrongly 4,933,410 Jun. 12, 1990
Clark 5,484,852 Jan. 16, 1996
Grounds of Rejection
Claims 1, 6, 7, 27 - 29 and 31 stand rejected under 35 U.S.C. § 102(b) or,
alternatively, under 35 U.S.C. § 103. As evidence of anticipation/obviousness, the
examiner relies upon Kenyon and Janata.
Claims 1, 6, 7, and 31 stand rejected under 35 U.S.C. § 101 as claiming the same
invention as that of claims 10, 11, and 12 of U.S. Patent 4,933,410 or of claims 1, 2, 3, and
4 of U.S. Patent 5,484,852.
We reverse the rejections for the reasons which follow.
Discussion
In reaching our decision in this appeal, we have given careful consideration to the
appellant’s specification and claims and to the respective positions articulated by the
appellant and the examiner. We make reference to the Examiner's Answer of November
Appeal No. 2000-1980
Application No. 08/476,980
3
16, 1998 (Paper No. 24) for the examiner's reasoning in support of the rejections and to
the appellant’s Appeal Brief filed August 13, 1998 (Paper No. 23) for the appellant’s
arguments thereagainst.
The rejections under 35 U.S.C. § 102(b) or 103
Anticipation requires the disclosure, in a single prior art reference, of each element
of the claim under consideration. W.L. Gore & Assoc. v.Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). In
considering Kenyon and Janata, we agree with the appellant that neither reference
describes an article of the type presently claimed. Kenyon describes grafting p-nitro
styrene or p-nitrophenylacrylate to a polyaryl polymeric material (col. 1, lines 43-45).
However, Kenyon does not substitute the aryl groups present in the polymer chain.
Similarly, Janata grafts the hydrocarbon chain into the polymer article described. This
process, also, does not reasonably appear to result in an article wherein at least a portion
of the aryl groups present in the polyaryl polymer are substituted with a nitrogen containing
group. Thus, we conclude that neither Kenyon nor Janata explicitly or implicitly describe a
substance which would anticipate the presently claimed article.
The examiner presents no analysis which would indicate how Kenyon or Janata
would have made obvious the presently claimed article. Therefore, we reverse these
rejections of claims 1, 6, 7, 27 - 29 and 31.
Appeal No. 2000-1980
Application No. 08/476,980
4
The rejections under 35 U.S.C. § 101
The examiner has rejected claims 1, 6, 7, and 31 under 35 U.S.C. § 101 as
claiming the same invention as claimed in claims 10, 11, and 12 of U. S. Patent
4,933, 410 to Okrongly and claims 1, 2, 3, and 4 of U.S. Patent 5,484,852 to Clark. With
respect to Okrongly, the examiner urges that "[t]he 'polystyrene surface' of [the] patent does
not distinguish over [the] 'article' of present claims and/its surface." (Answer, page 3). As
to Clark, the examiner urges that "[t]he polar groups recited in patent includes the nitrogen-
containing group in claimed subject matter." (Answer, page 4). As noted by appellant,
"[s]tatutory double patenting requires that the claims be directed to the same invention."
(Brief, page 6-7). In re Vogel, 422 F.2d 438, 441, 164 USPQ 619, 621 (CCPA 1970).
Claims 10, 11, and 12 of Okrongly do not require that the article have "at least 5% of the
aryl groups in said polyaryl addition polymer to a depth of 100D . . . substituted with a
functionalized nitrogen-containing group." (Appealed Claim 1). Thus, the claims of
Okrongly are not directed to the same invention as appealed claims 1, 6, 7, and 31.
Claims 1 - 4 of Clark require that the aryl group be substituted with "a polar group."
Appealed claim 1 requires the aryl groups of the polyaryl addition polymer to be
substituted with an "nitrogen-containing group." While there may be overlap in the defined
substituents, the claim limitation relating to this substituent are not the same as indicated
by appellant's discussion at page 7 of the Appeal Brief.
Thus, claims 1, 6, 7, and 31 are not directed to the same invention as claimed in
either Okrongly or Clark. Therefore, the rejection of these claims under 35 U.S.C. § 101 is
reversed.
Appeal No. 2000-1980
Application No. 08/476,980
5
Other Issues
Should further prosecution occur in this application we would urge the examiner to
step back and consider, anew, the present claims in light of both Okrongly and Clark.
While we have determined that the claims of these patents are not directed to the identical
invention as presently claimed in this application, we recognize the possibility of overlap as
to the subject matter encompassed by these two patents and the claims before us. We
would, thus, urge the examiner to evaluate the facts of this application with a view to
determine whether a rejection under the judicially-created doctrine of obviousness-type
double patenting may be appropriate. (See In re Berg, 140 F.3d 1428, 46 USPQ2d 1226
(Fed. Cir. 1998); Georgia-Pacific Corp. v. United States Gypsum Co., 195 F.3d 1322, 52
USPQ2d 1590 (Fed. Cir. 1999); and In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
1985)). The examiner should, in the first instance, consider the record as a whole to
determine whether such a rejection is appropriate in this case. We note, for example, the
extensive restriction requirements which occurred in the instant application as well as in
the application which resulted in the issuance of Clark ('852). We do not have available
the file record for Application No. 08/330,207
which issued as Okrongly ('410). Thus, we leave it to the examiner to evaluate the record
of all three applications and determine if there is a reasonable basis for questioning the
patentability of the claims in this application. Should the examiner determine that there is a
basis for rejecting the claims of this application under the judicially created doctrine of
Appeal No. 2000-1980
Application No. 08/476,980
6
obviousness-type double patenting, the examiner should issue an appropriate Office
action setting forth the basis for such a rejection and provide appellant with the appropriate
opportunity to respond thereto.
Summary
The examiner's determination that the claims pending in this application are
unpatentable under 35 U.S.C. § 102(b) or, alternatively, under 35 U.S.C. § 103, is
reversed. The examiner's determination that the claims pending in this application are
unpatentable under 35 U.S.C. § 101 is reversed.
AFFIRMED
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
DOUGLAS W. ROBINSON)
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
DONALD E. ADAMS )
Administrative Patent Judge )
MORRISON & FOERSTER
SUITE 5500
2000 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20006-1888
Appeal No. 2000-1980
Application No. 08/476,980
7
DWR/jlb