Ex Parte Combs et al

Board of Patent Appeals and Interferences

Aug 21, 2002

08832167 (B.P.A.I. Aug. 21, 2002)

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publication in a law journal and (2) is not binding precedent of the Board.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.17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GEORGE COMBS
and KENNETH G. MCDANIEL
_____________
Appeal No. 1999-2229
Application 08/832,167
______________
ON BRIEF
_______________
Before GARRIS, LIEBERMAN and TIMM, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the refusal of the examiner to allow claims
1-27, 30 and 31 as amended subsequent to the final rejection. These are all of the
claims remaining in the application.
The subject matter on appeal relates to a composition which comprises an
oleophilic polyoxyalkylene monoether of a particular structure and less than 6 mole
percent, based on the amount of monoether, of alkoxylated unsaturates and/or less
Appeal No. 1999-2229
Application No. 08/832,167
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than about 5 mole percent, based on the amount of monoether, of polyoxyalkylene
diols. The appealed subject matter also relates to a method of using such a
composition. This appealed subject matter is adequately illustrated by independent
claim 13 which reads as follows:
13. A composition which comprises:
(a) an oleophilic polyoxyalkylene monoether of the structure:
Z—(A)n—OH
wherein A is an oxyalkylene group, Z is a hydrocarbyl
residue selected from the group consisting of C4-C60
alkyl, aryl, and aralkyl, and n, which is the average
number of oxyalkylene groups, is within the range of
about 2 to about 500; and
(b) less than about 6 mole percent, based on the amount
of monoether, of alkoxylated unsaturates.
The references set forth below are relied upon by the examiner as evidence of
obviousness:
Manary 3,615,295 Oct. 26, 1971
Polss 3,901,665 Aug. 26, 1975
Under 35 USC § 103(a), claims 1-3, 5-20, 22, 24, 26, 30 and 31 are rejected as
being unpatentable over Manary, and claims 1, 2, 4-18, 21, 23, 25, 27, 30 and 31 are
rejected as being unpatentable over Polss.
Although the appealed claims including the independent claims vary widely in
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Application No. 08/832,167
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scope and involve different categories of invention, the appellants affirmatively state
that “[t]he claims on appeal shall stand or fall together” (Brief, page 3). Accordingly, in
assessing the merits of the above noted rejections, we will focus upon independent
composition claim 13 as representative of the claims involved in these rejections. See
37 CFR § 1.192(c)(7)(8) (1998) and Ex parte Schier, 21 USPQ2d 1016, 1018 (Bd. Pat.
App. Int. 1991). Claim 13 has been selected as the representative claim because it is
at least one of the broadest, if not the broadest, appealed claim.
We refer to the Brief and the Reply Brief and to the Answer for a complete
exposition of the opposing viewpoints expressed by the appellants and by the examiner
concerning the aforementioned rejections.
OPINION
For the reasons set forth in the Answer and below, we will sustain each of the
rejections before us on this appeal.
The issues pivotal for resolution of this appeal have been reasonably well
crystallized on the subject appeal record. It is the examiner’s position that Manary or
Polss would have suggested component (a) of the appellants’ claimed composition, and
the appellants do not argue otherwise. However, the appellants vigorously disagree
with the examiner’s determination that, since both Manary and Polss are silent
regarding the presence of claim component (b), these prior art compositions must
satisfy the claim requirement concerning this component (i.e., that the composition
Appeal No. 1999-2229
Application No. 08/832,167
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comprises less than about 6 mole percent alkoxylated unsaturates and/or less than
about 5 mole percent polyoxyalkylene diols).
In this last mentioned regard, the appellants point out that both Manary and
Polss teach that their compositions may be manufactured using conventional base-
catalyzed methods. According to the appellants, such base-catalyzed methods will
inherently and inevitably produce impurities in the form of the above noted unsaturates
and diols at concentrations higher than permitted by the appealed claims. As support
for this position, the appellants refer to their specification disclosure and to the several
references attached to their Brief.
Initially, we emphasize that it is appropriate for the appellants to bear the burden
of proving that the seemingly identical or substantially identical composition products of
Manary or Polss do not actually possess the low-impurity characteristic of the here
claimed composition product. The fairness of such a burden allocation is evidenced by
the inability of the Patent and Trademark Office to manufacture products or to obtain
and compare prior art products. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-34 (CCPA 1977).
We have carefully considered the evidence proffered by the appellants in
support of their position. From our perspective, however, this evidence as a whole
tends to support the examiner’s view, namely, that the “compositions of Manary and
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Application No. 08/832,167
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Polss do not inevitably contain polyoxyalkylene diols and alkoxylated unsaturates in an
amount greater that [sic, than] the claims [permit]” (Brief, page 5). Our reasons for this
determination follow.
We cannot agree with the appellants that their position is supported by the
subject specification disclosure. On the contrary, Table 1 on specification page 10
reflects that inventive monoether E of Example No. 5 included a quantity of C3 olefin
(i.e., alkoxylated unsaturates) within the here claimed range despite the fact that a KOH
catalyst was used (i.e., the reaction was base-catalyzed in correspondence with the
disclosures of Manary and Polss). Similarly, a number of the references attached to the
appellants’ Brief disclose methods of making monoethers of the type under
consideration having reduced unsaturation via a base-catalyzed reaction. Specifically,
base-catalyzed reactions which yield reduced unsaturation are disclosed in U.S. Patent
No. 5,114,988 and U.S. Patent No. 5,114,619. While the other references attached to
the appellants’ Brief effect a reduction in unsaturation via other types of catalyst, they
certainly do not negative the teachings of the aforementioned patents or otherwise
support the appellants’ sweeping proposition that all base-catalyzed reactions for
making the monoethers under consideration will inherently and inevitably produce
impurities at concentrations higher than permitted by the appealed claims.
In short, a number of the teachings proffered by the appellants as evidence
supporting their position in fact militate against it by clearly evincing that the prior art
Appeal No. 1999-2229
Application No. 08/832,167
1 Indeed, a number of the references attached to the appellants’ Brief may anticipate or render
obvious compositions of the type defined by appealed claim 13. This possibility should be considered by the
appellants and the examiner in any further prosecution that may occur.
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includes a number of base-catalyzed reactions which yield the compositions under
review having low levels of alkoxylated unsaturates as required by appealed
independent claim 13. To this extent, the evidence proffered by the appellants vitiates
their position that base-catalyzed reactions inherently and inevitably produce these
unsaturates at quantities higher than permitted by the claim under consideration.1
Under the circumstances recounted above, it is our ultimate determination that
the appellants have failed to carry their burden of proving that the respective
compositions of Manary and Polss do not actually possess the low-impurity
characteristic of the here claimed compositions. In re Best, 562 at 1255, 195 USPQ at
433-34. It follows that we will sustain each of the § 103 rejections advanced by the
examiner on this appeal.
The decision of the examiner is affirmed.
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Application No. 08/832,167
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
) BOARD OF PATENT
)
PAUL LIEBERMAN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
CATHERINE TIMM )
Administrative Patent Judge )
BRG:yrt
Appeal No. 1999-2229
Application No. 08/832,167
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