Ex Parte COMO et al

Board of Patent Appeals and Interferences

Aug 29, 2002

09097123 (B.P.A.I. Aug. 29, 2002)

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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today was not written for publication and is not binding
precedent of the Board.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. 18

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte DAVID JEROME COMO
and BARRY MARK KETOLA
______________

Appeal No. 2000-0994
Application 09/097,123
_______________

ON BRIEF
_______________

Before KIMLIN, WARREN and OWENS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally
rejecting claims 1 through 5 and 8 through 11, and refusing to allow claims 6 and 7 as amended
subsequent to the final rejection. These are all of the claims in the application. Claim 1 is
illustrative of the claims on appeal:
1. A dielectric lubricant comprising:
(A) a phenyl-methyl siloxane having an average general formula
Me3SiO-( Me2SiO)x-(MePhSiO)y-SiMe3, wherein each Me represents a methyl group, each Ph
represents a phenyl group, x has a value from zero to about 0.25 and x + y = 1;
said phenyl-methyl siloxane having a viscosity at 25°C from about 500 to about 10,000
centipoise;
(B) a polytetrafluoroethylene powdered solid; and
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Application 09/097,123
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component (A) being present in an amount of 50 to 80 parts by weight and compound (B)
being present in an amount of 20 to 50 parts, by weight, per 100 parts by weight of the combined
weights of (A) and (B).
The appealed claims, as represented by claim 1, are drawn to a dielectric lubricant
composition comprising at least a phenyl-methyl siloxane having the average general formula
and viscosity specified in the claim, and a polytetrafluoroethylene powdered solid, the two
specified components being present in the specified amounts. Claim 8 specifies a silicone rubber
spark plug boot having a dielectric lubricant disposed in the boot cavity, wherein the dielectric
lubricant is defined in the same manner as in claim 1. Claim 9 specifies a method of lubricating
a spark plug boot by disposing on the walls of the cavity thereof a lubricant comprising the stated
parts of a phenyl-methyl siloxane having the average general formula as specified in claim 1 and
of a polytetrafluoroethylene powdered solid. According to appellants, the lubricant composition
as specified in claim 1 and as encompassed by claim 9 withstands high temperatures and prevents
the spark plug boot from bonding to the spark plug (specification, e.g., page 2).
The references relied on by the examiner are:
Lontz 2,644,802 Jul. 7, 1953
Wright 3,671,429 Jun. 20, 1972
The examiner has rejected appealed claims 1 through 11 under 35 U.S.C. § 103(a) as
being unpatentable over Lontz or Wright, considered separately.
Appellants, in the brief (page 3), have presented three groups of claims: claims 1-7; claim
8; and claims 9-11. We decide this appeal based on appealed claims 1, 8 and 9. 37 CFR
§ 1.192(c)(7) (1997).
We affirm the ground of rejection with respect to appealed claims 1 through 7 and reverse
with respect to appealed claims 8 through 11.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellants’ brief for a complete exposition thereof.
Opinion
As an initial matter, we find that, when considered in light of the written description in
the specification as interpreted by one of ordinary skill in this art, see, e.g., In re Morris, 127
F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), the plain language of appealed
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Application 09/097,123
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claim 1 requires that the composition claimed therein comprises at least “50 to 80 parts by
weight” of a phenyl-methyl siloxane having the average general formula and viscosity specified
in the claim, and 20 to 50 parts of a polytetrafluoroethylene powdered solid, the two specified
components being present in the specified amounts “per 100 parts by weight of the combined
weights of (A) and (B).” We determine that the transitional term “comprising” opens the
claimed compositions to compositions which contain other ingredients in addition to the two
specified ingredients. See Exxon Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555,
35 USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The claimed composition is defined as comprising -
meaning containing at least - five specific ingredients.”); In re Baxter, 656 F.2d 679, 686-87, 210
USPQ 795, 802-03 (CCPA 1981) (“As long as one of the monomers in the reaction is propylene,
any other monomer may be present, because the term ‘comprises’ permits the inclusion of other
steps, elements, or materials.”). However, the term “dielectric lubricant” in the preamble of
claim 1 limits the claimed compositions to those ingredients in such amounts which do not
preclude the composition from exhibiting dielectric properties. See generally, Corning Glass
Works v. Sumitomo Elect. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir.
1989); In re Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987).
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner (answer, pages 3-5) that, prima
facie, one of ordinary skill in this art routinely following the teachings of each of Lontz and
Wright would have combined a phenyl-methyl siloxane having the average general formula and
viscosity specified in appealed claim 1 and a polytetrafluoroethylene powdered solid specified in
appealed claim 1 in amounts falling within the range specified in this claim, in the reasonable
expectation of obtaining a composition falling within the teaching of the reference. See
generally, Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1845-
46 (Fed. Cir. 1989) (“That the ‘813 patent discloses a multitude of effective combinations does
not render any particular formulation less obvious.”); In re Lemin, 332 F.2d 839, 841, 141 USPQ
814, 815-16 (CCPA 1964) (“Generally speaking there is nothing unobvious in choosing ‘some’
among ‘many’ indiscriminately.”). Indeed, appealed claim 1, as we have interpreted this claim
above, encompasses compositions that contain finely divided zinc oxide in the amount shown by
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Wright, because of the transitional term “comprising.” We note that Wright teaches that the
compositions have “excellent dielectric properties” (col. 6, line 71), as pointed out by the
examiner. The compositions of Lontz contain only the two ingredients.
Accordingly, prima facie, one of ordinary skill in this art routinely following the
teachings of each of the references would have arrived at claimed compositions encompassed by
appealed claim 1. Indeed, as pointed out by the examiner (answer, pages 5 and 6), the claimed
viscosity ranges and amounts of the two ingredients are encompassed by or overlap with the
ranges for the same parameters set forth in appealed claim 1. It is well settled that where the
claimed ranges are encompassed by or overlap with the ranges for the same parameters disclosed
in the applied prior art, the claimed ranges will not patentably distinguish the claimed invention
from the prior art unless the claimed ranges are shown to be critical, such as by a showing of a
new or unexpected result, thus shifting the burden to appellants to establish the criticality of the
claimed ranges. See generally, In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed.
Cir. 1997), and cases cited therein; In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA
1980).
Accordingly, since a prima facie case of obviousness of appealed claim 1 has been
established over each of Lontz and Wright, we have again evaluated all of the evidence of
obviousness and nonobviousness based on the record as a whole, giving due consideration to the
weight of appellants’ arguments. See generally, In re Johnson, 747 F.2d 1456, 1460, 223 USPQ
1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984).
We have carefully considered all of appellants’ arguments in the brief. Appellants submit
that it would require undue experimentation to select the phenyl-methyl siloxanes and
polytetrafluoroethylene powdered solid falling within the parameters specified for the claimed
dielectric compositions from the teachings of Lontz because the reference exemplifies a viscosity
for the polyorganosiloxane less than that required by appealed claim 1, does not specifically point
to phenyl-methyl siloxane or polytetrafluoroethylene powdered solids, and teaches that the
composition cannot contain more than 50% of polyorganosiloxane (brief, pages 4-6). With
respect to Wright, appellants argue that the reference teaches away from the claimed composition
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Application 09/097,123
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because one of ordinary skill in the art would not be motivated to remove zinc oxide taught by
Wright to be necessary to the composition, and it would require undue experimentation to arrive
at the claimed viscosity range for the phenyl-methyl siloxane (id., pages 8-9). We cannot agree.
The issue here is whether each of Lontz and Wright would have reasonably suggested the
claimed composition to one of ordinary skill in this art. See generally, Merck v. Biocraft, supra;
Lemin, supra. Thus, the selection of ingredients made by this person must be considered based
on the teachings of the reference, and not whether the selection would be made based on
appellants’ invention. See generally, See In re Kronig, 539 F.2d 1300, 1304, 190 USPQ 425,
428, (CCPA 1976) (“[I]t is sufficient here that [the reference] clearly suggests doing what
appellants have done.”). In this respect, the selection of ingredients that can be made by one of
ordinary skill in this art within the teachings of the reference is not limited to exemplified
ingredients. See generally, Merck v. Biocraft, 874 F.2d at 807, 10 USPQ2d at 1846, quoting In
re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“But in a section 103
inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since
all disclosures of the prior art, including unpreferred embodiments, must be considered.’”). The
fact that the reference discloses a range for a parameter that is different from the range claimed
for the same parameter does not patentably distinguish the claimed invention where the claimed
range overlaps with or is encompassed by the range disclosed in the reference in the absence of a
showing of the criticality of the claimed range. See generally, Geisler, supra; Boesch, supra; see
also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) (“The law is
replete with cases in which the difference between the claimed invention and the prior art is some
range or other variable within the claims. [Citations omitted.] These cases have consistently held
that in such a situation, the applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the prior art range.
[Citations omitted.]”).
There is no dispute that Lontz and Wright each disclose the phenyl-methyl siloxane and
polytetrafluoroethylene ingredients of the claimed composition, even if these components are not
disclosed therein to be preferred. We point out here that compositions encompassing zinc oxide
are encompassed by appealed claim 1 as we discussed above. Therefore, we cannot agree that
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Application 09/097,123
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Wright teaches away from the claimed compositions, and indeed, the reference shows that
compositions containing this ingredient have dielectric properties as we found above.1 Thus, the
issue reduces to whether there is in the record evidence that the ranges with respect to the
viscosity of the phenyl-methyl siloxane ingredient and the amounts of the ingredients present in
the claimed compositions are critical vis-à-vis the ranges disclosed for the same ingredients in
Lontz and Wright which encompass or overlap with the claimed ranges. The appellants do not
allege such evidence and we find none.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in each of Lontz and Wright with appellants’
countervailing evidence of and argument for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 1 through 7 would have been obvious as a matter of
law under 35 U.S.C. § 103(a).
We cannot reach the same result with respect to appealed claims 8 and 9 which are drawn
to a silicone rubber spark plug boot having the claimed dielectric lubricant disposed in the boot
cavity thereof, and a method of lubricating a spark plug boot by disposing the claimed dielectric
lubricant on the walls of the cavity, respectively. The examiner admits that neither Lontz nor
Wright teaches the use of the compositions disclosed therein in connection with lubricating the
cavity of a sparkplug boot, but maintains with respect to Lontz that one of ordinary skill in the art
would mold the composition “onto various articles such as spark plugs [sic, sparkplug boot]” to
take advantage of the properties of the compositions (answer, pages 4 and 6). We observe that
even if this was so, Lontz teaches that the polyorganosiloxane lubricant is removed from the
composition at some point in forming the molded article (see, e.g., col. 3, lines 53-58, and col. 8,
lines 65-71). The examiner does not even submit such an explanation for Wright, alleging only

1 See In re Gurley, 27 F.3d 551, 552-53, 31 USPQ2d 1130, 1131-32 (Fed. Cir. 1994) (“A
reference may be said to teach away when a person of ordinary skill, upon reading the reference
would be discouraged from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant. The degree of teaching away
will of course depend on the particular facts; in general, a reference will teach away if it suggests
that the line of development flowing from the reference’s disclosure is unlikely to be productive
of the result sought by the applicant. [Citations omitted.]”).
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that “[t]he Examiner is of the position that appellants [sic] claimed invention is clearly taught by
Wright” (answer, page 5). Thus, we agree with the position advanced by appellants (brief, pages
6-7 and 9-10). Therefore, it is clear that the examiner has resorted to hindsight gained from
appellants’ specification and claims in order to reach the conclusion that the claimed invention
was prima facie obviousness over each of Lontz and Wright which is an inappropriate standard
of obviousness under 35 U.S.C. § 103(a). See generally, In re Rouffet, 149 F.3d 1350, 1358, 47
USPQ2d 1453, 1458 (Fed. Cir. 1998) (“hindsight” is inferred when the specific understanding or
principal within the knowledge of one of ordinary skill in the art leading to the modification of
the prior art in order to arrive at appellant’s claimed invention has not been explained); W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983) (“To imbue one of ordinary skill in the art with knowledge of the invention . . . when no
prior art reference or references of record convey or suggest that knowledge, is to fall victim to
. . . hindsight . . . wherein that which only the inventor taught is used against its teacher.”).
Accordingly, we reverse the grounds of rejection with respect to appealed claims 8
through 11.
The examiner’s decision is affirmed-in-part.

Appeal No. 2000-0994
Application 09/097,123
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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-IN-PART

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )

Appeal No. 2000-0994
Application 09/097,123
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Arne R. Jarnholm
Dow Corning Corporation
Patent Department Mail C01232
PO Box 994
Midland, MI 48686-0994