Ex parte Cooke

Board of Patent Appeals and Interferences

Jun 27, 2001

08553072 (B.P.A.I. Jun. 27, 2001)

The amendment dated Jan. 14, 1997, Paper No. 8,1
subsequent to the final rejection, was entered by the examiner
as per the Advisory Action dated Jan. 31, 1997, Paper No. 9.
See the Brief, page 2.
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publication and is not binding precedent of the Board.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 THOMAS W. COOKE
____________
Appeal No. 1998-1176
Application No. 08/553,072
____________
ON BRIEF
____________
Before GARRIS, OWENS, and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 5 through 10, 12, 19, 21
and 22. These are the only claims remaining in this1
application.
Appeal No. 1998-1176
Application No. 08/553,072
We note that claims 12 and 19 are not correctly2
reproduced in the Appendix attached to appellant’s Brief (see
the Answer, page 3).
2
According to appellant, the invention is directed to an
ultraviolet (UV) light absorber composition which is
spontaneously dilutable in water to allow its use in
conventional textile dyeing and is based on the synergistic
combination of the UV light absorber and a suitable solvent
(Brief, page 2). Appellant states that the claims do not
stand or fall together and have presented specific,
substantive reasons for the separate patentability of each
claim rejected in view of prior art (Brief, pages 5 and 8-
10). Pursuant to the provisions of 37 CFR §
1.192(c)(7)(1995), we decide this appeal as to the ground of
rejection under section 112 on the basis of claims 12 and 19,
with claims 5-10, 21 and 22 standing or falling with claim 19.
With respect to the rejections based on prior art, we consider
each claim separately to the extent argued by appellant.
Illustrative claims 12 and 19 are reproduced below:2
12. A UV light absorber composition for improving the
lightfastness of dyed synthetic textiles, consisting
essentially of:
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Application No. 08/553,072
3
(a) from about 10-45% by weight of 2-(2-hydroxy-5-tert-
octylphenyl) benzotriazole;
(b) from about 55-90% by weight of N-methyl-pyrrolidone
solvent; and
(c) wherein the benzotriazole of (a) is applied to the
textiles in a concentration sufficient to result in an add-on
in the range of between 0.4-4.0% by weight of the textiles
when dry.
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Application No. 08/553,072
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19. A UV light absorber composition for improving the
lightfastness of dyed synthetic textiles, consisting
essentially of:
(a) 5-25% by weight of a substituted benzotriazole UV
light absorbing agent; and
(b) 75-95% by weight of a miscible organic solvent
suitable for dissolving said benzotriazole, wherein said
benzotriazole is applied to the textiles in a concentration
sufficient to result in an add-on in the range of between 0.4-
4.0% by weight of the textiles when dry and optionally a
surfactant, an additional light stabilizer, antioxidant and a
water immiscible solvent.
The examiner has relied upon the following references in
support of the rejections:
Kintopf et al. (Kintopf) 4,230,867 Oct. 28,
1980
DesLauriers et al. (DesLauriers) 5,268,450 Dec. 7,
1993
All of the claims on appeal stand rejected under 35
U.S.C.
§ 112, ¶1, as being based on a specification which contains
new matter (Answer, page 4). Claims 9, 19 and 22 stand
rejected under 35 U.S.C. § 103 as unpatentable over Kintopf
(Answer, page 5). Claims 10 and 19 stand rejected under 35
U.S.C. § 102(b) as anticipated by Deslauriers (Answer, page
6). We affirm the rejections based on prior art essentially
for the reasons in the Answer but reverse the rejection under
Appeal No. 1998-1176
Application No. 08/553,072
5
the first paragraph of section 112 for reasons which follow.
Accordingly, the decision of the examiner is affirmed-in-part.
Appeal No. 1998-1176
Application No. 08/553,072
6
OPINION
A. The Rejection under 35 U.S.C. § 112, ¶1
The examiner finds that there is no basis or support in
the original disclosure for the newly created ranges of
components (a) and (b) in claims 12 and 19 (Answer, pages 4
and 7-9). The examiner also finds that the range of claim 12
is not supported by the disclosure of Example 12 in the
specification, which the examiner finds to disclose that the
entire ranges now claimed in claim 12 will not result in
component (a) being soluble in component (b)(Answer, page 4).
The initial burden rests with the examiner of presenting
evidence or reasoning why persons of ordinary skill in the art
would not recognize in the original disclosure a description
of the invention as now defined by the claims. In re
Wertheim, 541 F.2d 257, 264, 191 USPQ 90, 97 (CCPA 1976). As
stated in Wertheim, “the question is whether, on the facts,
the PTO has presented sufficient reason to doubt that the
broader described range also describes the somewhat narrower
claimed range.” Wertheim, 541 F. 2d at 264, 191 USPQ at 98.
As quoted by the examiner (Answer, page 8), Wertheim states
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Application No. 08/553,072
See In re Johnson, 558 F.2d 1008, 1018-19, 194 USPQ 187,3
196 (CCPA 1977).
For example, the upper limit of the UV agent in claim 124
is 45% by weight while the lower limit of the NMP solvent is
55% by weight. We note that original claim 12 contained the
transitional term “comprising” leaving the claims open to
unrecited ingredients while claims 12 and 19 now recite
7
“[w]here it is clear, for instance, that the broad described
range pertains to a different invention than the narrower (and
subsumed) claimed range, then the broader range does not
describe the narrower range. [Citations omitted].” Wertheim,
541 F.2d at 265, 191 USPQ at 98. We determine that the
examiner has not met this initial burden merely by pointing
out that the ranges now claimed are subsumed within the
originally disclosed ranges but some endpoints do not have
literal basis in the original disclosure (see the Answer,
pages 4 and 7-9). The examiner has not shown that the
different ranges pertain to different inventions or that the
new endpoints are alleged to be critical. Appellant has
amended the original ranges, not in an attempt to avoid prior
art or allege criticality by a showing of unexpected results,3
but apparently only to make the ranges of the required
components (a) and (b) equal 100% by weight. 4
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Application No. 08/553,072
“consisting essentially of” which excludes components which
would materially affect the basic and novel characteristics.
We also note that claims 12 and 19 now require no additional
surfactant or emulsifier.
8
The examiner’s reliance on Example 12 from appellant’s
specification is misplaced since, as correctly argued by
appellant (Brief, page 7), Example 12 is only one of twenty
examples and need not support the entire claimed range.
Contrary to the examiner’s belief, any particular solvent must
only be capable of dissolving at least 5% of the UV agent and
at least 2% of any emulsifier used (see the specification,
page 8, ll. 21-23).
For the foregoing reasons, we determine that the examiner
has not presented sufficient facts or reasoning to meet the
initial burden of proof. Accordingly, the examiner’s
rejection of the claims on appeal under 35 U.S.C. § 112, ¶1,
is reversed. B. The Rejection under 35 U.S.C. § 102(b)
Claims 10 and 19 stand rejected under section 102(b) as
anticipated by col. 23, ll. 25-29, of DesLauriers, which the
examiner finds to disclose the addition of 5.89 grams of a
substituted benzotriazole UV light absorbing agent in 70 grams
Appeal No. 1998-1176
Application No. 08/553,072
Although not contested by appellant, the amount of UV5
agent in this composition is about 7.7% by weight (5.89/(70
+5.89)), with the remainder (92.3% by weight) being the NMP
solvent.
9
of NMP (N-methyl-2-pyrrolidone solvent, see Example 1 in col.
15 of this reference; Answer, page 6) to an autoclave. 5
Appellant argues that “the mere fact that such
benzotriazole UV absorber compounds can be dissolved in NMP
does [sic,not?] anticipate their use in making water-dilutable
UV absorber solutions for treating textiles” (Brief, page 9).
Appellant submits that this reference “in no way teaches or
anticipates the end-use or invention of this application”
(id.).
Appellant’s arguments are not well taken since the end
use of the invention is not claimed. Claim 19 on appeal is
directed to a UV light absorber composition which consists
essentially of components (a) and (b). Appellant does not
contest that DesLauriers discloses the two claimed components
in amounts within the scope of claim 19 on appeal (see the
Brief, pages 9-10). The preamble language of claim 19 and the
language following component (b) both are directed to the
intended use of the UV light absorber composition and do not
Appeal No. 1998-1176
Application No. 08/553,072
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differentiate the claimed composition from the composition of
DesLauriers. This language directed to the intended use does
not give meaning and scope to the claim. See In re Paulsen,
30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673-74 (Fed. Cir. 1994);
and In re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644
(CCPA 1974).
Accordingly, for the foregoing reasons and those set
forth in the Answer, the examiner’s rejection of claim 19 on
appeal, and claim 10 which depends on claim 19 and recites the
use of NMP as the solvent, under 35 U.S.C. § 102(b) as
anticipated by DesLauriers is affirmed.
C. The Rejection under 35 U.S.C. § 103
The examiner finds that Kintopf discloses the production
of various substituted benzotriazole UV light absorbers in an
organic solvent (Answer, page 5). The examiner concludes that
the amounts of each component would have been obvious since
Kintopf clearly teaches that the amount of solvent must
dissolve the benzotriazole UV agent (Answer, page 6).
Appellant argues that the percentages of components
recited in claim 19 on appeal are not disclosed by Kintopf
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Application No. 08/553,072
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(Brief, page 8). Appellant also argues that the specific
benzotriazole of claim 9 is not taught or suggested by Kintopf
(id.). Finally, appellant argues that Kintopf does not
disclose or suggest the use of a water immiscible solvent as
recited in claim 22 on appeal.
Appellant’s arguments are not persuasive. The examiner
concludes that the amounts of each component would have been
well within the ordinary skill in the art since Kintopf
teaches that the amount of solvent should completely dissolve
the particular benzotriazole used (see Kintopf, col. 4, ll.
28-39; col. 5, l. 64-col. 6, l. 1; Answer, pages 9-10).
Appellant has not specifically rebutted the examiner’s finding
regarding the teaching of Kintopf. Furthermore, it is noted
that the law is replete with cases in which the difference
between the claimed invention and the prior art is some range
within the claims and it has been consistently held that in
such situations that appellant must show that the particular
range is critical. See In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990). The specific
benzotriazole of claim 9 on appeal is disclosed by Kintopf in
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Example 6 at col. 14. Water-immiscible solvents are taught as
co-solvents by Kintopf (see the Answer, page 9; Kintopf, col.
5, ll. 2-6; and Example 1).
For the foregoing reasons and those set forth in the
Answer, we determine that the examiner has presented a prima
facie case of obviousness in view of the reference evidence.
Based on the totality of the record, giving due consideration
to appellant’s arguments, we determine that the preponderance
of evidence weighs most heavily in favor of obviousness within
the meaning of section 103. Accordingly, the examiner’s
rejection of claims 9, 19 and 22 under 35 U.S.C. § 103 as
unpatentable over Kintopf is affirmed.
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Application No. 08/553,072
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D. Summary
The examiner’s rejection of claims 5-10, 12, 19 and 21-22
under the first paragraph of 35 U.S.C. § 112 is reversed. The
examiner’s rejection of claims 10 and 19 under 35 U.S.C. §
102(b) over DesLauriers is affirmed. The examiner’s rejection
of claims 9, 19 and 22 under 35 U.S.C. § 103 over Kintopf is
affirmed. Accordingly, the decision of the examiner is
affirmed-in-part.
Appeal No. 1998-1176
Application No. 08/553,072
14
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
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
jg
Appeal No. 1998-1176
Application No. 08/553,072
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W. THAD ADAMS III
2180 FIRST UNION PLAZA
CHARLOTTE, NC 28282