Ex parte CORLEY

Board of Patent Appeals and Interferences

Aug 21, 1997

07707717 (B.P.A.I. Aug. 21, 1997)

Application for patent filed May 30, 1991. According to1
appellant, this application is a continuation-in-part of
Application 07/545,745 filed June 29, 1990, now U.S. Patent No.
5,086,139 granted February 4, 1992.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LARRY S. CORLEY
_____________
Appeal No. 93-4332
Application 07/707,7171
______________
ON BRIEF
_______________
Before JOHN D. SMITH, PAK and McFARLANE, Administrative Patent
Judges.
McFARLANE, Administrative Patent Judge.
Appeal No. 93-4332
Application 07/707,717
We note Appellant’s statement (brief, page 1) that the2
appeal is from the final rejection of October 28, 1992 (Paper No.
8). As Applicant seems to appreciate, the final rejection was
withdrawn in favor of a non-final rejection mailed January 25,
1993 (Paper No. 10). From the record, it is clear that this
appeal is from the non-final rejection and not the withdrawn
final rejection. Of course, the appeal from a non-final
rejection is proper since the claims have been twice rejected, 37
CFR § 1.191(a).
2
DECISION ON APPEAL
This is an appeal from the rejection of claims 1 through
15. Claims 16 through 22 stand withdrawn from consideration. 2
See Paper No. 4.
Appellant’s claimed invention relates to a process for
improving the solubility of a curable bisimide/triene mixture in
an organic solvent. According to the claimed invention, a
mixture of a bisimide of an unsaturated dicarboxylic acid and a
triene is provided. The mixture is subjected to a non-gelling
elevated temperature for a time sufficient to increase the
viscosity of the mixture and to enhance the solubility of the
mixture in an organic solvent. According to the specification, a
curable bisimide solution is provided which comprises a
partially-cured bisimide and a reactive triene which is capable
of unhindered Diels-Alder reaction with the bisimide and an
isolated double bond (specification, page 2, lines 14-17).
Still, according to the specification, triene as a modifier of
Appeal No. 93-4332
Application 07/707,717
We note appellant’s statement (brief, page 4) that “claims3
1-15 are rejected under 35 U.S.C. § 101 as claiming the same
invention as that of claims 1-25 of prior U.S. Patent No.
5,086,139.” This statement is incorrect. The correct statement
of the rejection is noted at page 2 of the examiner’s answer
filed August 6, 1993 (paper no. 15).
3
bisimides, provides bisimide resin compositions with good
physical properties and enhanced processability for electrical
laminating applications (specification, page 1, line 24 to page
2, line 12).
To describe the invention in greater detail, a copy of the
claims as taken from the appeal brief is attached as an appendix
to this decision.
The reference relied upon by the examiner is:
Corley 5,086,139 Feb. 4, 1992
Claims 1-15 stand rejected under 35 U.S.C. § 101 as3
claiming the same invention as that of claims 21-25 of Corley.
Claims 1-15 also stand rejected under 35 U.S.C. § 112 first and
second paragraphs as the claimed invention is not described in
such full, clear, concise and exact terms as to enable any person
skilled in the art to make and use the same, and/or for failing
to particularly point out and distinctly claim the subject matter
which applicant regards as the invention. For reasons developed
below, we reverse each of the above-noted rejections.
Appeal No. 93-4332
Application 07/707,717
4
OPINION
The Double Patenting Rejection
Under 35 U.S.C. § 101
It is the examiner’s position that claim 21 of the Corley
patent recites
“heating” the monomer blend to a temperature of
“about 170 to about 350 C[”] which includes a o o
range of “about 170 to about 200 C.” [Answer, page 3.]o o

In comparing patent claim 21 to application claim 1, the examiner
contends that the “heating” step (i.e., step (b)) of the patent
claim is the same as step (2) of the application claim. The
examiner subsequently concludes that
[s]ince all claimed process parameters of the
application are the same as the patented
parameters of the patent, the claimed process is the
same as the patented process. Id.
We cannot agree with the examiner’s conclusion that
appellant is claiming the same subject matter as that of patented
claims 21 through 25. It is well settled that the same invention
cannot be claimed twice. 35 U.S.C. § 101 forbids two patents
from being issued on the same invention. See, e.g., In re
Boylan, 392 F.2d 1017, 1021, 157 USPQ 370, 374 (CCPA 1968). As
the court stated in In re Vogel, 422 F.2d 438, 441, 164 USPQ 619,
622 (CCPA 1970):
Appeal No. 93-4332
Application 07/707,717
5
A good test, and probably the only objective test,
for, “same invention,” is whether one of the claims
could be literally infringed without literally
infringing the other. If it could be, the claims do
not define identically the same invention.

In determining whether one claim could be literally
infringed without literally infringing the other, we must
determine the scope of the claims involved. To determine the
scope of the claims, the meaning of words in the claims may be
interpreted in light of the specification. During prosecution of
a patent application, the words in claims must be given their
broadest reasonable interpretation consistent with the
specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989).
Application claim 1 calls for providing a monomer mixture
comprising a bisimide and triene and “subjecting said monomer
mixture to a non-gelling elevated temperature for a time
sufficient to increase the viscosity of the mixture and to
enhance the solubility thereof in an organic solvent.” According
to the specification, the phrase, “non-gelling elevated
temperature” is a temperature at which the composition will not
gel (specification, page 7, lines 1-4). The specification at
page 6, lines 26-30, also states that the temperature to which
the mixture may be heated is “at least about 130 C., preferablyo
within the range of about 150 C to about 200 C., held for a timeo o
Appeal No. 93-4332
Application 07/707,717
6
of about 2 hours or more.” We also note that at such
temperatures, the bisimide copolymer product will not be fully
cured. See the specification at page 2, lines 14-17 and page 8,
lines 17-19. We therefore construe the language, “non-gelling
elevated temperature” to mean a temperature ranging between at
least about 130 C to about 200 C and wherein the product derivedo o
from such heating step is a partially-cured bisimide/triene
copolymer.
In comparing patent claim 21 with application claim 1, we
note that patent claim 21 is directed to a method for preparing a
fully cured bisimide whereas application claim 1 is limited to
the preparation of a partially cured bisimide. Furthermore, we
note that the subject matter of patent claim 21 is narrower in
scope than the subject matter of application claim 1. For
example, step (a) of patent claim 21 calls for a C triene6-20
which is represented by one of formulas I and II whereas
application claim 1 places no restriction on the triene. We also
note that with respect to step (b) of patent claim 21, a heating
temperature range of “about 170 to about 350 C” is recitedo o
whereas application claim 1 is limited to a temperature range of
130 to 200 C. It is apparent that with respect to theo
temperature ranges, patent claim 21 and application claim 1
Appeal No. 93-4332
Application 07/707,717
7
contain overlapping subject matter. Clearly then, the subject
matter of patent claim 21 cannot be said to be the same as the
subject matter defined by application claim 1. It is apparent
therefore that patent claim 21 and the claims dependent therefrom
can be infringed without infringing any of application claims 1
through 15.
We conclude therefore that under 35 U.S.C. § 101, the
subject matter defined by patent claims 21 through 25 is not the
same as the subject matter defined by application claims 1
through 15. Accordingly, we reverse the decision of the examiner
to reject the claims under 35 U.S.C. § 101 as claiming the same
invention as claims 21 through 25 of US patent No. 5,086,139.
The Rejection Under 35 U.S.C. § 112
Concerning the indefiniteness of the claims, the examiner
contends that “either the bisimide is represented by the claimed
formula or the bisimide is not represented by the claimed
formula” (emphasis in the original; answer, page 4). It is well
settled that the examiner has the initial burden to prove that
the claims are indefinite. The examiner has attempted to
improperly shift that burden to appellant. That, the examiner
cannot do. The examiner has failed to provide any evidence that
bisimides other than “a bisimide of an unsaturated dicarboxylic
acid” are characterized by formula
Appeal No. 93-4332
Application 07/707,717
8
in which Y is a substituted or unsubstituted divalent group
containing at least 2 carbon atoms and a carbon-carbon double
bond, and Z is a divalent linking group. Indeed, our review of
the record indicates that “a bisimide of an unsaturated
dicarboxylic acid” is one and the same as a bisimide having the
above noted formula. We conclude that the language, “which ...
can be,” in connection with the above noted formula, is
reasonably precise and is thus not vague, indefinite or unclear.
Accordingly, the rejection under 35 U.S.C. § 112, second
paragraph is reversed.
Regarding the rejection based on enablement, the examiner
has presented no reasons why he considers the specification to be
nonenabling. That is, the examiner has provided no explanation
as to why a person of ordinary skill in the art would not have
been able to make or use the claimed invention without undue
experimentation. The examiner does not satisfy his initial
burden of establishing a prima facie case of non-enablement
simply by expressing doubt that the specification is not enabling
for the type of bisimide used in the claimed process. It is the
Appeal No. 93-4332
Application 07/707,717
9
examiner’s burden at the outset to establish with objective
evidence or scientific reasoning a legitimate concern that the
bisimides within the scope of the appealed claims is not enabled
by the specification and that undue experimentation would be
required to practice the invention. See In re Strahilevitz, 668
F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982); In re Armbruster,
512 F.2d 676, 677-78, 185 USPQ 152, 153 (CCPA 1975); In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
Here, the examiner has presented no such evidence. Accordingly,
to the extent that the claims have been rejected based on a lack
of enablement of the specification, such rejection is reversed.
CONCLUSION
The decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS
) AND
) INTERFERENCES
)
ANTHONY McFARLANE )
Administrative Patent Judge )
)
Appeal No. 93-4332
Application 07/707,717
10

Appeal No. 93-4332
Application 07/707,717
11
M.P. HADDICAN
SHELL OIL COMPANY
PATENTS AND LICENSING
P.O. BOX 2463
HOUSTON, TX 77252-2463
Appeal No. 93-4332
Application 07/707,717
1
APPENDIX
1. A process comprising:
(1) providing a monomer mixture comprising (a) a bisimide of
an unsaturated dicarboxylic acid, which bisimide can be
represented by the formula
in which Y is a substituted or unsubstituted divalent group
containing at least 2 carbon atoms and a carbon-carbon double
bond, and Z is a divalent linking group, and (b) a triene which
contains both a conjugated diene moiety capable of unhindered
Diels-Alder reaction with a Y group of the bisimide and a carbon-
carbon double bond separated from the conjugated pair by a
divalent linking group; and
(2) subjecting said monomer mixture to a non-gellilng
elevated temperature for a time sufficient to increase the
viscosity of the mixture and to enhance the solubility thereof in
an organic solvent.
2. The process of claim 1 in which the triene is
represented by one of formulas I and II
Appeal No. 93-4332
Application 07/707,717
2
in which each R is selected independently from the group
consisting of hydrogen and C alkyl, R’ is a divalent linking1-3
group, and the double bond separated from the conjugated pair
adjoins at least one hydrogen-bearing carbon atom.
3. The process of claim 2 in which R’ is C alkylene.2-12
4. The process of claim 3 in which each R is selected from the
group consisting of hydrogen and methyl.
5. The process of claim 2 in which R’ is -O-R”-O-, in which R”
is selected from the group consisting of C alkylene and2-12
phenylene.
6. The process of claim 1 in which the triene is myrcene.
7. The process of claim 1 in which the molar ratio of the
triene to the bisimide is within the range of about 0.2-1.0:1.
8. The process of claim 7 in which the triene is myrcene.
9. The process of claim 8 in which the bisimide comprises N, N-
4,4'-diphenylmethane bismalemide.
10. The process of claim 1 which further comprises from about
0.0002 to about 0.2 moles, per mole of the bisimide, of a free
radical polymerization inhibitor.
11. The process of claim 10 in which the free radical
polymerization inhibitor is phenothiazine.
12. The process of claim 9 in which the molar ratio of the
myrcene to the bisimide is within the range of about 0.4-0.8:1.
13. The process of claim 1 in which the elevated temperature of
step (b) is within the range of about 130 to about 200 C.0
14. The process of claim 9 in which step (b) is carried out for
a time sufficient to produce a thermosettable, partially-cured
mixture having a viscosity within the range of about 0.5 to about
10 Pa s..
Appeal No. 93-4332
Application 07/707,717
3
15. The process of claim 9 in which step (b) comprises heating
the mixture at a temperature within the range of about 130 to
about 200 C for a time of 2 to about 20 hours.0