Ex Parte DAS et alDownload PDFBoard of Patent Appeals and InterferencesNov 23, 200908445060 (B.P.A.I. Nov. 23, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte SAJAL DAS and GERALDINE SHU-CHUIN SU ________________ Appeal 2009-004640 Application 08/445,060 Technology Center 1700 ________________ Decided: June 23, 2010 ________________ Before TERRY J. OWENS, CATHERINE Q. TIMM, and BEVERLY A. FRANKLIN, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants request rehearing of our Decision (mailed Nov. 23, 2009) affirming all of the rejections. Appeal 2009-004640 Application 08/445,060 2 OPINION Issue Have the Appellants shown error in the Board’s determination that 1) the Examiner did not commit reversible error when resolving the level of ordinary skill in the art, or 2) the Appellants have not shown reversible error in the Examiner’s conclusion that it would have been obvious to one of ordinary skill in the art to combine Das’ multifunctional phenolic cyanate/phenolic triazine copolymer, which may be blended with an epoxy, with the bisphenol A epoxy resin/catalyst combinations of the Japanese references? Analysis The Appellants argue that one of the inquiries in an obviousness determination under 35 U.S.C. § 103 set forth by the Supreme Court in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), i.e., resolution of the level of ordinary skill in the art, requires “analysis, facts considered, prior art considered, etc.” (Request 2). The Court’s decision in Deere merely states that the level of ordinary skill in the art is to be resolved. See Deere, 383 U.S. at 17. The Court does not require resolution in the manner argued by the Appellants. The Appellants argue that the Board erred in relying upon the Federal Circuit’s statement that “the absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”, Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001), quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985) because, the Appellants argue, that statement is in conflict with Deere Appeal 2009-004640 Application 08/445,060 3 (Request 2). The Appellants also argue that the Federal Circuit’s term “reflects” in Okajima is improper because a reflection is merely an image, not an actual factually resolved level of ordinary skill in the art (Request, 2- 3). The Appellants’ argued conflict between Okajima and Deere does not exist. Deere does not require the “analysis, facts considered, prior art considered, etc.” argued by the Appellants (Request 2). Deere merely requires resolution of the level of ordinary skill in the art, and according to Okajima that resolution does not require specific findings if the prior art reflects an appropriate level of skill in the art. As for the Appellants’ argument that “reflects” is improper because a reflection is merely an image, the more relevant meaning of “reflect” is “to make manifest or apparent: SHOW .”1 The Federal Circuit appears to be stating that the absence of specific findings as to the level of ordinary skill in the art is not reversible error if the prior art makes manifest or apparent an appropriate level of skill. The Appellants argue that the Board’s reliance upon the Federal Circuit’s statement that it was not reversible error for the Board to conclude that the level of ordinary skill in the art was best determined by appeal to the references of record, see In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995), was improper because the Examiner relied only upon the rejection references (Request 3). The Court’s statement in GPAC was that the Board did not clearly err in concluding that the level of ordinary skill in the art “was best determined 1 Webster’s New Collegiate Dictionary 971 (G. & C. Merriam 1973). Appeal 2009-004640 Application 08/445,060 4 by appeal to the references of record, especially Asbestos.” GPAC, 57 F.3d at 1579. The Court discussed, with respect to the level of ordinary skill in the art, only that one reference, not all of the references of record or even all of the rejection references. See id. The Examiner argued that the level of ordinary skill in the art is indicated by Das (Ans. 11). The Appellants do not argue that the Examiner was incorrect. Nor do the Appellants, who are in the best position to know the level of ordinary skill in the art, set forth any level of ordinary skill in the art different than that indicated by Das. For the above reasons we are not convinced of error in our determination that the Examiner did not commit reversible error when resolving the level of ordinary skill in the art. The Appellants argue, in reliance upon the Supreme Court decision in Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U.S. 358 (1928) and the Board decisions in Ex parte Stapp, 157 USPQ 165 (Bd. Pat. App. 1967) and Ex parte Williams, 39 USPQ 125 (Bd. Pat. App. 1938), that catalytic activity is unpredictable and that, therefore, the Board’s statement that “it would have been reasonably predictable to one of ordinary skill in the art that the catalysts would be effective with bisphenol A epoxy resins in Das’ composition” (Decision 7) is in error (Request 6-8). In Corona the issue was whether the known effectiveness of triphenylguanidine as a vulcanization catalyst would have indicated to one of ordinary skill in the art that diphenylguanidine would have that utility. See Corona, 276 U.S. at 368. The Court stated that “[t]he catalytic action of an accelerator cannot be forecast by its chemical composition, for such action is not understood and is not known except by actual test.” Corona, Appeal 2009-004640 Application 08/445,060 5 276 U.S. at 369. In Williams the issue was whether the known effectiveness as rubber preservatives of tertiary amines and diamines having certain substituents would have indicated that secondary amines having those substituents would be operative as rubber preservatives. Although the amines were preservatives, not catalysts, the Board stated: “As a general proposition, the operability of one chemical for a particular purpose cannot be accepted as a teaching that related chemicals will be operative for the same purpose; particularly is this true where the chemicals operate catalytically.” Williams, 39 USPQ at 127. In Stapp, wherein the claim recited “an isomerization catalyst capable of effecting said isomerization”, the Board stated that “catalytic activity is unpredictable and one skilled in this art is not apprised of the usable catalysts equivalent to those disclosed since the process is not well known.” Stapp, 157 USPQ at 166. Unlike in Corona, Williams and Stapp, the Appellants’ catalysts do not differ from those in the Japanese references. Hence, there is no issue of whether the known activity of one catalyst composition would have indicated catalytic activity of a different composition. The catalysts in the Japanese references were known to be effective in bisphenol A epoxy resin compositions (Decision 5). Hence, as stated in our Decision, “it would have been reasonably predictable to one of ordinary skill in the art that the catalysts would be effective with bisphenol A epoxy resins in Das’ composition” (Decision 7). When materials are known to have catalytic activity, a reasonable expectation of success in using them as a catalyst is sufficient for establishing obviousness. As stated by the Federal Circuit in In re Longi, 759 F.2d 887, 897 (Fed. Cir. 1985): Appeal 2009-004640 Application 08/445,060 6 The fact that some titanium compounds function more effectively, and that the exact magnitude of the increased catalytic activity might not be predictable, does not preclude a conclusion of obviousness. Only a reasonable expectation of success, not absolute predictability, is necessary for a conclusion of obviousness. We therefore are not persuaded of error in our determination that the Appellants have not shown reversible error in the Examiner’s conclusion that it would have been obvious to one of ordinary skill in the art to combine Das’ multifunctional phenolic cyanate/phenolic triazine copolymer, which may be blended with an epoxy, with the bisphenol A epoxy resin/catalyst combinations of the Japanese references. Conclusion We have considered the Appellants’ Request for Rehearing, but for the above reasons we decline to make any change to our Decision. DECISION/ORDER The Appellants’ Request for Rehearing is denied. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED kmm FISHER, CHRISTEN & SABOL P.O. BOX 18385 WASHINGTON, DC 20036 Copy with citationCopy as parenthetical citation