Ex Parte DAS et al

Board of Patent Appeals and Interferences

Nov 23, 2009

08445060 (B.P.A.I. Nov. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SAJAL DAS and GERALDINE SHU-CHUIN SU
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Appeal 2009-004640
Application 08/445,060
Technology Center 1700
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Decided: June 23, 2010
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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.
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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
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(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).
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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,
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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):
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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

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