Ex Parte Duck et al

Board of Patent Appeals and Interferences

Oct 23, 2000

08458628 (B.P.A.I. Oct. 23, 2000)

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(2) is not binding precedent of the Board.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. 53

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte EDWARD W. DUCK, INGOLF SCHEFFLER and KLAUS RUCH
_____________
Appeal No. 1997-4356
Application 08/458,628
______________
ON BRIEF
_______________
Before KIMLIN, WARREN and DELMENDO, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 10-12,
14, 16-20, 22, 24 and 25, all the claims remaining in the present
application. Claim 10 is illustrative:
10. A non-aqueous sprayable plastisol sound-dampening
composition free of volatile components consisting
essentially of:
a) from about 10 to about 60 percent by weight of
a polymer powder mixture having an average particle
size of less than about 60 microns, said mixture
consisting essentially of
Appeal No. 1997-4356
Application No. 08/458,628
2
1) a first vinylchloride polymer component
which forms a continuous phase upon gelling of the
plastisol, and
2) a cross-linked swellable second polymer
component selected from the group consisting of
homopolymers and copolymers of esters of
methacrylic acid, said second polymer component
containing from about 0.5 to about 10 moles of a
cross-linking agent per mole of said second
polymer component which upon gelling of the
plastisol is swollen but not gelled, is present as
a dispersion of discrete particles in said
continuous phase, and has a glass transition
temperature of from about -20 to about +60
C;
b) from about 25 to about 45 percent by weight of
a phthalate plasticizer which gels only said first
polymer component at a temperature of from about 80 to
about 230
C but only swells said second polymer
component; and
c) from 0 to about 40 percent by weight of a
filler, all weights being based on the weight of said
plastisol composition.
The examiner relies upon the following reference as evidence
of obviousness:
Fukahori et al. (Fukahori) JP 58-39828 Mar. 08, 1983
Appellants' claimed invention is directed to a composition
and process for dampening the sound of automobile parts. The
composition comprises a polymer powder mixture of a first
vinylchloride polymer and a cross-linked swellable second polymer
of, for example, polymethyl methacrylate, and a phthalate
plasticizer.
Appeal No. 1997-4356
Application No. 08/458,628
1 Inasmuch as the examiner has not included the final rejection of the
appealed claims under 35 U.S.C. § 112, first paragraph, in the answer's
statement of the rejection, and the examiner has not responded to appellants'
rebuttal of the rejection in the brief, we will, for purposes of this appeal,
consider the examiner's rejection under § 112, first paragraph to have been
withdrawn.
3
Appellants request at page 4 of the brief that
"patentability of the pending claims be separately considered."
However, appellants have not advanced an argument that is
reasonably specific to any claim on appeal. Accordingly, all the
appealed claims stand or fall together with claim 10. In re
Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978). See also
37 CFR 1.192 c(7) and c(8) (1995).
All the appealed claims stand rejected under 35 U.S.C. § 103
as being unpatentable over Japanese '828.1
We have thoroughly reviewed each of appellants' arguments
for patentability. However, we are in full agreement with the
examiner's reasoned analysis and application of the prior art as
well as his cogent disposition of the arguments raised by
appellants. Accordingly, we will adopt the examiner's reasoning
as our own in sustaining the rejection of record, and we add the
following for emphasis only.
Appellants do not dispute the examiner's factual
determination that Japanese '828 discloses "a vibration dampening
Appeal No. 1997-4356
Application No. 08/458,628
4
composition which incorporates a first vinyl chloride polymer
component and a cross-linked swellable second polymer component
which is based on the same monomeric constituents as instantly
claimed." (page 3 of answer). The examiner notes that the second
polymeric component of Japanese '828 "is a polymethyl methacry-
late which is specifically preferred by appellants" (page 3 of
answer). Appellants also do not take issue with the examiner's
legal conclusion that the presently claimed average particle size
of less than about 60 microns would have been obvious to one of
ordinary skill in the art. Rather, the principal argument
advanced by appellants is that the amount of plasticizer employed
in the Japanese composition is "less than the amount employed in
the present composition" (page 8 of brief). According, to
appellants, since Japanese '828 is only concerned with forming
polymeric sheets, "there exists no motivation on the part of one
having ordinary skill in the art to wish to increase the amount
of plasticizer employed in the Japanese reference" (page 8 of
brief). It is appellants' contention that the Japanese reference
"clearly teaches away from an increase in plasticizer content
Appeal No. 1997-4356
Application No. 08/458,628
5
since such a modification would preclude the formation of a
polymeric sheet as taught by the Japanese reference" (sentence
bridging pages 8 and 9 of brief). According to the calculations
presented at page 10 of appellants' brief, the reference teaches
12.5% and 17% by weight of plasticizer.
Simply stated, we are satisfied that the examiner, at pages
5 and 6 of the answer, has amply demonstrated that appellants'
calculations regarding the amount of plasticizer disclosed by the
Japanese reference is a mischaracterization of the reference
disclosure. As explained by the examiner, Japanese '828 fairly
teaches a dampening composition comprising, preferably, 100 parts
by weight plasticizer, 100 parts by weight of the sum of a first
vinyl chloride polymer and a second cross-linked polymer, and 100
parts by weight filler. This equates to a composition comprising
33.3% plasticizer which falls directly within the claimed range
of 25-45% by weight. Moreover, the ranges disclosed at page 5 of
the English translation of Japanese '828 encompass a number of
other compositions wherein the plasticizer is present in an
amount within the claimed range. Furthermore, it is evident from
page 8 of appellants' specification that no criticality is
Appeal No. 1997-4356
Application No. 08/458,628
6
attached to the claimed amount of plasticizer. In relevant part,
appellants' specification states that "the plasticizer proportion
is in the range of 15 to 65 weight% and preferably 25 to 45
weight%". Such a stated preference would seem to allay any
suggestion of criticality. In re Armbruster, 512 F.2d 676, 679-
680, 185 USPQ 152, 155 (CCPA 1975); In re Shepard, 319 F.2d 194,
199, 138 USPQ 148, 152 (CCPA 1963).
As a final point, we note that appellants base no argument
upon objective evidence of nonobviousness, such as unexpected
results. Also, although appellants make reference to an Exhibit
A at page 8 of the brief, the examiner states at page 5 of the
answer that he "has failed to find Exhibit A and as such, this
evidence has not been considered." Furthermore, we agree with
the examiner that "the Japanese reference is so clear as to the
amount of plasticizer incorporated therein" (page 5 of answer).
In conclusion, based on the foregoing and the reasons well-
stated by the examiner, the examiner's decision rejecting the
appealed claims is affirmed.
Appeal No. 1997-4356
Application No. 08/458,628
7
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
vsh
Appeal No. 1997-4356
Application No. 08/458,628
8
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