Ex parte FINLEY

Board of Patent Appeals and Interferences

Jan 13, 1998

08139260 (B.P.A.I. Jan. 13, 1998)

Application for patent filed October 20, 1993. According1
to applicant, the application is a continuation of Application
07/333,068, filed April 3, 1989; which is a continuation-in-
part of Application 07/176,979, filed April 4, 1988, now
Patent No. 4,898,789.
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(2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JAMES J. FINLEY
_____________
Appeal No. 95-3463
Application 08/139,2601
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS, and LEE, Administrative Patent Judges.
Appeal No. 95-3463
Application No. 08/139,260
2
HAIRSTON, Administrative Patent Judge.
REQUEST FOR RECONSIDERATION
Appellant has requested reconsideration of our decision
dated November 6, 1997, wherein the decision of the examiner
rejecting claims 1 through 7 and 10 through 20 under the
grounds of res judicata was reversed, and the decision of the
examiner rejecting claims 1 through 7 and 10 through 20 under
35 U.S.C. § 103 was affirmed as to claims 1 through 3, 5
through 7, 11 through 13 and 16 through 18, and was reversed
as to claims 4, 10, 14, 15, 19 and 20.
Appellant argues (Request, page 2) that “steps b, f and j
of method claim 16 each recite ‘sputtering zinc and tin in a
reactive atmosphere comprising oxygen to deposit a . . .
zinc/tin oxide film on . . .’,” and that “[t]he feature of a
metal oxide film comprising an oxide reaction product of zinc
and tin was found by the Board to be a patentable feature of
allowed dependent claims 4 and 14.” Appellant acknowledges
(Request, page 2) that “the patentable features of steps b, f,
and j of method claim 16 were not argued by appellant;
however, the Board in making its decision should not overlook
Appeal No. 95-3463
Application No. 08/139,260
3
the obvious patentable features of method claim 16.”
Appeal No. 95-3463
Application No. 08/139,260
4
In reversing the obviousness rejection of claims 4 and
14, the Board merely stated (Decision, page 9) that “the
examiner has not provided a reason, and we are not aware of
one, for replacing the metal oxide used in Woodard with an
oxide reaction product of zinc and tin disclosed by Gillery
‘771.” The obviousness rejection of claims 4 and 14 was,
therefore, reversed because the examiner failed to satisfy the
required duty of establishing a prima facie case of
obviousness, and not because claims 4 and 14 were deemed to
contain allowable subject matter. Thus, a finding not made in
connection with claims argued by appellant will not be made in
connection with claims not argued by appellant.
Appellant’s request has been granted to the extent that
our decision has been reconsidered, but such request is denied
with respect to making any modifications to the decision.
Appeal No. 95-3463
Application No. 08/139,260
5
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
RECONSIDERATION
DENIED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 95-3463
Application No. 08/139,260
6
Patent Department
PPG Industries, Inc.
One PPG Place
Pittsburgh, PA 15272