Ex parte GEE

Board of Patent Appeals and Interferences

Oct 29, 1999

08270345 (B.P.A.I. Oct. 29, 1999)

Application for patent filed July 5, 1994. According to1
the appellant, the application is a continuation of
Application 07/532,471, filed June 1, 1990, now abandoned.
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not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RONALD PAUL GEE
__________
Appeal No. 1996-2336
Application 08/270,3451
___________
ON BRIEF
___________
Before DOWNEY, PAK, and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
Appeal No. 1996-2336
Application 08/270,345
2
claims 1-3 and 6-19 as amended after final rejection. These
are all of the claims remaining in the application.
THE INVENTION
Appellants claim methods for producing polysiloxane
emulsions from a mixture containing cyclicsiloxanes. The
emulsions are oil free, i.e., do not contain any unemulsified
silicone material and do not produce unemulsified silicone oil
or polymers upon aging (specification, page 9, lines 4-8).
Claim 1 is illustrative and reads as follows:
1. A method for producing stable, oil free polysiloxane
emulsions comprising the steps of:
(I) preparing a mixture comprising
(a) a cyclicsiloxane, or a mixture of
cyclicsiloxanes,
(b) a nonionic surfactant, or a mixture of nonionic
surfactants,
(c) an ionic surfactant, or a mixture of ionic
surfactants,
(d) water, and

(e) a condensation polymerization catalyst;
wherein said cyclicsiloxane or mixture of cyclic siloxanes
have not been mechanically pre-emulsified prior to addition
into the mixture (I)
(II) thereafter heating and agitating the mixture (I) at
Appeal No. 1996-2336
Application 08/270,345
In the statement of the rejection, the examiner does not2
specify which requirement or requirements of 35 U.S.C. § 112,
first paragraph, form the basis of the rejection. In view of
the examiner’s explanation of the reasons for objecting to the
specification (answer, pages 4-5), we consider claims 1-3 and
6-19 to be rejected based on the enablement requirement and
claims 12-19 to be rejected based on the written description
3
a polymerization reaction temperature until essentially all
cyclicsiloxane is reacted, whereby a stable, oil-free emulsion
is formed.
THE REFERENCES
Findlay et al. (Findlay) 3,294,725 Dec. 27,
1966
Graiver et al. (Graiver) 0 228 575 Jul. 15,
1987
(European patent application)
Zhang Xinghua et al. (Xinghua), “Studies on Emulsion
Polymerization of Siloxanes. II. Mechanism of Cationic
Emulsion Polymerization of Octamethylcyclotetrasiloxane”,
Polymer Communications 266-70 (August 1982).
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 112, first
paragraph, as follows: claims 1-3 and 6-19, enablement
requirement, and claims 12-19, written description
requirement. Claims 1 and 6-13 stand rejected under 352
Appeal No. 1996-2336
Application 08/270,345
requirement.
4
U.S.C. § 102(b) as being anticipated by Graiver. The claims
stand rejected under 35 U.S.C. § 103 as follows: claims 2 and
3 over Graiver, claims 2 and 12-19 over Graiver in view of
Xinghua, and claims 1-3 and 6-19 over Graiver in view of
Xinghua and Findlay.
OPINION
The parent of the present application previously was
before the board (appeal no. 93-2722; serial no. 07/532,471).
In that case, the board affirmed the rejections of claims 1-3
and 6-12 under 35 U.S.C. § 102(b) as being anticipated by
Graiver, claims 2 and 3 under 35 U.S.C. § 103 as being obvious
over Graiver, and claim 2 under 35 U.S.C. § 103 as being
obvious over Graiver in view of Xinghua, and reversed the
rejection of claims 1-3 and 6-12 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
The claims in the present case differ from those in the
parent case in that both independent claims, i.e., claims 1
Appeal No. 1996-2336
Application 08/270,345
5
and 12, now require that “said cyclicsiloxane or mixture of
cyclic siloxanes have not been mechanically pre-emulsified
prior to addition into the mixture (I)”. Also, dependent
claims 13-19, which depend directly or indirectly from claim
12, have been added.
We have carefully considered all of the arguments
advanced by appellant and the examiner and do not find
reversible error in the examiner’s rejections under 35 U.S.C.
§§ 102(b) and 103. Accordingly, we affirm these rejections.
However, because our
rationale differs substantially from that of the examiner, we
denominate the affirmances as involving new grounds of
rejection under 37 CFR § 1.196(b). We do not sustain the
rejections under 35 U.S.C. § 112, first paragraph.
Appellants state that with respect to the prior art
rejections, claims 2 and 3 stand or fall separately and the
claims in the following groups stand or fall together:
1) claims 1 and 6-11, and 2) claims 12-19 (brief, pages 5-6).
Therefore, in our discussion of the prior art rejections, we
Appeal No. 1996-2336
Application 08/270,345
6
limit our discussion to claims 2 and 3 and one claim within
each of the other groups, i.e., claims 1 and 12. See In re
Ochiai, 71 F.3d 1565, 1566 n.2, 37 USPQ2d 1127, 1129 n.2 (Fed.
Cir. 1995); 37 CFR § 1.192(c)(7)(1995).
Rejection of claims 1-3 and 6-19 under
35 U.S.C. § 112, first paragraph
A specification complies with the 35 U.S.C. § 112, first
paragraph, enablement requirement if it allows those of
ordinary skill in the art to make and use the claimed
invention without undue experimentation. See In re Wright,
999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993);
Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d
1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984).
The examiner argues that appellant’s claimed invention is
not enabled because stirring, which is used in the examples in
the specification, is included within the definition of
mechanical pre-emulsifying which is excluded by claims 1 and
12 (answer, page 4).
The relevant question is not whether mechanical pre-
emulsification and appellant’s mixing can both involve
stirring but, rather, whether appellant’s specification would
Appeal No. 1996-2336
Application 08/270,345
7
have enabled one of ordinary skill in the art to carry out the
claimed method without undue experimentation. In appellant’s
examples the components of the mixture are combined and then
emulsified. There is no indication that the cyclicsiloxanes
are mechanically pre-emulsified prior to being combined with
any of the other components. The examiner has not explained,
and it is not apparent, why these examples, together with the
other disclosure in the specification, would not have enabled
one of ordinary skill in the art to carry out the claimed
methods without undue experimentation.
A specification complies with the 35 U.S.C. § 112, first
paragraph, written description requirement if it conveys with
reasonable clarity to those skilled in the art that, as of the
filing date sought, the inventor was in possession of the
invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); In re Kaslow,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983); In
re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA
1978); In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96
(CCPA 1976).
Appeal No. 1996-2336
Application 08/270,345
8
The examiner argues that the term “unemulsified” has no
support in the original specification (answer, pages 4-5).
The preamble of appellant’s claim 12 requires that the
emulsion is “free of unemulsified silicone oil”. Support for
this limitation is found in the specification at page 9, lines
4-7. Consequently, appellant’s specification indicates that
appellant was in possession of a method which produces an
emulsion which is free of unemulsified silicone oil.
For the above reasons, we reverse the rejections under 35
U.S.C. § 112, first paragraph.
Rejection of claims 1 and 12 under
35 U.S.C. § 102(b) over Graiver
Graiver’s examples 9 and 10 disclose methods wherein a
precursor emulsion made of a cyclicsiloxane, a nonionic
surfactant and water is added to a mixture of
dodecylbenzenesulfonic acid and water. As indicated in
appellant’s specification (page 13, lines 7-10),
dodecylbenzenesulfonic acid can serve as both an ionic
surfactant and a catalyst.
Appellant argues that Graiver mechanically pre-emulsifies
Appeal No. 1996-2336
Application 08/270,345
9
the cyclicsiloxanes prior to their addition into the mixture
(brief, page 9).
Appellant’s independent claims require that the
cyclicsiloxanes are not mechanically pre-emulsified prior to
addition into mixture (I). This mixture includes the
cyclicsiloxane, nonionic surfactant, ionic surfactant, water
and catalyst components. When Graiver forms his precursor
emulsion in examples 9 and 10, he combines the cyclicsiloxane
with the nonionic surfactant and water, which are components
of appellant’s mixture (I). Because the nonionic surfactant
and water with which the cyclicsiloxane is mixed are
components of appellant’s mixture (I), Graiver’s precursor
emulsion formation takes place after, rather than before, the
cyclicsiloxane is added into the mixture. Consequently, the
method in Graiver’s examples 9 and 10 is not excluded by
appellant’s claims.
Appellant’s claim 12 requires that a desired particle
Appeal No. 1996-2336
Application 08/270,345
10
size is produced. Such a desired particle size can be any
desired size including that of the particles made in Graiver’s
examples 9 and 10.
For the above reasons, we affirm the rejection under 35
U.S.C. § 102(b).
Rejection of claims 2 and 3 under
35 U.S.C. § 103 over Graiver
In Graiver’s examples 9 and 10, the cyclicsiloxane,
nonionic surfactant and water are added to
dodecylbenzenesulfonic acid and water while mixing at 85EC.
In view of Graiver’s teaching that temperature affects the
rate of polymerization (page 6, lines 44-49), one of ordinary
skill in the art would have been motivated to heat both the
dodecylbenzenesulfonic acid catalyst-containing component and
the cyclicsiloxane-containing component to the mixing
temperature to provide better control over the temperature of
the polymerization. In light of Graiver’s disclosure that the
nonionic surfactant, with which the cyclicsiloxane is mixed
prior to being added to the catalyst, does not catalyze the
polymerization (page 6, lines 14-15), such a person would have
had a reasonable expectation of success in obtaining the
Appeal No. 1996-2336
Application 08/270,345
11
desired polymerization control even though the cyclicsiloxane-
containing component is preheated. Consequently, heating the
components as recited in appellant’s claims 2 and 3 would have
been prima facie obvious to one of ordinary skill in the art
over Graiver. See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991); In re O’Farrell, 853 F.2d 894,
902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988); In re Longi, 759
F.2d 887, 892-93, 225 USPQ 645, 648 (Fed. Cir. 1985).
In response to the rejection of claims 2 and 3, appellant
relies upon the same argument made with respect to the
rejection of claim 1 from which these claims depend, i.e.,
that Graiver requires pre-emulsifying the cyclicsiloxane
(brief, page 11). This argument is not persuasive as
explained above. Appellant also argues that Graiver teaches
away from the method in appellant’s claim 2 because the
catalyst concentration in that claim is relatively high when
the catalyst is added to the cyclicsiloxanes. See id. We are
not convinced by this argument because appellant’s claim 2
does not require that the catalyst concentration is high. The
claim is open to diluting the catalyst before it is added to
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Application 08/270,345
12
the mixture.
For the above reasons, we affirm the rejection of claims
2 and 3 under 35 U.S.C. § 103 over Graiver.
Rejections under 35 U.S.C. § 103 of claims 2 and 12
over Graiver and Xinghua and of claims 1-3 and 12
over Graiver in view of Xinghua and Findlay
For the reasons given above, the methods recited in
claims 1-3 and 12 are unpatentable over Graiver. A discussion
of Xinghua and Findlay is not necessary to our decision.
DECISION
The rejections under 35 U.S.C. § 112, first paragraph, of
claims 1-3 and 6-19 based on the enablement requirement and
claims 12-19 based on the written description requirement are
reversed. The rejections of claims 1 and 6-13 under 35 U.S.C.
§ 102(b) over Graiver and the rejections under 35 U.S.C. § 103
of claims 2 and 3 over Graiver, claims 2 and 12-19 over
Graiver in view of Xinghua, and claims 1-3 and 6-19 over
Graiver in view of Xinghua and Findlay, are affirmed. The
affirmances are denominated as involving new grounds of
rejection under 37 CFR § 1.196(b).
Appeal No. 1996-2336
Application 08/270,345
13
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED, 37 CFR § 1.196(b)
MARY F. DOWNEY )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 1996-2336
Application 08/270,345
14
TJO/PGG
Patent Department
Mail CO1232
Dow Corning Corporation
Midland, MI 48686-0994