Ex parte GRIEVES et al.

Board of Patent Appeals and Interferences

Jul 15, 1998

08018356 (B.P.A.I. Jul. 15, 1998)

Application for patent filed February 16, 1993. According to1
appellants, the application is a continuation of Application 07/619,021, filed
November 28, 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for publication in a law journal and (2) is not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RICHARD GRIEVES
and KIMLEIGH G.M. PRATLEY
_____________
Appeal No. 95-2204
Application 08/018,3561
______________
ON BRIEF
_______________
Before WINTERS, GARRIS and OWENS, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claim 32 which is the sole claim remaining in the application.
The subject matter on appeal relates to a method of bonding
plastic substrates with cyanoacrylic adhesive which comprises
treating at least one of the substrates with a tetramethyl-1,3
Appeal No. 95-2204
Application 08/018,356
2
butane diamine primer. Further details of this appealed subject
matter are set forth in the claim, a copy of which taken from the
appellants’ Brief is appended to this decision.
The references relied upon by the examiner as evidence of
obviousness are:
Reynolds et al. (Reynolds) 2,716,134 Aug. 23, 1955
von Bramer 3,260,637 Jul. 12, 1966
Yonezawa et al. (Yonezawa) 43-5004 Feb. 23, 1968
(Japanese Patent)
Claim 32 stands rejected under 35 USC § 103 as being
unpatentable over von Bramer in view of Reynolds alone or in
combination with Yonezawa.
We refer to the Brief and to the Answer for a complete
exposition of the opposing viewpoints expressed by the appellants
and the examiner concerning the above noted rejections.
OPINION
For the reasons which follow, we cannot sustain either of
these rejections.
von Bramer discloses a method of bonding substrates
generally including plastic substrates with a cyanoacrylic
adhesive which includes the step of treating the substrates with
Appeal No. 95-2204
Application 08/018,356
3
a promoter or catalyst solution which contains one or more
certain types of organic amines. One subclass of these organic
amines comprises diamines. Of the diamines envisioned by
patentee, the one structurally closest to the here claimed
diamine contains an ethane substituent rather than the
appellants’ 1,3-butane substituent as the diamine bridging group
(e.g., see lines 46-60 in column 3).
Neither Reynolds nor Yonezawa provides any suggestion for
replacing the ethane substituent of von Bramer’s diamine primers
with a 1,3-butane substituent based upon a reasonable expectation
of successfully achieving the desired primer function. This is
because Reynolds discloses diamines of the type under
consideration but not in the context of performing a primer
function (e.g., patentee teaches his diamines are useful as
intermediates or insecticides). On the other hand, Yonezawa
discloses a primer function relating to certain amines generally
but not to any kind of diamines specifically.
The examiner seems to believe that the diamines of von
Bramer and the diamines claimed by the appellants possess a
homologous relationship of such a nature that the former would
have suggested the latter. It is well settled that a prima facie
case of obviousness may be based upon a homologous relationship,
Appeal No. 95-2204
Application 08/018,356
4
that is to say, a similarity in chemical structure and function
between a prior art compound and a claimed compound, whereby one
skilled in the art would have been motivated to make a claimed
compound in the expectation that compounds similar in structure
will have similar properties. In re Payne, 606 F.2d 303, 313,
203 USPQ 245, 254 (CCPA 1979). In essence, therefore, the
examiner would argue that the diamines of claim 32 are so similar
in structure to those of von Bramer that the artisan would have
been motivated to make and use such claimed diamines as primers
expecting them to possess the primer function exhibited by
patentee’s diamines.
On the record before us, however, the examiner has advanced
no support for the proposition that appellants’ claimed and von
Bramer’s disclosed diamines and in particular the ethane versus
1,3-butane substituents thereof are sufficiently similar in
chemical structure whereby the artisan would have expected the
1,3-butane-containing diamine to possess the primer
characteristics of patentee’s ethane-containing diamine.
Moreover, our own research in this matter has failed to reveal
any support for such a proposition. Under these circumstances,
any structural similarity that may exist between the respective
diamines of claim 32 and of von Bramer is inadequate to establish
Appeal No. 95-2204
Application 08/018,356
5
a prima facie case of obviousness. In re Jones, 958 F.2d 347,
350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992).
For the above stated reasons, we cannot sustain the
examiner’s § 103 rejections of claim 32 as being unpatentable
over von Bramer in view of Reynolds or as being unpatentable over
von Bramer in view of Reynolds and Yonezawa.
The decision of the examiner is reversed.
REVERSED
)
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-2204
Application 08/018,356
6
Timothy J. Keefer
LADAS & PARRY
224 South Michigan Avenue
Chicago, IL 60604
Appeal No. 95-2204
Application 08/018,356
7
APPENDIX
Appeal No. 95-2204
Application 08/018,356
8
Appeal No. 95-2204
Application 08/018,356
9