Ex parte Gybin et al.

Board of Patent Appeals and Interferences

Jun 23, 1999

08028420 (B.P.A.I. Jun. 23, 1999)

Application for patent filed March 09, 1993. 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journal and (2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALEXANDER S. GYBIN and
LAWRENCE C. VAN ISEGHEM
____________
Appeal No. 95-4723
Application No. 08/028,4201
____________
ON BRIEF
____________
Before GARRIS, WARREN, and SPIEGEL, Administrative Patent Judges.
SPIEGEL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims
23 through 38, which are all of the claims pending in this application.
We REVERSE.
Appeal No. 95-4723
Application No. 08/028,420
Page 2
Appellants’ invention relates to a method of preparing photosensitive polymers comprising a
polymeric backbone and a quaternary heterocyclic pendant group. The pendant group may be
prepared by a condensation step, i.e., reacting an aldehyde substituted aromatic compound with an
alkyl substituted nitrogen-containing heterocyclic compound to form a first reaction product having
ethylenic unsaturation and a quaternary or quaternizable nitrogen atom, followed by quaternization step,
i.e., reacting the first reaction product with a substituted or unsubstituted alkyl, aralkyl, or hetero
reactive compound having one or more terminal groups selected from the group consisting of halogen,
ether and aldehyde to form a second reaction product having a quaternary nitrogen atom (claim 23).
Alternatively, the quaternization and condensation steps may be reversed in preparing the pendant
group, i.e., a substituted or unsubstituted alkyl, aralkyl, or hetero reactive compound having one or
more terminal groups selected from the group consisting of halogen, ether, and aldehyde is reacted with
an alkyl substituted nitrogen-containing heterocyclic compound to form a first reaction product having a
quaternary nitrogen atom, followed by reacting the first reaction product with an aldehyde substituted
aromatic compound to form a second reaction product having ethylenic unsaturation and a quaternary
nitrogen atom (claim 31). In either case, about 0.1 to 20 mol % of the second reaction product or
pendant group is then grafted onto the polymeric backbone through the residue of the reactive
compound used in the quaternization step. (See specification, pages 10-11 and 17-18.) Claim 23 is
illustrative and reads as follows:
Appeal No. 95-4723
Application No. 08/028,420
Page 3
23. A method for preparing photosensitive polymers comprising the steps of:
(a) reacting an aldehyde substituted aromatic compound and an alkyl
substituted nitrogen-containing heterocyclic compound in the presence of a catalyst to
form a first reaction product having ethylenic unsaturation and a quaternary or
quaternizable nitrogen atom;
(b) reacting the first reaction product with a substituted or unsubstituted alkyl,
aralkyl, or hetero reactive compound having one or more terminal groups selected from
the group consisting of halogen, ether and aldehyde to form a second reaction product
having a quaternary nitrogen atom;
(c) grafting onto a polymeric backbone, resulting from the polymerization of
substituted vinyl monomers, olefins or acetylenes, about 0.1 to 20 mol-% (based on the
available reactive sites on the polymeric backbone) of the second reaction product
through the residue of the reactive compound of step (b) to form a photopolymer.
The prior art reference of record relied upon by the examiner in rejecting the appealed claims is:
Ichimura et al. (Ichimura), “Preparation and Characteristics of Photocrosslinkable Poly(vinyl Alcohol),”
Journal of Polymer Science: Polymer Chemistry Edition, Vol. 20, pages 1419-1432 (1982).
All of the claims on appeal stand rejected under 35 U.S.C. § 103 as being unpatentable over
Ichimura. According to the examiner, “it would have been obvious to one of ordinary skill to make but
a modest adaptation of the reference process, such as choice of the compound containing a terminal
group, and thereby obtain the claimed invention” (answer, page 5).
On consideration of the record, including: (1) the instant specification, including all the claims on
appeal, (2) appellants’ brief (paper no. 11, filed July 18, 1994), (3) the examiner’s answer (paper no.
12, mailed August 2, 1994), and (4) the above-cited prior art, we reverse the prior art rejection.
Appeal No. 95-4723
Application No. 08/028,420
Appellants erroneously referred to claims 22-38 in their statement of issues and grouping of claims (brief,2
page 2), as noted by the examiner (answer, page 2).
Page 4
Appellants state claims 23 through 38 stand or fall together (brief, page 3). We therefore limit2
our discussion to claim 23. 37 C.F.R. § 192(c)(5)(1994).
OPINION
To establish a prima facie case of obviousness, three basic criteria must be met. First, there
must be some suggestion or motivation, either in the references themselves or in the knowledge
generally available to one of ordinary skill in the art, to modify the reference or to combine reference
teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference
(or references when combined) must teach or suggest all the claim limitations. The teaching or
suggestion to make the claimed combination and the reasonable expectation of success must both be
found in the prior art, and not based on applicant's disclosure. In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991).
Here, claim 23, step (c) requires grafting the pendant group, i.e., the second reaction product
formed in steps (a) and (b), onto a polymeric backbone “through the residue of the reactive compound
of step (b).” The examiner has not pointed out, and we do not find, where Ichimura discloses or
suggests this limitation of grafting the second reaction product onto a polymeric backbone “through the
residue of the reactive compound of step b.” Accordingly, we conclude that the examiner has not
established a prima facie case of obviousness.
Appeal No. 95-4723
Application No. 08/028,420
Page 5
The rejection is reversed.
OTHER MATTERS
Appellants should consider whether the phrase “or quaternizable” should be deleted from claim
31, line 12 since claim 31, step (a) requires the presence of a “quaternary” nitrogen atom.
CONCLUSION
The examiner’s decision to reject claims 23 through 38 under 35 U.S.C. § 103 as being
unpatentable over Ichimura is reversed.
Appeal No. 95-4723
Application No. 08/028,420
Page 6
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 C.F.R. § 1.136(a).
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
CAS/dal
Appeal No. 95-4723
Application No. 08/028,420
Page 7
Ronald A. Daignault
MERCHANT, GOULD, SMITH, EDELL,
WELTER & SCHMIDT, PA
3100 Norwest Center
90 South Seventh Street
Minneapolis, MN 55402-4131