Ex parte Hayes

Board of Patent Appeals and Interferences

Feb 12, 1999

07976846 (B.P.A.I. Feb. 12, 1999)

Application for patent filed November 16, 1992.1
According to appellant, this application is a continuation-in-
part of Application No. 07/722,456, filed June 27, 1991, now
abandoned.
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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journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte RICHARD A. HAYES
________________
Appeal No. 95-0311
Application No. 07/976,8461
________________
ON BRIEF
________________
Before WINTERS, SOFOCLEOUS and GRON, Administrative Patent
Judges.
SOFOCLEOUS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
11, all the claims remaining in the application.
The subject matter on appeal relates to a composition
consisting essentially of a polyacetal and an amine light
Appeal No. 95-0311
Application No. 07/976,846
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stabilizer. Appellant (see the Reply Brief (Paper No. 15))
urges
Appeal No. 95-0311
Application No. 07/976,846
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that claims 1, 3/1, 4/1, 5/1, 6, 8, 10/1 and 11/1 and claims
2,
3/2, 4/2, 5/2, 7, 9, 10/2 and 11/2 stand or fall together as
grouped. Claims 1 and 2 are sufficiently representative of
the claims on appeal and read as follows:
1. A composition consisting essentially of (a) 95.00 to
99.95 weight percent of a polyacetal and (b) 0.05 to 5.00
weight percent of an acetylated hindered amine light
stabilizer having the
following Structure
(I):
wherein R is C -C alkyl and the weight percents are based1 40
upon the total of components (a) and (b) only.
2. A composition
consisting essentially of
(a) 95.00 to 99.95 weight
percent of a polyacetal and
(b) 0.05 to 5.00 weight
percent of an acetylated
hindered amine light
stabilizer having the following Structure (II):
Appeal No. 95-0311
Application No. 07/976,846
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The references relied upon by the examiner are:
Murayama et al. (Murayama) 4,241,208 Dec. 23, 1980
Ikenaga et al. (Ikenaga) 4,730,015 Mar. 8, 1989
Karrer et al. (Karrer) 2 074 564 Nov. 4, 1981
(Great Britain patent application)
In the final rejection, mailed April 16, 1993, claims 1
to 4 and 6 to 9 were rejected under 35 U.S.C. § 102(b) as
being anticipated by or, in the alternative, under 35 U.S.C. §
103 as being obvious over Murayama, and claims 1 to 11 were
rejected under 35 U.S.C. § 103 as being unpatentable over
Murayama in view of Ikenaga and appellant's admission on page
5, lines 20 to 26 of the specification. This appeal ensued
and appellant filed his Brief (Paper No. 8). In response to
the Brief, the Examiner’s Answer (Paper No. 9) entered new
grounds of rejection, including an objection to dependent
claims 3 to 5, 10, and 11, which multiply depend from claims 1
and 2. In response to the Answer, appellant filed a Reply
Brief, including an amendment to the claims (Paper No. 10).
Thereafter, the examiner forwarded the application to the
Board. On July 16, 1998, the application was remanded to the
examiner for further action. As a result of the remand, the
Appeal No. 95-0311
Application No. 07/976,846
We have restated each rejection to set forth the2
multiply dependent claims as grouped by the Examiner and
Appellant. Compare page 2 of the Supplemental Answer with
page 1 of the Reply Brief.
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examiner notified appellant that the amendment would not be
entered because the amendment was not submitted in a separate
paper and that if the amendment were submitted in a separate
paper, the amendment would be entered and the objection to the
claims would be withdrawn. On September 17, 1996, appellant
filed an amendment (Paper No. 14) and a Reply Brief (Paper No.
15). Upon receipt of the Reply Brief, the examiner issued a
Supplemental Examiner’s Answer (Paper No. 16), superseding the
original Answer. The rejections before us are as follows:2
Claims 1, 3/1, 4/1, 5/1, 6, 8, 10/1 and 11/1 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by or,
in the alternative, under 35 U.S.C. § 103 as being obvious
over Murayama.
Claims 2, 3/2, 4/2, 5/2, 7, 9, 10/2 and 11/2 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Murayama in view of Karrer, Ikenaga and appellant's admission.
After carefully considering appellant's arguments
presented in the Brief (Paper No. 8) and the Reply Brief
Appeal No. 95-0311
Application No. 07/976,846
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(Paper No. 15) and the examiner's arguments in the
Supplemental Examiner's Answer (Paper No. 16), we find that we
cannot sustain the rejection of claims 2, 3/2, 4/2, 5/2, 7, 9,
10/2 and 11/2, but we will sustain the rejection of claims 1,
3/1, 4/1, 5/1, 6, 8, 10/1 and 11/1 as being anticipated by or,
in the alternative, as being obvious in view of Murayama. We
add the following for emphasis.
With respect to the rejection of claims 1, 3/1, 4/1, 5/1,
6, 8, 10/1 and 11/1 on the ground of anticipation, Murayama
describes within the meaning of 35 U.S.C. § 102(b) the
combination of polyacetals with an effective stabilizing
amount of a piperidine derivative having formula (I). See
column 2, line 13, to column 2, line 41. A preferred
piperidine derivative is 170, "1,3,8-triaza-3-octyl-8-acetyl-
7,7,9,9,-tetramethyl-spiro[4,5]decane-2,4-dione." See column
16, lines 21-22.
With respect to the alternative rejection of claims 1,
3/1, 4/1, 5/1, 6, 8, 10/1 and 11/1 under 35 U.S.C. § 103, we
find no error in the examiner's determination that the claims
would have been prima facie obvious over Murayama. Murayama,
column 1, lines 15 to 25; column 2, lines 21 to 41; and column
Appeal No. 95-0311
Application No. 07/976,846
Table II compares the compounds embraced by claim 2 with3
those of the prior art.
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7, lines 32 to 37; teaches that certain piperidine derivatives
can stabilize synthetic polymers, including polyacetals,
against photo-and thermal-deterioration. At column 10, lines
17 to 30, Murayama describes a small genus of preferred
compounds and exemplifies numerous compounds within this
genus, including compound 170, a species within the scope of
the genus recited in claim 1. At column 24, lines 38 to 53,
Murayama teaches that the compounds can be incorporated into
synthetic resins in an amount ranging from 0.01 to 5.0% by
weight, and example 25, appearing at column 39, lines 23 to
30, teaches the incorporation of similar compounds into
polyacetal. A prima facie case of obviousness having been
made, the burden shifts to appellant to rebut the case.
Appellant relies upon a showing which is set forth in Table
I on page 8 of the Brief. With respect to this showing, the3
examiner states on page 6 of his Supplemental Answer (Paper No.
16):
Appellant’s comparative showings have been fully
considered, but have not been found persuasive to
overcome the rejection in that they are not considered
to be a back-to-back comparison based upon the closest
Appeal No. 95-0311
Application No. 07/976,846
This compound differs in one respect from compound 1704
of Murayama in that in the 3 position of Murayama’s compound
has octyl whereas appellant’s compound has dodecyl.
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prior art composition. Again see example 25, test
compound 39 of the patent.
We take this to mean that the comparisons are not side by side
and do not consider the closest prior art compounds.
Appellant’s Table I measures thermal stabilization of
various prior art compounds in polyacetal as compared to
appellant’s compound, 0.30 acetylated 1A, which is 1,3,8-
triaza-3-dodecyl-8-acetal -7,7,9,9-tetramethyl-spiro
[4,5]decane-2,4-dione. Appellant has tabulated his results4
as the time necessary to achieve a 3.0 wt% CH O loss at 259EC. 2
On the other hand, Murayama, example 25, appearing at column
39, lines 21 to 45, in particular Table 9, tabulates his
results with respect to his compounds as the percent reduction
in weight at 222EC after 30 minutes. Since appellant has not
tabulated his results in the same manner as Murayama’s Table
9, the results are not side by side comparisons from which we
can ascertain whether appellant’s representative compound
exhibits any unexpected results over any of the compounds
listed in example 25, which compounds would be expected to
Appeal No. 95-0311
Application No. 07/976,846
We note that R in claim 2 is not defined. It is evident5
from the specification, page 2, line 17, and the brief that
the definition of R is the same as that in claim 1. The
informality can be corrected, when the application is returned
to the examiner.
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perform in a similar manner with Murayama’s compound 170.
Certainly, appellant could have, and should have, tabulated
his results in the same manner as Murayama so that it could be
ascertained whether any unobvious results have been obtained.
Furthermore, appellant could have, and should have, compared a
representative claimed compound with the closest prior art
compounds illustrated in example 25 of Murayama.
Consequently, appellant has not sustained his burden of proof
to rebut the prima facie case of obviousness.
Adverting to the rejection of claims 2 , 3/2, 4/2, 5/2, 7,5
9, 10/2 and 11/2, we cannot sustain this rejection because the
combined references (Murayama, Karrer, and Ikenaga) do not
show an acetylated hindered amine light stabilizer as defined
by formula II of claim 2. Although appellant acknowledges on
page 5, lines 6 to 8, of the specification that a hindered
amine light stabilizer, where R is C , is commercially12
available, the examiner has not explained why it would have
been obvious to substitute this particular hindered amine
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Application No. 07/976,846
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light stabilizer for any of the stabilizers disclosed in the
combined references.
For the foregoing reasons, the rejection of claims 1,
3/1, 4/1, 5/1, 6, 8, 10/1 and 11/1 is affirmed and the
rejection of claims 2, 3/2, 4/2, 5/2, 7, 9, 10/2 and 11/2 is
reversed.
No time period for taking any subsequent action in
connec-tion with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
MICHAEL SOFOCLEOUS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TEDDY S. GRON )
Administrative Patent Judge )
clm
Appeal No. 95-0311
Application No. 07/976,846
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Lisa J. Moyles
E. I. du Pont de Nemours & Co.
Legal Patents
Wilmington, DE 19898