Ex Parte Heung et al

Board of Patent Appeals and Interferences

Jul 13, 2001

08718653 (B.P.A.I. Jul. 13, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte LEUNG K. HEUNG and GEORGE G. WICKS
__________
Appeal No. 1998-0346
Application No. 08/718,653
__________
ON BRIEF
__________
Before GARRIS, WARREN, and WALTZ, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 20-22, 24 and 26-37 which are all of the claims remaining
in the application.
The subject matter on appeal relates to a process for making
a composition for use in storing hydrogen. Specifically, this
subject matter concerns a sol-gel method for preparing a metal
Appeal No. 1998-0346
Application No. 08/718,653
2
hydride composite wherein first and second mixtures of particular
ingredients are combined to form a sol and metal hydride
particles capable of absorbing and desorbing hydrogen made of a
La-Ni-Al alloy are mixed with the sol, whereupon the resulting
mixture is gelled and then dried to form an aerogel having the
particles uniformly dispersed therein. This appealed subject
matter is adequately illustrated by independent claim 32 which
reads as follows:
32. A sol-gel method for preparing a metal hydride
composite, said method comprising the steps of:
mixing a first alcohol and water to form a first mixture;
adjusting the pH of said first mixture;
mixing a second alcohol and an organometal to form a second
mixture;
mixing said first and second mixtures to form a sol;
mixing particles of a metal hydride with said sol to form a
third mixture, said particles being capable of absorbing and
desorbing hydrogen, said metal hydride particles being made of a
La-Ni-Al alloy;
gelling said third mixture to form a gel; and
drying said gel to form an aerogel having said particles
uniformly dispersed therein.
The references set forth below are relied upon by the
examiner in the obviousness-type double patenting rejection and
the section 103 rejection before us on this appeal:
Appeal No. 1998-0346
Application No. 08/718,653
3
Ramamurthi et al. (Ramamurthi) 5,306,555 Apr. 26, 1994
(filed Jun. 26, 1992)
Heung et al. (Heung) 5,411,928 May 2, 1995
(filed May 24, 1993)
Claims 20, 24, 26, 27, 30, 32-34, 36 and 37 stand rejected
under the judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-20 of Heung.
Additionally, claims “20-22, 24 and 36-37 [sic, 26-37] are
rejected under 35 U.S.C. § 103 as being unpatentable over
Ramamurthi” (answer, page 3).
As indicated on page 6 of the brief, the appellants have
grouped the appealed claims together in accordance with the
manner in which these claims have been grouped in the rejections
above.
OPINION
For the reasons which follow, we will sustain the examiner’s
obviousness-type double patenting rejection but not her section
103 rejection.
On this appeal, the appellants have not contested the merits
of the double patenting rejection on a technical or factual
basis. Instead, it is the appellants’ basic position that an
obviousness-type double patenting rejection is unnecessary and
inappropriate under the circumstances of this case.
Appeal No. 1998-0346
Application No. 08/718,653
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Specifically, the appellants point out that the Heung patent will
expire prior to the expiration date of any patent which may issue
from the subject application. According to the appellants,
therefore, the monopoly of the Heung patent would not be extended
by issuing a patent on their application. Further in this
regard, the appellants emphasize that a terminal disclaimer,
which the examiner would accept as obviating her obviousness-type
double patenting rejection, would not affect the expiration date
of a patent issuing from this application since this date is
prior to the Heung patent expiration date as earlier mentioned.
The appellants’ position is implicitly built upon the
proposition that the only basis for an obviousness-type double
patenting rejection and a corresponding terminal disclaimer
requirement constitutes extension of monopoly. This is
incorrect. An additional basis constitutes the potential of
harassment by multiple assignees. In re Van Ornum, 686 F.2d 937,
944-48, 214 USPQ 761, 767-70 (CCPA 1982). Also see Manual of
Patent Examining Procedure (MPEP) section 804.02 IV (July 1998).
This is why an acceptable terminal disclaimer must include a
common ownership provision pursuant to 37 CFR § 1.321(c)(3). In
Appeal No. 1998-0346
Application No. 08/718,653
1 The examiner views this argument of the appellants as
unpersuasive because the Heung patent might expire, due to
nonpayment of a maintenance fee, prior to expiration of a patent
issuing from the subject application. We will not adopt this
viewpoint because it appears to be inconsistent with the policy
of the Patent and Trademark Office; see, for example, the
language of the terminal disclaimer form on page 1400-63 at MPEP
section 1490(Rev. 1, Feb. 2000).
5
re Van Ornum, 686 F.2d at 948, 214 USPQ at 770. It follows that
the appellants’ above noted argument must be regarded as
unpersuasive.1
In light of the foregoing, we will sustain the examiner’s
obviousness-type double patent rejection of appealed claims 20,
24, 26, 27, 30, 32-34, 36 and 37 based upon the claims of the
Heung patent.
The examiner’s section 103 rejection, however, cannot be
sustained. This is because the Ramamurthi patent simply contains
no teaching or suggestion of the here claimed feature concerning
metal hydride particles capable of absorbing and desorbing
hydrogen and being made of a La-Ni-Al alloy. Apparently, the
examiner concludes that it would have been obvious for an artisan
with ordinary skill to provide the method of Ramamurthi with such
a feature. On the record before us, the examiner plainly has
Appeal No. 1998-0346
Application No. 08/718,653
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failed to carry her initial burden of establishing a prima facie
case in support of this evidentiary-unsupported obviousness
conclusion.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Charles F. Warren ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Thomas A. Waltz )
Administrative Patent Judge )
BRG:tdl
Appeal No. 1998-0346
Application No. 08/718,653
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Paul A. Gottlieb
U.S. Department of Energy
GC-62 (FORSTL) MS 6F-067
1000 Independence Avenue, S.W.
Washington, DC 20585