Ex parte Honeycutt

Board of Patent Appeals and Interferences

Jul 16, 1999

08299760 (B.P.A.I. Jul. 16, 1999)

Application for patent filed September 1, 1994. 1
According to appellants, this application is a continuation of
Application 08/055,083, filed April 29, 1993, now abandoned;
which is a continuation-in-part of Application 07/881,685,
filed May 12, 1992, now U.S. Patent No. 5,207,837; which is a
continuation-in-part of Application 07/683,290, filed April
10, 1991, 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(2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TRAVIS W. HONEYCUTT
__________
Appeal No. 96-2675
Application 08/299,7601
__________
ON BRIEF
__________
Before KIMLIN, WALTZ, and LIEBERMAN, Administrative Patent
Judges.
LIEBERMAN, Administrative Patent Judge.
Appeal No. 96-2675
Application No. 08/299,760
Claim 25 was canceled in an amendment dated March 30,2
1994, paper No 6. Claims 31 through 59 were withdrawn from
further consideration by the examiner as directed to a non-
elected invention in accordance with 37 CFR § 1.142(b). See
the Final Rejection dated December 8, 1994, paper No. 12.
2
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 of the examiner’s
refusal to allow claims 1 through 24 and 26 through 30, which
are all of the claims on appeal.2
THE INVENTION
The invention is directed to a method of disposing
garments and other articles prepared from polyvinyl alcohol
having specific properties by dissolving the articles in warm
water at temperatures above about 37EC, the body temperature.
The polyvinyl alcohol has a degree of polymerization between
approximately 700 and 1500, a moisture content of
approximately 1.5% to 15% by weight, and contains 0.1% to 5.0%
by weight of an anti-blocking agent. It is produced from at
least approximately 98% saponified polyvinyl acetate. The
process further requires that the moisture content of the
polyvinyl alcohol polymer be reduced prior to melt extrusion
and be increased subsequent to melt extrusion.
Appeal No. 96-2675
Application No. 08/299,760
3
THE CLAIMS
Claim 1 is illustrative of appellant’s invention and is
reproduced below.
1. A method of disposing of garments, linens, drapes,
towels and other useful articles after use comprising
providing said garment, linens, drapes, towels and other
useful articles as a stand alone thermoplastic polymer film or
fabric, which may include fiber, of polyvinyl alcohol which is
water soluble at temperatures above approximately 37EC and
insoluble at temperatures below approximately 37EC and
subjecting said articles after use to an aqueous bath to
substantially dissolve said articles whereupon said dissolved
polymer is subjected to disposal, said polyvinyl alcohol
polymer being produced by reducing its moisture content prior
to melt extrusion and subsequent thereto, increasing its
moisture content to a value between approximately 1.5 to 15.0%
(wt.), said polyvinyl alcohol having a degree of
polymerization between approximately 700 to 1500 being
produced from at least approximately 98% saponified polyvinyl
acetate and containing between approximately 0.1 to 5.0% (wt.)
of an anti-blocking agent.
THE REFERENCES OF RECORD
As evidence of obviousness and double patenting, the
examiner relies upon the following references.
Honeycutt 5,207,837 May 4,
1993
(Application No. 07/643,615, filed Apr. 10, 1991)
Takigawa et al. 1,187,690 Apr. 15, 1970
(Takigawa) (Great Britain)
Appeal No. 96-2675
Application No. 08/299,760
We refer in our opinion to the translation of Naude-3
Filonniere of record prepared by Schreiber Translations for
the U. S. Patent and Trademark Office in October 1993.
4
Naude-Filonniere et al. 0 107 576 May 2, 19843
(Naude-Filonniere)
THE REJECTIONS
Claims 1 through 24 and 26 through 30 stand rejected
under 35 U.S.C. § 112, second paragraph, as being indefinite
for failing to particularly point out and distinctly claim the
subject matter which applicant regards as his invention.
Claims 1 through 24 and 26 through 30 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Takigawa in
combination with Naude-Filonniere.
Claims 1 through 24 and 26 through 30 stand rejected
under the judicially created doctrine of obviousness-type
double patenting as being unpatentable over claims 1 through
30 of U.S. Patent No. 5,207,837 in view of Takigawa in
combination with Naude-Filonniere.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejections are not well
Appeal No. 96-2675
Application No. 08/299,760
5
founded for essentially reasons expressed by appellant in his
Brief, and we add the following primarily for emphasis.
Accordingly, we will not sustain the rejections.
The Rejection under 35 U.S.C. § 103
Our view of the claimed subject matter is that it is
directed to two essential limitations which are not met by the
references relied upon by the examiner. The first is directed
to a requirement that subsequent to the melt extrusion the
moisture content of the polyvinyl alcohol be increased. The
limitation of adding moisture has not been directly addressed
by the examiner.
The examiner obliquely argues that appellant’s argument
directed to increasing the moisture content of the film after
melt extrusion is unpersuasive because Takigawa discloses that
any polyvinyl alcohol resin meeting specific criteria can be
used, no matter how it is prepared. See Takigawa, page 2,
lines 16-20. The issue however, is not how polyvinyl alcohol
is prepared, even though the claim refers to a “polyvinyl
alcohol polymer being produced by” increasing its moisture
Appeal No. 96-2675
Application No. 08/299,760
6
content subsequent to melt extrusion. It is how polyvinyl
alcohol is treated after melt extrusion of the previously
prepared polymer. We find that Takigawa is directed to any
polyvinyl alcohol polymer having a polymerization degree of
700 to 1500 and a hydrolysis degree of at least 97%. We
further find no disclosure or suggestion in Takigawa for the
addition of moisture subsequent to melt extrusion.
The second essential limitation at issue is the presence
of “0.1 to 5.0% (wt.) of an anti-blocking agent.” The
examiner relies upon the disclosure in Naude-Filonniere for
its disclosure of an anti-blocking agent. We have carefully
reviewed the Naude-Filonniere reference in light of the
examiner’s arguments presented in the Answer (pages 4-5). On
the record before us, we conclude that one of ordinary skill
in the art would not go to Naude-Filonniere for the addition
of an anti-blocking agent to the composition of Takigawa. We
find that Naude-Filonniere is directed to a polyvinyl alcohol
with delayed dissolution. We find that Naude-Filonniere
buries its polyvinyl alcohol films together with its content
after use as opposed to the requirement of the claimed subject
matter of dissolving the polyvinyl alcohol polymer in an
Appeal No. 96-2675
Application No. 08/299,760
7
aqueous bath. We further find that the polyvinyl alcohol film
of Naude-Filonniere is prepared from a process substantially
different from that used by Takigawa. See Takigawa, page 1,
lines 23-61.
Indeed, Takigawa recognizes the difficulty of blocking
using the extrusion processes of Naude-Filonniere. See page
1, lines 55-61. We find that patentee solves the blocking
problem by reducing the moisture content to very low levels,
and controlling the die temperature. We find the polyvinyl
alcohol film of Takigawa does not exhibit any tendency to
block either during or after manufacture. See page 2, lines
5-12. Accordingly, we conclude that there is no reason why
one having ordinary skill in the art would have added a
blocking agent to the polyvinyl alcohol composition of
Takigawa.
Based upon the above analysis, we have determined that
the examiner’s legal conclusion of obviousness is not
supported by the facts. “Where the legal conclusion [of
obviousness] is not supported by the facts it cannot stand.”
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967).
Appeal No. 96-2675
Application No. 08/299,760
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The Double Patenting Rejection
All proper double patenting rejections rest on the fact
that a patent has been issued and a later issuance of a second
patent will continue protection beyond the date of expiration
of the first patent of the very same invention claimed therein
or of a mere variation of that invention which would have been
obvious to those of ordinary skill in the relevant art. See
In re Kaplan, 789 F.2d 1574, 1579-80, 229 USPQ 678, 683 (Fed.
Cir. 1986).
Our analysis of the examiner's rejection of claims 1
through 24 and 26 through 30 under the doctrine of judicially
created double patenting parallels that for a § 103 rejection.
While the double patenting rejection is analogous to a failure
to meet the non-obviousness requirement of 35 U.S.C. § 103,
that section is not itself involved in double patenting
rejections because the patent principally underlying the
rejection is not usually prior art. In re Braat, 937 F.2d
589, 592-593, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991); In re
Longi, 759 F.2d 887, 892-93, 225 USPQ 645, 648 (Fed. Cir.
1985); In re Braithwaite, 379 F.2d 594, 600, n. 4, 154 USPQ
29, 34, n. 4 (CCPA 1967). When considering whether the
Appeal No. 96-2675
Application No. 08/299,760
9
claimed subject matter is an obvious variation of the
invention defined in the claims of the Honeycutt patent, the
disclosure of the patent may not be used as prior art.
Accordingly, when we focus on any variations between the
Honeycutt claims and the instant claimed subject matter, our
analysis parallels that in our decision under § 103 above and
is incorporated herein. Therefore, for the reasons set forth
above, we find that Takigawa fails to disclose or suggest the
addition of moisture to the polyvinyl alcohol following melt
extrusion. Similarly, for the reasons set forth above, we
further find insufficient reasons for the addition of a
blocking agent disclosed by Naude-Filonniere.
Moreover, the examiner has not addressed in the Answer
the requirements in the claimed subject matter for, “melt
extrusion” and the further requirement for, “reducing its
moisture content prior to melt extrusion.” Based on the above
considerations, we conclude that the claimed subject matter
herein is not a mere variation of the claims in Honeycutt’s
patent and would not continue protection beyond the expiration
date of the Honeycutt patent. Accordingly, the examiner’s
Appeal No. 96-2675
Application No. 08/299,760
10
finding of obviousness-type double patenting is not
sustainable.
The Rejection Under 35 U.S.C. § 112
The legal standard for definiteness under the second
paragraph of 35 U.S.C. § 112 is whether a claim reasonably
apprises those of ordinary skill in the art of its scope. In
re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed.
Cir. 1994). The first inquiry is to determine whether the
claims set out and circumscribe a particular area with a
reasonable degree of precision and particularity.
The examiner’s position is that the phrase, “other useful
articles,” is indefinite and unspecified, Answer, page 3.
However, breadth itself is not indefinite. In re Gardner, 427
F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970). The
definiteness of the language employed must be analyzed not in
a vacuum, but in light of the teachings of the particular
application. See In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971). Applying the analysis set forth above,
appellant’s specification, page 6, discloses a substantial
number of articles which fall within the scope of the phrase,
Appeal No. 96-2675
Application No. 08/299,760
11
“other useful articles.” One of ordinary skill in art reading
the claims in light of the specification would be possessed
with a reasonable degree of certainty as to the subject matter
encompassed within the claims. Accordingly, the examiner has
failed to establish with respect to the phrase, “other useful
articles,” that one of ordinary skill in the art would not be
apprised of the scope of the claims containing this phrase.
As to the rejection by the examiner of the term,
“dissolved polymer” as being without proper antecedent basis,
Answer, page 3, we agree with appellant that the term,
“thermoplastic polymer” provides sufficient antecedent basis.
We further note that the examiner has not responded to
appellant’s argument. Accordingly, we conclude that
sufficient antecedent basis for the term, “dissolved polymer,”
is present in the claimed subject matter.
Based on the above analysis, the rejection under § 112
is not sustained.
DECISION
Appeal No. 96-2675
Application No. 08/299,760
12
The rejection of claims 1 through 24 and 26 through 30
under 35 U.S.C. § 112, second paragraph, as being indefinite
for failing to particularly point out and distinctly claim the
subject matter which applicant regards as his invention is
reversed.
The rejection of claims 1 through 24 and 26 through 30
under 35 U.S.C. § 103 as being unpatentable over Takigawa in
combination with Naude-Filonniere is reversed.
Appeal No. 96-2675
Application No. 08/299,760
13
The rejection of claims 1 through 24 and 26 through 30
under the judicially created doctrine of obviousness-type
double patenting as being unpatentable over claims 1 through
30 of U.S. Patent No. 5,207,837 in view of Takigawa in
combination with Naude-Filonniere is reversed.
The decision of the examiner is reversed.
REVERSED
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
Thomas A. Waltz ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Paul Lieberman )
Administrative Patent Judge )
tdc
Appeal No. 96-2675
Application No. 08/299,760
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Mitchell A. Katz
NEEDLE & ROSENBERG, P.C.
Suite 1200, The Candler Building
127 Peachtree Street, N.E.
Atlanta, Georgia 30303-1811