Ex parte Hoover

Board of Patent Appeals and Interferences

Dec 23, 1999

08346325 (B.P.A.I. Dec. 23, 1999)

Application for patent filed November 29, 1994. 1
According to appellant, this application is a continuation of
Application No. 08/108,946, filed August 18, 1993, now
abandoned; which is a continuation of Application No.
07/724,022, filed July 1, 1991, now abandoned.
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not written for publication in a law journal and (2) is not binding
precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES F. HOOVER
____________
Appeal No. 1996-4135
Application No. 08/346,3251
____________
ON BRIEF
____________
Before JOHN D. SMITH, OWENS, and KRATZ, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1996-4135 Page 2
Application No. 08/346,325
This is a decision on appeal from the examiner's refusal
to allow claims 1-3, 5, and 8-14, which are all of the claims
pending in this application.
Appeal No. 1996-4135 Page 3
Application No. 08/346,325
BACKGROUND
The appellant's invention relates to polysiloxane-
polycarbonate block copolymers and compositions containing such
polymers. An understanding of the invention can be derived
from a reading of exemplary claim 1. The claims on appeal have
been correctly reproduced in an appendix to the brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Bialous et al. (Bialous) 4,391,935 Jul.
05, 1983
Davis et al. (Davis) 5,025,074 Jun. 18,
1991
(filed Aug. 27, 1990)
European Patent 0 376 502 Jul. 04,
1990
(Okamoto)
Claims 1-3, 5, 10, 11 and 14 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Okamoto or, in the
alternative, Okamoto in view of Davis. Claims 8, 9, 12 and 13
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Okamoto in view of Bialous or, in the alternative, Okamoto in
view of Davis and Bialous.
Appeal No. 1996-4135 Page 4
Application No. 08/346,325
OPINION
We have carefully considered the respective positions
advanced by the appellant and the examiner. For the reasons
set forth below, we will not sustain any of the examiner's
stated rejections.
Okamoto discloses the preparation of polycarbonate-
polyorganosiloxane copolymers in which the polysiloxane may
include a dimethylsiloxane monomer. Okamoto teaches use of 2-
allyl phenol in the preparation of polydimethylsiloxane (PDMS)
in example 1-4, the PDMS being disclosed as useful in preparing
a polycarbonate-polysiloxane copolymer as in example 3-6 of
Okamoto.
The examiner correctly acknowledges that Okamoto does not
disclose polycarbonate-polysiloxane block copolymers having 4-
allyl phenolic links between a polysiloxane and polycarbonate
segments thereof as required by the appealed claims (answer,
pages 3-5). According to the examiner, however, it would have
been obvious to substitute 4-allyl phenol for the 2-allyl
phenol used in preparing the reactive PDMS of Okamoto and to
ultimately arrive at the herein claimed copolymer by the
subsequent use of such a modified PDMS in preparing a
Appeal No. 1996-4135 Page 5
Application No. 08/346,325
polycarbonate-polysiloxane copolymer by the method exemplified
in example 3-6 of Okamoto. In this regard, the examiner,
maintains, in effect, that such a substitution would have been
suggested by (1) the positional isomeric relationship of 2-
allyl phenol to 4-allyl phenol (answer, page 4), or (2) the
alternativeness of 2-allyl phenol and 4-allyl phenol as taught
by Davis in producing a polysiloxane-polycarbonate copolymer.
We cannot agree with either rationale for the proposed
modification. Structural similarity may provide the requisite
suggestion to modify a known compound to arrive at a new
structurally similar compound where there is a reasonable
expectation that a skilled artisan would make the new compound
so as to obtain the same properties that are desirable in the
old structurally similar compound. However, there are no per se
rules of obviousness. Here, we cannot subscribe to the
examiner's theory since the positional isomerism of one of the
multiple reactants that may be utilized in the formation of the
claimed polycarbonate-polysiloxane block copolymers with one of
the reactants that may be used in forming the prior art
copolymer clearly does not intuitively result in product
Appeal No. 1996-4135 Page 6
Application No. 08/346,325
copolymers that are necessarily so structurally similar that a
skilled artisan would have expected substantially similar
properties so as to render the use of the positional isomeric
reactant obvious. Indeed, as noted by appellant (brief, page
6), the use of the claimed 4-allyl phenol would be expected to
result in a more linear copolymer structure than the bent
structural configuration that would be associated with the
copolymer obtained by using 2-allyl phenol.
With regard to the examiner's reliance on Davis to furnish
the requisite suggestion for the examiner's proposed
modification of Okamoto, we note that Davis teaches that 2-
allyl phenol and 4-allyl phenol are two of several alternatives
for forming a chain stopper by reaction with a hydride
polydiorganosiloxane (column 1, line 38 through column 2, line
10, and column 5, lines 3-9). We do not consider the above-
noted teachings of Davis sufficient to suggest that 4-allyl
phenol would have been an obvious substitute for 2-allyl phenol
as a reactant in the process of Okamoto so as to form 4-allyl
phenolic links between the polysiloxane and polycarbonate
segments of a copolymer as herein claimed. We note that the
evidentiary record furnished by the examiner does not suggest
Appeal No. 1996-4135 Page 7
Application No. 08/346,325
We note that the examiner inexplicably fails to group2
claim 11, which depends from claim 12, with the claims that
are rejected over the combined teachings of Okamoto and
Bialous with or without Davis.
any advantage or convincing reason to use 4-allyl phenol in
forming the PDMS of Okamoto so as to modify the expected bent
structure of the copolymers formed with the 2-allyl phenolic
links (Example 3-6). Bialous, as further relied upon by the
examiner with respect to claims 8, 9, 12 and 13, does not cure2
the above-noted deficiency.
Here, the most that can be concluded from the collective
teachings of the applied references is that it might have been
obvious for one of ordinary skill in the art to try using a 4-
allyl phenol as a substitute reactant in Okamoto. Of course,
it is by now well settled that such is not the proper standard
for determining obviousness under 35 U.S.C. § 103. See In re
O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir.
1988). “Where the legal conclusion [of obviousness] is not
supported by facts it cannot stand.” In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968).
Appeal No. 1996-4135 Page 8
Application No. 08/346,325
For the foregoing reasons, we conclude that the examiner
has not met the initial burden of presenting a case of prima
facie obviousness. Accordingly, we reverse the examiner’s
rejections.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-3, 5, 10, 11 and 14 under 35 U.S.C. § 103 as being
unpatentable over Okamoto or, in the alternative, Okamoto in
view of Davis, and claims 8, 9, 12 and 13 under 35 U.S.C. § 103
as being unpatentable
Appeal No. 1996-4135 Page 9
Application No. 08/346,325
over Okamoto in view of Bialous or, in the alternative, Okamoto
in view of Davis and Bialous is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
PFK/jlb
Appeal No. 1996-4135 Page 10
Application No. 08/346,325
KENNETH S. WHEELOCK
GE PLASTICS
ONE PLASTICS AVENUE
PITTSFIELD, MA 01201