Ex parte HOU

Board of Patent Appeals and Interferences

Nov 26, 1999

08361891 (B.P.A.I. Nov. 26, 1999)

Application for patent filed December 21, 1994. 1
According to appellant, the Application is a continuation of
Application 08/050,840, filed April 21, 1993, 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journal and (2) is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte WEI-SHIN HOU
________________
Appeal No. 1997-1515
Application 08/361,8911
________________
ON BRIEF
________________
Before WILLIAM F. SMITH, JOHN D. SMITH and OWENS,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 30-40, 42-44 and 49. Claims 1-27, which are the only
Appeal No. 1997-1515
Application 08/361,891
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other claim remaining in the application, stand withdrawn from
consideration by the examiner as being directed toward a
nonelected invention.
THE INVENTION
Appellant claims a process for making an electrophoretic
fluid which is suitable for use in an electrophoretic display.
Claim 49 is illustrative and reads as follows:
49. A process for forming an electrophoretic fluid for
use in an electrophoretic display, comprising:
admixing a first monomer and a crosslinker in a
dispersion medium; said dispersion medium being a polar
solvent selected from the group consisting of alcohols,
ethers, halogenated hydrocarbons, ketones and esters;
adding an initiator and a stabilizer to said dispersion
medium so that said first monomer polymerizes to form
dielectric polymer particles;
introducing a second monomer and a functional monomer to
said dispersion medium, said second monomer and said
functional monomer at least partially polymerizing and
grafting upon said dielectric polymer particles to provide
said particles with a surface functionality that is suitable
for charging in an electrophoretic display;
separating said dielectric polymer particles from said
dispersion medium; and
dispersing said dielectric particles in a dielectric non-
polar solvent, said dielectric non-polar solvent being
different from said dispersion medium.
Appeal No. 1997-1515
Application 08/361,891
The examiner refers to Stangroom (U.S. 4,129,513) and2
Chung (U.S. 4,994,198) in the examiner’s answer. These
references are not included in the statement of the rejection
and, therefore, are not properly before us. See In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
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THE REFERENCE2
Ahmed 4,992,192 Feb. 12,
1991
THE REJECTION
Claims 30-40, 42-44 and 49 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Ahmed.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejection is not well
founded. Accordingly, we reverse this rejection.
We need to address only appellant’s claim 49, which is
the sole independent claim.
Ahmed discloses electrorheological fluids (col. 1, lines
4-5), which are “colloidal dispersions of polymeric particles
in a low conductivity continuous medium which show dramatic
changes in flow properties when exposed to an electric field”
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Application 08/361,891
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(col. 1, lines 26-29). The disclosed process for making the
fluids includes mixing a monomer, initiator, stabilizer and
usually a crosslinker in a continuous phase which can be a
halogenated paraffin, and polymerizing the monomer to form
hydrophobic core particles (col. 4, lines 25-32; col. 5, lines
7-13). A hydrophilic monomer is added to the dispersion and
polymerized to form a hydrophilic polymer shell around the
core particles, and
then a neutralizing agent can be added which changes surface
acid groups to salts and thereby improves the particles’
electrorheological response (col. 8, lines 55-68). A polar
liquid, usually water, then is added to make the surface of
the particles overly wet and sticky to facilitate bridging
under an applied electric force (col. 2, lines 29-36; col. 22,
lines 14-23).
The examiner argues that appellant’s invention is drawn
toward an electrophoretic fluid rather than an
electrorheological fluid as disclosed by Ahmed, but that the
mere statement of a new use of an otherwise old or obvious
composition cannot render a claim to the composition
Appeal No. 1997-1515
Application 08/361,891
Appellant’s claimed invention actually is directed3
toward a process rather than a composition as argued by the
examiner.
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patentable (answer, pages 5 and 7). 3
The preamble of appellant’s claim 49 states that the
process is for forming an electrophoretic fluid for use in an
electrophoretic display. The entire specification and the
prior art are to be considered when determining the meaning of
this claim. See In re Marosi, 710 F.2d 799, 218 USPQ 289
(Fed. Cir. 1983); Graham v. John Deere Co., 383 U.S. 1, 148
USPQ 459 (1966); In re Voss, 557 F.2d 812, 194 USPQ 267 (CCPA
1977). It is clear,
in view of appellant’s specification, that appellant is
claiming a process for making an electrophoretic fluid which
is capable of being used in an electrophoretic display (see,
e.g., page 5, lines 20-23; page 11, lines 25-27).
The examiner argues that because appellant teaches that
the surface functionality of appellant’s particles can be
varied by introducing functional monomers such as methyl
methacrylate (page 10, lines 14-19), and Ahmed teaches that
his hydrophilic monomers such as methacrylic acid can be
Appeal No. 1997-1515
Application 08/361,891
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neutralized with various bases to form salts (col. 8, lines
55-68), it appears that appellant’s particles and those of
Ahmed are the same and that, therefore, Ahmed’s particles have
a surface functionality which is suitable for charging in an
electrophoretic display as required by appellant’s claim 49
(answer, page 9). This argument is not well taken because the
compositions of Ahmed’s methacrylic acid neutralized with the
disclosed bases are quite different from those of appellant’s
functional monomers. The examiner has provided no technical
explanation as to why, regardless of this difference, Ahmed’s
particles have a surface functionality which is suitable for
charging in an electrophoretic display.
The examiner argues that “[i]t appears that the reaction
of the [i.e., Ahmed’s] neutralizing agent with the polymeric
hydrophilic shell which changes the surface acid groups into a
salt appears to read on the presently required functional
monomer” (answer, page 4). We give appellant’s claim 49 its
broadest reasonable interpretation consistent with the
specification. See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989); In re Sneed, 710 F.2d 1544, 1548,
Appeal No. 1997-1515
Application 08/361,891
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218 USPQ 385, 388 (Fed. Cir. 1983); In re Herz, 537 F.2d 549,
551, 190 USPQ 461, 463 (CCPA 1976); In re Okuzawa, 537 F.2d
545, 548, 190 USPQ 464, 466 (CCPA 1976). In doing so, we
conclude that the claim requires a second monomer and also a
functional monomer, i.e., the functional monomer is different
from the second monomer (page 9, lines 25-26; page 10, lines
14-19; page 13, line 23; page 14, lines 21-16). Also,
appellant’s claim 49 requires that the second monomer and the
functional monomer both are at least partially polymerized.
Ahmed discloses that a monomer is polymerized to form the
hydrophilic shell around the hydrophobic polymer core
particles (col. 4, line 60 - col. 5, line 2). The examiner
has not established, however, that Ahmed’s neutralizing agents
are polymerized in his process.
Ahmed’s disclosure that the formation of a hydrophilic polymer
shell around the hydrophobic polymer core particles is
followed by addition of a neutralizing agent to the dispersion
to change the surface acid groups into salts (col. 8, lines
55-68; col. 22, lines 19-23) indicates that polymerization of
the neutralizing agent does not take place.
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Application 08/361,891
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Regarding the separating and dispersing steps of
appellant’s claim 49, the examiner argues that Ahmed’s
teaching (col. 5, lines 20-24) that after the polymerization,
the dispersion may be diluted with either the liquid used in
the polymerization or with other suitable compatible
insulating hydrophobic liquids, suggests separation because it
indicates that the particles do not have to remain in the
liquid used for polymerization (answer, page 5). The
examiner’s reasoning is deficient in that the examiner has not
explained why, even if Ahmed indicates that the particles need
not remain in contact with the original liquid, the reference
would have led one of ordinary skill in the art to separate
the particles from the liquid and replace the liquid with a
different liquid. Particularly, the examiner has not
explained why Ahmed would have led such a person to select a
polar solvent as the polymerization liquid and a dielectric
nonpolar solvent as the solvent into which the separated
particles are dispersed as required by appellant’s claim 49.
The record indicates that the reasoning relied upon by the
examiner for using separation rather than dilution comes only
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Application 08/361,891
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from appellant’s specification and not from the reference and,
therefore, is based upon impermissible hindsight. See W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331
(CCPA 1960). The examiner (answer, pages 6 and 8) also relies
upon the discussion of the prior art in Ahmed wherein bulk
polymers are pulverized into particles which are dispersed in
a liquid (col. 2, lines 43-48). The examiner does not
explain, however, and it is not apparent, why this disclosure
would have fairly suggested, to one of ordinary skill in the
art, substituting separation and dispersion for the dilution
in Ahmed’s process.
In response to appellant’s argument (reply brief, page 4)
that Ahmed’s particles are doped with water, the examiner
argues that the “comprising” transition term of appellants’
claim 49 opens the claim to unspecified components such as
water (supplemental answer, page 2). Ahmed teaches that the
water
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Application 08/361,891
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makes the surfaces of the particles wet and sticky such that
bridging is facilitated under the applied electric force (col.
2, lines 29-36). The examiner has not explained, and it is
not apparent, why a dispersion containing particles which have
such a characteristic would be suitable for use in an
electrophoretic display as required by appellant’s claim 49.
We note that even if the Ahmed process prior to the water
doping step is considered, the examiner has not explained, as
discussed above, why Ahmed would have fairly suggested, to one
of ordinary skill in the art, a process including the steps
recited in appellant’s claim 49 of introducing and
polymerizing a second monomer and a functional monomer such
that a fluid is produced which is suitable for use in an
electrophoretic display, and of separating the particles from
the dispersion medium and dispersing the particles in a
dielectric nonpolar solvent.
For the above reasons, the examiner has not set forth a
factual basis which is sufficient to support a conclusion of
obviousness of the invention recited in appellant’s claim 49.
Consequently, we reverse the examiner’s rejection of this
claim and the dependent claims.
Appeal No. 1997-1515
Application 08/361,891
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DECISION
The rejection of claims 30-40, 42-44 and 49 under 35
U.S.C. § 103 over Ahmed is reversed.
REVERSED
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 1997-1515
Application 08/361,891
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Arthur L. Plevy
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