Ex parte HSU et al.

Board of Patent Appeals and Interferences

Feb 15, 2000

08432649 (B.P.A.I. Feb. 15, 2000)

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not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte OSCAR HSIEN-HSIANG HSU and
GABRIEL L. De TOMMASO
__________
Appeal No. 1997-1219
Application 08/432,649
__________
ON BRIEF
__________
Before WILLIAM F. SMITH, KIMLIN, and GARRIS, Administrative
Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1, 2 and 7 which are all of the claims pending in
the application.
Appeal No. 1997-1219
Application 08/432,649
2
The subject matter on appeal relates to an improved
process for manufacturing wood composition boards under heat
and pressure which includes use of a composition comprising a
crosslinking resin and an aqueous dispersion of acrylic
polymer particles having a THF gel content of greater than
about 70% and wherein the particles are formed from a monomer
mixture comprising from about 0.2% to about 5% by weight allyl
methacrylate. This appealed subject matter is adequately
illustrated by independent claim 1, which reads as follows:
1. An improved process for manufacturing wood
composition boards under heat and pressure comprising
providing a fibrous mat, treating the surface of said mat, hot
pressing said mat at elevated temperature and pressure into a
solid composition board product, and releasing said
composition board from said press wherein the improvement
comprises treating the surface of the mat with a composition
comprising a crosslinking resin and an aqueous dispersion of
acrylic polymer particles, wherein said particles have a THF
gel content of greater than about 70% and wherein said
particles are formed from a monomer mixture comprising from
about 0.2% to about 5%, by weight allyl methacrylate based on
the weight of said particles; and whereby the press release
rating of said manufactured wood composition board is superior
to that of a comparative board comprising particles having a
THF gel content of less than about 70%.
The references relied upon by the examiner as evidence of
obviousness are:
Sanfilippo et al. (Sanfilippo) 4,336,174 Jun. 22,
1982
Appeal No. 1997-1219
Application 08/432,649
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Kanda et al. (Kanda) 4,920,175 Apr. 24,
1990
(filed May 19, 1980)
Claim 7 stands rejected under the first paragraph of 35
U.S.C. § 112 as being based upon a disclosure which fails to
contain an adequate written description of the here claimed
invention.
Claims 1, 2 and 7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Sanfilippo in view of Kanda.
We refer to the Brief and Reply Brief and to the Answer
respectively for a complete exposition of the opposing
viewpoints expressed by the appellants and the examiner
concerning the above noted rejections.
OPINION
For the reasons which follow, we will sustain the § 112
rejection but not the § 103 rejection advanced by the examiner
on this appeal.
Concerning the § 103 rejection, we agree with the
appellants that the applied prior art contains no teaching or
suggestion of acrylic polymer particles "formed from a monomer
mixture comprising from about 0.2% to about 5%, by weight
Appeal No. 1997-1219
Application 08/432,649
4
allyl methacrylate" as required by all of the appealed claims.
While it is true that certain of Kanda's monomers correspond
to certain of the monomers disclosed in the appellants'
specification, the fact remains that neither Kanda nor
Sanfilippo contains any teaching or suggestion of the specific
type or amount of monomer defined by the appealed claims,
namely, from about 0.2% to about 5% by weight allyl
methacrylate (which is disclosed on page 8 of the appellants'
specification as being their preferred type and amount of
monomer). It follows that we cannot sustain the examiner's §
103 rejection of claims 1, 2 and 7 as being unpatentable over
Sanfilippo in view of Kanda.
As for the § 112 rejection, it is the examiner's basic
position that the "90/10" ratio recited in appealed claim 7
fails to comply with the written description requirement set
forth in the first paragraph of this statute. According to
the appellants, this ratio is supported by the written
description in Example 6 of the subject specification which
discloses "[t]o 100 g. of aqueous dispersion solids was added
10 g. of aminoplast resin" (specification, page 16). More
specifically, the appellants interpret the disclosure "100 g.
Appeal No. 1997-1219
Application 08/432,649
5
of aqueous dispersion solids" as referring to acrylic polymer
particles, per se, whereas the examiner interprets this
disclosure as referring to the acrylic polymer particles in
combination with the water in which they are contained.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language. In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983).
In applying this test to the case at bar, we are led to
the determination that the "90/10" ratio of appealed claim 7
does not comply with the written description requirement set
forth in the first paragraph of § 112. In the first place,
the examiner's interpretation of the above quoted disclosure,
which leads to a conclusion that his § 112 rejection is
proper, is a reasonable interpretation on the record before
us. Certainly, the appellants have proffered no evidence that
the specification disclosure in controversy would have
Appeal No. 1997-1219
Application 08/432,649
6
conveyed to an artisan with ordinary skill their
interpretation rather than the examiner's interpretation. In
any event, and perhaps more importantly, this specification
disclosure even when interpreted in the manner urged by the
appellants, fails to provide written description support for
the here claimed ratio. This is because the ingredient
amounts disclosed in specification Example 6 yield a ratio of
approximately 91/9 rather than the "90/10" ratio which is
precisely recited in appealed claim 7. In this latter regard,
we emphasize that claim 7 contains no language which broadens
the scope of the "90/10" ratio recited therein so as to
include the approximately 91/9 ratio derived from
specification Example 6.
Under the circumstances recounted above, we will sustain
the examiner's § 112, first paragraph, rejection of claim 7.
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
Appeal No. 1997-1219
Application 08/432,649
7
)
William F. Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Edward C. Kimlin )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Bradley R. Garris )
Administrative Patent Judge )
Appeal No. 1997-1219
Application 08/432,649
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Ronald D. Bakule
Rohm and Haas Company
100 Independence Mall West
Philadelphia, PA 19106-2399