Ex Parte Husemann et al

Board of Patent Appeals and Interferences

Jan 30, 2008

10687494 (B.P.A.I. Jan. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARC HUSEMANN and
THILO DOLLASE
____________

Appeal 2008-0511
Application 10/687,494
Technology Center 1700
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Decided: January 30, 2008
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Before CHARLES F. WARREN, THOMAS A. WALTZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 1-5, 7, and 8, which are the
only claims pending in this application. We have jurisdiction pursuant to 35
U.S.C. § 6(b).
According to Appellants, the invention is directed to an injection
molded, compression molded, blow molded, or roto molded product
Appeal 2008-0511
Application 10/687,494

comprising one or more block copolymers based on polyacrylate and having
inherent pressure-sensitive adhesion properties (Br. 2). Independent claim 1
is illustrative of the invention and a copy of this claim is reproduced below:

1. An injection moulded, compression moulded, blow
moulded or roto moulded product comprising one or more block
copolymers based on polyacrylate or mixtures comprising such block
copolymers, and having inherent pressure-sensitive adhesion
properties.

The Examiner has relied on the following prior art references as
evidence of unpatentability:
Everaerts WO 00/39233 Jul. 6, 2000
Remmers US 6,430,898 B1 Aug. 13, 2002

ISSUE ON APPEAL
Claims 1-5, 7, and 8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Everaerts and in view of Remmers (Ans. 3).
Appellants contend that those skilled in the art understand that,
because of the nature of molds and processes of molding, resulting products
of the claim can have specific shapes not obtainable by simple compression
molding as in Everaerts or pouring into an open mold as in Remmers (Br. 3).
Appellants further contend that the products of the claims are “distinctly
different” from those of the references because the resulting shaped features
cannot be produced by Everaerts or Remmers (Br. 3, 4).
The Examiner contends that Appellants “accept the fact” that
Everaerts teaches the same polymers as claimed, and the “issue contested” is
whether the claims require a product with additional structure not disclosed
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Application 10/687,494

by the product of Everaerts or rendered prima facie obvious by the “bricks”
of Remmers in combination with Everaerts (Ans. 3).
Accordingly, we determine that the issue presented from the record in
this appeal is as follows: Does claim 1, as properly construed, require
additional structure not disclosed by the product of Everaerts alone, or the
combination of Everaerts and Remmers?1
We determine that the Examiner has established a prima facie case of
anticipation/obviousness in view of the reference evidence, which prima
facie case has not been adequately rebutted by Appellants’ arguments.
Therefore, we AFFIRM the rejections on appeal essentially for the reasons
stated in the Answer, as well as those reasons set forth below.
OPINION
Since Appellants do not contest or dispute any of the Examiner’s
factual findings from Everaerts or Remmer (Br. 3-4; Ans. 3), we do not
repeat any findings here but adopt the Examiner’s findings of fact from the
record in this appeal (Final Office Action dated Sep. 7, 2006; Final Office
Action dated Jan. 18, 2005, p. 4).
As discussed above, the dispositive issue in this appeal relates to
claim construction of the introductory terms “injection moulded,
compression moulded, blow moulded or roto moulded” relative to the
claimed product. See Gechter v. Davidson, 116 F.3d 1454, 1457, 1460 n.3
(Fed. Cir. 1997) (Implicit in any review of the Examiner’s anticipation or
obviousness analysis is that the claim must first have been correctly

1 We determine that Appellants have not presented any arguments to a
particular claim with any reasonable specificity (Br. 3-4). Therefore, we
select claim 1 from the group of claims and decide the grounds of rejection
based on this claim alone. See 37 C.F.R. § 41.37(c)(1)(vii).
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Application 10/687,494

construed to define the scope and meaning of each contested limitation).
Accordingly, we begin by construing these disputed limitations. We
determine that these disputed terms relate to the process of making the
claimed product, i.e., the claimed product is made from a polyacrylate based
block copolymer by injection molding, compression molding, blow molding,
or roto molding. However, the claims are directed to a product. A product-
by-process claim, although reciting the subject matter of the claim in terms
of how it is made, is still a product claim. It is the patentability of the
product claimed which must be established. See In re Hirao, 535 F.2d 67,
69 (CCPA 1976); In re Wertheim, 541 F.2d 257, 271 (CCPA 1976). A
rejection under § 102/§ 103 is proper when the prior art discloses a product
that appears to be either identical with or only slightly different from the
product claimed. If the Patent Office has reason to believe the prior art
product is either identical with or only slightly different from the claimed
product, the burden shifts to Appellants to prove that the prior art products
do not possess the characteristics relied on by the claimed product. See In re
Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255
(CCPA 1977); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). On the
undisputed factual record in this appeal, we determine that the product of
Everaerts is identical to the claimed block copolymer based on polyacrylate,
with at least some inherent pressure-sensitive adhesion properties.2 We
determine that the introductory process limitations do not further restrict the

2 See Everaerts, Abstract; 5:13-21 and 27-30; 6:7-31; and 11:18-23. We also
note that Everaerts discloses prior art patents to Bayard relating to block
copolymers based on polyacrylates useful in injection-molded articles (2:23-
30). It does not appear that these patents have been considered by the
Examiner on the record of this application.
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Application 10/687,494

claimed product. As correctly stated by the Examiner (Ans. 3-4), the
products as claimed generally have a different structure than the prior art
product but this is not always the case. In Appellants’ own words, “the
resulting products can have specific shapes not obtainable” by the processes
disclosed by the applied prior art (Br. 3, italics added, implying that the
resulting products may also have the same shapes as the applied prior art).
We determine that the mere recitation of the general process of making the
product does not give the product any additional structure not found in the
applied prior art.
In view of our claim construction discussed above, we determine that
the Examiner has established a prima facie case of anticipation/obviousness
in view of the reference evidence, which prima facie case has not been
adequately rebutted by Appellants’ arguments. Therefore we affirm the
rejections on appeal.
The decision of the Examiner is affirmed.

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Application 10/687,494

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

tf/ls

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