Ex Parte Hywel-Evans

Board of Patent Appeals and Interferences

Aug 27, 2002

09000028 (B.P.A.I. Aug. 27, 2002)

The opinion in support of the decision being entered
today was not written for publication and
is not binding precedent of the Board

Paper No. 14

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DUNCAN HYWEL-EVANS
___________

Appeal No. 2000-1180
Application No. 09/000,028
___________

ON BRIEF
__________

Before WINTERS, PAWLIKOWSKI and POTEATE, Administrative Patent
Judges.

PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1-22, which are all the claims pending in the application.
The subject matter on appeal is represented by claim 1, set
forth below:
1. A cross linkable polyester resin composition suitable
for use with a reinforcing element for reinforcing rock and other
structures, said composition comprising:
(a) from 10 to 45% of a crosslinkable unsaturated polyester
resin,
(b) from 40 to 90% of a filler and
(c) from 1 to 15% of an ethylenically unsaturated monomer
copolymerisable with the polyester, the percentages being by
Appeal No. 2000-1180
Application 09/000,028

2

weight based on the total weight of (a), (b) and (c), the
composition being solid at 20°C but permitting insertion and
rotation of a reinforcing element to cause mixing of the
composition with a crosslinking catalyst to cold cure to form a
hard mass.

The references relied upon by the examiner as evidence of
unpatentability are:
Schmank 3,962,162 June 8, 1976
Kennedy-Skipton et al.
(Skipton) 4,251,430 Feb. 17, 1981
Simmons et al. (Simmons) 4,616,050 Oct. 7, 1986
Van Gasse et al. (Van Gasse) 5,212,234 May 18, 1993

Claims 1-21 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Schmank, Skipton, Simmons or Van Gasse.
Claims 1-22 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Schmank, Skipton, Simmons, or Van Gasse.

OPINION
For the reasons set forth in the brief, reply brief, and
below, we reverse each of the above-noted rejections.
We note that the initial burden of presenting a prima facie
case of unpatentability on any ground rests with the examiner.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992).
The examiner’s position is that while the references of
Schmank, Skipton, Simmons, or Van Gasse do not explicitly
disclose that the compositions are solid compositions, because
these references each disclose a composition comprising a
Appeal No. 2000-1180
Application 09/000,028

3

polyester resin, filler, and a monomer, these references each
disclose a composition that is inherently a solid at room
temperature (20°C). (answer, pages 5-6). Alternatively, the
examiner states it would have been obvious to formulate solid
compositions because “it would be within the skill of one in the
art to select suitable percentages . . . to achieve a solid
composition”. (answer, page 4). The examiner’s position also is
that each of the references does not indicate that the disclosed
composition is cold curable, however, the examiner asserts that
appellant’s claims do not require such subject matter. (answer,
page 7).
Appellant argues that in fact each of the references does
not disclose a composition that is solid at 20°C. (pages 8-16 of
the brief and the declaration of Leslie Cheriton). For example,
appellant states that Simmons, at column 5, lines 18-20,
discloses a gel time of one minute, suggesting that the
composition cannot be a solid. (brief, page 13). Appellant
states that Schmank discloses that the compositions are flowable
at 20 to 40°C. (brief, pages 13-14). Appellant states that
Skipton’s examples are pastes. (brief, page 13).
In response, the examiner, oddly enough, asserts that
because Schmank discloses that the composition is flowable at
40°C, the composition is therefore a solid at temperatures less
than 40°C. We disagree with the examiner’s interpretation of
Schmank in this regard. See for example, column 2, lines 62-68
of Schmank. The examiner does not address the other
aforementioned points raised by appellant in connection with the
Skipton and Simmons references. (answer, pages 5-7).
Furthermore, the examiner does not recognize the aspect of
appellant’s claimed invention regarding “a cold cure
Appeal No. 2000-1180
Application 09/000,028

4

crosslinkable polyester resin composition”. This is explicitly
recited, for example, in claim 9 at lines 3-4. We agree with
appellant’s remarks made on page 10 of the brief, that this
recitation concerning cold cure cannot be ignored.
Additionally, we refer to the case of In re Lee, 277 F.3d
1338, 1445, 61 USPQ2d 1430, 1435 (Fed. Cir. 2002). In this case,
the court stressed the import of articulating and making of
record knowledge negating patentability. Here, other than the
conclusionary statements provided by the examiner that each of
the references disclose a composition that inherently is a solid
at 20°C, and that is inherently cold curable, and that inherently
qualifies as a shaped article, the examiner provides no factual
support for his conclusions in this regard.
With regard to the 35 U.S.C. § 103 rejection, we reiterate
that with respect to obviousness, the examiner has the initial
burden of factually supporting any prima facie conclusion of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). Here, on page 4 of the answer, the
examiner does not explain why one of ordinary skill in the art
would have been motivated to modify each of the applied
references to arrive at appellant’s specifically claimed
composition. The examiner simply states that it would be within
the skill of one in the art to select suitable percentages of the
three ingredients to achieve a solid composition in these
references. We find such an explanation insufficient to support
a prima facie case of obviousness, and we again refer to the case
of In re Lee, 277 F.3d 1338, 1445, 61 USPQ2d 1430, 1435 (Fed.
Cir. 2002).
In view of the above, we reverse each of the rejections of
record.
Appeal No. 2000-1180
Application 09/000,028

5

CONCLUSION
Each of the rejections is reversed.

REVERSED

Sherman D. Winters )
Administrative Patent Judge )
)
)
)
)
Beverly A. Pawlikowski ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
Linda R. Poteate )
Administrative Patent Judge )

BAP/cam
Appeal No. 2000-1180
Application 09/000,028

6

Nixon & Vanderhye
1100 North Glebe Road, 8th Floor
Arlington, VA 22201