Ex Parte Ibar

Board of Patent Appeals and Interferences

Mar 10, 2010

10409980 (B.P.A.I. Mar. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEAN PIERRE IBAR
____________

Appeal 2009-003577
Application 10/409,980
Technology Center 1700
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Decided: March 10, 2010
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Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

On November 23, 2009, Appellant filed a Request for Rehearing of
the Decision of September 22, 2009. In that Decision, the panel affirmed the
Examiner’s decision to reject claims 1, 2, 6-10, 30-32, 34-37, 42-46, 51-53,
55-59, 61-64, 66-70, 72-81, 83-86, 88-93, 96, and 97. The panel also
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reversed the Examiner’s decision to reject claims 5, 11, 33, 47, 48, 54, 60,
65, 71, 82, 87, 94, and 95.
Of particular relevance to Appellant’s Request, the panel affirmed
the rejection of independent claims 1, 30, 63, and 74 as anticipated under
35 U.S.C. § 102(b) by Zaleski (US 4,981,729; Jan. 1, 1991) and the rejection
of independent claims 1, 30, 63, and 74 under 35 U.S.C. § 102(b) as
anticipated by Cho (US 4,891,308; Jan. 2, 1990). Claims 1 and 30 are
illustrative of the subject matter at issue for reconsideration and are reprinted
below for convenience.
1. A method of preparing an electrostatic dissipative composition,
the method comprising:
combining a conductive polymer; a crosslinkable polymer, and a
crosslinking agent to form a fluidized dispersion; and
providing the fluidized dispersion with a pH of about 7 to 9 to form
the electrostatic dissipative composition, wherein:
the electrostatic dissipative composition comprises water; and
all components of the electrostatic dissipative composition, other than
water, have a vapor pressure of about 400 mm Hg, or less, at a temperature
of about 72°F.
30. An electrostatic dissipative composition, the electrostatic
dissipative composition comprising:
a conductive polymer;
a crosslinkable polymer; and
a crosslinking agent, wherein:
the electrostatic dissipative composition has a pH of about 7 to
9; and
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the electrostatic dissipative composition is free of volatile
organic compounds.
I. ZALESKI
In the Request, Appellant contends that the panel misinterpreted the
following passage of Zaleski (Request 2):
The aqueous compositions comprise
(A) at least one water-dispersible or emulsifiable
film-forming resin;
(B) at least one electrically conductive polymer of
a quaternary ammonium compound containing
at least one polymerizable unsaturated group.
The compositions preferably also contain
(C) at least one hydrocarbon-soluble substituted
imidazoline of a fatty acid;
(D) at least one volatile organic liquid; and
(E) water.
(Zaleski, col. 2, l. 61 to col. 3, l. 4 (emphasis added).)
Finding of Fact 1 of the Decision states “Zaleski teaches a
composition requiring one water-dispersible or emulsifiable resin and one
conductive polymer. Volatile organic liquids are merely additional preferred
components, i.e., optional” (Decision 6). Accordingly, the panel concluded
that “Zaleski teaches an embodiment in which a composition includes only a
water-dispersible or emulsifiable resin and a conductive polymer, neither of
which Appellant asserts has a vapor pressure of greater than 400 mm Hg at
74ºF” (Decision 6). Based on the same reasoning, the panel also concluded
that
Zaleski teaches an embodiment in which a
composition includes only a water-dispersible or
emulsifiable resin and a conductive polymer,
neither of which Appellant asserts is a volatile
organic compound. Thus, we need not determine
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whether any of the volatile organic liquids
disclosed by Zaleski fall within the scope of the
term “volatile organic compounds.”
(Decision 10.)
However, Appellant contends that the phrase “[t]he compositions
preferably also contain . . .” recited in Zaleski, page 2, applies only to
component (C), i.e., the at least one hydrocarbon-soluble substituted
imidazoline of a fatty acid, and not to component (D), i.e., the at least one
volatile organic liquid, or component (E), i.e., water (Request 3).
Appellant’s support for this interpretation is based on the fact that (1)
Zaleski always refers to the inventive composition as “aqueous” and thus the
composition must include water; and (2) Zaleski states that “[i]n addition to
water, the aqueous compositions of the present invention also contain at
least one volatile organic liquid” (col. 11, ll. 64-66) and thus the composition
must also include at least one volatile organic liquid (Request 3).
In addition to Appellant’s evidence, we further note that Zaleski refers
to “applying a film of the electroconductive coating compositions described
above (with or without the substituted imidazoline (C)) to a plastic substrate
as a primer coating” (Zaleski, col. 16, ll. 46-51). We also note that all of the
claims in Zaleski include each of components (A), (B), (D), and (E), but
claim 36 does not require component (C). Accordingly, we are persuaded
that FF 1 of the Decision was erroneous.
In light of this error, we review anew the issues raised on appeal that
were decided based on the erroneous finding. In doing so, we maintain our
affirmance of the rejection of independent claims 1, 30, 63, and 74 as
anticipated by Zaleski for the reasons discussed below.
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A. CLAIMS 1 AND 74 – VAPOR PRESSURE
1. ISSUE ON APPEAL
Appellant argues claims 1 and 74 as a group based on the common
limitation requiring that all components have a vapor pressure of 400 mm
Hg, or less, at 74ºF. Appellant contends that the Examiner has failed to
show that each of the volatile organic liquids disclosed in Zaleski have the
recited low vapor pressure. (Br. 27; Reply Br. 14.) The Examiner responds
by showing that at least two of the disclosed volatile organic liquids,
specifically xylene and toluene, have a vapor pressure within the claimed
range (Ans. 11).
A first issue on appeal arising from the contentions of Appellant and
the Examiner is: has Appellant shown that the Examiner reversibly erred by
failing to show that all of the volatile organic liquids disclosed in Zaleski
have a low vapor pressure within the claimed range? We answer this
question in the negative.
2. FACTUAL FINDINGS
In order to address this question, we must consider the following
additional Findings of Fact (FF):
a. Zaleski teaches the use of “at least one volatile organic liquid”
(Zaleski, col. 11, ll. 64-66). Thus, Zaleski teaches an embodiment that
includes only one volatile organic liquid.
b. Zaleski lists xylene or toluene as suitable volatile organic
solvents (Zaleski, col. 12, ll. 1-11). Thus, Zaleski teaches an embodiment in
which the only volatile organic liquid is xylene or toluene.
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c. The Examiner has made a finding that xylene and toluene each
have a vapor pressure at 72 ºF of less than 400 mm Hg, citing Ohe, Shuzo,
www.s-ohe.com, Vapor Pressure Computations (2003)(“Ohe”).
3. PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). “[W]hen the prior art
evidence reasonably allows the PTO to conclude that a claimed feature is
present in the prior art, the evidence ‘compels such a conclusion if the
applicant produces no evidence or argument to rebut it.’” In re Crish,
393 F.3d 1253, 1259 (Fed. Cir. 2004) (quoting In re Spada, 911 F.2d 705,
708 n.3). More particularly, when a claimed product appears to be
substantially identical to a product disclosed by the prior art, the burden is
on the applicant to prove that the product of the prior art does not necessarily
or inherently possess characteristics or properties attributed to the claimed
product. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best,
562 F.2d 1252, 1255 (CCPA 1977).
4. ANALYSIS
Appellant asserts that each composition disclosed by Zaleski requires
the use of a volatile organic liquid. Based on the evidence presented in
Appellant’s Request, we agree. Since Zaleski teaches that there need only
be one volatile organic liquid (FF a), the Examiner need not find that each of
the disclosed volatile organic liquids have a vapor pressure less than 400
mm Hg at 72 ºF. Rather, the Examiner need only show that one of the
volatile organic liquids has a vapor pressure less than 400 mm Hg at 72 ºF.
The Examiner has satisfied this burden with respect to xylene and toluene
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(FF b and c). Appellant has not refuted the Examiner’s findings regarding
the vapor pressure of xylene and toluene.
Where the claims recite a negative limitation or the absence of
material and the prior art reference appears to show an embodiment which
lacks such material (i.e., appears identical to the claimed invention), the
burden falls to Appellant to show that the embodiment, in fact, does not
meet the requirements of the claim. See, e.g. Spada, 911 F.2d at 708
(“[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.”); Best, 562 F.2d at 1255 (shifting burden to
applicant when the prior art product appears to be identical or substantially
identical to that claimed).
The Examiner need not prove that each and every possible component
in Zaleski has a vapor pressure of less than 400 mm Hg at 72º F.
Anticipation is established where just one embodiment falls within the scope
of the claim. See In re Sivaramakrishnan, 673 F.2d 1383, 1384-85 (CCPA
1982) (Claim to a composition anticipated by a prior art composition where
the claimed salt was expressly disclosed within a list of exemplary salts).
Accordingly, the Examiner’s failure to show that all of the volatile
organic liquids disclosed in Zaleski have a low vapor pressure within the
claimed range is not in error.
B. CLAIMS 30 AND 63 – FREE OF VOCs
1. ISSUE ON APPEAL
Appellant further argues claims 30 and 63 as a group based on the
common limitation that the composition is “free of volatile organic
compounds.” Appellant contends that Zaleski requires a volatile organic
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liquid that falls within the definition of a “volatile organic compound”
provided in Appellant’s Specification. According to Appellant, Zaleski does
not teach a composition that is free of volatile organic compounds because it
requires the use of at least one of the volatile organic liquids disclosed
therein. (Br. 24-26; Reply Br. 5 and 7).
The Examiner responds that the recited “volatile organic compound”
limitation is properly construed as a component having a vapor pressure of
400 mm Hg, or less, at 74ºF, and thus, as discussed above, Zaleski teaches at
least one volatile organic liquid that falls outside of the recited “volatile
organic compound” (Ans. 10-11). According to the Examiner, it is
inconsistent with Appellant’s Specification and claims to assert that any
organic compound not included in the list of excluded compounds in the
Federal Register is necessarily a “volatile organic compound” because the
Specification and claims 37 and 70 include the presence of water-miscible
organic solvents (Ans. 11).
A third issue on appeal arising from the contentions of Appellant and
the Examiner is: has Appellant shown that the Examiner reversibly erred in
finding that Zaleski teaches a composition that is free of volatile organic
compounds? We answer this question in the negative.
B. FACTUAL FINDINGS
In order to address this question, we must consider the following
additional Findings of Fact (FF):
a. Appellant’s Specification states “[f]or purposes of this
document, the definition of volatile organic compound (VOC) may
be found in the April 9, 1998 Federal Register at Vol. 63, No. 68, Pages
17331 - 17333” (Spec. 24:22-24).
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b. Appellant’s Specification teaches that the ESD composition
may also include one or more water-miscible organic solvents (Spec. 19:.
22-23). Examples of water-miscible solvents that may be used in the
invention include, among others, ethanol (ethyl alcohol), propanol (propyl
alcohol), propylene glycol, ethylene glycol monoethyl ether, and xylene.
c. Claim 37, which depends from claim 30, and claim 70, which
depends from claim 63, require the presence of a “water-miscible organic
solvent” (claims 37 and 70).
d. Page 17333 of the April 9, 1998 Federal Register at Vol. 63,
No. 68 (hereinafter “Federal Register”), states, in relevant part:
(s) Volatile organic compounds (VOC) means any
compound of carbon, excluding carbon monoxide,
carbon dioxide, carbonic acid, metallic carbides
or carbonates, and ammonium carbonate, which
participates in atmospheric photochemical
reactions.
(1) This includes any such organic compound
other than the following, which have been
determined to have negligible photochemical
reactivity:
(Federal Register at 17333).
e. Zaleski includes a list of “suitable solvents” as exemplary
volatile organic liquids (Zaleski, col. 11, l. 63 to col. 12, l. 12). This list of
suitable solvents includes: ethanol (ethyl alcohol), propanol (propyl alcohol),
propylene glycol, ethylene glycol monoethyl ether, and xylene (Zaleski, col.
12, ll. 1-12).
f. Each of the “suitable solvents” listed in Zaleski are organic
solvents, and none are listed in the Federal Register as excluded from the
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definition of a “volatile organic compound” (Zaleski, col. 12, ll. 1-12;
Federal Register at 17333).
C. PRINCIPLES OF LAW
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
“Where an inventor chooses to be his own lexicographer and to give
terms uncommon meanings, he must set out his uncommon definition in
some manner within the patent disclosure so as to give one of ordinary skill
in the art notice of the change.” In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994). “This rule of construction recognizes that the inventor may have
imparted a special meaning to a term in order to convey a character or
property or nuance relevant to the particular invention.” Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
“[T]he specification may reveal a special definition given to a claim term by
the patentee that differs from the meaning it would otherwise possess. In
such cases, the inventor’s lexicography governs.” Phillips v. AWH Corp.,
415 F.3d 1303, 1315 (Fed. Cir. 2005) (citing CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); see also In re Glaug, 283 F.3d
1335, 1340 (Fed. Cir. 2002) (“[T]he general term must be understood in the
context in which the inventor presents it. . . . [T]he inventor’s lexicography
must prevail.”).
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D. ANALYSIS
We agree with Appellant that the Examiner’s interpretation of the
phrase “volatile organic compounds” is not consistent with the Appellant’s
Specification. We find nothing in Appellant’s Specification to suggest that
the Appellant’s intended the phrase “volatile organic compounds” to be
defined in terms of vapor pressure.
Moreover, we disagree with the Examiner and consider the
Appellant’s reference to the Federal Register to be a clear and express
definition (FF a). Thus, the definition provided by the Federal Register must
govern (FF d). However, we cannot end our interpretation here.
An interpretation of the phrase “free of volatile organic compounds”
in claims 30 and 63 must take into consideration that Appellant’s
Specification and claims 37 and 70 recite the incorporation of a “water-
miscible organic solvent” (FF b and c). As such, a reasonable interpretation
of claim 1 would be that these “water-miscible organic solvents” are not
volatile organic compounds within the meaning of claim 1. Thus, the
burden falls to Appellant to show that the water-miscible organic solvents
disclosed and claimed in Appellant’s Specification fall within the Federal
Register definition of “volatile organic compounds” and are thus precluded
by the “free of volatile organic compounds” limitation of claim 1. Appellant
has provided no evidence to suggest this is the case.
Several of the volatile organic liquids disclosed as “suitable solvents”
in Zaleski are also listed as example “water-miscible organic solvents” in
Appellant’s Specification (FF b and e). Appellant has made no affirmative
indication that any or all of the particular volatile organic liquids recited in
Zaleski fall within the definition recited in the Federal Register, only that
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none of the listed compounds of Zaleski are expressly listed as excluded
compounds.
As we discussed above, the Examiner need not prove that each and
every possible component in Zaleski falls outside of the Federal Register
definition of a “volatile organic compound.” Appellant has had the
opportunity to put forth evidence that a necessary component (as
distinguished from an optional or exemplary component) disclosed in the
reference is a volatile organic compound. Appellant has provided no such
evidence.
Accordingly, Appellant has not shown that the Examiner reversibly
erred in finding that Zaleski teaches a composition that is free of volatile
organic compounds.
II. CHO
Appellant argues claims 1 and 74 as a group based on the common
limitation that the composition is an electrostatic dissipative composition
and that all components have a vapor pressure of 400 mm Hg, or less, at
74ºF (Br. 45; Reply Br. 32).
A. CLAIMS 1 AND 74 – ELECTROSTATIC DISSIPATIVE
COMPOSITION
In the Request, Appellant contends that the panel’s Finding of Fact 6
(FF 6) directed to an interpretation of the teachings of Cho is erroneous. FF
6 of the panel’s Decision states as follows:
Cho’s auxiliary layer contains the same conductive
polymer (a water soluble copolymer of the sodium
salt of styrene sulfonic acid), crosslinkable
polymer (hydrophobic polymer containing
carboxyl groups) and crosslinking agent
(polyfunctional aziridines) as antistatic layers
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known in the prior art (Cho, col. 1, ll. 41-52, col. 2,
ll. 36-38 and 53-56).
According to Appellant, “[t]he Cho patent fails to disclose any use of
a hydrophobic polymer of the prior art in the Cho composition” (Request 5).
Appellant states that “[t]he Board relied primarily on the misinterpretation of
Cho patent as allegedly disclosing use of the prior art hydrophobic polymer
in preparing the Cho composition in analyzing the facts and reaching its
conclusion in the Section VIII anticipation rejections of claims 1 and 74”
(Request 5).
We agree with the Appellant that the auxiliary layer taught by Cho
does not include a hydrophobic polymer containing carboxyl groups. Thus,
we are persuaded that FF 6 of the Decision is erroneous to the extent it is
interpreted as suggesting that Cho’s auxiliary layer includes a hydrophobic
polymer containing carboxyl groups.
However, we disagree with Appellant that the use of a hydrophobic
polymer was the basis for the panel’s finding that the Examiner did not
reversibly err in finding that Cho teaches a composition that has electrostatic
dissipative properties. To the contrary, the panel’s decision states “[t]he
presence of conductive polymers reasonably would impart antistatic
properties to the composition taught by Cho” (Decision at 16). Thus, it is
the common component of the conductive polymer which the panel
primarily relies upon.
The prior art antistatic layer taught by Cho (Schadt) contains the same
conductive polymer (a water soluble copolymer of the sodium salt of styrene
sulfonic acid) as Cho’s auxiliary layer (poly(sodium styrene suflonate-
maleic anhydride)) (Cho, col. 1, ll. 44-46, col. 2, ll. 36-38). Appellant does
not contest the fact that the conductive polymer component is the same.
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Further, a crosslinkable polymer and a crosslinking agent, as recited in claim
1, can be found both in Cho’s auxiliary layer and in the prior art antistatic
layer discussed in Cho (i.e., Schadt) (Cho, col. 1, ll. 46-48, col. 2, ll. 38-42
and 52-55). Since both the antistatic layer and the auxiliary layer include the
same components as the claimed invention, it is reasonable to assert that the
auxiliary layer taught by Cho would inherently exhibit antistatic (or
electrostatic dissipative) properties, as does the claimed composition.
In this case, patentability rests upon a property of the claimed material
not disclosed within the art (an electrostatic dissipative function), and the
PTO has no reasonable method of determining whether, in fact, the auxiliary
layer taught by Cho exhibits antistatic properties. Therefore, where the
claimed and prior art products are identical or substantially identical, the
PTO can require an applicant to prove that the prior art products do not
necessarily possess the characteristics of his claimed product. In re Best,
562 F.2d 1252, 1255 (CCPA 1977). Thus, the burden shifted to Appellant to
show that the electrostatic dissipative property is not inherent in the
conductive polymer containing auxiliary layer taught by Cho. Appellant has
provided no such evidence.
B. CLAIMS 1 AND 74 – VAPOR PRESSURE
Appellant further requests reconsideration of the Board’s comments
regarding the vapor pressure requirements of claim 1 and 74, “since these
requirements are not limited to solvent components, but also apply to
polymeric components of the composition defined in the claims 1 and 74”
(Request 5). Regarding the vapor pressure requirements of claim 1, the
panel decided that
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it is reasonable to assert that there are no high
vapor pressure components required in the
composition taught by Cho. Cho does not
specifically call for using a high vapor pressure
solvent, or for any solvent at all (FF 7). The
Examiner’s finding regarding the general structure
of the claimed invention is sufficient to shift the
burden to Appellant to show Examiner error by
pointing to a high vapor pressure component
essential to Cho’s composition. Appellant has
indicated no such component. Accordingly,
Appellant has not shown that the Examiner
reversibly erred by failing to show that the
components of Cho have a vapor pressure of 400
mm Hg, or less, at 74ºF.
(Decision at 17).
Though the panel’s Decision mentions solvents, the Decision is not
limited to solvents. The panel specifically states that “it is reasonable to
assert that there are no high vapor pressure components required in the
composition taught by Cho” (Decision at 17). The Board references
solvents particularly because they are the most likely components to have a
high vapor pressure and because Appellant has not asserted that any
particular component of Cho has a vapor pressure greater than 400 mm Hg
at 72º F. Again, the Examiner need not prove that each and every possible
component in Zaleski has a vapor pressure of less than 400 mm Hg at 72º F.
Appellant has had the opportunity to put forth evidence that a necessary
component (as distinguished from an optional or exemplary component)
disclosed in the reference has a vapor pressure of greater than 400 mm Hg at
72 ºF. Appellant has provided no such evidence.
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III. DECISION
The subject Request has been granted to the extent that the Decision
has been reconsidered, erroneous facts corrected, and analyses revised where
premised on incorrect facts, but is denied with respect to making any
changes to the ultimate decision therein.
DENIED

cam

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