10211381 (B.P.A.I. Sep. 29, 2006)

Ex Parte Ide et al

Board of Patent Appeals and InterferencesSep 29, 2006

10211381 (B.P.A.I. Sep. 29, 2006)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ISAMU IDE, MASSANOBU NISHIKAWA, HISATO HIGUCHI, TSUNEMORI YOSHIDA, and KATSUNORI SUGITA ____________ Appeal 2006-2329 Application 10/211,381 Technology Center 1700 ____________ Decided: September 29, 2006 ____________ Before KIMLIN, GARRIS, and JEFFREY T. SMITH, Administrative Patent Judges. JEFFREY T. SMITH, Administrative Patent Judge. DECISION ON APPEAL Applicants in this case appeal the Examiner's final rejection of claims 1, 3, and 5-12, all of the pending claims. We have jurisdiction under 35 U.S.C. § 134. We REVERSE. Appeal 2006-2329 Application 10/211,381 As evidence of unpatentability the Examiner relies upon the following reference: Ide EP 0 469 166 A1 Feb. 5, 1991 Claims 1, 3, and 5-12 stand rejected under 35 U.S.C. § 102(b) as anticipated by Ide. Claims 1, 3, and 5-12 also stand rejected under 35 U.S.C. § 103(a) as obvious over Ide. (See Answer 2-3). Rather than reiterate the conflicting viewpoints advanced by the Examiner and the Appellants regarding the above-noted rejections, we make reference to the Answer mailed Oct. 31, 2005 for the Examiner's reasoning in support of the rejections, and to the Briefs (filed Aug. 12, 2005 and Apr. 21, 2006) for the Appellants' arguments thereagainst. The initial inquiry in determining the propriety of the Examiner's §§ 102 and 103 rejections is to correctly construe the scope of the claimed subject matter. Gechter v. Davidson, 116 F.3d 1454, 1457, 1460 n.3, 43 USPQ2d 1030, 1032 n.3 (Fed. Cir. 1997), and In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). In proceedings before the USPTO, claims must be interpreted by giving the words the broadest reasonable meaning in the ordinary uses taking into account the written description found in the Specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). Applying these principles, we note appealed claim 1 recites: 1. A carbon-phenol resin molding compound obtained by reacting a phenol with an aldehyde in the presence of a catalyst, while mixing with a carbon powder, wherein (a) a content of said carbon powder in the molding compound is 75 wt% or more, (b) a content of nitrogen constituent in the molding compound is 0.3 wt% or less, and (c) said catalyst is at least one selected from the group consisting of tertiary amines, carbonates, hydroxides and oxides of alkali metals or alkali earth metals. 2 Appeal 2006-2329 Application 10/211,381 The claimed invention is directed to a carbon-phenol resin molding compound. In the Background of the Invention portion of the Specification, Appellants state that "the present invention relates to a molding compound containing a phenol resin and a carbon powder." More particularly, the Specification states "the molding compound of the present invention is obtained by reacting a phenol with an aldehyde in the presence of a catalyst, while mixing them with a carbon powder.” (Specification 2:12-14). It is apparent from the description appearing throughout the Specification that the "molding compound" comprises a variety of ingredients. In other words, the "molding compound" is a "molding composition" requiring a variety of different ingredients. Thus, upon careful consideration of the Specification as a whole, it appears that the phrase "molding compound" is properly interpreted as a "molding composition."1 Utilizing this interpretation of the claimed subject matter, we turn to the Examiner's stated rejections. The Examiner asserts that Ide discloses a carbon phenol resin molding compound that anticipates or renders obvious the claimed subject matter. The Examiner states "[t]he nitrogen containing compounds mentioned by the reference [Ide] are denoted by terms such as 'may' which indicates they are optional, as shown by example 4 which does not use nitrogen compounds." (Answer 3). We note that Ide in addition to the carbon-phenol resin molding compound discloses a carbonfuran resin compound (Ide 3, ll. 43-47). The composite carbonfuran resin compound is exemplified in Example 4. The Examiner asserts that the reaction catalyst for the carbonfuran resin compound can exclude primary or secondary amines. (Answer 3). 1 This interpretation equally applies to independent claim 11. 3 Appeal 2006-2329 Application 10/211,381 Appellants argue that the reaction catalyst of Ide requires the presence of a primary or secondary amines and may further comprise (as a co-catalyst) tertiary amines, carbonates, hydroxides and oxides of alkali metals or alkali earth metals (Br. 7). Upon consideration of the respective positions of the Examiner and the Appellants, we agree with the Appellants. The portion of the Ide reference cited by the Examiner does not indicate that the primary or secondary amine can be excluded as the reaction catalyst. Rather, Ide discloses that the catalyst comprises primary or secondary amines and may include tertiary amines, carbonates, hydroxides and oxides of alkali metals or alkali earth metals as a co-catalyst. The citation to Example 4 of Ide also is not supportive of the Examiner's position. Example 4 is directed to the embodiment which involves composite carbonfuran resin compounds. Ide discloses that the carbonfuran resin compound is formed by the reaction of a furan resin with or without formalin in the presence of carbon powder and a suitable catalyst such as an acid (Ide 3, 43-45). Ide also discloses that carbonfuran resin cannot be formed into granules the same as the phenol resin (Ide 3, ll. 45- 47). Thus, to the extent that Example 4 does not contain a reaction catalyst that comprises a primary or secondary amine, this disclosure is not pertinent to forming the carbon-phenol resin molding compound embodiments. Consequently, we determine that the Examiner has not established a prima facie case of anticipation. In the discussion of the rejection under § 103, the Examiner relies on the same embodiments which have been addressed in the discussion of the § 102 rejection. The Examiner has also not provided evidence to establish 4 Appeal 2006-2329 Application 10/211,381 that it would have been obvious to utilize a reaction catalyst absent a primary or secondary amine in the formation of a carbon phenol molding resin compound. As indicated above, the Example 4 of Ide is directed to a different embodiment that requires substantially different reaction conditions in order to produce an electromagnetic shielding material. The Examiner has not relied on other evidence to establish that the carbon phenol molding resin could have been made with a different catalyst. For the foregoing reasons, and those presented in the Brief, we determine that the Examiner has not established a prima facie case of obviousness. Our discussion of the issues relative to claim 1 above apply equally to claim 11, the other independent claim. CONCLUSION The rejection of claims 1, 3, and 5-12 under 35 U.S.C. § 102 (b) and under 35 U.S.C. § 103(a) are reversed. REVERSED cam David T. Nikaido RADER, FISHMAN & GRAUER, PLLC Suite 501 1233 20th Street, NW Washington, DC 20036 5