Ex parte Lasson et al.

Board of Patent Appeals and Interferences

Mar 9, 2001

08188417 (B.P.A.I. Mar. 9, 2001)

1
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not written for publication and is not binding precedent of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. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PIERRE LASSON, YVES-JULIEN LAMBERT,
YVES VANDERVEKEN, and NESTOR MAQUET
__________
Appeal No. 1998-0652
Application No. 08/188,417
__________
HEARD: Feb. 21, 2001
__________
Before GARRIS, TIMM, and PAWLIKOWSKI, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1
through 5 which are all of the claims remaining in the
application.
The subject matter on appeal relates to a polymer
composition consisting essentially of at least one
Appeal No. 1998-0652
Application No. 08/188,417
2
polyvinylidene fluoride homopolymer, at least one
thermoplastic copolymer of vinylidene fluoride and a
plasticizer. Further details of this appealed subject matter
are set forth in representative independent claim 1 which
reads as follows:
1. A polymer composition consisting essentially of, by
weight:
(A) approximately from 60 to 80% of at least one PVDF
homopolymer;
(B) approximately from 20 to 40% of at least one
thermoplastic copolymer of vinylidene fluoride
and of at least one other fluoromonomer, present in
this copolymer in weight proportions of approximately
5 to 25% and
(C) approximately from 5 to 20%, relative to the total
weight of the polymers (A) and (B), of a monomeric or
polymeric plasticizer.
The reference set forth below is relied upon by the
examiner as evidence of obviousness:
Budzinski et al. (Budzinski) 3,760,724 Sep.
25, 1973
The claims on appeal are rejected under 35 U.S.C. § 103
as being unpatentable over Budzinski.
We refer to the several briefs and answers for an
exposition of the opposing viewpoints expressed by the
Appeal No. 1998-0652
Application No. 08/188,417
3
appellants and by the examiner concerning the above noted
rejection.
OPINION
This rejection cannot be sustained.
As correctly argued by the appellants in their briefs,
Budzinski contains no teaching or suggestion of a polymer
composition which includes at least one polyvinylidene
fluoride homopolymer and at least one thermoplastic copolymer
of vinylidene fluoride. We appreciate that the paragraph
bridging columns 2 and 3 of this patent describes patentee’s
plastisol composition as containing various types of polyvinyl
resins including polyvinylidene fluoride and copolymers
thereof. However, the examiner refers to nothing and we find
nothing in this reference which, in our view, would have
suggested using any of these resins in combination much less
using polyvinylidene fluoride homopolymer in combination with
a thermoplastic copolymer of vinylidene fluoride as required
by the appealed claims.
With the foregoing in mind, it is apparent that the
applied reference is likewise deficient in that it contains no
teaching or suggestion concerning the here claimed amounts of
Appeal No. 1998-0652
Application No. 08/188,417
4
the aforementioned polyvinylidene fluoride homopolymer and the
thermoplastic copolymer of vinylidene fluoride. In this
regard, we emphasize and reiterate the appellants’ point that
their claimed composition is intended for the manufacture of
pipes which convey hydrocarbons whereas the composition of
Budzinski is intended for use as a non-volatile, fast-set,
heat-dry plastisol vehicle for printing inks (e.g., see lines
30 through 59 in column 2). Because these respective
compositions are formulated for such widely disparate uses, no
basis exists for concluding that the here claimed polymer
amounts for the appellants’ pipe-making composition would have
been achieved by an ordinarily skilled artisan in the course
of determining the polymer amounts needed to achieve the
printing ink-making use of patentee’s composition. Analogous
reasoning applies to the plasticizer amounts required by the
independent claim on appeal.
Yet another deficiency of the Budzinski reference relates
to the required presence of polystyrene in patentee’s
composition. According to the appellants, the “consisting
essentially of” language of appealed independent claim 1
excludes polystyrene from their claimed composition. In this
Appeal No. 1998-0652
Application No. 08/188,417
For example, see In re Janakirama-Rao, 317 F.2d 951,1
954, 137 USPQ 893, 896 (CCPA 1963)(“consisting essentially of”
excludes from a claimed composition ingredients which
materially affect the basic and novel characteristics of the
composition).
5
regard, the examiner does not argue that it would have been
obvious to remove polystyrene from Budzinski’s composition but
instead takes the basic position that polystyrene is not
excluded by the aforenoted claim language. In particular, the
examiner seems to believe that no showing has been made that
the presence of polystyrene would affect the basic and novel
characteristics of the here claimed composition. 1
From our perspective, however, Budzinski’s teaching, that
polystyrene enables patentee’s vinylidene fluoride polymer and
plasticizer combination to be used as a plastisol vehicle for
printing inks, suggests that polystyrene would have a similar
affect on the vinylidene fluoride polymer/plasticizer
combination defined by appealed claim 1. Plainly, the
transformation of the here claimed composition into a
plastisol would be antithetical to the pipe-making use
intended by the appellants for this composition. It follows
that the Budzinski reference itself would appear to show that
the presence of polystyrene would materially affect the basic
Appeal No. 1998-0652
Application No. 08/188,417
6
and novel characteristics of the appealed claim 1 composition
and thus is excluded by the “consisting essentially of”
language of this claim.
In light of the foregoing, we are convinced that the
reference evidence adduced by the examiner fails to establish
a prima facie case of obviousness within the meaning of 35
U.S.C.
§ 103. As a consequence, the examiner’s section 103 rejection
of the appealed claims as being unpatentable over Budzinski
cannot be sustained.
The decision of the examiner is reversed.
REVERSED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Catherine Timm ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
Appeal No. 1998-0652
Application No. 08/188,417
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)
)
Beverly A. Pawlikowski )
Administrative Patent Judge )
BRG:tdl
Appeal No. 1998-0652
Application No. 08/188,417
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