Ex parte Legare et al.

Board of Patent Appeals and Interferences

Mar 4, 1999

08016644 (B.P.A.I. Mar. 4, 1999)

Application for patent filed February 12, 1993. This1
application is a continuation-in-part of Application No.
07/747,318 filed August 20, 1991, now abandoned; which is a
continuation-in-part of Application No. 07/347,329 filed April
24, 1989, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN M. LEGARE and ANESTIS L. LOGOTHETIS
____________
Appeal No. 95-3985
Application No. 08/016,6441
____________
ON BRIEF
____________
Before KIMLIN, OWENS and LIEBERMAN, Administrative Patent
Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-3985
Application No. 08/016,644
2
This is a decision on an appeal from the final rejection
of claims 1 to 17 which are all the claims in the application.
THE INVENTION
Appellants’ invention is drawn to a process of
fluorinating a fluoroelastomer which had been previously
crosslinked by exposure to radiation. Fluorination occurs at
a temperature of
-50°C to about 200°C and at a partial pressure of about 25 kPa
to about 5.0 MPa. The purpose of the invention is to improve
the stability of fluoroelastomers by destroying the presence
of unstable groups within the crosslinked fluoroelastomer.
The absence of unstable groups results in the reduction of
corrosive outgassing. Claim 1 is illustrative and read as
follows.
1. A process for reducing the outgassing of a
crosslinked perfluoroelastomer, comprising, contacting, at a
temperature of about -50°C to about 200°C, fluorine at a
partial pressure of about 25 kPa to about 5.0 MPa, and a
perfluoroelastomer which has been crosslinked by exposure to
radiation.
THE REFERENCES
Appeal No. 95-3985
Application No. 08/016,644
The references of record cited by the examiner2
improperly excluded a reference to Lagow, relied upon by the
examiner in the rejection of claim 11. It is cited herein to
correct the record.
At the outset the record is unclear as to which of the3
rejected claims correspond with each set of references. The
examiner in the second Final Office Action, Paper No. 9, dated
(continued...)
3
Three new references cited herein were relied upon by
the examiner for the first time in the Supplemental Examiner’s
Answer. The references of record are:2
Bowers III (Bowers) 3,116,226 Dec.
31, 1963
Brizzolara et al. 3,682,872 Aug. 8,
1972
(Brizzolara)
Apotheker et al. 4,035,565 Jul. 12,
1977
(Apotheker)
Lagow et al. (Lagow) 4,621,107 Nov. 4,
1986
Imbalzano et al. 4,743,658 May 10,
1988
(Imbalzano)
Nakahara et al. 4,948,844 Aug. 14,
1990
(Nakahara)
Logothetis 4,972,038 Nov. 20,
1990
THE REJECTIONS
The rejections of record are as follows .3
Appeal No. 95-3985
Application No. 08/016,644
(...continued)3
August 16, 1994, rejected claims 1-9, 12 and 14-17 under 35
U.S.C. § 103(a) as unpatentable over Imbalzano in view of
Bowers and further rejected claims 1-10, 13 and 15-17 under 35
U.S.C.
§ 103(a) as unpatentable over Nakahara in view of Bowers. The
Examiner’s Answer additionally included claim 10 in the
rejection of Imbalzano in view of Bowers. Similarly, the
Brief, on page 4, line 3, incorrectly included claims 4-17 in
the same rejection. Presumably, this is a typographical
error. Appellants, clearly intended to state claims, “14-17.”
Likewise, the Examiner’s Answer additionally included claims
12 and 14 in the rejection of Nakahara in view of Bowers. The
rejected claims were further modified by the examiner in the
Supplemental Examiner’s Answer, at page 3, wherein the
rejections of claims 6, 10 and 17 were withdrawn, and three
new grounds of rejection were added for said claims 6, 10 and
17. The rejection of claim 12 as unpatentable over Imbalzano
in view of Bowers was omitted by the examiner in the
Supplemental Examiner’s Answer, the record being silent as to
its omission.
As there is no comment by the examiner on the record, and
no objection by appellants in their Appeal Brief, Reply Brief
and Reply To Supplemental Answer and to the New Ground Of
Rejection to the inclusion of these additional claims in the
rejections previously made of record by the examiner, we shall
consider the rejections of these claims to have been included
in the claimed subject matter before us for decision.
Accordingly, the rejection over Imbalzano in view of Bowers is
construed to include claim 12. Likewise the rejection over
Nakahara in view of Bowers is construed to include claims 12
and 14.
4
Claims 1-5, 7-9, 12 and 14-16 are rejected under 35
U.S.C.
§ 103(a) as unpatentable over Imbalzano in view of Bowers.
Claims 1-5, 7-9 and 12-16 are rejected under 35 U.S.C.
Appeal No. 95-3985
Application No. 08/016,644
5
§ 103(a) as unpatentable over Nakahara in view of Bowers.
Claim 11 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Imbalzano or Nakahara with Bowers in view of
Lagow (4,621,107).
The examiner, in the Supplemental Examiner’s Answer,
added three additional grounds of rejection which are as
follows.
Claims 6, 10 and 17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Imbalzano or Nakahara in combination with
Bowers and further in view of Logothetis (4,972,038).
Claims 6, 10 and 17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Imbalzano or Nakahara in combination with
Bowers and further in view of Brizzolara (3,682,872).
Claims 6, 10 and 17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Imbalzano or Nakahara in combination with
Bowers and further in view of Apotheker (4,035,565).
OPINION
At the outset, examiner and appellants have agreed upon
grouping of the claims into three separate and distinct
groups. In contrast to their position, our decision is based
Appeal No. 95-3985
Application No. 08/016,644
6
upon issues which in our analysis are common to and shared by
each of the rejections before us. We will therefore
substantially confine our discussion to claim 1.
Our decision is based upon the examiner’s reliance on
the teachings of Bowers. Claim 1 requires that the starting
material of the process be a fluoroelastomer which has been
crosslinked by exposure to radiation. Bowers teaches the
irradiation crosslinking of a fluorocarbon copolymer of
tetrafluoroethylene and fluoroolefins. The examiner asserts
that crosslinking of a fluorocarbon copolymer as taught by
Bowers is applicable to fluoropolymers in general. Hence, it
would have been obvious to the person having ordinary skill in
the art to crosslink the polymer of the primary references of
Imbalzano or Nakahara using irradiation as taught by Bowers,
Brief p. 4 and 5, to provide the starting material of claim 1.
We find the disclosure of Bowers inadequate and
insufficient for the reasons infra to support a rejection of
claim 1. Hence we will not sustain any of the above six
rejections.
The examiner, in the rejection of claim 1, suggests that
it would have been obvious to one of ordinary skill in the art
Appeal No. 95-3985
Application No. 08/016,644
7
at the time the invention was made to crosslink the
fluoroelastomers employed as, “[O]ne would have been motivated
by a reasonable expectation of success because of the
homologous nature of the fluoroelastomers taught by each
reference,” Final Office Action, Paper No. 9, page 3, lines 3-
5. We disagree with the examiner’s contention, that
fluorocarbon copolymers in general, could be expected to
crosslink upon irradiation because of their homologous nature.
In contrast to the examiner’s statement, Bowers
distinctly teaches that fluoropolymers do not act in a
homologous manner. Bowers discloses in column 1, lines 32-38,
that fluoro-carbons are known to degrade when subjected to
high energy ionizing radiation.
In fact, Bowers discloses that only a limited class of
fluorocarbon copolymers prepared from tetrafluoroethylene and
fluoroolefins defined by the structure CF =CXC F Y and the2 n 2n
cyclic perfluoroolefins taught in column 2, lines 3-5, become
crosslinked when subjected to ionizing radiation, column 2,
lines 1-21. The uniqueness of this class of fluorocarbon
polymers is seen in contrast to other fluoropolymers which may
either degrade or become crosslinked upon irradiation, Bowers,
Appeal No. 95-3985
Application No. 08/016,644
Polymer Handbook, J Brandrup et al., III-64 to III-65,4
Interrscience Publishers, New York, 1966.
8
id. Hence, there is no teaching in Bowers that enables one to
generalize from irradiation of his copolymers to
fluoropolymers in general. The examiner’s contention that
fluoropolymers are homologous is not supported.
Moreover, patentee’s statement that either degradation
or crosslinking may be obtained is supported by a teaching in
Table VI, bridging columns 7 and 8, that polytetra-
fluoroethylene and polyhexafluoro-propylene both degrade when
subjected to high energy ionizing radiation at temperatures in
excess of their glass transition temperature , the former4
having a decreased melt viscosity and the latter a
substantially lowered inherent viscosity. Accordingly, we
find that the person having ordinary skill in the art
following the teachings of Bowers with respect to irradiation
at temperatures in excess of the glass transition temperature
would not have known whether the fluoropolymers would have
degraded or crosslinked.
Finally, the examiner’s assertion that, “[A]ppellants’
claims encompass fluoropolymers containing terminally
Appeal No. 95-3985
Application No. 08/016,644
9
unsaturated perfluoroolefins,” Answer, page 8, lines 8-10, is
on its face correct. The issue, however, is not whether claim
1 encompasses the copolymer of Bowers, but whether the person
having ordinary skill in the art would have combined the
teachings of the Bowers reference with either of the primary
references to Imbalzano or Nakahara to obtain, the starting
material of claim 1, a crosslinked perfluoroelastomer.
Neither of these references teach a copolymer of
tetrafluoroethylene with substituted, terminally unsaturated
perfluoroolefins or omega hydroperfluoroolefins as required by
Bowers. Indeed, each teaches a copolymer of
tetrafluoroethylene with partially or fully fluorinated alkyl
vinyl ether. As we discussed supra, based on the teachings of
Bowers there would have been no expectation that irradiation
of the copolymers of either Imbalzano or Nakahara would result
in a crosslinked elastomer as opposed to a degraded copolymer.
Hence, there is no reason why the person having ordinary skill
in the art would have followed the teachings of Bowers and
irradiated a perfluoro tetra-fluoroethylene-alkyl vinyl ether
copolymer.
Accordingly, the decision of the examiner is reversed.
Appeal No. 95-3985
Application No. 08/016,644
10
Appeal No. 95-3985
Application No. 08/016,644
11
DECISION
The rejection of claims 1-5, 7-9, 12 and 14-16 under 35
U.S.C. § 103(a) as unpatentable over Imbalzano in view of
Bowers is reversed.
The rejection of claims 1-5, 7-9 and 12-16 under 35
U.S.C.
§ 103(a) as unpatentable over Nakahara in view of Bowers is
reversed.
The rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Imbalzano or Nakahara with Bowers in view of
Lagow (4,621,107) is reversed.
The rejection of claims 6, 10 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Imbalzano or Nakahara in
combination with Bowers and further in view of Logothetis is
reversed.
The rejection of claims 6, 10 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Imbalzano or Nakahara in
combination with Bowers and further in view of Brizzolara is
reversed.
The rejection of claims 6, 10 and 17 under 35 U.S.C.
Appeal No. 95-3985
Application No. 08/016,644
12
§ 103(a) as unpatentable over Imbalzano or Nakahara in
combination with Bowers and further in view of Apotheker is
reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
Appeal No. 95-3985
Application No. 08/016,644
13
bae
Appeal No. 95-3985
Application No. 08/016,644
14
Barbara C. Siegell
Legal - Patents
E.I. du Pont de Nemours and Company
Wilmington, DE 19898