Ex parte Lehmann et al.

Board of Patent Appeals and Interferences

Oct 30, 2000

08592898 (B.P.A.I. Oct. 30, 2000)

The opinion in support of the decision being entered
today was not written for publication and is not
precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte URS LEHMANN and MARCEL FRICK
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Appeal No. 1997-3189
Application 08/592,898
________________
ON BRIEF
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Before PAK, OWENS and WALTZ, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s maintaining the final
rejection as to claim 25 which was added after final rejection,
and claims 7-9 which were amended after final rejection to depend
therefrom.
Appeal No. 1997-3189
Application 08/592,898
THE INVENTION
Appellants claim a dye mixture which consists essentially of
at least one 1:2 cobalt complex dye of a formazan compound having
a specified formula, and at least one other dye of recited
formulas. Appellants state that “[t]he dye mixtures are
particularly suitable for dyeing or printing natural and
synthetic polyamide fibre materials, dyeings or prints having
good fastness being obtained” (abstract). Claim 25 is
illustrative and is appended to this decision.
THE REFERENCES
References relied upon by the examiner
Balliello et al. (Balliello) 4,944,768 Jul. 31, 1990
J.R. Geigy Co. (Geigy ‘438) 1,370,438 Jul. 15, 19641
(French patent application)
J.R. Geigy A.-G. (Geigy ‘464) 1,019,464 Feb. 9, 1966
(Great Britain patent application)
References relied upon by appellants
C.L. Bird, The Theory and Practice of Wool Dyeing 79 (The Society
of Dyers and Colourists 1972).
VII The Chemistry of Synthetic Dyes 93 (K. Venkataraman ed.,
Academic Press 1974) (Venkataraman).
Appeal No. 1997-3189
Application 08/592,898
Claims 7-9 and 25 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Balliello in view of Geigy ‘438 or
Geigy ‘464.
OPINION
We have carefully considered all of the arguments advanced
by appellants and the examiner and agree with the examiner that
the claimed invention would have been obvious to one of ordinary
skill in the art at the time of appellants’ invention over the
applied references. Accordingly, we affirm the aforementioned
rejection.
Appellants state that the claims stand or fall together
(brief, page 4). We therefore limit our discussion to one claim,
i.e., claim 25. See In re Ochiai, 71 F.3d 1565, 1566 n.2, 37
USPQ2d 1127, 1129 n.2 (Fed. Cir. 1995); 37 CFR
§ 1.192(c)(7)(1995). The examiner states that Geigy ‘438 and
Geigy ‘464 are equivalents (answer, page 3), and our review of
the references indicates that their disclosures are essentially
the same. Consequently, we limit our discussion to one of the
Appeal No. 1997-3189
Application 08/592,898
(answer, page 3) that all of the dyes in claim 25 except those of
formula 8 are exemplified in columns 3-7 of Balliello and that
Balliello discloses use of mixtures of dyes of the types in
columns 3-7 together with formazan dyes (col. 1, lines 29-60).
Appellants do not challenge this finding. Thus, the question to
be decided is whether one of ordinary skill in the art would have
been led by the references to use dyes 26 and 53 of Geigy ‘464 in
combination with the dyes in columns 3-7 of Balliello which fall
within the scope of appellants’ formulas.
Appellants argue that Balliello merely makes reference at
one point to formazan dyes, among many other types of dyes, lists
nearly all metals normally used in formazan dyes, does not
indicate whether 1:1 of 1:2 metal complex formazan dyes should be
used and what substituents should be present in those dyes, and
discloses azo dyes as the only preferred metal complex dyes
(brief, pages 4-5). Geigy ‘464, appellants argue, does not
suggest using mixtures of cobalt complex formazan dyes with any
other type of dye (brief, page 6). In appellants’ view, it would
Appeal No. 1997-3189
Application 08/592,898
a prima facie case of obviousness of appellants’ claimed
invention.
Balliello teaches that the dyes are useful for dying wool
and polyamides and can be in the form of a mixture of dyes
including formazan dyes (col. 1, lines 9-12 and 29-60).
Geigy ‘464 teaches that the disclosed formazan dyes are useful
for dying wool and polyamides (page 4, lines 47-50), and that
compared to previously known copper complexes which contain one
metal atom per mole of formazan dyestuff, they dye mixtures of
different qualities of wool more evenly and in shades which have
better light fastness (page 4, lines 59-62). This teaching that
the Geigy ‘464 formazan dyes are used for the same purpose as the
Balliello dyes and provide an improvement relative to previously
known formazan dyes would have fairly suggested, to one of
ordinary skill in the art, use of the Geigy ‘464 dyes as the
formazan dyes in the Balliello mixtures.
Geigy ‘464 exemplifies 80 dyes, two of which, as discussed
above, fall within the scope of formula 8 of appellants’
Appeal No. 1997-3189
Application 08/592,898
are exemplified. However, the fact that many are disclosed would
not have made any of them less obvious, particularly where, as
here, the formazan dyes recited in appellants’ claim are used for
the identical purpose taught by the reference. See Merck & Co.
v. Biocraft Laboratories, Inc., 874 F.2d 804, 807, 10 USPQ2d
1843, 1846 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re
Lemin, 332 F.2d 839, 841, 141 USPQ 814, 815 (CCPA 1964).
Appellants’ above-noted argument that Geigy ‘464 does not
disclose use of the formazan dyes in combination with other dyes
is not persuasive because use of such mixtures is disclosed by
Balliello (col. 1, lines 53-60). Appellants’ above-noted
argument that the only metal complex dyes which Geigy ‘464
indicates as being preferable are azo dyes is not convincing
because the reference is not limited to its preferred
embodiments. See In re Kohler, 475 F.2d 651, 653, 177 USPQ 399,
400 (CCPA 1973); In re Mills, 470 F.2d 649, 651, 176 USPQ 196,
198 (CCPA 1972). Instead, all disclosures in the reference must
be evaluated for what they would have fairly suggested to one of
Appeal No. 1997-3189
Application 08/592,898
to try, the teachings in the references discussed above, i.e.,
that mixtures of Balliello’ exemplified dyes within appellants’
formulas can be used in combination with formazan dyes for dying
wool and polyamides and that the Geigy ‘464 dyes are beneficial
relative to known formazan dyes for the same purpose, would have
provided one of ordinary skill in the art with both a motivation
to use the Geigy ‘464 formazan dyes in admixture with Balliello’s
exemplified dyes within appellants’ formulas, and with a
reasonable expectation of success in doing so. Thus, such a
combination of dyes would have been prima facie obvious to one of
ordinary skill in the art. See In re Vaeck, 947 F.2d 488, 493,
20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re O’Farrell, 853 F.2d
894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988).
Appellants argue, in reliance upon In re Baird, 16 F.3d 380,
29 USPQ2d 1550 (Fed. Cir. 1994), that there is no limit on
Balliello’s formazan dyes (brief, page 5). Unlike Baird,
however, where a nondisclosed specie of a very large genus was
claimed and nothing led to that specie, see Baird, 16 F.3d at
Appeal No. 1997-3189
Application 08/592,898
In support of appellants’ argument that the applied
references would have rendered the claimed invention merely
obvious to try, appellants rely upon In re Geiger, 815 F.2d 686,
2 USPQ2d 1276 (Fed. Cir. 1987). In that case, however, the court
did not find a suggestion in the references, two of which were
directed toward treating cooling water and one of which was
directed toward treating boiler water, to combine the materials
disclosed in each reference. See Geiger, 815 USPQ at 688, 2
USPQ2d at 1278. In the present case, as discussed above, the
dyes in both references are used for the same purpose, and
Balliello discloses using formazan dyes, which are the type of
dye disclosed by Geigy ‘464, in Balliello’s dye mixture. Thus,
unlike in Geiger, the references in the present case would have
fairly suggested, to one of ordinary skill in the art, combining
the dyes in these references.
Appellants argue that Venkataraman’s disclosure that “[t]he
behavior of dyes when applied from a mixture is in many cases
quite different from their behavior when applied as individual
Appeal No. 1997-3189
Application 08/592,898
suggested, to one of ordinary skill in the art, using formazan
dyes in combination with Balliello’s dyes falling within
appellants’ formulas.
Appellants argue that Bird indicates that one of ordinary
skill in the art would have been aware that dyes should be
selected such that their exhaustion and migration rates are
nearly the same and there is a high degree of compatibility of
the dyes (brief, pages 8-9). Bird teaches that the dyes in dye
mixtures should be as alike as possible in fastness
characteristics and dying behavior so they exhaust at the same
rate such that as the dyed garment fades, it becomes paler
without changing hue (page 79). In the present case, the
teachings that Balliello’s dyes which fall within appellants’
formulas are useful in admixture with formazan dyes, and the
teachings that both Balliello’s dyes and those of Geigy ‘464 are
useful for dying the same materials, i.e., wool and polyamides,
would have provided one of ordinary skill in the art with a
reasonable expectation that the dyeing characteristics of
Appeal No. 1997-3189
Application 08/592,898
absolute certainty, is all that is required. See O’Farrell, 853
F.2d at 902, 7 USPQ2d at 1680.
Because a prima facie case of obviousness has been
established which has not been effectively rebutted by
appellants, we affirm the examiner’s rejection.
DECISION
The rejection of claims 7-9 and 25 under 35 U.S.C. § 103
over Balliello in view of Geigy ‘438 or Geigy ‘464 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
Appeal No. 1997-3189
Application 08/592,898
Michael W. Glynn
CIBA Geigy Corporation
Patent Department
540 White Plains Road
P.O. Box 2005
Tarrytown, NY 10591-9905