Ex Parte Levy

Board of Patent Appeals and Interferences

Feb 27, 2009

10614114 (B.P.A.I. Feb. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RICHARD LEVY
______________

Appeal 2008-2325
Application 10/614,114
Technology Center 1700
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Decided:1 February 27, 2009
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Before CHUNG K. PAK, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner rejecting for at least the second time claims 57 through 63,

1 The two month time period for filing an appeal or commencing a civil
action specified in 37 C.F.R. § 1.304, begins to run from the “Decided” date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-2325
Application 10/614,114
65 through 71, 73, 76, and 87 through 91 in the Office Action mailed August
29, 2006. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2006).
We affirm-in-part the decision of the Primary Examiner.
Claim 57 illustrates Appellant’s invention of a substrate coated with
an essentially water-free composition, and is representative of the claims on
appeal:
57. A substrate coated with an essentially water-free composition,
wherein said composition comprises a superabsorbent polymer that absorbs
greater than 100 times its weight in water in combination with a material for
lubricating a surface wherein said material for lubricating a surface
comprises:
(1) a lubricating metal and alloy thereof, lubricating metal
chalcogenide, halide, carbonate, silicate or phosphate, or a particulate
lubricating metal nitride, or a carbon lubricant; or
(2) a silicate ester, polyphenyl ether, organic phosphate, biphenyl,
phenanthrene, or phthalocyanine compound;
(3) said material for lubricating a surface optionally containing a
lubricant comprising an organic lubricant, inorganic lubricant, or a lubricant
additive;
(4) or a mixture thereof.
The Examiner relies upon the evidence in these references (Ans. 3): 2
Petinelli 4,621,169 Nov. 4, 1986
Marciano-Agostinelli 5,049,593 Sep. 17, 1991
Freeman 5,218,011 Jun. 8, 1993
Appellant requests review of the following grounds of rejection
advanced on appeal (App. Br. 5-6):3,4

2 We consider these documents: Appeal Brief filed January 10, 2007;
Examiner’s Answer mailed May 17, 2007; Reply Brief filed July 15, 2007.
3 The Examiner withdrew the ground of rejection of claims 73 and 76 under
35 U.S.C. § 112, second paragraph. Ans. 2.
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Appeal 2008-2325
Application 10/614,114
claims 57, 65, and 91 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention (Ans. 4);
claims 57 through 63, 65 through 71, and 87 through 90 under 35 U.S.C.
§ 102(b) as unpatentable over Freeman (Ans. 6); and
claims 57 through 63, 65 through 71, 73, 76, and 87 through 91 under
35 U.S.C. § 103(a) as unpatentable over Petinelli in view of Freeman and
Marciano-Agostinelli (Ans. 7).
Considering first the ground of rejection of claims 57 and 65 under
§ 112, second paragraph, we agree with Appellant’s arguments that the plain
language of the claims would specify a material for lubricating a surface that
comprises at least the ingredient (1) or (2), and optionally with another
ingredient (3), as well as any mixtures of these ingredients. App. Br., e.g., 8.
Thus, we disagree with the Examiner position that the language of these
claims as a whole, considered in light of the written description in the
Specification as it would be interpreted by one of ordinary skill in the art as
discussed above, in fact fails sets out and circumscribes the claimed sample
processing device with a reasonable degree of precision and particularity.
Ans. 4 and 10-12. See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971); see
also, e.g., In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); The
Beachcombers Int’l. v. WildeWood Creative Prods., 31 F.3d 1154, 1158
(Fed. Cir. 1994); Orthokinetics, Inc. v. Safety Travel Chairs. Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986).
Accordingly, in the absence of a prima facie case, we reverse the

4 Appellant acknowledges these related appeals: Appeal 2008-2981 in
Application 08/943,125; Appeal 2009-0443 in Application 09/357,957; and
Appeal 2009-0494 in Application 09/359,809. App. Br. 2; Reply Br. 1-2.
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Appeal 2008-2325
Application 10/614,114
ground of rejection of claims 57 and 65 under 35 U.S.C. § 112, second
paragraph.
We consider the language of claim 91 as it stands of record as copied
at page 3 of the Answer, that includes the phrase “surface comprises”
between ingredient (1), which clause reads as in claim 57, and the recitation
of lubricating materials falling within the lubricating materials recited in
ingredient (1). Appellant states that the recitation of ingredients (1) in claim
91 should include the open-ended term “comprising” at the end thereof and
identifies the cited phrase as a typographical error which he will correct.
Reply Br. 4-5. We determine claim 91 in the proposed format would satisfy
the provisions of § 112, second paragraph. See Ans., e.g., 5 and 12-13;
Reply Br. 4-5. See Moore, 439 F.2d at 1235; see also, e.g., Warmerdam,
33 F.3d at 1361; Beachcombers Int’l., 31 F.3d at 1158; Orthokinetics,
806 F.2d at 1576.
However, we affirm the ground of rejection of claim 91, as it stands of
record, under 35 U.S.C. § 112, second paragraph.
The grounds of rejection under §§ 102(b) and 103(a) turn on whether
Freeman would have described a superabsorbent polymer that absorbs
greater than 100 times its weight in water to one of ordinary skill in this art.
The Examiner contends the superabsorbent material polymers, including
commercially available FAVOR C96 disclosed in Freeman “are the same
superabsorbent polymers disclosed by applicants [sic] as absorbing greater
than 100 times its weight in water.” Ans., e.g., 6, 7-9, 13-14, and 17, citing,
e.g., Freeman col. 6, ll. 20-28; col. 10, ll. 32-25, and Examples. Appellant
contends the Specification “does not identify FAVOR® C96 as a
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Appeal 2008-2325
Application 10/614,114
superabsorbent polymer having a water absorbency greater than 100, and the
manufacture . . . sells many polymers under the FAVOR® brand,” and the
Examiner has not established that FAVOR® C96 has the required
absorbency. Reply Br. 6.
We find Appellant discloses superabsorbent polymers that absorb
“from about 25 to greater than 100 times its weight in water,” and among
other things, FAVOR® C, and FAVOR® CA 100. Spec., e.g., 22-25 and
Examples.
We agree with Appellant that the Examiner has not established on the
record that Freeman would have described a superabsorbent polymer that
absorbs greater than 100 times its weight in water to one of ordinary skill in
this art. Indeed, we find no evidence in the disclosure in the Specification
which establishes that Freeman does so, and the Examiner does not
specifically identified any such disclosure.
Accordingly, the evidence of record does not support the Examiner’s
conclusions of prima facie anticipation and of prima facie obviousness
necessary to establish grounds of rejection under 35 U.S.C. §§ 102(b) and
103(a), and accordingly, we reverse these grounds of rejection. See, e.g.,
In re Sullivan, 498 F.3d 1345, 1351 (Fed. Cir. 2007); In re Spada, 911 F.2d
705, 707 n.3 (Fed. Cir. 1990).
The Primary Examiner’s decision is affirmed-in-part.

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Appeal 2008-2325
Application 10/614,114
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

PL Initial:
sld

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