Ex Parte Lin et al

Board of Patent Appeals and Interferences

Apr 19, 2011

11755159 (B.P.A.I. Apr. 19, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/755,159 05/30/2007 Chiu-Sing Lin LC-606/US 8669
31217 7590 04/20/2011
Loctite Corporation
One Henkel Way
Rocky Hill, CT 06067
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
04/20/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CHIU-SING LIN,
Shingo Tsuno, Rajat K. Agarwal, and Thomas Fay-Oy Lim
________________

Appeal 2010-010391
Application 11/755,159
Technology Center 1700
________________

Before CHUNG K. PAK, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 See our Opinions in related Appeals 2010-008140 and 2010-003601.
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Application 11/755,159

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A. Introduction2
Chiu-Sing Lin, Shingo Tsuno, Rajat K. Agarwal, and Thomas Fay-Oy
Lim (“Lin”) timely appeal under 35 U.S.C. § 134(a) from the final rejection3
of claims 1-5, 7-14, 16, and 18-20, which are all of the pending claims. We
have jurisdiction. 35 U.S.C. § 6. We AFFIRM-IN-PART.
The subject matter on appeal is related closely to the subject matter in
two other appeals before us, which we decide simultaneously:
Appeal 2010-003601 (11/549,278, filed 13 October 2006,
claiming the benefit of 60/730,351, filed 26 October 2005;
“3601 Appeal”).
Appeal 2010-008140 (11/535,287, filed 26 September 2006,
claiming the benefit of 60/730,351, filed 26 October 2005;
“8140 Appeal”).
As will be discussed in more detail infra to the extent necessary to provide
context and to resolve the dispositive issues in this appeal, certain major
components are shared in various embodiments of the inventions covered by
the appealed claims of the three applications.
The claimed subject matter in each application relates to cured
compositions said to be useful as gaskets, particularly in internal combustion
engines or transmissions, where they may be exposed to motor oils or

2 Application 11/755,159, Polyacrylate Compositions, filed 30 May 2007,
claiming the benefit under § 120 of copending application 11/535,287,
which was filed 26 September 2006. (Spec. 1; oath). The Specification is
referred to as the “159 Specification,” and is cited as “Spec.” The real party
in interest is listed as Henkel Corp. (Appeal Brief, filed 8 February 2010
(“Br.”), 8.)
3 Office action mailed 11 September 2009.
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transmission fluids. (Spec. 1 [0002]-[0003].) The contact with such
hydrocarbon fluids is said to shrink the polyacrylate compositions often used
for gaskets in such machines, due, e.g., to the dissolution of additives such
as plasticizers. (Id. at 1-2 [0004].) The inventive compositions in each
application are based on a bis-silyl-substituted hydrocarbyl diradical having
at least one acrylate linkage (“bis-silyl component”). (Id. at 6 [0022].)
In specific embodiments, the hydrocarbyl diradicals are poly(meth)acrylates.
(Id. at 7 [0025].) According to the 159 Specification embodiments of the
bis-silyl compounds are available commercially. (Id.)
According to the 159 Specification, polyacrylates useful for gaskets
are often very viscous, and many known diluents are incompatible with the
polyacrylates, being at best poorly soluble in, and therefore often phase-
separating from, the polyacrylates. (Spec 2 [0005].) The problems of high
viscosity and incompatibility are said to be overcome by including a
sulfonate (claims 1-5, 7-14, 16, and 18-20) or phosphonate diluent
(claims 19 and 20). (Spec. 3 [0011], 9 [0028] to [0029].) In certain
embodiments, claimed compositions can contain an amine antioxidant
having a specified phenylene diamine (“PDA”) or diphenyl amine (“DPA”)
structure (id. at 9 [0031] to 12 [0036]; claims 2-5). In other embodiments,
the claimed compositions contain shrinkage-reducing components such as
polyolefins (Spec. 12 [0037] to 14 [0040]; claims 8-14, 16, and 18.)
The 159 Specification teaches further that the shrinkage reducing component
can be polyolefin particles, a reactive fluid, or a combination of the two (id.
at 13 [0038]), although the reactive fluid does not appear to be further
described. Embodiments of the antioxidant component and the shrinkage
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Application 11/755,159

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reduction component are said to be commercially available.
(Id. at 10 [0032] to 12 [0033]); 13 [0039], respectively.)
Compositions of the 287 Application of the 8140 Appeal are required
to contain a specified amine antioxidant. (287 Spec. 2 [0006] to 3 [0008];
7 [0023] to 10 [0028]; claim 1.) In certain embodiments of
the 287 Application, a further shrinkage reducing component is required.
(Id. at 11 [0029] to 12 [0032]; claims 7-12, 15, and 16.) The sulfonate ester
and phosphonate ester diluents are neither claimed nor disclosed in
the 287 Specification.
Compositions of the 278 Application of the 3601 Appeal are required
to contain the bis-silyl component and the shrinkage reducing component.
The amine antioxidant, and the sulfonate ester and phosphonate ester
diluents are neither claimed nor disclosed in the 278 Specification.
Representative Claim 1 of the 159 Application reads:
1. An uncured gasket composition curable in place on a first
surface, comprising:
a (meth)acrylate component comprising a silyl-
functionalized poly(acrylate); and
a diluent embraced by the following structure:

wherein Z is S,
X and Y may be the same or different and may be
hydroxy, alkyl, alkenyl, aryl, aralkyl, aralkenyl,
alkoxy, alkenoxy and aryloxy and
A is =O, or alkoxy, alkenoxy or aryloxy.
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(Claims App., Br. 61.)
Claim 2 depends from claim 1 and specifies the structure of the silyl-
functionalized poly(acrylate) to be

wherein each R1 is independently selected from a Cl to C6 alkyl, each R2 is
independently selected from a C1 to C6 alkyl, a is integer from 0-3, q is an
integer from 2 to about 1,000, and A is a hydrocarbon diradical containing at
least one (meth)acrylate linkage. (Claims App., Br. 61; Spec. 6 [0022].)
Claim 3 depends from claim 1 and requires the presence of phenylene
diamines (“PDA”) having structure (I) or diphenyl amines (“DPA”) having
structure (II), respectively. These compounds, which are substantially the
same as those described in the 287 Specification, are said to act as
antioxidants. (Claims App., Br. 61-62; Spec. 9 [0031] to 12 [0036].)
Claim 8 depends from claim 1 and adds the limitation that the
composition further comprises “at least one component which reduces
shrinkage of the cured composition upon exposure of the cured composition
to a hydrocarbon fluid, wherein the component is present in an amount
sufficient to reduce shrinkage of the cured composition when exposed to a
hydrocarbon fluid.” (Claims App., Br. 63.)
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Independent claim 19 covers compositions in which the silyl
functionalized poly(meth)acrylate has the structure shown in claim 2,4 and
adds the functional limitation that a cured product of the silyl functionalized
poly(meth)acrylate shrinks upon exposure to hydrocarbon fluid. Claim 19
further includes diluents in which Z is S or P (phosphorus), and requires the
presence of the shrinkage-reducing composition recited in claim 8. (Claims
App., Br. 65.)
The Examiner has maintained the following grounds of rejection:5
A. Claims 1, 2, 7, 14, and 18 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Nakagawa6 and Sugiyama. 7
B. Claim 19 stands rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Nakagawa and Siggel.8
C. Claims 3-5 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Nakagawa, Sugiyama, and
Kollmann.9

4 In claim 19, R2 is defined more broadly, including up to C10 alkyl.
5 Examiner’s Answer mailed 5 May 2010 (“Ans.”).
6 Yoshiki Nakagawa et al., Polymer, Processes for Producing Polymer, and
Composition, U.S. Patent 6,930,147 B1 (16 August 2005)
7 Akira Sugiyama and Takuya Kunitomo, Highly Weatherable Moisture-
Curable One-Component Polyurethane Compositions, U.S. Patent
Application Publication US 2004/0010076 A1 (2004)
8 Erhard Siggel et al., Method of Producing Dimensionally-Stable Injection
Molded Polyesters, U.S. Patent 3,504,080 (1970).
9 Georg Kollmann et al., Room-Temperature Vulcanizing Condensation-
Crosslinking Silicone Rubbers, U.S. Patent 6,172,150 B1 (2001).
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D. Claims 8-13 and 20 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Nakagawa, Sugiyama,
and Siggel.
E. Claim 19 stands rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Nakagawa and Poppo.10
F. Claims 8-12 and 20 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Nakagawa, Sugiyama,
and Poppo.
G. Claim 16 stands rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Nakagawa, Sugiyama, Poppo
and Bair.11
H. Claims 1-5, 7-14, 16, and 18-20 stand provisionally rejected
under obviousness-type double patenting in view of claims
1, 3, 4, 6-13, and 15 of copending application 11/535,287,
Nakagawa, and Sugiyama.
I. Claims 1, 2, 8-13, 16, and 18-20 stand provisionally
rejected under obviousness-type double patenting in view
of claims 1-3, 5, 6, 27, and 30 of copending application
11/549,278, Nakagawa, Sugiyama, and Kollmann.
The Examiner has withdrawn a rejection under § 112(1), as well as
rejections in view of Kawakami (US 2006/0089431 A1) and Wingrove
(US 4,767,809). (Ans. 3.)
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.

10 Joseph M. Poppo, Acrylic Adhesive Sealant and Leak Sealing Method,
U.S. Patent 4,772,031 (1988).
11 Thomas I. Bair and Dimitri P. Zafiroglu, Article for Absorbing Liquids,
U.S. Patent 4,965,129 (1990).
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Initially, we find that the only claims argued with reasonable
specificity that we need consider are independent claims 1 and 19. The
remaining appealed claims stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).
We also find that Lin has not addressed the substantive merits of the
provisional obviousness-type double patenting (“PODP”) rejections. Rather,
Lin argues that the PODP rejections are not ripe for appellate review, and
that “in the interest of judicial efficiency should be set aside until the
allegedly conflicting claims issue and actual rejections are imposed.”
(Br. 13.) In the Reply,12 Lin argues merely that the rejections are not under
review. (Reply 2.)
Two substantive issues resolve the prior art rejections in this appeal.
First, because we hold that the Examiner erred harmfully in relying on
Sugiyama as evidence that it would have been obvious to add sulfonate
esters as plasticizers to the compositions suggested by Nakagawa, we
reverse Rejections A, C, D, F, and G. Because we hold the Examiner erred
harmfully in relying on either Siggel or Poppo as evidence of adding
polyolefin or polyethylene particles, respectively, to compositions disclosed
by Nakagawa, we reverse Rejections B and E.13

12 Reply Brief filed 30 June 2010.
13 For the reasons set out in related appeal 2010-008140, we are not
persuaded of harmful error in the Examiner’s reliance on Nakagawa for
evidence of the obviousness of the bis-silyl poly(meth)acrylate compounds,
or in the Examiner’s reliance on Kollmann and Nakagawa as evidence of the
obviousness of using aromatic amines recited in claims 3-5 as antioxidants.
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As the Examiner finds (Ans. 6), Nakagawa teaches (Nakagawa
col. 23, ll. 42-45) that plasticizers are “not particularly restricted but,
according to the physical property or appearance characteristic which is to
be adjusted, use may be made of, for example, . . . .” Nakagawa names a
variety of plasticizers, including carboxylic acid esters and phosphate esters
such as tricresyl phosphate [(CH3-C6H4-O)3P(=O)] and tributyl phosphate
[(Bu-O)3P(=O)] as suitable plasticizers for the disclosed curable
compositions. (Id. at ll. 53-54.) Nakagawa does not, however, describe
sulfonate esters as plasticizers for the compositions. (Ans. 6.) The
Examiner relies on Sugiyama to correct this deficiency.
Sugiyama describes moisture curable one-component compositions
that will form a polyurethane resin upon curing. (Sugiyama 1 [0012].) Such
materials are said to be useful as sealants, adhesives, and water-proofing
materials for roofs. (Id. at [0002].) The disclosed compositions comprise a
main component such as a polypropylene oxide with an isocyanate group at
each end (id. at 1-2 [0022]); a photocurable material, such as unsaturated
acrylic compounds; a hindered amine photostabilizer; and blocked amines
that form primary or secondary amine groups upon exposure to moisture.
(Id. at 1 [0012]-[0013].) A further preferred additive is a “thixotropy
endowing agent” that comprises, in the most relevant embodiments, a
polyurea compound. (Id. at [0015]-[0017], and [0019].) According to
Sugiyama, the thixotropy endowing agent is prepared by dissolving the
polyisocyanate and monoamine in an ester plasticizer inert to isocyanate and
subjecting the mixture to conventional condensation conditions.
(Id. at 4 [0057].) Appropriate plasticizers are said to include a number of
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carboxylic acid esters, sulfonate esters, and phosphate esters. (Id. at [0058]
and 5 [0067].)
According to Sugiyama, the compositions are prepared by mixing the
components. (Sugiyama 5 [0070].) The photocurable material forms a film
at the surface of the cured product, while the hindered amine photostabilizer
absorbs UV radiation, thereby providing high weatherability for the cured
product. (Id.) The blocked amine compound is said to provide adequate
curability and also to react with the photocurable material, thereby further
improving the weatherability. (Id. at [0072].) The polyurea thixotropy
endowing agent is said to provide excellent storage stability and thixotropy
(coating and filling workabilities) of the composition. (Id. at 6 [0073].)
The Examiner argues that Sugiyama shows that phosphate esters and
sulfonate esters are equivalent in their function as plasticizers, and that it
would therefore have been obvious to use sulfonate esters in place of the
phosphate esters taught by Nakayama as plasticizers in the silyl-terminated
poly(meth)acrylate compositions. (Ans. 8.) Lin, however, argues that
persons skilled in the arts of adhesives and sealants recognize that sealant
formulations have different properties depending on the base resin, and that
“minor formulation changes often result in major property changes.”
(Br. 24, citing Petrie,14 464 and 469.) In contrast, the Examiner has not
directed our attention to credible evidence that the polyurea-polyester-
polyacrylic compositions described by Sugiyama would have been regarded
as sufficiently similar to the silyl-terminated poly(meth)acrylate

14 EDWARD M. PETRIE, HANDBOOK OF ADHESIVES AND SEALANTS (McGraw-
Hill 2000), excerpt filed in the Evidence Appendix to the Brief.
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compositions suggested by Nakagawa as to provide a suggestion for the
substitution or a reasonable expectation that the plasticizer substitution
would be successful. Given the extremely broad suggestion of plasticizers
by Nakagawa for a very broad range of polymeric compositions, and the
relatively narrow disclosure of plasticizers by Sugiyama for a much
narrower range of polymers, we find the weight of the evidence of record
supports Lin. Moreover, the Examiner has relied on no reference other than
Sugiyama for the use of sulfonate esters as plasticizers.
Accordingly, we REVERSE all rejections based on Sugiyama.
To reject claim 19, which requires, inter alia, the presence of a
hydrocarbon-induced shrinkage reducing component, the Examiner
(Rejection B) relies15 on Siggel as evidence that it would have been obvious
to use high molecular weight polymers of C3-6 monoolefins as a filler for bis-
silyl terminated polyacrylates suggested by Nakagawa in order to obtain a
significant improvement in dimensional stability, i.e., reduction in shrinkage.
(Ans. 6-7.) The difficulty with the Examiner’s argument is that Siggel is
concerned with the dimensional stability of injection-molded polyesters such
as polyethylene terephthalate (“PET”). (Siggel col. 1, ll. 19-32 and 54-61.)
The weight of the evidence of record indicates, however, that PET is highly
resistant to many hydrocarbon liquids.16 The Examiner has not directed our

15 These arguments also apply to claim 8 and its dependent claims, which we
need not consider separately due to the Examiner’s improper reliance on
Sugiyama.
16 EASTMAN CHEMICAL CO., CHEMICAL RESISTANCE OF EASTMAN PET 9921
(Eastman 2007), Table at 2, presented in the Evidence Appendix to the
Brief.
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attention to any credible evidence in the record that the ordinary worker
would have recognized, in the rather different poly(meth)acrylate-based
gasket materials suggested by Nakagawa, a structure or chemistry that would
have lead to problems similar to those confronted by Siggel. Although the
Examiner notes the disclosure of fillers by Nakagawa (Ans. 6; see
Nakagawa col. 23, ll. 9-42, the Examiner has not established a
correspondence in chemical composition or in function between any of the
fillers described by Nakagawa, which do not include polyolefin resins, with
the polyolefin fillers described by Siggel. Nor has the Examiner come
forward with any credible evidence that a polyolefin filler would have been
suitable for obtaining high strength cured products (Nakagawa col. 23,
ll. 22-29, listing fillers such as fumed silica) or for obtaining low strength
but high elongation cured products (id. at ll. 30-36, listing fillers such as
titanium oxide).
Accordingly, we REVERSE the rejections based on the combined
teachings of Nakagawa and Siggel.
Further regarding claim 19, the Examiner also relies on Poppo
(Rejection E) as evidence that it would have been obvious to add
polyethylene particles to the silyl-terminated polyacrylates suggested by
Nakagawa in order to reduce the shrinkage and increase the adhesion of
those compositions. (Ans. 9-10.) The difficulty with this position is that the
Examiner has not come forward with credible evidence that the reduced
shrinkage and the increased adhesive strength resulting in the Poppo
compositions would have been expected, reasonably, in the relevant
Nakagawa compositions. As Lin points out (Br. 46-47), Poppo describes a
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sealant composition that is introduced into a mold that encases the leaking
area of a pipe. The sealant is composed of an elastomeric modified acrylic
adhesive such as those described by U.S. Patent 3,873,640 to Owston,17 a
blowing agent, fillers, plasticizers, and an adhesive-curing catalyst. Gas
generated by decomposition of the blowing agent assists the flow of the
sealant into the interstices of the pipe. (Poppo col. 1, ll. 59-65.) The filler
and plasticizer are said to increase the adhesive strength and flexibility of the
cured sealant. (Id. at col. 1, l. 67 to col. 2, l. 2.) The resulting seal is said to
be a “dense highly cross-linked solid with numerous macroscopic isolated
internal blowholes” that is impervious to moisture and highly resistant to
chemicals. (Id. at col. 2, ll. 4-7.)
The Examiner does not dispute the composition of the representative
adhesive used by Poppo and reproduced in the Brief at page 47. Notably,
the Examiner does not cite (Ans. 6) any monomers taught by Nakagawa or
suggested in the 278 Specification that correspond to the hydroxyethyl
methacrylate capped urethane or the methacrylic acid precursors of the
adhesive sealants taught by Poppo. Rather, the Examiner appears to assume
that the composition of the Poppo sealant is irrelevant in view of Poppo’s
teaching (Poppo, col. 4, ll. 30-33) of addition of polyethylene powder to
reduce shrinkage of the cured adhesive (See Ans. 15, 16.) Further, the
Examiner appears to assume that that teaching applies directly to the
compositions taught by Nakagawa. (Id.)

17 Owston is cited by Poppo at col. 4, l. 21, and was discussed by Lin during
prosecution in the response filed 3 November 2008, at pages 21-22.
According to Lin, Owston describes adhesive compositions especially suited
for binding to polyvinyl chloride. (Br. 47.)
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The evidence submitted by Lin, e.g., Petrie, indicates that the
performance and properties of sealant and adhesive formulations depend
heavily on the base resin materials. (Br. 42; Petrie 464, 469.) Petrie
indicates further that a variety of mechanisms can underlie shrinkage.
(Petrie, para. bridging 469-70.) This evidence undermines the Examiner’s
apparent assumptions that there is a single, universal cause of shrinkage in
cross-linked polymeric compositions, and that adding polyethylene particles
inevitably prevents or diminishes shrinkage in all compositions. In any
event, the Examiner has not come forward with evidence indicating that
there is a single, universal cause of shrinkage in cross-linked sealant
compositions, or that adding polyethylene particles inevitably prevents or
diminishes shrinkage in all sealant compositions. Nor has the Examiner
come forward with evidence indicating that, notwithstanding the differences
between the compositions described by Nakagawa and those described by
Poppo, a person having ordinary skill in the art would have expected the
effect of adding polyethylene particles to be substantially the same.18 Bair
(applied only against claim 16 in Rejection G) does not cure any of these
deficiencies. The Examiner’s failure to cite credible evidence supporting

18 We do not credit Lin’s arguments regarding the alleged resistance of cured
urethane sealants to hydrocarbon fluids (Br. 30) because that argument is
directly contradicted by the reference on which Lin relies. See, POLYMERIC
SYSTEMS, INC., CHEMICAL RESISTANCE OF CURED URETHANE SEALANTS 1
(presented in the Evidence Appendix to the Brief), column 1, listing
hydrocarbon solvents, including benzene, Diesel fuel and gasoline, mineral
spirits, lacquer- and paint-thinner, toluene, and xylene, that are said to cause
softening and swelling on long-term immersion. Although urethane sealants
are said to be relatively impervious to lubricating oils, the class of
hydrocarbon liquids is far broader than such oils.
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these findings is fatal to the rejection. The weight of the evidence on these
rejections favors Lin.
Accordingly, we REVERSE the rejections based on the combined
teachings of Nakagawa and Poppo.
We are left with the provisional obviousness-type double patenting
rejections (“PODP”). Lin’s failure to argue the rejections on the merits
waives all such arguments in this appeal. 37 C.F.R. § 41.37(c)(1)(vii). See
also, Shinseki v. Sanders, 129 S.Ct. 1696, 1706 (2009) (citations omitted)
(“Lower court cases make clear that courts have correlated review of
ordinary administrative proceedings to appellate review of civil cases in this
respect. . . . [T]he party seeking reversal normally must explain why the
erroneous ruling caused harm.”) Of course, we have first to determine
whether the PODP rejections remain facially appropriate. In many cases, a
PODP will no longer be in condition for review when the Board considers
the case because the claims of the reference will have changed substantially;
or the copending application may have been abandoned. That is not the case
in this appeal with respect to the 278 and the 287Applications, as none of
the claims in either application changed after the final rejections were
entered on 29 and 28 January 2009, respectively.
Moreover, the USPTO has a long-standing policy, endorsed by the
predecessor of the Federal Circuit, of providing Board review of PODP
rejections. See, e.g., In re Mott, 539 F.2d 1291 (CCPA 1976) (reversing as
improperly final what should have been left as a provisional obviousness-
type double patenting rejection), and In re Wetterau, 356 F.2d 556, 558 n.2
(CCPA 1966) (noting the benefits to the applicant and to the PTO of the
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PODP rejection practice; the court considered the merits of the PODP on the
merits, including evidence of unexpected results). The PTO policy is set out
in The Manual of Patent Examining Procedure (“MPEP”) § 804 I.B.1
(rev. 5, August 2006). According to this guidance, when there are no other
rejections, the earliest filed claims (or those containing the fewest
limitations), should be allowed to issue without a terminal disclaimer, while
the obviousness-type double patenting rejection should be maintained in the
later-filed or more limited application.19
As for “judicial efficiency,” we perceive no efficiency in delaying the
determination of the merits of a final rejection by a Primary Examiner that
remains substantially unchanged on our consideration. Our decision,
whether affirming or reversing the rejection, becomes the final agency
determination and is binding on the Examiner unless the claims of either
application change in a substantial and material way, or unless the
evidentiary basis of the rejection changes substantially and materially. It
would serve no useful purpose to leave such an issue “hanging,” and
possibly subject to a further appeal without amendment to the claims or the
evidentiary record.
As described supra, the claims of the 278 Application in
the 3601 Appeal require the presence of the shrink-reducing component, but
not the amine antioxidant or the sulfonate or phosphonate diluent required

19 We understand the MPEP to provide guidance, not a complete response to
all possible situations in which PODP rejections might arise. The proper
procedure in each case must be determined on the particular facts and
circumstances.
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by the 159 Application. Claims 7-12, 15, and 16 of the 287 Application in
the 8140 Appeal require both the amine antioxidant and the shrinkage-
reducing component. Claims 1-5, 7-14, 16, 18, and 20 of
the 159 Application require the presence of a sulfonate diluent plasticizer,
and claims 8-13 require the presence of a shrinkage reducing component.
As we have determined that the prior art of record does not support the
obviousness of adding a sulfonate plasticizer to bis-silyl poly(meth)acrylate
compositions suggested by Nakamura, we conclude that the same is true
regarding the compositions claimed in the 278 Application and in
the 287 Application. We therefore REVERSE the PODP rejections of
claim 1 and the cited dependent claims, and claim 20.
However, in claim 19 of the 159 Application, the plasticizer may be a
phosphonate ester, and Nakagawa suggests phosphonate esters such as
tricresyl phosphate [(CH3PhO)3P=O] and tributyl phosphate [(buO)3P=O],
which are within the scope of the diluent recited in these claims. Thus, for
phosphate esters, the Examiner’s reliance on Sugiyama was harmless.20 Due
to the presence of the transitional term “comprising,” claim 19 is open to
additional components such as the amine antioxidants recited in the claims
of the 287 Application. Accordingly, we AFFIRM the rejection of claim 19
in view of the cited claims of the 287 Application, and also in view of the
cited claims of the 278 Application, both in view of the teachings of
Nakamura.

20 Cf. Rejections B and E of claim 19, reversed on other grounds.
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C. Order
We REVERSE the rejection of claims 1, 2, 7, 14, and 18 under
35 U.S.C. § 103(a) in view of the combined teachings of Nakagawa and
Sugiyama.
We REVERSE the rejection of claim 19 under 35 U.S.C. § 103(a) in
view of the combined teachings of Nakagawa and Siggel.
We REVERSE the rejection of claims 3-5 under 35 U.S.C. § 103(a) in
view of the combined teachings of Nakagawa, Sugiyama, and Kollmann.
We REVERSE the rejection of claims 8-13 and 20 under
35 U.S.C. § 103(a) in view of the combined teachings of Nakagawa,
Sugiyama, and Siggel.
We REVERSE the rejection of claim 19 under 35 U.S.C. § 103(a) in
view of the combined teachings of Nakagawa and Poppo.
We REVERSE the rejection of claims 8-12 and 20 under
35 U.S.C. § 103(a) in view of the combined teachings of Nakagawa,
Sugiyama, and Poppo.
We REVERSE the rejection of claim 16 under 35 U.S.C. § 103(a) in
view of the combined teachings of Nakagawa, Sugiyama, Poppo and Bair.
We REVERSE the provisional rejection of claims 1-5, 7-14, 16, 18,
and 20 under obviousness-type double patenting in view of claims 1, 3, 4,
6-13, and 15 of copending application 11/535,287, and the teachings of
Nakagawa, and Sugiyama.
Appeal 2010-010391
Application 11/755,159

19
We REVERSE the provisional rejection of claims 1, 2, 8-13, 16, 18,
and 20 under obviousness-type double patenting in view of claims 1-3, 5, 6,
27, and 30 of copending application 11/549,278, and the teachings of
Nakagawa, Sugiyama, and Kollmann.
We AFFIRM the provisional rejection of claim 19 under obviousness-
type double patenting in view of claims 1, 3, 4, 6-13, and 15 of copending
application 11/535,287, and the teachings of Nakagawa and Sugiyama.
We AFFIRM the provisional rejection of claims 19 under
obviousness-type double patenting in view of claims 1-3, 5, 6, 27, and 30 of
copending application 11/549,278, and the teachings of Nakagawa,
Sugiyama, and Kollmann.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
bar