Ex parte Mahood

Board of Patent Appeals and Interferences

Jan 5, 2001

08252511 (B.P.A.I. Jan. 5, 2001)

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publication and is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES A. MAHOOD
____________
Appeal No. 1996-3799
Application No. 08/252,511
____________
ON BRIEF
____________
Before JOHN D. SMITH, WALTZ, and DELMENDO, Administrative Patent
Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1 through 12,
which are all of the claims pending in the subject
application.
Claims 1 and 12 are illustrative of the claims on appeal
and are reproduced below:
Appeal No. 1996-3799
Application No. 08/252,511
2
1. A melt blend stabilizer composition
exhibiting enhanced hydrolytic stability comprising:
(A) a phosphorous compound selected from the
group consisting of phosphites and phosphonites,
said phosphorous compound being present at a level
of from 10 percent by weight to 90 percent by weight
based on the total weight of the stabilizer
composition,
(B) a hindered phenolic isocyanurate present at
a level of from 10 percent by weight to 90 percent
by weight based on the total weight of the
composition, and
(C) less than about 10 percent by weight
additional materials.
12. A method for making a stabilizer
composition exhibiting enhanced hydrolytic
stability, said method comprising:
(a) melt blending a phosphorous compound and a
hindered phenolic isocyanurate; said composition
comprising from 10 to 90 weight percent of said
phosphorous compound and from 10 to 90 weight
percent of said hindered phenolic isocyanurate based
on the total weight of the composition.
The subject matter on appeal relates to a melt blend
stabilizer composition comprising, in the recited amounts, (A)
a phosphite or phosphonite, (B) a hindered phenolic
isocyanurate, and (C) additional materials and to a method for
making a stabilizer composition. According to the appellant,
the claimed composition exhibits improved hydrolytic
stability. (Substitute appeal brief, page 2.)
Appeal No. 1996-3799
Application No. 08/252,511
The examiner has withdrawn the rejection of claims 11
through 12 under the first paragraph of 35 U.S.C. § 112.
(Examiner’s answer, page 3; final Office action, page 2.)
It appears that the substitute appeal brief (“Corrected2
Brief on Appeal” filed April 2, 1999), which eliminated
certain minor informalities in the original appeal brief
(Paper 8), has not been recorded in the “Contents” section of
the file wrapper. On return of this application, the examiner
should ensure that the substitute appeal brief is assigned a
paper number and is clerically entered.
3
The examiner relies upon the following prior art
references as evidence of unpatentability:
Gilles 4,025,486 May 24,
1977
Chaser 4,444,929 Apr. 24,
1984
Neri et al. (Neri) 4,957,956 Sep. 18,
1990
Claims 1 through 12 stand rejected under 35 U.S.C. § 103
as unpatentable over the combined teachings of Chaser, Gilles,
and Neri. (Examiner’s answer, pages 3-4.)1
Upon careful consideration of the entire record, we agree
with the appellant (substitute appeal brief, page 8) that the2
examiner has not established a prima facie case of obviousness
within the meaning of 35 U.S.C. § 103. Accordingly, we
reverse. The reasons for our determination follow.
Appeal No. 1996-3799
Application No. 08/252,511
4
Initially, we note that appealed claims 1 and 12 recite a
“melt blend stabilizer composition” and “melt blending a
phosphorous compound and a hindered phenolic isocyanurate,”
respectively. Although the specification does not expressly
define the term “melt blend” or “melt blending,” one skilled
in the relevant art would understand from a reading of the
entire specification that the term “melt blend” refers to the
blending or mixing of the stabilizer components under
conditions such that at least one of these components is in
molten form. (Specification, page 2, lines 19-30; page 9,
lines 20-26; page 10, lines 30-33.)
We now consider the teachings of the applied prior art
references. Chaser describes stabilizer systems for organic
materials in which sterically hindered 4-substituted-2,6-di-t-
butylphenyl bis(substituted phenyl) phosphites are used in
combination with hydroxyphenylalkyleneyl isocyanurates.
(Column 1, lines 32-39.) Although Chaser teaches that “the
stabilizer mixture is added” to the organic material (column
5, lines 30-39), the only description relating to a
“stabilizer mixture” is a solution or a suspension of the
stabilizer compounds in a solvent, which is evaporated
Appeal No. 1996-3799
Application No. 08/252,511
See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 9663
(Fed. Cir. 1985).
5
subsequent to mixing with the plastic (i.e., the organic
material). (Column 7, lines 62-65.)
Similarly, Gilles teaches the combination of a
hydroxyphenylalkyleneyl isocyanurate compound and a
pentaerythritol phosphite compound as an ultraviolet light
stabilizer for polyolefins. (Column 2, lines 15-18.)
According to Gilles, the stabilizer can be dispersed in
plastic materials by dissolving or suspending the stabilizer
compounds in a solvent such as acetone or benzene, mixing the
solution or suspension with the plastic in powder form, and
then evaporating the solvent. (Column 5, lines 53-58.)
While the patentability of appealed claim 1 rests on the
actual product made, the examiner has not alleged that a3
stabilizer composition made by a process that does not involve
melt blending (e.g., physical mixing) would form a product
that is indistinguishable from the claimed product. Nor do we
find any reasonable factual basis on this record for shifting
the burden of proof to the appellant to show that the products
are indeed distinguishable.
Appeal No. 1996-3799
Application No. 08/252,511
6
The examiner apparently realized that neither Chaser nor
Gilles describes a “melt blend stabilizer composition” as
required by appealed claim 1 or a method comprising “melt
blending” a phosphorous compound and a hindered phenolic
isocyanurate as required by appealed claim 12. To remedy this
deficiency, the examiner relied upon Neri. Specifically, the
examiner held as follows:
Since Neri et al. discloses that conventional
combinations of hindered phenols and phosphorus
compounds overcome their tendencies towards
hydrolysis when utilized in solid continuous and
dispersed particulate phases, formed by melt
blending, and followed by rapid cooling, the
incorporation of an additional step of melt blending
the Gilles compositions to form a solid particulate
blend for the purpose of discouraging premature
hydrolysis, would have been an obvious variation to
one of ordinary skill in the art at the time of
applicant’s invention. [Examiner’s answer, p. 4.]
We disagree.
Neri teaches a stabilizing composition containing a
continuous and amorphous phase of tetrakis-[3-(3,5-di-t-butyl-
4-hydroxyphenyl)-propionyl-oxymethyl]methane and a dispersed
phase of certain organic phosphites. (Column 2, lines 1-7.)
Although Neri describes mixing the tetrakis-[3-(3,5-di-tert-
butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane and the
Appeal No. 1996-3799
Application No. 08/252,511
7
organic phosphite in molten form (column 3, line 41 to column
4, line 38), there is no teaching, motivation, or suggestion
in the applied prior art to extend Neri’s melt blending
technique to a mixture of a phosphorous compound and a
hindered phenolic isocyanurate as called for in the claims on
appeal. As pointed out by the appellant (substitute appeal
brief, page 8), “[b]oth the suggestion and reasonable
expectation of success must be founded in the prior art, not
in the applicant’s disclosure.”
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed.
Cir. 1991) (citing In re Dow Chemical Co., 837 F.2d 469, 473,
5 USPQ2d 1529, 1531 (Fed. Cir. 1988)). Here, neither the
suggestion nor the expectation of success is found in the
applied prior art.
For these reasons, we hold that the applied prior art
references do not establish a prima facie case of obviousness
against appealed independent claims 1 and 12 within the
meaning of 35 U.S.C. § 103. Since appealed claims 2 through
11 all depend from claim 1, it follows that the subject matter
of these dependent claims would also not have been obvious
Appeal No. 1996-3799
Application No. 08/252,511
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over the applied prior art references. In re Fine, 837 F.2d
1071, 1076,
5 USPQ2d 1596, 1600 (Fed. Cir. 1988).
The decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
RHD/kis
Appeal No. 1996-3799
Application No. 08/252,511
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ROBERT E. WALTER
GENERAL ELECTRIC COMPANY
ONE PLASTICS AVE
PITTSFIELD MA 01201