Ex parte Maver

Board of Patent Appeals and Interferences

Jun 23, 2000

08394935 (B.P.A.I. Jun. 23, 2000)

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(2) is not binding precedent of the Board.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 TAMMY L. MAVER

_____________
Appeal No. 1997-1748
Application No. 08/394,935
______________
ON BRIEF
_______________
Before JOHN D. SMITH, GARRIS, and KRATZ, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-4, 6, 7 and 12-14. Claims 10 and 11,
the remaining claims pending in this application, stand
withdrawn from further consideration as drawn to a non-elected
invention.
Appeal No. 1997-1748 Page 2
Application No. 08/394,935
BACKGROUND
At the outset, we note that Patent and Trademark Office
(PTO) records indicate that the present application was filed
as a continuation of U.S. Application No. 08/167,385, which
parent application was filed on December 15, 1993. Also,
copending and related application No. 08/395,248 was filed on
February 27, 1995, as a divisional of the above-noted parent
application. The above-noted related and copending
Application No. 08/395,248 is also before us on appeal (Appeal
No. 1997-1807).
Appellant's invention relates to a blended polymeric
composition comprising a macromolecular aqueous dispersion, an
acid-functional alkali soluble resin and an aminosilane
compound. According to appellant (specification, page 4), the
composition is useful as a coating for chalky substrates. An
understanding of the invention can be derived from a reading
of exemplary
claim 1, which is reproduced below.
A blend composition for improving the adhesion of a
coating to chalky substrates comprising a macromolecular
aqueous dispersion having a particle size in the range of 0.05
Appeal No. 1997-1748 Page 3
Application No. 08/394,935
Our reference to Morino in this decision is to the1
resubmitted English translation of record filed on January 11,
1996.
to 1.0 micron, an acid-functional alkalisoluble polymer
polymerized form monomers selected from the group consisting
of olefinically unsaturated compounds, vinyl esters and
monovinyl aromatic compounds, said polymer having a weight
average molecular weight of less than about 100,000 to ensure
its solubility and having its acid functionality neutralized
by an aminosilane selected from the group consisting of
trimethoxysilylpropyldiethylenetriamine, N-
methylaminopropyltrimethoxysilane, N-(2-aminoethyl)-3-
aminopropylmethyldimethoxysilane, N-(2-aminoethyl)-3-
aminopropyltrimethoxysilane, aminopropylmethyldimethoxysilane,
3-aminopropyltrimethoxysilane, 3-
aminopropylmethyldiethoxysilane and 3-
aminopropyltriethoxysilane.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Calhoun WO 92/14788 Sep. 03, 1992
(Published International Application)
Morino et al. (Morino) 03-064305 Mar. 19,1
1991
(Laid-open Japanese Patent Application)
Claims 1-4, 6, 7 and 12-14 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Calhoun in view of Morino.
OPINION
Upon review of the opposing arguments and evidence
advanced by the examiner in the answer and appellant in the
Appeal No. 1997-1748 Page 4
Application No. 08/394,935
We note that it is the examiner who bears the initial2
burden of presenting a prima facie case of obviousness in
rejecting claims under 35 U.S.C. § 103. See In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
brief in support of their respective positions, we conclude
that the examiner has not established a prima facie case of
obviousness for the claimed subject matter. Accordingly, we2
will not sustain the examiner's § 103 rejection for reasons
set forth in appellant's brief and as further discussed below.
Calhoun (page 1) teaches that a blended polymeric
composition containing at least one acid-functional vinyl
polymer and at least one amino-functional siloxane polymer may
be used as a quasi-crosslinked coating for various substrates.
Calhoun (pages 3-5) further teaches that: (1) the amino-
functional polysiloxane employed is water-insoluble albeit the
blended polymer composition is soluble or dispersible in water
and (2) an alkali or basic ingredient such as a volatile amine
or ammonia is included in the composition to prevent reaction
of the siloxane with the acid-functional moieties of the vinyl
polymer. Morino (pages 1 and 2) discloses a silane-
modified macromolecular dispersion for use in a coating
material that is taught as advantageous for its adherence to
silicate glass. The silane is described as water-soluble
Appeal No. 1997-1748 Page 5
Application No. 08/394,935
(Morino, page 6).
According to the examiner (answer, page 3),
[i]t would have been obvious to one of ordinary
skill in the art at the time the invention was made
to use the aminosilanes of JP '305 in WO '788 and
expect them to function equivalently for the
neutralization of an acid functional polymer in
order to make the claimed blend composition for
improving adhesion to chalky substrates especially
since no criticality of components is noted.
The difficulty we have with the examiner's stated
position stems, in part, from the fact that the examiner has
not pointed to any particularized teaching of either of the
applied references which would have suggested that the
addition of the silane of Morino (JP '305) to the blend of
Calhoun (WO '788) would function to improve adherence to
chalky substrates as posited by the examiner as a basis for
adding or substituting the silane of Morino for one or more of
the ingredients of the composition of Calhoun. Nor has the
examiner furnished any other convincing rationale for the
proposed modification of the composition of Calhoun including
a detailed explanation as to how any such proposed
modification would have resulted in a blend composition
corresponding to appellant's specified blend.
In order for a prima facie case of obviousness of the
Appeal No. 1997-1748 Page 6
Application No. 08/394,935
claimed invention to be established, the prior art as applied
must be such that it would have provided one of ordinary skill
in the art with both a suggestion to carry out appellant's
claimed invention and a reasonable expectation of success in
doing so. See In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531 (Fed. Cir. 1988). "Both the suggestion and
the expectation of success must be founded in the prior art,
not in the applicant's disclosure." Id. The mere possibility
that the prior art could be modified such that appellant's
invention would result, is not a sufficient basis for a prima
facie case of obviousness. See In re Brouwer, 77 F.3d 422,
425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71
F.3d 1565, 1570,
37 USPQ2d 1127, 1131 (Fed. Cir. 1995).
From our perspective, the examiner has not convincingly
explained where the motivation may be found in the combined
teachings of the references to support the alleged "functional
equivalency" as a basis for modifying the composition of
Calhoun. This motivation appears to come solely from the
description of appellant's invention in their specification.
Thus, on this record, we conclude that the examiner used
Appeal No. 1997-1748 Page 7
Application No. 08/394,935
impermissible hindsight when rejecting the claims in the
manner set forth in the answer. See W.L. Gore & Associates v.
Garlock, Inc.,
721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d
393, 396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, on this
record, we will not sustain the examiner's stated rejection.

CONCLUSION
To summarize, the decision of the examiner to reject the
appealed claims under 35 U.S.C. § 103 as stated in the answer
Appeal No. 1997-1748 Page 8
Application No. 08/394,935
is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
PFK:lmb
SUDHIR G. DESHMUKH
ROHM & HAAS COMPANY
100 INDEPENDENCE MALL WEST
PHILADELPHIA, PA 19106-2399
Appeal No. 1997-1748 Page 9
Application No. 08/394,935
APPEAL NO. - JUDGE KRATZ
APPLICATION NO.
APJ KRATZ
APJ
APJ
DECISION: ED
Prepared By:
DRAFT TYPED: 20 Aug 01
FINAL TYPED: