Ex parte McGinty et al.

Board of Patent Appeals and Interferences

Oct 18, 2001

08550968 (B.P.A.I. Oct. 18, 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publication and is not binding precedent of the Board.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. 13

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID J. MCGINTY, ERVIN T. POWERS, JR., HYUNKOOK
SHIN,
ROGER K. SIEMIONKO and DAVID M. TAYLOR
_____________
Appeal No. 1998-3094
Application 08/550,968
______________
ON BRIEF
_______________
Before PAK, WARREN and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 37 and 42-48, which are all of the claims remaining in
the application. In the examiner’s answer, the examiner
indicates claims 43 and 46 to be allowable (page 3). Thus,
the claims before us are claims 37, 42, 44, 45, 47 and 48.
Appeal No. 1998-3094
Application No. 08/550,968
2
THE INVENTION
The appellants claim a solution for flash-spinning
plexifilimentary film-fibril strands of a fiber-forming
crystalline polyolefin. The solution contains at least one
charge-improving compound which, the appellants state, is for
providing satisfactory electrostatic web charging performance
of a flash spun plexifilimentary film fibril web at acceptable
charge currents using and an environmentally suitable solvent
(specification, page 3, lines 8-11). Claim 37 is
illustrative:
37. A solution for flash-spinning plexifilamentary
film-fibril strands of a fiber-forming crystalline
polyolefin, said solution consisting essentially of
8 to 35 weight percent of the polyolefin and 92 to
65 weight percent of a spin liquid comprising a
mixture of at least one saturated C -C hydrocarbon4 7
and at least one charge-improving compound belonging
to one of groups A and B,
wherein group A comprises compounds that have an
atmospheric boiling temperature of less than 100 Co
and consists of one of carbon dioxide,
hydrofluorocarbons, hydrochlorofluorocarbons,
perfluoro-carbons, alcohols, aliphatic ketones, and
polar solvents; and
wherein group B consists of compounds not listed
in group A that are within the following categories
of compounds:
compounds of the types listed in group A
Appeal No. 1998-3094
Application No. 08/550,968
An obviousness-type double patenting rejection of claims 37 and 42-481
over claims 1-19 of Shin and a rejection of claims 37 and 42-48 under 35
U.S.C. § 103 over Shin in view of U.S. 3,387,326 to Hollberg et al. are
withdrawn in the examiner’s answer (page 3).
3
except having atmospheric boiling temperatures
of at least 100 C; halogen gases; acid halides;o
halocarbons that are not listed in group A;
hydroxylic compounds, ethers, carboxylic acids;
esters; sulfur compounds; non-aliphatic ketones;
aldehydes; nitro compounds; nitrogen oxides;
nitriles; ammonia; amines; amides; and halogenated
derivatives of the above compounds which do not
already contain a halogen atom;
such that said spin liquid comprises at least
0.1 ppm of charge-improving compounds, up to ten
weight percent of group A charge-improving
compounds, and less than seventy-five weight percent
of group B charge improving compounds.

THE REFERENCE
Shin et al. (Shin) 5,147,586 Sep. 15,
1992
THE REJECTION
Claims 37, 42, 44, 45, 47 and 48 stand rejected under 35
U.S.C. § 103 as being unpatentable over Shin.1
OPINION
We affirm the aforementioned rejection.
The appellants state (brief, page 3) that independent
Appeal No. 1998-3094
Application No. 08/550,968
See 17 Kirk-Othmer Encyclopedia of Chemical Technology 708, 728 (John2
Wiley & Sons 4 ed. 1996).th
4
claims 37 and 42 do not stand or fall together, but make no
separate argument regarding the patentability of these claims.
The appellants also state that dependent claims 44, 45, 47 and
48 stand or fall separately, see id., but do not provide an
explanation as to why the appellants consider these claims to
be separately patentable over the Shin reference taken alone.
Accordingly, we limit our discussion to one claim, i.e., claim
37. 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 appellants’ claims require that the polyolefin is
crystalline. The term “crystalline polyolefin” is not defined
in the appellants’ specification. One of the two polyolefins
which the appellants disclose as being typically used in their
solution is polyethylene (specification, page 5, lines 19-20),
which is a semicrystalline polymer having a crystallinity of
35-80%. Accordingly, we consider polyethylene homopolymers,2
in general, to fall within the scope of “crystalline
polyolefin” as that term is used by the appellants.
Shin discloses a solution for flash-spinning
Appeal No. 1998-3094
Application No. 08/550,968
Shin teaches that the co-solvents have atmospheric boiling point3
temperatures which are less than 100ºC (col. 6, lines 25-29).
5
plexifilimentary film-fibril strands of a fiber-forming
polyolefin (col. 2, lines 52-53). In figures 1, 3 and 4, the
solution contains 22 wt% polyethylene, which falls within the
appellants’ range of 8-35 wt%, and 78 wt% of a
pentane/co-solvent spin liquid (co. 5, lines 7-16), which
falls within the appellants’ range of 92-65 wt%. The
co-solvents in figures 1, 3
and 4 are, respectively, methanol, HFC-134a (a hydrofluoro-
carbon), and carbon dioxide. All of these co-solvents are in
the appellants’ group A, and the percentage of each co-3
solvent in the spin liquid in figures 1, 3 and 4 is 10 wt%.
Thus, the solutions used to obtain Shin’s figures 1, 3 and 4
anticipate the solution recited in the appellants’ claim 37.
The solution in the appellants’ claim 37 also is
anticipated by the solutions in Shin’s examples 7-9 (table 2).
Each of these solutions contains 22 wt% polyethylene and 78
wt% pentane/co-solvent spin liquid, 10 wt% of which is carbon
dioxide.
Appeal No. 1998-3094
Application No. 08/550,968
This argument is not factually correct because as shown in Shin’s4
figures 1, 3 and 4, addition of 10 wt% of the co-solvent increases the cloud
point by 200 psig or more.
6
The appellants argue that their claims have been limited
to certain charge improving compounds which are less than 10%
of the total spin liquid (brief, page 4). The claimed
solution actually includes up to 10 wt% of at least one group
A compound, not less than 10 wt%. As discussed above, Shin
discloses group A compounds present in an amount of 10 wt%.
The appellants argue that Shin’s spin liquids must
contain more than 10 wt% co-solvent in order for Shin’s goal
of increasing the cloud point by at least 200 psig to be
reached
(brief, page 4). The solution in the appellants’ claim 37 is4
anticipated by the disclosed Shin solutions discussed above
regardless of whether they are capable of producing Shin’s
desired cloud point increase.
Moreover, although Shin teaches that the amount of co-
solvent must be greater than 10 wt% and must be sufficient to
raise the cloud point by 200 psig (col. 3, lines 4-10 and 42-
47; col. 4, lines 24-30), the disclosure that an amount of co-
solvent of 10 wt% produces the desired cloud point increase
Appeal No. 1998-3094
Application No. 08/550,968
7
(figures 1, 3 and 4) would have fairly suggested, to one of
ordinary skill in the art, use of 10 wt% co-solvent even
though this amount is not greater than 10 wt%. Thus, Shin
would have rendered the appellants’ claimed solution prima
facie obvious to one of ordinary skill in the art.
Because anticipation is the epitome of obviousness, see
In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 83 (CCPA 1975);
In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA
1974), and further because a prima facie case of obviousness
has been established which has not been effectively rebutted
by the appellants, we affirm the examiner’s rejection under 35
U.S.C. § 103.
DECISION
The rejection of claims 37, 42, 44, 45, 47 and 48 under
35 U.S.C. § 103 over Shin is affirmed.
AFFIRMED
Appeal No. 1998-3094
Application No. 08/550,968
8
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
tjo/vsh
Appeal No. 1998-3094
Application No. 08/550,968
9
E.I. DU PONT DE NEMOURS & COMPANY
LEGA - PATENTS
WILMINGTON, DE 19898