Ex parte Mulholland

Board of Patent Appeals and Interferences

Dec 17, 1997

08035832 (B.P.A.I. Dec. 17, 1997)

Application for patent filed March 23, 1993. According to applicant,1
this application is a continuation of 07/812,594, filed December 23, 1991,
now abandoned.
1
Paper No. 22
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte BRUCE MULHOLLAND
______________
Appeal No. 95-0244
Application 08/035,8321
_______________
ON BRIEF
_______________
Before RONALD H. SMITH, SOFOCLEOUS and WARREN, Administrative
Patent Judges.
RONALD H. SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1,
3, 5, 7-10, 12, 14 and 16-22. Claims 2, 4, 6, 11, 13 and 15
have been canceled, and claims 23 and 24 have been allowed.
Appeal No. 95-0244
Application 08/035,832
2
The subject matter of the appealed claims relates to a
composition consisting of a polymeric acetal and zinc oxide
which is suitable for use in the preparation of a plumbing
fixture and to the method for producing a shaped article
suitable for use as a plumbing fixture. Claims 1 and 10 are
illustrative of the appealed claims and read as follows:
1. A composition suitable for use in the preparation
of a plumbing fixture, consisting of a polymeric acetal and
zinc oxide in an amount from about 1 to about 20% by weight,
wherein the fixture exhibits resistance to the build-up and
adhesion of mineral deposits.

10. A method for producing a shaped article suitable
for use as a plumbing fixture which exhibits resistance to
the build-up and adhesion of mineral deposition, consisting
essentially of the steps of: (a) making a blend consisting
of polymeric acetal and from about 1 to about 20% by weight
of zinc oxide; and (b) shaping said blend to form a shaped
article.
Appellant made no statement that the claims do not stand
or fall together. 37 CFR § 1.192(c)(7). Accordingly, we will
limit our consideration to claim 1 in considering the
examiner's rejection of the appealed claims.
The reference relied on by the examiner is:
Reske et al. (Reske) 4,517,319 May 14,
1985
Appeal No. 95-0244
Application 08/035,832
3
Claims 1, 3, 5, 7-10, 12, 14 and 16-22 stand rejected
under 35 U.S.C. § 103 as obvious over Reske. We have
carefully considered the entire record, including appellant's
position as set forth in his brief and the examiner's position
as set forth in the answer, and we have decided that we will
affirm the examiner's rejection. Appealed claim 1 is limited
to a composition consisting of a polymeric acetal and 1 to 20%
zinc oxide. As noted by the examiner, Reske discloses a
molding composition which consists essentially of a
polyoxymethylene (polymeric acetal), a polyurethane and a
filler (column 1, lines 5-7 and 36-40). As set forth in
appealed claim 7, the claimed polymeric acetal may be an
"oxymethylene homopolymer" which is equivalent to Reske's
polyoxymethylene. Reske discloses that a disadvantage of the
polyoxymethylene is "a low impact strength" (column 1, lines
11-14). The disadvantage is overcome by including the
polyurethane and filler. Accordingly, as noted
by the examiner, the compatible polyurethane is an "impact
modifier." Reske discloses further that the filler may be
zinc oxide (column 6, lines 22-28), and in claim 8 Reske
specifically claims a composition wherein the filler is zinc
Appeal No. 95-0244
Application 08/035,832
4
oxide. The filler is preferably 1 to 30% by weight of the
total mixture (column 7, lines 22-27). Further, Reske
discloses in column 8, lines 12-22 that the composition may be
processed to form shaped articles such as "pipes and tubes",
which are well known plumbing fixtures.
We agree with the examiner that the composition of
appealed claim 1 consisting of a polymeric acetal and zinc
oxide would have been prima facie obvious to one of ordinary
skill in the art in view of the noted teachings of Reske.
Appellant urges that the claimed invention is not obvious
because Reske discloses some twenty fillers and in examples 17
and 18 prefers titanium dioxide and silicon dioxide. We
disagree, and point out that Reske specifically discloses and
in claim 8 claims the use of zinc oxide as the filler. Nor is
it necessary for Reske to teach or appreciate the property of
resistance to mineral adhesion because the mere discovery that
the claimed composition possesses a property not disclosed in
the prior art does not alone defeat the prima facie case of
obviousness. In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897,
1901 (Fed. Cir. 1990)(en banc), cert. denied, 500 U.S. 904
(1991).
Appeal No. 95-0244
Application 08/035,832
5
Appellant also urges that the appealed claims eliminate
"an essential feature of Reske et al, i.e., polyurethane."
The argument is not persuasive because it is well settled that
the omission of an element, i.e., polyurethane, and its
intended function, as an impact modifier, is prima facie
obvious if the remaining elements perform the same function as
before. Cf. In re Karlson, 311 F.2d 581, 584, 136 USPQ 184,
186 (CCPA 1963). There is no evidence in the record to
indicate that the elimination of the polyurethane would have
any effect on the composition other than the elimination of
its function as an impact modifier.
Appellant urges that the declaration submitted under Rule
132 is sufficient to overcome the rejection under 35 U.S.C.
§ 103. However, we note that appellant's declaration does not
compare the claimed composition to the closest prior art
composition of Reske, i.e., Reske’s claim 8 which includes
polyoxymethylene, polyurethane and zinc oxide. Further, in
view of the fact that Reske specifically discloses and claims
the use of zinc oxide and polyoxymethylene compositions, we
agree with the examiner that the evidence of obviousness
outweighs the evidence submitted in the declaration, and the
Appeal No. 95-0244
Application 08/035,832
6
declaration does not overcome the prima facie case of
obviousness.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
1.136(a).
AFFIRMED
RONALD H. SMITH )
Administrative Patent Judge )
)
)
)
MICHAEL SOFOCLEOUS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )

Appeal No. 95-0244
Application 08/035,832
7
James M. Hunter, Jr.
Hoechst Celanese Corp.
86 Morris Avenue
Summit, NJ 07901
RHS/cam