Ex parte MUYS et al.

Board of Patent Appeals and Interferences

Nov 30, 2000

08356573 (B.P.A.I. Nov. 30, 2000)

1
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not written for publication and is not binding precedent of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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BAVO MUYS, DIRK QUINTENS,
JOZEF BOEYKENS, ETIENNE VAN THILLO,
and GEERT DEFIEUW
__________
Appeal No. 1997-1922
Application No. 08/356,573
__________
HEARD: Oct. 26, 2000
__________
Before KIMLIN, KRATZ, and DELMENDO, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
12, all of the claims remaining in the present application.
Claim 1 is illustrative:
Appeal No. 97-1922
Application No. 08/356,573
2
1. A method for preparing a biaxially oriented polyester
sheet or web, with improved antistatic properties, comprising
the steps of
(i) stretching said polyester sheet or web first in one
direction and second in a direction perpendicular thereto
(ii) coating said hydrophobic polyester sheet or web,
either before stretching or between said first and second
stretching operation, on one or both sides, with a transparent
antistatic primer layer, wherein the coating composition of
said transparent antistatic primer layer comprises (1) a
dispersion of a polythiophene with conjugated polymer backbone
and a polymeric polyanion compound and (2) a latex polymer
having hydrophilic functionality.
The examiner relies upon the following references as
evidence of obviousness:
Tanabe et al. (Tanabe) 3,683,060 Aug. 8,
1972
Jonas et al. (Jonas) 5,300,575 Apr. 5,
1994
(filed Dec. 10, 1992)
Appellants’ claimed invention is directed to a method for
preparing a biaxially oriented polyester sheet wherein a
transparent antistatic primer layer is coated on the sheet
either before stretching or between the first and second
stretching operations. The primer layer comprises a
dispersion of a polythiophene with conjugated polymer backbone
and a polymeric polyanion compound, along with a latex polymer
having hydrophilic functionality. According to the
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Application No. 08/356,573
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appellants, “[t]he coating before or between the stretching
operations implies that the polythiophene with conjugated
polymer backbone has to withstand temperatures up to 200EC
during heat setting and stretching without prohibitive
coloration and without losing its conductivity” (page 3 of
principal brief, second paragraph).
Appealed claims 1-12 stand rejected under 35 U.S.C. 103
as being unpatentable over Tanabe in view of Jonas.
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner’s
rejection.
The examiner appreciates that Tanabe, who discloses a
method of biaxially-orienting polyester film by stretching the
film in first and second directions, does not disclose coating
the presently claimed antistatic composition on the polyester
film, let alone before or between the first and second
stretching operations. While there is no dispute that Jonas
discloses coating appellants’ antistatic composition on a
polyester sheet, there is no teaching in Jonas of applying the
antistatic composition either before stretching or between the
first and second stretching operations. Hence, the issue
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Application No. 08/356,573
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before us is whether it would have been obvious for one of
ordinary skill in the art to apply the antistatic composition
of Jonas to the polyester sheet of Tanabe either before the
stretching operations or between the first and second
stretching operations.
Appellants contend that “there is nothing in the prior
art which would suggest that a polythiophene with a conjugated
polymer backbone could withstand high heat without prohibitive
discoloration and without losing its conductivity” (sentence
bridging pages 4 and 5 of principal brief). In the words of
appellants, “the claims define an inventive advance in the
discovery that polythiophene with conjugated backbone in the
presence of a polymeric polyanion compound could withstand
stretching at high temperatures without being affected
adversely” (page 5 of principal brief). In support of their
argument, appellants have cited an article in Synthetic Metals
(Exhibit A) which, according to appellants, “establishes that
there were, at the priority date of the present invention,
serious concerns regarding the thermal stability of
poly(alkylthiophenes) and establishes that thermal undoping
was to be expected when polythiophene was subjected to
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Application No. 08/356,573
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elevated temperatures” (page 5 of principal brief, last
sentence).
In response to appellants’ arguments for nonobviousness,
the examiner states the following at page 4 of the answer:
Appellants’ suggestion that the compounds cannot
withstand the temperatures and/or stretching of the
processing in the film stretching without being
adversely affected is a non-persuasive argument
because the same compounds are being disclosed in
the prior art as are being utilized in the instant
invention as claimed and they would have the same
property characteristics and the same associated
ability to withstand temperature and/or stretching
without being adversely affected. Since the same or
similar materials are going to operate in the same
or similar manner, with a reasonable expectation by
one of ordinary skill in the requisite art, this
combination of teachings renders the scope of the
protection sought prima facie obvious.
Manifestly, the examiner’s response begs the question of
whether one of ordinary skill in the art would have reasonably
expected that the antistatic compositions of Jonas would
withstand the elevated temperatures associated with the
biaxial stretching operations of Tanabe. Clearly, the same
antistatic composition that is both presently claimed and
disclosed by Jonas would have the same inherent properties and
characteristics, but the examiner has pointed to no
recognition in the prior art that the antistatic compositions
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of Jonas would be expected to avoid unwanted coloration and
loss of conductivity during the elevated temperatures of
biaxial orientation and heat setting. We note that the
examiner has not addressed appellants’ reliance on the article
in Synthetic Metals.
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Application No. 08/356,573
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In conclusion, based on the foregoing, the examiner’s
decision rejecting the appealed claims is reversed.
REVERSED
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
Peter F. Kratz ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )
ECK:tdl
Appeal No. 97-1922
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