Ex Parte Neoh et al

Board of Patent Appeals and Interferences

Jun 27, 2008

09895153 (B.P.A.I. Jun. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte KOON GEE NEOH,
EN-TANG KANG, SOCK WEE NG,
and JEYAGOWRY T. SAMPANTHAR
______________

Appeal 2008-2109
Application 09/895,153
Technology Center 1700
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Decided: June 27, 2008
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Before CHUNG K. PAK, CHARLES F. WARREN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claim 36 in the Office Action mailed December 6,
2005. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2005).
We reverse the decision of the Primary Examiner.

Appeal 2008-2109
Application 09/895,153
Claim 36 illustrates Appellants’ invention of a method for preparing
an electrically conductive polymer material:
36. A method for preparing an electrically conductive polymeric
material comprising:
a) providing a vinyl benzyl halide grafted film substrate;
b) reacting the vinyl benzyl halide grafted film with an equimolar
mixture of 4,4’ bipyridine and p-xylene dihalide to form a viologen salt-
grafted film;
c) coating the viologen salt-grafted film with polyaniline to form a
polyaniline-coated film; and
d) exposing the polyaniline-coated film to near-ultraviolet radiation
to obtain an electrically conductive polymer.
The Examiner relies upon the evidence in these references (Ans. 3)1:
Williams US 4,414,080 Jun. 9, 1983
Pohl US 4,455,233 Jun. 19, 1984
Beratan US 5,016,063 May 14, 1991
Sato JP 56-26977 A Mar. 16, 1981
Appellants rely on the evidence in these references (App. Br. 2 6-7 and
10):

1 We have not considered the United States Patent “considered pertinent” by
the Examiner which is not included in the statement of the ground of
rejection. Ans. 8. Reliance on this evidence is improper. See In re Hoch,
428 F.2d 1341, 1342 n. 3 (CCPA 1970); cf. Ex parte Raske, 28 USPQ2d
1304, 1304-05 (BPAI 1993).
2 We have considered only the Appeal Brief filed December 29, 2006, the
Answer entered June 7, 2007, and the Reply Brief filed September 26, 2006.
In view of the fact the three Answers of record are the same because they do
not differ in substantive content, we have not considered the Reply Briefs
filed June 5, 2007, and August 6, 2007, both of which differ substantively
from the first Reply Brief. In this respect, 37 C.F.R. §§ 41.41 and 41.43
respectively limit Appellants to one reply brief for an answer and to one
reply brief for a supplemental answer furnished in response to a reply brief.
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Appeal 2008-2109
Application 09/895,153
Kamogawa and Ono, “Redox photochromism in films of viologens and
related compounds bearing long-chain alkyl groups,” 3 Chem. Mater.,
1020-23 (1991).
Ogawa. Nishikawa, Nishimoto, and Kagiya, “Poly(vinyl alcohol) film
containing methyl viologen as a highly sensitive dosimeter,” Radiat. Phys.
Chem., Vol. 29, No. 5, 353-57 (1987).
Sampanthar, Neoh, Ng, Kang, and Tan, “Flexible smart window via surface
graft copolymerization of viologen on polyethylene,” 12 Advanced
Materials, 1536-39 (2000).
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) (App. Br. 3): claim 36 over Sato in view of Pohl, Williams, and
Beratan. Ans. 4.
The Examiner has identified four differences between the claimed
method encompassed by claim 36 and the method disclosed by Sato. Ans.
4-5. The threshold issue involves the fourth difference wherein the claimed
method requires coating the viologen salt-grafted film prepared in the
previous steps with a polyaniline film, and Sato discloses coating a
viologen-salt containing substrate with a solid alcohol: whether one of
ordinary skill in this art would have prima facie found in Beratan the
suggestion to modify Sato’s process by substituting a polyaniline film for
the solid alcohol film used therein.
The Examiner contends, among other things, that Beratan would have
taught “that polyaniline is suitable for the use as electron donor for viologen
salt acceptor,” and thus, it would have been obvious “to have used
polyaniline as a donor in Sato.” Ans. 6-7, citing Beratan col. 6, ll. 16-30; see
also Ans. 9-11. The Examiner further finds that “[i]n [Beratan] FIG. 4b,
ruthenium tris(2,2'-bipyridine) is the intermediate, dimethyl aniline is the
donor, and methyl viologen is the acceptor (See column 6, lines 16-26),” and
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Application 09/895,153
that “[a]s could be seen at FIG. 4b, the methyl viologen acceptor is
covalently attached to a film substrate having grafted benzyl groups
C6H5-CH2-.” Ans. 8 (emphasis omitted). The Examiner finds that Beratan
does “not disclose how the methyl viologen acceptor is covalently attached
to a film substrate having grafted benzyl groups C6H5-CH2- . . . [but] [i]t
could be assumed, therefore, that customary methods have been used.” Ans.
8 (emphasis omitted).
Appellants contend, among other things, that “Beratan does not make
any conductive material comprising polyaniline . . . [as it] shows redox
cycling between aniline and viologen monomer units in a polymer using a
ruthenium bipyridine intermediate.” App. Br. 6, quoting the Amendment
filed October 13, 2005 at 8-9 (emphasis omitted). Thus, Appellants argue
“Beratan in fact describes a material that is a co-polymer of aniline and
viologen, not an article comprising polyaniline and viologen.” App. Br. 6;
see also Reply Br. 2-3.
We find Beratan discloses a polymer chain made up of a plurality of
monomeric repeat units in the functional order of donor, intermediate, and
acceptor monomeric units, and uses the polymer as a chain and not in film
form. Beratan , e.g., col. 2, ll. 3-16, col. 4, ll. 16-48, col. 7, ll. 33-63, and
Figs. 2a and 7. Beratan Figure 4b illustrates a single methyl viologen
monomeric acceptor unit bonded to a single ruthenium containing
monomeric intermediate unit which, in turn, is bonded to a single dimethyl
aniline monomeric donor unit, with the three monomer unit molecular
system repeating in the polymer chain. Beratan, e.g., col. 3, ll. 15-16, col. 4,
ll. 65-67, and col. 6, ll. 16-30.
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Appeal 2008-2109
Application 09/895,153
Appellants acknowledge that polyaniline films on substrates are
known in the art. Spec., e.g. 1. We notice that in a polyaniline chain, the
interior amino nitrogens are each directly bonded to two phenyl rings.
On this record, we agree with Appellants that the part of Beratan
relied on by the Examiner would not have disclosed or suggested the
employment of a polyaniline film as claimed to one of ordinary skill in this
art. Indeed, there is no evidence in the reference of a polyaniline chain.
Thus, the Examiner has not established either by scientific explanation or
evidence that, prima facie, one of ordinary skill in this art following the
combined teachings of Beratan and the other applied references would have
formed a polyaniline film on a viologen containing material, including the
viologen salt-grafted film as claimed. See, e.g., KSR Int’l Co. v. Teleflex,
Inc., 127 S. Ct. 1727, 1741 (2007) (“it can be important to identify a reason
that would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does”); In re
Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when
the specific understanding or principal within the knowledge of one of
ordinary skill in the art leading to the modification of the prior art in order to
arrive at appellant’s claimed invention has not been explained); In re Dow
Chem. Co., 837 F.2d 469, 473 (Fed. Cir. 1988) (“The consistent criterion for
determination of obviousness is whether the prior art would have suggested
to one of ordinary skill in the art that [the claimed process] should be carried
out and would have a reasonable likelihood of success, viewed in light of the
prior art. Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant’s disclosure.” (citations
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Application 09/895,153
omitted)); In re Warner, 379 F.2d 1011, 1016 (CCPA 1967) (“Thus, where
the invention sought to be patented resides in a combination of old elements,
the proper inquiry is whether bringing them together was obvious and not,
whether one of ordinary skill having the invention before him, would find it
obvious through hindsight to construct the invention from elements of the
prior art.”); cf. Ex parte Levengood, 28 USPQ2d 1300, 1301-02 (BPAI
1993), citing Ex parte Gerlach, 212 USPQ 471 (Bd. App. 1980) (“At best,
the examiner’s comments regarding obviousness amount to an assertion that
one of ordinary skill in the relevant art would have been able to arrive at
appellant’s invention because he had the necessary skills to carry out the
requisite process steps. This is an inappropriate standard for obviousness. . .
. That which is within the capabilities of one skilled in the art is not
synonymous with obviousness.”).
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of claim 36 under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.
REVERSED

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