Ex parte Oxman et al.

Board of Patent Appeals and Interferences

Sep 29, 1998

07627009 (B.P.A.I. Sep. 29, 1998)

Application for patent filed December 13, 1990.1
1
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(2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOEL D. OXMAN
and LARRY D. BOARDMAN
__________
Appeal No. 94-4291
Application 07/627,0091
__________
ON BRIEF
__________
Before JOHN D. SMITH, GARRIS, and WARREN, Administrative
Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1,
2, 7-13, 15-21, 26-32, 34-36, 42, 43 and 45 through 51. The
Appeal No. 94-4291
Application No. 07/627,009
The examiner's provisional double patenting rejection2
based upon the claims of application 07/626,905 is nullified
and thus not before us by virtue of the abandonment of this
application.
2
only other claims remaining in the application, which are
claims 52-55 have been allowed by the examiner.
The subject matter on appeal relates to a hydrosilation
process and composition as well as certain products made
therefrom. This appealed subject matter is adequately
illustrated by independent claim 1, a copy of which taken from
the appellants' brief is appended to this decision.
The references relied upon by the examiner as evidence of
obviousness are:
Gruber 4,017,652 Apr. 12, 1977
McDowell 4,169,167 Sep. 25, 1979
Drahnak 4,510,094 Apr. 9, 1985
Eckberg 4,587,137 May 6, 1986
In the double patenting rejections before us, the
examiner also relies upon the claims of U.S. Patent No.
4,916,169 (Boardman) as well as the claims of co-pending
application 07/626,904 ('904 application). 2
Appeal No. 94-4291
Application No. 07/627,009
The appealed claims will stand or fall together; see3
page 9 of the brief.
3
All of the claims on appeal are rejected as follows:3
(1) unpatentable under 35 U.S.C. § 103 over Eckberg
in view of Drahnak and further in view of Gruber or
McDowell;
(2) unpatentable under the doctrine of obviousness-
type double patenting over the claims of Boardman in
view of Eckberg; and
(3) provisionally unpatentable under the doctrine of
obviousness-type double patenting over the claims of
the '904 application in view of Drahnak.
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by the
appellants and the examiner concerning the above noted
rejections.
OPINION
For the reasons which follow, we will sustain each of
these rejections.
The section 103 rejection
As correctly observed by the appellants, Eckberg fails to
disclose the specific catalyst defined by the appealed claims.
Nevertheless, Drahnak explicitly teaches effecting
hydrosilation reactions of the type under consideration with
Appeal No. 94-4291
Application No. 07/627,009
4
the here claimed catalyst, and we fully agree with the
examiner that it would have been obvious for one with ordinary
skill in the art to replace the catalyst of Eckberg with the
catalyst of Drahnak in order to obtain the advantages
associated with this catalyst (e.g., see lines 51 through 62
in column 2 of Drahnak).
On pages 19 and 20 of the brief, the appellants argue
that it would have not been obvious to combine Eckberg and
Drahnak in the manner opposed above. In this regard, the
appellants state that Eckberg's composition is capable of
reacting prematurely at room temperature whereas "[t]he
catalyst of Drahnak . . ., which is the only precious metal
catalyst set forth in the claims of the present application,
will not result in premature gelation or curing, for the
reason that it will not activate a hydrosilation reaction at
temperatures below about 50EC in the absence of actinic
radiation", and accordingly "it is clear that the teachings of
Eckberg are in conflict with the teachings of Drahnak" (brief,
page 20; emphasis in original). It is the appellants'
position that, as a result of this "conflict", there would
Appeal No. 94-4291
Application No. 07/627,009
It is appropriate to explicitly emphasize that this4
argument is not applicable to independent claim 45 since this
claim is not limited to such photoinitiators.
By way of clarification, we point out that the5
examiner's proposed combination of Eckberg and Gruber or
5
have been no motivation for one of ordinary skill in the art
to combine Eckberg with Drahnak.
We cannot agree. While it is correct that Eckberg
teaches his compositions may react prematurely at room
temperature and that such premature reaction would not occur
in using Drahnak's catalyst, these facts militate for, rather
than against as urged by the appellants, replacing Eckberg's
catalyst with the catalyst of Drahnak. This is because the
proposed catalyst replacement would eliminate the undesirable
potential for the premature reaction disclosed by Eckberg.
The appellants further argue that "Eckberg also fails to
disclose or suggest the specific classes of photoinitiators
recited in Claims 1 and 21" (brief, page 21). However, the4
examiner has relied upon the teachings of Gruber or McDowell
to support his conclusion that it would have been obvious to
use photoinitiators of the type under consideration in the
process and composition of Eckberg. In the last two5
Appeal No. 94-4291
Application No. 07/627,009
McDowell was previously advanced in the rejection of dependent
claims 4, 6, 23 and 25 and that these claims were canceled and
the subject matter thereof incorporated into independent
claims 1 and 21 via amendments filed after the final
rejection.
6
paragraphs on page 22 of the brief, the appellants clearly
indicate that they will present no arguments concerning the
examiner's obviousness conclusion vis à vis her proposed
combination of Eckberg with Gruber or McDowell. Under these
circumstances, the appellants' point that Eckberg contains no
disclosure of the specific photoinitiators recited in
independent claims 1 and 21 is simply not germane to the
obviousness issue advanced by the examiner on this appeal.
Finally, the appellants argue that both Drahnak and
Eckberg are silent with respect to curing by visible
radiation. This argument is unpersuasive because none of the
independent claims on appeal requires curing by visible
radiation and because the appealed claims stand or fall
together as noted earlier in this decision. In any event, the
argument lacks persuasive merit. While Drahnak may prefer use
of ultraviolet radiation for curing, he discloses using
actinic radiation generally (see line 13 in column 9) and more
Appeal No. 94-4291
Application No. 07/627,009
7
specifically any radiation source emitting radiation below
about 4000 Angstroms (see lines 54 and 55 in column 9),
thereby suggesting the use of visible light. In this regard,
we point out that a wavelength of 3900 Angstrom for example,
is applicable to both the longest ultraviolet radiation
wavelength and the shortest visible radiation wavelength
(e.g., see Hackh's Chemical Dictionary, 3rd edition, page 716,
copy attached).
In light of the foregoing, we will sustain the section
103 rejection of the appealed claims as being unpatentable
over Eckberg in view of Drahnak and further in view of Gruber
or McDowell.
The obviousness-type double patenting rejection
In her answer, the examiner has stated that all of the
claims on appeal are rejected under the doctrine of
obviousness- type double patenting over the claims of Boardman
in view of Eckberg. It is appropriate to here clarify that,
in her earlier rejections (i.e., paper nos. 7 and 9), the
examiner also combined the Gruber or McDowell references with
Appeal No. 94-4291
Application No. 07/627,009
We again emphasize that independent claim 45 is not6
limited to such specific photoinitiators.
8
Eckberg and Drahnak in rejecting dependent claims drawn to the
specific photoinitiators now recited in independent claims 1
and 21. Quite clearly, the examiner has committed6
inadvertent error in failing to include the Gruber and
McDowell references in the obviousness-type double patenting
rejection advanced on this appeal against independent claims 1
and 21. Nevertheless, since the appellants in their brief
have presented explicit arguments relative to the obviousness
of combining Eckberg with Gruber or McDowell, this inadvertent
error on the examiner's part is harmless. Therefore, we shall
address below the subject rejection of claims 1 and 21 as
though it included the Gruber and McDowell references as well
as the appellants' arguments concerning these references.
On page 15 of the brief, the appellants present the
following succinct exposition of their nonobviousness
position:
Because of the lack of suggestion in the claims of
Boardman to use a photoinitiator, because of
Eckberg's failure to disclose or suggest the
specific photoinitiators recited in the claims of
the present application, and because McDowell and
Appeal No. 94-4291
Application No. 07/627,009
On this record, we find no reasonably specific7
argument concerning independent claim 45 which does not recite
specific photoinitiators and is therefore rejectable over the
claims of Boardman in view of Eckberg alone sans the teachings
of Gruber or McDowell.
9
Gruber have nothing to do with hydrosilation
processes catalyzed by a platinum complex, it is
submitted that the claims of the present application
would not have been obvious to one of ordinary skill
in the art from the combination of the claims of
Boardman with the disclosures of Eckberg, McDowell,
and Gruber. [Emphasis in original].

This argument does not convince us that the subject
matter defined by independent claims 1 and 21 would not have
been obvious. In our opinion, Eckberg's teaching of7
effecting his hydrosilation reaction via free radical type
photoinitiators generally would have suggested to one with
ordinary skill in the art using the specific free radical type
photoinitiators of Gruber or McDowell in the hydrosilation
process claimed by Boardman motivated by a desire to obtain
the advantageous functions performed by these specific
photoinitiators and based upon a reasonable expectation,
gleaned from Eckberg's aforementioned disclosure, of success
in using these specific photoinitiators in Boardman's claimed
hydrosilation process. In re O'Farrell, 853 F.2d 894, 904, 7
Appeal No. 94-4291
Application No. 07/627,009
10
USPQ2d 1673, 1681 (Fed. Cir. 1988) (for obviousness under
section 103, all that is required is a reasonable expectation
of success).
For these reasons, we will also sustain the examiner's
obviousness-type double patenting rejection of the appealed
claims over the claims of Boardman in view of Eckberg
considered alone with the respect to independent claim 45 and
considered in combination with Gruber or McDowell with respect
to independent claims 1 and 21.
As a final point of interest, we observe that the
appellants in their brief have stated, "[a]ccording to In re
Braat, 19 U.S.P.Q. 2d 1289 (Fed. Cir. 1991), a "two-way"
determination is necessary in order to sustain a rejection
for obviousness-type double patenting" (brief, page 13).
Nevertheless, the brief contains only the previously discussed
arguments which relate to a "one-way" determination. As a
consequence, even if a "two-way" determination were necessary
in the case before us, the examiner's obviousness-type double
patenting rejection would still be sustained since the only
arguments made thereagainst are limited to a "one-way"
determination and are unpersuasive. In any event, it is plain
Appeal No. 94-4291
Application No. 07/627,009
11
that a "one-way" analysis is the proper test for the
obviousness-type double patenting rejection before us based
upon the rationale set forth in the recent case of In re
Emert, 124 F.3d 1458, 44 USPQ2d 1149 (Fed. Cir. 1997).
The provisional obviousness-type
double patenting rejection
We fully share the examiner's conclusion that it would
have been obvious for one with ordinary skill in the art to
substitute Drahnak's catalyst for the catalyst in the claims
of the '904 application in order to obtain the advantages
disclosed by Drahnak and based upon a reasonable expectation
of success. O'Farrell, Id. It is the appellants' basic
contention that such a substitution would not have been
obvious "because catalytic activity is unknown except by
actual test" (brief, page 19). That is, the appellants
in essence believe no basis exists for a reasonable
expectation that Drahnak's catalyst would be successfully used
in the hydrosilation process and composition claimed in the
'904 application. However, the requisite
Appeal No. 94-4291
Application No. 07/627,009
12
expectation is provided by Drahnak's explicit teaching that
his catalyst effects hydrosilation reactions of the type under
consideration.
Summary
Each of the rejections before us on this appeal has been
sustained, and 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
John D. Smith )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Charles F. Warren )
Administrative Patent Judge )
tdc
Appeal No. 94-4291
Application No. 07/627,009
13
David L. Weinstein
3M Office of Patent Counsel
P.O. Box 33427
St. Paul, MN 55133-3427
Appeal No. 94-4291
Application No. 07/627,009
1
APPENDIX
Appeal No. 94-4291
Application No. 07/627,009
2