Ex parte POKORNY

Board of Patent Appeals and Interferences

Feb 9, 1998

07908650 (B.P.A.I. Feb. 9, 1998)

Application for patent filed July 2, 1992. According1
to appellant, this application is a continuation of
Application 07/694,448 filed May 1, 1991, now abandoned, which
is a reexamination of U.S. Patent No. 4,927,556 issued May 22,
1990, based on Application 07/260,172 filed October 20, 1988,
which is a continuation-in-part of Application 07/164,231
filed March 18, 1988, now abandoned, which is a continuation-
in-part of Application 07/058,162 filed June 4, 1987, now
abandoned.
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not binding precedent of the Board.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. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD J. POKORNY
__________
Appeal No. 95-4934
Application 07/908,6501
__________
ON BRIEF
__________
Before GARRIS, PAK and WARREN, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4934
Application 07/908,650
2
This is a decision on an appeal which involves claims 10,
11 and 15 through 19. The only other claims in the
application, which are claims 1 through 9 and 12 through 14,
have been determined by the examiner to be allowable.
The subject matter on appeal relates to a method of
removing an organic coating from a substrate via a composition
consisting essentially of (1) from about 10 percent by weight
to about 45 percent by weight of at least one dibasic ester,
(2) from about 55 percent by weight to about 90 percent by
weight water, and (3) at least one thickening agent in an
amount sufficient to form a stable emulsion. The appealed
subject matter also relates to a stable thixotropic emulsion
composition having the aforementioned ingredients. This
subject matter is adequately illustrated by independent claims
10 and 15 which read as follows:
10. Method of removing an organic coating from a
substrate comprising the steps of:
(a) providing a composition consisting essentially of
(1) from about 10 percent by weight to about 45 percent by
weight of at least one dibasic ester, (2) from about 55
percent by weight to about 90 percent by weight water, and (3)
at least one thickening agent selected from the group
consisting of water soluble and water swellable thickening
agents, and mixtures thereof, in an amount sufficient to form
a stable emulsion;
Appeal No. 95-4934
Application 07/908,650
3
(b) applying said composition to a substrate bearing an
organic coating;
(c) allowing said composition to remain on said
substrate for a sufficient period of time to loosen said
coating; and
(d) removing said coating from said substrate.
15. A thixotropic emulsion composition consisting
essentially of:
(1) from about 10 percent by weight to about 45 percent
by weight of at least one dibasic ester;
(2) from about 55 percent by weight to about 90 percent
by weight water; and
(3) at least one thickening agent selected from the
group consisting of water soluble and water swellable
thickening agents in an amount sufficient to form a stable
thixotropic emulsion having the ability to cling to vertical
surfaces.
The references relied upon by the examiner as evidence of
obviousness are:
Hodson 4,445,939 May 1,
1984
Jackson 4,780,235 Oct. 25,
1988
Japanese patent 57-83598 May 25,
1982
(Horibe)
Claims 10 and 11 are rejected under 35 U.S.C. § 103 as
being unpatentable over Horibe in view of Jackson, and claims
Appeal No. 95-4934
Application 07/908,650
The appealed claims will stand or fall together; see2
page 3 of the brief and page 2 of the answer.
4
15 through 19 are correspondingly rejected over Horibe in view
of Jackson or Hodson .2
We refer to the several briefs and answers of record for
a complete exposition of the opposing viewpoints expressed by
the appellant and the examiner concerning the above noted
rejections.
These rejections will be sustained for the reasons well
stated by the examiner in her principle and supplemental
answers which reasons we expressly adopt as our own. We add
the following comments for emphasis and completeness.
The pivotal issue on this appeal is whether the Example 3
composition of Horibe constitutes an emulsion which is stable
as required by the claims on appeal. It is axiomatic that, in
proceedings before the Patent and Trademark Office, claims in
an application are to be given their broadest reasonable
interpretation consistent with the specification and that
claim language should be read in light of the specification as
it would be interpreted by one of ordinary skill in the art.
In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
Appeal No. 95-4934
Application 07/908,650
As also correctly indicated by the examiner, the3
appellant’s tests reflect that the emulsion formed by Horibe’s
Example 3 possesses this capability.
5
1988). When so interpreted, the claims under rejection
encompass as a “stable” emulsion pursuant to claims 10 and 15
an emulsion of the type formed by Horibe’s Example 3
composition even though this Example 3 emulsion is temporary
rather than permanent. We will not further burden the record
of this application by reiterating the logical rationale well
expressed by the examiner in support of this view.
It is appropriate, however, to comment upon the
appellant’s apparent belief that the claim term “stable”
should be interpreted as meaning “not changing or fluctuating
....” (brief, page 12). Such an interpretation would be, not
only inconsistent with but, actually controverted by the
appellant’s specification disclosure. As correctly indicated
by the examiner, the disclosure at lines 13 through 16 in
column 3 of the subject specification reflects that a stable
emulsion is one which is capable of being re-emulsified . 3
Pursuant to this disclosure, an emulsion should be considered
stable even though it might separate and require re-
Appeal No. 95-4934
Application 07/908,650
6
emulsification (and thus could not be regarded as “not
changing or fluctuating”). Additionally, the disclosure at
lines 33 through 64 in column 7 of the specification
unambiguously teaches that the emulsions formed by the here
claimed compositions are incapable of being accurately
described as “not changing or fluctuating.” On the contrary,
it is quite clear that these emulsions separate under certain
conditions (e.g., cooling to 15EC) particularly at water
concentrations at the low end of the here claimed range (i.e.,
“about 55 percent”).
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
BRADLEY R. GARRIS )
Appeal No. 95-4934
Application 07/908,650
7
Administrative Patent Judge)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge)
Appeal No. 95-4934
Application 07/908,650
8
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