Ex parte Quinn et al.

Board of Patent Appeals and Interferences

Feb 9, 2000

08355712 (B.P.A.I. Feb. 9, 2000)

Application for patent filed 14 December 1994. According to applicants, the1
application on appeal is a continuation-in-part of application 07/709,745, filed 3 June
1991. The real party in interest is The Lubrizol Corporation.
The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT E. QUINN, W. MICHAEL BURK
WILLIAM S. HENRY and STEVEN A. GOODLIVE

_____________
Appeal 1997-2805
Application 08/355,7121
______________
Before: WINTERS and WILLIAM F. SMITH, Administrative Patent
Judges and McKELVEY, Senior Administrative Patent Judge.
McKELVEY, Senior Administrative Patent Judge.
MEMORANDUM OPINION and ORDER
Decision on appeal under 35 U.S.C. § 134
Upon consideration of the appeal brief and the examiner's
answer, it is
Appeal 97-2805
Application 08/355,712
As of the end of November 1999, the ex parte backlog at the board was 83442
appeals. 1230 Off. Gaz. Pat. & Tm. Office 43 (Jan. 11, 2000).
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ORDERED that the examiner's rejection of claims 1-18
as being unpatentable under 35 U.S.C. § 103 over Itoh is
reversed.
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A.
In the parent application a panel of the board reversed a
rejection of claims 1-29 (as presented in the parent
application) over Itoh (copy of prior board opinion attached).
Applicants continued prosecution and the issue of whether
claims 1-18 (as presented in the application on appeal) are
unpatentable over Itoh is again before us.
The brief presented by applicants and the examiner's
answer have been of no assistance in this appeal. Instead, we
have been left to review the record, essentially without help
from either applicants or the examiner. The appeal is Exhibit
1 as to why the board has an unacceptably high backlog.2
We reverse the rejection of claims 1-18 over Itoh because
it does not appear to us that Itoh describes the reaction of
Appeal 97-2805
Application 08/355,712
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an impure "acid" with a "salt." Item (A) in claim 1 is an
impure acid having the formula:
Note that the moiety SO H is an acid moiety, not a salt3
moiety.
Itoh describes a process for making the impure acid which
includes the use of sulfuric acid. Essentially, Itoh reacts
(1) a nitrile, (2) a sulfonic acid or sulfonic acid salt and
(3) sulfuric acid (col. 3, lines 54-57). The result is a
sulfonic acid salt (col. 3, last line to col. 4, line 2).
Thus, the presence of sulfuric acid results in the preparation
of a salt regardless of whether a sulfonic acid or a sulfonic
acid salt is used as item (2), supra.
Accordingly, we hold that Itoh fails to make out a prima
facie case of obviousness vis-a-vis claims 1-18. The
examiner's reliance on the Itoh description of the use of a
sulfonic acid fails because Itoh's subsequent reaction of the
Appeal 97-2805
Application 08/355,712
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product of the reaction of (1), (2) and (3) always involves a
reaction of a salt. Claims 1-18 require an acid.
B.
In the prior board opinion, the panel made a new ground
of rejection of then claims 1-29 under 37 CFR § 1.196(b).
Facially, the new ground of rejection is equally
applicable to claims 1-18 currently on appeal.
In making the new ground of rejection, the panel relied
on and cited certain evidence; it also suggested that a
further search and/or interrogatories to applicants might be
appropriate. Insofar as we can tell, however, neither
the examiner nor applicants have addressed the new ground of
rejection. On this record, therefore, the issues raised by
the new ground of still need to be taken up for action. At a
minimum, the examiner should state on the record the reasons
why it is believed the new ground of rejection should not be
made as to claims 1-18 on appeal.
REVERSED.
Appeal 97-2805
Application 08/355,712
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______________________________
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
______________________________)
WILLIAM F. SMITH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS
AND
)
INTERFERENCES
)
______________________________)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
Appeal 97-2805
Application 08/355,712
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cc (via First Class Mail):
THE LUBRIZOL CORPORATION
Patent Department -- Patent Administrator
29400 Lakeland Boulevard
Wickliffe, OH 44092-2298