Ex parte Razavi

Board of Patent Appeals and Interferences

Mar 28, 2000

08270198 (B.P.A.I. Mar. 28, 2000)

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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journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte HOMAUNE A. RAZAVI
________________
Appeal No. 1997-1682
Application No. 08/270,198
________________
ON BRIEF
________________
Before KIMLIN, OWENS and KRATZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 2,
6, 9 and 11. The appeal of claims 8 and 10, the other claims
remaining in the present application, has been withdrawn by
appellant. Claims 2 and 9 are illustrative:
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Application No. 08/270,198
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2. A method for substantially eliminating yellowing from
exposure to UV light of a laminate of a UV-stabilized vinyl
film layer and a UV-cured top coat layer, comprising reducing
the presence of UV light in the vinyl film by providing the
laminate with a layer that blocks UV light from penetrating
the vinyl layer.
9. A yellow-resistant, vinyl film laminate comprising
(a) a plasticized polyvinylchloride layer, and (b) a UV-cured
top coat containing active UV-activatable, free radical-
generating species, wherein said free radical-generating
species and said plasticizer are sufficiently immiscible as to
avoid reaction in the presence of UV light to an extent
sufficient to cause yellowing of the polyvinylchloride layer.
The examiner relies upon the following references as
evidence of obviousness:
Olson et al. (Olson) 4,533,595 Aug. 06, 1985
DeBergalis et al. (DeBergalis) 4,585,693 Apr. 29, 1986
Tolliver et al. (Tolliver) 5,069,964 Dec. 03, 1991
Nakajima et al. (Nakajima) 5,254,525 Oct. 19, 1993
(filed Feb. 19, 1992)
Appellant's claimed invention is directed to a method for
preventing the migration of unreacted initiator in a UV-cured
top coat into a UV-stabilized vinyl film layer. The invention
defined by claims 2 and 6 accomplishes this end by placing a
UV-absorbing layer between the UV-cured top coat and the UV-
stabilized vinyl film. The invention defined by claims 9 and
11 are directed to an embodiment wherein the undesirable
migration is prevented by utilizing free radical-generating
species and plasticizers that are immiscible with each other.
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Application No. 08/270,198
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Appellant submits at page 3 of the Brief that "[c]laims 2
and 6 do not stand or fall together." Also, appellant
stipulates that "[c]laims 9 and 11 do stand or fall together."
Appealed claim 9 stands rejected under 35 U.S.C. § 112,
second paragraph. Claims 2 and 6 stand rejected under
35 U.S.C. § 103 as being unpatentable over Nakajima in view of
Olson. Also, claims 9 and 11 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Tolliver in view of
DeBergalis.
We consider first the examiner's rejection of claim 9
under 35 U.S.C. § 112, second paragraph. According to the
examiner, "the phrase 'sufficiently immiscible as to . . . to
cause yellowing' is vague and indefinite because the clause
'to an extent sufficient to cause yellowing . . .' appears
confusing and contradictory with respect to the language to
the preamble which recites a 'yellow-resistant' article" (page
3 of Answer). However, the applicable test is not whether
claim language could be interpreted in such a way as to render
the invention indefinite, but, rather, whether the claim
language when read in light of the specification and state of
the prior art would be indefinite to one of ordinary skill in
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Application No. 08/270,198
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the art. In the present case, we concur with appellant that
when the criticized claim language is read in light of the
present specification one of ordinary skill in the art would
readily understand that "the components are sufficiently
immiscible so that when exposed to light they do not react
sufficiently to cause yellowing - i.e. significant reaction
together is avoided so as not to cause yellowing" (page 3 of
Brief). Accordingly, we will not sustain the examiner's
rejection under § 112, second paragraph.
We will sustain the examiner's rejection of claims 2 and
6 under § 103 over Nakajima in view of Olson. As explained by
the examiner, Nakajima clearly teaches a vinyl film laminate
comprising a plasticized polyvinylchloride layer, a UV-curable
top coat and a UV-absorbing layer situated between the
polyvinyl-chloride layer and the top coat. In our view,
Nakajima clearly describes the features recited in claims 2
and 6 within the meaning of 35 U.S.C. § 102. Since
anticipation is the epitome of obviousness, we find no error
in the examiner's rejection. Since Nakajima describes the
features of claims 2 and 6, it is of no moment that, as argued
by appellant, Nakajima does not recognize the problem of
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yellowing occurring when unreacted UV activated free-radical-
generating species from one layer are brought together with
the plasticizer of the vinyl layer (page 3 of Brief, last
paragraph). It would seem that Nakajima would have no
opportunity to recognize the stated problem since the UV
absorbing layer of Nakajima would prevent the occurrence of
such a problem. Furthermore, we totally agree with the
examiner that, based on Olson and the state of the prior art,
"[i]t would have been obvious to a person of ordinary skill in
the art at the time the invention was made to use UV-absorbing
layers to block UV radiation from reaching underlying PVC
layers" in order "to prevent UV-related discoloration and
degradation in PVC-containing laminates" (page 5 of Answer,
first paragraph).
We now turn to the examiner's rejection of claims 9 and
11 over Tolliver in view of DeBergalis. We will not sustain
this rejection because, as urged by appellant, neither of the
"references disclose free radical-plasticizer immiscibility as
a means for reducing yellowness caused by interaction of the
two" (sentence bridging pages 5 and 6 of Brief). Furthermore,
neither of the cited references makes any reference to the
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immiscibility of the free radical-generating species and the
plasticizer. Moreover, although the examiner states that
Tolliver discloses a means of preventing the migration of
plasticizers and other compounds in or out of the PVC
substrate, our view of the passages of Tolliver cited by the
examiner finds no discussion of migration of plasticizers and
other compounds into the PVC substrate. Perhaps the examiner
had in mind appellant's discussion of his discovery at page 2
of the present specification, lines 8-12. To quote from
Tolliver, "[a]nother risk, however, is that agents within the
substrate article such as plasticizers, will tend to migrate
from the substrate into the sheeting, commonly also causing
pigments or other agents in the substrate to penetrate the
sheeting as well" (column 2, lines 40-44, emphasis added).
Tolliver further discloses that "[i]n many instances, when the
plasticizer migrates into the sheeting it may tend to carry
along other agents, e.g., colorants in the substrate such as
pigments and dyes, which further impair the performance or
appearance of the sheeting" (column 3, lines 2-6, emphasis
added).
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One final point remains. Upon return of this application
to the examiner, the examiner should consider whether the
subject matter defined by claims 9 and 11 finds enabling
support in appellant's specification. The present
specification gives no examples of the types of free radical-
generating species and plasticizers that are sufficiently
immiscible to avoid yellowing. Our review of appellant's
specification finds only one scant reference to the claimed
embodiment of immiscible components, viz., at page 4, at lines
9-11, which read "by employing a UV-initiator species that is
substantially immiscible with the plasticizer." The examiner
should consider whether one of ordinary skill in the art would
have to resort to undue experimentation to determine the
particular classes of UV-initiator species and plasticizers
that are sufficiently immiscible.
In conclusion, based on the foregoing, the examiner's
rejection under 35 U.S.C. § 112, second paragraph, is
reversed, as is the examiner's rejection of claims 9 and 11
under 35 U.S.C. § 103. The examiner's rejection of claims 2
and 6 under 35 U.S.C. § 103 is affirmed. Accordingly, the
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examiner's decision rejecting the appealed claims is affirmed-
in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PETER F. KRATZ )
Administrative Patent Judge )
ECK:clm
Michael J. Murphy
Monsanto Co.
730 Worcester St.
Springfield, MA 01151