Ex parte REITZ

Board of Patent Appeals and Interferences

Jul 31, 1998

08107047 (B.P.A.I. Jul. 31, 1998)

Application for patent filed August 17, 1993. According to the appellant, the1
application is a continuation of Application 07/810,545, filed December 19, 1991,
abandoned; which is a continuation of Application 07/593,149, filed October 5, 1990,
abandoned; and which is a continuation-in-part of Application 07/405,178, filed
September 11, 1989, now Patent No. 5,194,181, issued March 16, 1993.
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publication in a law journal and (2) is not binding precedent of the Board.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. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RONALD P. REITZ
__________
Appeal No. 95-3835
Application 08/107,0471
___________
ON BRIEF
___________
Before METZ, OWENS and WALTZ, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of claims 1-7 and 20-32, which
are all of the claims remaining in the application.
Appeal No. 95-3835
Application 08/107,047
2
THE INVENTION
Appellant claims a composite article which includes a cured electrosetting
composition which contains aligned particles and is produced by a recited process. Claim
1 is illustrative and reads as follows:
1. A composite article, comprising:
a first electrically conductive substrate;
a second electrically conductive substrate spaced apart from said first electrically
conductive substrate;
cured electrosetting composition between said first and second substrates, said
cured electrosetting composition having embedded therein voids and having embedded
therein columns of aligned particles;
said voids and columns having been produced by the application of an electric
current to said electrosetting composition during the time when said composition was
curing, said electric current having an electric current density of at least 0.667 milliamps
per square inch;
wherein said electrosetting composition comprises, in an uncured state, a phase
changing vehicle and an aggregate, said phase changing vehicle being both a dielectric
and a polymer, said aggregate comprising particles which will polarize in an electric field,
said uncured electrosetting composition being capable of carrying an electric current
density of at least 0.667 milliams[sic, milliamps] per square inch.
THE REFERENCES
Neet et al. (Neet) 4,505,973 Mar. 19, 1985
7 Kirk-Othmer Encyclopedia of Chemical Technology 729 (John Wiley & Sons, 3d ed.
1980) (ECT).
Appeal No. 95-3835
Application 08/107,047
The rejections of claims 7, 22, 25, 28 and 31 over prior art were withdrawn in the2
examiner’s answer (page 3).
3
THE REJECTIONS
Claims 1-7 and 20-32 stand rejected under 35 U.S.C. § 112, first paragraph, on the
ground that the specification fails to provide an enabling disclosure for the claimed
invention. Claims 1-6, 20, 21, 23, 24, 26, 27, 29, 30 and 32 stand rejected under 35
U.S.C. § 102(b) as being anticipated by, and under 35 U.S.C. § 103 as being obvious
over, each of Neet and ECT.2
OPINION
We have carefully considered all of the arguments advanced by appellant and the
examiner and agree with appellant that the aforementioned rejections are not well founded.
Accordingly, these rejections will be reversed.
Rejection under 35 U.S.C. § 112, first paragraph
The examiner argues that the electrosetting property recited in appellant’s claims is
due to highly unpredictable chemical interactions and that the claims therefore must be
limited to materials which have been shown to have electrosetting properties (answer,
pages 2-3 and 5-8). The examiner acknowledges that appellant has, as pointed out by
appellant (brief, pages 12-13), disclosed working examples, but argues that appellant
provides no theory or general reference which gives guidance which would enable one of
Appeal No. 95-3835
Application 08/107,047
4
ordinary skill in the art to extend appellant’s disclosure beyond the working examples
(answer, page 6). Appellant argues that the disclosure in U.S. 5,194,181 to Reitz provides
a teaching at column 8, lines 51-64, which may be such a theory, and that the examiner has
provided no reasoning in support of the asserted nonenablement (brief, page 21).
A specification complies with the 35 U.S.C. § 112, first paragraph, enablement
requirement if it allows those of ordinary skill in the art to make and use the claimed
invention without undue experimentation. See In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De Nemours &
Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984). As stated by the court in
Wright, 999 F.2d at 1561-62, 27 USPQ2d at 1513:
Nothing more than objective enablement is required, and therefore it is
irrelevant whether this teaching is provided through broad terminology or
illustrative examples. [Citation omitted.]
When rejecting a claim under the enablement requirement of section
112, the PTO bears an initial burden of setting forth a reasonable
explanation as to why it believes that the scope of protection provided by that
claim is not adequately enabled by the description of the invention provided
in the specification of the application; this includes, of course, providing
sufficient reasons for doubting any assertions in the specification as to the
scope of enablement. If the PTO meets this burden, the burden then shifts to
the applicant to provide suitable proofs indicating that the specification is
indeed enabling. [Citation omitted.]
Appeal No. 95-3835
Application 08/107,047
5
The examiner asserts that it was highly unpredictable whether a material is
electrosettable, but provides no supporting evidence. We note that the teaching in U.S.
5,194,181 which indicates that electrosettable compositions include any phase changing
composition which is substantially a dielectric material and is otherwise settable or curable
(col. 4, lines 4-14; col. 8, lines 59-64) appears to be contrary to the examiner’s assertion.
Also, the examiner sets forth no reasoning as to why the disclosure regarding
electrosettable materials in U.S. 5,194,181 and the examples relied upon by appellant
would not have enabled one of ordinary skill in the art to carry out appellant’s invention as
claimed. Accordingly, we conclude that the examiner has not carried his burden of
establishing a prima facie case of nonenablement of appellant’s claimed invention.
Rejection over Neet
Neet discloses a rigid polyurethane foam having carbon black mixed therein,
preferably by simply mixing carbon black with each of the two components used to prepare
the rigid foam (col. 2, lines 26-27 and 38-42). The carbon black preferably is
homogeneously mixed in the two components (col. 3, lines 12-21). In an example, before
the resistivities of samples of the carbon black-containing polyurethane foam are
measured, the ends of the samples are coated with an electrolytic paste and then copper
electrodes are applied to the ends (col. 4, lines 14-20).
Each of appellant’s independent claims requires that the particles be aligned.
Appeal No. 95-3835
Application 08/107,047
6
Appellant states in his specification (page 15, line 25 - page 16, line 1) that the particles
tend to form columns along the electric lines of flux. The examiner states that since no
particular alignment is recited in the claims, he considers Neet’s homogeneously-
distributed particles to be aligned (answer, page 10). Appellant argues, based on
dictionary definitions, that aligned particles must be disposed in a line (reply brief, pages
5-6).
We agree with appellant that appellant’s claims require that the particles be
disposed in lines. The examiner has provided no evidence that Neet’s mixing of carbon
black particles into the polyurethane foam components produces lines of particles in the
foam. Also, the examiner has not explained why or how one of ordinary skill in the art
would have modified Neet’s method such that the carbon black particles are aligned.
Consequently, the examiner has not established a prima facie case of anticipation or
obviousness of appellant’s claimed invention over Neet.
Rejection over ECT
Page 729 of ECT, which is relied upon by the examiner (answer, page 3), discloses
a liquid crystal device. The examiner argues that the liquid crystal molecules become
aligned and solid when electric current is passed through them, and that if the medium
surrounding the particles were a fluid, the aligned particles would not stay aligned and
separated as shown in Fig. 5 of ECT (answer, page 11).
Appeal No. 95-3835
Application 08/107,047
7
Each of appellant’s independent claims requires that the electrosetting composition
is cured. As indicated on page 733 of the portion of ECT provided by appellant, the liquid
crystal material in a liquid crystal device is in the form of a viscous fluid. The material is not
cured. If it were cured, the molecules could not switch back and forth between the two
positions shown in Fig. 5 of ECT (page 729) as the electrical field alternately is applied
and terminated, and the device would be inoperable.
Also, the examiner has set forth no explanation as to why or how one of ordinary
skill in the art would have modified the liquid crystal device such that the liquid crystal
material is cured.
For the above reasons, the examiner has not established a prima facie case of
anticipation or obviousness of appellant’s claimed invention over ECT.
DECISION
The rejections of claims 1-7 and 20-32 under 35 U.S.C. § 112, first paragraph, on
the ground that the specification fails to provide an enabling disclosure for the claimed
invention, and of claims 1-6, 20, 21, 23, 24, 26, 27, 29, 30 and 32 under 35
Appeal No. 95-3835
Application 08/107,047
8
U.S.C. §§ 102(b) and 103 over each of Neet and ECT, are reversed.
REVERSED
ANDREW H. METZ )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 95-3835
Application 08/107,047
9
Howard Kaiser
Office of Counsel (Patents), Code 304
Carderock Division
Naval Surface Warfare Center
Bethesda, MD 20084-5000