Ex parte Ritter

Board of Patent Appeals and Interferences

Apr 30, 1999

08066087 (B.P.A.I. Apr. 30, 1999)

Application for patent filed May 26, 1993. According1
to appellant, this application is a National stage application
under 35 U.S.C. § 371 of PCT/EP91/02169, filed November 18,
1991.
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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journal and (2) is not binding precedent of the Board.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 WOLFGANG RITTER
________________
Appeal No. 96-2432
Application No. 08/066,0871
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ON BRIEF
________________
Before KIMLIN, JOHN D. SMITH and KRATZ, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 21-
26 and 28-45. Claims 46-78, the other claims remaining in the
Appeal No. 96-2432
Application No. 08/066,087
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present application, stand withdrawn from consideration.
Claim 21 is illustrative:
21. A composition of matter useful as a high-strength
material which is degradable and resorbable in the human
and animal organisms comprising cured (meth)acrylic acid
esters of polyfunctionally hydroxyl-terminated oligomers
of lower hydroxycarboxylic acids, wherein said
(meth)acrylic acid esters of polyfunctionally hydroxyl-
terminated oligomers of lower hydroxycarboxylic acids
have been prepared under solvent-free conditions in the
steps of the production of the oligomer(s), the
conversion thereof to the poly-functional (meth)acrylic
acid esters and the curing-shaping thereof, and three-
dimensionally cross-linked by boron-free, free radical-
initiated polymerization and exhibit a tensile strength
of at least 10N/mm .2
In the rejection of the appealed claims, the examiner
relies upon the following reference:
Ritter 4,731,425 Mar. 15, 1988
Appellant's claimed invention is directed to cured
(meth)acrylic acid esters of polyfunctionally hydroxyl-
terminated oligomers of lower hydroxycarboxylic acids that
have been prepared under solvent-free conditions. The cured
esters exhibit a tensile strength of at least 10N/mm . The2
cured esters of the present invention find utility as high-
strength materials that are degradable and resorbable in human
and animal organisms such that they can be used as pins for
the fixation of bone fragments.
Appeal No. 96-2432
Application No. 08/066,087
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Appealed claims 21-26 and 28-45 stand rejected under
35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C.
§ 103 as being unpatentable over Ritter.
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner's
rejection.
Ritter discloses the preparation of cured (meth)acrylic
acid esters of polyfunctionally hydroxyl-terminated oligomers
of lower hydroxycarboxylic acids. However, Ritter does not
teach that the esters are prepared under solvent-free
conditions, as required by the appealed claims, and the
reference is silent with respect to the tensile strength of
the cured esters. According to the examiner, since Ritter
discloses the preparation of esters by reacting the same
components recited in the appealed claims, "the burden shifts
to appellant to show that the claimed product is novel and
unobvious" (page 4 of Answer).
It is well settled that when a claimed product reasonably
appears to be substantially the same as a product disclosed by
the prior art, the burden is on the applicant to prove that
the product of the prior art does not necessarily or
Appeal No. 96-2432
Application No. 08/066,087
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inherently possess characteristics attributed to the claimed
product. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433 (CCPA 1977). In such situations it is the examiner's
initial burden to demonstrate such a close correspondence
between the products of the applicant and the prior art that
it can be reasonably concluded that both products are
essentially the same in properties. As an example, the
examiner may demonstrate that both the claimed and prior art
products are produced by essentially the same process.
In the present case, we find that the examiner has failed
to make the case that the cured coatings of Ritter's EXAMPLE
21 inherently exhibit the claimed tensile strength. As
appreciated by the examiner, although the ester of EXAMPLE 21
is "in pure form," the ester was not prepared under solvent-
free conditions, as required by the appealed claims. Since
appellant's esters and Ritter's esters are prepared under
different conditions, it is incumbent upon the examiner to
establish that one of ordinary skill in the art would
reasonably expect the different reaction conditions to,
nevertheless, produce essentially the same product. Since the
Appeal No. 96-2432
Application No. 08/066,087
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examiner has failed to do so on this record, we find that the
examiner's position is lacking the requisite factual support
to shift to appellant the burden of proving that the reference
cured esters do not have the claimed tensile strength.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
clm
Appeal No. 96-2432
Application No. 08/066,087
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Wayne C. Jaeschke
Henkel Corporation Patent Dept.
2500 Renaissance Blvd.
Ste. 200
Gulph Mills, PA 19406