Ex parte Scott

Board of Patent Appeals and Interferences

Sep 28, 2000

08251148 (B.P.A.I. Sep. 28, 2000)

Application for patent filed May 31, 1994.1
1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CHRISTOPHER E. SCOTT

_____________
Appeal No. 1997-1498
Application 08/251,1481
______________
ON BRIEF
_______________
Before METZ, PAK, and WALTZ, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134
from the examiner’s refusal to allow claims 1 through 17 and
19 through 21, which are all of the claims pending in the
Appeal No. 1997-1498
Application No. 08/251,148
The examiner has withdrawn the rejection of claims 32
through 17 and 19 through 21 under 35 U.S.C. § 112, second
paragraph, set forth in the final Office action and the
2
application.
According to appellant (Brief, page 2), “[t]he claims
stand or fall together.” Therefore, we select claim 1, the
broadest claim in this application, as the representative
claim upon which we will decide this appeal consistent with 37
CFR § 1.192(c)(7) and (c)(8) (1995). Claim 1 is reproduced
below:
1. A visually clear blend of thermoplastic polymers
comprising a polyetherimide and a polyester of (a) an acid
component comprising 2,6-naphthalene dicarboxylic acid and (b)
a glycol component comprising at least one glycol selected
from the group consisting of ethylene glycol, 1,3-trimethylene
glycol, 1,4-butanediol, 1,5-pentanediol, 1,6-hexanediol, 1,7-
heptanediol, neopentyl glycol, 1,4-cyclohexanedimethanol and
diethylene glycol, wherein the amount of said 2,6-naphthalene
dicarboxylic acid in the acid component is greater than about
30 mol% when 1,4-cyclohexane-dimethanol is present in said
glycol component.
The sole prior art reference relied upon by the examiner
is:
Minnick 5,284,903 Feb. 8, 1994
(Filed Dec. 23, 1992)
The appealed claims stand rejected as follows :2
Appeal No. 1997-1498
Application No. 08/251,148
Answer. See the Answer to the Reply Brief dated August 21,
1996, Paper No. 16.
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(1) Claims 1 and 2 under 35 U.S.C. § 112, first paragraph, as
lacking descriptive support for the invention presently
claimed; and
(2) Claims 1 through 17 and 19 through 21 under 35 U.S.C. §
103 as unpatentable over the disclosure of Minnick.
We have carefully reviewed the claims, specification and
applied prior art, including all of the arguments advanced by
both the examiner and appellants in support of their
respective positions. This review leads us to conclude that
only the examiner’s § 112 rejection of claims 1 and 2 is well
founded. Accordingly, we affirm the § 112 rejection of claims
1 and 2, but reverse the § 103 rejection of claims 1 through
17 and 19 through 21. Our reasons for this determination
follow.
Rejection under 35 U.S.C. § 112, First Paragraph
The examiner has rejected claims 1 and 2 under 35 U.S.C.
§ 112, first paragraph, as lacking descriptive support in the
application disclosure as originally filed for the
subsequently added limitations in claims 1 and 2. According
Appeal No. 1997-1498
Application No. 08/251,148
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to the examiner (Answer, page 3), “[t]he specification, as
originally filed, does not provide express support for the
‘greater than about 30 mol%’ limitation added to claim 1." On
the other hand, appellants argue (Brief, page 3) that:
On November 9, 1994, claim 1 of the present
invention was amended to recite “wherein the amount of
said 2,6-napthalene dicarboxylic acid in the acid
component is greater than about 30 mol% when 1,4
cyclohexane-dimethanol is present in said glycol
component”. Table 1, on page 12 of the application shows
that the clear compositions which contain CHDM (G1, H1,
I1, J1, and K1) have 32, 34, 66 and 100 mol% 2,6-
naphthalenedicarboxylic acid (NA), respectively. The
amount of NA in G1 (32 mol%) is clearly about 30, and 34,
66 and 100 are clearly greater than about 30 mol %.
Thus, the specification (specifically compositions G1-K1
of Table 1) clearly support the November 11, 1994
amendment. Reversal of the rejection based upon 112 is
requested.
The purpose of the “written description requirement of 35
U.S.C. § 112, first paragraph, is to ensure that applicants
had possession, as of the filing date of the application
relied on, of the subject matter later claimed by them. In
re Blaser, 556 F.2d 534, 537, 194 USPQ 122, 124-25 (CCPA
1977). Satisfaction of the “written description” requirement
does not require that the subject matter later claimed be
described in exactly the same terms in the application as
Appeal No. 1997-1498
Application No. 08/251,148
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originally filed. Vas-cath Inc. v. Mahurkar, 935 F.2d 1555,
1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991); see also In re
Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976)(“lack
of literal support... is not enough... to support a rejection
under 112"). The test is whether the application disclosure
as originally filed reasonably conveys to one of ordinary
skill in the art that applicants had possession of the
presently claimed subject matter. Ralston Purina Co. v. Far-
Mar-Co. Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed.
Cir. 1985); In re Smythe, 480 F.2d 1376, 1382, 178 USPQ 279,
284 (CCPA 1973).
The dispositive question here is, therefore, whether
Table 1 at page 12 of the specification reasonably conveys to
one of ordinary skill in the art that appellants had
possession of the newly added limitation “wherein the amount
of said 2, 6-naphthalene dicarboxylic acid in the acid
component is greater than about 30 mol% when 1,4 cyclohexane-
dimethanol is present in said glycol component” in claim 1.
We answer this question in the negative.
Appeal No. 1997-1498
Application No. 08/251,148
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The examiner finds, and appellants do not dispute, that
the application disclosure as originally filed does not
provide literal support for employing greater than about 30
mol% of 2, 6-naphthalene dicarboxylic acid. As indicated by
appellants (Brief, page 3), the examples and Table 1 in the
specification show visually clear blend of thermoplastic
polymer compositions containing 32, 34, 66 and 100 mol% of
2,6-naphthalenedicarboxylic acid, respectively, together with
1, 4 cyclohexane-dimethanol. Although these examples and
Table 1 provide descriptive support for employing “greater
than about 32 mol% of 2,6-naphthalenedicarboxylic acid” in a
visually clear blend of thermoplastic polymer compositions,
see Ex parte Jackson, 110 USPQ 561 (Bd. App. 1956), they do
not provide descriptive support for employing “greater than
about 30 mol% of 2, 6-naphthalenedicarboxylic
acid” in a visually clear blend of thermoplastic polymer
compositions, see Blaser, 556 F.2d at 537, 194 USPQ at 125.
It may very well be true that the term “about 30 mol%” is
inclusive of “32 mol%” of 2,6-naphthalenedicarboxylic acid as
argued by appellants. What is equally true, however, is that
Appeal No. 1997-1498
Application No. 08/251,148
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the term “about 30 mol%” is also inclusive of “28 to 30 mol%”
of naphthalenedicarboxylic acid, which are not described in
the application disclosure as originally filed within the
meaning of 35 U.S.C. § 112, first paragraph. Id at 537, 194
USPQ at 125. Accordingly, we affirm the examiner’s decision
rejecting claims 1 and 2 under 35 U.S.C. § 112, first
paragraph.
Rejection under 35 U.S.C.§ 103
The examiner has rejected claims 1 through 17 and 19
through 21 under 35 U.S.C. § 103 as obvious over the
disclosure of Minnick. See the Answer, page 4. In order to
establish a prima facie case of obviousness under Section 103,
the examiner must supply some objective teaching or suggestion
in the applied prior art taken as a whole and/or knowledge
generally available to one of ordinary skill in the art that
would have led the artisan to
the claimed invention, without recourse to the teachings of
Appeal No. 1997-1498
Application No. 08/251,148
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appellants’ disclosure. See, e.g., In re Oetiker, 977 F.2d
1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992)(Nies,
J., concurring); In re Fine, 837 F.2d 1071, 1074-75, 5 USPQ2d
1596, 1598-1600 (Fed. Cir. 1988). The burden of producing a
factual basis to support a prima facie case of obviousness
rests on the examiner. In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 177-78 (CCPA 1967).
The claimed subject matter is directed to “a visually
clear blend of thermoplastic polymers” comprising a
polyetherimide and a polyester of an acid component comprising
2, 6-naphthalene dicarboxylic acid and a glycol component
comprising 1,
3-trimethylene glycol, 1, 4-butanediol, 1, 5-pentanediol, 1,6-
hexanediol, 1, 7-heptanediol, neopentyl glycol, 1,4-
cyclohexane-dimethanol and diethylene glycol. See, e.g.,
claim 1. When 1, 4-cyclohexane dimethanol is used as a glycol
component, the amount of 2, 6-naphthalenedicarboxylic acid in
the acid component is at least about 30 mol%. Id. Moreover,
according to Table 1, on page 12 of the specification, to
obtain “a visually clear blend of thermoplastic polymers”, not
Appeal No. 1997-1498
Application No. 08/251,148
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only are the specific ingredients recited in the claims on
appeal required, but also
specific proportions of those ingredients are necessary. In
other words, the limitation “a visually clear blend of
thermoplastic polymers” limits the claimed compositions to
those compositions having only those specific proportions of
the claimed ingredients, which are capable of forming a
visually clear blend of thermoplastic polymers.
As found by the examiner, Minnick discloses polymer
blends comprising a polyetherimide and at least one polyester
resin derived from a cyclohexanedimethanol and a carbocyclic
acid or ester. See column 1, lines 50-55. The carbocyclic
acid, according to Minnick, generically refers to any organic
compound whose carbon skeleton forms at least part of a closed
ring. See column 5, lines 40-46. Although Minnick indicates
that iso and terephthalic acids are the preferred carbocyclic
acids (see column 3, lines 15-20 and columns 7 and 8, example
2 and the Table), it also mentions 2, 6-
naphthalenedicarboxylic acid as one of the carbocyclic acids
useful for forming a polyester resin (see column 5, lines 53-
Appeal No. 1997-1498
Application No. 08/251,148
See Minnick in its entirety in conjunction with Table 13
on page 12 of the specification.
10
66).
Although Minnick generically describes polymer blends
having the claimed ingredients, it does not provide any
guidance of forming the claimed visually clear blend of
thermoplastic polymers. We agree with appellants that:
Minnick is silent as to visual clarity [regarding its
polymer compositions] and in fact, Minnick’s preferred
composition (100 mol% CHDM/100 mol% T) is cloudy.3
We also observe that Minnick does not recognize specific
proportions of 2, 6-naphthalene dicarboxylic acid in the acid
component of a polyester as a result effective variable for
forming a visually clear blend of thermoplastic polymers. See
Minnick in its entirety. On this record, we are constrained
to agree with appellants that Minnick would not have rendered
the claimed subject matter prima facie obvious to one of
ordinary skill in the art. Accordingly, we reverse the
Appeal No. 1997-1498
Application No. 08/251,148
11
examiner’s decision rejecting claims 1 through 17 and 19
through 21 under 35 U.S.C. § 103.
In view of the foregoing, the decision of the examiner 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
ANDREW H. METZ )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Appeal No. 1997-1498
Application No. 08/251,148
12
THOMAS A. WALTZ )
Administrative Patent Judge )
CKP:pgg
Karen A. Harding
Eastman Chemical Company
P.O. Box 511
Kingsport, TN 37662