Ex parte Sharma

Board of Patent Appeals and Interferences

Nov 30, 1999

08199863 (B.P.A.I. Nov. 30, 1999)

Application for patent filed February 22, 1994. 1
According to the appellant, the application is a division of
Application 07/956,532, filed October 5, 1992, now U.S. Patent
No. 5,300,256, issued April 5, 1994; which is a division of
Application 07/513,389, filed April 23, 1990, now U.S. Patent
No. 5,153,029, issued October 6, 1992; which is a
continuation-in-part of Application 07/392,759, filed August
11, 1989, now U.S. Patent No. 5,204,022, issued April 20,
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not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MAHENDRA K. SHARMA
__________
Appeal No. 1997-2376
Application 08/199,8631
___________
ON BRIEF
___________
Before PAK, OWENS and WALTZ, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
Appeal No. 1997-2376
Application 08/199,863
2
claims 49, 50, 53 and 54 as amended after final rejection.
These are all of the claims remaining in the application.
THE INVENTION
Appellant claims a method for applying meltable polymer
additives such as antioxidants, thermal stabilizers,
colorants, lubricants, mold release agents, and antistatic
agents to polymer particles. Claim 49 is illustrative and
reads as follows:
49. A method for treating polymer particles with a
dispersion in water of one or more meltable polymer additives
said method comprising
contacting with an aqueous medium under conditions of
agitation for a time to efficiently wet with water and form a
dispersion the composition comprising:
i) one or more water insoluble, meltable polymer
additives, wherein substantially all of said polymer
additives have a particle size of less than about 40 Fm,
ii) at least one surfactant having a low hydrophobic-
lipophobic balance value less than 9, wherein said
surfactant is adsorbed on the surface of said water
insoluble, meltable polymer additive particles, and
iii) at least on surfactant having a high hydrophobic-
lipophobic balance value of greater than 9,
wherein said composition is in powder form having a particle
size of about 5.0 to about 1000.0 Fm and contains about 2.0 to
Appeal No. 1997-2376
Application 08/199,863
3
about 40.0 weight % of encapsulated water based on the total
of said composition; and
contacting the dispersion with polymer particles.
THE REFERENCES
Hyche et al. (Hyche) 4,880,470 Nov. 14, 1989
Sharma 5,204,022 Apr. 20, 1993
THE REJECTIONS
Claims 49, 50, 53 and 54 stand rejected as follows: under
the judicially created doctrine of obviousness-type double
patenting over claims 1-47 of Sharma, and under 35 U.S.C.
§ 103 over Hyche.
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, we reverse these rejections.
We need to address only claim 49, which is appellant’s
sole independent claim.
Obviousness-type double patenting rejection
Appellant’s claim 49 requires, inter alia, that the
Appeal No. 1997-2376
Application 08/199,863
4
composition has a particle size of about 5.0 to about 1000.0
Fm and contains about 2.0 to about 40.0 wt% of encapsulated
water based on the total of the composition. The examiner has
not pointed out, and it is not apparent, where these
limitations are found in any claim of Sharma.
The examiner argues that even if appellant’s claimed
invention is not an obvious variant over the claims of Sharma,
appellant’s claimed invention would have been obvious over the
claims of Sharma coupled with Sharma’s disclosure (answer,
page 4). In support of this argument the examiner relies upon
In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). The
examiner, however, does not explain, and it is not apparent,
why Schneller supports the examiner’s position.
When an examiner makes an obviousness-type double
patenting rejection, the examiner may use the patent’s
specification as a dictionary to determine the meaning of
terms in the patent’s claims. See In re Vogel, 422 F.2d 438,
441, 164 USPQ 619, 621-22 (CCPA 1970). The disclosure of the
patent, however, may not be used as though it were prior art.
See General Foods Corp. v. Studiengesellschaft Kohle mbH, 972
Appeal No. 1997-2376
Application 08/199,863
5
F.2d 1272, 1281, 23 USPQ2d 1839, 1846 (Fed. Cir. 1992).
Because the examiner has not explained why a method which
includes appellant’s claim limitations noted above would have
been fairly suggested to one of ordinary skill in the art by
any claim of Sharma, the examiner has not carried the burden
of establishing a prima facie case of obviousness-type double
patenting. Consequently, we reverse the obviousness-type
double patenting rejection.
Rejection under 35 U.S.C. § 103
As correctly pointed out by the examiner (answer, page
6), Hyche does not disclose the requirements in appellant’s
claim 49 of a polymer additive particle size of less than
about 40 Fm, at least one surfactant having a hydrophobic-
lipophobic balance (HLB) value of less than 9, and a
composition which is in powder form, has a particle size of
about 5.0 to about 1000.0 Fm, and contains about 2.0 to about
40.0 wt% of encapsulated water based on the total of the
composition.
The examiner argues (answer, pages 6-7) that
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Application 08/199,863
6
Hyche discloses use of various surfactants which
include an ethoxylated linear alcohol governed by an
HLB value of 15.4 and, as operable equivalent, other
commercially available emulsifiers which include
SWS-211, ethoxylated stearyl alcohol, etc. as being
operable within the scope of the method disclosed at
col. 2, liens [sic, lines] 32+ which includes water
encapsulated at a content of about 40 wt.%,
therefore it would have been obvious to the skilled
artisan to use a mixture of surfactants including
the disclosed ethoxylated stearyl alcohol in
combination with any of the disclosed commercially
available surfactants, based on their recognized
equivalency, in the method disclosed at col. 2,
lines 32+ with a reasonable expectation of success.
This argument is based upon an incorrect reading of the
reference. Hyche discloses that surfactants and emulsifiers
such as Tergitol 15-S-15, which is an ethoxylated linear
alcohol surfactant and has an HLB value of 15.4, can be used.
This is the only such surfactant disclosed in the reference.
Hyche states that the SWS-211 is an anti-foam agent and,
contrary to the examiner’s assertion, does not indicate that
it is an equivalent to the surfactant (col. 4, lines 5-6).
Also, Hyche does not disclose an HLB value of this material.
The examiner, therefore, has not provided evidence which
discloses use of a surfactant having an HLB greater than 9 in
combination with a surfactant having an HLB less than 9 or
Appeal No. 1997-2376
Application 08/199,863
7
which would have fairly suggested this combination to one of
ordinary skill in the art.
As for the examiner’s argument regarding encapsulated
water, Hyche teaches that water is used in the method of
making the composition (col. 2, lines 36-52). Hyche, however,
does not disclose that the product is in powder form and has
about 2 to about 40 wt% of encapsulated water as required by
appellant’s claim 49.
The examiner argues that since Hyche does not disclose
any particle sizes, he would have fairly suggested to one of
ordinary skill in the art that any particle size would be
useful in his method (answer, page 7). In order for a prima
facie case of obviousness of appellant’s claimed invention to
be established, the prior art must be such that it would have
provided one of ordinary skill in the art with both a
suggestion to carry out appellant’s claimed process and a
reasonable expectation of success in doing so. See In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed.
Cir. 1988). “Both the suggestion and the expectation of
success must be founded in the prior art, not in the
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Application 08/199,863
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applicant’s disclosure.” Id. The mere possibility that the
prior art could be modified such that appellants’ process is
carried out is not a sufficient basis for a prima facie case
of obviousness. See In re Brouwer, 77 F.3d 422, 425, 37
USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71 F.3d
1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995). The
examiner has not established that Hyche would have fairly
suggested, to one of ordinary skill in the art, forming a
composition in the form of a powder having a particle size
within appellant’s recited range. The motivation relied upon
by the examiner comes solely from the description of
appellant’s invention in the specification. Thus, the
examiner used impermissible hindsight when rejecting the
claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393,
396, 125 USPQ 328, 331 (CCPA 1960).
The examiner argues that appellant has not demonstrated
the criticality of use of his surfactant combination and
Appeal No. 1997-2376
Application 08/199,863
9
particle sizes (answer, page 7). This argument is not well
taken because the examiner has the initial burden of
establishing a prima facie case of obviousness. See In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
(CCPA 1976). Only when a prima facie case of obviousness has
been established does appellant have the burden of rebutting
it by presenting objective evidence of non-obviousness. See
Piasecki, 745 F.2d at 1472, 223 USPQ at 788; In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 882 (CCPA 1981). A final
determination regarding obviousness is then reached by
starting anew and evaluating the rebuttal evidence along with
the evidence upon which the conclusion of prima facie
obviousness was based. See Rinehart, 531 F.2d at 1052, 189
USPQ at 147. Because, for the above reasons, the examiner has
not established a prima facie case of obviousness, appellant
need not provide such rebuttal evidence.
Appeal No. 1997-2376
Application 08/199,863
10
DECISION
The rejections of claims 49, 50, 53 and 54 under the
judicially created doctrine of obviousness-type double
patenting over claims 1-47 of Sharma, and under 35 U.S.C.
§ 103 over Hyche, are reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 1997-2376
Application 08/199,863
11
TJO/pgg
Jonathan D. Wood
Eastman Chemical Company
P.O. Box 511
Kingsport, TN 37662-5075