Ex parte SowerbyDownload PDFBoard of Patent Appeals and InterferencesDec 17, 199707910967 (B.P.A.I. Dec. 17, 1997) Copy Citation Application for patent filed July 9, 1992. According to applicant,1 this appliation is a continuation-in-part of Application 07/640,173, filed January 11, 1991. 1 Paper No. 17 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opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte ROGER L. SOWERBY ______________ Appeal No. 94-4429 Application 07/910,9671 _______________ ON BRIEF _______________ Before WEIFFENBACH, PAK, and OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the examiner’s refusal to allow claims 1, 2, 5-8 and 11-36 as amended after final rejection. These are all of the claims remaining in the application. Appeal No. 94-4429 Application 07/910,967 2 THE INVENTION Appellant claims processes for forming combinations of trithianes and phosphorous acid and/or thiophosphorous acid derivatives which, appellant states (specification, page 37, line 33 - page 38, line 3), are useful as additives for lubricants and other functional fluids such as automatic transmission fluids and hydraulic fluids. Claim 1 is illustrative and is appended to this decision. THE REFERENCES Hook et al. (Hook) 2,531,129 Nov. 21, 1950 Bartlett 3,159,664 Dec. 1, 1964 Le Suer 3,197,405 Jul. 27, 1965 Braid 3,644,206 Feb. 22, 1972 Meinhardt 4,123,370 Oct. 31, 1978 Watson et al. (Watson) 4,328,111 May 4, 1982 THE REJECTIONS Claims 1, 2, 5, 6 and 33-35 stand rejected under 35 U.S.C. § 103 as being unpatentable over Braid or Hook. Claims 7, 8 and 11-36 stand rejected under 35 U.S.C. § 103 as being unpatentable over Braid or Hook, each in view of Meinhardt, Watson, Bartlett or Le Suer. OPINION We have carefully considered all of the arguments advanced by appellant and the examiner and agree with appellant that the Appeal No. 94-4429 Application 07/910,967 The remaining references are relied upon by the examiner only for2 motivation to use a neutralizing agent in the Braid and Hook processes (answer, page 4). 3 aforementioned rejections are not well founded. Accordingly, these rejections will be reversed. Each of appellant’s claims requires that the aldehyde have at least one alpha-hydrogen atom. That is, in the aldehyde, which is represented by RCHO, the R group must have at least1 1 one hydrogen on the carbon atom adjacent to the -CHO. Braid states that the aldehyde used to make his composition has no alpha-hydrogen atoms (col. 1, lines 39-40; col. 2, lines 8-10). Hook uses only formaldehyde or “a formaldehyde yielding substance such as paraformaldehyde, trioxymethylene and the like” (col. 1, line 46 - col. 2, line 2).2 The examiner points out this difference and argues that appellant’s claimed invention clearly would have been prima facie obvious to one of ordinary skill in the art based on the rationale in In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985). The examiner reached her conclusion of obviousness of appellant’s claimed invention based on a per se rule that use of a new starting material in a prior art process would have been obvious to one of ordinary skill in the art. As stated by the Federal Circuit in In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d Appeal No. 94-4429 Application 07/910,967 4 1127, 1133 (Fed. Cir. 1995), “reliance on per se rules of obviousness is legally incorrect and must cease.” The court further stated: Mere citation of Durden, Albertson, or any other case as a basis for rejecting process claims that differ from the prior art by their use of different starting materials is improper, as it sidesteps the fact-intensive inquiry mandated by section 103. In other words, there are not “Durden obviousness rejections” or “Albertson obviousness rejections,” but rather only section 103 obviousness rejections. 71 F.3d at 1570, 37 USPQ2d at 1132. When an examiner is determining whether a claim should be rejected under 35 U.S.C. § 103, the claimed subject matter as a whole must be considered. See Ochiai, 71 F.3d at 1569, 37 USPQ2d at 1131. The subject matter as a whole of process claims includes the starting materials and product made. When the starting and/or product materials of the prior art differ from those of the claimed invention, the examiner has the burden of explaining why the prior art would have motivated one of ordinary skill in the art to modify the materials of the prior art process so as to arrive at the claimed invention. See Ochiai, 71 F.3d at 1570, 37 USPQ2d at 1131. In the present case, the examiner has not carried this burden. The examiner further argues that appellant’s specification includes some of the prior art aldehydes (answer, page 5). This Appeal No. 94-4429 Application 07/910,967 We note that in claim 7, it appears that in the first structure “D”,3 the “P” should be double bonded to “S” instead of “O”, and that in the second structure “D”, the “P” should be double bonded to “O” instead of “S”. See the specification, page 6, line 16 - page 7, line 18. 5 argument is not well taken because the examiner has not established that it was known in the art that aldehydes having alpha-hydrogen atoms were suitable. The examiner has used appellant’s own teaching against him, which is improper. See In re Zurko, 111 F.3d 887, 889, 42 USPQ2d 1476, 1479 (Fed. Cir. 1997). For the above reasons, we conclude that the examiner has not carried her burden of establishing a prima facie case of obviousness. DECISION The rejections under 35 U.S.C. § 103 of claims 1, 2, 5, 6 and 33-35 over Braid or Hook and of claims 7, 8 and 11-36 over Braid or Hook, each in view of Meinhardt, Watson, Bartlett or Le Suer, are reversed.3 REVERSED Appeal No. 94-4429 Application 07/910,967 6 CAMERON WEIFFENBACH ) Administrative Patent Judge ) ) ) ) CHUNG K. PAK ) BOARD OF PATENT Administrative Patent Judge ) APPEALS AND ) INTERFERENCES ) ) TERRY J. OWENS ) Administrative Patent Judge ) The Lubrizol Corporation Patent Dept. - Patent Administrator 29400 Lakeland Blvd. Wickliffe, OH 44092-2298 Appeal No. 94-4429 Application 07/910,967 7 TJO/cam Appeal No. 94-4429 Application 07/910,967 8 Appeal No. 94-4429 Application 07/910,967 9 Appeal No. 94-4429 Application 07/910,967 10 Copy with citationCopy as parenthetical citation