Ex parte Sowerby

Board of Patent Appeals and Interferences

Dec 17, 1997

07910967 (B.P.A.I. Dec. 17, 1997)

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(2) is not binding precedent of the Board.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