Ex parte St. Clair

Board of Patent Appeals and Interferences

Mar 23, 2000

08423438 (B.P.A.I. Mar. 23, 2000)

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(2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID J. ST. CLAIR
_____________
Appeal No. 1997-0282
Application 08/423,438
______________
ON BRIEF
_______________
Before JOHN D. SMITH, PAK, and LIEBERMAN, Administrative
Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claim 16. Claims 17 and 18, the remaining claims
in this application, stand withdrawn from consideration by the
examiner as being drawn to a non-elected invention.
Appeal No. 1997-0282
Application No. 08/423,438
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Appeal No. 1997-0282
Application No. 08/423,438
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Claim 16, the sole claim on appeal, reads as follows.
16. A moisture curable, isocyanate-capped
hydroxy-functionalized selectively hydrogenated block
copolymer of a vinyl aromatic hydrocarbon and a
conjugated diene.
As evidence of obviousness, the examiner relies on the
following prior art:
Gergen et al. (Gergen) 4,578,429 Mar. 25,
1986
Markevka et al. (Markevka) 4,820,368 Apr. 11,
1989
Claim 16 stands rejected under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Gergen and
Markevka.
We reverse.
Having reviewed the specification, claim and applied
prior art, including all of the arguments advanced by the
examiner and appellant in support of their positions, we agree
with appellant that the applied prior art as a whole would not
have rendered the claimed subject matter obvious within the
meaning of 35 U.S.C.
§ 103. Our reasons for this determination follow.
The examiner states, and appellant does not dispute, that
Appeal No. 1997-0282
Application No. 08/423,438
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Gergen discloses a hydroxy-functionalized selectively
hydrogenated block copolymer of a vinyl aromatic hydrocarbon
and a conjugated diene, which can be crosslinked in a
conventional manner. See Answer, page 4, with Brief, page 2.
As argued by appellant (Brief, page 2), however, Gergen does
not teach, nor would have suggested, a moisture-curable,
isocyanate-capped hydroxy-functionalized selectively
hydrogenated block copolymer of a vinyl aromatic hydrocarbon
and a conjugated diene. To remedy this deficiency, the
examiner relies on the disclosure of Markevka. See Answer,
page 4. According to the examiner, Markevka would have
suggested capping the hydroxy-functionalized selectively
hydrogenated block copolymer of Gergen with isocyanate
compounds to form the claimed block copolymer. See Answer,
pages 4 and 5. We disagree.
As correctly indicated by appellant (Brief, page 3),
Markevka is directed to forming an adhesive composition
comprising, inter alia, an isocyanate terminated prepolymer
and block copolymers, such as those described in Gergen.
Thus, it appears that the applied prior art as a whole would
Appeal No. 1997-0282
Application No. 08/423,438
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have either suggested reacting prepolymers with isocyanate
compounds to solidify green bond and/or using the block
copolymer of Gergen as the block copolymer of the adhesive
composition described in Markevka for purposes of improving
its property. However, we do not find any suggestion in the
applied prior art to cap the block copolymer of Gergen with
isocyanate compounds to arrive at the claimed block copolymer.
Nor do we find any reasonable expectation of success in the
applied prior art that isocyanate compounds useful for
improving the structure of a prepolymer would also be useful
for improving the structure of the block copolymer of the type
described in Gergen. On this record, we concur with appellant
that the examiner has not established a prima facie case of
obviousness within the meaning of 35 U.S.C.
§ 103.
In view of the foregoing, the decision of the examiner is
reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 1997-0282
Application No. 08/423,438
6
REVERSED
)
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PAUL LIEBERMAN )
Administrative Patent Judge )
CKP:hh
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