Ex parte St. Clair et al.

Board of Patent Appeals and Interferences

Jul 1, 1999

08389520 (B.P.A.I. Jul. 1, 1999)

Application for patent filed February 16, 1995. 1
According to appellants, the application is a division of
Application 08/262,818, filed June 21, 1994.
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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journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DAVID J. ST. CLAIR and JAMES R. ERICKSON
________________
Appeal No. 96-1720
Application 08/389,5201
________________
ON BRIEF
________________
Before WINTERS, JOHN D. SMITH and OWENS, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 2-5 and 15-25, which are all of the claims remaining in
Appeal No. 96-1720
Application 08/389,520
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the application.
THE INVENTION
Appellants’ claimed invention is directed toward a
crosslinked coating, a crosslinked sealant, and a crosslinked
adhesive, each of which is applied to a substrate and is
comprised of a dispersion having the same recited composition.
Claim 16 is illustrative and reads as follows:
16. A crosslinked adhesive comprising a dispersion which
is applied to a substrate, said dispersion comprising:
(a) 10 to 65% by weight of a polydiene block polymer
having a weight average molecular weight of from 2000 to
3,000,000 and containing at least five olefinic epoxy groups
per molecule which are sterically hindered,
(b) 0.2 to 25% by weight of a compatible aminoplast,
(c) 0.1 to 10% by weight of a surfactant which is
nonionic or anionic and has a volatile cation,
(d) 0.1 to 4% by weight of a proton-donating acid
catalyst, and
(e) the balance of water.
THE REFERENCES
Udipi et al. (Udipi) 4,135,037 Jan. 16, 1979
Howell, Jr. 4,233,197 Nov. 11, 1980
Erickson et al. (Erickson) 5,247,026 Sep. 21, 1993
Appeal No. 96-1720
Application 08/389,520
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THE REJECTION
Claims 2-5 and 15-25 stand rejected under 35 U.S.C. § 103
as being unpatentable over Erickson, Udipi and Howell, Jr.
OPINION
We have carefully considered the specification,
preliminary amendment, first Office action, amendment in
response to the first Office action, final rejection, appeal
brief, examiner’s answer, and references of record. We find,
based upon our review of these documents, that appellants’
claims are unclear to the extent that the determination of
obviousness of the claimed subject matter in view of prior art
disclosures is not possible. Accordingly, we do not sustain
the examiner’s rejection.
Appellants claim a crosslinked coating (claim 15), a
crosslinked adhesive (claims 16-20) and a crosslinked sealant
(claims 21-25), each of which comprises a dispersion which is
applied to a substrate. We give the terms in appellants’
claims their broadest reasonable interpretation consistent
with appellants’ specification. See In re Zletz, 893 F.2d
Appeal No. 96-1720
Application 08/389,520
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319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Sneed,
710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983); In re
Okuzawa, 537 F.2d 545, 548, 190 USPQ 464, 466 (CCPA 1976).
Appellants’ specification states (page 19, lines 9-15):
It is highly preferred that the acid which is
used in the surfactant be an acid which is capable
of catalyzing the crosslinking of the polymer and
the aminoplasts. Such acids are described above and
include the various sulfonic acids described in the
preceding paragraph. After the dispersion is
applied to the substrate, usually after being
formulated for a specific application such as a
coating, adhesive or sealant, the volatile amine in
the surfactant will evaporate into the atmosphere,
freeing the acid to catalyze the curing reaction
between the amino resin and the epoxidized polymer.
This portion of appellants’ specification indicates that the
term “crosslinked” in “crosslinked coating”, “crosslinked
adhesive” and “crosslinked sealant” means that a curing
reaction has taken place between the aminoplast and the
epoxidized polymer.
However, the dispersion recited in each of appellants’
independent claims contains 10-65 wt% polydiene block polymer
and 0.1-10 wt% aminoplast. These are the percentages of these
components which appellants’ specification states are present
in the dispersion of crosslinkable polymer, i.e., polymer
Appeal No. 96-1720
Application 08/389,520
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which has not been crosslinked (page 2, lines 9-17; page 16,
lines 9-12).
Thus, when “crosslinked” in the preamble of appellants’
claims is interpreted in view of appellants’ specification, it
is not clear whether the term means that the epoxidized
polymer and aminoplast in the dispersion applied to the
substrate are crosslinked, such that a curing reaction has
taken place between the epoxidized polymer and the aminoplast,
in which case the dispersion no longer necessarily has the
composition recited in the independent claims, or whether the
term means that a dispersion of the recited composition is
applied to the substrate and that the epoxidized polymer and
aminoplast in this dispersion are to be subsequently
crosslinked.
In some instances, it is possible to make a reasonable,
conditional interpretation of claims adequate for the purpose
of resolving patentability issues to avoid piecemeal appellate
review. In the interest of administrative and judicial
economy, this course is appropriate wherever reasonably
possible. See Ex parte Saceman, 27 USPQ2d 1472, 1474 (Bd.
Pat. App. & Int. 1993); Ex parte Ionescu, 222 USPQ 537, 540
Appeal No. 96-1720
Application 08/389,520
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(Bd. App. 1984). In other instances, however, it may be
impossible to determine whether or not claimed subject matter
is anticipated by or would have been obvious over references
because the claims are so indefinite that considerable
speculation and assumptions would be required regarding the
meaning of terms employed in the claims with respect to the
scope of the claims. See In re Steele, 305 F.2d 859, 862, 134
USPQ 292, 295 (CCPA 1962).
For the reason discussed above, we consider appellants’
claims to be sufficiently indefinite that application of the
prior art to the claims is not possible. On this basis, we do
not sustain the rejection under 35 U.S.C. § 103. It should be
understood that this reversal is not a reversal on the merits
of the rejection but, rather, is a procedural reversal
predicated upon the indefiniteness of the claims.
We remand the application to the examiner for the
examiner and appellants to clarify the claim language and
explain their positions regarding the patentability of the
clarified claims.
DECISION
Appeal No. 96-1720
Application 08/389,520
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The rejection of claims 2-5 and 15-25 under 35 U.S.C.
§ 103 over Erickson, Udipi and Howell, Jr. is reversed.
REVERSED and REMANDED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 96-1720
Application 08/389,520
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Donald F. Haas
Shell Oil Company
Legal-Intellectual Property
P.O. Box 2463
Houston, TX 77252-2463
TJO/ki