Ex parte Sterling et al.

Board of Patent Appeals and Interferences

Aug 28, 1998

07842480 (B.P.A.I. Aug. 28, 1998)

Application for patent filed February 28, 1992.1
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not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT E. STERLING and EUGENE P. GOLDBERG
__________
Appeal No. 95-1209
Application No. 07/842,4801
__________
ON BRIEF
__________
Before JOHN D. SMITH, GARRIS and WARREN, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1, 3, 4 and 11. Claims 5 to 10 have been
withdrawn from consideration by the examiner, 37
CFR § 1.142(b), and are not subject to this decision.
Appeal No. 95-1209
Application No. 07/842,480
2
The subject matter on appeal relates to compositions of
matter formed by melt blending a thermoplastic polymer and a
fluorinated polysiloxane additive to provide a homogenous
blend, then cooling the composition. The additive is said to
concentrate at the surfaces of the cooled blends, even at low
overall concentrations, and to provide low surface energies,
including non-adherent surface characteristics and low
friction, which enhance molding operations. Biological and
biomedical applications are disclosed to be particularly
advantageous. Specification at pages 5-6.
Claim 1 is representative of the claimed subject matter:
1. A composition of matter formed by melt-blending
a thermoplastic polymer and from about 0.01% to less
than about 1.0%, by weight based on the weight of
the composition, of an additive comprising a
polyfluoroalkylsiloxane, said additive having a
lower surface energy than that of said polymer; said
melt-blending resulting in a substantially
homogenous admixture of said polymer and said
additive; said admixture, upon cooling, resulting in
a solid composition wherein a concentration of said
additive through a cross-section of said solid
composition is lower in the interior thereof and
higher at the surfaces thereof; said additive being
a polyfluoroalkylsiloxane having the formula:
Appeal No. 95-1209
Application No. 07/842,480
Our understanding of this reference is based upon the2
PTO translation of record.
3
CF3
|
R (CH ) R1 2 m 4
| | |
R -Si-O-[-Si-O-] -Si-R (I)2 n 5
| | |
R R R3 7 6
wherein R , R , R , R , R , R and R may be the same or1 2 3 4 5 6 7
different and may be alkyl, cycloalkyl or aryl; R7
may also be -(CH ) -CF ; m is an integer from 0 to 20,2 m 3
and n is an integer from 1 to 5,000; or
said additive being a silanol terminated
derivative of said polyfluoroalkylsiloxane or a
copolymer of said polyfluoroalkylsiloxane with an
alkyl, aryl or alkyl-aryl-siloxane.
PRIOR ART
The examiner has applied the following reference in the
prior art rejection advanced on this appeal:
Miyake et al. (Miyake) 1-282,267 Nov. 14, 19892
(Japanese Kokai Application)
The examiner has cited the following references to show
“a state of fact” (Answer, pages 2-3):
Yamamoto et al. (Yamamoto) 3,758,661 Sep. 11, 1973
Thomas et al. (Thomas) 5,108,632 Apr. 28, 1992
(filed Oct. 18, 1991)
Appeal No. 95-1209
Application No. 07/842,480
4
Yamada et al. (Yamada) 5,174,924 Dec. 29, 1992
(filed June 4, 1990)
Hawley’s Condensed Chemical Dictionary, 935 (11th ed., New
York, Van Nostrand Reinhold, 1987) (Hawley’s).
REJECTIONS
(1) Claims 1, 3, 4 and 11 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
(2) Claims 1, 3, 4 and 11 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combined disclosures
of Miyake.
For the reasons set forth post we shall not sustain these
rejections (although appellants have argued the separate
patentability of claim 11, in view of our disposition of this
appeal, we need not consider claim 11 separately.)
DISCUSSION
The examiner has rejected the claims as being indefinite
in view of the claim 1 phrase “copolymer of said polyfluoro-
alkylsiloxane.” The examiner maintains it is not clear how a
compound that is not silanol terminated can be copolymerized.
Appeal No. 95-1209
Application No. 07/842,480
5
Claims are definite if they set out and circumscribe a
particular area with a reasonable degree of precision and
particularity. In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971). The claims are to be read, not in a
vacuum, but in light of the prior art and the disclosure, as
interpreted by one of ordinary skill in the art. Moore, 439
F.2d at 1234, 169 USPQ at 238. As the examiner recognized,
and as appellants acknowledge (Brief at pages 7-8), one of
ordinary skill in the art is well aware that copolymers of
compound (I) with other siloxanes would be formed from
hydrolyzable derivatives (such as silanols) of (I). We also
observe that it is not uncommon to name copolymers according
to the structures comprising the backbone, and that groups
that are lost in condensation reactions are not always
included in the name of the polymer. Since, on the present
record, it is clear that one of ordinary skill in the art
would understand and not be misled as to the scope of the
claim, we cannot sustain this rejection.
The examiner has rejected the claims under 35 U.S.C.
§ 103(a) as obvious over Miyake; the other cited references
are relied upon to establish the range of values of melting
Appeal No. 95-1209
Application No. 07/842,480
6
points of the reference thermoplastic polymer. Miyake
discloses, in a comparative example, a copolymer blend of high
density polyethylene (HDPE) (HIZEX 2500) with 3 weight percent
of a compound (I). The blend is prepared by kneading the
mixture at 150EC for 30 minutes. Miyake at translation page
9. Both the examiner and appellants appear to agree that
materials denominated as HDPE typically melt in the range of
120 to 130EC. The examiner maintains that the improved Q
value shown for comparative example 2 (Table at Miyake
translation page 11) (2.08 × 10 ml/s) compared to-2
unadulterated HDPE (id., comparative example 3) (1.65 × 10-2
ml/s) is sufficient to demonstrate that the amount of additive
is a result-effective variable for Q. Accordingly, the
examiner concludes one of ordinary skill in the art would have
been motivated to use “less than about 1%” of the additive in
order to obtain blends that exhibit a lesser improvement in
the parameter Q. The examiner maintains that the burden is on
appellants to demonstrate that the material produced by Miyake
would not meet the instant limitations.
Appellants traverse, urging that a homogenous blend of
additive and polymer cannot be obtained under the conditions
Appeal No. 95-1209
Application No. 07/842,480
7
of Miyake. Brief at pages 9-10; Reply Brief at pages 2-4. In
support of their contention, appellants have provided evidence
that melt-processing temperatures for HDPE are typically in
the range of 200EC, considerably higher than the melting
temperature or the 150EC used by Miyake. Appellants also
disclose the use of a twin-screw extruder for obtaining the
homogenous melt blends that are said to be prerequisites for
the final product. Single screw extruders did not provide
sufficient blending in the comparative example presented in
the specification at pages
10-11. Moreover, appellants urge the examiner’s reliance on a
comparative example vitiates the motivation to use at most
only one third as much of an additive that Miyake appears to
regard as providing an inferior degree of improvement. Brief
at pages
15-16.
As emphasized by appellants, the example relied on by the
examiner is a comparative example. The thrust of Miyake is to
obtain significantly higher values of Q, which would require
higher, not lower, concentrations of additive. As a
predecessor to our reviewing court explained:
Appeal No. 95-1209
Application No. 07/842,480
8
Where . . . the prior art disclosure suggests the
outer limits of the range of suitable values, and
that the optimum resides within that range, and
where there are indications elsewhere that in fact
the optimum should be sought within that range, the
determination of optimum values outside that range
may not be obvious.
In re Sebek, 465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA 1972).
On the present facts, we conclude that Miyake would not have
motivated one with ordinary skill in the art to explore ranges
of concentration of a comparative material at no more than a
third of what has been disclosed in a comparative example to
provide only a slight improvement in a desired property.
On the present record we conclude that the examiner has
not made out a prima facie case of obviousness, and therefore
we also cannot sustain the examiner’s § 103 rejection.
The decision of the examiner is reversed.
REVERSED
Appeal No. 95-1209
Application No. 07/842,480
9
JOHN D. SMITH )
Administrative Patent Judge)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge)
Appeal No. 95-1209
Application No. 07/842,480
10
Dennis P. Clarke
Kerkam, Stowell, Kondracki & Clarke
Two Skyline Place, Suite 600
5203 Leesburg Pike
Falls Church, VA 22041-3401