Ex parte SUN

Board of Patent Appeals and Interferences

Aug 17, 1998

08034794 (B.P.A.I. Aug. 17, 1998)

Application for patent filed February 10, 1993.1
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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journal and (2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte LIKUO SUN
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Appeal No. 95-3686
Application No. 08/034,7941
________________
ON BRIEF
________________
Before WINTERS, OWENS and WEIMAR, Administrative Patent
Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision
rejecting claims 1 through 6. Claims 7 through 12, which are
the only other claims remaining in the application, stand
withdrawn from further consideration by the examiner as
directed to a non-elected invention.
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Appeal No. 95-3686
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THE INVENTION
The invention relates to a mono-axially oriented
polypropylene film with sodium benzoate as an additive to
reduce shrinkage. Claim 1, which is illustrative of the
subject matter on appeal, reads as follows:
1. A mono-axially oriented polypropylene film comprising:
1) polypropylene,
2) sodium benzoate,
wherein the sodium benzoate ranges up to 1000 ppm.
THE REFERENCE
The reference relied on by the examiner is:
Hughes 3,540,979 Nov. 17, 1970
THE ISSUE
In the Final Rejection (Paper No. 5), the examiner
rejected claims 1 through 6 under 35 U.S.C. § 103 as
unpatentable over Hughes. The examiner further rejected
claims 1 through 6 under 35 U.S.C. § 103 as unpatentable "over
Applicant's disclosure of prior art (page 3, SPEc), lines 15
through 25" (Final Rejection, page 2, penultimate paragraph).
The latter rejection was based on a discussion of prior art
references in the "BACKGROUND OF THE INVENTION" portion of
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applicant's specification. Based on a review of the
Examiner's Answer (Paper No. 8), we find that the latter
rejection has been withdrawn. This follows because, in the
Answer, the examiner does not repeat or refer to a rejection
of claims 1 through 6 under 35 U.S.C. § 103 as unpatentable
over applicant's discussion of prior art references set forth
in the specification.
Accordingly, the sole issue presented for review is
whether the examiner erred in rejecting claims 1 through 6
under 35 U.S.C. § 103 as unpatentable over Hughes.
DELIBERATIONS
Our deliberations in this matter have included evaluation
and review of the following materials: (1) the instant speci-
fication, including all of the claims on appeal; (2)
applicant's Appeal Brief and Reply Brief; (3) the Final
Rejection (Paper
No. 5) and the Examiner's Answer (Paper No. 8); and (4) the
Hughes reference cited and relied on by the examiner.
On consideration of the record, including the above-
listed materials, we reverse the examiner's rejection under
35 U.S.C. § 103.
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DISCUSSION
We have no doubt that a person having ordinary skill in
the art could have modified the laminate of Hughes by (1)
selecting sodium benzoate as a nucleating agent in one of the
polypropylene films therein; (2) using "up to 1000 ppm" sodium
benzoate in the polypropylene film; and (3) mono-axially
orienting the laminated product. This is apparent from a
review of applicant's specification and claims. However, the
mere fact that the prior art could be so modified would not
have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
We have carefully considered the Hughes reference in its
entirety, and what the reference fairly teaches to one of
ordi-nary skill in the art. On reflection, we find that
Hughes does not provide adequate guidelines which would have
led a person having ordinary skill from "here to there," i.e.,
from the Hughes laminate to the claimed mono-axially oriented
polypropylene film containing sodium benzoate "wherein the
sodium benzoate ranges up to 1000 ppm." Nor has the examiner
established, on this record, that Hughes provides adequate
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reason, suggestion, or motivation to arrive at the claimed
subject matter. On the contrary, Hughes teaches toward an
embodiment using nucleated and non-nucleated polypropylene
film or using all nucleated films where the nucleating agent
promotes the formation of hexagonal crystals, namely, sodium
phthalate or calcium phthalate. See Hughes, column 3, line
70, through column 4, line 22.
In the specification, applicant describes the advantage
of using a sodium benzoate additive in relatively small
amounts (up to 1000 ppm) in mono-axially oriented
polypropylene film. According to applicant, the sodium
benzoate additive reduces shrinkage and "[l]ow shrinkage is a
highly desirable property for such applications as woven
fabrics" (specification, page 4, lines 15 through 17). The
cited prior art, however, does not attribute any such
advantage to small amounts of sodium benzoate in the
polypropylene film. It is our judgment, therefore, that the
examiner's § 103 rejection is predicated on the impermissible
use of hindsight. As stated in In re Gorman, 933 F.2d 982,
987,
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18 USPQ2d 1885, 1888 (Fed. Cir. 1991), it is impermissible to
engage in a hindsight reconstruction of the claimed invention,
using the applicant's structure as a template and selecting
elements from references to fill the gaps.
The examiner's decision is reversed.
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ELIZABETH C. WEIMAR )
Administrative Patent Judge )
Appeal No. 95-3686
Application No. 08/034,794
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Jim Wheelington
Fina Technology, Inc.
P.O. Box 410
Dallas, TX 75206