Ex Parte Tadych

Board of Patent Appeals and Interferences

Jul 7, 2009

10762663 (B.P.A.I. Jul. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN E. TADYCH
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Appeal 2009-003327
Application 10/762,663
Technology Center 1700
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Decided:1 July 7, 2009
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and MARK
NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1, 2, and 8-15.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6. Claim 1
is illustrative:

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal No. 2009-003327
Application 10/762,663

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1. A masking compound comprising a vulcanized rubber latex, at
least one filler and aqueous ammonia.

The Examiner relies upon the following reference as evidence of
obviousness:
Watanabe et al. (Watanabe) US 6,929,857 B2 Aug. 16, 2005
Appellant's claimed invention is directed to a composition comprising
a vulcanized rubber latex, a filler, and aqueous ammonia. The composition
finds utility as a masking compound.
Appealed claims 1, 2, and 8-15 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Watanabe.
Appellant has not presented an argument that is reasonably specific to
any particular claim on appeal. Accordingly, all the appealed claims stand
or fall together with claim 1.
We have thoroughly reviewed each of Appellant's arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejection for essentially those
reasons expressed in the Answer, and we add the following primarily for
emphasis.
Appellant does not dispute the Examiner's factual determination that
Watanabe discloses a composition comprising a vulcanizable rubber latex, a
vulcanizing agent, at least one filler, and aqueous ammonia. Appellant
contends that the latex of Watanabe "is not a vulcanized rubber latex, merely
a vulcanizable latex" (Principal Br. 10, third para.).
Appeal No. 2009-003327
Application 10/762,663

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Appellant acknowledges, however, that the reference composition
comprises vulcanized rubber when it is on the glass fiber (Principal Br. 10,
2nd para). Consequently, Appellant has not established any distinction
between compositions within the scope of claim 1 on appeal and the
vulcanized rubber composition of Watanabe. It is of no moment whether the
composition itself is in the form of a coating on a glass fiber or on some
other unspecified substrate when acting as a masking compound. It is well
settled that recitation of an intended use does not necessarily distinguish a
composition that has been subjected to different uses. Furthermore, we
agree with the Examiner that it is reasonable to conclude that the bath of
Watanabe's composition used to treat the glass fiber will comprise some
level of vulcanized rubber, which level is not specified by appealed claim 1.
As acknowledged by Appellant, some of the rubbers disclosed by Watanabe
are self-crosslinking (see Principal Br. 10, third para.).
Appellant also argues that the Examiner improperly failed to give
weight to the claim recitation "[a] masking compound." However, we fully
concur with the Examiner that the claim recitation is tantamount to a
statement of intended use that does not further define compositions
embraced by appealed claim 1. Appellant maintains that "the requirement
that the invention is a masking compound imparts certain requirements and
expectations in comparison to a generic compound or coating" (Principal Br.
9, last para.). However, Appellant does specify any particular property
associated with compositions encompassed by claim 1 that is not present in
the vulcanized rubber composition of Watanabe. Appellant submits that
because Watanabe forms a permanent coating it cannot function as a
Appeal No. 2009-003327
Application 10/762,663

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masking compound. However, claim 1 does not specify that the masking
compound is not part of a permanent coating and Appellant has not
established that the term "masking compound" has a meaning in the art that
is associated with any property that is not possessed by Watanabe’s
vulcanized composition. Nor has Appellant established that it was known in
the art that all masking compounds are readily removal from any substrate
upon which they are coated. Indeed, Appellant's argument that the heating
of Watanabe's composition "would render it impractical for many masking
operations" indicates that the reference composition is suitable for some
masking operations (Principal Br. 10, first para.).
As a final point, we note that Appellant bases no argument upon
objective evidence of nonobviousness, such as unexpected results.
In conclusion, based on the foregoing, the Examiner's decision
rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v)(2008).
AFFIRMED

cam
Appeal No. 2009-003327
Application 10/762,663

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