Ex parte TAN

Board of Patent Appeals and Interferences

Nov 30, 1999

08751068 (B.P.A.I. Nov. 30, 1999)

Application for patent filed July 19, 1995. 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not written for publication in a law journal and (2) is not binding
precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YAPPING TAN
____________
Appeal No. 98-2743
Application No. 08/504,1001
____________
ON BRIEF
____________
Before MEISTER, ABRAMS, and GONZALES, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON A PPEAL
Yapping Tan (the appellant) appeals from the final
rejection of claims 19-23. Claims 1-7, the only other claims
present in the application, stand withdrawn from further
consideration by the examiner under the provisions of 37 CAR §
1.142(b) as being directed to a nonelected invention.
Appeal No. 98-2743 Page 2
Application No. 08/504,100
We REVERSE.
The appellant's invention pertains to a porous inking
member for impact printers. Independent claim 19 is further
illustrative of the appealed subject matter and a copy thereof
may be found as an attachment to the brief under the heading of
"CLAIMS ON APPEAL."
The references relied on by the examiner are:
Muller 4,410,643 Oct. 18,
1983
Sonobe et al. 5,099,759 Mar. 31,
1992
(Sonobe)
The appellant's admitted prior art depicted in Fig. 2 and
described on pages 1, 2 and 6-9 of the specification (AAPA).
The claims on appeal stand rejected under 35 U.S.C. §
103(a) in the following manner:
(1) Claims 19-23 as being unpatentable over AAPA in view
of Sonobe and Muller; and
(2) Claims 19-23 as being unpatentable over AAPA in view
of Sonobe.
With respect to Rejection (2) the answer states that:
AAPA teaches the invention except for the porous ink
member containing a peptizer. Muller teaches adding
peptizer during the mixing process in order to aide
[sic, aid] in the process of masticating the rubber
Appeal No. 98-2743 Page 3
Application No. 08/504,100
compound. It would have been obvious to one of
ordinary skill in the art at the time of invention to
have added peptizer to the porous ink member of AAPA,
in light of the teachings of Muller, in order to
increase the flexibility of the porous ink member and
to facilitate mastication of the compound. Note that
the starting form of the nitrile rubber in the
process of manufacture thereof lends no patentable
weight to the final inking member produced. [Page
4.]
With respect to Rejection (1), the examiner takes
essentially the same position regarding the combined teachings
of AAPA and Muller, but further relies on Sonobe for a teaching
of using nitrile rubber in liquid form during the manufacture
of an ink transferring surface.
We will not sustain either of these rejections. We
initially note that the rejections are unclear as to whether
the examiner intends to substitute peptizer (and liquid nitrile
rubber in the case of Rejection (1)) for the volatile organic
solvent in AAPA in view of the teachings of Muller (and Sonobe
in the case of Rejection (1)), or whether the examiner simply
intends to additionally add these components to AAPA, while
still retaining the volatile organic solvent. In either case,
we will not support the examiner's position.
Appeal No. 98-2743 Page 4
Application No. 08/504,100
The examiner's reference to "the starting form of the
nitrile rubber in the process of manufacture lends no
patentable weight to the final inking member produced" is
presumably based upon the fact that a claim to a product
drafted in product-by-process format is unpatentable if it is
the same as or obvious from the product of the prior art, even
if the prior product was made by a different process. See,
e.g., In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed.
Cir. 1985). The problem here, however, is that the resulting
product is not the same. As the appellant has argued on page 5
of the brief:
In the prior art processes discussed in the
specification on pages 1 and 2 and Figure 2 [i.e.,
AAPA], organic solvents are used to assist in
masticating and swelling rubber for the incorporation
of sodium nitrate. These organic solvents are
removed before molding and leaching sodium nitrate
from the rubber. Therefore, the organic solvent used
is not present in the molded article such that the
amount used does not significantly affect the
properties of the molded porous articles. In
contrast, peptizers [i.e., the peptizing agents] are
not evaporated before molding a nitrile rubber or
leaching the sodium nitrate therefrom such that the
composition of molded/leached articles obtained from
peptized nitrile rubber is distinct from the
molded/leached articles prepared using a solvent.
Appeal No. 98-2743 Page 5
Application No. 08/504,100
In other words, in the claimed process of making the porous
inking member the peptizing agents remain as a component of the
finally formed porous inking member.
As the examiner apparently recognizes, there are no
peptizing agents or peptizers in the porous inking member
produced by the process of AAPA. In an attempt to overcome
this deficiency, the examiner has relied on Muller for a
suggestion of utilizing a peptizing agent in the process of
AAPA in order masticate the nitrile rubber compound. Muller,
however, is directed to making erasable ball-pen inks that
include the steps of (a) selecting elastomeric material from
synthetic rubbers not having the chemical structure of natural
rubber, (b) masticating the selected elastomeric material by
subjecting the same to high shearing stress (e.g., in a rubber
mill), (c) coloring the masticated elastomeric material and (d)
mixing the colored masticated elastomeric material with a
solvent (see col. 4., lines 23-42). While Muller vaguely
indicates that it is "helpful" during mastication of the
elastomeric material by a two-roll rubber mill to add a
peptizing agent or peptizer (see col. 6, lines 28-36), we do
not find the vague teaching that a peptizer is "helpful" in
Appeal No. 98-2743 Page 6
Application No. 08/504,100
such a disparate context to be fairly suggestive of either (1)
adding a peptizer or peptizing agent to the process of AAPA
(while still retaining the volatile organic solvent) or (2)
substituting a peptizing agent or peptizer for the volatile
organic solvent of the process of AAPA.
As to Rejection (1), the examiner has additionally relied
on Sonobe for a teaching of utilizing nitrile rubber in liquid
form in the manufacture of an ink transferring surface, but
this reference does nothing to overcome the deficiencies of
AAPA and Muller that we have noted above.
The examiner's rejections of claims 19-23 under 35 U.S.C.
§ 103(a) are both reversed.
REVERSED
Appeal No. 98-2743 Page 7
Application No. 08/504,100
JAMES M. MISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
JMM/jlb
Appeal No. 98-2743 Page 8
Application No. 08/504,100
Charlene Stukenborg
NCR Corporation
Law Dept Intellectual Prpty Sec ECD-2
101 West Schantz Avenue
Dayton OH 45479-0001