Ex parte Touhsaent

Board of Patent Appeals and Interferences

Jan 28, 2002

08399384 (B.P.A.I. Jan. 28, 2002)

The amendment dated Oct. 27, 1997, Paper No. 14, was entered as per the Advisory Action1
dated Nov. 18, 1997, Paper
No. 15. The amendment filed concurrently with the Brief, dated Jan. 20, 1998, Paper No. 18, has
been entered by the examiner although this entry is not confirmed in the record (see the Answer).
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.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. TOUHSAENT
____________
Appeal No. 1999-0203
Application No. 08/399,384
____________
ON BRIEF
____________
Before GARRIS, WALTZ, and PAWLIKOWSKI, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s refusal to allow claims 8, 9, 10, 12, 13, and 16
through 18, as amended subsequent to the final rejection. 1
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Application No. 08/399,384
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Claims 14, 15 and 20, the remaining claims in this application,
have been deemed
allowable by the examiner since the rejection of these claims is
withdrawn (Answer, page 9).
According to appellant, the invention is directed to a
polymeric film structure having an enhanced oxygen barrier,
where this oxygen barrier is produced by the process of coating
at least one side of a polymeric substrate with a solution of
poly(vinyl alcohol)(“PVOH”), formaldehyde-containing
crosslinking agent and crosslinking-promoting acid catalyst at a
solution pH of 3.5 or less (Brief, page 3). A copy of
illustrative independent claims 8 and 17 is attached as an
Appendix to this decision.
The examiner relies upon Knoerzer et al. (Knoerzer), U.S.
Patent No. 5,380,586, issued on Jan. 10, 1995, as support for
the rejections on appeal (Answer, page 4). Claims 8-10, 12-13
and 16-18 stand rejected under 35 U.S.C. § 102(e) as anticipated
by or,
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Application No. 08/399,384
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in the alternative, under 35 U.S.C. § 103 [sic, 103(a)] as
obvious over Knoerzer (Answer, page 5). We reverse both of the
examiner’s rejections for reasons which follow.
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Application No. 08/399,384
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OPINION
We first note that the claims are written in two different
formats, only one of which has been discussed by the examiner
and appellant during the prosecution of this application.
Claims 8-10 and 12-16 are written in a product-by-process format
while
claims 17, 18 and 20 are written as process (of producing a film
structure) claims.
It is well settled that the examiner has a lesser burden of
proof necessary to establish a prima facie case of obviousness
in product-by-process claims since the Patent & Trademark Office
“is not equipped to manufacture products by the myriad of
processes
put before it and then obtain prior art products and make
physical comparisons therewith.” In re Fessman, 489 F.2d 742,
744, 180 USPQ 324, 325 (CCPA 1974), quoting from In re Brown,
459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). A rejection
under 35 U.S.C. § 103 is indicated where the prior art discloses
a product that appears to be either identical with or only
slightly different from
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Application No. 08/399,384
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the product claimed in a product-by-process claim. See In re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980).
“Whether the rejection is based on ‘inherency’ under 35 U.S.C.
[§] 102, on ‘prima facie obviousness’ under 35 U.S.C. [§] 103,
jointly or alternatively, the burden of proof is the same
[footnote omitted].” Id. If the examiner has reason to believe
that a functional limitation asserted to be critical for
establishing novelty in the claimed subject matter may, in fact,
be an inherent characteristic of the prior art, the examiner can
require an applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied
on. Id. Ultimately, it is the patentability of the products
defined by the product-by-process claims, and not the processes
for making them, that must be gauged in light of the prior art.
See In re Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103 (CCPA
1976); In re Fessman, supra; and In re Brown, supra. Based on
the record before us, we determine that the examiner has not
established a prima facie case for anticipation or obviousness,
either for the process claims or with the lesser burden of proof
necessary for the product-by-process claims.
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The examiner finds that Knoerzer teaches a polymeric film
produced by coating a polymeric substrate with PVOH, melamine-
formaldehyde crosslinking agent and a sulfuric acid catalyst
(Answer, page 5). The examiner further finds that Knoerzer
teaches the use of nitric acid as a cross-linking promoting
catalyst, although it is “inferior” to sulfuric acid (id.). The
examiner’s conclusion is recited on page 6 of the Answer as
follows:
The Examiner has a reasonable basis for believing that
the pH of the solution of Knoerger [sic, Knoerzer] may
very well meet the claimed pH limitation since both
nitric acid and sulfuric acid are strong acids of
equivalent strength and since one of ordinary skill in
the art would more than likely use the nitric acid in
the same content as the sulfuric acid used at col. 4,
lines 1-15 [of Knoerzer] and given that the sulfuric
acid is a strong acid such would presumably provide a
pH falling within the scope of the claims.
As correctly argued by appellant on page 6 of the Brief and
page 3 of the Reply Brief, it is well settled that every
limitation of the claimed subject matter must be described,
either expressly or under the principles of inherency, by the
reference to support a rejection under section 102. See In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986).
According to the examiner’s analysis, one of ordinary skill in
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the art would first have to use the inferior nitric acid in
place of the sulfuric acid catalyst (Answer, page 5). Although
such a substitution may be obvious, we do not agree with the
examiner that it is expressly described by Knoerzer within the
meaning of section 102. Furthermore, the examiner fails to
supply any convincing evidence or reasoning for the belief that
the pH of the Knoerzer solution would necessarily be the same as
recited in the claims on appeal. The examiner has failed to
present any convincing evidence or reasoning on this record that
nitric acid and sulfuric acid are “equivalent strength” and that
one of ordinary skill in the art would have used the same amount
of nitric acid as sulfuric acid. Additionally, the examiner has
failed to present any convincing evidence or reasoning on this
record that sulfuric acid is so strong that it would
“presumably” provide a pH within the scope of the claims. In
fact, Knoerzer teaches a wide range of amounts of sulfuric acid
and that “the sulfuric acid employed can have a strength ranging
from about 0.1 to 1.0. molality.” See col. 4, ll. 1-15.
Accordingly, the pH of the solution (see the Brief, page 10;
Reply Brief, page 6; and claim 8 on appeal) will vary depending
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on the amount and strength of the acid added, as well as the
other components of the solution such as the PVOH and the basic
crosslinking agent.
With regard to the examiner’s rejection based on section
103, the examiner concludes that “it would have been obvious to
the skilled artisan to adjust the pH of the solution of Knoerzer
via adding more catalyst to the solution so as to increase the
crosslinking rate and subsequently drop the pH of the solution.”
Answer, paragraph bridging pages 6-7. We determine that the
examiner has failed to support this conclusion with any
convincing evidence or reasoning. If one of ordinary skill in
the art wanted to increase the crosslinking rate, one would have
used the superior catalyst, i.e., sulfuric acid, instead of
nitric acid (see Knoerzer, col. 3, ll. 57-60). Furthermore, the
examiner has not provided any reasoning, suggestion or
motivation why one of ordinary skill in the art would have
wanted to increase the crosslinking rate. See In re Dembiczak,
175 F.3d 994, 999,
50 USPQ2d 1614, 1617 (Fed. Cir. 1999). Even assuming arguendo
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that one of ordinary skill in the art desired to increase the
crosslinking rate, the examiner has not provided any convincing
evidence or reasoning to support the conclusion that addition of
more acid catalyst would effect the desired result.
For the foregoing reasons, we determine that the examiner
has not established a prima facie case of anticipation or
obviousness. Accordingly, the examiner’s rejections of the
claims on appeal under 35 U.S.C. § 102(e) or § 103 over Knoerzer
are reversed.
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The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
TAW/jrg
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Appeal No. 1999-0203
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ALEXANDER J. MCKILLOP
MOBIL OIL CORPORATION
OFFICE OF PATENT COUNSEL
3225 GALLOWS ROAD
FAIRFAX, VA 22037
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APPENDIX
8. A polymeric film structure having an enhanced oxygen
barrier produced by the process comprising:
coating at least one side of a polymeric substrate adapted
for receipt of an oxygen barrier with a solution of poly(vinyl
alcohol), formaldehyde-containing crosslinking agent and
crosslinking-promoting acid catalyst, said solution having a pH
of about 3.5 or less, and
wherein said acid catalyst is selected from the group
consisting of phosphoric acid, nitric acid and hydrochloric
acid.
17. A method of producing a film structure having an
enhanced oxygen barrier layer adhered thereto, comprising:
coating at least one side of a polymeric substrate adapted
for receipt of an oxygen barrier with a solution of poly (vinyl
alcohol), formaldehyde-containing crosslinking agent and
crosslinking-promoting acid catalyst, said solution having a pH
of about 3.5 or less, and
wherein said acid catalyst is selected from the group
consisting of phosphoric acid, nitric acid and hydrochloric
acid.
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