Ex parte VirdiDownload PDFBoard of Patent Appeals and InterferencesMay 30, 200008442633 (B.P.A.I. May. 30, 2000) Copy Citation 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opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board.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. 25 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RANVIR S. VIRDI ____________ Appeal No. 1997-3644 Application No. 08/442,633 ____________ ON BRIEF ____________ Before JOHN D. SMITH, LIEBERMAN, and KRATZ, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal from the examiner's final rejection of claims 11-20, which are all of the claims pending in this application. BACKGROUND Appellant's invention relates to a rubber vulcanization process. According to appellant, nitrosamines production is minimized in such a process via the use of an accelerating or vulcanizing effective amount of a compound having a group of Appeal No. 1997-3644 Page 2 Application No. 08/120,041 formula R NCS- or R NS-, wherein both R groups are identical2 2 C H branched alkyl. Claim 11, the sole independent claim on9 19 appeal, is reproduced below. 11. A method for minimizing the production of nitrosamines in the vulcanisation of rubber, the improvement comprising incorporating an accelerating or vulcanising effective amount of a compound including a group of the formula R NCS- or R NS-, wherein the two R groups are identical2 2 C H branched alkyl.9 19 The prior art references of record relied upon by the examiner in rejecting the appealed claims are: Amidon et al. (Amidon) 3,674,824 July 04, 1972 Mastromatteo et al. (Mastromatteo) 3,678,135 July 18, 1972 Claims 11-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Amidon or, in a separately stated § 103 rejection, over Mastromatteo. OPINION In reaching our decision in this appeal, we have given careful consideration to the appellant’s specification and claims, to the applied prior art references, and to the respective positions articulated by appellant and the examiner. In so doing, we find ourselves in agreement with Appeal No. 1997-3644 Page 3 Application No. 08/120,041 We note that it is the examiner who bears the initial burden of presenting a1 prima facie case of obviousness in rejecting claims under 35 U.S.C. § 103. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). appellant’s position on the basis that the examiner fails to establish a prima facie case of obviousness for the claimed subject1 matter. Accordingly, we will not sustain the examiner's stated rejections. The examiner appears to rely on each of Amidon and Mastromatteo for describing classes of acceleration compounds for use in rubber vulcanization that are generic to the limited subgenus/species of appellant. However, the examiner has not adequately explained how one of ordinary skill in the art would have been led to select an acceleration compound corresponding to or within the limited class of compounds as herein claimed from the teachings of the separately applied references. We do not share the examiner’s viewpoint regarding the apparently applied per se rule of obviousness that “choosing compounds from a generic description would be obvious...” (answer, page 4). As stated by the Federal Circuit in Appeal No. 1997-3644 Page 4 Application No. 08/120,041 In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995), “reliance on per se rules of obviousness is legally incorrect and must cease.” Moreover, the mere possibility that the prior art could be modified such that appellant’s process is carried out is not a sufficient basis for a prima facie case of obviousness. See In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996). Also, see § 2144.08 of the Manual of Patent Examining Procedure (MPEP)(7th ed., Feb. 2000). For the foregoing reasons, we find that the examiner has not established a prima facie case of obviousness. Because we reverse on this basis, we need not reach the issue of the sufficiency of the asserted secondary evidence (brief, pages 10-12). See In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987). CONCLUSION The decision of the examiner is reversed. REVERSED JOHN SMITH ) Appeal No. 1997-3644 Page 5 Application No. 08/120,041 Administrative Patent Judge ) ) ) ) ) BOARD OF PATENT PAUL LIEBERMAN ) APPEALS Administrative Patent Judge ) AND ) INTERFERENCES ) ) ) PETER F. KRATZ ) Administrative Patent Judge ) PFK/kis George W. Ranchfuss, Jr. OHLANDT, GREELEY, RUGGIERO & PEARLE One Landmark Square, Suite 903 Stamford, CT 06901 Copy with citationCopy as parenthetical citation