Ex parte Virdi

Board of Patent Appeals and Interferences

May 30, 2000

08442633 (B.P.A.I. May. 30, 2000)

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for publication in a law journal and (2) is not binding precedent of the Board.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
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Ex parte RANVIR S. VIRDI
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Appeal No. 1997-3644
Application No. 08/442,633
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ON BRIEF
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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
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