Ex parte Waldrop

Board of Patent Appeals and Interferences

Nov 9, 2001

08942054 (B.P.A.I. Nov. 9, 2001)

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The opinion in support of the decision being
entered today was not written for publication
in a law journal and is not binding precedent
of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MARK WALDROP

Appeal No. 2000-0026
Application No. 08/942,054

ON BRIEF

Before KIMLIN, GARRIS and OWENS, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-9,
all the claims remaining in the present application. Claim 1
is illustrative:
1. A PVC pipe cement composition, comprising:
(a) at least about 10% by weight of a polymeric material of a
methyl methacrylate homopolymer or copolymer, a styrene-
Appeal No. 2000-0026
Application No. 08/942,054
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acrylonitrile polymer, and a rubber grafted with at least
a methacrylic acid ester of a C to C alkanol; and1 8
(b) at least about 10% by weight organic solvent.
The examiner relies upon the following references as
evidence of obviousness:
Briggs et al. (Briggs) 4,942,201 Jul. 17, 1990
Patel et al. (Patel) 5,252,634 Oct. 12, 1993
Appellant's claimed invention is directed to a PVC pipe
cement composition comprising the three recited polymeric
components and at least about 10% by weight of an organic
solvent.
Appealed claims 1-9 stand rejected under 35 U.S.C. § 103
as being unpatentable over Briggs in view of Patel.
We have thoroughly reviewed the respective positions
advanced by appellant and the examiner. In so doing, we
concur with appellant that the prior art cited by the examiner
fails to establish a prima facie case of obviousness for the
claimed invention. Accordingly, we will not sustain the
examiner's rejection.
There is general agreement that Briggs discloses
structural adhesive compositions comprising the three
polymeric components recited in paragraph (a) of appealed
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Application No. 08/942,054
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claim 1. As appreciated by the examiner, Briggs does not
disclose adhesive compositions comprising an organic solvent.
To remedy this deficiency, the examiner relies upon Patel who
discloses thermoplastic pipe adhesives comprising a resin and
one or more solvents. It is the examiner's position that it
would have been obvious for one of ordinary skill in the art
to employ the adhesive of Briggs in combination with a solvent
of the type disclosed by Patel (page 4 of Answer, second full
paragraph). The examiner explains that the use of a solvent,
which is appreciated in the art to function as processing and
application aids, would have readily suggested itself to one
of ordinary skill in the art for use in conjunction with the
pasty adhesives of Briggs (sentence bridging pages 5 and 6 of
Answer).
We certainly agree with the examiner that, in general, it
was well-known in the art to employ a solvent as a processing
aid or thinner in adhesive compositions. Accordingly, there
is a strong temptation to conclude, at least at first blush,
that it would have been a matter of prima facie obviousness
for one of ordinary skill in the art to incorporate a solvent
in any adhesive composition. However, in the present case, we
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Application No. 08/942,054
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find absolutely none of the requisite motivation to add any
amount of solvent to the structural adhesive composition of
Briggs, let alone appellant's at least about 10% of organic
solvent. The methacrylate ester monomers, preferably methyl
methacrylate, of Briggs' structural adhesive compositions are
specifically taught to be the solvent in which the elastomers
are dissolved, to which solution the core-shell polymers are
added to form, ultimately, a smooth paste. Manifestly, since
Briggs does not need an additional organic solvent, the
reference provides no teaching or suggestion of modifying the
disclosed composition by adding at least about 10% by weight
of an organic solvent. On the other hand, there is no
teaching or suggestion of modifying the solvent-containing
pipe adhesive of Patel by incorporating the presently claimed
polymeric components.
Accordingly, based on the foregoing, we are constrained
to reverse the examiner's rejection.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
Appeal No. 2000-0026
Application No. 08/942,054
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)
)
)
BRADLEY R. GARRIS )BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
ECK:clm
Appeal No. 2000-0026
Application No. 08/942,054
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BASF Corp.
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