Ex Parte Walter

Board of Patent Appeals and Interferences

Jun 29, 2007

10795457 (B.P.A.I. Jun. 29, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSE WALTER
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Appeal 2007-2082
Application 10/795,457
Technology Center 1700
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Decided: June 29, 2007
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Before EDWARD C. KIMLIN. BRADLEY R. GARRIS, and
THOMAS A. WALTZ, 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
Primary Examiner’s final rejection of claims 1, 3, 5, 6, and 13 (Br. 1).
Claims 7, 9-12, and 15 are the only other claims pending in this application,
but Appellant has not appealed from the Examiner’s rejection of these
claims (Br. 1-2). We have jurisdiction pursuant to 35 U.S.C. § 6(b).
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According to Appellant, the invention is directed to a method of
producing a customized molding material by adding to dry gypsum-
containing molding material an aqueous solution of polytetrafluoroethylene
(PTFE) (Br. 2). Independent claim 1 is representative of the invention and is
reproduced below:
1. A method of producing, without a polymerization step such as
heating, a customized hardening molding materials comprising the
steps of:

(a) preparing an aqueous moistening solution containing from
0.001 to 35% polytetrafluoroethylene, and

(b) then moistening dried gypsum containing molding material
with the solution prepared in step a.

The Examiner has relied upon the following prior art references as
evidence of unpatentability:
Morrell US 3,620,778 Nov. 16, 1971
Wada US 5,154,771 Oct. 13, 1992
Horiuchi US 5,718,749 Feb. 17, 1998
Hoshino JP 53-149224 Dec. 26, 1978
(as translated)

ISSUES ON APPEAL
Claims 1, 3, 5, 6, and 13 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to set forth the subject matter which Appellant regards
as his invention (Answer 4).
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Claims 1, 3, 5, 6, and 13 stand rejected under 35 U.S.C. § 112, first
paragraph, “as the specification as originally filed does not provide support
for the invention as now claimed” (Answer 5).1
Claims 1, 3, 5, 6, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wada, Morrell, or Hoshino (Answer 7).2
Appellant contends that the disputed phrase “without a polymerization
step such as heating” has support on page 5 of the Specification (Br. 3 and
5).3
Appellant contends that Wada discloses formation of a hydraulic
powder which is then moistened, Morrell suggest that the polymeric organic
substance is added before/after the hydration of the “stone,” and Hoshino
does not teach preparation of a moistening solution containing PTFE to be
added to a gypsum-containing material (Br. 5-6).

1 The Examiner also bases this rejection on 35 U.S.C. § 132, but this section
relates to the introduction of new matter into the Specification, not the
claims.
2 We note that each of the Examiner’s rejections also included claims 7, 9-
12, and 15 (Answer 4, 5, and 7). However, as discussed above, claims 7, 9-
12, and 15 are not before this merits panel for review in this appeal (Br. 1-2).
Accordingly, we also do not review the rejection of claims 7, 9-12, and 15
under § 102(b)/§ 103(a) over Horiuchi (Answer 6). We note that the
Examiner inadvertently included claim 13, which depends on method claim
1, in the rejection over Horiuchi (id.). From the Examiner’s statement on
page 7 of the Answer, it is clear that Horiuchi was not meant to be applied
against any method claims. Therefore, on this record, we do not consider
claim 13 as rejected over Horiuchi.
3 Appellant also requests that the Amendment after the final rejection be
entered if all art rejections are “deemed inappropriate” (Br. 3). However, the
Examiner’s refusal to enter the proposed Amendment is not reviewable in
this proceeding. See In re Mindick, 371 F.2d 892, 894, 152 USPQ 566, 568
(CCPA 1967); see also In re Hengehold, 440 F.2d 1395, 1403, 169 USPQ
473, 479 (CCPA 1971).
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The Examiner contends that the term “such as” renders the scope of
the claims indefinite since it is not clear what other polymerization means or
methods are within the claimed scope (Answer 4).
The Examiner contends that the phrase “without a polymerization step
such as heating” is new matter because Appellant’s Specification only
requires this omission “when used to make models” (Answer 5).
The Examiner contends that Wada, Morrell, and Hoshino all disclose
or suggest the claimed components, with Wada and Hoshino adding the
ingredients in a different order than required by claim 1 on appeal, while
Morrell teaches the same order of adding the ingredients (Answer 10-12).
The Examiner further contends that mixing the same ingredients in any order
would have been an obvious choice to one of ordinary skill in this art, absent
any showing of criticality (Answer 12).
Accordingly, the issues presented from the record in this appeal are as
follows: (1) could one of ordinary skill in this art ascertain the scope of the
phrase “without a polymerization step such as heating?”; (2) does Appellant
provide support in the originally filed Specification for this phrase?; and (3)
does Wada, Morrell, or Hoshino disclose the same method of adding the
claimed ingredients, or methods varying only in the order of addition of
ingredients, to make a molding material?
We determine that the Examiner has not established that the claimed
language is indefinite in scope, or that the disputed phrase fails to find
support in the originally filed Specification, essentially for the reasons stated
in the Brief and those reasons set forth below. Therefore we REVERSE the
rejections based on § 112. We determine that the Examiner has established
a prima facie case of obviousness in view of the reference evidence, which
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prima facie case has not been adequately rebutted by Appellant’s arguments.
Therefore we AFFIRM the rejections under § 103(a) over Wada, Morrell, or
Hoshino, essentially for the reasons stated in the Answer, as well as those
reasons set forth below. Accordingly, the Examiner’s decision to reject the
claims on appeal is AFFIRMED.
A. The Rejection under § 112, ¶2
The legal standard for definiteness under paragraph two of 35 U.S.C.
§ 112 is whether a claim reasonably apprises those of skill in the art of its
scope. See Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200,
1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991). The definiteness of the
language employed must be analyzed, not in a vacuum, but always in light
of the teachings of the prior art and the application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the pertinent art.
See In re Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976).
Applying the preceding legal principles to the specific facts of this
appeal, we determine that one possessing the ordinary level of skill in this
art would be able to ascertain if any additional step in the claimed method as
recited in claim 1 on appeal would produce polymerization, and thus be
excluded from the scope of the claim. We determine that the phrase “such
as heating” is merely exemplary, and one of ordinary skill in this art would
have been apprised that the scope of the claim excludes any step which
produces polymerization. Therefore, we find that the claim language
reasonably apprises those of skill in the art of its scope.
For the foregoing reasons, we reverse the rejection of the claims on
appeal under the second paragraph of § 112.
B. The Rejection under § 112, ¶1
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It is well established that the claimed subject matter need not be
described ipsis verbis in order to satisfy the disclosure requirement of § 112.
See In re Lukach, 442 F.2d 967, 969, 169 USPQ 795, 796 (CCPA 1971).
The disclosure need only reasonably convey to persons skilled in the art that
the inventor had possession of the subject matter in question. See In re
Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978). In
rejecting a claim under the first paragraph of § 112, it is incumbent upon the
Examiner to establish that the originally filed disclosure would not have
reasonably conveyed to one having ordinary skill in the art that Appellant
had possession of the now claimed subject matter. See Wang Laboratories,
Inc. v. Toshiba Corp., 993 F.2d 858, 865, 26 USPQ2d 1767, 1774 (Fed. Cir.
1993); see also In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1584
(Fed. Cir. 1996).
Applying the preceding legal principles to the specific facts of this
appeal, we determine that the Examiner has not met the initial burden of
establishing that the originally filed disclosure would not have reasonably
conveyed to one of ordinary skill in the art that Appellant had possession of
the claimed “without a polymerization step such as heating.” As correctly
argued by Appellant, this phrase appears in the originally filed Specification
at page 6 (Br. 3). The Examiner contends that this phrase must be modified
by the disclosed “when used to make models” and this modification does not
appear in claim 1 on appeal (Answer 5-6). However, we determine that this
phrase would have reasonably conveyed to persons skilled in this art that
Appellant had possession of the now claimed subject matter directed to a
method of producing molding materials in general (see claim 1 on appeal).
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For the foregoing reasons and those stated in the Brief, we cannot
sustain the rejection of the claims on appeal under the first paragraph of
§ 112.
C. The Rejections under § 103(a)
We determine the following factual findings from the record in this
appeal:
(1) Wada discloses a hydraulic inorganic composition that is plastic
and moldable and used to produce a hardened molded article,
where the composition includes gypsum, 3-10% of PTFE fibers,
and water; Wada exemplifies a method of producing the hardened
molding material where water is added to the gypsum-PTFE
powder mixture (Abstract; col. 1, ll. 5-13; col. 2, ll. 32-40 and 49-
50; col. 5, ll. 5-12 and 48-65; and Example 1, col. 6, ll. 54-60);
(2) Morrell discloses an aqueous suspension of polymeric organic
substances having elastomeric and plastic properties which are
added to conventional dental casting compositions to produce
dental impressions, casts, and models, where the composition
includes alginates, gypsum (calcium sulfate), and certain fluorides
such as PTFE (in an amount of 1-10%) (Abstract; col. 1, ll. 22-35
and 58-72; col. 6, ll. 4-6 and 49; col. 10, ll. 45-48; col. 12, l. 30
and 36-40; col. 17, ll. 4-7; and claim 2, col. 20, l. 25);
(3) Morrell discloses various methods of mixing the ingredients, i.e.,
all the solid materials are mixed and then water is added to form
an impression or adding an aqueous suspension of PTFE to a
mixture of “stone” (gypsum) (col. 2, ll. 28-31; col. 4, ll. 19-22;
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col. 4, l. 65-col. 5, l. 11; col. 12, ll. 36-44; Table II, Group (D), 1a;
and col. 15, ll. 66-75); and
(4) Hoshino discloses a mortar material including gypsum kneaded
with 0.1-20 parts by weight of a fluororesin fibrillating polymer
such as PTFE, with water kneaded into the mortar material to
produce a hardened material (claims 1-3, p. 2; p. 3, third full
paragraph; p. 6, l. 18; p. 7, last full paragraph; and Example 2 on
p. 10).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of (1) the scope and content of the prior art; (2) the differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) secondary considerations. See Graham v. John Deere
Co. of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
“[A]nalysis [of whether the subject matter of a claim is obvious] need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007),
quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed.
Cir. 2006). The analysis supporting obviousness, however, should be made
explicit and should “identify a reason that would have prompted a person of
ordinary skill in the art to combine the elements” in the manner claimed.
KSR, 127 S. Ct. at 1731, 82 USPQ2d at 1389.
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness, which prima facie case has not been
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adequately rebutted by Appellant’s arguments. As shown by factual
findings (1) and (4) listed above, we determine that Wada and Hoshino
disclose a method of producing, without a polymerization step, a hardened
molding material comprising adding water to gypsum and PTFE (in an
amount overlapping the claimed range). Therefore, we determine that the
only difference between the methods of Wada and Hoshino and the claimed
method is the order of adding the ingredients. We agree with the Examiner
that changes in the sequence of adding ingredients would have been obvious
to one of ordinary skill in the art, absent some evidence of unobvious or
unexpected results (Answer 9 and 12). We determine that the final mixture
of Wada and Hoshino is the same as the claims on appeal, and it would have
been obvious to add the ingredients in any order to achieve this final
mixture. We note that Appellant has not responded to or disputed the
Examiner’s statement that any sequence of adding ingredients would have
been within the ordinary skill in the art.
As shown by factual findings (2) and (3) listed above, we determine
that Morrell teaches embodiments where an aqueous suspension of PTFE is
prepared, and this suspension is then added to the gypsum material (either
dry or with water). Therefore we determine that Morrell clearly teaches and
suggests the claimed method and order of adding the ingredients, including
specific examples directed to 4 wt. % aqueous suspensions of PTFE “to be
added [to the gypsum material or “stone”] as aqueous suspension” (see
Table II, Group (D), 1a).
For the foregoing reasons and those stated in the Answer, we affirm
the rejections of claims 1, 3, 5, 6, and 13 under 35 U.S.C. § 103(a) over
Wada, Morrell, or Hoshino.
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D. Summary
The rejections of claims 1, 3, 5, 6, and 13 under 35 U.S.C. § 112, first
and second paragraphs, are reversed.
The rejections of claims 1, 3, 5, 6, and 13 under 35 U.S.C. § 103(a)
over Wada, Morrell, or Hoshino are affirmed.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) .
AFFIRMED

tf/ls

Glenna Hendricks, Esq.
P.O. Box 2509
Fairfax, VA 22031-2509

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