Ex parte Walters

Board of Patent Appeals and Interferences

Oct 12, 1999

08143415 (B.P.A.I. Oct. 12, 1999)

Application for patent filed October 26, 1993. 1
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not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN P. WALTERS
____________
Appeal No. 1996-1045
Application No. 08/143,4151
____________
ON BRIEF
____________
Before JOHN D. SMITH, OWENS, and SPIEGEL, Administrative Patent Judges.
SPIEGEL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims
3 through 10. Claims 1 and 2, the only other claims pending in the application, have been withdrawn
from further consideration under 37 C.F.R. § 1.142(b) as not readable on the elected invention. Claim
3 is illustrative:
Appeal No. 1996-1045
Application No. 08/143,415
2
3. A pigmented, stereoregular, branched-mono-1-olefin polymer composition
comprising:
(a) tris(3,5-di-tert-butyl-4-hydroxybenzyl)isocyanurate;
(b) bis(2,4-di-tert-butylphenyl)pentaerythritol diphosphite;
(c) a costabilizer selected from the group consisting of sodium stearoyl
lactylate, calcium stearoyl lactylate, calcium lactate, and mixtures thereof;
(d) 2-Naphthalenecarboxyamide, N,N’-(2-chloro-1,4 phenylene)bis[4-
[2,5-dichlorophenyl)azo]-3-hydroxy-;
(e) a stereoregular, branched-mono-1-olefin polymer.
The examiner relies on the following reference in rejecting the appealed claims:
Yukawa 4,366,280 Dec. 28, 1982
Claims 3 through 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Yukawa. We reverse this rejection.
In reaching our decision in this appeal, we have given careful consideration to the appellant’s
specification and claims, to the applied prior art reference and to the respective positions articulated by
the appellant and the examiner. We make reference to the examiner’s answer (Paper No. 10, mailed
August 17, 1995) for the examiner’s reasoning in support of the rejection, and to the appellant’s
amended brief (Paper No. 11, filed September 5, 1995) for the appellant’s arguments thereagainst.
Appellant’s invention is directed to a pigmented, stereoregular, branched-mono-1-olefin
polymer composition comprising (e) a stereoregular, branched-mono-1-olefin polymer, a specific
pigment, i.e., (d) 2-Naphthalenecarboxyamide, N,N’-(2-chloro-1,4 phenylene)bis[4-[2,5-
Appeal No. 1996-1045
Application No. 08/143,415
3
dichlorophenyl)azo]-3-hydroxy, also commonly known as C.I. Pigment Red 144, and a
thermostabilizing additive, i.e., (a) tris(3,5-di-tert-butyl-4-hydroxybenzyl)isocyanurate;
(b) bis(2,4-di-tert-butylphenyl)pentaerythritol diphosphite; and (c) a costabilizer selected from the
group consisting of sodium stearoyl lactylate, calcium stearoyl lactylate, calcium lactate, and mixtures
thereof.
OPINION
To establish a prima facie case of obviousness, there must be both some suggestion or
motivation to modify the reference or combine reference teachings and a reasonable expectation of
success. Furthermore, the prior art must teach or suggest all the claim limitations.
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
Yukawa discloses thermoxidatively stabilized polyolefin compositions comprising (e) polyolefin,
(c) calcium stearoyl lactylate, (a) tris-(3,5-di-tert-butyl-4-hydroxybenzyl)-isocyanurate, and (b) di-
(2,4-di-tert-butyl-phenyl)pentaerythritol diphosphite (col. 1, lines 7-11, 23, 36-55; col. 2, lines 20-50;
col. 3, lines 30-33; col. 4, lines 21-22; col. 5, line 16; col. 6, lines 14-15). Yukawa states that other
additives such as pigments may also be combined in the composition (col. 6, lines 41-43).
According to the examiner,
[s]election of any of the disclosed parameters of the patented invention would have
been obvious to one having ordinary skill in the art at the time of appellant’s invention.
[Answer, page 4, first full para.]

Appeal No. 1996-1045
Application No. 08/143,415
4
However, the examiner has failed to point out and we fail to find where Yukawa discloses or suggests
use of the specific pigment (d), i.e., C.I. Pigment Red 144, required by the claimed invention. The
examiner has not established on this record either that C.I. Pigment Red 144 was generally known to
be used in polyolefin compositions, such those described by Yukawa, or that any pigment might be
used in the polyolefin composition of Yukawa. Thus, the examiner has failed to explain what would
have motivated the skilled artisan to use C.I. Pigment Red 144 in the composition of Yukawa. Rather,
the only place we find such suggestion is in the appellant’s specification. Thus, we find that the
examiner has relied on impermissible hindsight in making his determination of obviousness. In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (“It is impermissible to
engage in hindsight reconstruction of the claimed invention, using the applicant’s structure as a template
and selecting elements from references to fill the gaps.). Therefore, we conclude that the examiner has
not established a prima facie case of obviousness as to claims 3-10, which all require the specific
pigment C.I. Pigment Red 144.
Having concluded that the examiner has not established a prima facie case of obviousness, we
do not reach the rebuttal evidence of unexpected results discussed on pages 5-8 of the amended brief.
CONCLUSION
To summarize, the decision of the examiner to reject claims 3 through 10 under 35 U.S.C. §
103 as unpatentable over Yukawa is reversed.
Appeal No. 1996-1045
Application No. 08/143,415
5
Appeal No. 1996-1045
Application No. 08/143,415
6
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
Appeal No. 1996-1045
Application No. 08/143,415
7
CAS/kis
Appeal No. 1996-1045
Application No. 08/143,415
8
RICHMOND, PHILLIPS, HITCHCOCK & CARVER
P.O. BOX 2443
BARTLESVILLE, OK 74005