Ex Parte Walther

Board of Patent Appeals and Interferences

Sep 18, 2002

09143947 (B.P.A.I. Sep. 18, 2002)

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The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.
Paper No. 15

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte WERNER WALTHER
______________

Appeal No. 2001-0856
Application 09/143,947
_______________

ON BRIEF
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Before WARREN, KRATZ and MOORE, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally
rejecting claims 1 through 5 and 8 through 15. Claim 1 is illustrative of the claims on appeal:
1. A process for finishing flexible or stretchable substrates comprising the steps of:
a) applying to the surface of said substrate an aqueous polymeric composition (C) comprising at
least one polymeric binder (A) , optionally at least one foam stabilizer (B) and an amount of
solvent blowing agent boiling in the range of from 40 to 60°C, effective to foam said
composition; and
b) applying heat to the coated substrate to foam and cure said polymeric composition (C) to form
a flexible foam coating fixed to the substrate surface.
The appealed claims, as represented by claim 1, are drawn to a process of forming a
flexible foam coating fixed to a flexible or stretchable substrates comprising at least the steps of
applying an aqueous polymeric composition comprising at least one polymeric binder and an
Appeal No. 2001-0856
Application 09/143,947
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effective amount of a solvent blowing agent boiling in the range of from 40 to 60°C, and
applying heat to form and cure the composition.
The reference relied on by the examiner is:
Spek et al. (Spek) 4,833,173 May 23, 1989
The examiner has rejected appealed claims 1 through 5 and 8 through 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Spek.1
Appellant states in the brief (page 3) that the appealed claims “stand or fall together.”
Thus, we decide this appeal based on appealed claim 1. 37 CFR § 1.192(c)(7) (2000).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellant, we
refer to the examiner’s answer and to appellant’s brief and reply brief for a complete exposition
thereof.
Opinion
Our consideration of the examiner’s application of prior art to appealed claim 1 must, of
course, begin with interpreting the language of the claims in light of the written description in
appellant’s specification as it would be interpreted by one of ordinary skill in this art. See In re
Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (“[T]he PTO applies
to the verbiage of the proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may be afforded by the
written description contained in the applicant’s specification.”); In re Zletz, 893 F.2d 319, 321-
22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (“During patent examination the pending claims
must be interpreted as broadly as their terms reasonably allow. When the applicant states the
meaning that the claim terms are intended to have, the claims are examined with that meaning, in
order to achieve a complete exploration of the applicant’s invention and its relation to the prior
art. See In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (before the
application is granted, there is no reason to read into the claim the limitations of the

1 The examiner has withdrawn the grounds of rejection under 35 U.S.C. § 103(a) over Snider,
Liman and Horn (answer, page 2). See the Office action of November 11, 1999 (Paper No. 7).
Appeal No. 2001-0856
Application 09/143,947
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specification.).” In doing so, we will give the terms used in the claims their ordinary meaning
unless another meaning is intended by appellant as established in the written description of the
specification, and the limitations of the specification, or any preferred embodiment or example
therein, will not be read into the claims. See generally, Morris, supra; see also Zletz, supra; In
re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978); In re Prater, 415 F.2d 1393, 1404-
05, 162 USPQ 541, 550-51 (CCPA 1969). In this respect, it is appellant’s burden to define the
claimed invention encompassed by the appealed claims in the specification. See Morris, 127
F.3d at 1055-56, 44 USPQ2d at 1029.
We interpret the terms “flexible or stretchable substrates” and “polymeric binder” to
encompass any substrate which is flexible or stretchable and any polymeric binder that will
interact with any solvent blowing agent boiling in the range of from 40 to 60°C to form a foam
that is fixed to the substrate surface, respectively. The term “solvent blowing agent boiling in the
range of from 40 to 60°C,” of course, encompasses any such solvent blowing agent that will
interact with a polymeric binder to form the foam. Thus, we do not read into the claim terms the
preferred materials that appellant relies on to distinguish the claimed process over the teachings
of Spek (brief, e.g., page 8; reply brief, e.g., page 2).
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner (answer, pages 3-4) that, prima
facie, one of ordinary skill in this art routinely working within the teachings of Spek would have
found therein the suggestion that any water insoluble solvent having a boiling point between -
40°C and +50°C can be used as a physical foaming agent in an aqueous polymer composition
containing a coagulable polymer latex in a process of impregnating a flexible textile cloth with
the composition and foaming the composition, with the reasonable expectation of obtaining a
product taught in the reference (e.g., col. 3, lines 12-31, and col. 4, lines 33-42). See generally,
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1845-46 (Fed.
Cir. 1989); In re Lemin, 332 F.2d 839, 841, 141 USPQ 814, 815-16 (CCPA 1964).
The examiner finds that the solvent blowing agent boiling point range specified in
appealed claim 1 and taught in Spek “read on each other” (answer, page 4), and we agree that the
two ranges overlap. It is well settled that where the claimed ranges are encompassed by or
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Application 09/143,947
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overlap with the ranges for the same parameters disclosed in the applied prior art, the claimed
ranges will not patentably distinguish the claimed invention from the prior art unless the claimed
ranges are shown to be critical, such as by a showing of a new or unexpected result, thus shifting
the burden to appellant to establish the criticality of the claimed ranges. See generally, In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) (“The law is replete
with cases in which the difference between the claimed invention and the prior art is some range
or other variable within the claims. [Citations omitted.] These cases have consistently held that in
such a situation, the applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the prior art range.
[Citations omitted.]”); see also In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed.
Cir. 1997); In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980).
Accordingly, based on the evidence in Spek, one of ordinary skill in this art routinely
working within the teachings of the reference would have arrived at the claimed process.
Accordingly, since a prima facie case of obviousness has been established Spek by the
examiner, we have again evaluated all of the evidence of obviousness and nonobviousness based
on the record as a whole, giving due consideration to the weight of appellant’s arguments. See
generally, In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We have carefully considered all of appellant’s arguments. We recognize, as pointed out
by appellant (brief, page 8; reply brief, page 2), that Spek does not teach the exact solvent
blowing agent boiling point range specified in appealed claim 1. However, the claimed and
reference range clearly overlap from 40 to 50°C, and appellant has not presented objective
evidence or affective argument of the criticality of the solvent blowing agents therein.
Furthermore, we are not convinced that appealed claim 1 distinguishes over Spek because the
reference does not disclose the particular type of solvent blowing agent, since appealed claim 1
specifies any solvent blowing agent boiling in said range as we interpreted this claim above. We
find no basis in the plain language of appealed claim 1 on which to read any preferred
embodiment, substrate, polymeric binder or solvent blowing agent into the claim.
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Application 09/143,947
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Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Spek with appellants’ countervailing evidence of
and argument for nonobviousness and conclude that the claimed invention encompassed by
appealed claims 1 through 5 and 8 through 15 would have been obvious as a matter of law
under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED

CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
PETER F. KRATZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T.MOORE )
Administrative Patent Judge )

Appeal No. 2001-0856
Application 09/143,947
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Philip P. McCann
Clariant Corporation
4331 Chesapeake Dive
Charlotte, NC 28216