Ex Parte Wang et al

Board of Patent Appeals and Interferences

Jun 29, 2010

10385834 (B.P.A.I. Jun. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BING WANG and
JOHN E. GREENZWEIG
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Appeal 2009-009327
Application 10/385,834
Technology Center 1700
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Decided: June 29, 2010
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Before MICHAEL P. COLAIANNI, JEFFREY T. SMITH, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's refusal to allow claims 1 through 15 and 22 through 25. Claims
17 through 21, the other claims pending in this application, stand withdrawn
from consideration by the Examiner. We have jurisdiction pursuant to 35
U.S.C. § 6.
Appeal 2009-009327
Application 10/385,834

2
We REVERSE.
STATEMENT OF THE CASE
The subject matter on appeal is directed to a moisture curable sealant
composition comprising silane functional poly-α-olefin polymer,
thermoplastic elastomer, and tackifying agent (claim 1).
The Examiner maintains the rejection of claims 1-15 and 22-251 under
35 U.S.C. § 102(b) as anticipated by Wey (U.S. 5,994,474, issued Nov. 30,
1999).

ISSUE
Did the Examiner reversibly err in finding that Wey teaches a
moisture curable sealant composition comprising, inter alia, a thermoplastic
elastomer and a tackifying agent as required by claim 1 within the meaning
of § 102? We decide this issue in the affirmative.

PRINCIPLE OF LAW
For a claimed invention to be anticipated, the reference must "direct
those skilled in the art to the compound without any need for picking,
choosing, and combining various disclosures not directly related to each
other.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972).

ANALYSIS AND CONCLUSION
In rejecting claim 1, the Examiner finds that

1 We note that the Examiner's rejection of claim 16 is harmless error since it
is apparent from the amendment dated August 4, 2008 (entered on August
13, 2008) that this claim has been canceled.
Appeal 2009-009327
Application 10/385,834

3
Wey discloses a moisture curable sealant composition
comprising silane grafted poly-alpha-olefin polymer, other polymers
and tackifier resin (column 11, line 21 through column 12, line 35)
where the other polymer includes primarily rubbers, especially butyl
rubber (column 3, lines 50-59) which Appellant defines as a
thermoplastic elastomer in claim 3. Because Wey specifically teaches
the use of polymers including “especially butyl rubber” one of
ordinary skill in the art would be more inclined in using the butyl
rubber material over the other disclosed polymeric materials.
(Ans. 5; see also Ans. 3).
The Examiner also applies an alternative rationale to reject claim 1.
(See Ans. 6). In this regard, the Examiner finds that
Example 25 of Wey discloses a silane grafted poly-alpha-olefin
along with a butyl rubber (column 10, lines 36-50) where the
composition further comprises tackifier resins (column 12, lines
8-13). If a skilled artisan included all of the additional
additives from column 12, lines 8-13, along with the
composition from Example 25, the skilled artisan would arrive
at Appellants['] claimed invention.

(Ans. 6).
We agree with Appellants' arguments (App. Br. 11 and 12 and Reply
Br. 7-10) that the Examiner erred in finding that Wey anticipates the subject
matter of claim 1. Specifically, we agree with Appellants' arguments that "a
series of selections must be made" for each rationale made by the Examiner.
Id. Indeed, arriving at Appellants' invention requires picking and choosing,
which is improper when establishing a prima facie case of anticipation. See
Arkley, 455 F.2d at 587. 2

2 We note, however, that “picking and choosing” is proper when making a
35 U.S.C. § 103 rejection based upon obviousness. Id.
Appeal 2009-009327
Application 10/385,834

4
Thus, it follows that the Examiner reversibly erred in finding that Wey
teaches a moisture curable sealant composition comprising, inter alia, a
thermoplastic elastomer and a tackifying agent as required by claim 1 within
the meaning of § 102.

ORDER
The Examiner's § 102(b) rejection over Wey is reversed.
REVERSED

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