Ex parte Weaver et al.

Board of Patent Appeals and Interferences

Jun 21, 1999

07888268 (B.P.A.I. Jun. 21, 1999)

Application for patent filed May 22, 1992. According to appellants, this application is a1
continuation of Application 07/578,107, filed September 5, 1990.
Claim 47 had previously been canceled in an amendment dated January 24, 1994, but was2
erroneously included in the final rejection and in appellants Notice of Appeal dated April 17, 1995.
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journal and (2) is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MAX A. WEAVER,
EDWARD W. KLUGER
and DAVID J. MOODY
_____________
Appeal No. 96-0971
Application 07/888,2681
______________
HEARD: JUNE 9, 1999
_______________
Before WARREN, OWENS and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 39 through 46 and 48
through 54, dated January 17, 1995. An amendment under 37 C.F.R. § 1.116 after the final rejection2
Appeal No. 96-0971
Application 07/888,268
2
canceling claims 45 and 54 and amending claims 39, 46 and 48 dated February 6, 1995 was entered
for purposes of appeal. See the Advisory Action dated February 10, 1995. The examiner refused to
allow claims 39 through 44, 46, and 48 through 53 as amended. Accordingly, claims 39 through 44,
46, and 48 through 53 remain for consideration on appeal.
THE INVENTION
Appellants invention is drawn to a colored thermoplastic resin composition having an
anthraquinone dye incorporated therein while the resin is in a molten state. The dye has one or more
moieties containing repeating ethoxy, propoxy and butoxy groups attached through sulfonamide groups
to the anthraquinone ring.
THE CLAIMS
Claim 39 is illustrative of appellants invention and is reproduced below.
39. A colored thermoplastic resin composition which comprises a thermoplastic resin and a
colorant incorporated in and distributed throughout the mass of said thermoplastic resin while said resin
is in a molten state, whereby said colorant is essentially non-extractable from said resin, said colorant
has the formula:
A[SO N(R )-(Y)]2 1 1-6
wherein A is an anthraquinone or condensed anthraquinone colored chromophoric radical;
Y is a polymeric substituent having from 4 to 200 residues selected from -CH CH O-, - 2 2
CH CH(CH )O-, -CH CH(C H )O- and mixtures thereof, and the total of all said residues per2 3 2 2 5
colorant molecule is from 4 to 600; and
R is selected from hydrogen, Y, C alkyl, aryl and cycloalkyl, or R in combination with Y1 1-12 1
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and N completes a 5-7 membered ring.
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THE REFERENCE OF RECORD
As evidence of obviousness, the examiner relies upon the following reference of record.
Britain (Ciba-Geigy) 1,477,396 June 22, 1977
(Britain Patent Specification)
THE REJECTION
Claims 39 through 44, 46, and 48 through 53 stand rejected under 35 U.S.C. § 103 as
unpatentable over Ciba-Geigy.
OPINION
Appellants have not stated in their brief whether claims 39 through 44, 46 and 48 through 53
stand or fall together. Accordingly, we shall treat the claims as standing or falling together. We select
claim 39 as representative of appellants’ claimed subject matter and limit our discussion thereto. See 37
C.F.R. § 1.192 (c)(5)( 1994).
We have carefully considered all of the arguments advanced by the appellants and the examiner
and agree with appellants that the aforementioned rejection is not well founded. Accordingly, we do
not sustain the rejection.
The claimed subject matter before us is drawn to a composition which provides for the
incorporation of a colorant, “while said resin is in a molten state.” However, there is no disclosure or
suggestion in Ciba-Geigy for incorporation of their anthraquinone dye in the molten state.
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Application 07/888,268
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Furthermore, the anthraquinone dyes of Ciba-Geigy differ from those of the claimed subject matter
by a minimum of one carbon atom. Patentee's dyes necessarily contain only one carbon atom between
the sulfonamide nitrogen and the alkoxy groups. In contrast, the corresponding dyes of the claimed
subject matter contain a minimum of two carbon atoms between the sulfonamide nitrogen and the
alkoxy groups. Moreover, the examiner has not explained why it would have been obvious for one of
ordinary skill in the art to substitute appellants’ dyes for those of Ciba-Geigy.
Based upon the above analysis, we have determined that the examiner’s legal conclusion of
obviousness is not supported by the facts. “Where the legal conclusion [of obviousness] is not
supported by the facts it cannot stand.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967).
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DECISION
The rejection of claims 39 through 44, 46, and 48 through 53 stand rejected under 35 U.S.C. §
103 as unpatentable over Ciba-Geigy is reversed.
The decision of the examiner is reversed.
REVERSED
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PAUL LIEBERMAN )
Administrative Patent Judge )
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Application 07/888,268
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PL/dal
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Application 07/888,268
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TIMOTHY J. MONAHAN
MILLIKEN RESEARCH CORPORATION
P.O. BOX 1927
SPARTANBURG, SC 29304