Ex Parte Woerner et al

Board of Patent Appeals and Interferences

Feb 28, 2006

10088656 (B.P.A.I. Feb. 28, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CARSTEN WOERNER, URSULA ZIEGLER, KURT WITAN
and KLAUS KURZ
_____________
Appeal No. 2006-0338
Application No. 10/088,656
______________
ON BRIEF
_______________
Before KIMLIN, TIMM and FRANKLIN, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 11-14
and 16-27. Claims 11 and 16 are illustrative:
11. A polyoxymethylene composition comprising
A from 84 to 99.79% by weight of at least one
polyoxymethylene homo- or copolymer,
B from 0.1 to 5% by weight of at least one
polyalkylene glycol,
C from 0.1 to 10% by weight of zinc oxide, and
D from 0.01 to 1% by weight of one or more
nitrogen-containing costabilizer and wherein the
Appeal No. 2006-0338
Application No. 10/088,656
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nitrogen-containing costabilizer comprises at
least one amino compound, amide compound,
hydrazine compound, urea compound or a hindered
amine.

16. The polyoxymethylene as claimed in claim 14,
wherein the nitrogen-containing costabilizer
comprises melamine.
The examiner relies upon the following reference in the
rejection of the appealed claims:
Kurz et al. (Kurz) 6,489,388 Dec. 3, 2002
Appellants’ claimed invention is directed to a
polyoxymethylene composition comprising, inter alia, one or more
nitrogen-containing costabilizers selected from an amino
compound, an amide, a hydrazine compound, a urea compound or a
hindered amine.
Appealed claims 11-15, 17, 19-22 and 24-26 stand rejected
under the judicially created doctrine of obviousness-type double
patenting over claims 1-9 of Kurz. Claims 11-14 and 16-27 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Kurz.
We have thoroughly reviewed the respective positions
advanced by the appellants and the examiner. In so doing, we
will sustain the examiner’s obviousness-type double patenting
rejection. We will also sustain the Section 102 rejection of
claims 11-14, 17 and 19-27 for essentially those reasons
Appeal No. 2006-0338
Application No. 10/088,656
3
expressed by the examiner. However, we will not sustain the
examiner’s Section 102 rejection of claims 16 and 18.
We consider first the examiner’s obviousness-type double
patenting rejection. Appellants do not dispute the examiner’s
factual findings set forth at page 3 of the answer with
respect to claim 1 of Kurz, namely, that Kurz discloses a
polyoxymethylene composition comprising the claimed homo- or
copolymer, the claimed polyalkylene glycol, the claimed zinc
oxide, and a stabilizer. Appellants also do not take issue with
the examiner’s determination that Kurz discloses that the
stabilizer can be a polyamide, an amide, a hydrazine, or a urea,
as presently claimed. Accordingly, based on claim 1 of Kurz, as
well as the supporting specification, we find no error in the
examiner’s legal conclusion that the claimed polyoxymethylene
compositions would have been obvious to one of ordinary skill in
the art.
Appellants, while conceding that Kurz discloses the claimed
amide, hydrazine and urea stabilizing compounds, maintain that
the “claimed invention is a selection invention over Kurz” (page
6 of brief, penultimate sentence). However, it is well settled
that it is a matter of prima facie obviousness for one with
ordinary skill in the art to select one or some of components
Appeal No. 2006-0338
Application No. 10/088,656
4
disclosed by the prior art as being effective for the disclosed
purpose. In order to gain patentability for selecting one or a
number of components disclosed by the prior art, it is incumbent
upon the applicant to demonstrate that the selection achieves an
unexpected result. However, in the present case, the appellants
have proffered no objective evidence which establishes that the
selection of at least one amino compound, amide compound,
hydrazine compound, urea compound or a hindered amine from the
list of stabilizers disclosed by Kurz produces an unexpected
result, particularly since Kurz teaches that amides, hydrazines,
and ureas are, in particular, suitable stabilizers (see col. 2,
lines 43 et seq.).
For essentially the same reasons, we will sustain the
examiner’s Section 102 rejection of claims 11-14, 17 and 19-27.
Inasmuch as Kurz, as noted above, describes polyamides, amides,
hydrazines and ureas at the beginning of a relatively small list
of suitable stabilizers against the effect of heat, we concur
with the examiner that Kurz provides a description of the claimed
polyoxymethylene compositions within the meaning of Section 102.
We are not persuaded by appellants’ arguments that the appealed
claims recite that the stabilizer is in an amount of from 0.01
to 1%. Kurz describes that the stabilizer may be present in an
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Application No. 10/088,656
5
amount of 0.1% by weight, which amount falls directly within the
claimed range (column 2, lines 57-58). Ex parte Lee, 31 USPQ2d
1105, 1106 (Bd. Pat. App. & Int. 1993).
We are also not persuaded by appellants’ argument that
“[t]he examples in Kurz did not contain any costabilizers” (page
7 of brief, second paragraph). It is not necessary that the
description of the claimed stabilizers appears in the examples of
a reference but, rather, it is sufficient that Kurz describes the
use of the claimed stabilizers at column 2, lines 43 et seq.
Appellants also contend that “Kurz focuses on resistance
against diesel fuel and against gasoline while this patent
application focuses on acid resistance” (page 7 of brief, last
paragraph). However, it is not necessary for a finding of
anticipation or obviousness that the prior art describe all of
the properties of a claimed composition. Also, as pointed out by
the examiner, appellants’ argument is not commensurate in scope
with the claims which should not recite any property of acid
resistance. Moreover, it would appear that since the
compositions of Kurz are essentially the same as the claimed
compositions, they would exhibit the same properties.
We will not sustain the examiner’s Section 102 rejection
of claims 16 and 18 which define the nitrogen-containing
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costabilizer as melamine. The examiner, in acknowledging that
Kurz does not disclose melamine as a stabilizer, sets forth the
following explanation:
Applicants are correct in sense that KURZ does not teach
melamine. However melamine is not a component of the
independent claims. The prior art of KURZ therefore applies
to the rest of the claims. [Page 6 of the answer, 5th
paragraph.]
Manifestly, the examiner’s rationale is legally deficient in
supporting the rejection of claims 16 and 18 under Section 102.
Kurz must describe melamine as a stabilizer to support a
rejection under Section 102. It would seem that the examiner has
not considered the merits of separately argued 16 and 18.
In conclusion, based on the foregoing, the examiner’s
obviousness-double patenting rejection of claims 11-15, 17, 19-22
and 24-26 is sustained, as is the examiner’s Section 102
rejection of claims 11-14, 17 and 19-27. The examiner’s Section
102 rejection of claims 16 and 18 is reversed. Accordingly, the
examiner’s decision rejecting the appealed claims is affirmed-in-
part.
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Application No. 10/088,656
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv)(2004).
AFFIRMED-IN-PART

)
)
EDWARD C. KIMLIN )
Administrative Patent Judge ) BOARD OF PATENT
) APPEALS AND
) INTERFERENCES
)
)
BEVERLY A. FRANKLIN )
Administrative Patent Judge )
Appeal No. 2006-0338
Application No. 10/088,656
8
TIMM, Administrative Patent Judge, Concurring-In-Part,
Dissenting-In-Part.
With regard to the obviousness-type double patenting
rejection, I concur with my colleagues’ determination of no
reversible error in the examiner’s legal conclusion. I add that
appellants’ own specification indicates that the amino, amide,
hydrazine, and urea costabilizers listed in appellants’ claim 11
and described in column 2, lines 43-45 of Kurz were customary for
polyacetals (specification, p. 4, l. 37 to p. 5, l. 2; see also
p. 1, l. 33 to p. 2, l. 12). The use of these customary
stabilizers in the composition of the claims of Kurz would have
been obvious to one of ordinary skill in the art. Moreover, the
claims of Kurz disclose concentrations that are the same,
encompass, or overlap those presently claimed. Such a situation
is supportive of a conclusion of obviousness in a case such as
this wherein there is no showing of secondary considerations such
as unexpected results. See In re Peterson, 315 F.3d 1325, 1329,
65 USPQ2d 1379, 1382 (Fed. Cir. 2003); In re Geisler, 116 F.3d
1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997). The record as
a whole supports the examiner’s determination that the
composition of appealed claims is merely an obvious variation of
what appellants previously claimed in the Kurz patent. See In re
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Application No. 10/088,656
9
Longi, 759 F.2d 887, 893, 225 USPQ 645, 648 (Fed. Cir. 1985)(The
public should be able to act on the assumption that upon the
expiration of the patent it will be free to use not only the
invention claimed in the patent but also modifications or
variants which would have been obvious to those of ordinary skill
in the art at the time the invention was made, taking into
account the skill of the art and prior art other than the
invention claimed in the issued patent).
Turning to the rejection under 35 U.S.C. § 102(e), I concur
with my colleagues’ decision to reverse the examiner’s decision
to reject claims 16 and 18 as anticipated. I, however,
respectfully dissent from my colleagues’ decision to affirm the
examiner’s decision to reject claims 11-14, 17, and 19-27 on the
basis of anticipation. In my opinion, the facts herein support a
prima facie case of obviousness within the meaning of 35 U.S.C.
§ 103(a), but do not rise to the level of anticipation under 35
U.S.C. § 102. I would, therefore, reverse with respect to all
the claims and remand the application to the examiner for the
entry of a rejection under 35 U.S.C. § 103(a).
The difference in statutory ground in this case may be more
than academic. Kurz and the present application have common
assignees and overlapping inventive entities. A rejection under
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Application No. 10/088,656
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35 U.S.C. § 103(a) based on Kurz could be overcome if appellants
show that the claimed invention and the subject matter of Kurz
were commonly owned or assigned at the time of the invention in
accordance with the requirements of 37 CFR § 1.130. See 35
U.S.C. § 103(c)(2004) and MPEP § 804.03 (8 ed. rev.4, Oct.th
2005). Rejections under 35 U.S.C. § 102(e) cannot be overcome in
this way. See the words “under this section” in 35 U.S.C.
§ 103(c)(1) and MPEP § 804.03(IIA). Moreover, a rejection under
35 U.S.C. § 103(a) can be overcome by a showing of secondary
considerations such as unexpected results whereas a rejection
under 35 U.S.C. § 102 cannot. See In re Malagari, 499 F.2d 1297,
1303, 182 USPQ 549, 553 (CCPA 1974).
The key difference between the polyoxymethylene composition
of appellants’ claims on appeal and the polyoxymethylene
composition of Kurz resides in the difference between the
concentration range limitations of the claims and the disclosure
of concentrations in Kurz. Focusing on claim 11 for illustrative
purposes, this claim requires the presence of four ingredients in
particular ranges of concentration. There is no question that
Kurz describes a composition having the first three claimed
ingredients of claim 11. The fourth claimed ingredient is a
nitrogen-containing costabilizer comprising at least one amino
Appeal No. 2006-0338
Application No. 10/088,656
11
compound, amide compound, hydrazine compound, urea compound, or a
hindered amine. I agree with my colleagues and the examiner that
there is an explicit description in Kurz of using a nitrogen-
containing stabilizer from the claimed group in a
polyoxymethylene composition. The list of polyacetal stabilizers
provided by Kurz is short and at least four of the six recited
stabilizers are within the scope of the claim. Arguably, a fifth
is also within the scope of the claim. Poly(N-vinyllactams) are
cyclic amides and, therefore, “amide compounds.” There is a
description in Kurz of using a composition containing all the
ingredients of the claim. Were it not for the concentration
limitations, claim 11 would be anticipated.
There is no question that Kurz would anticipate if the
reference contained a working example of the composition with all
the ingredients in concentrations within the claimed ranges or a
more general description of a composition having concentrations
of ingredients corresponding to the claimed ranges. It is well
settled that in either of these circumstances, there is
anticipation. But neither such disclosure is present in Kurz.
See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431
(Fed. Cir. 1997)(“To anticipate a claim, a prior art reference
must disclose every limitation of the claimed invention, either
Appeal No. 2006-0338
Application No. 10/088,656
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explicitly or inherently.”). See also Titanium Metals Corp. of
Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 779 (Fed. Cir.
1985)(Disclosure of a discrete embodiment of an alloy composition
with metal concentrations within the claimed ranges anticipated
the claim); In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347
(CCPA 1960)(“It is well settled that a generic claim cannot be
allowed to an applicant if the prior art discloses a species
falling within the claimed genus.”).
The harder question is whether there is anticipation in a
case such as this where the range of concentrations varies from
those of the claim and, in particular, where one of the ranges
merely overlaps. This question was raised, but not decided, in
In re Malagari, 499 F.2d 1297, 1302-03, 182 USPQ 549, 553 (CCPA
1974). In that case the court discussed the issue as follows:
Appellant has raised an interesting question,
however, by his citation of several cases wherein the
prior art taught a broad range and the inventor was
held entitled to claims limited to a narrow range
within the broad range by showing criticality of and
the existence of unexpected properties within the
claimed range. Appellant's argument seems to be that if
such an invention is patentable on the basis of such a
showing, then his invention, which only touches or
narrowly overlaps the range of the prior art, ought
likewise to be patentable. Appellant's arguments
suggest that the disclosure of the end point of the
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range of the prior art ought to be given no greater
significance as prior art than individual points within the
range disclosed by a prior art reference, there being no
specific disclosure of working examples or specific analyses
in either of the principal references of carbon contents
within appellant's claimed range.
Because of the view we take of the rejection for
obviousness under § 103 and because of appellant's
failure to recognize in his arguments the difference
between § 102 and § 103, we find it unnecessary to, and
do not, deal with the rejection under § 102.
The cases cited by the appellant, Malagari, in support of the
argument were Becket v. Coe, 98 F.2d 332, 38 USPQ 26 (24 CCPA
992) (App.D.C. 1938); Ex parte Selby, 153 USPQ 476 (Pat. Off. Bd.
App. 1966); and Ex parte Thumm, 132 USPQ 66 (Pat. Off. Bd. App.
1960)). Since the time that Malagari was decided, many more
cases have held that a showing of criticality or unexpected
results can overcome a prima facie case of obviousness in cases
where the prior art teaches a range encompassing or overlapping
claimed ranges. See e.g., In re Harris, 409 F.3d 1339, 1343, 74
USPQ2d 1951, 1953-54 (Fed. Cir. 2005); In re Peterson, 315 F.3d
1325, 1329, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003); In re Geisler,
116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA
1976).
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Application No. 10/088,656
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On the other hand, a panel of our current reviewing court
has affirmed a District Court finding of anticipation based on
references teaching overlapping ranges of concentration for an
explosive composition. See Atlas Powder Co. v. IRECO Inc., 190
F.3d 1342, 1346, 51 USPQ2d 1943, 1946 (Fed. Cir. 1999). In this
case, however, the court did not consider the question posed in
Malagari.
In my opinion, unless the prior art reference somehow
indicates that a value within the range or an endpoint of the
range is representative of a discrete embodiment or of specific
significance, there is no anticipation. Where the prior art
merely discloses a range, there is no reason to think any
particular value is different from any other value within the
range in terms of expected results. In such a circumstance, an
applicant should have the opportunity to show that they have
found unexpected results for values within or overlapping the
range of the prior art. Such a showing should not be precluded
by a rejection under 35 U.S.C. § 102 unless the prior art
specifically directs the ordinary artisan to select a value
within the claimed range over the other values of the prior art
range or otherwise discloses a discrete embodiment or working
example meeting all the requirements of the claim. If unexpected
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Application No. 10/088,656
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results show that a range within, or overlapping, a prior art
range is not obvious, then that broader, or overlapping, prior
art range cannot be the basis for anticipation. It is, likewise,
inconsistent to find anticipation in such a situation and
foreclose disqualification of a reference under § 103(c) based on
a broader or overlapping range disclosed in a reference. I
realize that the analysis above is at odds with the holding of
the plurality in Ex parte Lee, 31 USPQ2d 1105, 1106 (Bd. Pat.
App. & Int. 1993). According to the three member majority of
Lee, a prior art reference describing the claimed invention
except for a claimed range will anticipate if the reference
describes an end point which is within the claimed range. I,
like the dissent in Lee, cannot agree that such a bright line
rule exists. As stated by the dissent:
We recognize that in cases involving an overlap of a
claimed invention and applied prior art, anticipation
under 35 U.S.C. 102 can arise even though an applied
reference does not exemplify a species falling within
the overlap. Anticipation under 35 U.S.C. 102 in such
cases would appear to depend upon the extent of
overlap which determines the amount of picking and
choosing necessary to arrive at the claimed invention.
In situations involving virtually little or no
selectivity, a reference may be considered to describe
the overlapping portion of a claimed invention within
the meaning of 35 U.S.C. 102. In re Sivaramakrishnan,
673 F.2d 1383, 213 USPQ 441 (CCPA 1982); In re
Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA 1978); In re
Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
Appeal No. 2006-0338
Application No. 10/088,656
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However, where a prior art disclosure is extremely
broad, a prima facie case of obviousness under 35
U.S.C. 103 may not even arise. In re Jones, 958 F.2d
347, 21 USPQ2d 1941 (Fed. Cir. 1992). Between these
extremes, as in the situation before us, the overlap
would have rendered the claimed invention prima facie
obvious under 35 U.S.C. 103. Merck & Co., Inc. v.
Biocraft Laboratories, Inc., 874 F.2d 804, 10 USPQ2d
1843 (Fed. Cir. 1989); In re Malagari, supra; In re
Susi, supra. Thus, patentability under 35 U.S.C. 102
and 35 U.S.C. 103 must be resolved on a case-by-case
basis, not by a litmus test determined by an end point
(Plurality Opinion) or any overlap whatsoever
(Concurring Opinion).
In the present case, Kurz places no particular emphasis on
any value within the range or on the end point of the range. In
fact, the range end points are not hard and fast in nature.
Discussion of the range is followed by the sentence: “Depending
on the composition, however, amounts which deviate from this may
also be necessary.” (col. 2, ll. 60-61). Moreover, the disclosed
ranges 0.1 to 5% and 0.5 to 3% are ranges of concentration for
stabilizer generally, not any particular stabilizer, and there
are a number to choose from. Under this circumstance, one of
ordinary skill in the art would view the range as a guideline and
conduct routine experimentation to find the workable or optimal
range for a particularly selected stabilizer. This is the type
of activity that, while within the skill in the art and
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supportive of a rejection based on obviousness, does not reflect
a “description” of any particular concentration value sufficient
to support anticipation.
I find, in the present case, that the examiner has not
established anticipation because the description of the
polyoxymethylene composition presented in Kurz is not
sufficiently specific to support the examiner’s finding of
anticipation. See In re Schaumann, 572 F.2d 312, 317, 197 USPQ
5, 8 (CCPA 1978)(In order to anticipate, a reference must
identify something falling within the claimed subject matter with
sufficient specificity to constitute a description thereof within
the purview of § 102.). Put in another way, Kurz contains no
discrete embodiment or other detailed description such that each
and every limitation of the claimed composition is taught, either
explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997)(“To anticipate a claim, a
prior art reference must disclose every limitation of the claimed
invention, either explicitly or inherently.”) and Richardson v.
Suzuki Motor Co. Ltd., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920
(Fed. Cir.), cert. denied, 493 U.S. 853 (1989)(“The identical
invention must be shown in as complete detail as is contained in
the . . . claim.”).
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I, however, conclude that there is a basis for a rejection
under 35 U.S.C. § 103(a) because the selection of the ingredients
in the concentrations claimed would have been within the
capabilities of one of ordinary skill in the art as evidenced by
Kurz. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235
(CCPA 1955).
For the above reasons, I dissent from the majority’s
affirmance of the examiner’s decision to reject claims 11-14, 17,
and 19-27 under 35 U.S.C. § 102(e) as anticipated by Kurz. I
agree with my colleagues with respect to the reversal of the
anticipation rejection of claims 16 and 18. Therefore, I would
reverse the rejection under 35 U.S.C. § 102(e) with regard to all
the claims on appeal. Because there is a basis for a rejection
under 35 U.S.C. § 103(a) based on Kurz, I would remand the
application to the examiner so that the appropriate rejection
under 35 U.S.C. § 103(a) could be entered by the examiner.
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
ECK/CT:hh
Appeal No. 2006-0338
Application No. 10/088,656
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