Ex parte WU et al.

Board of Patent Appeals and Interferences

Mar 22, 2000

08324855 (B.P.A.I. Mar. 22, 2000)

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(2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CHENGJIU, WU,
MICHAEL J. MCFARLAND
and KARL W. BEESON
_____________
Appeal No. 1997-0704
Application 08/324,855
______________
ON BRIEF/HEARD: MARCH 6, 2000
_______________
Before GARRIS, OWENS and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 35, 37 through 48 and
51 through 54 as amended subsequent to the final rejection
(see the amendment dated Jan. 4, 1996, Paper No. 15, entered
as per the Advisory Action dated Jan. 23, 1996, Paper No. 16,
Appeal No. 1997-0704
Application No. 08/324,855
2
which states that the final rejection under § 112 for “new
matter” is
overcome by entry of this amendment). Claims 28 through 34,
the only other claims remaining in this application, stand
withdrawn from further consideration by the examiner (Brief,
page 3).
According to appellants, the invention is directed to a
combination of specified monomer classes to achieve a thermal
stabilization of an optically transparent waveguide such that
the waveguide exhibits much less yellowing, cracking and
delamination from the substrate (Brief, page 6). Claim 35 is
illustrative of the subject matter on appeal and a copy of
this claim is attached as an Appendix to this decision.
The examiner has relied upon the following references to
support the rejections on appeal:
Dueber et al. (Dueber) 4,613,560 Sep. 23,
1986
Kistner 4,623,676 Nov. 18,
1986
Klun et al. (Klun) 4,956,265 Sep. 11,
1990
Moyer et al. (Moyer) 5,136,682 Aug. 4,
1992
McKeever et al. (McKeever) 5,288,589 Feb. 22,
1994
(filed Dec. 3,
Appeal No. 1997-0704
Application No. 08/324,855
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1992)
Claims 35 and 37-48 stand rejected under 35 U.S.C. §
102(b) as anticipated by Dueber (Answer, page 4). Claims 35
and
37-48 stand rejected under 35 U.S.C. § 102(e) as anticipated
by Moyer (Id.). Claims 35, 37-41, 45-48 and 51-54 stand
rejected under 35 U.S.C. § 102(e) as anticipated by McKeever
(Id.). Claims 35, 37-48 and 51-54 stand rejected under 35
U.S.C.
Appeal No. 1997-0704
Application No. 08/324,855
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§ 103 as unpatentable over Moyer in view of Klun (Answer, page
5). Claims 35, 37-48 and 51-54 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Dueber in view of Klun (Answer,
page 6). Claims 35, 37-41, 45-48 and 51-54 stand rejected
under
35 U.S.C. § 103 as unpatentable over McKeever (Answer, page
7). Claims 35, 37-48 and 51-54 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Kistner in view of Klun (Answer,
page 8). We reverse all of the examiner’s rejections for
reasons which follow.
OPINION
A. The Rejections under § 102
"To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
expressly or inherently." Glaxo Inc. v. Novopharm Ltd., 52
F.3d 1043, 1047, 34 USPQ2d 1565, 1567 (Fed. Cir. 1995); see
also In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986);
Kalman v. Kimberley-Clark Corp., 713 F.2d 760, 771, 218 USPQ
781, 789 (Fed. Cir. 1983). The examiner bears the initial
Appeal No. 1997-0704
Application No. 08/324,855
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burden, on review of the prior art, of presenting a prima
facie case of unpatentability. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Appeal No. 1997-0704
Application No. 08/324,855
The only bisphenol-A type monomers listed by Dueber do1
not fall within the second class of monomers listed in claim
35 on appeal (see Dueber, column 7, lines 42-45).
6
The examiner states, for each rejection under § 102, that
"[i]t is inherent that when the prior art method step is the
same as the claimed method performed with the same composition
then the prior art has the same properties as is claimed."
(Answer, pages 3-4). However, the examiner has not met the
initial burden of establishing that the prior art discloses
the same composition as the method of claim 35 on appeal.
The examiner finds that Dueber teaches the specific
unsaturated monomers recited in the method of appellants’
claims, citing column 7, line 7-column 8, line 53 (Answer,
page 4). Although Dueber does list some monomers from the
first class of "unsaturated" monomers recited in claim 35 on
appeal, the examiner has not pointed to any monomers listed by
Dueber that are included in the second class of "ethylenically
unsaturated monomer" recited in claim 35 on appeal, much less1
in the amounts recited in the claimed method. Furthermore,
the mere listing of a long list of monomers, as in Dueber, has
not been shown by the examiner to "describe" the claimed
Appeal No. 1997-0704
Application No. 08/324,855
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subject matter on appeal within the meaning of 35 U.S.C. §
102. The reference must clearly and unequivocally disclose
the claimed subject matter or direct those skilled in the art
to the claimed subject matter without any need for picking,
choosing and combining various disclosures not directly
related to each other by the teachings of the cited reference.
In re Arkley, 455 F.2d 586, 587,
172 USPQ 524, 526 (CCPA 1972); see also In re Ruschig,
343 F.2d 965, 974, 145 USPQ 274, 282 (CCPA 1965). For the
foregoing reasons, the rejection of claims 35 and 37-48 under
§ 102(b) over Dueber is reversed.
The examiner finds that Moyer teaches "the claimed method
including the specific unsaturated monomers," citing column 8,
lines 10-50 and Examples 1-3 (Answer, page 4). Moyer, which
is the only prior art applied which is directed to waveguides,
teaches increased stability of waveguides at elevated
temperatures by forming the waveguides from polymerizable
compositions including "at least one" polyfunctional
unsaturated monomer listed at column 8, lines 34-50 (see
column 1, lines
Appeal No. 1997-0704
Application No. 08/324,855
On this record, there is no evidence that Novacure 3700,2
employed by Moyer in Examples 1-3, is the same monomer as
recited in claim 35 on appeal, i.e., Novacure 3700 is not
disclosed as a diacrylate and has epoxide functionalities
rather than the claimed ethoxylated/propoxylated groups.
8
8-11; column 4, lines 1-12; and column 8, lines 10-19). This
list of polyfunctional unsaturated monomers includes monomers
from each class recited in claim 35 on appeal. Examples
1-3 cited by the examiner do not show polymerizable
compositions with one monomer from each class recited in the
claimed method on appeal. Therefore, the examiner has not2
met the initial burden of establishing that the reference
clearly and unequivocally discloses the claimed method without
any need for picking, choosing and combining various
disclosures from the generic list of monomers at column 8 of
the reference, including the amount of the second class of
monomer as recited in claim 35 on appeal. See Arkley, supra.
Accordingly, the rejection of claims 35 and 37-48 under §
102(e) over Moyer is reversed.
The examiner also finds that McKeever teaches the claimed
method "including the specific unsaturated monomers" (Answer,
page 5, citing column 8, lines 15-63 and column 16, lines 47-
Appeal No. 1997-0704
Application No. 08/324,855
The specific bisphenol-A monomers recited in claim 35 on3
appeal are not listed in the generic disclosure of McKeever,
who instead lists various tetrachloro-/tetrabromo-bisphenol-A
ethers and “bisphenol A diacrylate” (column 8, lines 36-41 and
50-51).
9
57). The cited disclosure of McKeever lists a disclosure of
monomers which "can be used as the sole monomer or in
combination with others" (column 8, lines 28-29). However,
this generic disclosure of McKeever does not list monomers
from each class as required by the claims on appeal. 3
McKeever does disclose an ethoxylated bisphenol A diacrylate
used in the specific examples (column 16, lines 54-55).
However, the examiner has not established how this specific
listing of a monomer "clearly and unequivocally" discloses the
combination of this specific monomer with a monomer from the
first class of monomers in the method of claim 35 on appeal,
much less in the amounts recited in the claimed method. See
Arkley, supra. The examiner has not pointed to any examples
in McKeever which combine monomers from the two classes
recited in claim 35 on appeal, in the amounts recited in the
claimed method. Accordingly, the rejection of claims 35,
37-41, 45-48 and 51-54 under § 102(e) over McKeever is
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Application No. 08/324,855
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reversed.
B. The Rejections under § 103
The examiner has combined Klun with each of Dueber and
Moyer to support two of the rejections under § 103, with Klun
cited to show the use of stabilizers in acrylate compositions
as recited in claims 51-54 on appeal (Answer, pages 6 and 12).
Therefore Klun does not remedy the deficiencies discussed
above with respect to Dueber and Moyer (McKeever is applied
alone under
§ 103 and the following remarks also pertain to this
rejection). Accordingly, the examiner has not met the initial
burden of establishing a prima facie case of obviousness
merely by citing a list of monomers in each reference which is
generic to the combination of monomers from two classes as
recited in claim
35 on appeal. See In re Baird, 16 F.3d 380, 383, 29 USPQ2d
1550, 1552 (Fed. Cir. 1994); In re Jones, 958 F.2d 347, 351,
21 USPQ2d 1941, 1943 (Fed. Cir. 1992).
The remaining rejection under § 103 not discussed above
is based on Kistner in view of Klun (with Klun applied, as
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Application No. 08/324,855
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previously noted, to show the conventional use of stabilizers
and antioxidants as recited in claims 51-54 on appeal). The
examiner finds that Kistner teaches the claimed method
"including the specific ethylenically unsaturated monomers"
(Answer, page 8, citing column 4, lines 17-66). Again we note
that Kistner discloses "at least one polymerizable acrylic
compound" while listing many examples (column 4, line 22, with
the examples at column 4, lines 29-49). Included in this list
are monomers from each class of monomers recited in claim 35
on appeal. However, Kistner does not teach that the monomers
recited in claim 35 on appeal are preferred (column 4, lines
50-66); does not exemplify any monomers from the second class;
does not exemplify any combinations of monomers from each
class as recited in claim
35 on appeal; and does not disclose/suggest the recited amount
of the second class of monomers as found in claim 35 on
appeal. The examiner has not met the initial burden of
establishing the
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Application No. 08/324,855
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prima facie case of obviousness by merely citing the generic
disclosure of Kistner. See Baird, supra.
For the foregoing reasons, all of the examiner’s
rejections under § 103 are reversed.
C. Summary
The rejection of claims 35 and 37-48 under § 102(b) over
Dueber is reversed. The rejection of claims 35 and 37-48
under
§ 102(e) over Moyer is reversed. The rejection of claims 35,
37-41, 45-48 and 51-54 under § 102(e) over McKeever is
reversed. The rejection of claims 35, 37-48 and 51-54 under §
103 over Moyer in view of Klun is reversed. The rejection of
claims 35, 37-48 and 51-54 under § 103 over Dueber in view of
Klun is reversed. The rejection of claims 35, 37-41, 45-48
and 51-54 under § 103 over McKeever is reversed. The
rejection of
claims 35, 37-48 and 51-54 under § 103 over Kistner in view of
Klun is reversed.
Appeal No. 1997-0704
Application No. 08/324,855
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The decision of the examiner is reversed.
REVERSED
)
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
TAW:hh
Appeal No. 1997-0704
Application No. 08/324,855
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MELANIE L. BROWN
ALLIEDSIGNAL INC.
LAW DEPT.
101 COLUMBIA RD.
MORRISTOWN, NJ 07960

Appeal No. 1997-0704
Application No. 08/324,855
1
APPENDIX
35. A method of thermally stabilizing an optically
transparent waveguide, which waveguide comprises a
patterned photopolymer on a substrate formed by
photopolymerizing a photopolymerizable
composition, the photopolymerizable composition comprising
one or more unsaturated monomers selected from the
group
consisting of 1,6-hexanediol diacrylate,
trimethylolpropane triacrylate, pentaerythritol
triacrylate, ethoxylated trimethylolpropane triacrylate,
glyceryl propoxylated triacrylate, pentaerythritol
tetraacrylate, dipentaerythritol pentaacrylate and
di(trimethylolpropane)tetracrylate, and at least one
photoinitiator capable of activating polymerization
of said monomers when said photopolymerizable composition is
exposed to actinic radiation the method comprising
incorporating into said photopolymerizable composition
from about 35% to ab out 99.9% by weight of the
photopolymerizable composition of at least one
ethylenically unsaturated monomer selected from the group
consisting of ethoxylated bisphenol A diacrylate,
ethoxylated hexafluorobisphenol A diacrylate, and
propoxylated bisphenol A diacrylate wherein said photopolymer
exhibits a coloration on the Gardner Color Scale equal to or
less than 8 as determined by ASTM D1544-80 upon
exposure to a temperature of 190EC in air for 24 hours.