Ex parte Yates

Board of Patent Appeals and Interferences

Nov 30, 1999

08300902 (B.P.A.I. Nov. 30, 1999)

Application for patent filed 1 September 1994. The real party in interest is1
General Electric Company.
THIS OPINION IS NOT BINDING PRECEDENT
The opinion in support of the decision being entered
today is not binding precedent of the Board.
Paper 20
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN B. YATES

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Appeal 97-1803
Application 08/300,9021
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Before: McKELVEY, Senior Administrative Patent Judge, and
LEE and TORCZON, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.
Decision on appeal under 35 U.S.C. § 134
Upon consideration of the BRIEF ON APPEAL (Paper 18) and
the EXAMINER'S ANSWER (Paper 19), there being no rely brief,
it is
Appeal 97-1803
Application 08/300,902
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ORDERED that the examiner's rejection of claims 1-5,
7 and 9-11 as being unpatentable under 35 U.S.C. § 103 over
Gianchandai in view of Brown and Gallucci is reversed.
)))))))))) @ ))))))))))
The claimed composition calls for a three-element
composition comprising (1) a poly(phenylene ether) resin, (2)
a polyester resin and (3) a flow promoting amide. The
examiner found prior art references describing each of the
three elements, some in combination with others. Based on the
prior art the examiner reasoned that the claimed three-element
composition would have been obvious.
Our appellate reviewing court recently made the following
observation in Smiths Industries Medical Systems v. Vital
Signs, 183 F.3d 1347, 1356, 51 USPQ2d 1415, 1420 (Fed. Cir.
1999):
There is no basis for concluding that an invention
would have been obvious solely because it is a
combination of elements that were known in the art
at the time of the invention. The relevant inquiry
is whether there is a reason, suggestion, or
motivation in the prior art that would lead one of
Appeal 97-1803
Application 08/300,902
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ordinary skill in the art to combine the teachings
of the references, and that would also suggest a
reasonable likelihood of success. Such a suggestion
or motivation may come from the references
themselves, from knowledge by those skilled in the
art that certain references are of special interest
in a field or even from the nature of the problem to
be solved. The district court never identified the
source of the various claim limitations in the prior
art, much less a motivation, teaching or suggestion
to combine them.
The examiner has not identified in the prior art relied
upon where there is a reason, suggestion or motivation to make
the claimed three-element composition. Gianchandai describes
compositions containing a poly(phenylene ether) resin and an
amide. No mention is made of a polyester. Moreover, when
Gianchandai gets around to talking about increased flow, it
describes addition of a styrene resin, not a polyester (col.
5, line 60 et seq.).
When making a rejection, it is incumbent on the examiner
to refer to specific passages in the prior art relied upon and
Appeal 97-1803
Application 08/300,902
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not just a reference as a whole. Cf. Clintec Nutrition Co. v.
Baxa Corp., 44 USPQ2d 1719, 1723 n.16 (N.D. Ill. 1997) (where
a party points the court to multi-page exhibits without citing
a specific portion or page, the court will not pour over the
documents to extract the relevant information, citing United
States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (judges do
not hunt for truffles buried in briefs)). The examiner's
answer in this appeal is at best an invitation to the board to
scour the record, research any legal theory that comes to
mind, and serve generally the function of a patent examiner.
We decline the invitation, believing it appropriate for the
examiner in the first instance to fully explain why a
rejection is proper. Cf. Ernst Haas Studio, Inc. v. Palm
Press, Inc., 164 F.3d 110, 112, 49 USPQ2d 1377, 1379 (2d Cir.
1999).
REVERSED.
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Appeal 97-1803
Application 08/300,902
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FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
JAMESON LEE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal 97-1803
Application 08/300,902
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cc (First Class Mail):
Carl B. Horton
GENERAL ELECTRIC COMPANY
One Plastics Avenue
Pittsfield, MA 01201