Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE RICHARD C. WESTPHAL AND PAUL HEINIG
Appeal No. 91-0909
April 30, 1992
HEARD: May 6, 1991
Application for Patent filed June 11, 1986, Serial No. 873,863; a Continuation of Serial No. 674,707 filed November 26, 1984; a Continuation of Serial No. 941,428 filed September 11, 1978; a Continuation-in-Part of Serial No. 454,794 filed May 21, 1965, Abandoned; a Continuation-in-Part of Serial No. 744,547 filed November 24, 1976; a Continuation-in-Part of Serial No. 552,385 filed February 24, 1975, now Patent No. 3,996,311; a Continuation-in-Part of Serial No. 194,021 filed October 29, 1971, Abandoned; a Division of Serial No. 640,478 filed May 23, 1967, now Patent No. 3,868,434; a Continuation-in-Part of Serial No. 155,200 filed November 27, 1961, Abandoned; a Continuation-in-Part of Serial No. 759,145 filed September 5, 1958, Abandoned. Graft Polybutadiene Styrene Interpolymers and Process for Making Same.
Joseph A. DeGrandi et al. for appellants
Supervisory Primary Examiner--Paul R. Michl
Before Goldstein, Winters [FN1] and Emery
This appeal is from the examiner's final rejection of claims 1 to 15, 18 to 20, 22, 24 to 35, 37, 39 to 51 and 54 to 61, which are all of the claims remaining in the application. Illustrative claims 1 and 3 are reproduced below:
1. An improved moldable composition having improved impact value comprising a graft interpolymer of styrene and from about 1 to 20% of a rubbery 1, 4- polybutadiene, based on the total composition weight, said amount of 1, 4- polybutadiene being effective in substantially improving the impact value of said composition, said composition prepared by polymerizing under free radical polymerization conditions a homogenous mixture comprising said styrene and said 1, 4-polybutadiene to provide a dispersed and substantially uniform composition, said 1, 4-polybutadiene having an inherent viscosity within the viscosity range of about 1 to about 3, said composition containing a continuous phase which is polymerized styrene and a discontinuous phase which is a graft copolymer of said 1, 4-polybutadiene and styrene, said discontinuous phase being substantially insoluble in toluene at room temperature, said 1, 4- polybutadiene characterized by having a cis butadiene content of 25% to 95% based on the weight of said 1, 4-polybutadiene and having a 1, 2-addition butadiene unit percentage in the range of from about 5% to not more than about 10% as provided in a 1, 4-polybutadiene made using an organolithium catalyst in a medium consisting essentially of a hydrocarbon, said composition, in comparison to the corresponding composition made using conventional emulsion polybutadiene, having substantially improved gloss or, in the absence of plasticizer therein, having substantially improved creep value, or both, and, in comparison to the corresponding composition made using said conventional emulsion polybutadiene or conventional rubbery butadiene-styrene copolymer (GR-S) used in making moldable styrene polymer composition, having about 50% or more greater improvement in Izod impact strength.
*2 3. An improved moldable composition having improved impact value comprising a graft interpolymer of styrene and from about 1 to 20% of a rubbery 1, 4-polybutadiene, based on the total composition weight, said amount of 1, 4- polybutadiene being effective in substantially improving the impact value of said composition, said composition prepared by polymerizing under free radical polymerization conditions a homogeneous mixture comprising said styrene and said 1, 4-polybutadiene to provide a dispersed and substantially uniform composition, said 1, 4-polybutadiene being Diene polybutadiene or a 1, 4- polybutadiene having substantially the properties of Diene polybutadiene, said composition containing a continuous phase which is polymerized styrene and a discontinuous phase which is a graft copolymer of 1, 4-polybutadiene and styrene, said discontinuous phase being substantially insoluble in toluene at room temperature, said 1, 4-polybutadiene characterized by having a minor percentage greater than 25% of cis butadiene content based on the weight of said 1, 4-polybutadiene and having a 1, 2-addition butadiene unit percentage in the range of from about 9% to not more than about 10%, said 1, 4-polybutadiene having been made using an organolithium catalyst in a medium consisting essentially of a hydrocarbon, said composition, in comparison to the corresponding composition made using conventional emulsion polybutadiene, having improved Izod impact strength, said composition also having substantially improved gloss or, in the absence of plasticizer therein, having substantially improved creep value, or both.
References relied on by the examiner on appeal are:
Westphal et al. (Westphal '434) 3,868,434 Feb. 25, 1975
Sugiura 3,935,180 Jan. 27, 1976
Westphal et al. (Westphal '311) 3,996,311 Dec. 7, 1976
Short et al. (Short), "Effect of Cis-Trans Ratio on the Physical Properties of 1, 4 Polybutadienes," Rubber Chemistry and Technology, 30(4), Division of Rubber Chemistry of the American Chemical Society, 1118-1141 (1957).
As an initial matter, we note that in appellants' original brief on appeal (Paper No. 86), it was asserted that some "claims on appeal also specifically and narrowly define patentable subject matter and are in accord with the ruling of the Court that some of applicants' compositions give superior results and are non-obvious" (page 4). However, nowhere in that paper, the first reply brief (Paper No. 89) or the reply to the supplemental examiner's answer on remand (Paper No. 100) have appellants argued specific claims with any particularity over and above claim 1, with the exception we shall discuss immediately below. Thus, in all other respects, we shall consider that the claims stand or fall together. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed.Cir.1986).
All of the appealed claims have been finally rejected under 35 U.S.C. 103 as being unpatentable over Westphal '434, either taken alone or together with Sugiura. We shall affirm this rejection of all of the appealed claims.
As appellants have correctly pointed out, claims 3 to 7 do not contain any of the numerical inherent viscosity range recitations which are a part of the basis for the examiner's denial of any effective filing date earlier than November 24, 1976 (the filing date of S.N. 05/744,547), to the claims on appeal. As it is actually drafted, claim 27 is directly dependent on claim 6 (and claim 28 is indirectly dependent), so that claims 27 and 28 also lack viscosity limitations. The nature of the sequence of claims presented and appellants' failure to make this argument with respect to claims 27 and 28 suggest that claim 27 was actually intended to be dependent upon claim 26. Since our view of the examiner's rejection is not affected, however, this apparent anomaly is of no consequence.
It does not seem that the relevance of the references applied has been challenged by appellants. The sole issue appears to be whether or not in fact the claims are entitled to a filing date early enough so that Westphal '434, which issued from an ancestor application of this one, is not available as a reference under 35 U.S.C. 103/102. We agree with the examiner's position on this issue, as we shall elucidate below.
It is uncontroverted that the specific "inherent viscosity" ranges or the single viscosity value recited in the various claims were not literally set forth in any applications filed earlier than the one considered adequate support by the examiner. Neither was the recitation "Diene polybutadiene," which is apparently considered to be tantamount to the numerical value limitations both by appellants and the examiner. We have considered all of the cases cited by appellants including the Cosden Oil [FN2] litigation in which the two Westphal patents were invalidated. After such consideration, we find that we agree with the examiner's characterization of the controverted recitations as representing "a selection" from the originally disclosed ranges (which evidentally were limitless) and not the recitation of "an inherent property," as characterized by appellants.
Initially, we should note that, even if we agreed with appellants that the remarks at pages 263 et seq. of the District Court decision in the Cosden Oil case amounted to a judicial recognition of a particular identity for a particular working example of the patent specifications, this would not necessarily lead to a conclusion that appellants' position was correct. It has specifically been held that the disclosure of a genus and a species of a subgenus within that genus is not sufficient description of the subgenus to comply with the description requirement of 35 U.S.C. 112, unless there are specific facts which lead to a determination that a subgenus is implicitly described. In re Smith, 458 F.2d 1389, 173 USPQ 679 (CCPA 1972). In that case as well as in In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed.Cir.1984), it was emphasized that it is necessary to make the relevant determination based on the facts in each case. [FN3]
*4 The section of the Cosden Oil decision relied on by appellants is headed "IV. Enforceability" and is mainly occupied with discussing various misrepresentations found by the court in the prosecution of the two Westphal patents. With specific regard to the court's characterization of one of the polymers disclosed in the working examples as "Diene" (apparently a registered trademark), it is to be emphasized that the court specifically stated that the working examples "purport" to set forth various things. An ordinary interpretation of this entire portion of the decision is that the court simply adopted certain terminology used by the defendant, American Hoechst Corporation (AHC), for convenience in discussing the various data relevant to the various misrepresentations discussed. We find absolutely nothing in this decision which justifies appellants' assertion that it was "found by the Court that the polybutadiene used" was "Diene." Nothing that we are able to find in the relevant portion of the decision amounts to a finding of any relevance here.
It is through the asserted "finding" by the court that appellants gain entree into an Alliger paper discussed in their final brief, which assertedly proves that Diene inherently possesses the inherent viscosity range of 1 to 3. Even if such entree were successfully attained (and as we have discussed above, we do not believe it has been) the relevant disclosure is apparently extrapolated from a graph and would not necessarily be precisely congruent with the here claimed limitation. The materiality of even this disclosure to the narrower ranges recited in certain of the appealed claims is not apparent.
Of the precedents relied on by appellants, the most recent case, apart from the Cosden Oil litigation, and the one arising in the lowest tribunal, is Ex parte Cure, 215 USPQ 567 (BPAI 1982). In that case, the term of art "low carbon steel" was found to inherently denote a type of steel which, from reference to a Bureau of Standards publication, it was clear always possessed a melting point below 2800<<degrees>> F., the controverted recitation. The distinction between that case and this is manifest from its mere description.
We have diligently searched the decision in In re Herr, 304 F.2d 906, 134 USPQ 176 (CCPA 1962), cited by appellants, but fail to find anything in it particularly relevant to the issue here, except possibly obliquely against appellants interest in this appeal.
In both Eli Lilly and Co. v. Premo Pharmaceutical Laboratories, Inc., 630 F.2d 120, 207 USPQ 719 (3rd Cir.1980), and In re Davies, 475 F.2d 667, 177 USPQ 381 (CCPA 1973), very clearly, genuinely inherent properties were in issue and not a selection of values. We should also note that the portion relied on in the Davies decision was at best dicta. In the Eli Lilly case, the court "accorded substantial weight" to the fact that the examiner had entered the controverted recitation into the specification without objecting to it as new matter.
*5 In the event of further prosecution of this subject matter before the examiner, e.g., in a further continuing application, we suggest that appellants and the examiner consider whether or not the "improved gloss" and "improved creep value" recitations lack description in the relevant earlier specifications, since they were found to be associated "at most" only with narrow subclasses of the claimed materials and as such may also reflect selections rather than inherent properties.
All of the appealed claims have been finally rejected under 35 U.S.C. 103 as being unpatentable over Amos in view of Short. We shall affirm this rejection.
In making this rejection, the examiner has in effect adopted as a rejection the basis for the court's holding of invalidity because of obviousness of the two Westphal patents in Cosden Oil, 543 F.Supp. at 538 to 544, 214 USPQ at 257 to 262. The basis of the rejection is set forth extensively in the opinion in that case and, since the only issue before us appears to be whether or not the claims are now commensurate in scope with the evidence of asserted unobviousness of record, we shall summarize only briefly the basis for the holding of prima facie obviousness.
Amos disclosed the use of polybutadiene-polystyrene graft copolymers as impact strength improving modifiers for polystyrene. This reference, however, did not recognize any advantages of high cis, low vinyl content in the polybutadiene. Short disclosed that polybutadienes having high cis and low vinyl content had superior resilience and low temperature characteristics. Based on the Short disclosure and other evidence that the court had before it, including testimony of expert witnesses, the conclusion was reached that one of ordinary skill in the relevant art would have expected high cis, low vinyl polybutadiene to yield improved impact strengths when used as the grafted impact modifier in polystyrene. Since, in a district court, invalidity must be shown by "clear and convincing" evidence, whereas in the Patent and Trademark Office, it is sufficient to show non-patentability by a "preponderance" of evidence, it is clear that, in the absence of any determinative differences in the claims, due deference to the findings of the district court requires that we also reach a conclusion of prima facie obviousness. Ethicon Inc. v. Quigg, 849 F.2d 1142, 7 USPQ2d 1152 (Fed.Cir.1988); Ex parte Anderson, 21 USPQ2d 1241 (BPAI 1991); 1099 O.G. 16, Feb. 14, 1989 (The Commissioner of Patents and Trademarks Notice Regarding Reexamination Litigation Policy). Taking into consideration appellants' arguments with respect to the first discussed rejection above, it is readily apparent that the properties recited in the claims here on appeal are acknowledged to be inherent in at least some portion of the subject matter disclosed in the Westphal patents and, indeed, were at one time represented as being inherent in all of the subject matter disclosed. Thus, there is no basis for our deviating from the District Court's finding on the issue of prima facie obviousness.
*6 The District Court also made findings that the claims in the Westphal patents were considerably broader than any putative showing of unobviousness, i.e., the evidence of unobviousness was not commensurate in scope with the claims of the patents and did not outweigh the evidence of obviousness before the court. It is not as clear to us as both the examiner and appellants appear to find it that the court was convinced that there was any reliably significant evidence of unobviousness before it. The court's conclusion was that "the most" (543 F.Supp. at 543, 214 USPQ at 261) that the data of record would support is a range of 35 to 40% cis, 7 to 10% vinyl content, and its conclusion of lack of commensurateness in scope was preceded by the statement that it applied "even if this proposition be accepted" (emphasis added). Earlier in the same paragraph, it was stated that the evidence of unobviousness was "not plentiful." This is not at all a very compelling endorsement of the evidence for unobviousness. However, even taking it in the best light for appellants, we are constrained to adopt the court's ultimate conclusion of obviousness since claim 1 before us is not limited even to that range which the court characterized as "the most" that the data would support in terms of unobviousness. This is the position adopted by the examiner, albeit somewhat more concisely.
The fact that the assertedly unexpected results are actually recited in the claims here on appeal is merely one fact to be taken into consideration. The claims must be read as a whole. We find that here the numerical limitations are dominant, particularly since the evidence of record is that the recited properties have not been shown to be shared by all of the compositions within those limitations and the claims before the Patent Office must be given their broadest reasonable interpretation. In re Sneed, 710 F.2d 1544, 218 USPQ 385 (Fed.Cir.1983); In re Finsterwalder, 436 F.2d 1028, 168 USPQ 530 (CCPA 1971); In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969).
All of the appealed claims have been finally rejected under the first paragraph of 35 U.S.C. 112 as being drawn to an insufficiently enabling disclosure. We shall affirm this rejection.
Here again, the examiner has adopted as a rejection a basis for invalidity set forth in the Cosden Oil decision. Both the court and the examiner stated this rejection together with the rejection for obviousness under 35 U.S.C. 103, but the court did clearly explain the difference between "overbroad claims" in the sense of 35 U.S.C. 103 (with respect to issues of unobvious results) and in the sense of 35 U.S.C. 112 (with respect to enabling the practice of the invention as broadly as it is claimed). See the last paragraph of the court's decision before the section headed "IV. Enforceability" (543 F.Supp. 544, 214 USPQ 262). Also see In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972); In re Muchmore, 433 F.2d 824, 167 USPQ 681 (CCPA 1970). Since no additional evidence has been relied on on the record before us, it follows that we must affirm this rejection as we did the rejection under 35 U.S.C. 103.
*7 All of the appealed claims have been finally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over the claims of the two Westphal patents. We shall affirm this rejection.
Despite careful consideration of all of appellants' arguments with regard to this rejection, we find the examiner's position to be sound, and we shall adopt it as our own, adding the following comments only for emphasis.
It is quite clear from appellants' arguments of record that any relatively narrower limitations in the present claims reflect only a narrowing of the claimed subject matter to conform them to the basis upon which the patent claims were issued in the first place. Thus, it can hardly be said that the present claims reflect a subgenus within the subject matter of the earlier claims which represents a patentably distinct invention which possesses unobvious characteristics relative to the earlier claimed subject matter. We reach this conclusion even prescinding from our earlier remarks concerning the insufficient narrowing of the claims in light of Cosden Oil.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
BOARD OF PATENT APPEALS AND INTERFERENCES
Sherman D. Winters
Stephen J. Emery
FN1. Examiner-in-Chief Winters has been substituted for Examiner-in-Chief Wiseman, who resigned subsequent to the hearing. See In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed.Cir.1985) and M.P.E.P. § 1203.
FN3. The specific fact relatedness of this issue was stated explicitly or was clearly implicitly recognized in all of the published decisions relied on by appellants.