BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE RICHARD GELLES, WILLIAM P. GERGEN, ROBERT G. LUTZ AND MICHAEL J. MODIC Appeal No. 91-3258

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)




Appeal No. 91-3258

January 24, 1992



 Application for Patent filed February 17, 1989, Serial No. 310,990; a Continuation-in-Part of Serial No. 110,065 filed October 15, 1987; a Continuation-in-Part of Serial No. 855,657 filed July 31, 1985, Abandoned. Impact Resistant Blends of Thermoplastic Polyesters and Modified Block Copolymers.



Keith M. Tackett et al. for appellants



Primary Examiner -- John C. Bleutge



Examiner -- R.H. Dean



Before Goldstein, Goolkasian and Kimlin






Melvin Goldstein








 This appeal is from the examiner's final rejection of claims 1 to 30. There are no allowed claims. Illustrative claim 1 is reproduced below:

   1. Impact resistant polymeric compositions comprising

   a) a first phase containing a thermoplastic polyester, and

   b) a second phase containing an effective amount of at least one modified block copolymer for super-toughening the composition, wherein said block copolymer comprises at least predominantly a polymerized alkenyl arene block, and at least one selectively hydrogenated polymer block B, said B block prior to hydrogenation being at least predominantly a polymerized conjugated diene block, said modified block copolymer having grafted thereto on the average an effective amount of an acid compound or a derivative thereof for super- toughening said composition, substantially all of said acid groups or derivatives thereof being grafted to said block copolymer on said B blocks, and said modified block copolymer having an effective amount of residual ethylenic unsaturation for super-toughening said composition, whereby an injection molded test specimen prepared with said impact resistant polymeric compositions has a notched Izod at room temperature, as determined according to ASTM D-256, of at least ten ft. lb./in. and exhibits ductile failure.



 References relied on by the examiner on appeal are:




Gergen et al. (Gergen)    4,101,605          July 18, 1978

Saito et al. (Saito)      4,429,076          Jan. 31, 1984

Shiraki et al. (Shiraki)  4,657,971          Apr. 14, 1987

                                    (filed Aug. 26, 1985)


 All of the appealed claims have been finally rejected under 35 U.S.C. 103 as being unpatentable over either Shiraki or the combined teachings of Saito and Gergen. We shall affirm these rejections.



 Initially, we should note that the examiner's statement in the answer that the claims have been argued separately is erroneous. Both in the principal brief (Paper No. 11) and the reply brief (Paper No. 16), appellants expressly deny that they are separately arguing the patentability of the claims. Thus, it will be necessary for us to discuss in any detail only claim 1.



  *2 With respect to both separate grounds of rejection, appellants have acknowledged that the references relied on support a prima facie case of obviousness. Appellants have also not controverted the examiner's contention that Shiraki discloses a relationship between degree of hydrogenation of the block copolymer and izod impact strength of the polymer blends. The only issue before us is whether the test data reported in appellants' specification provide evidence of unobvious results adequate to rebut the examiner's prima facie case, i.e., whether or not the evidence of unobviousness of record outweighs the evidence of obviousness of record.



 Although we generally consider a discussion of results in terms of  "differences in degree" as compared to "differences in kind" (as set forth at page 5 of the examiner's answer) to have very little meaning in a relevant legal sense, we agree with the examiner's legal conclusion that the evidence does not prove any results beyond what one of ordinary skill in the art might have expected adequate to rebut the prima facie case of obviousness (as set forth at page 4 of the examiner's answer).



 In submitting evidence asserted to establish unobvious results, there is a burden on an applicant to indicate how the examples asserted to represent the claimed invention are considered to relate to the examples intended to represent the prior art and, particularly, to indicate how those latter examples do represent the closest prior art. See In re Borkowski, 595 F.2d 713, 184 USPQ 29 (CCPA 1974); In re Goodman, 339 F.2d 228, 144 USPQ 30 (CCPA 1964). The evidence relied upon also should be reasonably commensurate in scope with the subject matter claimed and illustrate the claimed subject matter "as a class" relative to the prior art subject matter "as a class." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); In re Hostettler, 429 F.2d 464, 166 USPQ 558 (CCPA 1970). See, also, In re Lindner, 457 F.2d 506, 173 USPQ 356 (CCPA 1972). It should also be established that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. In re Merck, 800 F.2d 1091, 231 USPQ 375 (Fed.Cir.1986); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed.Cir.1985); In re Klosak, 455 F.2d 1077, 173 USPQ 14 (CCPA 1972); In re D'Ancicco, 439 F.2d 1244, 169 USPQ 303 (CCPA 1971).



 In the present case, we find that appellants have failed to satisfy clearly any of the above-stated requirements. We shall discuss these issues separately below.



 The differences in results presented in the specification are not asserted therein or in any declaration to be unexpected, of statistical significance or of practical significance. In appellants' brief, it is stated that "applicants have consistently argued that the claimed increase in impact strength is unexpected." To whatever extent such arguments are present on the record, they are merely attorney's arguments and are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration. See In re Longi, supra.



  *3 Appellants have failed to set forth what disclosures of the references relied on are considered to represent the closest prior art and establish their relationship to the comparative examples in their specification. Appellants' Example 1 merely illustrates that a minimum amount of grafted carboxylic acid is required and a minimum amount of modified block copolymer is required to result in improved impact strength. This could not be said generally to be unexpected, and these relationships are at least in part specifically illustrated in Table 10 of Shiraki and generally commented on at column 16, lines 22 to 27. Similarly, Example 4 merely illustrates that the more block copolymer one adds the greater the effect on impact resistance, a result which the references would lead one directly to expect.



 Example 2 establishes an inverse relationship between degree of residual unsaturation and impact strength. However, the manner in which the specific compositions illustrated are considered to be commensurate in scope with the invention claimed and to represent the appropriate comparison between the invention claimed and the prior art each as a class has not been explained and is not apparent on the face of the working example itself. This example is of particularly questionable value in this regard when Examples 3 and 5 are considered, both of which illustrate that other variables not reflected in claim 1 and not necessarily constituting a difference between the claimed invention and the reference disclosures have equally great effects on the results achieved.



 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).









Melvin Goldstein






John T. Goolkasian






Edward C. Kimlin





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