Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE SERGE BLANC AND ROGER VAN ASBROECK
Appeal No. 87-2221
July 28, 1989
HEARD: July 19,1989
Application for Patent filed February 3, 1984, Serial No. 06/576,562. Process For The Sterilisation [sic] Of Polyolefinic Compositions By Irradiation, Polyolefinic Compositions Thus Sterilised [sic] And Shaped Articles Made From These Compositions.
Ashley J. Wells et al. for Appellants
Primary Examiner--John C. Bleutge
This appeal is from the examiner's decision refusing to allow claims 1 through 7 and 9 through 18, which are all of the claims remaining in this application.
Claims 1 and 18 are representative:
1. Process for the sterilisation [sic] of a polyolefinic composition by irradiation, characterised [sic] in that a polyolefinic composition containing an antioxidant chosen from phenolic polyesters is subjected to a sterilising [sic] dose of high-energy radiation.
18. A process for the sterilization of a polyolefinic composition by irradiation, comprising:
providing a polyolefinic composition comprised of a crystalline polymer of propylene and an antioxidant, which antioxidant is 2,2'-methylene-bis-(4- methyl-6-tert.-butylphenol) terephthalate; and
subjecting said polyolefinic composition to a sterilizing does of gamma rays.
Coran et al. (Coran) 3,248,248 Apr. 26, 1966
Johnston et al. (Johnston) 3,758,273 Sep. 11, 1973
Hirao 3,940,325 Feb. 24, 1976
Proux et al. (Proux) 4,107,137 Aug. 15, 1978
Williams et al. (Williams) 4,110,185 Aug. 29, 1978
Floyd et al. (Floyd) 4,182,725 Jan. 8, 1980
Lundell et al. (Lundell) 4,401,536 Aug. 30, 1983
Rekers 4,431,497 Feb. 14, 1984
Taylor (British Patent) 1,050,802 Dec. 7, 1966
As stated in the Examiner's Answer, page 2, claims 1 through 7 and 9 through 18 stand rejected "under 35 U.S.C. 103 as obvious from each one of Hirao, Lundell, Rekers and Taylor, each considered alone or further with one of Coran, Floyd and Proux, optionally further considering one of Johnson [sic] and Williams".
We shall not sustain the examiner's rejection.
We begin our consideration of this "rejection" with a numerical analysis, and we end it there because "the existing situation does not permit rational isolation and determination of the legal issues which may be present". In re Herrick, 344 F.2d 713, 145 USPQ 400 (CCPA 1965). As we see it, the examiner's statement of rejection includes no fewer than 40 separate rejections of the appealed claims. By setting forth such a broad-brush statement and by failing to explain with a reasonable degree of specificity any one rejection, the examiner has failed, procedurally, to establish a prima facie case of obviousness. As the court said in Herrick, "[a] rejection so stated defeats the intent and purpose of 35 U.S.C. 132". Accordingly, we shall reverse the examiner's rejections. In so doing, we repeat the statement in Herrick, quoting from Ball & Roller Bearing Co. v. F.C. Sanford Mfg. Co., 297 F.2d 163, 167 (2d Cir.1924):
*2 "[i]t seems necessary to apply to patent litigation from time to time the maxim that one cannot make omelettes of bad eggs--no matter how many are used. One good reference is better than 50 poor ones, and the 50 do not make the one any better".
Although we reverse the examiner's rejections on procedural grounds, nevertheless, we conclude that appellant's claimed subject matter is unpatentable. Accordingly, we enter the following new grounds of rejection under the provisions of 37 CFR 1.196(b).
Claims 1, 4, 6, 7, 9 and 10 are rejected under 35 USC 102 as anticipated by Hirao. In our judgment, the instantly claimed process, polyolefinic compositions, and shaped articles are fully met by Hirao when Hirao employs the material tetrakis [methylene (3,5-di-t-butyl-4-hydroxyhydro-cinnamate) ] methane. Giving the term "phenolic polyester" its broadest reasonable interpretation, we find that the above-mentioned tetrakis compound disclosed by Hirao is, in fact, a species within that class of materials.
Claim 5 is rejected under 35 USC 103 as unpatentable over Hirao in view of Rekers. At column 3, lines 25 through 43, Rekers discloses the use of secondary antioxidants such as dilauryl thiodipropionate and Weston 618 in conjunction with a primary stabilizer for incorporation in olefinic polymer compositions. Those compositions, in turn, may be made into shaped articles which may be irradiated with sterilizing amounts of radiation while minimizing or eliminating undesirable discoloration or degradation in physical properties. We are persuaded that a person having ordinary skill in the art, armed with that prior art disclosure, would have found it obvious to modify the closely related process of Hirao by employing, in combination, dilauryl thiodipropionate, Weston 618, and tetrakis [methylene(3,5-di-t-butyl-4-hydroxyhydrox-cinnamate) ] methane. In this manner, the artisan would have arrived at the instantly claimed process. Again, note that Hirao's tetrakis compound is a "phenolic polyester".
Johnston discloses that polypropylene can be protected to some extent against gamma-radiation damage by incorporating antioxidants in the polymer, suitable antioxidants being hindered phenols such as "Ionox 330" and "Irganox 1010". Those antioxidants may be used on their own, or in conjunction with synergists such as dilaurylthiodiproprionate. The use of such antioxidants has the disadvantage that polymers containing them have an undesirable yellow coloration after irradiation, the depth of the color increasing with the amount of antioxidant used. See Johnston, column 1, lines 36 through 46. Williams discloses that irradiation degrades a polymer, such as polypropylene, by chain scission and oxidation as illustrated in the equations set forth in column 2, lines 20 through 30. Note particularly oxidative steps (2) and (3) there set forth. We are persuaded that a person having ordinary skill in the art would have been motivated to improve the prior art irradiation process, described in the background section of Johnston, by using a better antioxidant compound. Proux discloses just such an antioxidant, namely, HPM 12 for incorporation in polypropylene. According to Proux, HPM 12 is "a very efficient anti-oxidant" which provides better results compared with "Ionox 330" or Irganox 1010" with respect to oxidative degradation and discoloration of the polymer.
*3 We conclude that a person having ordinary skill in the art, armed with the disclosure of Proux, would have been motivated to substitute HPM 12 for "Ionox 330" or Irganox 1010" in the process described by Johnston, column 1, lines 36 through 46. In this manner, the hypothetical person having ordinary skill would have arrived at appellants' claimed invention with a reasonable expectation of minimizing or eliminating undesirable discoloration and degradation in the physical properties of the polymer.
By the same token a person having ordinary skill, armed with the disclosure of Proux, would have found it obvious to substitute HPM 12 for octadecyl 3, 5- di-t-butyl-4-hydroxyhydrocinnamate or tetrakis [methylene (3,5-di-t-butyl-4- hydroxyhydrocinnamate) ] methane in the process disclosed by Hirao. Again, the artisan would have arrived at appellants' claimed invention with the reasonable expectation of minimizing or eliminating undesirable discoloration and degradation in the physical properties of the olefin polymers.
Claims 5 and 12 are rejected under 35 USC 103 as unpatentable over the collective teachings of Johnston, Williams, Hirao and Proux, as applied supra, further taken in view of the Rekers patent.
Rekers discloses the use of secondary antioxidants such as dilauryl thiodiproprionate and Weston 618 in conjunction with a primary stabilizer for the purpose of making shaped articles of polyolefins which may be irradiated with sterilizing amounts of radiation while minimizing or eliminating undesirable discoloration or degradation in physical properties. See Rekers column 3, lines 25 through 43. A person having ordinary skill in the art would have found it obvious to use, in combination, the secondary antioxidants dilauryl thiodipropionate and Weston 618 disclosed by Rekers and the primary antioxidant HPM 12 disclosed by Proux. By using that combination of antioxidants, the artisan would have expected to provide olefinic polymer compositions which, in turn, may be made into shaped articles that may be irradiated with sterilizing amounts of radiation while minimizing or eliminating undesirable discoloration or degradation in physical properties.
Appellants argue that Hirao discloses numerous phenolic antioxidants which "were not found to prevent the increased coloration in objects sterilized by irradation[sic]". As stated by appellants in the main Brief, page 15,
"Hirao finds only two compounds of a particular class of phenolic antioxidents [sic] out of numerous types of compounds tested, including other phenolic antioxidants, to solve the problem. Hence, it is respectfully submitted that not all phenolic antioxidants solve the problem addressed by Applicants and by the references, but only a few materials from select classes of phenolic antioxidants. Whether or not a particular phenolic compound will solve the problem is thus respectfully submitted to be clearly not predictable and, moreover, the collective teachings of the cited references would lead the artisan to conclude that most phenolic antioxidants would not solve the problem".
*4 The argument lacks merit.
In reviewing this appeal, we have carefully reviewed the Hirao patent in its entirety as well as the other eight references cited by the examiner, as well as the Kelley patent (U.S. Patent No. 3,537,967) attached by appellants to Paper No. 12 in the record. Based on all the evidence, we find that the skilled artisan would have been motivated to substitute HPM 12 for (1) "Ionox 330" or "Irganox 1010" in the process described by Johnston; or (2) octadecyl 3,5-di-t-butyl-4-hydroxyhydrocinnamate or tetrakis [methylene (3,5-di-t-butyl-4- hydroxyhydrocinnamate) ] methane in the process disclosed by Hirao, with a reasonable expectation of success. We remind appellants that only a reasonable expectation of success, not absolute predictability, is necessary for a conclusion of obviousness. In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed.Cir.1985). Here, when all the prior art is considered together, one of ordinary skill would have a sufficient basis for the necessary predictability of success to sustain a rejection under 35 USC 103. In re Clinton, 527 F.2d 1266, 188 USPQ 365 (CCPA 1976). Note again the disclosure of Proux that HPM 12 is "a very efficient antioxidant" which provides better results compared with "Ionox 330" or "Irganox 1010" with respect to oxidative degradation and discoloration of the polymer.
We are mindful of the evidence presented in appellants' specification, indicating that HPM 12 and the two best Hirao compounds are equally effective. Nevertheless, for the reasons already discussed, we conclude that such beneficial results would have been expected by those having ordinary skill in the art. As often stated by our reviewing court, expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected beneficial results are evidence of unobviousness. In re Skoll, 523 F.2d 1392, 187 USPQ 481 (CCPA 1975); In re Skoner, 517 F.2d 947, 186 USPQ 80 (CCPA 1975), In re Gershon, 372 F.2d 535, 152 USPQ 602 (CCPA 1967) and In re Hoffmann, 556 F.2d 539, 194 USPQ 126 (CCPA 1977).
In conclusion we do not sustain the examiner's "rejection" in this case, which is based on nine cited references and includes no fewer than 40 prior art rejections. This board, like the court in In re Herrick, 344 F.2d 713, 145 USPO 400 (CCPA 1965), disapproves of rejections stated in this manner. Under the provisions of 37 CFR 1.196(b) we set forth new grounds of rejection of all the appealed claims.
The examiner's decision is reversed.
Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within one month from the date of the decision (37 CFR 1.197). Should appellants elect to have further prosecution before the examiner in response to the new rejection under 37 CFR 1.196(b) by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire two months from the date of this decision.
*5 37 CFR 1.136(a) does not apply to the times for taking any subsequent action in connection with this appeal.
REVERSED, 37 CFR 1.196(b).
BOARD OF PATENT APPEALS AND INTERFERENCES
Sherman D. Winters
Edward J. Meros
Andrew H. Metz