Application of Johnson
Citation | 558 F.2d 1008 |
Decision Date | 16 June 1977 |
Docket Number | Patent Appeal No. 76-643. |
Parties | Application of Robert N. JOHNSON and Alford G. Farnham. |
Court | United States Court of Customs and Patent Appeals |
Robert C. Brown, New York City, Aldo J. Cozzi, Union City, N. J., attorneys of record, for appellants; James C. Arvantes, Arlington, Va., of counsel.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Henry W. Tarring, II, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals affirming the rejection under 35 U.S.C. §§ 102 or 103 (the rejection also raises a written description issue under 35 U.S.C. § 112, first paragraph) of claims 1-9, 64, and 68-70 and the rejection under 35 U.S.C. § 112, first paragraph (enablement) and second paragraph (indefiniteness), of claims 64 and 68-72 in appellants' application No. 230,091 filed February 28, 1972 (the 1972 application) for "Polyarylene Polyethers."1 The 1972 application is a continuation-in-part of three earlier applications, the earliest being application No. 295,519 filed July 16, 1963 (the 1963 application). We reverse.
The invention is in the field of polymer chemistry and more specifically relates to linear thermoplastic polyarylene polyether polymers composed of recurring units having the general formula ——O-E-O-E'—— where O represents an oxygen atom,2 E represents the residuum of a dihydric phenol3 compound, and E' represents the residuum of a benzenoid compound having one or more inert electron withdrawing groups4 in the ortho5 or para6 positions to the valence bonds and where both E and E' are bonded to the ether oxygens through aromatic carbon atoms.
Appellants describe a method of synthesizing these polymers by reacting a double alkali metal salt of a dihydric phenol with a dihalobenzenoid compound in the presence of certain solvents under substantially anhydrous reaction conditions.
The 1972 application includes the following disclosure with respect to the electron withdrawing group found in E' and in the E' precursor compound, that is, in the compound which is the predecessor of E' in the above general formula (we have designated paragraphs A and B and have added emphasis thereto):
O || rings, such as the sulfone group -S-; the || O O || carbonyl group -C-; the vinyl group H O | || -C= C-; the sulfoxide group -S-; the | H azo-group -N = N-; the saturated fluorocarbon groups -CF2CF2 -; organic phosphine O || oxides -P-; where R is a hydrocarbon || R group, and the ethylidene group X -C- X || -C- where X can be hydrogen or halogen or which can activate halogens on the same ring such as with difluorobenzoquinone, 1,4- or 1,5- or 1,8-difluoroanthraquinone.
To understand the written description issue in this appeal, it is necessary to summarize the disclosure and prosecution history of the 1963 application. The 1963 application described (and claimed) in haec verba a genus of polymers as defined by the above general formula. That application stated:
The 1963 application then discussed the identity of E and the E' precursor compound, that is, the compound which is the predecessor of E in the general formula. It stated:
O || example, inorganic radicals as - C -, - O - -S-, -S-S-, -SO2-, and divalent
organic hydrocarbon radicals such as alkylene, alkylidene, cycloaliphatic, or the halogen, alkyl, aryl or like substituted alkylene, alkylidene and cycloaliphatic radicals as well as alkalicyclic, alkarylene and aromatic radicals and a ring fused to both Ar groups.
The application then mentioned by name some fifty specific dihydric dinuclear phenol (bisphenol) compounds which could be the E precursor compound. The application further stated:
Turning to the identity of the E' precursor compound, the application stated:
Any dihalobenzenoid compound or mixture of dihalobenzenoid compounds can be employed in this invention which compound or compounds has the two halogens bonded to benzene rings having an electron withdrawing group in at least one of the positions ortho and para to the halogen group. The dihalobenzenoid compound can be either mononuclear where the halogens are attached to the same benzenoid ring or polynuclear where they are attached to different benzenoid rings, as long as there is the activating electron withdrawing group in the ortho or para position of that benzenoid nucleus.
The 1963 application also included a discussion of the electron withdrawing group that was substantially the same as the paragraphs quoted above from the 1972 application.
The 1963 application contained twenty-six "examples" disclosing in detail the physical and chemical characteristics of fifteen species of polyarylene polyethers. One of the species was the polymer composed of these recurring structural units (which we designate as species 1):8
Another species disclosed was the polymer composed of these recurring structural units (which we designate as species 2):9
Appellants' 1963 application became involved in a three-party interference10 which resulted in an award of priority adverse to appellants from which they did not appeal.11 The sole count of the interference recited species 1.
After their involvement in the interference ended, appellants filed the 1972 application, and they...
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