Application of Foster

• Decision Date: 01 July 1965
• Docket Number: Patent Appeal No. 7106.
• Citation: 145 USPQ 166,343 F.2d 980
• Parties: Application of Frederick C. FOSTER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

145 USPQ 166, 343 F.2d 980 (1965)

Application of Frederick C. FOSTER.

Patent Appeal No. 7106.

United States Court of Customs and Patent Appeals.

April 15, 1965.

Rehearing Denied July 1, 1965.

Mary Helen Sears, Edward S. Irons, Washington, D. C., Stanley M. Clark, Akron, Ohio, for appellant.

Clarence W. Moore, Washington, D. C. (Raymond E. Martin, Washington, D. C., of counsel), for Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Judges.

ALMOND, Judge.

This is an appeal from the decision of the Board of Appeals affirming the rejection of the claims in appellant's patent application.¹

The invention relates to elastomeric synthetic polymers said to combine the desirable properties of natural Hevea rubber and the presently employed synthetic rubbers. These properties are described in the specification:

"Hevea natural rubber is characterized by excellent tack, especially after milling; thus being ideal for tire building operations. Hevea produces vulcanizates having excellent resilience and low hysteresis properties, high tensile strength, and good flexibility at low temperatures. Gum vulcanizates formed from Hevea also possess high tensile strength. Hevea natural rubber is characterized by a crystallinity of at least about 40% and displays a crystalline X-ray diffraction pattern when stretched.

"Heretofore, the synthetic rubbers, in comparison with Hevea rubber, have exhibited low tack and no crystalline properties while their vulcanizates have been characterized by undesirably low tensile strengths and resilience, and undesirably high hysteresis. The synthetic rubbers, particularly the butadiene/styrene copolymer (GR-S), have been greatly superior to natural rubber in resisting crack initiation in service but have been markedly inferior to Hevea in resisting crack and cut growth. The undesirably high hysteresis of the synthetic rubbery polymers has prevented their use in any substantial quantity in the production of such articles as the large tires employed on trucks, buses, and large off-the-road vehicles."

Infrared analysis of Hevea rubber has shown that the polymer consists of about 97.8% cis-1,4-structure. That is, the units of the rubber molecules are connected to each other in 1,4-addition to produce a linear chain with the spatial arrangement of the units in what is called the cis, as opposed to the trans, stereospecific configuration.²

In contrast, the specification notes that "The butadiene portion of a typical GRS emulsion copolymer contains about 64% trans-1,4-structure, 18% cis-1,4-structure and 18% 1,2-structure."

By increasing the amount of cis-1,4-structure butadiene, the properties of the synthetic rubber are greatly improved.

All of the claims are drawn to synthetic polymer products, although some contain limitations as to how the polymer is formed (e. g., "by solution polymerization"). A wide variety of combinations is claimed, but broadly three groups emerge. Some of the claims³ specify a certain amount of cis-1,4-structure polymer, as, for example, claim 12, which reads:

"A synthetic polymer selected from the group consisting of rubbery homopolymers of butadiene-1,3 and rubbery copolymers of butadiene-1,3 and styrene; said synthetic polymer being characterized by a cis 1,4-structure of at least 23% and a 1,2-structure not in excess of 15% of the polymeric butadiene present in the polymer."

Other claims⁴ merely specify that the head-to-tail structure be present (a type of 1,4-structure) without denomination as cis - or trans -. Representative of these is claim 25:

"A synthetic polymer selected from the group consisting of rubbery homopolymers of butadiene-1,3 and rubbery copolymers of butadiene-1,3 and styrene; said synthetic polymer being characterized in that at least 85 per cent of the butadiene monomer units thereof are joined in a head-to-tail relationship."

Finally, there is claim 28:

"Products comprising conjugated polyolefin hydrocarbon polymers and copolymers in which the conjugated polyolefin monomer units are present in 1,4 addition polymer structure."

Although the specification, the original claims, the decision of the board, the briefs on appeal, and the oral arguments stress the importance of the high percentage of cis-1,4-stereoconfiguration, as contrasted with trans-1,4, and the low percentage of 1,2-structure in producing the results obtained (counsel for appellant characterized the invention as a "breakthrough"), we note that the second and third groups of claims outlined above are not limited to the cis-stereoconfiguration. Nevertheless, no issue was raised on whether the invention is properly defined without specifying the cis-configuration, our attention being directed to other issues raised in the 415 pages of printed record.

The examiner and the Board of Appeals rejected all of the claims on the basis of the Binder reference. The record indicates that Binder, an employee of appellant's assignee, wrote an article in the magazine "Industrial and Engineering Chemistry."⁵ The article reports analyses of the microstructures of polybutadiene homopolymers and copolymers with styrene. The portions particularly relied upon by the Patent Office are:

1. Table V which lists polymer "39-1" as having 22.7% cis-1,4; 60.0% trans-1,4; and 17.3% 1,2 structures of butadiene. It is noted that the catalyst employed was a peroxide.

2. Conclusion: "The results of the analyses reported here show that while the amount of cis-1,4 addition increases with increasing temperature of polymerization, a polybutadiene containing 100% cis-1,4 or trans-1,4 addition cannot be made at any practical temperature."

It also should be noted that the Binder report at the outset states: "During the past 2 years, a large number of polybutadienes and butadiene-styrene copolymers have been prepared in these laboratories, in which various changes were made in the recipes with the object, mainly, of increasing the amount of cis-1,4 addition."

One of the issues presented is: What is the statutory basis of the rejection on prior art? Appellant contends it is 35 U.S.C. § 103 and the solicitor contends it is both section 103 and section 102. Neither the examiner nor the board mentioned any statute section.

The examiner rejected the claims "as unpatentable over Binder" in the final rejection, the first office action printed in the record on appeal. Appellant submitted a number of papers which the examiner found failed "to place the case in condition for allowance." The examiner repeated the "unpatentable over Binder" rejection, but added in the same paragraph "The claimed polymer only differs in degree and not in kind from the prepared polymer of Binder and is anticipated by the disclosure of 100% cis 1,4 polybutadiene on page 1730 of the article." Emphasis supplied. Appellant responded that the word "anticipated" raised a new issue and a new rejection and sought to amend the application. The examiner refused to enter the amendment, but repeated the statement that "a polymer containing the claimed structure is anticipated by Binder." Appellant then petitioned to the Commissioner of Patents whose decision stated:

"Under all the circumstances and in view of the facts now brought out in the petition, it is concluded that it would be advisable to enter the appellant\'s proposed claims 39 and 40 and to permit the examiner in his answer to the appeal to rely on the Binder patent either as an anticipation or as a basis for a rejection on lack of invention, or both, as he may see fit."

The examiner then wrote his answer which was divided into several headings. Under "The Reference," the examiner concluded with the statement:

"Note that Binder does not say that 100% cis 1,4 polybutadiene cannot be made. Binder merely states that cis-1,4 polybutadiene cannot be made in the particular emulsion systems discussed at any practical temperature. Hence, the naming of 100% cis-1,4 polybutadiene by Binder is deemed to be a full disclosure of said polymer. In re Von Bramer et al 542 OG 183."

Immediately below this, under "The Rejection," the examiner stated that the "claims 22, 23, 25, 26 and 28 which read upon a butadiene polymer characterized by possessing a 100% cis 1,4 or 100% trans 1,4 structure are deemed unpatentable over" Binder, with no mention of "anticipation."

It is appellant's contention that the words "unpatentable over" mean that the statutory basis is section 103 and the word "anticipated" indicates reliance on section 102(b). Since there was no rejection on the ground of "anticipation," appellant argues that the statutory basis must be section 103.

We agree that the language employed is confusing and that it is not clear what section of the statute is intended. On the other hand, we are not convinced that there is any "magic" to the particular words used or that they can only mean reliance on section 103. The words "unpatentable over" do not necessarily mean reliance on section 103 alone. The statements of the rejections are sufficient for us to consider the rejections on both sections 102(b) and 103.

Considering first the rejection on the ground that Binder contains a full disclosure, we note that the examiner and the board relied on In re Von Bramer, 127 F.2d 149, 29 CCPA 1018, to support the proposition that the statement in Binder that "100% cis-1,4 * * * cannot be made" precludes issuance of a patent on the appealed claims.

We find persuasive the reasoning set forth in Phillips Petroleum Company v. Ladd, 219 F.Supp. 366 (D.D.C.1963), the facts of which are strikingly similar to the present facts relevant to the issue of "anticipation." In that case the claims were drawn to include a rubbery 100% cis-1,4-polybutadiene. The solicitor there, as here, argued that the claims were anticipated by the conclusion in the same Binder article that the rubber could not be made. The court⁶ said:

"With respect to the so-called disclosure in the Binder patent, the

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