Application of Marzocchi
| Decision Date | 15 April 1971 |
| Docket Number | Patent Appeal No. 8431. |
| Citation | 169 USPQ 367,439 F.2d 220 |
| Parties | Application of Alfred MARZOCCHI and Richard C. Horton. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Herman Hersh, McDougall, Hersh, Scott & Ladd, Chicago, Ill., attorney of record, for appellant. Staelin & Overman, Toledo, Ohio, George A. Degnan, Arlington, Va., of counsel.
S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred W. Sherling, Washington, D. C., of counsel.
Before RICH, ALMOND, BALDWIN and LANE, Judges, and DURFEE, Judge, United States Court of Claims, sitting by designation.
This is an appeal from the decision of the Patent Office Board of Appeals which affirmed the final rejection of claims 5 and 11 of appellants' application1 under 35 U.S.C. § 103 as unpatentable in view of Werner2 and of claims 6 and 12 under 35 U.S.C. § 112 as being based on an inadequate disclosure. Claims 4 and 10 stand allowed.
The subject matter of the claims on appeal involves a technique for improving the adhesion characteristics between glass fibers and vinyl polymer resins. Claim 5 is representative and reads as follows:
5. In the combination of glass fibers and a vinyl polymer resin composition present as a coating on the glass fiber surfaces, the improvement which comprises mixing the vinyl polymer resin, prior to coating of the glass fibers, with an amine compound in an amount corresponding to 2-10% by weight of the vinyl polymer resin, and in which the amine compound is monomeric vinyl pyrrolidone.
Claim 11 is drawn to the same concept as claim 5, but defines the invention as "a method of producing glass fibers coated with polyvinyl resin strongly bonded to the glass fiber surfaces." Claims 6 and 12 differ from claims 5 and 11 respectively solely in the recitation of "polyethyleneamine" as the critical "amine compound" additive.
Claims 5 and 11 were rejected "as obvious in the sense of 35 USC 103 over Werner." Werner, the sole reference relied upon here, is addressed to the improvement in the bonding relationship between glass and polyvinyl halide resins. The pertinent disclosure is as follows emphasis added:
I have found that polyvinyl halide resins may be successfully modified so as to obtain excellent glass adhesion by employing a mixture of a polyvinyl halide and a polymer of N-vinyl pyrrolidone. By employing a mixture containing from 80 to 97% of a polyvinyl halide and from 20 to 3% of a polymer of N-vinyl pyrrolidone, which term includes homopolymers of vinyl pyrrolidone and copolymers with other polymerizable monomers, a composition is obtained having extremely high adhesion to all glass surfaces.
On the basis of this teaching the examiner took the position, accepted by the board, that the claimed use of monomeric vinyl pyrrolidone rather than Werner's polymeric vinyl pyrrolidone would be obvious to one of ordinary skill in the art since Werner's teaching would indicate to "one skilled in the art * * * that it is the vinyl pyrrolidone moiety that is enhancing the adhesion." It was also suggested by the examiner that since the claims recite no temperature conditions for the coating operation and since monomers polymerize when heated, the claims could possibly cover circumstances wherein the monomer is polymerized during application. The board appears to have accepted this suggestion and to have extended it even further. It stated:
All of Werner\'s examples specify heating at elevated temperatures (110°C.-130°C., 165°C., 325°F., 350°F) with and without elevated pressures. Appellants\' specification says nothing about retaining the vinyl pyrrolidone in monomeric form, much less anything about "maximizing adhesion" by preventing polymerization. Indeed, the very designation of the vinyl pyrrolidone as a "monomeric" material introduced into a polymer system for the purpose of altering the properties of such system implies subsequent polymerization of the monomer. Appellants\' further argument that the monomer has entirely different capabilities and solubilities than the polymer is also unpersuasive.
Appellants' position on appeal in response to these assertions by the examiner and board is largely to stress again the "marked difference between the properties and characteristics of a polymer as compared to a monomer," and to object to the "purely conjectural" assertion that the monomer polymerizes in the coating after it is applied. Additionally, appellants make the following contention:
Even if it were assumed that appellants\' monomeric vinyl pyrrolidone is polymerized when present in the polyvinyl chloride coating, there is no teaching or suggestion in Werner that the use of monomeric vinyl pyrrolidone has any efficacy whatsoever in compositions of the type disclosed and claimed. The basis suggested by the Patent Office for the rejection is tantamount to the allegation it would be "obvious to try" the monomer. This "test" of obviousness has been frequently repudiated by this court.
The sole issue is, of course, whether the Werner teaching does suggest to a person having ordinary skill in this art that the use of monomeric vinyl pyrrolidone would have the efficacy indicated in the appealed claims. We agree with appellants that whether the monomer polymerizes is irrelevant, at least in this regard. What is relevant, however, and here determinative, is the examiner's assertion that the Werner teaching would suggest that it is the vinyl pyrrolidone moiety alone and not some other characteristic peculiar to a polymer which is efficacious in producing the desired adhesion enhancement.3 In the absence of anything to rebut this assertion, which is reasonable on its face, we are constrained to accept it as fact. The inferences which follow from such fact, i. e., that the monomer would possess this same characteristic and that one of ordinary skill would recognize such fact, are inescapable.
It is acknowledged that the above line of reasoning may be viewed as being tantamount to drawing the inference that, to one possessing the ordinary level of skill in this art, it would be "obvious to try" the monomer. Nevertheless, such an inference of fact may, at times, be enough to justify drawing the ultimate conclusion of law that the claimed subject matter as a whole would have been obvious under section 103. We are satisfied that the circumstances of this case justify an initial conclusion of obviousness. Since the record before us contains nothing to rebut that conclusion, the decision with regard to claims 5 and 11 must be affirmed.
Claims 6 and 12, which recite the use of "polyethyleneamine" as the adhesion enhancer, were criticized...
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