Application of Susi, Patent Appeal No. 8392.
| Citation | 440 F.2d 442,169 USPQ 423 |
| Decision Date | 10 June 1971 |
| Docket Number | Patent Appeal No. 8392. |
| Parties | Application of Peter Vincent SUSI. |
| Court | United States Court of Customs and Patent Appeals |
William Kaufman, Harry H. Kline, Roland A. Dexter, Stamford, Conn., attorneys of record, for appellant.
S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. R. E. Martin, Washington, D. C., of counsel.
Before RICH, ALMOND, BALDWIN and LANE, Judges, and NEWMAN Judge, United States Customs Court, sitting by designation.
This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 2-13 in appellant's application serial No. 389,210, filed August 12, 1964, as a continuation-in-part of application serial No. 362,182, filed April 23, 1964, for polymers stabilized against the deteriorative effects of ultraviolet light and a method for making polymeric compositions so stablized. We affirm.
Claims 2-5 are process claims, and claims 6-13 are composition of matter claims. Claim 6, the broadest of the composition claims, serves as a convenient introduction to the case and reads as follows (subparagraphing supplied):
Claim 2 recites the process of stabilizing a polymer selected from the same group of polymers recited in claim 6 by "adding" thereto "a stabilizing amount" of one of the same benzylidene malonate acid di-esters recited in claim 6. Claims 3 through 5 depend from claim 2, and claims 7 through 10 depend from claim 6. Claims 3 and 7 specify that the polymer is polyvinylchloride, claims 4 and 8 specify that the polymer is polystyrene, claims 5 and 9 specify that the additive is diethyl p-methoxybenzylidenemalonate, and claim 10 specifies that the additive is dimethyl p-methoxybenzylidenemalonate. Claims 11 through 13 recite an additional additive. Claim 11 is for "The composition of Claim 6 containing about 0.1 to 1 part of hindered phenolic antioxidant for each part of * * * the additive recited in claim 6." Claim 12 depends from claim 11 and specifies that the di-ester additive is dimethyl p-methoxybenzylidenemalonate and the antioxidant is 2,4,6-tri-t-butylphenol. Claim 13, which is in independent form, is for polystyrene stabilized by the two additives of claim 12 in the amounts recited in claim 12. The arguments for patentability have been predicated solely on the additives, and not on the specific plastics to which they are added.
THE REFERENCES
The references are
Lauerer et al. 1,087,902 Aug. 25, 1960
(West German
Auslegeschrift)
Costello 3,134,751 May 26, 1964
Knapp et al. 3,244,668 Apr. 5, 1966
Appellant initially attempted to swear behind Lauerer and Knapp. However, both the examiner and the board held his showing insufficient, and appellant has conceded that point on appeal.
The examiner rejected claims 2 through 11 as unpatentable over Knapp et al. under the provisions of either 35 U.S.C. §§ 102 or 103, claim 2 through 10 as similarly unpatentable under either 35 U.S.C. §§ 102 or 103 over Lauerer, claims 11 through 13 under the provisions of 35 U.S.C. § 103 on either Knapp or Lauerer, each in view of Costello, and claims 2 through 5 as "drawn to the obvious method of making the composition under 35 U.S.C. § 103."1 The board reversed the rejections under 35 U.S.C. § 102, stating that it "was unable to find the exact stabilizing compound of these claims in Knapp et al. or any one of the specific resins of these claims in Lauerer et al.," but it affirmed the other four rejections.
OPINIONKnapp discloses the stabilization of "plastics" against the oxidative and deteriorative effects of ultraviolet light by adding thereto "a small stabilizing quantity, up to about 5 percent, and preferably from 0.001 to about 3 percent" each of two compounds. The first of these additives is either a nitrophenol or a formylphenol, which is not relevant here. The second of these additives, however, is a compound which, in a "particularly preferred embodiment," may be represented by the formula:
wherein R3 is an alkyl radical containing from 1-12 carbon atoms; R4 is an alphabranched alkyl radical containing from 3-12 carbon atoms; and X and Y are selected from the group consisting of a cyano radical, a nitro radical, CON(R)2, COOR, and COR, R in turn being selected from the group consisting of hydrogen, alkyl radicals containing from 1-12 carbon atoms, and aralkyl radicals containing from 7-12 carbon atoms, with the provision that either X or Y, but not both, can also be simply H. Placing a simple representative of each side by side, it is obvious that the subject matter of appellant's claim 6 is very nearly within the generic teaching of Knapp. Furthermore, the one difference which is present seems to be of little importance. Knapp shows a hydroxyl group attached to the benzene ring which is absent in appellant's formula, but, as the examiner noted without challenge by appellant, the "appellant has shown no unobvious results by excluding this moiety." Accordingly, as to claims 1-10 appellant is essentially in the position of one who argues that the selection of a relatively small subgenus from a genus disclosed in the prior art would have been unobvious at the time of his invention to one skilled in the art.2
Lauerer discloses plastic compositions containing ultraviolet light absorbers of the following general formula:
wherein Ar is a benzene ring substituted by one or more oxy or alkoxy groups and is...
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