Pleuddemann, In re, 89-1510

• Decision Date: 03 August 1990
• Docket Number: No. 89-1510,89-1510
• Citation: 15 USPQ2d 1738,910 F.2d 823
• Parties: In re Edwin P. PLEUDDEMANN.
• Court: U.S. Court of Appeals — Federal Circuit

Page 823

910 F.2d 823

15 U.S.P.Q.2d 1738

In re Edwin P. PLEUDDEMANN.

No. 89-1510.

United States Court of Appeals, Federal Circuit.

Aug. 3, 1990.

Timothy W. Hagan (argued), Killworth, Gottman, Hagan & Schaeff, Dayton, Ohio, for appellant. With him on the brief, was Richard A. Killworth. Also on the brief, were Alexander Weitz and Robert L. McKellar, Dow Corning Corp., Midland, Mich., of counsel.

Richard E. Schafer (argued), Associate Sol., Office of Sol., Arlington, Va., for appellee. With him on the brief, was Fred E. McKelvey, Sol.

Before RICH, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and MILLS, District Judge. ^*

RICH, Circuit Judge.

This appeal is from the March 3, 1989, decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (board) affirming the examiner's rejection of claims 8-16, 18-21, 26, and 27 of Pleuddemann's application serial No. 917,950, a division of serial No. 803,043, filed November 29, 1985, for "Silane Coupling Agents." The real party in interest is Dow Corning Corporation, Midland, Michigan. We reverse.

The rejection of the above claims is predicated solely on 35 U.S.C. Sec. 103 on the ground of obviousness in view of the disclosure of a single reference, Pleuddemann et al. patent No. 3,258,477 ('477 patent), issued June 28, 1966, to Dow Corning Corporation, together with admissions in appellant's specification.

The application at bar incorporates by reference the disclosure of the '477 patent which also discloses organosilane coupling agents. Appellant says that the different coupling agents of the '477 patent have been "an industry standard for fiberglass-filled unsaturated polyesters for many years." It is explained that the silane compounds couple or bond the polyester resins to the fiberglass filling material, improving the mechanical properties of the resulting products. The specification of the application at bar further says that "[t]hese low molecular weight compounds are believed to form chemical links between filler particles and polymer molecules, and as such, they must incorporate functional groups capable of reacting with filler and resin alike." Disclosed are many suitable resins, all well known in the art, and a large number of suitable fillers of the general class of mineral fillers, likewise well known.

The Claimed Invention

Pleuddemann's present invention is broadly stated to be as follows:

It has now been found that a silane coupling agent, comprising the reaction product of an isocyanatoalkyl ester with an aminoorganosilane, can impart superior moisture resistance to mineral-filled unsaturated polyesters, as well as other unsaturated resin composites.

There then follows a structural formula purporting to define the class of organosilane reaction products which, with all of its substituent (R, R', R"' etc.) definitions, occupies half a page, which it is unnecessary to repeat here in order to deal with the legal problems before us.

Next follows the statement, in two separate paragraphs, that the invention also relates to (1) a process for bonding a polymerizable material to a mineral filler and (2) a method for priming a surface to improve its bonding to certain organic resins. The claims on appeal are all directed to these processes or methods. All but two are dependent claims. Independent claim 26 is directed to the process of bonding and independent claim 27 is directed to the method for priming and both recite the elaborate structural formula of the class of organosilanes which do the bonding or priming, described in the specification.

The specification also states:

Methods of incorporating silane coupling agents to improve performance of filled resins are well known in the art.

It then explains how several of such methods are carried out.

The two representative independent claims on appeal are set forth below, omitting the formula contained in them which defines the class of coupling agents used (emphasis ours):

26. A process for bonding a polymerizable material to a mineral filler comprising: (a) mixing an organosilane with a polymerizable material having aliphatic unsaturation and a filler having hydroxyl functionality thereon, to obtain a uniform dispersion of the components; and (b) polymerizing the material to form a solid composite, wherein said organosilane is represented by the formula [FORMULA SET FORTH--COVERED COMPOUNDS ASSUMED TO BE NEW].

27. A method for priming a surface having hydroxyl functionality thereon to improve its bonding to organic resins containing aliphatic unsaturation in the It will be noted that in claim 26 the filler has "hydroxyl functionality thereon" and that in claim 27 the surface to be primed also has "hydroxyl functionality thereon," in which respect the surface to be primed corresponds to the filler of claim 26, both the filler and the primed surface ultimately becoming bonded to the polymer through the organosilane.

uncured state, comprising wetting the surface with a solution of an organosilane and then drying said surface, wherein said organosilane is represented by the formula [FORMULA SET FORTH--COVERED COMPOUNDS SAME AS CLAIM 26].

The Rejection

In his Answer on appeal to the board, the examiner stated that the Pleuddemann et al. '477 patent

teaches the same process of bonding a polymerizable material to a filler containing hydroxy functionality using an analogous silane containing both unsaturation and hydrolyzable groups. The appellant further admits that silane coupling agents are well known in the art to improve mechanical properties of filled resins.

The examiner then stated that it was his position

that it would have been obvious to one skilled in the art to use one silane compound in place of another in the process ... and in the method ... since the silane compound coupling agent acts as a coupling agent in the process and method.

In support of his rejection, the examiner cited In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed.Cir.1985).

In affirming, the board likewise relied on Durden and in an extensive opinion responding to appellant's legal arguments added two more cases, decided by our predecessor court, which it said it was unable to distinguish from the present case, namely, In re Kanter, 55 CCPA 1395, 399 F.2d 249, 158 USPQ 331 (1968), and In re Neugebauer, 51 CCPA 1138, 330 F.2d 353, 141 USPQ 205 (1964).

Appellant's Contentions

First, we need to know a little prosecution background. The patent application (803,043) contained three groups of claims: (1) to the new group of aminoorganosilanes; (2) the process and method claims at bar; and (3) to the new articles of manufacture produced by using the new coupling agents. Restriction was required by the examiner and group (1) was elected. The claims were allowed and on March 17, 1987, Patent No. 4,650,889 was issued thereon. The claims in group (3), which were all dependent claims, were stated by the examiner to be allowable if rewritten in independent form and are not involved in this appeal. They are still pending in the application at bar in their conditionally allowed status. The patenting of the compounds claimed in group (1) provides us with the premise that they are new and unobvious compounds, which we take as a given in further discussion.

In essence, appellant contends that in addition to the claims on the new class of coupling agents which the PTO has granted, and the allowed claims on the articles made by using said agents in the usual way, he is also entitled to the appealed claims on the process or method of using those agents--in the usual way--for bonding or priming. It is contended that such method of use claims should be allowed because the articles made by using the new bonding agents have superior moisture resistant properties.

The shibboleth which appellant hopes will get the claims at bar into the golden realm of patentability, notwithstanding precedents cited by the PTO, is that they are "method of use" rather than "method of making" claims. It is further emphasized that the claims call for the use of a novel and nonobvious class of organosilane compounds and that is not disputed.

OPINION

When a new and useful compound or group of compounds is invented or discovered having a particular use it is often the case that what is really a single invention may be viewed legally as having three or more different aspects permitting it to be claimed in different ways, for example: (1) the compounds themselves; (2) the method or process of making the compounds; and (3) the method or process of using the compounds for their intended purpose. In re Kuehl, 475 F.2d 658, 177 USPQ 250 (CCPA 1973), was such a case. Our predecessor court so analyzed it. The case dealt with a new zeolite catalyst useful in the hydrocarbon cracking process in which other zeolite catalysts had been used before. The then Patent Office had allowed claims to the new zeolite, ZK-22, and to the method of making it, but balked at allowing claims to the method of using ZK-22 as a catalyst in hydrocarbon cracking. The appellant argued that allowance of claims to ZK-22 necessarily entitled him to claims on the method of use because the catalyst was a new and useful...