Soni, In re
| Decision Date | 09 May 1995 |
| Docket Number | No. 94-1372,94-1372 |
| Citation | 34 USPQ2d 1684,54 F.3d 746 |
| Parties | , 34 U.S.P.Q.2d 1684 In re Pravin L. SONI, Ceinwen Rowlands, Larry Edwards and Mark Wartenberg. |
| Court | U.S. Court of Appeals — Federal Circuit |
Herbert G. Burkard, Raychem Corp., Menlo Park, CA, argued for appellant.
Karen A. Buchanan, Asst. Sol., Office of the Sol., Arlington, VA, argued for appellee. With her on the brief were Nancy J. Linck, Sol. and Albin F. Drost, Deputy Sol. (Harris A. Pitlick and James T. Carmichael, of counsel.)
Before MICHEL, LOURIE, and BRYSON, Circuit Judges.
Opinion for the court filed by Circuit Judge LOURIE. Dissenting opinion filed by Circuit Judge MICHEL.
Pravin L. Soni, Ceinwen Rowlands, Larry Edwards, and Mark Wartenberg (collectively "Soni") appeal from the decision of the U.S. Patent and Trademark Office ("PTO") Board of Patent Appeals and Interferences affirming the examiner's final rejection of claims 1-6, 8-12, and 21 of application Serial No. 07/462,893, entitled "Conductive Polymer Compositions," as unpatentable on the ground of obviousness under 35 U.S.C. Sec. 103 (1988). Because the PTO's conclusion that unexpected results were not shown was clearly erroneous, we reverse.
The claimed invention relates to conductive polymer compositions. Claim 1 is illustrative:
1. A melt-processed composition which comprises
(i) an organic polymer which is not crosslinked and has a molecular weight which is greater than 150,000 when measured by high temperature gel permeation chromatography, and
(ii) a particulate conductive filler which is dispersed in the polymer and which is present in [an] amount sufficient to render the composition electrically conductive (emphasis added).
Soni's patent specification states that the claimed compositions have significantly improved physical and electrical properties compared to compositions using polymers having a molecular weight below 150,000. To illustrate this point, the specification describes a number of tests comparing the properties of a composition of the invention composed of polyethylene having a molecular weight of 203,000 with a comparative composition composed of polyethylene having a molecular weight of 148,000. The data show at least a fifty-fold increase in tensile strength for the higher molecular weight composition compared to the lower molecular weight composition. The data also show at least a five-fold increase in peel strength as well as improved resistivity and recovery behavior properties. From these data, the specification concludes that "[t]he tensile, peel, resistivity During prosecution, the examiner rejected the claims over the following prior art:
The examiner first rejected claims 1-6, 8-12, and 21 under 35 U.S.C. Secs. 102 or 103 as being anticipated by or obvious from the disclosures of the Rosenzweig or Soni patents. The examiner took the position that each of these references discloses all of the limitations recited in the claims. Second, the examiner rejected claims 1-6, 8-12, and 21 under Sec. 103 as being unpatentable over Lunk or Taylor, taken alone or in combination with Rosenzweig, Soni, Wu, Capaccio, or Ward. The examiner asserted that each of Lunk and Taylor discloses a melt-processed composition comprising an organic polymer and a particulate conductive filler. While acknowledging that Lunk and Taylor are silent as to the molecular weight of the polymers used, the examiner argued that a person of ordinary skill in the art would have selected a polymer having a molecular weight within the claimed range. Wu, Capaccio, and Ward were cited for their disclosures of melt-processable organic polymers having molecular weights within the claimed range.
The rejections were subsequently made final, and Soni appealed to the Board. The Board affirmed the first rejection on the ground of Sec. 103, but reversed it with respect to Sec. 102. The Board found that the parent application commonly shared by Soni and Rosenzweig 1 did not disclose the specific molecular weight limitation found in the claims and thus the claims were not anticipated by Soni or Rosenzweig under Sec. 102(a) or (e). The Board found, however, that
[i]f higher molecular weight melt-processable polymers were not available at the time the parent application was filed, they certainly became available by the time of appellants' invention, as evidenced by appellants' acknowledgements in the present specification, i.e., that the compositions in the appealed claims are based on commercially available polymers. It is also acknowledged on this record that one of ordinary skill in the relevant art would have expected higher molecular weight polymers to result in better composition properties. See the present specification at page 17, lines 22 to 28. On this record, it would have constituted nothing more than the exercise of ordinary skill for one to have selected commercially available higher molecular weight polymers to use in the melt-processes of the references to obtain advantageous physical properties in the resulting product (emphasis added).
In response to Soni's argument that its specification describes unexpected results, the Board stated:
In the referenced portion of the present specification, it is also asserted that the improvement in properties resulting from the use of the specific class of molecular weights set forth in appellants' claims was "much greater than would have been predicted." However, this record appears to be devoid of any evidence to support that conclusion. Thus, to whatever extent it may be considered that there is any evidence of unobviousness, it is clearly insufficient to outweigh the evidence of obviousness of record (emphasis added).
The Board also affirmed the Sec. 103 rejection based on Lunk or Taylor, taken alone or in combination with the other references cited by the examiner. The Board found that Lunk would have anticipated the claimed invention except that the reference does not explicitly disclose polymers having a molecular weight greater than 150,000. The Board further found that
selection of a specific molecular weight from within the very high molecular The Board noted that this analysis applied equally to the Taylor reference and found the remaining references essentially superfluous in view of Lunk or Taylor.
weight class disclosed by Lunk would have been obvious to one of ordinary skill in the relevant art, and there is no convincing evidence that unobvious results are associated with the specific molecular weight limitation in question. Similarly, there is no evidence that substitution of other well-known melt-processable polymers in the Lunk composition produces unobvious results.
Soni requested reconsideration of the Board's decision, arguing that the Board ignored the evidence of unexpected results disclosed in the specification. On reconsideration, the Board adhered to its decision:
That which appellants characterize as "evidence" consists of conclusory statements made in the original specification concerning unpredictable differences, which statements are unsupported by any factual data. In a given case, this could conceivably be adequate; however, where as here the evidence of obviousness found in the references is quite strong, this type of unsupported conclusion is inadequate to outweigh it (emphasis added).
Soni now appeals.
We review de novo the PTO's ultimate conclusion of obviousness, a question of law, although its underlying factual findings are reviewed for clear error. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed.Cir.1991); In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1935 (Fed.Cir.1990). The question whether an applicant made a showing of unexpected results is one of fact, subject to the clearly erroneous standard of review.
On appeal, Soni concedes that the prior art relied upon establishes a prima facie case of obviousness. Thus, the sole question for resolution is whether Soni carried its burden of rebutting the prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.Cir.1993) ().
The references cited describe relevant compositions containing polyethylene and a conductive filler. We need not focus on the specific disclosures of the references since it is conceded that the correctness of the rejections boils down to the question whether the data in Soni's patent specification show that the compositions of the claims exhibit unexpectedly improved physical and electrical properties compared to lower molecular weight compositions.
Soni argues that it overcame the prima facie case of obviousness because its patent specification contains data showing that the claimed compositions do exhibit unexpectedly improved properties. Soni further argues that the Board ignored these data, pointing to the Board's statements that Soni's claim of unexpected results was "unsupported by any factual evidence" and that "this record is devoid of any evidence."
In reply, the PTO maintains that Soni has not met its burden of rebutting the prima facie case of obviousness. Specifically, the PTO contends that the Board did in fact consider the data in Soni's specification, but found the data...
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