Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE ERIC R. GEORGE
Appeal No. 90-0420
March 29, 1991
Heard: February 27, 1991
Application for Patent filed August 14, 1987, Serial No. 085,351. Coating of Metallic Substrates with Liquid Crystal Polymers.
Robert F. Rywalski et al. for appellant.
Primary Examiner--Evan Lawrence
Before Steiner, Meros and Garris
This is an appeal from the examiner's refusal to allow claims 1, 4 through 10 and 17. The examiner objected to claims 2, 3 and 13 through 16 and, presumably, would allow these claims if presented in independent form. Claims 11 and 12, the only other claims remaining in the application, stand withdrawn pursuant to the provisions of 37 CFR 1.142(b).
The subject matter on appeal is directed to a process for coating a metal substrate with a copolymer which is optically anisotropic in the melt phase, i.e., a thermotropic liquid crystal polymer. In independent claim 1, the thermotropic liquid crystal polymer is defined in terms of three moieties in the backbone. In independent claim 10, the thermotropic liquid crystal polymer is defined in terms of melt viscosity.
Claims 1 and 10 read as follows:
1. A process for providing a protective coating for metallic substrates comprising coating said substrate with a particulate copolymer which is optically anisotropic in the melt phase onto said substrate, said copolymer having the following moieties in the backbone
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
and heating said coated metal substrate for a time and at a temperature sufficient to form a substantially continuous and uniform hard, corrosion resistant, strongly adhered protective coating on said substrate.
10. A process for providing a continuous, uniform protective coating on a metallic substrate comprising coating said substrate with a particulate liquid crystal polymer which has a melt viscosity of between about 10 to about 100 poise when measured at a shear rate of between about 300 to about 20,000 reciprocal seconds in the temperature range of about 330C. to about 350C., and heating said coated substrate for a time and at a temperature sufficient to form a strongly adhered, substantially continuous and uniform, hard, corrosion resistant coating.
The references relied upon by the examiner are:
Kastelic 4,394,498 July 19, 1983
Lee et al. (Lee) 4,600,765 July 15, 1986
The appealed claims stand rejected under 35 U.S.C. 103. As evidence of obviousness, the examiner has relied upon the combined disclosures of Kastelic and Lee. We affirm.
Kastelic discloses the application of a thermotropic liquid crystal polymer as a "coherent film" (column 13, line 49) to metallic surfaces by melt processing for chemical resistance. The tenor of Kastelic's disclosure undisputably suggests that a plethora of thermotropic liquid crystal polymers would provide the desired chemical resistance because thermotropic liquid crystal polymers generally exhibit high temperature and chemical resistance. It would, therefore, appear that Kastelic's disclosure generically encompasses the claimed subject matter, including the subject matter of the claims which recite yield stresses and melt viscosities. Accordingly, it would appear appropriate to conclude that one having ordinary skill in the art would have found the claimed invention prima facie obvious based solely upon Kastelic's generic disclosure. In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir.1990); Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed.Cir.1989); In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA1971).
*2 Moreover, it is well settled that a reference may be relied upon for all that it would have reasonably conveyed to one having ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc., supra; In re Preda, 401 F.2d 825, 159 USPQ 342 (CCPA1968). With that legal tenet in mind, we again observe that Kastelic's method is similar to appellant's method in that a particulate thermotropic liquid crystal polymer is applied to a metallic substrate and heated to provide an adherent chemically resistant coherent film. We have difficulty conceiving of one having ordinary skill in the art who would not have recognized that the realization of Kastelic's stated objective of providing an adherent chemically resistant film depends upon the rheological properties of the selected thermotropic liquid crystal polymer. [FN1] It follows that one having ordinary skill in the art would have recognized that the yield stress and melt viscosity are result effective variables impacting upon the ability of a particulate thermotropic liquid crystal polymer to fuse into a coherent protective film. [FN2] Accordingly, it would appear logical to conclude that one having ordinary skill in the art, seeking to practice Kastelic's invention and to achieve the stated objective, would have been led to select a thermotropic liquid crystal polymer which exhibits desirable rheological properties, i.e., a suitable yield stress and melt viscosity, to obtain a coherent film. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA1980).
Furthermore, Lee admittedly discloses the particular thermotropic liquid crystal polymers encompassed by the appealed claims. We consider it significant that the disclosed polymers are characterized as melt spinnable and can be processed using conventional thermoplastic polymer technology. Ergo, one having ordinary skill in the art would have recognized that the disclosed polymers exhibit rheological properties conducive to melt processing. Armed with Kastelic's invitation to employ thermotropic liquid crystal polymers to provide coherent chemical resistant coatings on metal surfaces by melt technology, and Lee's disclosure of thermotropic liquid crystal polymers which are suitable for conventional thermoplastic processing technology, one having ordinary skill in the art would have been led to employ Lee's polymers in Kastelic's process, motivated by a reasonable expectation of successfully achieving Kastelic's stated objective. In re O'Farrell, 853 F.2d 894, 7 USPQ2d 1673 (Fed.Cir.1988).
As previously noted, one having ordinary skill in the art would have been led to optimize the yield stress and melt viscosity as apparent result effective variables impacting the rheological properties of the polymer. In re Boesch, supra. Accordingly, one having ordinary skill in the art would have been led to the particular melt viscosities and yield stresses specified in various claims on appeal. Moreover, inasmuch as Lee discloses the particular thermotropic liquid crystal polymers encompassed by the appealed claims, such polymers would necessarily exhibit the melt viscosity and yield stress recited in various claims.
*3 Accordingly, we are of the opinion that one having ordinary skill in the art would have found the claimed invention prima facie obvious. As evidence of nonobviousness, appellant relies upon the data in the specification and two declarations submitted pursuant to the provisions of 37 CFR 1.132.
The resolution of the ultimate legal conclusion of obviousness is dependent upon the facts of each particular case. In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed.Cir.1985); Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 227 USPQ 337 (Fed.Cir.1985), vacated, 475 U.S. 809, 229 USPQ 478 (1966), aff'd on remand, 810 F.2d 1561, 1 USPQ2d 1593 (Fed.Cir.1987). The mere fact that appellant advances an argument with respect to objective evidence of nonobviousness does not mandate a conclusion of nonobviousness. Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 9 USPQ2d 1417 (Fed.Cir.1988). In each situation it is necessary to consider anew the evidence of obviousness and to weigh the evidence of obviousness against the evidence of nonobviousness. In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed.Cir.1990); In re Johnson, 747 F.2d 1456, 223 USPQ 1260 (Fed.Cir.1984); In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed.Cir.1984).
The data in the specification, which are essentially the same data referred to in the declarations, are based upon comparison testing of a single liquid crystal polymer encompassed by the appealed claims with two commercially available polymers
one of which is believed to be a copolymer of bisphenol E, isophthalic acid, and 2,6 naphthalene dicarboxylic acid and the other is believed to be a blend of a homopolymer of about 80% by weight of para-hydroxy benzoic acid with about 20% by weight of polyethylene terephthalate (page 6 of the specification, lines 21 through 26, emphasis supplied).
According to the reported results, the polymer representing appellant's invention forms a substantially continuous and uniform film; whereas, the other polymers which do not form part of appellant's invention form discontinuous films. In the specification, appellant theorizes that the other copolymers exhibit yield stresses above that possessed by the polymer of the claimed invention.
As mentioned above, the declarations refer to the same testing reported in the specification. In paragraph 5 of the first declaration executed February 24, 1989, declarant, the inventor herein, states that there were very few publicly and/or commercially available liquid crystal polymers which were optically anisotropic in the melt phase and that those materials tested in the specification were believed to be as reported. [FN3] In paragraph 7 of the first affidavit, declarant expresses his "opinion" that
*4 the reason for this unexpected result with the copolymers contemplated for use in accordance with the present invention is their low yield stress (as set forth in, for example, Claims 7 and 8 of the present application) and/or their low melt viscosity (as set forth, for example, in Claims 5 and 10 of the present application).
In paragraph 8 of the second declaration executed October 17, 1989, the same declarant acknowledges that the yield stresses and melt viscosities of the two comparative polymers were not measured. Paragraph 8 of the second declaration reads as follows in its entirety:
That while yield stresses and viscosities of the two comparative polymers were not measured, nonetheless, based on his education, knowledge and experience, and to a high probability of chemical certainty, the reason for the unexpected results with the present invention, i.e. the formation of a continuous and uniform film, is because the claimed polymers possess a critically important lower yield stress and/or lower melt viscosity.
We recognize that an expert's sworn skepticism is entitled to weight in resolving the ultimate legal conclusion of obviousness under 35 U.S.C. 103. In re Dow Chemical Co., 837 F.2d 469, 5 USPQ2d 1529 (Fed.Cir.1988). However, we are aware of no decision enunciating a litmus test compelling a conclusion of nonobviousness merely because the magic word "unexpected" appears in a declaration. Rather, it is necessary to look at the facts relied upon to support an expert's opinion. See, for example, In re Grunwell, 609 F.2d 486, 203 USPQ 1055 (CCPA1979); In re Thompson, 545 F.2d 1290, 192 USPQ 275 (CCPA1976).
In the situation before us, the allegedly unexpected result is the formation of a continuous and uniform film [FN4] believed to be attributable to the use of a thermotropic liquid crystal polymer exhibiting a low yield stress and/or low melt viscosity (paragraph 7 of the first declaration). In paragraph 8 of the second declaration, the "unexpected" result is again attributed to the "critically important lower yield stress and/or lower melt viscosity" notwithstanding the fact that the yield stresses and viscosities of the comparative polymers were never ascertained. We cannot help but question how the formation of a continuous and uniform coating attributed to an allegedly critically important low yield stress and/or low melt viscosity can be characterized as unexpected, based upon a comparison with two liquid crystal polymers with unknown yield stresses and melt viscosities. Indeed, there is no apparent reason to assume that one having ordinary skill in the art would have even considered the other two polymers tested suitable for coating metal substrates by fusion. In re D'Ancicco, 452 F.2d 1060, 172 USPQ 241 (CCPA1972).
*5 Declarant does not refer to any recognized scientific principles to support his opinion that the reported results are "unexpected." Basically, we are asked to simply trust his judgment. As previously mentioned, an unsupported opinion, although entitled to consideration, is of limited evidentiary value. In re Grunwell, supra; In re Thompson, supra. [FN5]
It is, therefore, our opinion that appellant has not provided a sufficient basis upon which to conclude that the reported results are actually unexpected. In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed.Cir.1989); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed.Cir.1985); In re Freeman, 474 F.2d 1318, 177 USPQ 139 (CCPA1973).
Moreover, Kastelic expresses a preference for aromatic polyesters having particular molecular weights and viscosities (column 5, lines 41 through 62). Inasmuch as appellant admits that the yield stresses and viscosities, and presumably the molecular weights, of the comparative polymers were never ascertained, it is impossible to determine whether appellant has presented a fair comparison of the claimed invention with the closest prior art. In re Johnson, supra; In re De Blauwe, 736 F.2d 699, 222 USPQ 191 (Fed.Cir.1984); In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA1979). Moreover, no evidence has been presented to demonstrate that the two comparative polymers tested were actually used in the real world for the purpose disclosed by Kastelic, i.e., coating metals. Cf. In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA1978).
We note that the claims encompass numerous liquid crystal polymers exhibiting virtually any molecular weight; whereas, the data in the specification are based upon a single liquid crystal polymer. Appellant has not provided a sufficient basis upon which to reasonably extrapolate the reported results to a reasonable number of the liquid crystal polymers encompassed by the appealed claims. Cf. In re Kollman, 595 USPQ 48, 201 USPQ 193 (CCPA1979). Accordingly, it would appear that the probative value of the evidence is not reasonably commensurate in scope with the degree of protection sought. In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed.Cir.1990); In re Clemens, 622 F.2d 1029, 206 USPQ 289 (CCPA1980); In re Boesch, supra; In re Landgraf, 436 F.2d 1046, 168 USPQ 595 (CCPA1971).
We have considered anew the evidence of obviousness and have weighed such evidence of obviousness against the evidence of nonobviousness. It is our judgment that, on balance, the evidence of obviousness outweighs the evidence of nonobviousness. We, therefore, conclude that one having ordinary skill in the art would have found the claimed invention as a whole obvious within the meaning of 35 U.S.C. 103.
*6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
BOARD OF PATENT APPEALS AND INTERFERENCES
Arthur J. Steiner
Edward J. Meros
Bradley R. Garris
FN2. See, Billmeyer, Fred W. Textbook of Polymer Science. Third Edition. New York: John Wiley & Sons, 1984. pp. 301-329, 364, a copy of which is enclosed for appellant's convenience.
FN3. No factual support is offered to establish the identity of the comparative polymers tested, the number of thermotropic liquid crystal polymers actually available, or the difficulty involved in producing the thermotropic liquid crystal polymers preferred by Kastelic in column 5, lines 41 through 62.
FN4. We again note that Kastelic specifically discloses the obtention of a "coherent film" (column 13, line 49).
FN5. Cf. In re Oelrich, 579 F.2d 86, 198 USPQ 210 (CCPA1978), wherein affidavits containing a detailed analysis of the applied reference and expressing the opinions of four undisputed experts in the art, based in part upon the technically sound application of unquestioned physical principles, were considered entitled to sufficient weight to overcome a fragile prima facie case of obviousness generated by a speculative statement in the applied reference.