Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE YULIN WU
Appeal No. 87-0509
February 29, 1988
Application for Patent filed June 27, 1985, Serial No. 749,366, which is a Division of Serial No. 298,444, filed September 1, 1981. Petroleum Sulfonate Adjuvants In Epoxy Resin Corrosion-Inhibiting Composition.
E.T. Kittleman et al. for Appellant
Primary Examiner--John C. Bleutge
Before Seidleck, Tarring and W. Smith
This is an appeal from the examiner's final rejection of claims 1 through 4, 6, 7 and 14 through 19. The only remaining claims, claims 8 through 13, have been withdrawn as being directed to the nonelected invention under 37 CFR 1.142.
The application is directed to a process for using a particular composition to inhibit corrosion on a metal surface.
Claim 1 is illustrative:
1. A method for decreasing corrosion rate on a metal surface by contacting the metal surface with a composition consisting of an epoxy resin, a petroleum sulfonate and a hydrocarbon diluent optionally containing a polyamine.
This application is a division of Serial No. 298,444, wherein the examiner's rejection of composition claims was affirmed by the Board in Appeal No. 674- 24.
Westlund, Jr. et al. (Westlund) 2,843,548 Jul. 15, 1958
Murdock 3,427,190 Feb. 11, 1969
Pilla 4,157,991 Jun. 12, 1979
Green (Canadian Patent) 611,572 Dec. 27, 1960
Two rejections are before us:
(a) Claims 1 through 4, 6, 7 and 14 through 19 stand rejected under 35 USC 112, second paragraph, as being indefinite; and
(b) Claims 1 through 4, 6, 7 and 14 through 19 stand rejected under 35 USC 103 as being unpatentable over Murdock in view of Pilla, Westlund and the Canadian Patent.
We have carefully considered the respective positions of the examiner and the appellant, as well as the evidence of record, in reaching our decision that the rejection under 35 USC 112 shall be reversed while the rejection under 35 USC 103 shall be sustained.
The rejection under 35 USC 112 is based on the examiner's contention that the term "optionally" in claim 1 does not clearly indicate whether the polyamine is intended to be a part of the composition. We have no difficulty determining the scope of claim 1 as drafted. The composition set forth in the claim can consist of the first three components recited or it can include a polyamine as a fourth component. We therefore do not consider the claims to be indefinite as a result of the claimed optional component.
*2 We are convinced that it would have been obvious, in view of the various teachings of the secondary references, to include petroleum sulfonate in the anti-corrosion compositions taught by Murdock. The secondary references establish that petroleum sulfonates are recognized in the art as corrosion inhibitors (Pilla), rust inhibiting materials (Westlund) and surface active agents which promote the solubility of corrosion inhibiting additives in petroleum hydrocarbons (Canadian Patent). Inasmuch as these recognized properties are clearly complimentary to the anti-corrosion purposes of Murdock's composition and method, the incorporation of petroleum sulfonates in Murdock's composition with the expectation of thereby achieving improvement in the properties recognized to be attributable to the additive would have been prima facie obvious.
We note appellant's argument that the Murdock composition does not contain a hydrocarbon diluent. Murdock clearly suggests the presence of hydrocarbon extenders (or diluents) at column 10, lines 68 through 73.
Appellant's claims exclude the presence of Murdock's salts of polybasic acids in the composition defined as "consisting of" the listed components. We agree with the examiner that it would have been obvious to omit Murdock's polybasic acid salts when the function attributed to these salts is not desired or required. Murdock teaches that these salts are beneficial when the composition is employed in contact with fresh water (column 3, lines 4 through 7). Omission of the salt component in preparing compositions to be used to provide corrosion resistance to metals in environments which do not encounter fresh water would have been obvious.
We also note appellant's argument that Murdock does not teach reducing corrosion in environments containing high temperatures and/or high pressures. While Murdock's composition and process are disclosed to be particularily suitable for treating surfaces in contact with fresh water, we are convinced that one of ordinary skill would recognize the general applicability of the anti-corrosion coatings taught therein. It would have been obvious to adopt these coatings to whatever environments exist at the sites where corrosion protection is required. Accordingly, it would have been obvious to adopt and apply Murdock's anti-corrosion compositions in the temperature and pressure environments set forth in claims 6 and 7. We note Murdock teaches that his process can be used in any type of structure including reaction vessels and well jackets (column 12, lines 72-75).
The fact that all of the references are directed to treating metals with compositions to impart corrosion resistance provides an adequate commonality of interest between the four references, as well as appellant's field of endeavor, to suggest the pertinence of the teachings of each of the references to appellant's problem. We do not agree with appellant that the rejection is based on impermissible hindsight. While, as appellant suggests, the references might suggest that other compositions might also serve to solve appellant's problem, we note that the present specification teaches numerous modifications of the composition which are outside of the scope of the present claims and apparently provide at least equivalent results to the process claimed (page 7, lines 4 through 9; page 8, lines 16 through 33). Accordingly, we see no reason, based on this record, to conclude that appellant's process works where other prima facie obvious processes fail.
*3 For the reasons given above as well as those expressed by the examiner in his Answer, the examiner's decision is affirmed.
37 CFR 1.136(a) does not apply to the times for taking any subsequent action in connection with this appeal.
BOARD OF PATENT APPEALS AND INTERFERENCES
James A. Seidleck
Henry W. Tarring, II
William F. Smith
December 22, 1988
UPON REQUEST FOR RECONSIDERATION
The examiner has requested reconsideration of that part of our decision, mailed February 29, 1988, wherein we reversed the rejection of claims 1 through 4, 6, 7 and 14 through 19 under the second paragraph of 35 USC 112. Neither the examiner nor the appellant have requested reconsideration of that portion of our decision wherein we affirmed a rejection under 35 USC 103 over stated prior art. We have reconsidered our reversal of the rejection under 35 USC 112 in view the examiner's request, however, we decline to modify our position in any respect.
In rejecting a claim under the second paragraph of 35 USC 112, it is incumbent on the examiner to establish that one of ordinary skill in the pertinent art, when reading the claims in light of the supporting specification, would not have been able to ascertain with a reasonable degree of precision and particularity the particular area set out and circumscribed by the claims. In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). The determination of such issues necessarily depends on the facts of each particular case or application Chicago Pneumatic Tool Co. v. Hughes Tool Co., 97 F.2d 945, 38 USPQ 258 (10th Cir.1938).
In our original decision we found
We have no difficulty determining the scope of claim 1 as drafted. The compositions set forth in the claim can consist of the first three components recited or it can include a polyamine as a fourth component.
This determination followed from the rationale of In re Moore, supra and In re Hammack, supra.
The examiner bases his request on the prior decisions Ex parte Steigerwald, 131 USPQ 74 (BdApls 1961) and Ex parte Grundy 63 Ms.D. 219 (BdApls), wherein the term "such as" was found to render the claims indefinite. We do not consider the term "optionally" to always result in the same degree of variability or indefiniteness as might result from the use of the phrase "such as". As indicated previously, each case must be decided on its own facts. In this case, the term "optionally" clearly indicates that the polyamine may, or may not, be present as a fourth component in the, otherwise, three component composition. Claims often include the accepted expressions "up to", "O to ... %", "not more than", which are recognized to indicate the possible, but not required, presence of a component. See Ex parte Head, 214 USPQ 551 (Bd.App.1981). The use of the term "optional" in the present circumstances is more analogous to the noted accepted expressions than it is to the use of the phrase "such as" in the cases relied on by the examiner. The use of the term "such as" can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim. We see no similar question or doubt arising from the present use of the term "optionally."
*4 We note the examiner's argument that
Since the term "consisting of" closes the claim to all other ingredients not specifically recited, the polyamine would be excluded by the claim using the language "consisting of an epoxy resin, a petroleum sulfonate and a hydrocarbon diluent ..." (emphasis added)
This argument apparently relies on ignoring the fact that the polyamine is specifically recited as being an optional component.
Therefore the additional language "optionally containing a polyamine render the claim indefinite since it is not known what further limitations, if any, would be imposed on the claim by the use of said language. If no further limitations are imposed the language is superfluous and confusing.
Whatever confusion exists in this matter is not attributable to the words of the claim. It seems that the argument is premised on the fact that the claim means one thing if the "optionally ..." phrase is ignored, and might mean something else if the phrase is considered. We know of no basis for interpreting the claim by ignoring the specific words used in the claim. We therefore see no rational basis for the examiner's finding that confusion would result should such an unwarranted method of claim interpretation be followed.
We note that the request for reconsideration does not provide any basis for modifying our stated understanding of the meaning of the criticized claim language. We, therefore, see no reason to modify our position as expressed in our original decision and as quoted, supra.
The request is granted to the extent that we have reviewed our original decision, however, it is denied to the extent that it seeks modification thereof.
Henry W. Tarring II
William F. Smith