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In re Romenesko

U.S. Court of Appeals, Federal Circuit

February 09, 1999


Before Clevenger, Circuit Judge, Smith, Senior Circuit Judge, and Schall, Circuit Judge.

NOTE: Pursuant to Fed. Cir. R. 47.6, this Disposition is not citable as precedent. It is a public record. The Disposition will appear in tables published periodically.

(Serial No. 07/793,877)

Opinion for the court filed by Circuit Judge SCHALL. Concurring opinion filed by Senior Circuit Judge SMITH.

SCHALL, Circuit Judge.


David J. Romenesko and Steven P. Mullen (Romenesko) appeal the decision of the Board of Patent Appeals and Interferences (Board), dated September 9, 1996, affirming the final rejection of all claims in United States Patent Application No. 07/793,877, filed November 18, 1991. The claims were rejected as unpatentable under 35 U.S.C. § 103 due to obviousness. We affirm.



The Romenesko patent application is entitled "Poly(phenylene ether) Resin Modified with Silicone Rubber Powder." The background section of the application states that poly (phenylene ether) ("PPE") *fn1 plastic resins possess excellent physical properties, but exhibit poor processability due to their high viscosities in the melted state. According to Romenesko, processability can be improved by blending the resins with polystyrene (PS). *fn2 However, this comes at the cost of impairing physical properties. For example, there is a reduction in the temperature at which heat distortion occurs in the solid (unmelted) plastic.

Romenesko also observes in the background section of the application that the prior art, including United States Patent No. 3,824,208, issued to Link et al. (Link), discloses a mixture of polydiorganosiloxane gum ("POS") and silica filler to form a silicone rubber powder. Romenesko asserts, however, that there is no suggestion in the prior art to combine such a powder with PPE.

Romenesko's application discloses and claims a modification of PPE compositions that purportedly improves processability without diminishing physical properties. The modification is the combining of PPE with silicone rubber powder containing POS and silica filler. The application discloses that good flow characteristics at low temperatures (i.e., good processability) are obtained through this combination. It further discloses that physical properties such as impact resistance are surprisingly improved in the combination over the same properties in unmodified PPE, particularly when the silica filler is treated with a treating agent. *fn3 Finally, the application discloses the addition of an adhesion promoter, in what is characterized as a "highly preferred embodiment."

Claims 1 and 10 of the Romenesko patent application, which are representative of the claims on appeal, define a rubber composition consisting essentially of (i) PPE and (ii) silicone rubber powder. *fn4 The silicone rubber powder consists essentially of POS and silica filler. An adhesion promoter is optional. Thus, claims 1 and 10 define a rubber composition consisting essentially of PPE, POS, and silica filler, with the latter two ingredients being introduced together as a powder.

The Board affirmed the rejection of claims 1 and 10 as unpatentable over United States Patent No. 3,373,479, issued to Haaf (Haaf), in view of Link. The Board found that Haaf discloses compositions comprising PPE, POS, and other optional components, such as PS and/or silica filler. *fn5 The Board also found that Link discloses a process for producing powder mixtures of POS and silica filler. The Board concluded that a person having ordinary skill in the art, armed with these disclosures, would have found it obvious to disperse the powder mixtures of Link in the composition of Haaf.

In reaching its decision, the Board rejected Romenesko's argument that the claim language "consisting essentially of" excludes the optional PS of Haaf. It also rejected Romenesko's reliance on data in the specification as evidence of unexpected results to rebut the prima facie case of obviousness. The Board stated that the specification data failed to represent the closest prior art, namely, Haaf's disclosure of a composition comprising PPE, POS, and silica filler. Accordingly, the Board determined, the specification could not serve as the basis for a claim of unexpected results.

The Board denied Romenesko's request for reconsideration. As far as claim construction was concerned, the Board reiterated its holding that PS was not excluded from the scope of the claims. The Board noted that the applicants could have proffered an amendment during prosecution expressly excluding PS from the claimed composition, but that they failed to do so.

Turning to the question of patentability, the Board adhered to its position that Romenesko had failed to rebut the prima facie case of obviousness because the applicants had not compared the claimed invention to the closest prior art. The Board concluded that, like the claimed invention, Haaf, which is the closest prior art, contains a filler because the composition in Haaf's Example 1C, bridging cols. 7 and 8, contains carbon black filler. Consequently, the Board held that Romenesko should have compared the claimed invention to "an example such as that disclosed by Haaf which contains a filler."

The Board found that the comparative composition proffered in the Romenesko specification, page 21, lines 5-18, could not represent the closest prior art because it contains no filler. In light of this failure to represent the closest prior art, the Board concluded that Romenesko had not rebutted the prima facie case of obviousness.



The ultimate Conclusion of obviousness under 35 U.S.C. § 103 is one of law that we review de novo. See In re Donaldson Co., 16 F.3d 1189, 1192, 29 USPQ2d 1845, 1848 (Fed. Cir. 1994) (en banc). However, the obviousness issue rests on underlying findings of fact. See In re Rouffet, 149 F.3d 1350, 1355, 47 U.S.P.Q.2d 1453, 1455 (Fed. Cir. 1998). We review such findings under the clearly erroneous standard of review. See In re Zurko, 142 F.3d 1447, 46 USPQ2d 1691 (Fed. Cir. 1998).

Romenesko concedes that the prior art establishes a prima facie case of obviousness with respect to claims 1 and 10. A patent applicant can rebut a prima facie case of obviousness, however, by showing "unexpected results," i.e., showing that the claimed invention possesses a superior property or advantage that a person of ordinary skill in the art would have found surprising or unexpected. See In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (quoting In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995)). "[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art." In re Baxter Travenol Labs, 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). An examination for unexpected results is a factual inquiry that we review for clear error. See In re Mayne, 104 F.3d 1339, 1343, 41 USPQ2d 1451, 1455 (Fed. Cir. 1997) (citing In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984)). A finding by the Board that an applicant did not compare the claimed invention with the closest prior art also is a question of fact reviewable under the clearly erroneous standard. See Johnson, 747 F.2d at 1460, 223 USPQ at 1263. However, "[w]hether the evidence presented suffices to rebut the prima facie case is part of the ultimate Conclusion of obviousness and is therefore a question of law." Rouffet, 149 F.3d at 1355, 47 U.S.P.Q.2d at 1456.

Romenesko acknowledges that Haaf is the closest prior art reference. Romenesko contends, however, that the Board erred in concluding that the composition closest to the claimed invention is found in Example 1C of Haaf. As described by Romenesko, Haaf generally discloses compositions comprising a blend of PPE and POS, with other components, including PS, being optional. Romenesko argues that Examples 1A through 1C of Haaf, which contain the optional PS, cannot represent the closest prior art because the amount of PS in each of those examples is 55 percent, which is significant and is therefore excluded from the scope of the claims at issue. Instead, Romenesko suggests, the closest prior art composition may be disclosed in Haaf's Example 2. See Haaf, col. 8, ll. 59-60. According to Romenesko, Haaf's Example 2 discloses a combination of PPE and POS, without PS or silica filler. Romenesko contends that such a composition was appropriately compared to the claimed composition in the Romenesko specification.

The Commissioner of Patents and Trademarks (Commissioner) responds that even if Romenesko's claims exclude PS, the Board did not err in finding that the compositions of Haaf's Examples 1A through 1C, which contain 55 percent PS, are the closest prior art. According to the Commissioner: "Even if the closest prior art falls outside a claimed invention, that does not preclude a comparison of the invention with that art. [Romenesko's] intimation to the contrary would foreclose the possibility of any comparisons because the prior art always falls outside the claimed invention." The Commissioner maintains that the closest prior art is Example 1C of Haaf, which discloses a composition including not only PPE and POS, as contended by Romenesko, but also carbon black filler. *fn6 The Commissioner suggests that this composition is closest to the claimed composition, which contains PPE, POS, and silica filler.

However, it is not necessary for us to determine whether the claim language "consisting essentially of," as properly construed, excludes PS. Neither is it necessary for us to determine whether Haaf's Example 2 is closer than Haaf's Example 1C to the claimed composition. The reason is that Romenesko has failed to draw a comparison to either example. Romenesko does not dispute that no comparison was drawn to the Commissioner's proffered example, which is Haaf's Example 1C. To determine whether a comparison was drawn to Romenesko's proffered example, Example 2 of Haaf, we must direct our attention to Haaf's Example 2.

Haaf's Example 2 states that Example 1B, which contains PPE, PS, POS, and titania, can be modified by omitting PS and adding more PPE. See Haaf, col. 8, ll. 17-18, 59-60. The result of this modification would be a composition containing PPE, POS, and titania, without any PS. See Haaf, col. 7, ll. 60-66. Romenesko points out that the third component in this composition -- titania -- is a filler, thereby demonstrating that Haaf's Example 2, cited by Romenesko, also contains a filler. Accordingly, Romenesko's comparison should have been made against a composition containing PPE, POS, and a filler, as required by the Board, instead of one containing only PPE and POS, as tested by Romenesko. Thus, Romenesko failed to draw the appropriate comparison and, consequently, failed to rebut the prima facie case of obviousness. *fn7 B.

Romenesko also argues that the data in Haaf's Example 1 would suggest to one skilled in the art that adding filler would adversely affect impact strength, contrary to the claimed invention. As support, Romenesko compares Haaf's Example 1B, which contains 3 parts titania, to Haaf's Example 1C, which contains 0.5 parts carbon black. Noting that Example 1B has more filler but a lower impact strength, Romenesko asserts that one skilled in the art would infer that some or all fillers adversely affect impact strength. However, another plausible interpretation of Haaf's data is that, while fillers generally improve impact strength, some (e.g., carbon black) are significantly more effective than others (e.g., titania). See Haaf, col. 7, ll. 60-66; col. 8, ll. 1-10. This interpretation is consistent with the Commissioner's position that certain fillers would be expected to significantly improve impact strength. We cannot accept Romenesko's interpretation, which requires us to make assumptions without factual support, over another readily plausible interpretation. *fn8 See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) (arguments relying on factually unsupported assumptions to rebut a prima facie case of obviousness "can hardly be considered factual evidence").

Finally, Romenesko contends that the claimed composition exhibits certain additional unexpected properties, such as the ability to extrude at a lower temperature and soften at a higher temperature. The Commissioner dismisses this "other evidence" of unexpected results, noting that Romenesko "did not offer evidence that [the] other results were unexpected . . . but simply asserted the results were unexpected in attorney argument."

The Commissioner is correct that Romenesko failed to offer any evidence that the additional results would have been unexpected or surprising to one of ordinary skill in the art. The only comparisons by Romenesko were again drawn to compositions that contained no filler. As noted by the Commissioner, there is no evidence of record, as opposed to attorney argument, that one of ordinary skill in the art would have been surprised to learn that a plastic according to Romenesko's claims would extrude at a lower temperature or soften at a higher temperature than a plastic lacking a filler and an adhesion promoter. See De Blauwe, 736 F.2d at 705, 222 USPQ at 196 (rejecting attorney argument and conclusory statements).

We conclude that the Board's findings of fact are not clearly erroneous. We also conclude that the Board did not err as a matter of law in its ultimate holding that Romenesko has failed to rebut the conceded prima facie case of obviousness under 35 U.S.C. § 103. Our Conclusions extend to the Board's identical rulings on the other appealed claims because Romenesko did not separately argue the patentability of those claims. See In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1900 (Fed. Cir. 1990) (en banc), cert. denied, 500 U.S. 904, 111 S. Ct. 1682, 114 L.Ed.2d 77 (1991).

Each party shall bear its own costs.

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