In re Ahlbrecht (435 F.2d 908, 1971)

ALMOND, Judge.

This is an appeal from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, refusing to accord claim 7 in appellant's application the benefit of an earlier filing date under 35 U.S.C. § 120 and sustaining the rejection of that claim under 35 U.S.C. § 102 as anticipated by the intervening patents to Langerak et al. and Fasick et al. Claims 2-6 in the application stand allowed. We affirm.

The Invention

The esters of the claim in issue may be represented by the formula:

wherein R is a member of the group consisting of hydrogen and the methyl radical, Rt is a perfluoroalkyl radical having from 3-12 carbon atoms, and m is an integer from 2-12. Among several available methods, these acrylates may be prepared from w-perfluoroalkyl-substituted alkanols of the formula,

in which Rf is the perfluoroalkyl group, by reacting the alkanol with acrylic or methacrylic acid of the formula,

in which R is a methyl radical in the case of methacrylic acid or hydrogen in the case of acrylic acid.

Claim 7, the only one on appeal, broadly claims the esters produced by this process. It reads:

7. A perfluoroalkyl-alkyl acrylate of acrylic or methacrylate acid and an w-perfluoroalkyl-substituted alkanol having not more than 12 methylene groups per molecule and in which the perfluoroalkyl radical has from 3 to 12 carbon atoms.

It is stated that the resulting unsaturated acrylates are useful as monomers to produce polymers by homopolymerization or by copolymerization with other vinyl monomers, and because of the perfluoroalkyl terminal group repeated along the polymer chain, when fibers of fabrics or textiles are coated with these polymers, oil and water resistance is imparted to the fibers. It is also stated that the polymers of the esters of this invention are useful in sheet form for such things as gaskets and cap liners, and show good resistance to oils.

Background

The examiner rejected claim 7 under 35 U.S.C. § 102 as fully met by either Langerak et al. or Fasiek et al., and appellant does not question the rejection of claim 7 over the references if the present application is not accorded the benefit of the filing date of application serial No. 677,229, filed August 9, 1957. Therefore, a detailed analysis of the references is not necessary.

The present application is derived from two chains of previously filed copending applications, both of which start with serial No. 677,229. Appellant contends that he is entitled to rely under 35 U.S.C. § 120 on this parent application for an effective filing date of August 9, 1957, which date is sufficient to remove the references of record. The examiner took the position that serial No. 677,229 is inadequate to overcome the cited references because the invention described therein does not include esters having two methylene groups (i. e., where m in the formula is 2), but rather the description is confined to esters wherein m is 3-12.

At this point, we note that a similar issue was recently presented in In re Brower, Cust. & Pal.App., 433 F.2d 813, decided November 25, 1970. There we pointed out that 35 U.S.C. § 120 specifies only that the previously filed application must disclose the invention “in the manner provided by the first paragraph of section 112,” and made it clear that there is no requirement under section 120 that the invention claimed in the subsequent application must correspond to what was regarded as the invention in the earlier application. While this narrows the issue here, it is not determinative because the parties disagree as to whether the disclosure in the earlier application is sufficient under the first paragraph of 35 U.S.C. § 112 to support the invention claimed in claim 7. In order to determine whether or not there is support in the parent application, the disclosure of the original specification must be considered.

The Parent Application

The tenor of the disclosure in the parent application, as it relates to the issue on appeal, is indicated by the following statement taken from the initial paragraphs of the specification :

This invention relates to fluorinated esters and more particularly to unsaturated aliphatic acid esters of co-perfluoroalkyl-substituted alkanols.

The new polymerizable monomeric esters of unsaturated aliphatic acids included within the scope of the invention can be represented by the general formula:

wherein R is hydrogen or a methyl radical, Rf is a perfluoroalkyl group having from 3 to 12 'carbon atoms and m is an integer from 3 to 12. Also included within the scope of the invention are the polymers and copolymers of the above-described monomers. [Emphasis added.]

The remainder of the disclosure is similarly directed to “esters of terminally perfluorinated alcohols in which a chain or bridge containing at least three methylene groups is interposed between the perfluoroalkyl ‘tail’ and the hydroxyl group * * [Emphasis added.]

Three methods are disclosed for preparing the perfluoroalkyl alkanol intermediate materials. Two of these methods cannot be used to prepare intermediate alkanols wherein m is 2, and thus the resulting esters cannot have two methylene groups. In regard to the third method, it is disclosed in the original specification that:

Other analogous addition reactions of perfluoroalkanesulfonyl halides to unsaturated esters and acids, as described in the copending application of G. V. D. Tiers, S.N. 532,743, filed September 6, 1955, followed by reductive dehydrohalogenation, also lead to the intermediate perfluoroalkyl alkanols of the present invention, either by further saponification of the resulting esters or by reduction of the corresponding distally perfluoroalkylated aliphatic acids or esters thereof using, for example, lithium aluminum hydride.

The illustrations of this method in the parent disclosure show the production of alkanols wherein m is 4 and 10. However, as appellant points out in his brief, Tiers does disclose a starting material, vinyl acetate, which when reacted with a perfluoroalkanesulfonyl chloride and reductively dehydrohalogenated and saponified, results in the substituted alcohol Rt(CH2)2OH, which can be used to produce esters wherein m is 2.

The Present Application

There is no dispute that the present specification supports the claim now on appeal as required by 35 U.S.C. § 112. Appellant has altered the language of the specification to explicitly point out that esters having two methylenes are contemplated. For example, it is stated that:

* * * The acrylate-type esters of the invention are prepared by esterifying the saturated alcohols with acrylic acid or methacrylic acid. These esters have the general formula:

wherein Rt and m are as previously defined herein (i. e. Rf is a perfluoroalkyl group having from 3 to 12 carbon atoms and m is 2-12, m being ordinarily 3-12) and R