Brian B. Marr et al.Download PDFPatent Trials and Appeals BoardMay 28, 20202019002462 (P.T.A.B. May. 28, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/018,221 02/08/2016 Brian B. MARR 3453DIV 8941 67749 7590 05/28/2020 Ashland LLC WILLIAM J. DAVIS, ESQ. 1005 U.S. 202/206 Bridgewater, NJ 08807 EXAMINER LENIHAN, JEFFREY S ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 05/28/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ntietcheu@ashland.com schen@ashland.com wdavis@ashland.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN B. MARR and OSAMA M. MUSA Appeal 2019-002462 Application 15/018,221 Technology Center 1700 Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and MICHAEL G. McMANUS, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 11–20 and 22. See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Ashland Inc. Appeal Br. 4. Appeal 2019-002462 Application 15/018,221 2 CLAIMED SUBJECT MATTER The claims are directed to a composition comprising a modified polymer and an agent. See, e.g., claims 11 and 22. Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A composition comprising a 4- or 5-substituted 1,2,3-triazole, or regioisomer mixtures thereof, modified polymer, wherein the substituted 1,2,3-triazole is modified by a modifying polymer represented by the structure: wherein R1 is selected from the group consisting of hydrogen, functionalized and unfunctionalized alkyl, alkoxy, cycloalkyl, alkenyl, and aryl groups, wherein any of the before mentioned groups may be with or without heteroatoms, and mixtures thereof, wherein the composition further comprises an agent selected from the group consisting of an adhesive, an aerosol, an agricultural, a beverage, a biocide, a cleaning, a coating, a cosmetic, a dental, a detergent, a drug, an electronic, an encapsulation, a food, a hair spray, a household-industrial- institutional ink, a lithographic solution, a membrane, a metal fluid, an oilfield, a paint, a paper, a personal care, a pharmaceutical, a plaster, a plastic, a printing, a wood-care, and mixtures thereof. Appeal Br. 45 (Claims Appendix) (formatting added). Appeal 2019-002462 Application 15/018,221 3 REJECTION Claims 11–20 and 22 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA, the applicant regards as the invention. Non-Final Act. 4. OPINION The Examiner rejects all the claims as indefinite, basing the rejection on ambiguities the Examiner locates in the two independent claims, claims 11 and 22. Two aspects of those claims are determined to be indefinite. One relates to the recitation of “a 4- or 5-substituted 1,2,3-triazole, or regioisomer mixtures thereof, modified polymer, wherein the substituted 1,2,3-triazole is modified by a modifying polymer represented by the structure . . . ,” which we will refer to as the modified polymer recitation. The second is the Markush listing of agents in the last “wherein” clause of claims 11 and 22. We consider each basis for rejection below. The Modified Polymer Recitation Claims 11 and 22 open with the recitation “[a] composition comprising a 4- or 5-substituted 1,2,3-triazole, or regioisomer mixtures thereof, modified polymer, wherein the substituted 1,2,3-triazole is modified by a modifying polymer represented by the structure . . . .” According to the Examiner, “[i]t is unclear whether the claimed invention is a modified polymer made [by] reacting a polymer of the recited structure with a 4- or 5- substituted 1, 2, 3- triazole, or if the claimed invention is a polymer modified Appeal 2019-002462 Application 15/018,221 4 by a triazole, which in turn is modified by the recited polymer structure.” Non-Final Act. 4. Appellant points out that the present application is a divisional application of a parent application that issued as United States Patent 9,334,3512 and that the modified polymer recitation of claims 11 and 22 closely parallels the modified polymer recitation of issued parent claim 1. Appeal Br. 21–22. We agree. See Patent ’351 claim 11 (“A 4- or 5- substituted 1,2,3-triazole, or regioisomer mixtures thereof, modified polymer, wherein the substituted 1,2,3-triazole is modified by a modifying polymer represented by the structure . . .” and reproducing the same maleic anhydride polymer structure as appealed claims 11 and 22). During the prosecution of the parent application, the Examiner had made the same rejection as presented here. S.N. 14/126,282 Non-Final Act. 4. The Examiner withdrew the rejection after Appellant’s response, stating: Applicant’s arguments, see pages 18–23, filed 4/14/2015, with respect to the rejection of claim 1 under 35 U.S.C. 112, 2nd paragraph have been fully considered and are persuasive. Applicant states that the terminology used in the claim is intended to refer to a polymer product obtained by modifying a 4- or 5-substituted 1,2,3-triazole with a maleic anhydride-based 2 The 9,334,351 patent issued from Application 14/126,282. Appellant states that “[t]his divisional application was filed to prosecute the composition claims in the parent application, which claims were withdrawn by the Examiner subject to a restriction requirement.” Appeal Br. 21. We find no restriction requirement in the file of 14/126,282. In the Non-Final Action, the Examiner objected to claims 11–20 as substantial duplicates of claims 1– 10 and rejected all the then pending claims (1–21) on the basis that the modified polymer recitation was indefinite. Non-Final Act. 2–4. The Examiner withdrew this basis for rejection in the Final Office Action, but maintained that the Markush groupings of claims 11–20 and new claim 22 were indefinite. 14/126,282 Final Act. 5. Appellant cancelled claims 11–20 and 22 to gain allowance. Appeal 2019-002462 Application 15/018,221 5 polymer. Based on applicant's statement, the scope of the independent claim 1 therefore reads on a reaction product made by reacting said triazole with a polymer having the structure recited in the independent claim. Additionally, it is noted that each of independent claims 11 and 22 contain the same language recited in claim 1. The recitations of the 4- or 5- substituted 1,2,3-triazole modified polymer in all independent claims are therefore given the same meaning as discussed by applicant with regards to claim 1, i.e., a reaction product of a 4- or 5-substituted 1,2,3-triazole and a polymer having the recited structure. S.N. 14/126,282 Final Act. 5. Appellant did not dispute the Examiner’s claim interpretation. S.N. 14/126,282 After-Final Responses of October 13, 2015 and December 14, 2015. “When multiple patents derive from the same initial application, the prosecution history regarding a claim limitation in any patent that has issued applies with equal force to subsequently issued patents that contain the same claim limitation.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999). Although the application we are reviewing here has not yet issued–and thus prosecution history is not yet history–under the current facts, we determine that the interpretation articulated by the Examiner in the parent application applies in the present case. The Examiner’s interpretation is supported by the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“[A]s an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification.”). Appeal 2019-002462 Application 15/018,221 6 The Specification is entitled 4- and 5-substituted 1,2,3,-triazole, and regioisomer mixtures thereof, modified polymers. These modified polymers are formed by reacting maleic anhydride based polymers (polymers having the structure reproduced in claims 11 and 22) with substituted 1,2,3- triazoles. Spec. ¶ 9. The Specification defines “modified polymer” as referring “to a 4- or 5-substituted 1,2,3-triazole, or regioisomer mixtures thereof, modified by a modifying polymer, as defined above.” Spec. ¶ 30. The term “modifying polymer” is defined as referring to a maleic anhydride based polymer represented by the structure reproduced in claims 11 and 22. Spec. ¶ 28. The Specification defines the term “4- or 5-substituted 1,2,3- triazole, or regioisomer mixtures thereof” as referring to “4-substituted 1,2,3-triazoles, 5-substituted 1,2,3-triazoles, and 4- and 5- regioisomer mixtures of substituted 1,2,3-triazoles, respectively.” Spec. ¶ 36. Thus, the Specification is consistent with the Examiner’s previous interpretation of the claim recitation as referring to “a reaction product of a 4- or 5-substituted 1,2,3-triazole and a polymer having the recited structure,” i.e., the maleic anhydride structure reproduced in claims 11 and 22. Ideally, either the Examiner or the Appellant would have reproduced the previously agreed on claim interpretation advanced in the parent patent rather than proceed on appeal. But now that the record is clear as to the interpretation, we count the rejection as overcome and we reverse it as to the modified polymer recitation. Appeal 2019-002462 Application 15/018,221 7 The Markush Group Listing The composition of claims 11 and 22, in addition to the modified polymer, further includes an agent selected from a group and mixtures thereof. Claims 11 and 22. Appellant has not identified a reversible error in the Examiner’s rejection of the Markush group listing as indefinite. “A Markush group is a listing of specified alternatives of a group in a patent claim, typically expressed in the form: a member selected from the group consisting of A, B, and C.” Abbott Labs. v. Baxter Pharm. Prod., Inc., 334 F.3d 1274, 1280 (Fed. Cir. 2003). It is “a sort of homemade generic expression covering a group of two or more different materials (elements, radicals, compounds, etc.), mechanical elements, or process steps, any one of which would work in the combination claimed.” Id. (quoting Robert C. Faber, Landis on Mechanics of Patent Claim Drafting, § 50, 5A, VI–5–6 (4th ed. 2002)). Here, the Markush group is directed to “agents.” Claims 11 and 22. We interpret “agents” as compounds or substances. This is consistent with the Specification, which lists example agents like “conditioning agents, protecting agents, such as, for example, hydrosoluble, liposoluble and water- insoluble UV filters” and refers to these agents as, for instance, personal care/cosmetically acceptable additives. Spec ¶ 74. The Specification lists a vast number of “agents,” which are compounds or substances or classes of compounds and substances. See, e.g., Spec. ¶¶ 74–114. Appellant’s Markush group listing does not comport with the listing of additives and agents in the Specification. Instead, as pointed out by the Examiner, claims 11 and 22 list compositions in which the modified polymers are intended to be used. Ans. 4–5; see, e.g., Spec. ¶ 63 (“Polymers of the invention may be used in a wide variety of compositions such as in Appeal 2019-002462 Application 15/018,221 8 adhesives, agricultural, biocides, coatings, electronics, household-industrial- institutional (HI&I), inks, membranes, metal fluids, oilfield, paper, paints, plastics, printing, plasters, and wood-care compositions.”). As pointed out by Appellant, “agent” is a noun. Appeal Br. 23. But it is a noun referring to a compound or substance to be added to the composition. “The term ‘composition’ in chemistry is well-established. It generally refers to mixtures of substances.” PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1244 (Fed. Cir. 2002). An oilfield, recited in claim 11, is not itself a substance or compound added to a composition. Nor is the sun, recited in claim 22. Nor does Appellant use terms such as oilfield or sun to refer to compounds and substances. Appellant uses those terms to identify the end use for composition. See, e.g., Spec. ¶ 10 (“a wide variety of compositions comprising the novel modified polymers are provided including . . . . oilfield compositions”); Spec. ¶ 11 (“Personal care compositions refers to such illustrative non-limiting compositions as . . . sun care water-proof/resistance . . . compositions); Spec. ¶ 63 (“Polymers of the invention may be used in a wide variety of compositions such as in . . . oilfield . . . compositions.”); Spec. ¶ 66 (“Consumers can identify many of the compositions that serve the sun care area”). Appellant contends that “[a]n agent selected from ‘a hair, a skin, and a sun . . .’ means a hair agent, a skin agent, and a sun agent.” Appeal Br. 24. This argument is not persuasive for two reasons. First, the Markush listings do not add the word “agent” to the elements in the listings and the Specification does not define words such as “oilfield” and “sun” as oilfield agents or sun agents. Thus, the claims are not as precise as the subject matter reasonably permits. See In re Packard, 751 Appeal 2019-002462 Application 15/018,221 9 F.3d 1307, 1313 (Fed. Cir. 2014) (holding that an applicant is required to use language as precise as the subject matter reasonably permits). Second, Appellant agrees with the Examiner that a composition including an oilfield or a sun cannot be made. Appeal Br. 36. Thus, there is no real dispute that the claims are indefinite as written. Appellant points to the claim 11 limitation “wherein the composition further comprises an agent selected from the group consisting of an adhesive, an aerosol, an agricultural, . . . , an oilfield, . . . , and mixtures thereof” and states “[t]hese are appellants' compositions.” That is incorrect. Appellant’s composition is a mixture including a modified polymer and an agent or agents. The agents recited in the claims are not set forth with the type of precision necessary for the ordinary artisan to determine the scope of the claims because the elements listed as agents are not agents, i.e., substances or classes of substances). “During patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). That is, a patent applicant has the opportunity and responsibility to remove any ambiguity by amending the application. “Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” In re Zletz, 893 F.2d at 322; see also Halliburton Energy Servs. v. M-l LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that “the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.”). Appeal 2019-002462 Application 15/018,221 10 Here, the ordinary artisan in the art cannot determine the metes and bounds of the claims due to an inability to envision all of the compounds defined by the Markush groups. Thus, the claim language is not as reasonably precise as the circumstances permit and the Examiner’s rejection has given Appellant an opportunity to bring the necessary clarity to the claim language. Thus, the rejection is proper. See In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014) (Affirming an indefiniteness rejection because Packard had been given the opportunity to bring clarity to his claim language stating that “[i]n some cases it is difficult enough for courts to construe claims when the draftsperson has made every effort to be clear and concise, let alone when the claims have readily observable ambiguities or incoherencies within them.”). We sustain the Examiner’s rejection on the basis that the Markush groups are indefinite. CONCLUSION The Examiner’s decision to reject claims 11–20 and 22 is affirmed. DECISION SUMMARY In summary: Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed 11–20, 22 112, second paragraph Indefinite 11–20, 22 Appeal 2019-002462 Application 15/018,221 11 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation