Ex Parte Choi et al

Board of Patent Appeals and Interferences

Feb 20, 2009

10467056 (B.P.A.I. Feb. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIN-SUK CHOI, YOUNG-WHI PARK, YANG-LAE CHO,
SEOUNG-LYONG SONG, DAE-YOUNG KWON, HYOUNG-JAE KIM,
SUNG-HO KIM, AND DEA-UP KIM
____________

Appeal 2009-0232
Application 10/467,056, 1
Technology Center 1700
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Heard: 11 February 20092
Decided: 3 February 23, 2009
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1 Application 10/467,056, Molded Material Comprising Thermoplastic
Polyurethane Consisting of Ether-Containing Polyester Polyol and Method
Thereof, and Product Therethrough, filed 20 January 2004 as the national
stage under 35 U.S.C. § 371 of international application PCT/KR01/02074,
field 30 November 2001. The Specification is referred to as the
“056 Specification,” and is cited as “Spec.” The real parties in interest are
listed as Hyundai Mobis Co. and Hosung Chemax Co., Ltd. (Supplemented
Appeal Brief under 37 C.F.R. § 41.37, filed 28 January 2008 (“Br.”), 4.)
2 See the transcript prepared by the Court Reporter, of record.
3 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0232
Application 10/467,056

Before BRADLEY R, GARRIS, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
A. Introduction
Jin-suk Choi, Young-whi Park, Yang-lae Cho, Seoung-lyong Song,
Dae-young Kwon, Hyoung-jae Kim, Sung-ho Kim, and Dea-up Kim
(“Choi”) timely appeal under 35 U.S.C. § 134(a) from the final rejection4 of
claims 11-21, 24, 25,5 which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(a). We AFFIRM two grounds of rejection
for indefiniteness and we REVERSE all the remaining rejections. As the
two grounds AFFIRMED cover all the appealed claims, we denominate our
Decision an AFFIRMANCE.
The subject matter on appeal relates to molded thermoplastic
polyurethanes and similar materials made from an ether-containing polyester
polyol.

4 Office Action mailed 17 March 2006 (“Final Rejection,” cited as “FR”).
5 Claims 22 and 23 have been withdrawn from consideration and are not
before us. It should be noted, however, that appealed claim 24 depends from
claim 22, and claim 25 depends from claim 24.
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Appeal 2009-0232
Application 10/467,056

Representative claims 11 and 24, reproduced from the Claims
Appendix of Choi’s principal Brief on Appeal, read as follows:
Claim 11
A thermoplastic polyurethane comprising an ether-containing
polyester polyol prepared by mixing
(a) 15-60 parts by weight of one or more diisocyanate
compounds selected from biphenylmethane diisocyanate
(MDI), toluene diisocyanate (TDI), hexamethylene
diisocyanate (HDI) and dicyclohexylmethane
diisocyanate (H12MDI),
(b) 30-70 parts by weight of an ether-containing
polyester polyol; and
(c) 5-40 parts by weight of one or more chain extenders
selected from diols and triols; and condensing a resultant
mixture;
wherein the ether-containing polyester polyol is prepared by
mixing
(i) 40-80 parts by weight of one or more multifunctional
carboxylic acids selected from adipic acid, suberic acid,
abietic acid, azelaic acid, sebacic acid, dodecandioic acid
and benzene-1,3,5-tricarboxylic acid, and
(ii) 20-100 parts by weight of a polytetramethylene ether
glycol containing one or more multifunctional alcohol
compounds which have a hydroxyl value of from 561.0
to 56.1 mg KOH/g and are selected from diols and triols,
and reacting a resultant mixture,
thereby affording a hydroxyl value of from 224.11 to
11.22 mg KOH/g.
(Claims App., Br. 20.)
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Application 10/467,056

Claim 24
A molded material comprising the ether-containing polyester
polyol of claim 22.6
(Claims App., Br. 22.)
The Examiner has maintained the following grounds of rejection:7
A. Claims 11-21, 24, and 25 stand rejected under
35 U.S.C. § 112(1) for lack of an enabling disclosure for the
full scope of the claims, in that persons having ordinary skill in
the art could not make thermoplastics using moldable triols and
benzene 1,3,5-tricarboxylic acid in all the amounts recited.
(Ans. 3-6.)
B. Claims 11-21, 24, and 25 stand rejected under
35 U.S.C. § 112(1) for lack of an adequate written description
of the terms “suberic acid,” “abietic acid,” and “benzene-1,3,5-
tricarboxylic acid.”
C. Claims 24 and 25 stand rejected under 35 U.S.C. § 112(1) for
lack of an enabling disclosure of molded compositions other
than molded polyurethanes based on the novel ether-containing
polyester polyol.
D. Claims 11-21, 24, and 25 stand rejected under
35 U.S.C. § 112(2) as being indefinite in the term “parts by
weight.”8

6 The process recited in claim 22 is the process recited in the latter half of
claim 11.
7 Examiner’s Answer mailed 27 November 2007 (“Ans.”).
8 The rejection of claim 25 as indefinite in the term “at least one of a pellet
and a particle” has been withdrawn. (Ans. 2.)
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Application 10/467,056

B. Discussion
Rejection A
Choi argues that the Examiner has misconstrued the claims by failing
to recognize that they are limited to thermoplastic materials, and that it is
well-known in the art to avoid excessive amounts of cross-linking materials
in such formulations. (Br. 9-10.)
The Examiner responds that an analysis of each of the factors set out
in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), shows that the claims
are not enabled for their full scope, which includes high amounts of higher
than difunctional reactants. (Ans. 3-6.)
The difficulty with the Examiner’s argument is that it is inconsistent
with the assumptions on which it is based. If, as the Examiner appears to
presume, the claims are limited to thermoplastic polyurethanes (or, more
broadly, in the case of claim 24, moldable materials), and if it is well known
that too many trifunctional agents will lead to thermosets due to the reaction
mechanism (Ans. 5), then it follows that those skilled in the art would not
require undue experimentation to determine maximum amounts of
trifunctional materials compatible with the thermoplastic or moldable
products.
The Examiner’s argument is based on reading the claims being limited
to thermoplastic materials, but also as covering materials made from so
much trifunctional agents that the product would not be expected to be
thermoplastic. We observe, however, as did counsel at oral argument,9 that
there is no doubt that the compositions are enabled for highly cross-linked

9 This Decision and Opinion was mailed before the transcript was available.
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Appeal 2009-0232
Application 10/467,056

thermoset materials. In any event, such a reading is not apparent from the
supporting disclosure or Choi’s arguments during prosecution. As our
reviewing court explained long ago in words that apply to the facts
underlying this appeal:
many patented claims read on vast numbers of inoperative
embodiments in the trivial sense that they can and do omit
factors which must be presumed to be within the level of
ordinary skill in the art, and therefore read on embodiments in
which such factors may be included in such a manner as to
make the embodiments inoperative. There is nothing wrong
with this so long as it would be obvious to one of ordinary skill
in the relevant art how to include those factors in such manner
as to make the embodiment operative rather than inoperative.
In re Cook, 439 F.2d 730, 735 (CCPA 1971) (internal quote and citation
omitted).
We REVERSE Rejection A, for lack of enablement.
Rejection B
The Examiner’s Rejection B, for “new matter,” is based on the
substitution, during prosecution, of the terms —suberic acid— for “sbelic
acid”, —abietic acid— for “abelic acid”, and —benzene-1,3,5-tricarboxylic
acid— for “trimeric acid”.
Whether the written description requirement has been met is a
question of fact. In re Alton, 76 F.3d 1168, 1171-72 (Fed. Cir. 1996). Our
reviewing court has explained that “[t]he description must clearly allow
persons of ordinary skill in the art to recognize that [the applicant] invented
what is claimed.” In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989).
Choi argues that these are merely spelling corrections, in the first two
instances, and in the last instance, the substitution of the IUPAC
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Appeal 2009-0232
Application 10/467,056

[International Union for Pure and Applied Chemistry, an international
nomenclature and standards setting institution] name for a well-known
synonym. (Br. 12-13.)
The Examiner maintains that Choi has failed to provide adequate
evidentiary support for the corrections. (Ans. 7.) The Examiner also draws
our attention to an excerpt from the STN Registry database, showing that
“trimeric acid” is not listed as a synonym for benzene-1,3,5-tricarboxylic
acid, although “trimesic acid” is so listed. (Ans. 13.)
In the Reply Brief,10 Choi, responds with a reproduction of a
description of “trimeric acid” said to be taken from the Anadev
Chemicals, Ltd. website,
http://www.anadev.com/index.htm
indicating that “trimeric acid” is used as a synonym for benzene-1,3,5-
tricarboxylic acid. (Reply Br. 5.)
Consultation of chemical dictionaries and similar sources shows that
suberic acid is a linear dicarboxylic acid, (HOOC)(CH2)6(COOH). Suberic
acid is therefore a multifunctional acid, as recited in the original claim
language. Abietic acid, however, is shown to be a monocarboxylic acid,
having the formula C19H29COOH, based on a phenanthrene ring system.
Thus, abietic acid is not a multifunctional acid.
We have no difficulty accepting the substitution of —suberic acid—
for “sbelic acid” as the correction of an obvious typographical error, wherein

10 Reply Brief under 37 C.F.R. § 41.41(a)(1) filed 28 January 2008, cited as
“Reply Br.”
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both the existence of the error and the proper correction would have been
immediately apparent to a chemist skilled in the art.
In contrast, however, we cannot accept —abietic acid— as an obvious
correction, although we do not doubt that “abelic acid” is an error. The
problem is that abietic acid would not have been recognized as the correct
replacement in the claim, because it is not a multifunctional acid. Abietic
acid is simply not a chemically plausible candidate.
The proposed “correction” of “trimeric acid” is problematic. The
difficulty is that the term “trimeric acid” is on its face generic to a wide
variety of compounds, including trimers of acids as well as tri-acids such as
benzene-1,3,5-tricarboxylic acid, as provided by Anadev Chemicals. Many
of these compounds are multifunctional acids usable for making ether-
containing polyester polyols. On the present record, there is no evidence
that those skilled in the relevant arts would have recognized that no other
trimeric acid was intended. We note there is no testimony, for example,
from the inventors or someone knowledgeable in the art indicating that the
original term was recognized in the relevant technical community as
exclusively benzene-1,3,5-tricarboxylic acid.
Thus, the preponderance of the evidence of record, is not sufficient to
prove that those skilled in the art would have recognized that abietic acid
and benzene-1,3,5-tricarboxylic acid were the compounds originally
disclosed in the 056 Specification.
Accordingly, we REVERSE the rejection of “suberic acid” as new
matter, and we AFFIRM the rejections of “abietic acid” and “benzene-1,3,5-
tricarboxylic acid” as new matter.
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Rejection C
Choi argues that the Examiner erred in rejecting claims 24 and 25 as
lacking an enabling disclosure because polyester polyols are a well known
class of materials useful for making a variety of polymers other than
polyurethanes, as shown by an article provided from the literature.
(Br. 14-15.)
The Examiner walks through the Wands criteria and contends, inter
alia, that the prior art fails to teach how to use the particular polyester polyol
recited in the appealed claims. The Examiner contends, notwithstanding that
“[w]ithin the art, the use of polyester polyols to produce different polymers
is generally known,” (Ans. 8) no meaningful connection has been
established with Choi’s polyester polyols, and that “to suggest that the
article provides the necessary enablement is purely speculative.” (Ans. 9.)
The Examiner’s position is without merit. It is the Examiner’s burden
to explain why the particular class of compounds recited in the appealed
claims would have posed such problems to those of ordinary skill in the art
that undue experimentation would have been required to use the compounds
in the manner required by the claims. The mere fact that a compound having
known functional groups is novel does not establish that its reactivity is so
different from other compounds having those functional groups that undue
experimentation would have been required to use it. Indeed, in the absence
of special circumstances, the same functional groups would be expected to
have the same reactivity. The Examiner has failed to show that the claimed
subject matter is constrained by any special circumstances.
We REVERSE Rejection C.
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Application 10/467,056

Rejection D
Choi contends that the Examiner erred in rejecting all the claims as
indefinite in the term “parts by weight” because, as used in the claims, the
parts by weight indicate relative weight ratios of the various components,
and, as such, do not require any basis. (Br. 16.)
The Examiner contends that, because the claims are open to additional
components, distinctly different compositions may be encompassed by the
claims. (Ans. 11.)
Long ago, the predecessor to the Federal Circuit explained that
"[b]readth is not to be equated with indefiniteness." In re Miller, 441 F.2d
689, 693 (CCPA 1971). The Examiner’s concerns relate to the breadth of
the claims. But breadth is not ambiguity. Claim 11 reads on any
thermoplastic polyester made from components meeting all the limitations
(a), (b), and (c). The presence of additional components, so long as the
material can be called, by those skilled in the art, a thermoplastic
polyurethane, is immaterial.
We REVERSE Rejection D.
D. Order
We REVERSE Rejection A of claims 11-21, 24, and 25 under
35 U.S.C. § 112(1).
We AFFIRM Rejection B of claims 11-21, 24, and 25 under
35 U.S.C. § 112(1) for lack of an adequate written description of the terms
“abietic,” and “benzene-1,3,5-tricarboxylic” acids.
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Application 10/467,056

We REVERSE Rejection B of claims 11-21, 24, and 25 under
35 U.S.C. § 112(1) for lack of an adequate written description of the term
“suberic acid.”
We REVERSE Rejection C of claims 24 and 25 under
35 U.S.C. § 112(1) for lack of an enabling disclosure of molded
compositions other than molded polyurethanes.
We REVERSE Rejection D of claims 11-21, 24, and 25 under
35 U.S.C. § 112(2).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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