Ex Parte Collins et al

Patent Trial and Appeal Board

Aug 5, 2013

12151242 (P.T.A.B. Aug. 5, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/151,242 05/05/2008 Warde T. Collins MSH-435 9452
8131 7590 08/05/2013
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
EXAMINER
YOON, TAE H
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
08/05/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CAPTUR, LLC
____________________

Appeal 2012-004738
Application 12/151,242
Technology Center 1700
____________________

Before FRED E. McKELVEY, RICHARD E. SCHAFER and
DEBORAH KATZ, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

Statement of the case
Captur, LLC (“applicant”), the real party in interest (Brief, page 2), 1
seeks review under 35 U.S.C. § 134(a) of a final rejection dated 19 May 2
2011. 3
The application on appeal was filed in the USPTO on 05 May 2008. 4
The application has been published as U.S. Patent Application 5
Publication 2009/0274634 A1. 6

Appeal 2012-004738
Application 12/151,242

2

While the Examiner entered rejections based on the prior art, we do 1
not reach those rejections. Accordingly, we do not set out the prior art 2
relied upon by the Examiner. 3
We have jurisdiction under 35 U.S.C. § 134(a). 4
Claims on appeal 5
Claims 12-16, 22-26, 30-33, 82, and 124. Brief, page 3; Answer, 6
page 3. All other claims in the application on appeal have been withdrawn 7
from consideration. 8
The rejections 9
In the Answer, the Examiner has maintained the following rejections: 10
Rejection 1: All the claims on appeal stand rejected under the first 11
paragraph of 35 U.S.C. § 112 based on a lack of enablement 12
commensurate in scope with the breadth of the claims. Answer, page 5. 13
Rejections 2 and 3: Some, but not all, of the claims on appeal stand 14
rejected under § 103 over the prior art. Answer, pages 6 and 8. 15
Invention 16
There are three independent claims on appeal: Claims 12, 82, and 17
124. The narrowest claim is Claim 12. 18
Claim 12, which we reproduce from the Claim Appendix of the Brief 19
(pages 27-28), reads [some indentation added]: 20
A process for preparing a crosslinked polymer 21
that is chemically bonded to the surface of a siliceous 22
substrate, said process consisting essentially of: 23

Appeal 2012-004738
Application 12/151,242

3

(I) heating a predetermined amount of water in a 1
reaction vessel with stirring; 2
(II) adding a predetermined amount of a hydrolysis 3
catalyst that is an organic acid, said organic acid 4
having from 1 to 7 carbon atoms; 5
(III) adding a predetermined amount of a siliceous 6
substrate having reactive silanols; 7
(IV) adding a predetermined amount of silane to provide 8
a silane linking material, said silane being an 9
alkoxy-functional silane having the general formula: 10
(RO)3SiQX 11
wherein R is a hydrocarbon group having from 1 to 12
6 car atoms, Q is a hydrocarbon group having from 13
0 to 6 carbon atoms, X is a functional group 14
selected from the group consisting of epoxy, 15
halogen, methacrylate, vinyl amine, allyl, 16
phosphonate, styrlamine, and sulfide; 17
(V) adding a predetermined amount of silanol 18
condensation catalyst; 19
(VI) adding a predetermined amount of polymer, said 20
polymer being selected from the group consisting 21
of: 22
(i) a water soluble polymer, 23
(ii) a water soluble copolymer, 24

Appeal 2012-004738
Application 12/151,242

4

(iii) an alcohol soluble polymer 1
(iv) an alcohol soluble copolymer, and 2
(v) combinations of (1) to (iv), 3
(VII) additionally stirring the combination of the 4
components of (I) to (VI) for a period of time of 15 5
hours or less at a temperature of 100 ºC or less, 6
wherein the incipient silane1 is present in the 7
amount of 0.1 to 25 weight percent based on the amount 8
of siliceous substrate and 9
wherein the incipient silane is present in an excess 10
with regard to the total amount of reactive silanol groups 11
of the siliceous substrate. 12
Claim 82 is broader than, but similar to, Claim 12 except that it 13
eliminates step (II) which appears in Claim 12. 14
Claim 124 is the broadest claim and is similar to Claim 12 except that 15
it eliminates both steps (II) and (V) which appear in Claim 12. 16
Applicant argues Claims 12-16, 22-26 and 30-33 as a group. Brief, 17
page 10. Accordingly, we decide the appeal of Rejection 1 on the basis of 18
independent Claim 12. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 82 and 19
124 are separately addressed. 20

1 The claim contains no antecedent basis for the phrase “incipient silane”
and therefore the claim is facially indefinite. In the event of further
prosecution, we recommend that any indefiniteness based on a lack of an
antecedent be corrected.

Appeal 2012-004738
Application 12/151,242

5

Analysis 1
The § 112 enablement rejection 2
The Examiner determined that the Specification enabled some of the 3
subject matter of Claim 12 (and therefore some of the subject matter within 4
the scope of Claims 82 and 124). 5
In particular, a process where steps (I) through (VII) are carried out in 6
sequence was found enabling. Answer, page 5. What gave the Examiner 7
pause were processes otherwise covered by Claim 12. Id. For example, 8
the Examiner found that steps (I), (II), (III), (V) and (VI) can be performed 9
simultaneously followed by step (IV). Id. As a result, the Examiner 10
reasoned that the product produced by the process of Claim 12 is a 11
function of the order in which the steps are carried out. Id. at 5-6. 12
Applicant’s response to the Examiner’s reasoning is that “[t]he steps 13
enumerated in . . . [C]laim 12 are in . . . [the] order [set out in the claim] for 14
a very good reason.” Brief, page 12. However, Claim 12 does not limited 15
to a process where steps (I) through (VII) are carried out in the sequence 16
set out in the claim. Applicant urged the Examiner, and urges us, to read 17
limitations in the Specification into Claim 12. Brief, page 12. 18
Where necessary, a claim may be interpreted in light of a 19
specification. However, limitations in a specification are not read into a 20
claim. In re Prater, 415 F.2d 1393, 1405 (CCPA 1969) (“We are not 21
persuaded by any sound reason why, at any time before the patent is 22
granted, an applicant should have limitations of the specifications read into 23
a claim where no express statement of the limitation is included in the 24

Appeal 2012-004738
Application 12/151,242

6

claim.”); In re van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (same); In 1
re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (same). 2
Applicant says (Brief, page 12) that the Specification describes a 3
sequential process (page 4:9-31) (matter in brackets and italics added): 4
In another embodiment, there is a process for preparing a 5
crosslinked polymer that is chemically bonded to the surface of 6
a siliceous substrate. The process comprises [step I] heating a 7
predetermined amount of water in a reaction vessel with 8
stirring. Thereafter, [step 2] adding a predetermined amount of 9
a hydrolysis catalyst that is an organic acid, the organic acid 10
having from 1 to 7 carbon atoms. 11
Thereafter there is [step III] added a predetermined 12
amount of a siliceous substrate having reactive silanols and 13
then [step IV] adding a predetermined amount of silane 14
coupling agent to provide a silane linking material. The silane 15
is an alkoxy-functional silane having the general formula 16
(RO)3SiQX 17
wherein R is a hydrocarbon group having from 1 to 6 carbon 18
atoms, Q is a hydrocarbon group having from 0 to 6 carbon 19
atoms, and X is a functional group selected from the group 20
consisting of epoxy, halogen, methacrylate, vinyl, amine, allyl, 21
phosphonate, styrlamine, and sulfide. 22
A predetermined amount of silanol condensation catalyst 23
is [step V] added along with [step VI] a predetermined amount 24

Appeal 2012-004738
Application 12/151,242

7

of polymer, the polymer being selected from the group 1
consisting essentially of a water soluble polymer, a water 2
soluble copolymer, an alcohol soluble polymer, an alcohol 3
soluble copolymer, and combinations of such polymers. 4
Thereafter the combination is stirred for a period of time 5
of 15 hours or less at a temperature of 100 ºC. or less, wherein 6
the incipient silane is present in the amount of 0.1 to 25 weight 7
percent based on the amount of siliceous substrate and 8
wherein the silane is present in an excess with regard to the 9
total amount of reactive silanol groups of the siliceous 10
substrate. 11
Applicant invited the Examiner, and invites us, to read the italicized 12
words from the Specification as limitations to be incorporated into Claim 12. 13
We decline the invitation. Apart from the phrase “incipient silane”, there is 14
nothing ambiguous about Claim 12. A precise meaning of “incipient silane” 15
does not need to be determined to resolve the issues involved in this 16
appeal. No other word or phrase needs to be interpreted to determine the 17
plain meaning of Claim 12. Accordingly, there is no reason to consult the 18
Specification to understand the scope and breadth of Claim 12. In re 19
Prater, supra. 20
Applicant maintains that the Examiner “does not understand the 21
chemistry of this invention.” Brief, page 13. We disagree. The Examiner 22
understood that a sequential process is enabled, but found that if the 23
process is not performed sequentially products are produced which differ 24

Appeal 2012-004738
Application 12/151,242

8

from those be made by a sequential process. Answer, page 11. What 1
applicant really maintains is that the Examiner does not agree with 2
applicant because the Examiner declined to accept applicant’s invitation to 3
read specification limitations into Claim 12. To the extent that applicant, 4
through argument of counsel without pointing to evidence in the record, 5
attempts in the Brief (e.g., pages 13 and 15) to explain silicon technology, 6
we observe that the argument of counsel cannot take the place of evidence 7
in the record. In re Walters, 168 F.2d 79, 80 (CCPA 1948). 8
We are at a loss as to why applicant in response to the Examiner’s 9
rejection did not insert into Claim 12 (as well as the other independent 10
claims: Claim 82 and Claim 124) the italicized words appearing in that part 11
of the Specification which we quote above. Had applicant done so, 12
applicant would have claims that cover the invention that applicant says in 13
the Brief it seeks to protect and this appeal might have been avoided. 14
Moreover, by inserting the italicized words into the independent claims on 15
appeal, applicant would be claiming precisely what it regards as its 16
invention. See 35 U.S.C. § 112, second paragraph. It appears to us that 17
what applicant seeks to cover is a sequential process. Moreover, insertion 18
of the italicized words would eliminate possible ambiguities in any post-19
grant licensing discussions or infringement actions. See In re Zletz, at 321. 20
The decision of the Examiner rejecting the claims on appeal based on 21
a lack of enabling disclosure commensurate in scope with the breadth of 22
the claims (Rejection 1) is affirmed. 23

Appeal 2012-004738
Application 12/151,242

9

Other arguments 1
We have considered applicant’s remaining arguments and find 2
none that warrant reversal of the Examiner’s § 112 enablement rejection. 3
Cf. In re Antor Media Corp., 689 F.3d 1282, 1294 (Fed. Cir. 2012). 4
Other rejections 5
Affirmance of the § 112 enablement rejection disposes of the appeal. 6
Hence, we do not reach the rejections based on the prior art (Rejections 2 7
and 3). Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC 8
having decided a dispositive issue, there was no need for the Commission 9
to decide other issues decided by the presiding officer). 10
Decision 11
Upon consideration of the appeal, and for the reasons given herein, it 12
is 13
ORDERED that Rejection 1 based on a lack of an enabling 14
disclosure is affirmed. 15
FURTHER ORDERED that we do not reach and voice no 16
opinion on Rejections 2 and 3 based on the prior art. 17
FURTHER ORDERED that no time period for taking any 18
subsequent action in connection with this appeal may be extended under 19
37 C.F.R. § 1.136(a)(1)(iv). 20
AFFIRMED 21
22
23
cam 24