Ex Parte Leclerc et al

Patent Trial and Appeal Board

Jul 24, 2013

10568303 (P.T.A.B. Jul. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARIO LECLERC and JEAN-FRANCOIS MORIN
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Appeal 2012-007258
Application 10/568,303
Technology Center 1600
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Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
JOHN G. NEW, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal
1
under 35 U.S.C. § 134 involving claims to a
carbazole polymer. The Examiner rejected the claims as failing to comply
with the written description requirement. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.

1
Appellants identify the Real Party in Interest as Université Laval
(see App. Br. 1).
Appeal 2012-007258
Application 10/568,303

2
Statement of the Case
The Claims
Claims 76, 77, 80, 81, 83, 84, and 106 are on appeal.
2
Claim 106 is
representative and reads as follows:
106. A polymer comprising the reaction product of a
compound selected from the group consisting of:
wherein R
1
is selected from the group consisting of methyl,
ethyl, propyl, isopropyl, cyclopropyl, butyl, sec-butyl,
tert-butyl, cyclobutyl, pentyl, cyclopentyl, hexyl,
cyclohexyl, heptyl, cycloheptyl, octyl, cyclooctyl, 2-
ethylhexyl, nonyl, decyl, phenyl, and 4-
octyloxyphenyl; and optionally 2,5-dioctyloxy-1,4-
diformylbenzene,
wherein the polymer comprises the following structure:

wherein n = 5-100.

2
Claims 78, 82, and 85 are objected to as being dependent upon a
rejected base claim.
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The issue
The Examiner rejected claims 76, 77, 80, 81, 83, 84, and 106 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement (Ans. 4-6)
The Examiner finds that the “original specification does not disclose
polymers comprising the following structures

wherein n=5-100 and variable R
1
is as defined in claim 106” (id. at 5). The
Examiner finds that the
definition of “polymer” that Applicants have referred to in
their arguments also clearly states that it is to be understood
that the polymers as described herein may be composed of
different monomeric units. There is no support present in the
originally filed specification that Applicants‟ intended
invention is drawn specifically to a polymer that has 5-100
monomeric units

(id. at 8).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner‟s conclusion that the claims encompass new
matter?

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Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. The Specification teaches “polymers of 2 functionalized and
2,7-difunctionalized carbazoles” (Spec. 1 ¶ 0002).
2. The Specification teaches carbazole structures including:

(see Spec. 3 ¶ 0011).
3. The Specification teaches that “R
1
is selected from the group
consisting of H, alkyl, and aryl” (Spec. 3 ¶ 0010).
4. The Specification teaches that the term “„alkyl‟ is intended to
include linear, branched and cyclic structures, as well as combinations
thereof, having up to carbon atoms. Non-limiting examples of alkyl groups
include methyl, ethyl, propyl, isopropyl, cyclopropyl, butyl, sec-butyl, tert-
butyl, cyclobutyl, pentyl, cyclopentyl, hexyl, cyclohexyl, heptyl,
cycloheptyl, octyl, cyclooctyl, 2-ethylhexyl, nonyl and decyl” (Spec. 11 ¶
0053).
5. The Specification teaches that “the term „polymer‟ is intended
to mean a molecule composed of a at least 5 linked monomer units;
preferably, 5 to 500 linked monomer units, and more preferably 5 to 100
linked monomer units. It is to be understood that the polymers as described
herein may be composed of different monomeric units” (Spec. 12 ¶ 0057).
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Principles of Law
“[I]t is the specification itself that must demonstrate possession. And
while the description requirement does not demand any particular form of
disclosure, ... or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement” Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1352 (Fed. Cir. 2010).
Analysis
The Examiner finds that the Specification does not provide descriptive
support for claim 106, and in particular finds “[t]here is no support present
in the originally filed specification that Applicants‟ intended invention is
drawn specifically to a polymer that has 5-100 monomeric units” (Ans. 8).
Appellants contend that “the original claims should be read in light of
the specification. For instance, paragraph [0057] defines the term „polymer‟ .
. . [t]he . . . definition explains that the „polymers‟ of original claims 101,
106, and 111, are „more preferably 5 to 100 monomer units.‟ From this,
Appellant concludes that these original claims support currently appealed
independent claim 106” (Reply Br. 3).
We find that Appellants have the better position. We agree with
Appellants that the express definition of the term “polymer” in the
Specification (FF 5) provides descriptive support for both homopolymers
and heteropolymers, when stating that the “polymers as described herein
may be composed of different monomeric units” (Spec. 12 ¶ 0057; FF 5).
The word “may” in that context indicates that ordinarily the word “polymer”
is understood to be a homopolymer, but that the Specification is open to
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heteropolymers as well. Therefore, the person of ordinary skill, reading
claim 106 in light of the express definition of the Specification, would have
found support for the homopolymers of claim 106 in the express language of
the Specification. We also agree with Appellants‟ discussion of the role of
the parenthesis in chemical structures (see, e.g., Reply Br. 4, 8).
Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that the claims encompass new matter.

SUMMARY
In summary, we reverse the rejection of claims 76, 77, 80, 81, 83, 84,
and 106 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement

REVERSED

cdc