Ex Parte Wang et al

Board of Patent Appeals and Interferences

Feb 23, 2007

09918584 (B.P.A.I. Feb. 23, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIN-SHAN WANG,
HUIJUAN CHEN and
STEVEN EVANS

____________

Appeal 2006-2739
Application 09/918,584
Technology Center 1700
____________

Decided: February 23, 2007
____________

Before EDWARD C. KIMLIN, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal from the Examiner’s final rejection of claims 1, and
10-18 and the Examiner’s objection to claims 11-13. For the reasons
explained below, our jurisdiction extends only to the rejection of claims 1,
and 10-18. See 35 U.S.C. § 134(a) (2006).
With respect to the rejection, we reverse.
Appeal 2006-2739
Application 09/918,584

BACKGROUND
The claims are directed to an ink jet ink composition. The
composition contains water, a humectant, and a hyperbranched polymeric
dye. Claim 1 is illustrative of the subject matter on appeal:
1. An ink jet ink composition comprising water, a
humectant, and a water-soluble hyperbranched polymeric
dye comprising a hyperbranched polymer having a dye
chromophore and a hydrophilic group incorporated into
the polymer base chain.

The Examiner rejects claims 1, and 10-18 under 35 U.S.C. § 112, ¶ 1
on the grounds that the claims fail to comply with the written description
requirement of the statute. Specifically, the Examiner finds no support in
the original Specification for “water-soluble” and “a hydrophilic group” as
those terms are used in claim 1, the only independent claim.
The Examiner also objects to claims 11-13 under 37 C.F.R. § 1.75(c)
as being of improper dependent form for failing to further limit the subject
matter of a previous claim.

DISCUSSION
With regard to the rejection under 35 U.S.C. § 112, ¶ 1, Appellants
contend that the general discussion of the polymers as well as specific
examples of water-soluble polymers and hydrophilic groups in the
Specification provide support for the claimed subject matter (Br. 6). The
Examiner contends that support is limited to the specific hydrophilic groups
and water-soluble polymers disclosed and that support does not extend
broadly to all hydrophilic groups and all water-soluble polymers as claimed
(Answer 4-5 and 10).
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Appellants further contend that the objection to claims 11-13 under
37 C.F.R. § 1.75(c) is properly appealed because the objection should have
been made as a rejection under 35 U.S.C. § 112, ¶ 2 (Br. 2). The Examiner
contends that this issue relates to petitionable subject matter under 37 C.F.R.
§ 1.181 and is not appealable (Answer 3).
Therefore, this appeal presents us with two issues:
1. Is there adequate written descriptive support for “water-
soluble” and hydrophilic” as those terms are used in claim 1?
and
2. Do we have jurisdiction to review the objection under 37 C.F.R.
§ 1.75(c)?
The Issue of Adequate Written Descriptive Support
The issue of adequate written descriptive support under 35 U.S.C.
§ 112, ¶ 1 is a factual question which must be decided on a case-by-case
basis.
We find the following facts:
Claim 1 is directed to an ink composition including, among other
things, a water-soluble hyperbranched polymeric dye. The dye comprises “a
hyperbranched polymer having a dye chromophore and a hydrophilic group
incorporated into the polymer base chain.”
The Specification discloses two embodiments of the hyperbranched
polymer, one in which the dye chromophore is attached to the polymer
backbone as a pendant group (Specification 4:20 to 6:16), and another in
which the dye chromophore is incorporated into the polymer backbone
(Specification 6:17 to 9:2).
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Application 09/918,584

Before Appellants inserted “and a hydrophilic group” into the claim
and changed “backbone” to “base chain” (see Amendment of July 2, 2004),
the claim read “a dye chromophore incorporated into the polymer
backbone,” as is consistent with the second embodiment of the polymer
described in the Specification.
To support their arguments, Appellants rely upon the portions of the
Specification directed to the second embodiment, namely the Specification
at page 6, line 22 to page 7, line 12; the specific structures on pages 8 and 9;
and the Examples at page 11, line 19 to page 12, line 29.
The Specification describes ink jet ink compositions. The inks are
dye-based. According to the Specification “[a] dye is a colorant which is
dissolved in the carrier medium.” (Specification 2:12-13). Appellants’
carrier medium is water (Claim 1). The Specification discloses that
polymeric dyes were known in the art and their solubility is tunable
(Specification 3:4-7). The Specification discloses that for the polymeric dye
of the invention “[a]ny hyperbranched polymer may be used” (Specification
4:5-7) and then further discloses that those in a copending application
entitled “Water Soluble and Dispersible Highly Branched Polyamides” may
be used (Specification 4:14-19). Then the Specification describes preferred
embodiments of polymers having a variety of chemical groups, including
carbonyl groups, groups the Examiner acknowledges are hydrophilic
(Specification 6:22 to 7:2) and generic classes of polymers such as
polyamides, polyesters, polyethers, etc. (Specification 7:13-16) which
contain hydrophilic groups and can be water-soluble as well as chemical
specific species containing hydrophilic groups (Specification 8-9).
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Application 09/918,584

The Specification describes both a broader genus, i.e., “any
hyperbranched polymer,” and narrower subgenera of the claimed water-
soluble variety having a hydrophilic group in the backbone or base chain.
We next turn to the relevant principles of law.
“The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of the later claimed subject matter.” In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The examiner bears the
initial burden of presenting a prima facie case of lack of written descriptive
support. In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir.
1996) (quoting In re Wertheim, 541 F.2d at 263, 191 USPQ at 97.).
It is well settled that the “disclosure of a species may be sufficient
written descriptive support for a later claimed genus including that species.”
Bilstad v. Wakalopulos, 386 F.3d 1116, 1124, 72 U.S.P.Q.2d 1785, 1791
(Fed. Cir. 2004). There are several exceptions to that general rule. If the
difference between members of the group is such that the person skilled in
the art would not readily discern that other members of the genus would
perform similarly to the disclosed members, i.e., if the art is unpredictable,
then disclosure of more species is necessary to adequately show possession
of the entire genus. Id., at 1125, at 1791. Additionally, there is no support if
the specification specifically distinguishes the prior art as inferior and touts
the advantages of the species. Such statements make clear that the written
description discloses only the species and nothing broader. Id.
As a first matter, we interpret the clause “incorporated into the
polymer base chain” as modifying both the dye chromophore and the
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hydrophilic group recitations. This is consistent with the amendment history
of the claim and the arguments of Appellants. We, therefore, conclude the
claims are limited to the second embodiment in which the chromophore dye
is incorporated into the polymer backbone. Because the claim is limited to
the second embodiment, we place more weight on the disclosure of the
second embodiment than on the disclosure of the first embodiment in our
review of the question of whether there is written descriptive support of the
subject matter of claim 1. We consider the Specification as a whole
weighting various disclosures as appropriate.
We find that the Examiner did not meet the burden of establishing a
prima facie case of lack of written descriptive support under 35 U.S.C.
§ 112, ¶ 1. The rejection never truly discussed the understandings of
persons skilled in the art and did not adequately answer the question of
whether the written description would reasonably convey to a person skilled
in the art that Appellants had possession of the claimed subject matter at the
time of filing. The Examiner did not address any indicia of lack of written
description such as unpredictability in the art.
The tenor of the Specification suggests not only that a wide range of
hyperbranched polymers can be used including those with hydrophilic and
hydrophobic groups, but that a variety of water-soluble ones are
contemplated. This is evidenced by the disclosure that “any hyperbranched
polymer may be used,” a disclosure suggesting a large genus, and by the
variety of subgenus disclosures including water-soluble polyamide, classes
of polymers which include hydrophilic groups such as polyamides,
polyesters, and polyethers, the generic formula M1-R7-M2m wherein R7 can
be a carbonyl group, and the specific polymers depicted on pages 8 and 9
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which include hydrophilic groups. The Specification immediately conveys
to one of ordinary skill in the ink jet ink art the knowledge that Appellants
invented inks including water-soluble hyperbranched polymers containing
hydrophilic groups in the backbone and the Examiner has not presented
evidence sufficient to show that those of ordinary skill in the art would think
otherwise.
In conclusion, we find that the Examiner has failed to establish a lack
of adequate written descriptive support for “water-soluble” and
“hydrophilic” as those terms are used in claim 1.
The Objection under 37 C.F.R. § 1.75(c)
The Examiner objected to claims 11-13 under 37 C.F.R. § 1.75(c) on
the grounds that these claims are of improper dependent form because they
fail to further limit the subject matter of a previous claim. Appellants
contend that the objection is reviewable on appeal because the objection
should have been made as a rejection under 35 U.S.C. § 112, ¶ 2.
35 U.S.C. § 134(a) states that “[a]n applicant for a patent, any of
whose claims has been twice rejected, may appeal from the decision of the
primary examiner to the Board of Patent Appeals and Interferences.”
(emphasis added). 35 U.S.C. § 132 specifically separates objections and
requirements from rejections in its statement that “[w]henever, on
examination, any claim for a patent is rejected, or any objection or
requirement made, the Director shall notify the applicant thereof.”
Objections and requirements are not subject to appeal, they are petitionable
matters. 37 C.F.R. § 1.181 (2006).
Claims 11-13 have not been rejected, they have been objected to on
the basis that they are in improper form. Such an objection is properly the
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basis for review by petition to the Director rather than by appeal to the
Board. The question of whether or not the Examiner should have made a
rejection under 35 U.S.C. § 112, ¶ 2 is a moot point. No such rejection was
made and, therefore, there is no such rejection for us to review.

CONCLUSION
In summary, we reverse the decision of the Examiner with respect to
the rejection of claims 1, and 10-18 under 35 U.S.C. § 112, ¶ 1. We do not
have jurisdiction to review the objection under 35 C.F.R. § 1.75(c) and,
therefore, we have not reviewed the issues arising from the objection.

REVERSED

tf/cam

Paul A. Leipold
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester, NY 14650-2201
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