Ex Parte Cote et al

Patent Trial and Appeal Board

Jun 15, 2016

12815688 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/815,688 06/15/2010 Adrien P. Cote
76113 7590 06/17/2016
PILLSBURY WINTHROP SHAW PITTMAN, LLP (Xerox)
XEROX CORPORATION
P .0 . BOX 10500
MCLEAN, VA 22102
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20090760US01-430458 1898
EXAMINER
POLLEY, CHRISTOPHER M
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
06/17/2016 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADRIEN P. COTE and MATTHEW A. HEUFT
Appeal 2014-004101 1
Application 12/815,6882
Technology Center 1700
Heard: June 7, 2016
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 3
1 A copy of the transcript of the oral hearing will be made of record upon its
availability.
2 According to Appellants, the real party in interest is Xerox Corporation.
Appeal Br. 1.
3 Our decision refers to Appellants' Specification (Spec.) filed June 15,
2010, the Examiner's Final Office Action (Final Act.) of February 15, 2013,
Appellants' Appeal Brief (Appeal Br.) filed August 14, 2013, the
Examiner's Answer (Ans.) of December 19, 2013, and Appellants' Reply
Brief (Reply Br.) filed February 19, 2014.
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Application 12/815,688
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision finally rejecting claims 1, 6, 7, 9, 13, 14, 17-19, 22, 26,
27, and 29-31. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
The invention relates to an ordered (periodic) structured organic film
(SOP) comprising a plurality of segments and a plurality of linkers arranged
as a covalent organic framework (COP) that is a film at a macroscopic level.
Spec. i-f 7; claim 1. Appellants disclose that a COP is a network at the
microscopic or molecular level formed from molecular building blocks
linked to each other through strong covalent bonds to form two- or three-
dimensional networks. Spec. i-fi-1 5 and 17. According to Appellants, COFs
previously synthesized are typically powders, whereas SOFs are not
collections of particles. Spec. i-f 17. Instead, Appellants disclose SOFs are
macroscopically substantially defect-free continuous COFs that can extend
over large length scales such as much greater than a millimeter to hundreds
of meters. Id.
Claim 1, reproduced below from the Claims Appendix to Appellants'
Appeal Brief, is illustrative of the subject matter on appeal:
1. A structured organic film (SOP) comprising
a plurality of segments including at least a first segment
and
a plurality of linkers including at least a first linker,
wherein
the plurality of segments and plurality of linkers are
arranged as a covalent organic framework (COP) that is a
film at a macroscopic level,
the first segment and/or the first linker comprises at
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least one atom that is not carbon, and
the SOP has a periodicity that is detectable by two-
dimensional X-ray scattering.
Claim 22, the remaining independent claim on appeal, similarly recites a
structured organic film, but specifically specifies that one or both of the first
segment and first linker comprises a hydrogen, i.e., not carbon.
REJECTIONS ON APPEAL
A. Claims 1, 6, 7, 9, 13, 14, 17-19, 22, 26, and 29-31 stand
rejected under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement;
B. Claims 1, 6, 7, 9, 13, 14, 17-19, 22, 26, and 29-31 stand
rejected under 35 U.S.C. § 112, second paragraph, as indefinite;
C. Claims 1, 6, 7, 9, 13, 14, 17-19, 22, 26, and 29-31 stand
rejected under 35 U.S.C. § 102(b) as anticipated by De Jong et al.
(US 2008/0107980 Al, published May 8, 2008 ("De Jong"));
D. Claims 1, 13, 14, 17-19, 22, and 26 stand rejected under 35
U.S.C. § 102(b) as anticipated by Yaghi et al. (US 2006/0154807 Al,
published July 13, 2006 ("Yaghi '807''));
E. Claims 1, 7, 13, 14, 17-19, 22, 26, 27, and 29-31 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Yaghi et al. (WO
2008/091976 Al, published July 31, 2008 (The Examiner relies,
without objection, on the English-language equivalent, Yaghi et al.,
US 2010/0143693 Al, published June 10, 2010 ("Yaghi "693")); and
F. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over De Jong in view of Heuft et al. (US 2009/0117476
Al, published May 7, 2009 ("Heuft").
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ANALYSIS
Rejection A: § 112, first paragraph, written description requirement
The Examiner finds the Specification provides support for a COP that
is a film at the microscopic level, but not to a COP at the macroscopic level.
Final Act. 4. The Examiner, therefore, concludes that the phrase, "the
plurality of segments and plurality of linkers are arranged as a covalent
organic framework (COP) that is a film at the macroscopic level," lacks
support within the Specification. Id. In addition, the Examiner finds the
Specification states, "Although COFs are a network at the 'microscopic
level' or 'molecular level' (requiring use of powerful magnifying equipment
or as assessed using scattering methods), the present SOP is fundamentally
different at the 'macroscopic level' because the film is for instance orders of
magnitude larger in coverage than a microscopic level COP network."
Ans. 6, quoting Spec. i-f 17. The Examiner finds that one of ordinary skill in
the art wouid understand this statement to mean that COFs are networks at
the microscopic, but not macroscopic, level. Ans. 6.
Appellants contend, to the contrary, that the Specification clearly
describes an SOP as a plurality of segments and a plurality of linkers
arranged as a COP that is a film at a macroscopic level. Appeal Br. 7. We
agree. "[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date." Ariad
Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). To
satisfy the written description requirement of 35 USC 112, first paragraph,
the specification must describe the invention in sufficient detail so "that one
skilled in the art can clearly conclude that the inventor[ s] invented the
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claimed invention as of the filing date sought." Lockwood v. Am. Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
As Appellants note, the Specification in several instances describes
the SOP as a COP that is a film at a macroscopic level. Appeal Br. 7-9;
Spec.i-fi-f 7, 17, 90 (e.g., "'SOP' refers to a covalent organic framework
(COP) that is a film at a macroscopic level.") Moreover, as Appellants
explain, the Specification teaches that while previously synthesized COFs
are networks at a microscopic level, SOFs are COFs that are films at a
macroscopic level. Id. The Examiner does not demonstrate that one of
ordinary skill in the art would fail to understand that Appellants were in
possession of SOFs that are composed of COFs that are macroscopic films.
Accordingly, we will not sustain the Examiner's written description
rejection.
Rejection B: § 112, second paragraph4
The Examiner finds the terms "COP" and "SOP" are "relatively new
term[ s] and therefore does not have a true definition within the art." Final
Act. 5. The Examiner finds, therefore, that these terms are indefinite
because the Specification does not clearly redefine them. Id. In this regard,
4 The Examiner includes within this rejection, apparently inadvertently, a
paragraph indicating claims 1, 10-12, and 22-25 to be indefinite because of
the use of the suffix, "type," in these claims. Final Act. 5, i-f 10. We note
claims 10-12 and 23-25 were cancelled during prosecution before the
Examiner and are not before us on appeal. In addition, none of the currently
appealed claims contain this suffix. As such, this paragraph is clearly
inapplicable to the claims on appeal. Thus, we hold the inadvertent
inclusion of paragraph 10 to be harmless error.
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the Examiner notes the Specification attempts to differentiate COFs from
polymers by disclosing that COFs comprise "molecular building blocks"
instead of "monomers." Id. The Examiner finds, however, that there is no
actual difference in structure, and that there is no structural difference
between SOP films, COP films, and polymer films. Id; Ans. 4--5. Finally,
the Examiner notes the manner in which the Specification discloses COFs,
by stating that COFs are "intended to be highly patterned," fails to provide a
definition. Final Act. 5, citing Spec. i-f 5; Ans. 4.
Appellants contend that the term, "SOP," is clearly and
unambiguously described in the Specification. Appeal Br. 10. In particular,
Appellants note the Specification describes SOP as a COP that is a
macroscopic film. Id., citing Spec. i-f 17. Appellants urge that the Examiner
has erred in improperly disregarding the specific definition of SOP provided
in the Specification. Id. As to the Examiner's finding that there is no
structurai difference between SOFs, COFs, and poiymer fiims, Appeiiants
note not only the descriptions of SOFs and COFs in the Specification, but
also the discussion regarding the difference between polymeric materials and
COFs. Appeal Br. 12. In addition, Appellants direct attention to prior art
references, none of which use the terms "polymer" and "COP"
interchangeably, but instead each recognizing these to represent different
structures. Appeal Br. 13-14. As such, Appellants argue that the
Examiner's position is inconsistent with the Specification and, therefore,
improper.
"The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification."
Miles Laboratories Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993).
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We find the Examiner's position does not reflect a proper reading of the
claims in light of the Specification. Union Pacific Resources Co. v.
Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed. Cir. 2001) (citation
omitted) ("The definiteness inquiry focuses on whether those skilled in the
art would understand the scope of the claim when the claim is read in light
of the rest of the specification."); Amgen, Inc. v. Hoechst Marion Roussel,
Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003) ("[a] claim is indefinite if, when
read in light of the specification, it does not reasonably apprise those skilled
in the art of the scope of the invention.")
The Specification discloses that "covalent organic frameworks
(COFs), differ from the first class (polymers/cross-linked polymers) in that
COFs are intended to be highly patterned." Spec. i-f 5. Although the
Examiner criticizes this phrase for its use of "intended to be," the
Specification further discloses "molecular building blocks are patterned
throughout COP materiais." Id. Further, the Specification contrasts
polymers as lacking designed patterning at the molecular level. Spec. i-f 4.
With regard to SOFs, the Specification states, "'SOP' refers to a covalent
organic framework (COP) that is a film at a macroscopic level." Spec. i-f 17.
This same paragraph further describes COFs as microscopic ordered
networks, and SOFs as macroscopic films having continuous COFs that can
extend over larger length scales from much greater than a millimeter to as
much as hundreds of meters. Id.
Moreover, we note the remainder of the Specification describes in
greater detail, materials and methods for forming SOFs. Finally, we note the
Examiner does not address the prior art references which Appellants assert
to show that one of ordinary skill in this art would have understood the
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structural differentiation between COFs and polymers. We find the
Examiner's position with regard to the meaning of SOP and COP, and the
structural differentiation between COFs and polymers to be inconsistent with
the Specification. While the claims may be broad with regard to the
materials used to form COFs and SOFs, breadth alone does not render
claims indefinite. "[B]readth is not to be equated with indefiniteness." In re
Miller, 441F.2d689, 693, 169 USPQ 597, 600 (CCPA 1971).
The Examiner further determines the term "macroscopic" to be a
relative term which renders the claim indefinite. Final Act. 6. The
Examiner finds that neither the Specification nor the claims define this term,
and that there is no line clearly defining when an object is macroscopic
versus microscopic. Id. The Examiner states that "[ o ]ne of ordinary skill in
the art would see this to mean that COFs are networks at the microscopic
level and not at the macroscopic level." Ans. 6.
During examination, claim terms are given their broadest reasonabie
construction consistent with the specification. In general, words used in a
claim are accorded their ordinary and customary meaning. Honeywell Int 'l
Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 992 (Fed. Cir. 2007).
Under a broadest reasonable interpretation, words of the claim must be given
their plain meaning, unless such meaning is inconsistent with the
specification. The plain meaning of a term means the ordinary and
customary meaning given to the term by those of ordinary skill in the art at
the time of the invention. The ordinary and customary meaning of a term
may be evidenced by a variety of sources, including the words of the claims
themselves, the specification, drawings, and prior art.
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Here, the Specification states "[ t ]he phrase 'macroscopic level' refers,
for example, to the naked eye view of the present SOFs." Spec. i-f 17. In
contrast, the Specification also states "'microscopic level' or 'molecular
level' (requiring use of powerful magnifying equipment or as assessed using
scattering methods)." Id. In addition, the Specification teaches "the present
SOP is fundamentally different at the 'macroscopic level' because the film is
for instance orders of magnitude larger in coverage than a microscopic level
COP network." Id. Finally, the Specification describes that "SOFs of the
present disclosure are at the macroscopic level substantially defect-free
SOFs or defect-free SOFs having continuous covalent organic frameworks
that can extend over larger length scales such as for instance much greater
than a millimeter to lengths such as a meter and, in theory, as much as
hundreds of meters." Id. We recognize that each of these descriptions
contains exemplary language, thereby weakening their definitional capacity.
Nonetheiess, each of these descriptions is consistent with the ordinary and
customary meaning of macroscopic and microscopic. 5 Accordingly, we find
the Examiner's position with regard to the indefiniteness of "macroscopic"
as used in the claims to be erroneous.
5 See http://www.dictionary.com/browse/macroscopic, ("visible to the naked
eye. Compare microscopic (def 1)."), last accessed on June 6, 2016;
http://www.dictionary.com/browse/microscopic, ("so small as to be invisible
or indistinct without the use of the microscope."), last accessed on June 6,
2016; https://www.reference.com/science/difference-between-microscopic-
macroscopic-ca7 a42febd4cf041, ("'Microscopic' and 'macroscopic' are
antonyms; the word 'microscopic' describes something that is so small that
it can only be seen with the aid of a microscope, while 'macroscopic' refers
either to something that can be seen with the naked eye or, alternatively,
something that is large or immense in scale.), last accessed on June 6, 2016.
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Accordingly, we will not sustain the Examiner's indefiniteness
rejection.
Rejection C: Anticipation by De Jong
The Examiner finds De Jong discloses Q--[L---OH] hole transport
compounds, wherein Qare segments and [L---OH] are linkers, wherein the
linkage can be oxygen, sulfur, or silicon. Final Act. 10. The Examiner
further finds that because De Jong's compounds have identical segments and
linkers as those of Appellants, De Jong will inherently form SOP with a
COP that is defect-free and wherein X-ray scattering will inherently detect
the periodicity of the SOP. Id. In addition, the Examiner states that the
United States Patent and Trademark Office (PTO) cannot test De Jong's
materials, Appellants must reasonably show that De Jong would not have a
periodicity detectable by two-dimensional X-ray scattering. Ans. 7.
Appeiiants contend that the Examiner faiis to point to where De Jong
teaches, either explicitly or inherently, a structured organic film that has
periodicity detectable by two-dimensional X-ray scattering. Appeal Br. 16.
In this regard, Appellants urge that the Examiner's inherency position is
improper because the Examiner has not shown that merely selecting
segments and linkers as disclosed without teaching the reaction conditions or
processes for forming the SOP necessarily produces an SOP as claimed.
Appeal Br. 16-1 7. Indeed, Appellants assert that Specification Example 26
proves that merely using the same materials as Appellants does not
necessarily result in an SOP having a periodicity that is detectable by two-
dimensional X-ray scattering. Appeal Br. 17. In contrast, Appellants assert
that Specification Example 54, using the same materials as Example 26, but
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different reaction conditions, forms an SOP having periodicity that is
detectable by two-dimensional X-ray scattering. Appeal Br. 18.
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Anticipation by inherency requires that any material
missing from the prior art must necessarily be present in the reference. In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). "Inherency, however, may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
In re Oelrich, 666 F.2d 578, 581(CCPA1981) (quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214 (CCPA 1939)).
We are persuaded of reversible error in the Examiner's finding of
inherency. The Examiner's position of inherency is based on De Jong's use
of the same materiais as segments and iinkers. However, the Examiner faiis
to show that De Jong uses or discloses the same reaction conditions taught
by Appellants for creating a structured organic film. Indeed, the Examiner
does not find that De Jong teaches forming a structured organic film. As
Appellants' Examples 26 and 54 demonstrate, the use of the same materials
without the same reaction conditions does not necessarily form a structured
organic film whose periodicity is detectable by two-dimensional X-ray
scattering. The Examiner fails to address this evidence either in the Final
Office Action or the Answer. Accordingly, we cannot say that De Jong,
which merely teaches the use of the same materials as herein disclosed,
necessarily or inherently teaches formation of a structured organic film
having a periodicity detectable by two-dimensional X-ray scattering.
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It follows that we will not sustain the Examiner's anticipation
rejection by De Jong.
Rejection D: Anticipation by Yaghi '807
Similar to the anticipation rejection by De Jong, the Examiner finds
Y aghi '807 teaches use of the same materials as Appellants. Final Act. 12.
In addition, the Examiner finds Y aghi '807 teaches forming covalent organic
frameworks. Id. As such, the Examiner finds Yaghi '807 inherently forms
an SOP that is defect-free and wherein X-ray scattering will inherently
detect the periodicity of the SOP. Id.
Appellants contend that Yaghi '807 forms COFs, but does not form
SOFs. Appeal Br. 20. Appellants assert that Yaghi '807 teaches that
attempts to form extended COFs with long-range order have been
unsuccessful. Id. Instead, Appellants urge that Yaghi '807's COFs are
powders, not macroscopic fiims. Id. Appeiiants further argue that the
Examiner has not shown that Y aghi '807 teaches or demonstrates a process
for making SOFs, much less an SOP having a periodicity detectable by two-
dimensional X-ray scattering. Appeal Br. 21.
Appellants' arguments are persuasive of reversible error. As
discussed above, a reference that merely discloses the same materials used to
make the claimed SOP is not necessarily sufficient to inherently teach the
claimed SOP. The Examiner makes no finding that Yaghi '807 teaches a
process for forming an SOP. Further, as Appellants contend, Yaghi '807's
COFs are in powder form, not in macroscopic film form. As such, the
Examiner's rejection is based on an erroneous finding of inherency. We,
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therefore, will not sustain the Examiner's anticipation rejection by Yaghi
'807.
Rejection E: Anticipation rejection by Yaghi '693
Similar to the anticipation rejection by De Jong and Yaghi '807, the
Examiner finds Y aghi '693 teaches use of the same materials as Appellants.
Final Act. 15. In addition, the Examiner finds Y aghi '693 teaches forming
covalent organic frameworks. Id. As such, the Examiner finds Yaghi '693
inherently forms an SOP that is defect-free and wherein X-ray scattering will
inherently detect the periodicity of the SOP. Id. In addition, the Examiner
finds that Yaghi '693's COFs "are architecturally stable and therefore would
be considered to be films that are structured." Ans. 8.
Appellants contend that Yaghi '693 forms COFs, but does not form
SOFs. Appeal Br. 25. Appellants argue that Yaghi '693 's COFs are
powders, not macroscopic fiims. Id. AppeUants further argue that the
Examiner has not shown that Y aghi '693 teaches or demonstrates a process
for making SOFs, much less an SOP having a periodicity detectable by two-
dimensional X-ray scattering. Appeal Br. 21.
Appellants' arguments are persuasive of reversible error. As
discussed above, a reference that merely discloses the same materials used to
make the claimed SOP is not necessarily sufficient to inherently teach the
claimed SOP. The Examiner makes no finding that Yaghi '693 teaches a
process for forming an SOP. Further, as Appellants contend, Yaghi '693's
COFs are in powder form, not in macroscopic film form. As such, the
Examiner's rejection is based on an erroneous finding of inherency. We,
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therefore, will not sustain the Examiner's anticipation rejection by Yaghi
'693.
Rejection F: Obviousness over a combination of De Jong and Heuft
The Examiner does not rely on Heuft to remedy the deficiencies in De
Jong discussed above. Accordingly, we will not sustain the Examiner's
obviousness rejection for the same reasons given above.
CONCLUSION
The rejection of claims 1, 6, 7, 9, 13, 14, 17-19, 22, 26, and 29-31
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is reversed;
The rejection of claims 1, 6, 7, 9, 13, 14, 17-19, 22, 26, and 29-31
under 35 U.S.C. § 112, second paragraph, as indefinite is reversed;
The rejection of claims 1, 6, 7, 9, 13, 14, 17-19, 22, 26, and 29--'3 l
under 35 U.S.C. § 102(b) as anticipated by De Jong is reversed;
The rejection of claims 1, 13, 14, 17-19, 22, and 26 under 35 U.S.C. §
102(b) as anticipated by Y aghi '807 is reversed;
The rejection of claims 1, 7, 13, 14, 17-19, 22, 26, 27, and 29-31
under 35 U.S.C. § 102(b) as anticipated by Yaghi '693is reversed; and
The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable
over De Jong in view of Heuft et al. is reversed.
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DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Brief, the decision of the Examiner rejecting
claims 1, 6, 7, 9, 13, 14, 17-19, 22, 26, 27, and29-31 is reversed.
REVERSED
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