Ex Parte Hofmann et al

Patent Trial and Appeal Board

Jun 25, 2018

14122723 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/122,723 11/27/2013 Jorg Hofmann
157 7590 06/27/2018
Covestro LLC
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.
BMS101235 5284
EXAMINER
I Covestro Circle RIOJA, MELISSA A
PITTSBURGH, PA 15205
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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):
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORG HOFMANN, BERT KLESCZEWSKI, and,
MICHAEL SCHNEIDER
Appeal2017-008771
Application 14/122,723 1
Technology Center 1700
Before BEYERL YA. FRANKLIN, BRIAND. RANGE, and
JANEE. INGLESE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 21-25. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Covestro Deutschland
AG. Appeal Br. 1.
Appeal2017-008771
Application 14/122,723
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a process for the
preparation of polyethercarbonate polyols. Spec. 1 :2-8. Claim 21,
reproduced below, is illustrative of the claimed subject matter:
21. A polyethercarbonate polyol comprising a terminal mixed
block of at least two alkylene oxides, wherein the terminal mixed
block comprises a mixture of propylene oxide (PO) and ethylene
oxide (EO) in a molar ratio PO/EO to 15/85 to 60/40.
Appeal Br. 12 (Claims App.).
REFERENCE
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Mijolovic et al.
("Mijolovic")
US 2009/0306239 Al Dec. 10, 2009
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 21-25 under 35 U.S.C. § 112 as indefinite.
Ans. 2.
Rejection 2. Claims 21-25 under 35 U.S.C. § 103 as unpatentable
over Mijolovic.
Rejection 3. Claim 24 under 35 U.S.C. § 112 as being in improper
dependent form. Id. at 5.
2 In this Decision, we refer to the Final Office Action dated September 13,
2016 ("Final Act."), the Appeal Brief filed February 13, 2017 ("Appeal
Br."), the Examiner's Answer dated April 5, 2017 ("Ans."), and the Reply
Brief filed May 31, 2017 ("Reply Br.").
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Application 14/122,723
ANALYSIS
Rejection 1. The Examiner rejects claims 21-25 under 35 U.S.C.
§ 112 as indefinite. Ans. 2. During prosecution, "'[a] claim is indefinite
when it contains words or phrases whose meaning is unclear.'" Ex parte
McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25,
2017) (quoting In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per
curium)). Our reviewing court has explained claim language must be "as
precise as the subject matter permits" and that the USPTO plays an
important role in ensuring that patent claims are clear and unambiguous in
their claim language. In re Packard, 751 F.3d at 1313; accord Nautilus, Inc.
v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2123 (2014) ("Section 112's
definiteness requirement must take into account the inherent limitations of
language," yet mandates clarity to the extent possible under the
circumstances).
Here, claim 21 is unclear because it recites "[a] polyethercarbonate
polyol" [i.e., an organic molecule having multiple hydroxyl groups] whose
"terminal mixed block comprises a mixture of propylene oxide (PO) and
ethylene oxide (EO) in a molar ratio PO/EO of 15/85 to 60/40." Appeal Br.
12 (Claims App.). The Specification defines "terminal mixed block" as
being "a mixed block of at least two alkylene oxides at the end of the chain."
Spec. 3: 1---6. The terminal mixed block portion of claim 21 's polyol
molecule cannot "comprise" propylene oxide and ethylene oxide because
propylene oxide and ethylene oxide are not substituents to a polyol nor are
they substituents that could comprise the end of the polyol chain. Put
simply, propylene oxides and ethylene oxides are molecules and not merely
part of a molecule. Claim 21 uses the words "propylene oxide" and
"ethylene oxide" in a manner contrary to what the words mean. Moreover,
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Application 14/122,723
describing the molar ratio of substituents for a claimed polyol molecule does
not make sense.
Because the recitations of claim 21 do not make sense, both the
Examiner and Appellants appear to agree that Appellants intended to claim a
polyol that is formed by mixing propylene oxide (PO) and ethylene oxide
(EO) in a molar ratio PO/EO of 15/85 to 60/40. See Ans. 2 ("it appears the
polyethercarbonate polyol is prepared from a reaction involving the
aforementioned alkylene oxides"); Appeal Br. 4 (arguing that a skilled
artisan would know "the polyethercarbonate polyol is the reaction product of
these components"). The words of the claim must control, however, not
intent. As our reviewing court has explained:
[T]he focus in construing disputed terms in claim language is not the
subjective intent of the parties to the patent contract when they used a
particular term. Rather the focus is on the objective test of what one of
ordinary skill in the art at the time of the invention would have
understood the term to mean.
Markman v. Westview Instruments, Inc., 52 F.3d 967, 986 (Fed. Cir.
1995), ajf'd, 517 U.S. 370 (1996).
While we agree with Appellants' position that the preponderance of
the evidence supports that a person of skill in the art would understand such
a polyol could be made from, for example, propylene oxide and ethylene
oxide, this fact does not mean that a person of skill in the art would
understand the metes and bounds of claim 21. Rather, a person of skill in
the art would be left wondering, just as we now wonder, what Appellants'
claim 21 means when it recites a polyol whose terminal mixed block
comprises propylene oxide and ethylene oxide. A claim in product-by-
process format reciting a polyol formed from propylene oxide and ethylene
oxide might very well be definite, but the present claim purportedly recites a
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Application 14/122,723
polyol structure and recites that the propylene oxide and ethylene oxide are
part of the structure. The claim is unclear because it describes the polyol
structure in a manner that does not make sense.
Because claim 21 is unclear, we sustain the Examiner's indefiniteness
rejection of that claim. We also sustain the rejection of claims 22-25
because each of those claims depend from claim 21 and are thus also
unclear.
Rejection 2. The Examiner rejects claims 21-25 under 35 U.S.C.
§ 103 as unpatentable over Mijolovic. The Examiner's position regarding
this rejection, and Appellants' argument further illustrates why claim 21 is
indefinite. Solely to facilitate further examination, the Examiner assumes
that claim 21 would merely require a "terminal block that is prepared from,
rather than comprises, the claimed mixture of alkylene oxides." Ans. 9-10.
As explained above, Appellants argue the claim is definite because a person
of skill would understand that "polyols are the reaction products of the H-
functional starters with alkylene oxides and carbon dioxide." Appeal Br. 4.
Appellants also argue, however, that Mijolovic does not teach a
terminal mixed block of propylene oxide and ethylene oxide. Appeal Br. 9
("There is no mention of a terminal mixed block of propylene oxide and
ethylene oxide in this reference"). Thus, Appellants take the position that
claim 21 requires a certain structure but also take the position that claim 21 's
scope is based upon how the polyol is made. Claim 21 cannot have multiple
meanings, and Appellants' multiple positions reinforce that claim 21 is
unclear as to whether it requires that the polyol have a certain structure, be
made by a certain process, or both.
Because the scope of claim 21 is unclear, construction of the claim or
comparison of the claim's recitations to the prior art would require undue
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Application 14/122,723
speculation. As a formal matter, we therefore reverse the Examiner's
rejection without assessing the merits of the rejection. In re Steele, 305 F.2d
859, 862 (CCPA 1962) ("[W]e do not think a rejection under 35 U.S.C.
§ 103 should be based on such speculations and assumptions.").
Rejection 3. The Examiner rejects claim 24 under 35 U.S.C. § 112 as
being of improper dependent form. Appeal Br. 5. Because, as explained
above, we cannot determine the proper scope of claim 21, we also cannot
determine whether or not subject matter that would be covered by claim 24
might improperly fall outside the scope of claim 21. Accordingly, we also
reverse this rejection without assessing the merits. Cf In re Steele, 305 F .2d
at 862.
DECISION
For the above reasons, we affirm the Examiner's rejection of
claims 21-25 as indefinite under 35 U.S.C. § 112. We reverse the
Examiner's rejection of claims 21-25 as obvious and reverse the Examiner's
rejection of claim 24 as being of improper dependent form. We emphasize
that each of our reversals are based upon on the uncertainty of the scope of
claim 21 rather than addressing the merits of the obviousness and improper
dependent form rejections.
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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