Ex Parte Minge et al

Board of Patent Appeals and Interferences

May 31, 2012

11813294 (B.P.A.I. May. 31, 2012)

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.
11/813,294 07/11/2007 Oliver Minge WAS0879PUSA 1342
22045 7590 05/31/2012
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
EGWIM, KELECHI CHIDI
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
05/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte OLIVER MINGE, HANS-PETER WEITZEL, and
RICHARD WEIDNER
________________

Appeal 2011-006599
Application 11/813,294
Technology Center 1700
________________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner finally rejected claims 11-17, 19, and 21-24 of
Application 11/813,294. Appellants seek reversal pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction pursuant to 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
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Background
The ’294 application is directed to a crosslinkable, silane-modified
copolymer in the form of a redispersible polymer powder.
Claim 11 is representative of the claims on appeal and is reproduced
below:
11. A cross linkable, silane-modified copolymer in the form of
a water-redispersible polymer powder of a free-radically
polymerized polymer polymerized in an aqueous medium and
containing polymerized residues of at least one ethylenically
unsaturated monomer and a post-crosslinking ethylenically
unsaturated α-silane comonomer, wherein the monomers
consist essentially of
a) one or more non-silane-containing monomers selected from
the group consisting of vinyl esters of optionally branched C1-15
alkylcarboxylic acids, methacrylic esters and acrylic esters of
C1-15 alcohols, vinylaromatics, vinyl ethers, olefins, dienes and
vinyl halides,
b) 0.1 to 50% by weight, based on the total weight of a) and b),
of one or more ethylenically unsaturated α-silanes, and
c) optionally, 0.05 to 20 weight percent of one or more
auxiliary monomers selected from the group consisting of
ethylenically unsaturated monocarboxylic and dicarboxylic
acids; ethylenically unsaturated carboxamides and carbonitriles;
mono esters and diesters of fumaric acid and maleic acid;
maleic anhydride; ethylenically unsaturated sulphonic acids and
their salts; acrylamidoglycolic acid (AGA);
methylacrylamidoglycolic acid methyl ester (MAGME); N-
methylolacrylamide (NMA); N-methylolmethacrylamide
(NMMA); N[-]methylolallylcarbamate, and alkyl ethers or
esters of N-methylolacrylamide, of N-methylolmethacrylamide,
and of N-methylolallyl carbamate.
App. Br. 12.

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Rejections
The Examiner has rejected the pending claims on two1 grounds:
1) The Examiner rejected the claims under 35 U.S.C. § 112, ¶ 2 as
indefinite.
2) The Examiner rejected the claims under 35 U.S.C. § 102(b) as
anticipated by U.S. Patent No. 6,624,243 B2 (“Stark,” issued Sept. 23,
2003).
Discussion
Indefiniteness. Claim 11 sets forth the basis of the calculation for the
weight percentage of the ethylenically unsaturated α-silanes that form part of
the claimed invention: “0.1 to 50% by weight, based on the total weight of
a) and b), of one or more ethylenically unsaturated α-silanes.” Claim 11
(emphasis added). But claim 11 fails to set forth the basis for the weight
percentage calculation: “0.05 to 20 weight percent of one or more auxiliary
monomers selected from the group consisting of . . . .” Claim 21, the other
independent claim, is phrased similarly in this respect.
The Examiner rejected the ’294 application’s claims as indefinite
because neither of the independent claims provide the basis for determining
the weight percentage of the optional auxiliary monomer that is added.
During prosecution, a claim is properly rejected as indefinite if it is
“amenable to two or more plausible claim constructions.” Ex parte
Miyazaki, 89 USPQ2d 1207, 2008 WL 5105055 at *5 (BPAI Nov. 19,
2008). The omission of the basis for the weight percentage calculation

1 The rejection of claims 11-17 and 19 under 35 U.S.C. § 102(b) as
anticipated by U.S. published application 2003/0044611 has been withdrawn
by the Examiner. Ans. 3.
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renders Appellants claims amenable to two or more plausible claim
constructions and, hence, the claims are indefinite.
Appellants argue that the Specification clearly states that the basis of
the calculation is the total amount of co-monomers a) and b). App. Br. 3-4
(citing Spec. 6).
While claims are to be construed in light of the specification,
Appellants’ Specification fails to expressly disclaim or otherwise confine the
weight basis to that disclosed in the Specification. The fact that the claims
explicitly recite the total weight basis for monomer b) but not for optional
monomer c) is a strong indicator that the Appellants did not intend to limit
the total weight basis for monomer c). Under these circumstances, it is not
appropriate to so limit the claims as now argued. See Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed. Cir. 2005)(en banc)(“[A]lthough the specification
often describes very specific embodiments of the invention, we have
repeatedly warned against confining the claims to those embodiments.”).
35 U.S.C. § 112, ¶ 2 “puts the burden of precise claim drafting
squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997); see also Halliburton Energy Servs. v. M-L LLC, 514 F.3d 1244, 1255
(Fed. Cir. 2008)(noting that “the patent drafter is in the best position to
resolve the ambiguity in the patent claims, and it is highly desirable that
patent examiners demand that applicants do so in appropriate circumstances
so that the patent can be amended during prosecution rather than attempting
to resolve the ambiguity in litigation.”)
We hold that the claims as currently written are ambiguous. One of
skill in the art would not know whether to use the total amount of the co-
monomers a) and b) or the total amount of all of the material (co-monomers
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a) and b) and auxiliary monomer c)) as the basis for calculating the weight
percentage of the auxiliary monomer used in any particular formulation. For
this reason, we sustain the Examiner’s rejection of the ’294 application’s
claims as indefinite.
Anticipation. The Examiner rejected the ’294 application’s claims as
anticipated by Stark. Appellants present two arguments against this
rejection. First, Appellants argue that Stark requires the use of an
unsaturated epoxide group containing co-monomer while the ’294
application’s claims allegedly prohibit the use of such a co-monomer. App.
Br. 8-9. Second, Appellants argue that Stark does not describe the use of the
claimed amount of α-silane monomers and thus does not anticipate the
claimed invention. App. Br. 10.
We are not persuaded by either of these arguments and therefore
sustain the Examiner’s rejection of claims 11-17, 19, and 21-24 of the ’294
application.
First, Appellants are incorrect in asserting that their claims exclude
the use of an unsaturated epoxide containing monomer. Thus, even though
Stark does require the use of such monomers, col. 4, l. 58-col. 5, l. 8, Stark
still anticipates the ’294 application’s claims.
The flaw in this argument is that Appellants’ claims state that the
copolymer in the redispersible polymer powder is comprised of monomers
that “consist essentially of” the monomers set forth in paragraphs a), b), and
c) of claims 11 or 21. Thus, the claims allow for monomers other than those
specifically identified in the claims so long as those monomers would not
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materially change the basic and novel characteristics of the claimed
invention.2
In assessing a broadest reasonable claim construction wherein a
potentially exclusionary “consisting essentially of” transitional phrase is
involved, it is appropriate that Appellants bear the burden of: (1) showing
the basic and novel characteristics of their claimed invention, and
(2) establishing how those characteristics would be materially changed by
any allegedly excluded component of an applied reference. See In re De
Lajarte, 337 F.2d 870, 873-74 (CCPA 1964); Ex parte Hoffman, 12
USPQ2d 1061, 1063-64 (BPAI 1989).
Appellants advance two arguments in support of patentability of their
claims: (1) the unsaturated epoxide containing monomers are auxiliary
monomers and are not identified in the Markush group in paragraph c) of
claims 11 and 21; and (2) that the co-monomers “would clearly affect
novelty” of the claimed invention.
These arguments are not persuasive. First, Appellants provide no
evidence in support of their argument that the unsaturated epoxide
containing monomers are to be regarded as auxiliary monomers. Indeed, we
note that the ’294 application’s Specification was amended to delete a
sentence that specifically identified such monomers as auxiliary monomers.
Amendment to Specification 2 (July 18, 2007). Second, Appellants’
argument regarding the alleged destruction of the novelty of the claimed
invention is not focused on the characteristics of the claimed polymer, but

2 Appellants’ suggestion that the phrase “consisting essentially of” only
allows for the presence of components such as defoamers and biocides, App.
Br. 9 n.4, is inconsistent with the language of the claims, which state that
“the monomers consist essentially of” categories a), b), and c).
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rather is focused on “novelty” as that term is used in patent law. App. Br. 9.
In effect, Appellants are arguing that the unsaturated epoxide containing
monomers cannot be additional monomers allowed by the “consisting
essentially of” transition because if they were so allowed, the claims would
be anticipated. This is not the law. Appellants have not explained how the
presence of the epoxide containing monomers affects the basic and novel
characteristics, i.e., the properties, of the claimed invention. They have not
met their burden.
Second, Appellants argue that the amount of α-silane containing
monomer included in the polymer described in Stark does not meet the
limitation of their claims. This argument is incorrect. Claim 11 of the ’294
application requires 0.1 to 50% by weight ethylenically unsaturated α-silane.
Stark describes the use of 0.05 to 5.0% by weight of an ethylenically
unsaturated α-silane. Col. 1, ll. 62-65. Preferred ranges of these monomers
are stated to be 0.05 to 3.5% by weight, and most preferably 0.1 to 1% by
weight. Col. 4, ll. 53-57.
That which would infringe if later in time anticipates if earlier in time.
Polaroid Corp. v. Eastman Kodak Co., 789 F.2d 1556, 1573 (Fed. Cir. 1986)
(quoting Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889)). In this case,
there is no doubt that Stark describes the use of amounts of ethylenically
unsaturated α-silane monomer that would infringe the claims of the ’294
application if they were allowed to issue.
Appellants reliance on the Federal Circuit’s decision in Atofina v.
Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006) is misplaced. In
that case, the prior art disclosed a broad range which encompassed the
entirety of the claimed range. In this case, the prior art discloses a preferred
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narrow range which is entirely subsumed within the much broader range
claimed by applicants. In other words, this case is the exact opposite of the
situation in Atofina. See also ClearValue, Inc. v. Pearl River Polymers, Inc.,
668 F.3d 1340 (Fed. Cir. 2012).
Conclusion
For the foregoing reasons, we sustain the Examiner’s rejections of
claims 11-17, 19, and 21-24 of the ’294 application as indefinite and
anticipated. The Examiner’s decision is AFFIRMED.

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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