Ex Parte Schmitt et al

Board of Patent Appeals and Interferences

Nov 2, 2010

10509328 (B.P.A.I. Nov. 2, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte BARDO SCHMITT,
JOACHIM KNEBEL and PATRIK HARTMANN
______________

Appeal 2009-006501
Application 10/509,328
Technology Center 1700
_______________

Before CHARLES F. WARREN, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-11, 21-23, 27-29, 33, 35, and 37 in the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-006501
Application 10/509,328
Office Action mailed January 25, 2007 (Office Action). 35 U.S.C. §§ 6 and
134(a) (2002); 37 C.F.R. § 41.31(a) (2007).
We reverse the decision of the Primary Examiner.
Appealed claim 1 illustrates Appellants’ claimed invention of a
process for preparing a transparent plastic, and is representative of the
claims on appeal. We copy appealed claim 1 as it stands of record at page 4
of the Amendment filed October 23, 2006, and set forth in the Claim
Appendix at page 12 of the Appeal Brief:
1. A process for preparing a transparent plastic, comprising:
polymerizing a mixture comprising the compounds of the formula I
and formula II

wherein R1 is independently at each instance hydrogen or a methyl radical,
R2 is independently at each instance a linear or branched, aliphatic or
cycloaliphatic radical or a substituted or unsubstituted aromatic or
heteroaromatic radical, and m and n are each independently an integer of not
less than 0, subject to the proviso that m + n > 0, and
wherein the mixture contains more than 10 mol%, based on the total amount
of the compound as per formula (I) and (II), of compounds of the formula
(II) wherein m + n = 2, prepared by reacting, in the presence of a solvent L,
1.0 to less than 2.0 mol of at least one compound of the formula (III)

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Application 10/509,328
where X is chlorine or a radical of formula

with one mole of at least one polythiol of the formula (IV)

where M is independently at each instance hydrogen or a metal cation;
wherein the solvent L is at least one of acetone, acetonitrile, acetophenone,
benzyl acetate, n-butyl acetate, quinoline, chlorobenzene, o-chlorotoluene.
m-chlorotoluene, p-chlorotoluene, o-dichlorobenzene, m-dichlorobenzene,
diethyl ether, diisopropyl ether, dimethyl phthalate, dipropyl ether, ethyl
acetate, ethyl benzoate, ethyl butyrate, ethyl formate, ethyl salicylate,
isoquinoline, 2-methoxyethyl acetate, methyl acetate, methyl benzoate,
methyl butyrate, methyl ethyl ketone, methyl formate, methyl isoamyl
ketone, methyl isobutyl ketone, methyl propionate, 2-methylpyridine, N-
methyl-2-pyrrolidone, methyl salicylate, nitrobenzene, o-nitrotoluene, m-
nitrotoluene, p-nitrotoluene, 2-pentanone, 3-pentanone, phenyl acetate,
propyl formate, pyridine, tetrahydrofuran or mixtures thereof.
Appellants request review of the grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1-11, 21-23, 27-29,
33, 35, and 37 over Bader (US 5,384,379) in view of Esch (Fr. 2 771 411
A1), the latter reference applying only to claim 8;2 and 1-11, 21-23, 27-29,
33, and 35 over Smith (US 6,342,571 B1). App. Br. 4-5; Ans. 3 and 5.
Appellants do not request review of the ground of rejection of claims
1-11, 21-23, 27-29, 33, and 35 under 35 U.S.C. § 102(e) over Smith of
record in the Office Action and advanced on appeal by the Examiner.

2 The record contains the translation of Esch prepared for the USPTO by
The Ralph McElroy Translation Company (PTO 06-3180 March 2006).
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Application 10/509,328
App. Br. 5 and 10-11; Ans. 5 and 11-12; Off. Ac. 5.
Opinion
We find that appealed claim 1 was introduced into the record in the
Amendment filed October 23, 2006, and is accurately reproduced in the
Claim Appendix to the Appeal Brief. Amendment filed October 23, 2006, at
4; App. Br. 12. Thus, formulae (I) and (II) in appealed claim 1 do not
contain “errors” as contended by the Examiner in the Answer. Ans. 3.
We find that the grounds of rejection advanced on Appeal by the
Examiner and the arguments advanced in the Briefs are directed to the
claimed invention encompassed by the version of claim 1 at page 2 of the
Amendment filed January 3, 2006, and shown in the Claim Appendix at
page i in the Reply Brief, and not to the claimed invention encompassed by
appealed claim 1. See generally Ans.; see generally Brs. Indeed, formulae
(I) and (II) of this version of claim 1 are free of the “errors” in Appealed
claim 1 alleged by the Examiner. Ans. 3.
We further find that formula (I) in appealed claim 1 corresponds to the
formula (I) inserted into the amendment to page 5, line 16 through page 6,
line 16 of the Specification at page 2 of the Amendment filed October 23,
2006. We find no other recitation of formula (I) as set forth in appealed
claim 1 in the Specification and original claims. We find that formula (II) as
set forth in appealed claim 1 appears nowhere in the Specification and the
original claims. See generally Specification and original claims.
We find that appealed claim 1 does not specify the definition of
subscript “x,” and determine that the significance of “( )x” in formula (II) is
not apparent from appealed claim 1 or the Specification and the original
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Application 10/509,328
claims. Indeed, while Appellants state that formula (II) represents “a
material that has oligomeric and/or polymeric portions (e.g., those portions
of the compound of formula (II) which are subscripted with m, n, or x)” in
summarizing the claimed invention encompassed by appealed claim 1,
Appellants do not otherwise explain formula (II) or specify basis in the
Specification for the same. App. Br. 2-3. Thus, we find no basis in appealed
claim 1 and the Specification and original claim on which to interpret
formula (II).
Accordingly, on this record, we reverse the grounds of rejection of
claims 1-11, 21-23, 27-29, 33, 35, and 37 under 35 U.S.C. § 103(a) over
Bader in view of Esch, and of claims 1-11, 21-23, 27-29, 33, and 35 under
35 U.S.C. § 102(e), or in the alternative, under 35 U.S.C. § 103(a) over
Smith advanced on appeal by the Examiner, for two reasons. First, we
cannot interpret formula (II) of appealed claim 1, on which all other
appealed claims depend, and thus we determine that the appealed claims are
indefinite under 35 U.S.C. § 112, second paragraph. Indeed, the appealed
claims are indefinite to the extent that it is impossible to ascertain the
propriety of the Examiner’s grounds of rejection without undue speculation.
Thus, we reverse the grounds of rejection pro forma. See In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859, 862-63 (CCPA
1962). Second, while Appellants did not request review of the ground of
rejection under § 102(e), on this record it is apparent that the Examiner’s
ground of rejection under this statutory provision has not been applied to
appealed claim 1. Thus, we cannot determine whether Appellants’
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contention that Smith does not describe the “claimed method” addresses the
ground of rejection of appealed claim 1. App. Br., e.g., 10-11.
The Primary Examiner’s decision is reversed.
REVERSED

OBLON SPIVAK MCCLELLAND
MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314

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