Brian B. Marr et al.

Patent Trials and Appeals Board

May 28, 2020

15018221 - (D) (P.T.A.B. May. 28, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/018,221 02/08/2016 Brian B. MARR 3453DIV 8941
67749 7590 05/28/2020
Ashland LLC
WILLIAM J. DAVIS, ESQ.
1005 U.S. 202/206
Bridgewater, NJ 08807
EXAMINER
LENIHAN, JEFFREY S
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
05/28/2020 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):
ntietcheu@ashland.com
schen@ashland.com
wdavis@ashland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN B. MARR and OSAMA M. MUSA
Appeal 2019-002462
Application 15/018,221
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–20 and 22. See Non-Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Ashland Inc.
Appeal Br. 4.
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Application 15/018,221
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CLAIMED SUBJECT MATTER
The claims are directed to a composition comprising a modified
polymer and an agent. See, e.g., claims 11 and 22. Claim 11, reproduced
below, is illustrative of the claimed subject matter:
11. A composition comprising
a 4- or 5-substituted 1,2,3-triazole, or regioisomer
mixtures thereof, modified polymer, wherein the substituted
1,2,3-triazole is modified by a modifying polymer represented
by the structure:

wherein R1 is selected from the group consisting of hydrogen,
functionalized and unfunctionalized alkyl, alkoxy, cycloalkyl,
alkenyl, and aryl groups, wherein any of the before mentioned
groups may be with or without heteroatoms, and mixtures
thereof,
wherein the composition further comprises an agent
selected from the group consisting of an adhesive, an aerosol,
an agricultural, a beverage, a biocide, a cleaning, a coating, a
cosmetic, a dental, a detergent, a drug, an electronic, an
encapsulation, a food, a hair spray, a household-industrial-
institutional ink, a lithographic solution, a membrane, a metal
fluid, an oilfield, a paint, a paper, a personal care, a
pharmaceutical, a plaster, a plastic, a printing, a wood-care, and
mixtures thereof.
Appeal Br. 45 (Claims Appendix) (formatting added).
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REJECTION
Claims 11–20 and 22 are rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA, the applicant regards as the
invention. Non-Final Act. 4.
OPINION
The Examiner rejects all the claims as indefinite, basing the rejection
on ambiguities the Examiner locates in the two independent claims, claims
11 and 22. Two aspects of those claims are determined to be indefinite. One
relates to the recitation of “a 4- or 5-substituted 1,2,3-triazole, or
regioisomer mixtures thereof, modified polymer, wherein the substituted
1,2,3-triazole is modified by a modifying polymer represented by the
structure . . . ,” which we will refer to as the modified polymer recitation.
The second is the Markush listing of agents in the last “wherein” clause of
claims 11 and 22. We consider each basis for rejection below.

The Modified Polymer Recitation
Claims 11 and 22 open with the recitation “[a] composition
comprising a 4- or 5-substituted 1,2,3-triazole, or regioisomer mixtures
thereof, modified polymer, wherein the substituted 1,2,3-triazole is modified
by a modifying polymer represented by the structure . . . .” According to the
Examiner, “[i]t is unclear whether the claimed invention is a modified
polymer made [by] reacting a polymer of the recited structure with a 4- or 5-
substituted 1, 2, 3- triazole, or if the claimed invention is a polymer modified
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by a triazole, which in turn is modified by the recited polymer structure.”
Non-Final Act. 4.
Appellant points out that the present application is a divisional
application of a parent application that issued as United States Patent
9,334,3512 and that the modified polymer recitation of claims 11 and 22
closely parallels the modified polymer recitation of issued parent claim 1.
Appeal Br. 21–22. We agree. See Patent ’351 claim 11 (“A 4- or 5-
substituted 1,2,3-triazole, or regioisomer mixtures thereof, modified
polymer, wherein the substituted 1,2,3-triazole is modified by a modifying
polymer represented by the structure . . .” and reproducing the same maleic
anhydride polymer structure as appealed claims 11 and 22).
During the prosecution of the parent application, the Examiner had
made the same rejection as presented here. S.N. 14/126,282 Non-Final Act.
4. The Examiner withdrew the rejection after Appellant’s response, stating:
Applicant’s arguments, see pages 18–23, filed 4/14/2015,
with respect to the rejection of claim 1 under 35 U.S.C. 112,
2nd paragraph have been fully considered and are persuasive.
Applicant states that the terminology used in the claim is
intended to refer to a polymer product obtained by modifying a
4- or 5-substituted 1,2,3-triazole with a maleic anhydride-based

2 The 9,334,351 patent issued from Application 14/126,282. Appellant states
that “[t]his divisional application was filed to prosecute the composition
claims in the parent application, which claims were withdrawn by the
Examiner subject to a restriction requirement.” Appeal Br. 21. We find no
restriction requirement in the file of 14/126,282. In the Non-Final Action,
the Examiner objected to claims 11–20 as substantial duplicates of claims 1–
10 and rejected all the then pending claims (1–21) on the basis that the
modified polymer recitation was indefinite. Non-Final Act. 2–4. The
Examiner withdrew this basis for rejection in the Final Office Action, but
maintained that the Markush groupings of claims 11–20 and new claim 22
were indefinite. 14/126,282 Final Act. 5. Appellant cancelled claims 11–20
and 22 to gain allowance.
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polymer. Based on applicant's statement, the scope of
the independent claim 1 therefore reads on a reaction product
made by reacting said triazole with a polymer having the
structure recited in the independent claim. Additionally, it is
noted that each of independent claims 11 and 22 contain the
same language recited in claim 1. The recitations of the 4- or 5-
substituted 1,2,3-triazole modified polymer in all independent
claims are therefore given the same meaning as discussed by
applicant with regards to claim 1, i.e., a reaction product of a
4- or 5-substituted 1,2,3-triazole and a polymer having the
recited structure.
S.N. 14/126,282 Final Act. 5. Appellant did not dispute the Examiner’s
claim interpretation. S.N. 14/126,282 After-Final Responses of October 13,
2015 and December 14, 2015.
“When multiple patents derive from the same initial application, the
prosecution history regarding a claim limitation in any patent that has issued
applies with equal force to subsequently issued patents that contain the same
claim limitation.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed.
Cir. 1999). Although the application we are reviewing here has not yet
issued–and thus prosecution history is not yet history–under the current
facts, we determine that the interpretation articulated by the Examiner in the
parent application applies in the present case.
The Examiner’s interpretation is supported by the Specification. See
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“[A]s an initial matter,
the PTO applies to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification.”).
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The Specification is entitled 4- and 5-substituted 1,2,3,-triazole, and
regioisomer mixtures thereof, modified polymers. These modified polymers
are formed by reacting maleic anhydride based polymers (polymers having
the structure reproduced in claims 11 and 22) with substituted 1,2,3-
triazoles. Spec. ¶ 9. The Specification defines “modified polymer” as
referring “to a 4- or 5-substituted 1,2,3-triazole, or regioisomer mixtures
thereof, modified by a modifying polymer, as defined above.” Spec. ¶ 30.
The term “modifying polymer” is defined as referring to a maleic anhydride
based polymer represented by the structure reproduced in claims 11 and 22.
Spec. ¶ 28. The Specification defines the term “4- or 5-substituted 1,2,3-
triazole, or regioisomer mixtures thereof” as referring to “4-substituted
1,2,3-triazoles, 5-substituted 1,2,3-triazoles, and 4- and 5- regioisomer
mixtures of substituted 1,2,3-triazoles, respectively.” Spec. ¶ 36. Thus, the
Specification is consistent with the Examiner’s previous interpretation of the
claim recitation as referring to “a reaction product of a 4- or 5-substituted
1,2,3-triazole and a polymer having the recited structure,” i.e., the maleic
anhydride structure reproduced in claims 11 and 22.
Ideally, either the Examiner or the Appellant would have reproduced
the previously agreed on claim interpretation advanced in the parent patent
rather than proceed on appeal. But now that the record is clear as to the
interpretation, we count the rejection as overcome and we reverse it as to the
modified polymer recitation.

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Application 15/018,221
7
The Markush Group Listing
The composition of claims 11 and 22, in addition to the modified
polymer, further includes an agent selected from a group and mixtures
thereof. Claims 11 and 22. Appellant has not identified a reversible error in
the Examiner’s rejection of the Markush group listing as indefinite.
“A Markush group is a listing of specified alternatives of a group in a
patent claim, typically expressed in the form: a member selected from the
group consisting of A, B, and C.” Abbott Labs. v. Baxter Pharm. Prod., Inc.,
334 F.3d 1274, 1280 (Fed. Cir. 2003). It is “a sort of homemade generic
expression covering a group of two or more different materials (elements,
radicals, compounds, etc.), mechanical elements, or process steps, any one
of which would work in the combination claimed.” Id. (quoting Robert C.
Faber, Landis on Mechanics of Patent Claim Drafting, § 50, 5A, VI–5–6
(4th ed. 2002)).
Here, the Markush group is directed to “agents.” Claims 11 and 22.
We interpret “agents” as compounds or substances. This is consistent with
the Specification, which lists example agents like “conditioning agents,
protecting agents, such as, for example, hydrosoluble, liposoluble and water-
insoluble UV filters” and refers to these agents as, for instance, personal
care/cosmetically acceptable additives. Spec ¶ 74. The Specification lists a
vast number of “agents,” which are compounds or substances or classes of
compounds and substances. See, e.g., Spec. ¶¶ 74–114.
Appellant’s Markush group listing does not comport with the listing
of additives and agents in the Specification. Instead, as pointed out by the
Examiner, claims 11 and 22 list compositions in which the modified
polymers are intended to be used. Ans. 4–5; see, e.g., Spec. ¶ 63 (“Polymers
of the invention may be used in a wide variety of compositions such as in
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adhesives, agricultural, biocides, coatings, electronics, household-industrial-
institutional (HI&I), inks, membranes, metal fluids, oilfield, paper, paints,
plastics, printing, plasters, and wood-care compositions.”).
As pointed out by Appellant, “agent” is a noun. Appeal Br. 23. But it
is a noun referring to a compound or substance to be added to the
composition. “The term ‘composition’ in chemistry is well-established. It
generally refers to mixtures of substances.” PIN/NIP, Inc. v. Platte Chem.
Co., 304 F.3d 1235, 1244 (Fed. Cir. 2002). An oilfield, recited in claim 11,
is not itself a substance or compound added to a composition. Nor is the sun,
recited in claim 22. Nor does Appellant use terms such as oilfield or sun to
refer to compounds and substances. Appellant uses those terms to identify
the end use for composition. See, e.g., Spec. ¶ 10 (“a wide variety of
compositions comprising the novel modified polymers are provided
including . . . . oilfield compositions”); Spec. ¶ 11 (“Personal care
compositions refers to such illustrative non-limiting compositions as . . . sun
care water-proof/resistance . . . compositions); Spec. ¶ 63 (“Polymers of the
invention may be used in a wide variety of compositions such as in . . .
oilfield . . . compositions.”); Spec. ¶ 66 (“Consumers can identify many of
the compositions that serve the sun care area”).
Appellant contends that “[a]n agent selected from ‘a hair, a skin, and a
sun . . .’ means a hair agent, a skin agent, and a sun agent.” Appeal Br. 24.
This argument is not persuasive for two reasons.
First, the Markush listings do not add the word “agent” to the
elements in the listings and the Specification does not define words such as
“oilfield” and “sun” as oilfield agents or sun agents. Thus, the claims are not
as precise as the subject matter reasonably permits. See In re Packard, 751
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Application 15/018,221
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F.3d 1307, 1313 (Fed. Cir. 2014) (holding that an applicant is required to use
language as precise as the subject matter reasonably permits).
Second, Appellant agrees with the Examiner that a composition
including an oilfield or a sun cannot be made. Appeal Br. 36. Thus, there is
no real dispute that the claims are indefinite as written.
Appellant points to the claim 11 limitation “wherein the composition
further comprises an agent selected from the group consisting of an
adhesive, an aerosol, an agricultural, . . . , an oilfield, . . . , and mixtures
thereof” and states “[t]hese are appellants' compositions.” That is incorrect.
Appellant’s composition is a mixture including a modified polymer and an
agent or agents. The agents recited in the claims are not set forth with the
type of precision necessary for the ordinary artisan to determine the scope of
the claims because the elements listed as agents are not agents, i.e.,
substances or classes of substances).
“During patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). That
is, a patent applicant has the opportunity and responsibility to remove any
ambiguity by amending the application. “Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.” In re Zletz, 893 F.2d at 322; 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.”).
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Here, the ordinary artisan in the art cannot determine the metes and
bounds of the claims due to an inability to envision all of the compounds
defined by the Markush groups. Thus, the claim language is not as
reasonably precise as the circumstances permit and the Examiner’s rejection
has given Appellant an opportunity to bring the necessary clarity to the
claim language. Thus, the rejection is proper. See In re Packard, 751 F.3d
1307, 1314 (Fed. Cir. 2014) (Affirming an indefiniteness rejection because
Packard had been given the opportunity to bring clarity to his claim
language stating that “[i]n some cases it is difficult enough for courts to
construe claims when the draftsperson has made every effort to be clear and
concise, let alone when the claims have readily observable ambiguities or
incoherencies within them.”).
We sustain the Examiner’s rejection on the basis that the Markush
groups are indefinite.
CONCLUSION
The Examiner’s decision to reject claims 11–20 and 22 is affirmed.
DECISION SUMMARY
In summary:
Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed
11–20, 22 112, second
paragraph
Indefinite 11–20, 22

Appeal 2019-002462
Application 15/018,221
11

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED