Ex Parte Baxter et al

Board of Patent Appeals and Interferences

Jul 19, 2010

10857394 (B.P.A.I. Jul. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID RODERICK BAXTER, PETER JOHN CRANMER, and
KIM SANG HO
____________

Appeal 2009-012468
Application 10/857,394
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, BRADLEY R. GARRIS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL1

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 2009-012468
Application 10/857,394

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
A method for marking a liquid petroleum hydrocarbon; said
method comprising adding to said liquid petroleum hydrocarbon at least one
anthraquinone dye having formula (I)

wherein X is O or S; Y is O or S; R1 and R2 independently are
hydrogen, alkyl, aryl, aralkyl, heteroalkyl, heterocyclic or alkanoyl; R3 and
R5 independently are alkyl, aryl, aralkyl, heteroalkyl or heterocyclic; R4 and
R6 independently are hydrogen or alkyl; R7 is hydrogen or alkyl; and
wherein said at least one substituted anthraquinone dye has an absorption
maximum in the range from 600 nm to 750 nm;

wherein said liquid petroleum hydrocarbon is selected from the group
consisting of lubricating oil, hydraulic fluid, brake fluid, gasoline, diesel
fuel, kerosene, jet fuel and heating oil;

and wherein each anthraquinone dye of formula (I) is present in an
amount from 0.01 ppm to 2 ppm.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Appeal 2009-012468
Application 10/857,394

3
Ueda 4,051,052 Sept. 27, 1977
Dandliker 5,880,287 Mar. 9, 1999
Ho 2003/0126694 A1 Jul. 10, 2003

THE REJECTION(S)
1. Claims 1-10 are rejected under 35 U.S.C. § 103(a) over Ueda in view
of Ho.2
2. Claims 11-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueda in view of Dandliker.
ANALYSIS
We refer to the copy of claim 1, supra, and point out that while R7
is referred to within the text of the claim, there is no R7 indicated in the
formula. The Specification reflects the same on pages 1-2.
Because the position of R7 is unknown, claim 1 is indefinite (as well
as each dependent claims 2-12). As such, the metes and bounds of claims 1-
12 are unclear and indefinite to the extent that it is impossible to ascertain
the propriety of the grounds of rejection of these claims. See In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859, 862-63
(CCPA 1962).
Where claims do not particularly point out and distinctly claim the
invention as required by the second paragraph of 35 U.S.C. § 112, a § 103

2 On page 3 of the Answer, the Examiner states that Ho was added as
evidence as to what is “well known” which was challenged by Appellants in
their Brief for the first time. The Examiner states that therefore this is not a
new ground of rejection. Appellants do not dispute this and we thus treat
this as not a new ground of rejection.
Appeal 2009-012468
Application 10/857,394

4
rejection of the claims can be reversed as impermissibly involving
speculative assumptions as to the meaning of the claims. Steele, F.2d at
862-63. Because claims 1-12 fail to particularly point out and distinctly
claim Appellants’ invention as required by the second paragraph of
35 U.S.C. § 112, the § 103 rejection of these claims necessarily involves
speculative assumptions as to the meaning of the claims. Under these
circumstances, we must reverse each of the § 103 rejections.
However, we emphasize that our reversal of these rejections is
because the claims are indefinite; hence, a decision has not been made based
on the technical merits of the obviousness rejection respecting these claims.
We introduce a new ground of rejection of claims 1-12 under the
second paragraph of 35 U.S.C. § 112 for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as their
invention; hence, we reject these claims as running afoul of the requirements
of the second paragraph of 35 U.S.C. § 112 (37 C.F.R. § 41.50(b)).

DECISION/ORDER
The decision of the Examiner to reject claims 1-10 under 35 U.S.C.
§ 103(a) over Ueda in view of Ho and to reject claims 11-12 under 35
U.S.C. § 103(a) over Ueda in view of Dandliker is reversed. We enter a new
ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b) of
claims 1-12 under 35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Appeal 2009-012468
Application 10/857,394

5
37 C.F.R. § 41.50(b) also provide that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v)(2009).

REVERSED; § 41.50(b)

kmm

KENNETH CRIMALDI
ROHM AND HAAS COMPANY
100 INDEPENDENCE MALL WEST
PHILADELPHIA, PA 19106