Ex Parte Bergstrom et al

Board of Patent Appeals and Interferences

Feb 14, 2003

09202906 (B.P.A.I. Feb. 14, 2003)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

Paper No. 21

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KARIN BERGSTROM
and
PER-ERIK HELLBERG
__________

Appeal No. 2002-1001
Application No. 09/202,906
___________

ON BRIEF
___________

Before GARRIS, DELMENDO, and MOORE, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2002) from the examiner’s final rejection of claim 3 in the
above-identified application. Claims 1, 2, and 4 through 9,
which are the only other pending claims, have been allowed.
(Examiner’s answer mailed Oct. 19, 2001, paper 18, page 2.)

Appeal No. 2002-1001
Application No. 09/202,906

2
The subject matter on appeal relates to an orthoester-based
polymer having a specified structure. Further details of this
appealed subject matter are recited in claim 3, which depends
from claim 1, both reproduced below:
1. An orthoester-based polymer, having the
general formula

wherein R1 is hydrogen or a hydrocarbon group having 1-
4 carbon atoms; R2 is a group (A)nY, where each A is an
ethyleneoxy group or higher alkyleneoxy group having
3-4 carbon atoms, and each Y is hydrogen or an alkyl
group having 1-4 carbon atoms, provided that when Y is
hydrogen, n is a number from 1 to 100, R3 and R4 are
groups of the formula (A)nY, where A, n and Y have the
above meaning, or a di- or polycondensate of the
polymer via free hydroxyl groups in R2, R3 or R4, the
total sum of all n being 8-2,500, and that at least
one of the groups R2, R3 and R4 contains at least one
block of at least 4 alkyleneoxy groups having 3 and/or
4 carbon atoms.

3. The polymer of claim 1 which has a molecular
weight from 600 to 100,000.

The examiner relies on the following prior art references
as evidence of unpatentability:
Appeal No. 2002-1001
Application No. 09/202,906

3
N.I. Nikitin, The Chemistry of Cellulose and Wood 62-71 (J.
Schmorak trans., Israel Program for Scientific Translations,
Ltd. 1966).

Leo Mandelkern, An Introduction to Macromolecules 18-27
(Springer-Verlag New York Inc. 2d. ed. 1983).

Paul C. Hiemenz, Polymer Chemistry: The Basic Concepts 34-43
(Marcel-Dekker, Inc. 1984).

Joel R. Fried, Polymer Science and Technology 16-18 (Prentice
Hall PTR 1995).

The appellants rely on the following reference in support
of their arguments:
Aldrich Handbook of Fine Chemicals and Laboratory Equipment F12,
786 (n.d.)(Aldrich).

Claim 3 on appeal stands rejected under 35 U.S.C. § 112,
second paragraph, as indefinite. (Answer, pages 3-8.)
We affirm.
The appellants do not dispute the examiner’s finding, based
on substantial evidence in the form of the relied upon prior
art, that the weight average molecular weight (Mw) value and the
number average molecular weight (Mn) value for the here claimed
polymer differ significantly. Nor do they contest the
examiner’s determination that molecular weight values would be
meaningless to one skilled in the relevant art and would thus
render a claim reciting them indefinite, unless the particular
type of molecular weight characterization (i.e., weight average
Mw or number average Mn) is sufficiently indicated in the claim
Appeal No. 2002-1001
Application No. 09/202,906

4
or in the accompanying specification. Rather, the appellants’
principal argument in this appeal is that one skilled in the
relevant art would understand from reading the present
specification that the recited molecular weight values are Mw
values. (Appeal brief filed Jun. 29, 2001, paper 16, page 3;
reply brief filed Jan. 24, 2002, paper 19, pages 1-4.) In
support of their position, the appellants refer us to the
description of Examples 1 and 2 in the specification.
We find the appellants’ position to be without merit. The
appellants are correct in pointing out (appeal brief, page 3)
that polypropylene glycol having an unspecified average
molecular weight of 400 is used in the examples of the present
specification as a starting material in the synthesis of the
claimed polymer. (Specification, page 5, lines 8-11.) The
appellants are also correct in stating that Aldrich quantifies
the Mw of a commercial polyethylene glycol identified by Aldrich
catalog number 20,239-8 as 400. However, these facts are
woefully insufficient to establish that the molecular weight
value recited in the specification examples for polypropylene
glycol is an Mw value, much less establish that the values
recited for the claimed polymer are Mw values. To begin,
polypropylene glycol is not the same as polyethylene glycol.
Appeal No. 2002-1001
Application No. 09/202,906

5
Hence, the Mw of Aldrich’s polyethylene glycol is irrelevant to
the facts of this case.1 Additionally, the appellants do not
identify any evidence in the specification or elsewhere to
establish that the polypropylene glycol used in the
specification examples was purchased from Aldrich and that the
molecular weight information was obtained from Aldrich.
Contrary to their counsel’s unsupported allegation (appeal
brief, page 3), the appellants have failed to identify any
evidence in the specification or elsewhere to establish that one
skilled in the relevant art would have understood the molecular
weight values reported in the specification as Mw values.
The appellants also contend that the use of the term “mole”
in conjunction with the term “average molecular weight” in the
examples (specification, page 5, lines 8-9) “clearly conveys to
one of ordinary skill in the art that weight average molecular
weight is meant by [the] appellants.” (Appeal brief, page 4.)
However, the appellants have failed to present any persuasive
scientific reasoning or sufficient evidence to support this
position.

1 It is interesting to note that Aldrich Handbook of Fine
Chemicals and Laboratory Equipment 1387-88, T827 (2000-01), copy
attached, reports the molecular weights of its commercial
polypropylene glycols in terms of Mn. This undercuts the
appellants’ argument that the molecular weight value reported
for the polypropylene glycol in the specification examples is Mw.
Appeal No. 2002-1001
Application No. 09/202,906

6
The appellants argue that the molecular weight of the
claimed polymer was analyzed using gel permeation chromatography
(GPC) by comparing the orthoester-based polymers with
polypropylene glycol of known Mw and that, therefore, the recited
molecular weight values are Mw values. (Appeal brief, page 4.)
Again, however, the appellants have failed to identify any
evidence in the specification or elsewhere to support this
argument. On this point, it is well settled that mere lawyer’s
arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir.
1997); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196
(Fed. Cir. 1984); In re Wood, 582 F.2d 638, 642, 199 USPQ 137,
140 (CCPA 1978); In re Lindner, 457 F.2d 506, 508-09, 173 USPQ
356, 358 (CCPA 1972).
The appellants urge: “[N]umber average molecular weight is
not mentioned anywhere in appellants’ specification.” (Appeal
brief, page 5.) We note, however, that the appellants have not
identified any portion of the specification that mentions weight
average molecular weight. Accordingly, it is our judgment that
one skilled in the relevant art would not understand what type
of molecular weight values are intended and, therefore, would be
unable to ascertain the scope of appealed claim 3.
Appeal No. 2002-1001
Application No. 09/202,906

7
For the reasons well stated in the answer, we affirm the
examiner’s rejection under 35 U.S.C. § 112, second paragraph, of
appealed claim 3 as indefinite.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Bradley R. Garris )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
James T. Moore )
Administrative Patent Judge )

RHD/kis
Appeal No. 2002-1001
Application No. 09/202,906

8
RALPH J. MANCINI
AKZO NOBEL INC
PATENT & TRADEMARK DEPARTMENT
7 LIVINGSTON AVE
DOBBS FERRY NY 10522-3408