Ex Parte Brabec

Board of Patent Appeals and Interferences

Jul 28, 2010

10522862 (B.P.A.I. Jul. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CHRISTOPH BRABEC
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Appeal 2009-008774
Application 10/522,862
Technology Center 1700
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Before TERRY J. OWENS, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, 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 2009-008774
Application 10/522,862

A. Introduction2
Christoph Brabec (“Brabec”) timely appeals under 35 U.S.C. § 134(a)
from the final rejection3 of claims 1-20, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to an integrated circuit card
having an integrated energy converter that comprises a photovoltaically
active polymeric compound. Cards having ‘low information’ data storage,
integrated transponders, or integrated display units are said to require such
energy supplies. But, according to the 862 Specification, suitable, cheap,
and readily manufactured energy supplies are not available. (Spec. 1.)
Representative Claim 1 reads:
1. A chip card comprising
an energy converter that occupies either a portion or
an entire surface area of the chip card, so that an
energy supply of the chip card is integratedly present
thereon,
wherein the energy converter comprises a
photovoltaically active polymeric compound.
(Claims App., Br. 9; indentation added.)

2 Application 10/522,862, Chip Card Comprising an Integrated Energy
Converter, filed 6 September 2005, as the National Stage of an international
application filed 22 July 2003, claiming the benefit of a German application
filed 8 August 2002. The specification is referred to as the
“862 Specification,” and is cited as “Spec.” The real party in interest is
listed as Konarka Technologies, Inc. (Appeal Brief, filed 4 November 2008
(“Br.”), 1.)
3 Office Action communicated 9 July 2008 (“Final Rejection”; cited as
“FR”).
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Appeal 2009-008774
Application 10/522,862

The Examiner has maintained the following grounds of rejection:4
A. Claims 1-4, 8-14, and 18 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Ou5 and Loutfy.6
B. Claims 5, 6, 15, and 17 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Ou, Loutfy, and Hirano.7
C. Claims 6 and 16 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Ou, Loutfy, and Han.8
D. Claims 7 and 19 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Ou, Loutfy, and Phillips.9
E. Claim 13 stands rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Ou and Loutfy.
F. Claim 20 stands rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Ou, Loutfy, and
Suzuki.10
The issue dispositive of this case is the meaning of the term
“polymeric compound,” as used in the claims.

4 Examiner’s Answer mailed 4 February 2009. (“Ans.”).
5 Chi-Yuan Ou, IC Card with Display Screen, U.S. Patent Application
Publication US 2002/0088863 A1 (11 July 2002).
6 Rafik O. Loutfy et al., Photovoltaic Cell, U.S. Patent 4,175,982 (1979).
7 Taizö Hirano, U.S. Patent 4,104,083 (1978).
8 Liyuan Han and Ryosuke Yamanaka, JP 2001-203377 (27 July 2001)
(referred to by the Examiner and by Brabec as “Kan”).
9 John Quentin Phillipps, GB 2,320,356 A (1998).
10 Hideo Suzuki, U.S. Patent 4,801,787 (1989).
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Appeal 2009-008774
Application 10/522,862

Brabec contends only that the Examiner failed to establish a prima
facie case of obviousness because the metal-free phthalocyanine disclosed
by Loutfy as a photovoltaically active compound, on which the Examiner
relies exclusively for prior art disclosure of a photovoltaically active
polymeric compound for an energy converter, is not a polymeric compound,
as that term is used in the claims and understood by persons having ordinary
skill in the relevant arts. (Br. 2-5.)
The Examiner maintains that the 862 Specification does not
specifically define the term “polymeric compound,” and that the definitions
provided for the term “polymer” do not exclude oligomeric material or small
molecules. (Ans. 10-11.) As a result, according to the Examiner, the
broadest reasonable interpretation of the claims, read in light of the
supporting disclosure, is that the term “polymeric compound” reads on the
metal-free phthalocyanine disclosed by Loutfy as a photoactive material.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
During examination of an application for patent, our reviewing court
has instructed that
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.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Appeal 2009-008774
Application 10/522,862

It is beyond question that definitions in the specification control over
definitions that might be found in dictionaries or in other disclosures in the
art. As the Federal Circuit put the matter, “the inventor may be his own
lexicographer, and may use common words in uncommon ways, provided
only that the intended meaning is clear.” In re Dance, 160 F.3d 1339,
1344-45 (Fed. Cir. 1998).
As the Examiner found, there is no express definition of the term
“photovoltaically active polymeric compound” in the 862 Specification—
indeed, the term is not even present in the Specification or in the original
claims. The closest term appears to be in the sentence, “Due to the ability to
make a polymer solar cell out of photovoltaically active dyes/functional
polymers, a chip card can be printed and inscribed with a polymer solar cell
instead of printing ink.” (Spec. 2, 4th full para.; emphasis added.) This
sentence, by itself, does not illuminate the meaning of the critical term used
in claim 1.
The critical disclosure in the three-page 862 Specification (counting
the claims and the abstract as a single page) is the following paragraph,
which is reproduced in full:
The terms "polymer" in "polymer solar cell," "organic
material," and "functional polymer" herein encompass all
types of organic, metalorganic and/or organic/inorganic
synthetics and composites (hybrids) that are photovoltaically
active. They signify, for example, all those denoted in
English by terms such as "plastics." This includes all types of
materials except for the semiconductors that form
conventional diodes (germanium, silicon) and typical metallic
conductors. Hence, there is no intended limitation in the
dogmatic sense to organic material as carbon-containing
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Appeal 2009-008774
Application 10/522,862

material, but rather, the broadest use of silicones, for
example, is also contemplated. Furthermore, the terms are
not intended to be subject to any limitation with respect to
molecular size, particularly to polymeric and/or oligomeric
materials, but instead the use of "small molecules" is
completely feasible as well. The word "polymer" in
"functional polymer" is historically derived and makes no
statement as to the presence of any actual polymeric
compound. "Functional polymers" can mean
semiconducting, conducting and/or insulating materials.
(Spec. 2, first full para.; emphasis added.)
We do not find persuasive Brabec’s attempt to dissociate the term
“polymeric compound” from the broad definition given by the
supporting 862 Specification to the root term “polymer.” The only express
exclusions from the term “polymer” are conventional semiconductors and
“typical metallic conductors.” The 862 Specification, in the passage quoted
supra, expressly includes “small molecules” and “oligomers” as being
within the scope of the terms “polymer solar cell” and “functional polymer.”
The only requirement is that the “organic material” be photovoltaically
active. The 862 Specification emphasizes that “the use of ‘small molecules’
is completely feasible as well.” (Spec. 2.)
Substituting the term “photovoltaically active polymeric compound”
for the term “photovoltaically active dyes/functional polymers,” with the
intent of excluding small molecules, is at best an exercise in circular
reasoning. The weight of the term “functional polymer,” which
the 862 Specification specifically states “makes no statement as to the
presence of any actual polymeric compound,” begs the question of what
sorts of molecules are included by the term “polymer.” In the words of
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Appeal 2009-008774
Application 10/522,862

the 862 Specification, the term “polymer” is “not intended to be subject to
any limitation with respect to molecular size . . . the use of ‘small molecules
is completely feasible as well.”
We therefore reject Brabec’s claim interpretation as being inconsistent
with the originally filed specification.
The Examiner’s reliance on Achar11 as support for phthalocyanine
being regarded as a polymer in the conventional sense is misguided. Brabec
correctly points out (Reply 3)12 that Achar discusses only polymers of
phthalocyanine-containing monomers and that Achar cannot be read as
referring to phthalocyanines as polymers. The Examiner’s error, however, is
harmless because Brabec fully comprehends the Examiner’s position,13 and
because claim 1, properly interpreted in light of the supporting disclosure,
supports the Examiner’s position.
Had the Examiner read the claims in a vacuum, without benefit of the
teachings of the 862 Specification, we have no doubt that the Examiner
would not have interpreted the “photovoltaically active polymeric
component” recited in claim 1 as encompassing a small molecule made from
four monomers. Such an interpretation, however congruent with “common
understanding,” would have been legal error, as it would have ignored the
teachings of the 862 Specification.

11 Bappalige N. Achar et al., U.S. Patent 4,649,189 (1987), cited during
prosecution in the Advisory Action mailed 5 August 2008.
12 Reply Brief, filed 11 February 2009 (“Reply”).
13 See Br. 4, discussing, although not conceding, that phthalocyanine is made
up of four monomeric repeating units.
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Appeal 2009-008774
Application 10/522,862

The Federal Circuit has emphasized that the linguistic freedom of
defining common terms in uncommon ways is not free of responsibilities:
We decline to attempt to harmonize the applicants’
interpretation with the application and prior art. Such an
approach puts the burden in the wrong place. It is the
applicants’ burden to precisely define the invention, not the
PTO's. See 35 U.S.C. § 112 ¶ 2 (“The specification shall
conclude with one or more claims particularly pointing out
and distinctly claiming the subject matter which the applicant
regards as his invention.”).
Morris, 127 F.3d at 1056. See also (regarding the construction of a patented
claim) Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993)
(if the patentee, “who was responsible for drafting and prosecuting the
patent, intended something different, it could have prevented this result
through clearer drafting.”)
Brabec has not raised any additional issues as resulting in harmful
error regarding the rejection of any of the remaining claims. Hence, all
claims fall with claim 1.
C. Order
We AFFIRM the rejection of claims 1-4, 8-14, and 18 under
35 U.S.C. § 103(a) in view of the combined teachings of Ou and Loutfy.
We AFFIRM the rejection of claims 5, 6, 15, and 17 under
35 U.S.C. § 103(a) in view of the combined teachings of Ou, Loutfy, and
Hirano.
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Appeal 2009-008774
Application 10/522,862

We AFFIRM the rejection of claims 6 and 16 under
35 U.S.C. § 103(a) in view of the combined teachings of Ou, Loutfy, and
Han.
We AFFIRM the rejection of claims 7 and 19 under
35 U.S.C. § 103(a) in view of the combined teachings of Ou, Loutfy, and
Phillips.
We AFFIRM the rejection of claim 13 under 35 U.S.C. § 103(a) in
view of the combined teachings of Ou and Loutfy.
We AFFIRM the rejection of claim 20 under 35 U.S.C. § 103(a) in
view of the combined teachings of Ou, Loutfy, and Suzuki.
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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