Ex parte Emert et al.

Board of Patent Appeals and Interferences

Sep 20, 1999

08047758 (B.P.A.I. Sep. 20, 1999)

Application for patent filed April 14, 1993. According1
to appellants, this application is a continuation of
Application No. 07/680,204 filed April 4, 1991, now abandoned;
which is a continuation of Application No. 07/378,895 filed
July 12, 1989, now U.S. Patent No. 5,118,432 issued June 12,
1992; which is a continuation of Application No. 07/095,056
filed September 9, 1987, now U.S. Patent No. 4,863,624 issued
September 5, 1989; which is a continuation-in-part of
Application No. 07/032,066 filed March 27, 1987, now
abandoned; which is a continuation of Application No.
06/754,001 filed July 11, 1985, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JACOB EMERT, MALCOLM WADDOUPS
and ROBERT D. LUNDBERG
____________
Appeal No. 1996-0047
Application No. 08/047,7581
____________
ON BRIEF
____________
Before JOHN D. SMITH, PAK and WALTZ, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
Appeal No. 1996-0047
Application No. 08/047,758
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Appeal No. 1996-0047
Application No. 08/047,758
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DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 33 which are all of the claims
pending in the application.
Claim 1 is representative of the subject matter on appeal
and reads as follows:
1. An oil soluble dispersant mixture useful as an oil
additive comprising:
(A) from about 10 to 90 weight percent of a first
dispersant comprising a first hydrocarbyl substituted
monocarboxylic acid producing material formed by reacting a
first olefin polymer of C to C monoolefin having a number2 10
average molecular weight of about 1500 to 5,000 and a first
monounsaturated mono acid material selected from the group
consisting of acrylic acid, methacrylic acid, crotonic acid,
and cinnamic acid,, said first acid producing material having
an average of 1.05 to 1.25 monocarboxylic acid producing
moieties, per molecule of said first olefin polymer present in
the reaction mixture used to form said first acid producing
material, and (b) a first nucleophilic reactant selected from
the group consisting of amines, alcohols, amino-alcohols and
mixtures thereof; and
(B) from about 90 to 10 weight percent of a second
dispersant comprising a second hydrocarbyl substituted
monocarboxylic acid producing material formed by reacting a
second olefin polymer Of C to C monoolefin having a number2 10
average molecular weight of about 700 to 1150 and a second
monounsaturated mono acid material selected from the group
consisting of acrylic acid, methacrylic acid, crotonic acid,
and cinnamic acid, said second acid producing material having
an average of 1.2 to 2.0 monocarboxylic acid producing
Appeal No. 1996-0047
Application No. 08/047,758
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moieties, per molecule of said second olefin polymer present
in the reaction mixture used to form said second acid
producing material; and (b) a second nucleophilic reactant
selected from the group consisting of amines, alcohols, amino
alcohols and mixtures thereof.
Claims 1 through 33 stand rejected under 35 U.S.C. § 112,
first paragraph, as lacking descriptive support for the
claimed subject matter in the disclosure as originally filed;
lacking an enabling disclosure for the claimed subject matter
and lacking a best mode of carrying out the claimed subject
matter. We reverse.
At the outset, we note that appellants request that we
review the objection to the specification under 35 U.S.C. §
132 and 35 U.S.C. § 112. However, we will not exercise our
jurisdiction over this matter because the newly inserted
phrases in the specification do not affect the claims or the
rejection in question. Specifically, the claims do not
include such newly inserted phrases. Rather, they only recite
those specific species of monocarboxylic acids, which are
explicitly described in the application disclosure as
originally filed. The newly inserted phrases, however, are
directed to a subgenus of monocarboxylic acids, which is not
explicitly described in the original application disclosure.
Appeal No. 1996-0047
Application No. 08/047,758
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Accordingly, appellants’ remedy regarding this matter is
through petition to the Commissioner under 37 CFR § 1.181 and
§ 1.191.
We now turn to the rejection of claims 1 through 33 under
35 U.S.C. § 112, first paragraph. The examiner takes the
position that the disclosure as originally filed (1) lacks
descriptive support for the subject matter presently claimed;
(2) lacks an enabling disclosure for the subject matter
presently claimed; and (3) lacks the best mode of practicing
the subject matter presently claimed. We do not subscribe to
any of the examiner’s positions for substantially those
reasons set forth in the Brief and the Reply Brief. We add
the following primarily for emphasis and completeness.
We initially note that the written description
requirement found in the first paragraph of 35 U.S.C. § 112 is
separate from the enablement requirement of that provision.
See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561-63, 19
USPQ2d 1111, 1115-17 (Fed. Cir. 1991); In re Barker, 559 F.2d
588, 591, 194 USPQ 470, 472 (CCPA 1977), cert. denied, 434
U.S. 1064, 197 USPQ 271 (1978). With respect to the written
Appeal No. 1996-0047
Application No. 08/047,758
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description requirement under 35 U.S.C. § 112, first
paragraph, the court stated in In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of
the application as originally filed reasonably
conveys to the artisan that the inventor had
possession at that time of the later claimed subject
matter, rather than the presence or absence of
literal support in the specification for the claimed
language. (citations omitted)
In the present case, we agree with appellants that the
application disclosure as originally filed reasonably conveys
to one of ordinary skill in the art that appellants
(inventors) had possession of the presently claimed oil
dispersant mixture. We find that the specification as
originally filed describes the claimed first and second
hydrocarbyl substituted monocarboxylic acid producing
materials which are formed by reacting particular olefins and
a monocarboxylic acid selected from the group consisting of
acrylic acid, methacrylic acid, crotonic acid and cinnamic
acid. See specification, pages 9 and 10. Accordingly, we
reverse the examiner’s decision rejecting claims 1 through 33
Appeal No. 1996-0047
Application No. 08/047,758
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as lacking the written description for the presently claimed
subject matter in the original application disclosure.
With respect to the enablement requirement under 35
U.S.C.
§ 112, first paragraph, we observe that the test is whether
one of ordinary skill in the art could make or use the claimed
invention from the disclosure, as filed, coupled with
information known in the art without undue experimentation.
See United States v. Telectronics, Inc., 857 F.2d 778, 785, 8
USPQ2d 1217, 1223 (Fed. Cir. 1988), cert. denied, 490 U.S.
1046 (1989); In re Wands, 858 F.2d 731, 737 8 USPQ2d 1400,
1404 (Fed. Cir. 1988). It is incumbent upon the examiner to
initially produce reasons that substantiate a rejection based
on lack of enablement. See In re Marzocchi, 439 F.2d 220,
224, 169 USPQ 367, 370 (CCPA 1974). In other words, the
examiner must supply a reasonable basis to question the
adequacy or accuracy of appellants’ presumptively correct
disclosure. Marzocchi, 439 F.2d at 224, 169 USPQ at 370. The
examiner’s reasoning must take into account, inter alia, those
Appeal No. 1996-0047
Application No. 08/047,758
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factors enumerated in Ex parte Forman, 230 USPQ 546, 547 (Bd.
Pat. App. & Int. 1986).
Here, the examiner states (Answer, page 7) that:
Appellant indicates that the subject matter of
the instant claim is commensurate with the scope of
the written disclosure in that the four
monocarboxylic acids recited in the claims are the
same four monocarboxylic acids disclosed in the
original specification. The examiner agrees with
appellants’ statement and further point out that the
claims as originally filed were directed only to
dicarboxylic acids. The four monocarboxylic acids
are only mentioned on page 10, lines 18-19 of the
specification and are not mentioned anywhere else
throughout pages 1-52 of the specification including
the examples and data, as well as, the claims as
originally filed in the parent application.
However, the examiner has not explained why such a limited
disclosure on monocarboxylic acids does not enable one of
ordinary skill in the art to make and use the claimed subject
matter without undue experimentation. The examiner simply has
not taken into consideration in her analysis, inter alia, the
nature of the invention involved and information known to
those skill in the art. In this regard, we observe that the
examiner has not responded to appellants’ arguments and
evidence referred to at page 7 of the Brief. According to
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Application No. 08/047,758
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appellants (Brief, page 7), the evidence proffered is said to
show that the use of mono and dicarboxylic acids to prepare
hydrocarbyl substituted mono or dicarboxylic acid producing
materials was known to those skill in art at the time of the
invention. This statement has not been refuted by the
examiner. On this record, we are of the view that the
examiner simply fails to demonstrate that one of ordinary
skill in this art would not know how to make and use the
claimed invention without undue experimentation. This being
the case, we reverse this rejection as well.
With respect to the best mode requirement under 35 U.S.C.
§ 112, first paragraph, we are aware that the appellants must
disclose the best mode known to them at the time a patent
application is filed. Spectra-Physics, Inc. v. Coherent,
Inc., 827 F.2d 1524, 1535, 3 USPQ2d 1737, 1745 (Fed. Cir.),
cert. denied, 484 U.S. 954 (1987). The examiner, however,
fails to establish that appellants have withheld any
information regarding what he knew to be his best mode at the
time the parent or present application was filed. In re Gay,
309 F.2d 769, 773, 135 USPQ 311, 315-16 (CCPA 1962). The fact
Appeal No. 1996-0047
Application No. 08/047,758
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that the best mode or any mode for making and using the
claimed dispersant mixture was not supplied at the time the
parent or present application was filed does not demonstrate
that appellants have concealed or withheld such information.
Accordingly, we reverse this rejection.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
CKP:bae
Exxon Chemical Company
P.O. Box 710
Appeal No. 1996-0047
Application No. 08/047,758
11
Linden, NJ 07036