Ex parte Floyd

Board of Patent Appeals and Interferences

Dec 22, 1998

08006350 (B.P.A.I. Dec. 22, 1998)

Application for patent filed January 19, 1993. The real party in interest is1
believed to be Th. Goldschmidt AG.
Applicant requested oral argument. We are informed, however, that applicant2
orally waived oral argument during a telephone conversation with Administrator Amalia
Santiago. Accordingly, the appeal is being decided on brief without oral argument.
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journal and (2) is not binding precedent of the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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID T. FLOYD
_____________
Appeal No. 95-4477
Application 08/006,3501
______________
ON BRIEF2
_______________
Before: WILLIAM F. SMITH, Administrative Patent Judge, and
McKELVEY, Senior Administrative Patent Judge and SCHAFER,
Administrative Patent Judge.
McKELVEY, Senior Administrative Patent Judge.
Decision on appeal under 35 U.S.C. § 134
The appeal is from a decision of the Primary Examiner
rejecting claims 1-14, 21 and 23-25. We vacate the examiner's
rejection, and enter a new ground of rejection.
Appeal 95-4477
Application 08/006,350
In reproducing claim 21 in the Appendix to the Appeal Brief, applicant omitted3
the limitation "provided the ratio of polysiloxanes A:B is between about >10:1 and
15:1." Although another error (the absence of the word "cellulosic") was noted by the
examiner (Examiner's Answer, page 2), he did not note the absence of the portion in
bold.
The use of three "comprises" has complicated our efforts to understand the4
precise scope of claim 1. We fail to understand why claim 1 cannot be written in
plainer English and, if there is further prosecution, we recommend that claim 1 be re-
written to read: "In a combination of a cellulosic nonwoven material and a medium, the
improvement wherein the medium comprises [A] ***."
- 2 -
A. Findings of fact
The record supports the following findings by a
preponderance of the evidence.
The claims
1. Claims 1-14, 21 and 23-25 are on appeal.3
2. Claim 1 reads as follows (some indentation and
paragraph numbering added; portions in bold added by an
amendment filed March 25, 1994 (Amendment B, Paper 6)):
Claim 1: A cellulosic nonwoven material
comprising an organosilicone compound, the
improvement which
comprises that the organosilicone compound
comprises[4]
Appeal 95-4477
Application 08/006,350
There is no antecedent in claim 1 for the following two subsequent limitations5
which appear in claim 1: (1) "the polyether groups of which" and (2) "the polysiloxane
block of which". If there is further prosecution, applicant may wish to amend the
language "polyether polysiloxane A" to read "polyether polysiloxane A containing ether
groups and polysiloxane blocks".
- 3 -
[A] 45 to 98% by weight of a water soluble or water
dispersible polyether polysiloxane A [containing ether
groups and polysiloxane blocks ],5
[1] the polyether groups of which consist of
[a] 30 to 100 mole percent of oxyethylene
units,
[b] the remainder being oxypropylene
units, and
[2] the polysiloxane block of which has 10 to
100 siloxane units;
[B] 1 to 20% by weight of a water soluble or water
dispersible organopolysiloxane B with at least one
ammonium group linked over a carbon atom; and
[C] 1 to 20% by weight of
[1] water or
[2] a water soluble alkylene glycol,
provided the ratio of polysiloxanes A:B is between
about >10:1 and 15:1.
Object of the invention
3. An object of the invention is to make a
"cellulosic nonwoven material" which is "soft" (specification,
page 4).
Appeal 95-4477
Application 08/006,350
- 4 -
4. According to applicant, the cellulosic nonwoven
material may be made soft when a "medium" is "sprayed,
imprinted or printed on the nonwoven material" (specification,
page 5).
5. The medium is said to contain at least
a. a polysiloxane A,
b. a polysiloxane B and
c. a water soluble alkylene glycol.
(specification, page 5).
6. The medium preferably is dissolved in water
before it is used (specification, 5).
7. Alternatively, polysiloxanes A and B may be used
in "water or a water soluble alkylene glycol" (specification,
page 11). According to applicant, the preferred alkylene
glycol is "propylene glycol" (specification, page 11).
The examiner's rejection
8. The examiner has rejected all the claims as
being unpatentable under 35 U.S.C. § 103(a) over
Appeal 95-4477
Application 08/006,350
Both patents are prior art under 35 U.S.C. § 102(b).6
Polysiloxane A of Schaefer is apparently the same as, or very similar to,7
applicant's polysiloxane A.
Polysiloxane B of Schaefer is apparently the same as, or very similar to,8
applicant's polysiloxane B.
- 5 -
a. Schaefer, U.S. Patent 4,921,895 (1990) and
b. Ampulski, U.S. Patent 5,059,282 (1991).6
Schaefer
9. Schaefer describes woven, knitted and non-woven
fabrics (col. 1, line 11).
10. One fabric described is a cotton/polyester
knitted fabric.
11. Cotton is a cellulosic material.
12. According to Schaefer, the fabric is treated
with a "medium" comprising (col. 2, lines 5-29):
a. a polysiloxane described as polysiloxane A7
(col. 3, lines 3-29);
b. a polysiloxane described as polysiloxane B8
(col. 3, lines 41 through col. 4, line 30);
and
c. water and/or a water-miscible organic
solvent (col. 2, lines 28-29).
Appeal 95-4477
Application 08/006,350
The practitioner listed on the last page of this opinion was appointed after9
entry of the Examiner's Answer. All prosecution errors mentioned in this opinion are
the responsibility of applicant's former practitioner--not the current counsel of
record.
- 6 -
13. A suitable water-miscible organic solvent would
be 1,2-propylene glycol (col. 7, about line 47--see
formulation 4).
14. According to Schaefer, the "weight ratio" of
polysiloxane A to polysiloxane B is from 10:1 to 1:1 (col. 2,
lines 7-9).
The basis in the specification for applicant's A:B ratio
15. In his first action, the examiner rejected claim
1 as being anticipated by Schaefer (Paper 4, pages 2-3).
16. In response to the examiner's anticipation
rejection, the former practitioner for applicant made two9
amendments to claim 1 (Amendment B, Paper 4).
a. A first amendment was addition of
"cellulosic" before nonwoven.
b. A second amendment was addition of the
language "provided the ratio of polysiloxanes A:B is between
about >10:1 and 15:1."
Appeal 95-4477
Application 08/006,350
Applicant's former practitioner's argument is totally disingenuous. It ignores10
the word "about" in the phrase "about >10:1" inserted into claim 1 by Amendment B.
- 7 -
17. In Amendment B, applicant states (page 2--which
we note is not numbered):
Furthermore, the amended claims are directed to a
mixture of modified organopolysilixanes [sic--
organopolysiloxanes] A & B in a weight ratio of A:B of
>10:1 to 15:1. By contrast, the Schaefer patent is
restricted to the ratio of from 10:1 to 1:1.[10]
18. At the time Amendment B was filed, applicant's
former practitioner did not state the basis in the
specification, as filed, for the A:B ratio inserted into
claims 1 and 23.
19. The amendment was entered, but the examiner
rejected the claims finding that "[t]he specification does
not provide support for the claimed range of polysiloxanes
A:B ratio (>10:1 - 15:1)." Accordingly, the examiner entered
a rejection of the claims for failure to comply with the
description requirement of the first paragraph of 35 U.S.C.
§ 112. See Final Rejection entered September 26, 1994 (Paper
9, page 2). The examiner also made an obviousness rejection
based, inter alia, on the Schaefer patent.
Appeal 95-4477
Application 08/006,350
We note that applicant's former practitioner again leaves out any reference to11
"about" with respect to the ratio >10:1.
- 8 -
20. In response to the examiner's rejection,
applicant did not point to an explicit reference in the
specification, as filed, to an A:B ratio of "about >10:1 to
15:1."
21. However, applicant stated (Amendment C, filed
December 27, 1994, page 2)
On page 16 of the specification, the chart discloses
a polysiloxane A:B ratio of as small as 4.3 (Formula 4)
and as high as 19.25 (Formula 5). The claimed range of >
10:1 and 15:1 lies between the disclosed ranges and[11]
hence, the specification fully complies with the
requirement of § 112 first paragraph. If the Examiner,
however, has any other suggestions regarding the
aforementioned, he is invited to offer the same.
22. In an Advisory Action (Paper 12), the examiner
withdrew the § 112 rejection.
23. The examiner did not require, however, that
applicant amend the specification to make reference to new A:B
ratio. See 37 CFR § 1.75(d)(1).
24. There is a chart in the specification (page 16)
describing "examples of the inventive medium ***". The chart,
Appeal 95-4477
Application 08/006,350
- 9 -
which we believe is the chart to which applicant's former
practitioner referred in Amendment C, is the following (to
which has been added the A:B ratio of organopolysiloxane A to
organopolysiloxane B (obtained by dividing the amount of A by
the amount of B and rounding to the nearest unit)):
Chart
64444444444444444444444444L44444444444444444444444444444444444444447
5 * F O R M U L A 5
K)))))))))))))))))))))))))3))))0))))0))))0))))0))))0))))0))))0)))))M
5 I N G R E D I E N T S * 1 * 2 * 3 * 4 * 5 * 6 * 7 * 8 5
:4444444444444444444444444P4444P4444P4444P4444P4444P4444P4444P44444<
5 Organopolysiloxane A * 85 * 80 * 81 * 65 * 77 * 80 * 81 * 75 5
K)))))))))))))))))))))))))3))))3))))3))))3))))3))))3))))3))))3)))))M
5 Organopolysiloxane B * 5 * 10 * 7 * 15 * 4 * 5 * 5 * 10 5
K)))))))))))))))))))))))))3))))3))))3))))3))))3))))3))))3))))3)))))M
5 Propylene glycol * 10 * 5 * 10 * 20 * 15 * 10 * 8 * 5 5
K)))))))))))))))))))))))))3))))3))))3))))3))))3))))3))))3))))3)))))M
5 Butylene glycol * * 5 * * * * * * 5 5
K)))))))))))))))))))))))))3))))3))))3))))3))))3))))3))))3))))3)))))M
5 Nonionic surfactant * * * 2 * * 1 * 3 * 4 * 5
K)))))))))))))))))))))))))3))))3))))3))))3))))3))))3))))3))))3)))))M
5 PA, PE Polysiloxane C * * * * * 3 * * * 5 5
K)))))))))))))))))))))))))3))))3))))3))))3))))3))))3))))3))))3)))))M
5 PA Polysiloxane D * * * * * * 2 * * 5
K)))))))))))))))))))))))))3))))3))))3))))3))))3))))3))))3))))3)))))M
5 DA Polysiloxane E * * * * * * * 2 * 5
K)))))))))))))))))))))))))3))))3))))3))))3))))3))))3))))3))))3)))))M
5 Ratio A:B * 17 * 8 * 12 * 4 * 19 * 16 * 16 * 7 5
94444444444444444444444444N4444N4444N4444N4444N4444N4444N4444N444448
PA means polyalkyl
PE means polyether
DA means dialkoxy
Appeal 95-4477
Application 08/006,350
- 10 -
25. The chart demonstrates that only medium 3 has an
organopolysiloxane A to polysiloxane B ratio within the
claimed range of >10:1 to 15:1, i.e., an A:B range of 11.57,
which when rounded to the nearest unit is 12.
26. Accordingly, it is not clear how applicant
arrived at an A:B ratio of polysiloxane A to polysiloxane B of
about >10:1 to 15:1. Nor is it entirely clear why applicant
limited the upper range to 15:1, when the chart describes an
A:B ratio of about 19:1.
B. Discussion
1. New ground of rejection
A claim which contains a limitation not described in the
specification is properly rejected for failure to comply with
the description requirement of the first paragraph of
35 U.S.C. § 112. In re Rasmussen, 650 F.2d 1212, 1214, 211
USPQ 323, 326 (CCPA 1981) (the proper basis for rejection of a
claim amended to recite elements thought to be without support
in the original disclosure is the first paragraph of § 112).
Guidance on evaluation of whether a claim added to an
application after its filing date is set out by our appellate
Appeal 95-4477
Application 08/006,350
- 11 -
reviewing court in Eiselstein v. Frank, 52 F.3d 1035, 1038-39,
34 USPQ2d 1467, 1470 (Fed. Cir. 1995):
"Satisfaction of the description requirement insures
that subject matter presented in the form of a claim
subsequent to the filing date of the application was
sufficiently disclosed at the time of filing so that
the prima facie date of invention can fairly be held
to be the filing date of the application." Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d
1111, 1115 (Fed. Cir. 1991) (quoting In re Smith,
481 F.2d 910, 914, 178 USPQ 620, 623-24 (CCPA
1973)). In order to determine whether a prior
application meets the "written description"
requirement with respect to later-filed claims, the
prior application need not describe the claimed
subject matter in exactly the same terms as used in
the claims; it must simply indicate to persons
skilled in the art that as of the earlier date the
applicant had invented what is now claimed. Id. at
1563, 19 USPQ2d at 1116; see In re Wertheim, 541
F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976) ("Lack of
literal support . . . is not enough . . . to support
a rejection under § 112."). The test is whether the
disclosure of the application relied upon reasonably
conveys to a person skilled in the art that the
inventor had possession of the claimed subject
matter at the time of the earlier filing date.
Appeal 95-4477
Application 08/006,350
Applicant's former practitioner failed to explain how the limitation actually12
inserted in the claim avoided the A:B ratio of Schaefer.
- 12 -
Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d
1570, 1575, 227 USPQ 177, 179 (Fed. Cir. 1985).
"Precisely how close the original description must
come to comply with the description requirement of
§ 112 must be determined on a case-by-case basis."
Vas-Cath, 935 F.2d at 1561, 19 USPQ2d at 1116.)
We have not been able to find anything in the
specification, as filed, which expressly describes the now
claimed A:B ratio of "about >10:1 to 15:1." As Eiselstein v.12
Frank notes, however, subsequent claim language need not
appear in the specification in exactly the same words. Under
the precise facts of this case, however, we have not been able
to find anything which would constitute a description of the
ratio "about >10:1 to 15:1."
It is true, as applicant maintained in response to the
final rejection, that "the claimed range of >10:1 and 15:1"
falls within the A:B ratio of the formulations described in
the chart on page 16 of the specification.
Applicant's argument is similar to an argument which was
accepted by the CCPA in In re Wertheim, 541 F.2d 257, 265, 191
Appeal 95-4477
Application 08/006,350
- 13 -
USPQ 90, 98 (CCPA 1976). Thus, "on the facts" (emphasis
added) the Wertheim court found that a range of "between 35%
to 60%" was described in a specification explicitly describing
a range of 25% to 60%. However, the CCPA noted that it was
not creating a per se rule: "[w]e wish to make it clear that
we are not creating a rule applicable to all description
requirement cases involving ranges." 541 F.2d at 264, 191
USPQ at 98. Rather, the CCPA noted (id.):
Where it is clear, for instance, that the broad
described range pertains to a different invention
than the narrower (and subsumed) claimed range, then
the broader range does not describe the narrower
range.
In support of its observation, the CCPA referred to In re
Baird, 348 F.2d 974, 146 USPQ 579 (CCPA 1965). In Baird, the
CCPA found that a claimed temperature range of "from about
40EF to at least as low as about 60EF" was not described by a
range of "between 0E and 80EC. (32EF and 176EF.)" and an
example describing a temperature of 7EC (44.6EF). 348 F.2d at
982, 146 USPQ at 585. Baird had indicated that the lowest
practical temperature was 40EF. Thus, in Baird, the new range
Appeal 95-4477
Application 08/006,350
The Schaefer range of 10:1 to 1:1 describes a range which overlaps with the13
range of "about >10:1 to 15:1." The language >10:1 does not overlap with 10:1.
However, addition of the language "about" broadens >10:1 which necessarily means "about
>10:1 reads on 10:1."
- 14 -
was held to be directed to a different invention than the
original range.
The same is true in the case before us. But for the
newly added A:B range, applicant would not have been able to
distinguish in any patentable sense (anticipation and/or
obviousness) the claimed invention from that described by
Schaefer. Hence, applicant would have us believe that there13
is a patentable difference between the Schaefer range of 10:1
to 1:1 and his range of "about >10:1 to 15:1." Thus,
applicant apparently believes that he described two separate
inventions, possibly three separate inventions, in the
specification, as filed, viz., (1) all A:B ratios which
otherwise fall within the scope of claim 1, (2) an A:B ratio
of about 4:1 to about 19:1 and (3) about >10:1 to about 19:1.
For the reasons given, we find that this case is more
like Baird than it is like Wertheim. We also note that the
"about >10:1 to 15:1" limitation appears in all the claims on
appeal. Accordingly, we enter a new rejection of claims 1-14,
21 and 23-25, all the claims on appeal, pursuant 37 CFR
Appeal 95-4477
Application 08/006,350
We have noted several deficiencies in the brief on appeal (Paper 15) and the14
Examiner's Answer (Paper 16). It was not sufficient when the appeal brief was filed
(37 CFR § 1.192(c)(6)(iv) (1994)), and it is not sufficient now (37 CFR
§ 1.192(c)(8)(iv) (1998)), to simply point out that a prior art reference does not
describe all limitations. An applicant is further obligated to point out why the
rejection is wrong and why the invention is patentable notwithstanding the failure of a
reference to describe a particular limitation. Claims stand or fall together unless
separate argument is presented indicating why a claim is considered to be patentable.
Hence, in this case before us, had we reached the merits of the prior art rejection, all
claims would have stood or fallen with claim 1. The examiner failed to appreciate the
requirements of Rule 192. On his view of the rules, the examiner nevertheless failed to
address various limitations, e.g., the claims calling for organopolysiloxanes C, D and
E.
- 15 -
§ 1.196(b), on the ground that those claims fail to comply
with the description requirement of the first paragraph of
35 U.S.C. § 112 with respect to the A:B ratio recited in claim
1.
We recognize that there is a rejection based on
obviousness presented by the appeal. However, we are unable
to determine the weight, if any, which applicant and the
examiner gave to the limitation "about >10:1 to 15:1." The
limitation is not mentioned in the Examiner's Answer and/or
the argument portion of applicant's brief on appeal. Hence,
we will vacate the examiner's § 103 rejection, without
prejudice to the examiner making another rejection based,
inter alia, on Schaefer, in the event applicant files an
amendment in response to our new ground of rejection.14
Appeal 95-4477
Application 08/006,350
- 16 -
2. Statement under 37 CFR § 1.196(c)
The rules authorize the board to make a suggestion on how
a rejection might be overcome. With respect to our new ground
of rejection under 37 CFR § 1.196(b), we suggest that
applicant may wish to consider the following claim, which if
presented in place of current claim 1, would overcome our new
ground of rejection and all of our other observations about
the deficiency of claim 1:
Suggested claim : In a combination of a cellulosic
nonwoven material and a medium, the improvement wherein the
medium comprises:
[A] 45 to 98% by weight of a water soluble or water
dispersible polyether polysiloxane A containing ether
groups and polysiloxane blocks,
[1] the polyether groups of which consist of
[a] 30 to 100 mole percent of oxyethylene
units,
[b] the remainder being oxypropylene
units, and
[2] the polysiloxane block of which has 10 to
100 siloxane units;
Appeal 95-4477
Application 08/006,350
- 17 -
[B] 1 to 20% by weight of a water soluble or water
dispersible organopolysiloxane B with at least one
ammonium group linked over a carbon atom; and
[C] 1 to 20% by weight of
[1] water or
[2] a water soluble alkylene glycol,
provided the ratio of polysiloxanes A:B is between
about 12:1 and about 19:1.
Descriptive support for "about 12:1" is medium 3 in the
chart on page 16 of the specification. "About" has been
included given that the actual A:B ratio of medium 3 is 11.57.
Descriptive support for "about 19:1" is medium 5. "About" has
been included given that the actual A:B ratio of medium 5 is
19.25.
Likewise, applicant should amend the specification to
make reference to the A:B ratio. See 37 CFR § 1.75(d)(1).
3. Other observations
We regret that the Patent and Trademark Office did not
earlier fully analyze whether the A:B ratio inserted into
claim 1 was described in the specification, as filed.
Appeal 95-4477
Application 08/006,350
- 18 -
However, the fact is that the A:B ratio now claimed is not
described in the specification, as filed. Unfortunately, a
delay in finding a basis for unpatentability is not a ground
on which claims in an application can, or should, be allowed.
In the course of our review of the application and the
examiner's rejection, we have uncovered another matter which
may warrant examination should applicant elect to respond to
our new ground of rejection. On page 6 of the specification
it is said that R can be "an alkyl group with 1 to 12 carbon2
atoms or a polyether group )(C H O) R , wherein R is hydrogen,n 2n x 3 3
hydroxyl, alkyl or acyl ***." When R is hydroxy the terminal3
moiety on the R would be a peroxy group, i.e., C H O)OH. The2 n 2n
examiner may wish to look into whether an enabling disclosure
has been provided by applicant insofar as organopolysiloxane A
can have a peroxy group.
C. Decision
The decision of the examiner rejecting the claims as
being unpatentable over the prior art is vacated.
All claims on appeal have been rejected, pursuant to
37 CFR § 1.196(b), for failure to comply with the written
Appeal 95-4477
Application 08/006,350
- 19 -
description requirement of the first paragraph of 35 U.S.C. § 112.
D. Time for taking action
This opinion contains a new ground of rejection pursuant
to Rule 196(b) (37 CFR § 1.196(b), amended effective Dec. 1,
1997). See Notice of Final Rule, 62 Fed. Reg. 53131, 53197
(Oct. 10, 1997), reprinted in 1203 Off. Gaz. Pat. & Trademark
Office 63,122 (Oct. 21, 1997)).
Rule 196(b) provides that, "A new ground of rejection
shall not be considered final for purposes of judicial
review."
Rule 196(b) also provides that the applicant, WITHIN TWO
MONTHS FROM THE DATE OF ENTRY OF THIS DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment
of the claims so rejected or a showing of
facts relating to the claims so rejected,
or both, and have the matter reconsidered
by the examiner, in which event the
application will be remanded to the
examiner. . . .
Appeal 95-4477
Application 08/006,350
- 20 -
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
VACATED
(New grounds of rejection 37 CFR § 1.196(b))
______________________________
WILLIAM F. SMITH, )
Administrative Patent Judge )
)
)
______________________________)
FRED E. McKELVEY, Senior ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
RICHARD E. SCHAFER, )
Administrative Patent Judge )
Appeal 95-4477
Application 08/006,350
- 21 -
cc (via First Class Mail):
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FROMMER, LAWRENCE & HAUG LLP
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