Ex parte Gibler et al.

Board of Patent Appeals and Interferences

Jul 17, 2000

08340966 (B.P.A.I. Jul. 17, 2000)

1
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(2) is not binding precedent of the Board.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. 8
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CARMA J. GIBLER,
DAVID M. AUSTGEN, JR.
and
ROY A. PARKER
_____________
Appeal No. 1997-0005
Application 08/340,966
______________
ON BRIEF
_______________
Before WILLIAM F. SMITH, JOHN D. SMITH and GRON, Administra-
tive Patent Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-0005
Application 08/340,966
2
This is an appeal pursuant to 35 U.S.C. § 134 from
the final rejection of claims 1 through 7, all claims pending
in this application.
Representative claims 1 and 7 are reproduced below:
1. A method to hydrogenate a polymer containing
ethylenic unsaturation comprising the method comprising the
steps of:
providing a solution or suspension of the polymer
containing ethylenic unsaturation with an amount of Group VIII
metal alkoxide or carboxylate and metal alkyl hydrogenation
catalyst effective to permit hydrogenation of the ethylenic
unsaturation upon exposure to hydrogen;
exposing the polymer solution or suspension to a
hydrogen partial pressure for a time period sufficient to
hydrogenate greater than about 90 percent of the ethylenic
unsaturation;
adding additional Group VIII metal alkoxide or
carboxylate and metal alkyl hydrogenation catalyst to the
polymer solution or suspension after greater than about 90
percent of the ethylenic unsaturation has been hydrogenated,
the amount of additional Group VIII metal alkoxide or carbox-
ylate and metal alkyl hydrogenation catalyst effective to
improve separation of hydrogenation catalyst metal from the
polymer solution;
mixing the hydrogenated polymer solution or suspen-
sion with additional Group VIII metal alkoxide or carboxylate
and metal alkyl hydrogenation catalyst with an aqueous solu-
tion of an acid; and
Appeal No. 1997-0005
Application 08/340,966
“Nickel alkyl” is a misnomer and should be corrected1
before further action is taken in this application.
3
separating a hydrogenated polymer solution or sus-
pension that contains less than about 0.8 percent by weight
water from the aqueous solution.
7. The method of claim 1 wherein the metal is a
nickel alkyl, and the additional amount of Group VIII metal1
alkoxide or carboxylate and nickel alkyl hydrogenation cata-
lyst is about 60 ppm by weight of nickel based on the polymer
solution.
Appealed claims 1 through 6 stand rejected under 35
U.S.C. § 112, second paragraph. Appealed claim 7 stands
rejected under 35 U.S.C. § 112, first paragraph, “written
description requirement.” No prior art rejections are before
us.
We reverse.
The subject matter on appeal is directed to a method
to hydrogenate polymers containing ethylenic unsaturation
wherein the residue of the hydrogenation catalyst is removed
by aqueous acid extraction leaving a separated hydrogenated
polymer solution or suspension that contains less than about
0.8 percent by weight water from the aqueous acid solution.
As explained in appel- lants’ specification, effective separa-
Appeal No. 1997-0005
Application 08/340,966
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tion of water from the hydrogenated polymer solution or sus-
pension (referred to as a “polymer cement”) is necessary for
the effective removal of metals (catalytic metal residues)
because such metals are often concentrated in a small amount
of water entrained within the polymer cement. See the speci-
fication at page 2, lines 15-22.
Appellants’ method requires exposing a polymer solution or
suspension containing a known hydrogenation catalyst, i.e., a
Group VIII metal alkoxide or carboxylate and metal alkyl such
as the reaction product of nickel 2-ethyl-hexanoate with
triethylaluminum, to a partial pressure of hydrogen for a time
sufficient to hydrogenate greater than about 90 percent of the
ethylenic unsaturation. Thereafter, additional hydrogenation
catalyst is added to the “greater than 90 percent” hydroge-
nated polymer solution or suspension in an amount “effective
to improve separation of hydrogenation catalyst metal from the
polymer solution” (claim 1, lines 13-15), and the resulting
hydrogenated polymer solution is mixed with an aqueous acid
Appeal No. 1997-0005
Application 08/340,966
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solution for extraction of the hydrogenation catalyst metals
(and residues). The final step of the claimed process involves
the separation of the hydrogenated polymer solution from the
aqueous acid extraction solution.
In rejecting appealed claims 1 through 6 under the
second paragraph of 35 U.S.C. § 112, the examiner contends
that the claim language “the amount of additional Group VIII
metal alkoxide or carboxylate and metal alkyl hydrogenation
catalyst effective to improve separation of hydrogenation
catalyst metal from the polymer solution” in the “adding” step
of appealed claim 1 renders the claim indefinite, because a
“particular amount” is not specified. Further, the examiner
explains that appealed claims 1 through 6 are indefinite since
undue experimentations are required to one
of ordinary skill in the art at the time of
invention to determine the said amount of
additional catalyst which depends on many
reaction parameters (such as pressure,
temperature or an initial amount of a cata-
lyst) which are absent in the claims (em-
phasis added).
See the answer at page 4.
Although the examiner’s rejection is predicated on
the second paragraph of 35 U.S.C. § 112, i.e., “indefinite-
Appeal No. 1997-0005
Application 08/340,966
6
ness,” he implicitly speaks of a first paragraph 35 U.S.C. §
112 requirement, i.e., “enablement,” which requires that the
specification teach those in the art to make and use the
invention without “undue experimentation.” In re Vaeck,
947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991). In
similar circumstances, in In re Borkowski, 422 F.2d 904, 909,
164 USPQ 642, 646 (CCPA 1970), the court instructed that
it should be made clear exactly which of
the several requirements of § 112 are
thought not to have been met. Is the claim
unclear or is the specification’s
disclosure inadequate to support it?
Moreover, in Borkowski, 422 F.2d at 909, 164 USPQ at 645,
the court stated that since the rejection of the claims was
predicated only on criticisms of the
disclosure portion of the specification, we
do not see how they are relevant to that
portion of the second paragraph of § 112
from which the examiner was quoting
which, as later stated by the Borkowski court, is essentially
a requirement for “precision and definiteness” of claim
language. Similarly here, we fail to see the relevance of the
examiner’s “undue experimentation” arguments and criticisms to
Appeal No. 1997-0005
Application 08/340,966
7
his stated 35 U.S.C. § 112, second paragraph, rejection.
Respecting the examiner’s contention that the claims are
indefinite because a particular amount of added
hydrogenation catalyst is not quantitatively defined, we point
out that the amount of catalyst added is functionally limited
in appellants’ claims to an amount which is “effective to
improve separation of hydrogenation catalyst metal from the
polymer solution.” There is nothing “intrinsically wrong”
with the use of functional language in drafting patent claims.
In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA
1971). It is thus apparent that the examiner has failed to
meet his burden of establishing that appealed claims 1 through
6 do not particularly point out and distinctly claim the
subject matter which appellants regard as their invention. We
reverse this rejection.
We also reverse the examiner’s rejection of appealed
claim 7 under 35 U.S.C. § 112, first paragraph, “written
description requirement.” The examiner contends that the
claim language in appealed claim 7 which defines the amount of
the added catalyst as “60 ppm by weight of nickel based on the
Appeal No. 1997-0005
Application 08/340,966
8
polymer solution” does not have support in the originally
filed specification, because “Samples C, D and E” in the Table
on page 8 of the specification do not expressly describe the
percentage of hydrogenation that has been effected at the time
this additional amount of nickel hydrogenation catalyst is
added to the hydrogenated polymer solution. As appellants
emphasize in their brief, Samples C, D and E are originally
described as “examples of the present invention”
(specification, page 8, lines 25-27), and based on the
original claims, the abstract, and the descriptions in the
specification at page 3, lines 4-6, and page 5, lines 20-23,
the “present invention” referred to at page 8, lines 26 and
27, of the specification is necessarily a process wherein the
hydrogenation exceeds 90 percent of the ethylenic unsaturation
when additional catalyst is added. Based on the factual
record before us, we conclude that the application, as
originally filed, reasonably conveys to a person of ordinary
skill in this art that appellants had possession of the later
claimed subject matter defined by appealed claim 7. Thus,
this rejection is also reversed.
Appeal No. 1997-0005
Application 08/340,966
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The decision of the examiner is reversed.
REVERSED
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
JOHN D. SMITH ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
TEDDY S. GRON )
Administrative Patent Judge )
JDS:psb
Appeal No. 1997-0005
Application 08/340,966
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Del S. Christensen
Shell Oil Company
Intellectual Property
P.O. Box 2463
Houston, TX 77252-2463