Ex Parte Houle et al

Patent Trial and Appeal Board

Jun 26, 2013

12335575 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FRANCES ANNE HOULE and HIROSHI ITO1
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Appeal 2011-011559
Application 12/335,575
Technology Center 1600
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Before TONI R. SCHEINER, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims that have
been subject to a restriction requirement under 35 U.S.C. § 121.
We dismiss the appeal.

1 Appellants state that the Real Party in Interest is International Business
Machines Corporation (Appeal Br. 1).
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Application 12/335,575

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STATEMENT OF THE CASE
The claims on appeal are directed to a “method for forming a stable
viscosity coating composition, comprising combining a vinyl ether with a
stabilizer,” where the vinyl ether is selected from a compound defined by
any one of chemical formulas (I) through (VI), the stabilizer is selected from
a compound defined by chemical formula (VII) or (VII), and the R-group
substituents (R1 through R87) of the formulas are selected from a list of
specified chemical groups (see Appeal Br. 17-21 (Claims Appendix)).
The Examiner required restriction of the originally filed claims, and
set out thirty-six restriction groups (Office action mailed Dec. 3, 2009, at
2-6). As relevant here, the Examiner restricted each of claims 12-18 into
twelve different inventions (restriction groups XIII through XXIV), each
invention being directed to a method of making a composition comprising
one of formulas (I) through (VI), combined with one of formulas (VII) or
(VIII) (id. at 3-4). The Examiner concluded that:
Inventions XIII through XXXVI are directed to related
processes. The related inventions are distinct if the (1) the
inventions as claimed are either not capable of use together or
can have a materially different design, mode of operation,
function, or effect; (2) the inventions do not overlap in scope,
i.e., are mutually exclusive; and (3) the inventions as claimed
are not obvious variants. See MPEP § 806.05(j). In the instant
case, the inventions as claimed have different designs.
Furthermore, the inventions as claimed do not encompass
overlapping subject matter and there is nothing of record to
show them to be obvious variants.
(Id. at 7.)
The Office action also included a section headed “Election of
Species,” stating that “[a]s an additional requirement, with the election of
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one of the above groups, a provisional election of species of a particular
compound is also required. . . . Examination will begin with the elected
species.” (Id. at 8-9.)
Appellants responded to the restriction requirement as follows:
Applicants hereby elect[ ] Group XV (Formulae III and VII),
claims 12-18 drawn to a method of making a composition
comprising the compounds of Formulae III and VII, classified
in classes and subclasses of class 532. This election is made
without traverse, and Applicants hereby reserve the right to file
a divisional application in connection with unelected groups . . .
XIII, XIV[,] XVI, XVII, XVIII, XIX, XX, XXI, XXII, XXIII
and XXIV drawn to a method of making a composition of
claims 12-18.
(Response filed Dec. 11, 2009, page 1.) Appellants also stated that, “[a]s to
the species requirement, Applicants select R19, R21, R22, R25, R26, R27, R28,
R70, R71, R72, R73, R74, R75, R76, and R77 to be H, R20, R23, and R29 to be
methyl groups, R24 to be –CH2OCH=CH(CH3) and F to be silicon” (id.).
The Examiner acknowledged Appellants’ “election without traverse
of Group XV (claims 12-18 in part) along with an election of species”
(Office action mailed Feb. 25, 2010, page 2) and stated that “[c]laims 1-11,
12-18 (in part), 19, and 20 are withdrawn from consideration by the
Examiner under 37 CFR 1.142(b) as being drawn to a non-elected
invention” (id.). In the same action, the Examiner stated that “[c]laims 12-
18 are objected to for containing elected and non-elected subject matter”
(id.).
After initially rejecting claims 12-18 (Office action mailed Feb. 25,
2010), the Examiner withdrew the rejection, extended the search from the
elected species to the “entirely claimed group” (Office action mailed July
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21, 2010, page 2), and objected to these claims on the basis that they
contained elected and non-elected subject matter but did not reject them
(id.).
Notwithstanding their election without traverse, however, Appellants
filed a petition under 37 C.F.R. § 1.181 on the basis that the Office action
mailed July 21, 2010 was improperly made final because “the Examiner had
not examined every member of the Markush group consisting of member
compounds I, II, III, IV, V, and VI. The Examiner had only examined
member compound III.” (Petition filed Aug. 30, 2010, page 2.) With regard
to the restriction requirement, Appellants stated that,
while the Examiner indicated there were 36 inventions, the
Examiner indicated only the groups of inventions I through XII,
XIII through XXIV and XXV through XXXVI were distinct.
There was no indication that the member compounds of
inventions XII through XVIII (member compounds I through
VI) were going to be treated in any other manner then [sic] as a
Markush group just as the Markush group of R groups were.
(Id.)
The petition was denied by the Director of Technology Center 1600
(Petition Decision mailed Nov. 17, 2010), and Appellants filed the present
appeal (Notice of Appeal filed Dec. 17, 2010).
Appellants argue that the Examiner’s action amounts to a rejection of
claims 12-18 “because the Examiner has refused to examine all the members
of a Markush group as required by [ ] In re Weber, 580 F.2d 455, 198 USPQ
328 (CCPA 1978) and In re Haas, 580 F.2d 461, 198 USPQ 334 (CCPA
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1978)” (Appeal Br. 72). Appellants note that they “did properly petition the
restriction request, but believe the petition was wrongly decided. . . .
Therefore, Applicants have availed themselves of the right to treat the
refusal to examine a Markush group as an appealable rejection under case
law.” (Id.)
We do not reach the issue of whether the Examiner’s actions in this
case amount to a de facto rejection under In re Haas, 486 F.2d 1053 (CCPA
1973), because we conclude that Appellants waived any “right to treat the
refusal to examine a Markush group as an appealable rejection” (Appeal Br.
7) by making their election of restriction group XV without traverse.
The record shows that Appellants understood at the time that
restriction groups XIII through XXIV all applied to claims 12-18, and that
pursuing the inventions of groups XIII, XIV, and XVI through XXIV would
require filing divisional applications. Appellants expressly stated that they
“reserve the right to file a divisional application in connection with
unelected groups . . . XIII, XIV[,] XVI, XVII, XVIII, XIX, XX, XXI, XXII,
XXIII and XXIV drawn to a method of making a composition of claims 12-
18” (Response filed Dec. 11, 2009, page 1). Appellants also noted that “[a]s
to the species requirement, Applicants select” specific chemical groups for
each of the relevant substituents (id.).
These statements are not consistent with Appellants’ later argument
that they did not think that “the member compounds of inventions XII

2 The cited cases address the issue of whether 35 U.S.C. § 121 provides a
basis for rejecting claims. See 580 F.2d at 458, 580 F.2d at 464. In re Haas,
486 F.2d 1053, 1056 (CCPA 1973) addresses the issue of whether a refusal
to act on claims is a de facto rejection.
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through XVIII (member compounds I through VI) were going to be treated
in any other manner then [sic] as a Markush group just as the Markush group
of R groups were” (Petition filed Aug. 30, 2010, page 2.) The Examiner
clearly distinguished between the restriction groups and the election of
species in the restriction requirement; Appellants themselves noted the need
for divisional applications to pursue the other restriction groups applied to
claims 12-18; and Appellants separately addressed the species requirement
by specifying particular chemical groups for the relevant R positions. Thus,
Appellants’ response to the restriction requirement shows that they
understood that the R groups were being treated differently from the
inventions of restriction groups I through XXXVI, and they nonetheless
made their election of group XV without traverse.
To preserve the right to have a restriction requirement reviewed by
petition, an election must be made with traverse, and the response must
“specifically point out the reasons on which [the applicant] based his or her
conclusions that a requirement to restrict is in error” MPEP § 818.03(a).
Here, the record shows that Appellants knowingly waived the right to
contest the propriety of the Examiner’s restriction requirement. The Office’s
decision to entertain, and deny, Appellants’ petition does not change that
fact. Appellants therefore also waived any right that they might have had for
review of the restriction requirement as a de facto rejection under In re
Haas, 486 F.2d 1053 (CCPA 1973).
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SUMMARY
We dismiss the appeal.

DISMISSED

cdc