Ex parte Houlihan

Board of Patent Appeals and Interferences

Sep 29, 1999

07950388 (B.P.A.I. Sep. 29, 1999)

Application for patent filed September 23, 1992. 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journal and (2) is not binding precedent of the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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANCIS M. HOULIHAN
____________
Appeal No. 1995-1539
Application No. 07/950,3881
____________
HEARD: November 10, 1997
____________
Before KIMLIN, PAK and WARREN, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
refusal to allow claims 1, 2, 4 and 5, which are all of the
claims pending in the application. Claim 3 stands withdrawn
from consideration by the examiner as being directed to a non-
elected invention.
Appeal No. 1995-1539
Application No. 07/950,388
2
According to appellant (Brief, page 3),
claims 1 and 2 rise or fall together.
However, claims 3 and 5 [sic, 4 and 5] have
additional limitations which even more
clearly demonstrate patentability over the
cited art.
Appellant, however, has supplied no substantive arguments for
the separate patentability of claim 4. See Brief, Applicant’s
Response to the Examiner’s Answer (Reply Brief), and
Supplemental Reply Brief in their entirety. Therefore, for
purposes of this appeal, we will limit our discussion to
claims 1 and 5 which are reproduced below:
1. A process for making a composition of matter, said
process comprising the steps of chemically reacting
substituted 4-hydroxystyrene to form said composition
characterized in that said substituted 4-hydroxystyrene is
made by treating a protected phenol with a base and
interaction in the presence of base of the resulting
deprotected phenol with a reagent comprising a member of the
group consisting of an acid halide, a halogen substituted
alkyl, a dicarbonate, and an acid anhydride wherein said
substituted 4-hydroxystyrene undergoes said chemical reaction
without previous distillation.
5. The process of claim 1 wherein said acid chloride
comprises a compound of the formula X - SO R’’’ where X is a2
halogen and R’’’ is aryl or alkyl.
As evidence of unpatentability of the claimed subject
matter, the examiner relies on the following prior art:
Appeal No. 1995-1539
Application No. 07/950,388
3
Nader et al.(Nader) 5,082,965 Jan. 21,
1992
(filed Oct. 29, 1990)
Appeal No. 1995-1539
Application No. 07/950,388
4
Kvakovszky et al. (Kvakovszky) 0,486 267 A1 May 20, 1992
(Published European Patent Application)
Pine et al. (Pine), Organic Chemistry, Fourth Ed., McGraw-Hill
Book Company, pp. 314-322 and 712-715 (1980).
Appellant’s admission regarding utility of substituted styrene
monomers at pages 1 and 2 of the specification (admitted prior
art).
The appealed claims stand rejected as follows:
(1) Claims 1, 2, 4 and 5 under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out
and distinctly claim the subject matter which appellant
regards as the invention (Answer, page 3, together with the
Office action dated Feb. 1, 1993, page 3);
(2) Claims 1, 2 and 4 under 35 U.S.C. § 102 as anticipated by
the disclosure of Nader (first Supplemental Answer, page 2);
(3) Claims 1 and 4 under 35 U.S.C. § 102 as anticipated by
the disclosure of Kvakovszky (first Supplemental Answer, page
3);
(4) Claim 5 under 35 U.S.C. § 103 as unpatentable over the
combined disclosures of Nader, Kvakovszky, Pine and the
admitted prior art (first Supplemental Answer, page 3); and
(5) Claims 1, 2, 4 and 5 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Pine and the
Appeal No. 1995-1539
Application No. 07/950,388
5
admitted prior art (Answer, page 4, together with the Office
action dated Feb. 1, 1993, page 4).
In reaching our decision in this appeal, we have reviewed
the specification, claims and applied prior art, including all
of the arguments advanced by both the examiner and appellant
in support of their respective positions. As a result of this
review, we make the determinations which follow.
We begin our consideration of the issues before us by
determining the scope of the claimed subject matter. Gechter
v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed.
Cir. 1997); In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671,
1674 (Fed. Cir. 1994). We give words in the claims the
broadest reasonable interpretation in light of the
specification. In re Morris, 127 F.3d 1048, 1054-55, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997). When there is an apparent
intent in the specification to utilize those words in a more
limited sense, we give them such meaning. See, e.g.,
Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582, 39 USPQ2d 1573, 1576 (Fed. Cir. 1996);
Paulsen, 30 F.3d at 1480, 31 USPQ2d at 1674.
Appeal No. 1995-1539
Application No. 07/950,388
6
The claimed subject matter is directed to “[a] process
for making a composition of matter”. See claim 1. The
process comprises reacting a protected phenol with a base to
form a deprotected phenol (corresponding phenolate, e.g., 4
hydroxy styrene); reacting the resulting deprotected phenol
with a reagent in the presence of the base to form a
substituted 4-
hydroxystyre ne; and
chemically reacting
the resulting
substituted 4-
hydroxystyre ne,
without previous
distillation, to form a desired composition of matter. See
specification, pages 2-3, together with claim 1. The
protected phenol is defined as follows (specification, page 2,
line 31 to page 3, line 3):
Appeal No. 1995-1539
Application No. 07/950,388
7

The reagent employed comprises an acid halide, a halogen
substituted alkyl, a dicarbonate or an acid anhydride. See
claim 1. The substituted 4-hydroxy styrene produced is
lim
ite
d
by
the
typ
e of the reagent employed. Id. Note, however, that the
claimed process does not preclude the presence of additional
Appeal No. 1995-1539
Application No. 07/950,388
8
ingredients or steps. See In re Baxter, 656 F.2d 679, 686,
210 USPQ 795, 802 (CCPA 1981) (the term “comprising” permits
inclusion of additional ingredients or steps which are not
recited in a claim). According to appellant (specification,
page 2, lines 26-28), the substituted 4-hydroxystyrene
produced in the claimed process is “of sufficient purity that
distillation is not required for most applications (emphasis
ours).”
We turn first to the rejection of claims 1, 2, 4 and 5
under 35 U.S.C. § 112, second paragraph. The purpose of the
second paragraph of Section 112 is to basically insure, with a
reasonable degree of particularity, an adequate notification
of the metes and bounds of what is being claimed. See In re
Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
According to In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971), the determination of whether the claims of an
application satisfy the requirements of the second paragraph
of Section 112 is
merely to determine whether the claims do, in fact,
set out and circumscribe a particular area with a
reasonable degree of precision and particularity.
It is here where the definiteness of language
Appeal No. 1995-1539
Application No. 07/950,388
9
employed must be analyzed -- not in a vacuum, but
always in light of the teachings of the prior art
and of the particular application disclosure as it
would be interpreted by one possessing the ordinary
level of skill in the pertinent art. [Emphasis ours;
footnote omitted.]
Applying these precedents to the expressions criticized by the
examiner, we are convinced that claims 1, 2, 4 and 5 are not
indefinite.
The examiner, for example, criticizes the use of the
expression “composition of matter” in claim 1. See Answer,
pages 4-6. However, it is clear to us that the claimed
“composition of matter” refers to those products resulting
from the claimed process steps. Although the terminology is
very broad, breadth is not indefiniteness. In re Miller, 441
F.2d 689, 693, 169 USPQ 597, 600 (1971).
The examiner also criticizes the claim language as
convoluted and hard to understand. See Answer, page 5. The
examiner, however, does not specify any particular claim
language
or phrases as being indefinite. Nor does the record indicate that
the examiner has considered claim language in light of “the
teachings of the prior art and of the application disclosure”.
Appeal No. 1995-1539
Application No. 07/950,388
10
Under this circumstance, it cannot be said that the examiner
has demonstrated that the claim language involved is
considered indefinite. Accordingly, we reverse this ground of
rejection. We turn next to the § 102 rejections. The
examiner has rejected claims 1, 2 and 4 as anticipated by the
disclosure of Nader and claims 1 and 4 as anticipated by the
disclosure of Kvakovszky. “Under 35 U.S.C. § 102, every
limitation of a claim must identically appeal in a single
reference for it to anticipate the claim.” [citation
omitted]. Gecter v. Davidson, 116 F.3d at 1457, 43 USPQ2d at
1032.
Th Nader reference discloses reacting an acyloxystyrene
(protected phenol) with a strong base at a low temperature to
the corresponding phenolate (deprotected phenol). See column
2, lines 63-65, in conjunction with column 3, lines 11-15.
Suitable acyloxystyrenes (protected phenol) can “have from 1
to 4 carbon atoms in the acyl group.” See column 2, lines 66-
68. “Other substituents which do not interfere with the
process of the invention can [also] be present on the styrene
ring.” See column 2, line 68 to column 3, line 2. The
preferred acyloxystyrene, however, is 4-acetoxystyrene. See
Appeal No. 1995-1539
Application No. 07/950,388
11
column 3, lines 2-3. To the resulting reaction mixture
containing the phenolate (deprotected phenol) formed from 4-
acetoxystyrene and a base, a phase transfer catalyst and an
alkoxycarbonylation agent in a solvent are added. See column
3, lines 19-22. “The reaction of the phenolate formed in situ
with the alkoxycarbonylation agent is conducted at a
temperature of 110 C to about 30 C . . . .” See column 3,o o
lines 45-48 and column 2, lines 37-40. The preferred
alkoxycarbony-
lation agent employed is di-t-butyldicarbonate (a
dicarbonate). See column 3, line 32. Once the desired
alkoxycarbonyloxystyrene (substituted 4-hydroxystyrene) is
formed, “additional organic solvent is added to aid in easy
separation of the organic phase [from the aqueous phase].”
See column 3, lines 53-57 and 63-68. The desired
alkoxycarbonyloxystyrene may be subsequently “isolated using
conventional known techniques, such as distillation.” See
column 3, lines 58-61. If desired, however, the desired
alkoxycarbonyloxystyrene is derivatized directly (chemically
reacted directly) “in the organic phase after separation
Appeal No. 1995-1539
Application No. 07/950,388
12
without isolation or purification.” See column 3, line 68 to
column 4, line 2.
The Kvakovszky reference, like the Nader reference,
discloses reacting 4-acetoxystyrene (protected phenol) with a
base in a solvent to form the salt of 4-hydroxystyrene
(deprotected phenol) and then subsequently or simultaneously
reacting the salt of 4-hydroxystyrene with di-tertiary-butyl-
dicarbonate (a dicarbonate) in situ (in the presence of both
the base and 4-acetoxystyrene). See abstract, together with
page 2, lines 41-49. According to Kvakovszky, it is important
to not isolate the 4-hydroxystyrene prior to reacting it with
di-tertiary-butyl-dicarbonate. See page 6, lines 16-17. The
organic phase containing 84% yield of 4-tertiary-
butoxycarbony-
loxystyrene (substituted 4-hydroxystyrene) is recovered. See
example 3 at page 7. Alternatively, 84% yield of 4-tertiary-
butoxycarbonyloxystyrene is recovered after distillation. See
example 4 at page 7. The recovered 4-tertiarybutoxycarbony-
loxystyrene is polymerized (chemically reacted) to form a
photoresist material. See page 2, lines 28-29.
Appeal No. 1995-1539
Application No. 07/950,388
13
Appellant argues that both Nader and Kvakovszky do not
teach one of ordinary skill in the art to avoid distilling 4-
tertiary-butoxycarbonyloxystyrene (a substituted 4-
hydroxystyrene) prior to a subsequent chemical reaction.
According to appellant, both Nader and Kvakovszky are directed
to forming a photoresist material which cannot tolerate the
presence of alkali metal impurities. Appellant then refers to
his own statement at page 4, lines 26-28, of the specification
which states:
Although bases within this range will promote
the
reaction, bases such as sodium hydroxide having
metal
moieties should typically be avoided for electronic
applications where contaminants such as sodium are
quite undesirable.
Appellant goes on to conclude that the need to remove alkali
metal impurities would have led one of ordinary skill in the
art to employ distillation prior to a subsequent chemical
reaction. We do not agree.
As indicated supra, we observe that the Nader reference
specifically teaches derivatizing (chemically reacting)
directly a substituted 4-hydroxystyrene in the organic phase
without isolation (distillation) or purification. Appellant’s
Appeal No. 1995-1539
Application No. 07/950,388
14
argument simply fails to take into account this clear teaching
on the part of the Nader reference.
As also indicated supra, we observe that the Kvakovszky
reference does not require distillation prior to
polymerization. Accordingly, we read the Kvakovszky reference
to teach polymerization of the resulting substituted 4-
hydroxystyrene, without distillation. This reading is
especially appropriate since the Kvakovszky reference
describes forming a product containing the same level (84%) of
a substituted 4-hydroxy-
styrene, with or without distillation. Compare examples 3 and
4. Appellant has not demonstrated by objective evidence that
the exemplified organic phase having a substituted 4-hydroxy-
styrene (example 3) in the Kvakovszky reference contains
alkali metal impurities. Nor has appellant demonstrated by
objective evidence that the amount of alkali metal impurities
in the above-mention organic phase is detrimental to forming a
photoresist material.
On this record, we agree with the examiner that the
claimed subject matter as a whole is anticipated by the
disclosure of Nader or Kvakovszky. Thus, we affirm the
Appeal No. 1995-1539
Application No. 07/950,388
In the event of further prosecution, the examiner is to2
determine whether the appealed claims embrace an admittedly
known process of making a composition of matter comprising
chemically reacting a class of known compounds, substituted 4-
hydroxystyrenes, with an unspecified reactant, or by itself,
since the claim language, which recites how the substituted
4-hydroxystyrene is prepared, is in product-by-process format.
15
examiner’s decision rejecting claims 1, 2 and 4 under 35
U.S.C. § 102.2
We turn next to the § 103 rejection of claim 5 over the
combined disclosures of Nader, Kvakovszky, Pine and the
admitted prior art. At issue is what the combined teachings
of the references would have suggested to those of ordinary
skill in the art. In re Young, 927 F.2d 588, 591, 18 USPQ2d
1089, 1091 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). The examiner concludes that it
would have been obvious to employ the claimed sulfonating
reagent for the alkoxycarbonylation agent in the process
described in, for example, Nader or Kvakovszky. Supplemental
Answer, page 3. In support of this conclusion, the examiner
finds (Supplemental Answer, pages 3 and 4) that
said sulfonating reagent is notoriously
well known to the prior art and one of ordinary
skill in the art would expect that said reagent
Appeal No. 1995-1539
Application No. 07/950,388
16
would react in a conventional manner with a 4-
hydroxy styrene salt generated in situ.... that
sulfonated esters of 4-hydroxy esters of 4-
hydroxystyrene would have the same or similar
utility as the alkoxycarbonyloxystyrene [sic,
alkoxycarbony-
loxystyrene] (e.g., utility as monomers
used in the manufacture of polymers).
Appellant does not dispute the above findings and conclusion.
Appellant only argues that the above prior art references do
not teach, nor would have suggested, chemically reacting a
substituted 4-hydroxystyrene without previous distillation.
However, we are not persuaded by this argument for the reasons
indicated supra. Accordingly, we affirm the examiner’s
decision
rejecting claim 5 under 35 U.S.C. § 103 over the combined
disclosures of Nader, Kvakovszky, Pine and the admitted prior
art.
We turn next to the § 103 rejection of claims 1, 2, 4 and
5 over the combined disclosures of Pine and the admitted prior
art. The Pine reference does not disclose the claimed
starting (protected phenol) material. Nor does the Pine
reference disclose converting the claimed intermediate
(deprotected phenol) materials in the presence of both base
Appeal No. 1995-1539
Application No. 07/950,388
17
and the claimed reagent to form the claimed substituted 4-
hydroxystyrene. The admitted prior art relied upon by the
examiner does not remedy any of the above deficiencies since
it is relied on to show only a known utility of substituted
styrene monomers. The examiner also has not supplied
sufficient evidence to demonstrate that the claimed starting
and intermediate materials, which are structurally different
from those described in the Pine reference, would have behaved
in the same or similar manner in the presence of a base and a
reagent as those in the Pine reference. Under this
circumstance, we do not believe that the prior art relied upon
by the examiner renders the claimed subject matter prima facie
obvious to one of ordinary skill in the art. Accordingly, we
reverse the examiner’s decision rejecting claims 1, 2, 4 and 5
under 35 U.S.C. § 103 over the combined disclosures of Pine
and the admitted prior art.
In summary:
(1) The § 112 rejection of claims 1, 2, 4 and 5 is not
sustained;
(2) The § 102 rejection of claims 1, 2 and 4 over Nader is
sustained;
Appeal No. 1995-1539
Application No. 07/950,388
18
(3) The § 102 rejection of claims 1 an 4 over Kvakovszky is
sustained;
(4) The § 103 rejection of claim 5 over the combined
disclosures of Nader, Kvakovszky, Pine and the admitted prior
art is sustained; and
(5) The § 103 rejection of claims 1, 2, 4 and 5 over the
combined disclosures of Pine and the admitted prior art is not
sustained.
Appeal No. 1995-1539
Application No. 07/950,388
19
Accordingly, the decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
jrg
Appeal No. 1995-1539
Application No. 07/950,388
20
P.V.D. Wilde
AT&T Bell Labortories
600 Mountain Avenue
P.O. Box 636
Murray Hill, NJ 07974-0636
Appeal No. 1995-1539
Application No. 07/950,388
21