Ex Parte Jalett et al

Board of Patent Appeals and Interferences

Feb 27, 2003

08926835 (B.P.A.I. Feb. 27, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HANS-PETER JALETT, FELIX SPINDLER,
HANS-ULRICH BLASER and REINHARD GEORG HANREICH
__________
Appeal No. 2001-0421
Application 08/926,835
___________
ON BRIEF
___________
Before WILLIAM F. SMITH, GARRIS, and POTEATE, Administrative
Patent Judges.
Per curiam.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner’s
refusal to allow claims 1-37, which are all of the claims pending
in the application.
Appeal No. 2001-0421
Application 08/926,835
2
Claim 1 is illustrative of the subject matter on appeal and
is reproduced below:
1. A process for the hydrogenation of an imine with
hydrogen under elevated pressure in the presence of an iridium
catalyst and with or without an inert solvent, wherein the
reaction mixture contains an ammonium chloride, bromide or
iodide, or a metal chloride, bromide or iodide that is soluble in
the reaction mixture, and additionally contains an acid.
The references relied on by the examiner are:
Blackborow et al. (Blackborow) 5,103,061 Apr. 7, 1992
Osborn et al. (Osborn) 5,112,999 May 12, 1992
Petit et al. (Petit) 5,210,202 May 11, 1993
Burk 5,426,223 Jun. 20, 1995
Chao et al. “Enantioselective Synthesis of Optically Action
Metolachlor via Asymmetric Reduction.” Tetrahedron Asymmetry,
vol 3, no. 3, pp 337-340, 1992.
GROUNDS OF REJECTION
1. Claims 1-35 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Osborn.
2. Claims 1-37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Osborn, Burk, Petit,
Blackborow and Chao.
We vacate the pending rejections and enter new grounds of
rejection pursuant 37 CFR § 1.196(b).
Appeal No. 2001-0421
Application 08/926,835
3
DISCUSSION
The present invention is directed to a process for the
hydrogenation of an imine with hydrogen in the presence of an
iridium catalyst. Claims 1 and 36. Appellants’ principal
argument is that none of the cited references, alone or in
combination, disclose or suggest “an iridium catalyzed
hydrogenation reaction that additionally contains an acid as
required by the present claims.” See Appeal Brief, Paper No. 14,
received September 29, 1998, page 3, paragraph (8)(a). In this
regard, appellants further explain that “additional use of an
acid in the context of the instant invention means an aqueous
acidic solution.” Reply Brief, Paper No. 16, received January
15, 1999, page 1, paragraph (1).
The examiner has taken the position that the prior art
teaches an in situ acid. In particular, the examiner maintains
that the “sulfonic group in column 1, lines 55-60 [of Osborn],
reads on the claimed acid.” Examiner’s Answer, page 4, paragraph
(11). The examiner further notes that the Petit reference
discloses a starting compound that is itself an acid. Id., page
5, paragraph (11).

Appeal No. 2001-0421
Application 08/926,835
4
During patent examination, the PTO gives claim language its
“broadest reasonable interpretation.” In re Morris, 127 F.3d
1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). In general,
the terms in a patent claim are given their ordinary meaning as
used in the field of the invention unless the text of the patent
indicates that a word has special meaning. Rexnord Corp. v.
Laitram Corp., 274 F.3d 1336, 1342, 60 USPQ2d 1851, 1854 (Fed.
Cir. 2001). A patentee may be his own lexicographer provided
that he sets forth an explicit definition for a claim term in the
patent specification. Id.
Claim 1 recites “[a] process for the hydrogenation of an
imine . . . wherein the reaction mixture . . . additionally
contains an acid.” (Emphasis added.) The specification is
limited to the following explanation regarding the use of an acid
in the claimed process: “[t]he process according to the
invention further comprises the additional concomitant use of an
acid. It may be an inorganic or, preferably, an organic acid.”
Specification, page 18, second full paragraph. In our view this
language does not indicate that appellants intended to assign any
special meaning to the aforementioned claim language. Thus, the
claims must be interpreted based on their ordinary meaning.
Appeal No. 2001-0421
Application 08/926,835
5
At the outset, we note that our consideration of this appeal
has been hampered by the prosecution history. The first Office
action in this case was a final rejection. See Paper No. 10,
mailed December 22, 1997. Therein, the examiner did not make any
explicit findings in regard to that aspect of the claimed subject
matter requiring “additionally contains an acid.” In responding
to the final rejection, appellants argued that Osborn is “totally
silent on the use of an acid in the process described therein.”
Request for Reconsideration, Paper No. 12, received May 26, 1998.
The examiner argued in the Advisory Action (Paper No. 13,
mailed June 3, 1998) that “Osborn et al, column 1, line 55-57,
Burk et al, example, and Chao et al, page 338, expressly teach
acid in the hydrogenation reaction.” Appellants disputed the
allegation in regard to Osborn arguing, “the disclosure of -SO3H
as a substituent of the disphosphine ligand of the iridium
catalyst does not constitute a disclosure of an iridium catalyzed
hydrogenation reaction that ‘additionally contains an acid.’”
Appeal Brief, page 3.
Surprisingly, in stating the rejection in the Answer, the
examiner still did not make any explicit findings in regard to
this aspect of the claimed subject matter. Rather, the only
mention of this claim requirement is the examiner’s comment on
Appeal No. 2001-0421
Application 08/926,835
1 Note that there is no antecedent support for the phrase
“the reaction mixture” in claim 1.
2 This Board serves as a Board of review, not a de novo
examination tribunal. 35 U.S.C. § 6(b) (“the [Board] shall, on
written appeal of an applicant, review adverse decisions of
6
page 4 of the Answer that “[a]s to the specific acid, sulfonic
group in column 1, lines 55-60, reads on the claimed acid.”
As the record stands, neither the examiner nor appellants
have adequately explained their positions as to the metes and
bounds of the claim requirement that the reaction “additionally
contain an acid.” In our view, the examiner and appellants would
be hard-pressed to provide such explanation due to the manner in
which claim 1 is drafted. As written, claim 1 does not provide
for active, positive method steps. Instead, claim 1 describes a
“reaction mixture” which is presumably to be used “for the
hydrogenation of an imine.”1 It may be that the examiner and
appellants have redrafted the claim in their minds to provide the
needed active steps, e.g., “providing a reactive mixture
containing X and Y,” “reacting X with Y” etc. in formulating
their respective positions. But without the examiner and
appellants setting forth on the record a fact-based explanation
in support of their claim construction, we have, in effect,
nothing to review.2
Appeal No. 2001-0421
Application 08/926,835
examiners upon applications for patents”).
7
These shortcomings aside, our review of the matter leaves us
in a quandary as to how to interpret the claims. According to
the examiner, the broadest reasonable interpretation of claim 1
includes both the in situ formation of an acid as well as the
addition of an exogenous acid. According to appellants, the
phrase “additionally contains an acid” should be interpreted as
limited to the addition of an exogenous acid. We cannot say that
the specification clearly supports either the appellants’ or the
examiner’s interpretation.
As noted above, the specification does not use explicit
language which supports appellants’ proposed interpretation of
the claims. However, the examples are limited to the addition of
an exogenous acid. There is no antecedent support for “the
reaction mixture.” As to the claim reciting positive, active
method steps, one can only guess how to implement the
“additionally contain an acid” proviso of the process claims. In
sum, it is apparent that a material issue of claim interpretation
is present which must be resolved before the merits of the
examiner’s and the appellants’ positions can be properly
considered.
Appeal No. 2001-0421
Application 08/926,835
3 Other cases where similar claims have been involved are Ex
parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Int. 1986)(non-
precedential)(citations omitted)(“While . . . the claims need not
recite all of the operating details, we do find that a method
claim should at least recite a positive, active step(s) so that
the claim will ‘set out and circumscribe a particular area with a
reasonable degree of precision and particularity,’ and make it
clear what subject matter [the] claims encompass, as well as
making clear the subject matter from which others would be
precluded.”)and Anglo-American Extrusion Co. v. Ladd, 226 F.
Supp. 295, 300, 140 USPQ 304 (D.D.C. 1964)(holding that claim
“recit[ing] a method which is defined not by positive method
8
All of this leads us to conclude that the fundamental
problem in this case is that the claims are indefinite. Under
these circumstances, it is appropriate for us to vacate the
examiner’s prior art rejection in view of our new ground of
rejection under 35 U.S.C. § 112, second paragraph.

NEW GROUND OF REJECTION
Under the provisions of 37 CFR § 1.196(b) we enter the
following new ground of rejection:
Claims 1-37 are rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinguish
claimed the invention.
Claims 1-37 are indefinite in that, while purporting to be
drawn to processes, they fail to set forth any discernable method
steps.3 The claims should actively recite the steps of adding
Appeal No. 2001-0421
Application 08/926,835
steps but by an indefinite result” was unpatentable under 35
U.S.C. § 112, second paragraph). See generally MPEP § 2173.05(q)
(8th ed., Aug. 2001).
9
each of the individual components of the reaction mixture. If
appellants intend to claim addition of an exogenous acid as
opposed to in-situ formation of an acid, then the claims should
include the step of adding the acid to the reaction mixture.
Failure to use positive steps in claim 1 adds needless ambiguity
to the claim. For example, as noted, the claim does not provide
antecedent support for the phrase “the reaction mixture.”
It is well established that "definiteness of [claim]
language employed must be analyzed, not in a vacuum, but always
in light 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." In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Section 112,
second paragraph, requires that: (1) the claims set forth what
"the applicant regards as his invention" and (2) the claims be
sufficiently "definite." See Allen Eng’g Corp. v. Bartell Indus.
Inc., 299 F.3d 1336, 1348, 63 USPQ2d 1769, 1775 (Fed. Cir. 2002)
(quoting Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1377, 55
Appeal No. 2001-0421
Application 08/926,835
10
USPQ2d 1279, 1282 (Fed. Cir. 2000) (quoting 35 U.S.C. § 112,
second paragraph)).
“When the applicant states the meaning that the claim terms
are intended to have, the claims are examined with that meaning,
in order to achieve a complete exploration of the applicant’s
invention and its relation to the prior art.” In re Zletz, 893
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). “[I]f the
claims do not ‘particularly point out and distinctly claim[]’, in
the words of section 112, that which examination shows the
applicant is entitled to claim as his invention, the appropriate
PTO action is to reject the claims for that reason.” Id.
(citing, inter alia, In re Prater, 415 F.2d 1393, 1404, 162 USPQ
541, 550-51 (“claim that reads on subject matter beyond the
applicant’s invention fails to comply with 35 U.S.C. § 112")).
Given the varying claim interpretations of the examiner and
appellants, it is apparent that the claims do not particularly
point out and distinctly claim the invention. It does not appear
that one skilled in the art would be able to determine whether
the claims are limited to (1)the addition of an exogenous acid,
(2)in situ formation of an acid or are intended to encompass both
manners of providing the stated acid since the claims do not
Appeal No. 2001-0421
Application 08/926,835
11
recite positive, active steps, e.g., “adding an acid,” “forming
an acid in situ” etc. Therefore, one of ordinary skill in the
art would not be capable of determining the metes and bounds of
the claims even when read in light of the specification. See
Allen, 299 F.3d at 1348, 63 USPQ2d at 1775 (quoting Personalized
Media Communications, LLC v. Int’l Trade Comm’n, 161 F.3d 696,
705, 48 USPQ2d 1880, 1888 (Fed. Cir. 1998)) ("In determining
whether the claim is sufficiently definite, we must analyze
whether ‘one skilled in the art would understand the bounds of
the claim when read in light of the specification.’")
Therefore, we reject claims 1-37 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the subject matter which applicants regard as their
invention. See Allen, 299 F.3d at 1349, 63 USPQ2d at 1776
(citing Zletz, 893 F.2d at 322, 13 USPQ2d at 1322 (claims which
do not particularly point out and distinctly claim what the
inventor regards as his invention must be rejected under Section
112, second paragraph)). See Zletz, 893 F.2d at 321, 13 USPQ2d
at 1322 (citations omitted)(“[D]uring patent prosecution when
claims can be amended, ambiguities should be recognized, scope
and breadth of language explored, and clarification imposed.”)
Appeal No. 2001-0421
Application 08/926,835
12
In making a patentability determination, analysis must begin
with the question, "what is the invention claimed?" since
"[c]laim interpretation, . . . will normally control the
remainder of the decisional process." Panduit Corp. v. Dennison
Mfg. Co., 810 F.2d 1561, 1567-58, 1 USPQ2d 1593, 1597 (Fed.
Cir.), cert. denied, 481 U.S. 1052 (1987). Where a reasonable
interpretation of the claims cannot be made, it follows that it
is impossible to compare the claimed invention with the prior
art. See Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459,
467 (1966) (“Under § 103, the scope and content of the prior art
are to be determined; differences between the prior art and the
claims at issue are to be ascertained; and the level of ordinary
skill in the pertinent art resolved. Against this background,
the obviousness or nonobviousness of the subject matter is
determined.”)
In order to consider the merits of the Examiner’s rejection,
we would first have to compare the claimed subject matter with
the relevant prior art which would necessarily require that we
speculate or make assumptions as to what is intended by the
claims. Thus, we have decided to vacate the examiner’s rejection
and enter a new ground of rejection under 37 CFR § 1.196(b).
Appeal No. 2001-0421
Application 08/926,835
13
See In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96
(CCPA 1962) and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494,
496 (CCPA 1970).
RESPONSE TO THE SEPARATE OPINION
Our colleague states that we have acted “improperly and
irresponsibly” (slip op., page 33) by taking actions today which
he believes are “wholly inappropriate.” Slip Op., page 22. In
addition, our colleague accuses us of establishing a per se rule.
Slip Op., pages 31-32. We disagree.
As explained, the lack of positive steps in claim 1 renders
that claim indefinite under 35 U.S.C. § 112, second paragraph.
The court stated in Zletz, supra, “[D]uring patent prosecution
when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification
imposed.” This is exactly the outcome of the actions we take
today.
Appeal No. 2001-0421
Application 08/926,835
14
In Allen Engineering, supra, the court stated:
We are simply tasked with determining whether the
claims “particularly point[ ] out and distinctly
claim[ ]” what the inventor regards as his
invention. 35 U.S.C. §112, paragraph 2; see also
In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320,
1322(Fed. Cir. 1989) (holding that claims failing
this test during prosecution must be rejected
under §112, paragraph 2). Moreover, it is of no
moment that the contradiction is obvious: semantic
indefiniteness of claims “is not rendered
unobjectionable merely because it could have been
corrected.” In re Hammack, 427 F.2d 1384, 1388
n.5, 166 USPQ 209, 215n.5 (CCPA 1970).
We have performed that task and determined the claims on appeal
are indefinite. In our view, the best course of action is to
raise this issue in the context of a new ground of rejection
under the provisions of 37 CFR § 1.196(b). Contrary to the views
of our colleague, our actions today will provide a forum for
appellants and the examiner to expeditiously close prosecution of
the case, at least on the record before us.
This is seen in that appellants argue in this appeal that
“additional use of an acid in the context of this invention means
an aqueous acidic solution.” Making arguments in an appeal
proceeding on the basis of “the context of this invention”
instead of the actual claim language used is unhelpful in
resolving the patentability issues since patentability is
premised upon the claims not an “invention.” In similar manner,
Appeal No. 2001-0421
Application 08/926,835
15
the examiner’s assertions in regard to the prior art purportedly
teaching in situ acid formation are of little help absent a
thorough construction of the claims under review and explanation
why the purported teachings of the references are relevant to the
claims as construed.
It is clear that prior to our decision today appellants and
the examiner were content to argue their respective positions
absent meaningful claim construction. After today, they cannot
so proceed. Rather, they must confront the ambiguous claim
language and move forward. It may be that appellants understand
their invention to be directed to exogenous acid addition to the
“reaction mixture” as argued in this appeal instead of in situ
formation of an acid as the examiner believes is suggested by the
applied prior art. If so, the posture of the case as of today
permits appellants to clarify the noted ambiguous language and
claim what they regard to be their invention in accordance with
35 U.S.C. § 112, second paragraph. If appellants submit such an
amendment, the examiner will have to reconsider the patentability
of the claims in light of all relevant prior art.
We decline to impose our own version of the scope of the
claims in the context of this appeal proceeding as our colleague
would prefer since the claims are before the USPTO and are now
Appeal No. 2001-0421
Application 08/926,835
4Imposition of a claim construction by a merits panel during
an appeal before this Board is not without its own peril. See In
re Priest, 582 F.2d 33, 37-38, 199 USPQ 11, 15 (CCPA 1978).
16
subject to amendment. The more reasonable course of action,
given the lack of an effective exchange of views between
appellants and the examiner in regard to claim construction, is
to allow appellants the opportunity to consider the issues raised
herein and decide how they want to define their invention. After
all it is their invention, not ours.4
We will comment on our colleague’s willingness to excoriate
our decision while failing to assign any responsibility for the
state of the record presented to us for review in this appeal to
appellants and the examiner. Claim 1 has not been amended since
it was filed as part of the original disclosure in the parent
application. As outlined above, the issue of the meaning of the
term “and additionally contains an acid” as used in claim 1 has
never been meaningfully explored by appellants and the examiner.
Indeed, as noted the examiner does not even discuss this aspect
of claim 1 in stating his rejections in the answer. The
messenger should not be harmed for telling appellants and the
examiner to pay closer attention to claim scope during the
administrative examination process.
Appeal No. 2001-0421
Application 08/926,835
17
Appellants and the examiner are responsible for the record
they forward to the Board and it is the responsibility of the
assigned merits panel to review the examiner’s adverse decision
on the basis of that record. Not every record forwarded to the
Board is susceptible to meaningful review. Prior to pursuing an
appeal or writing an Examiner’s Answer, appellants and the
examiner should respectively take a step back from the case and
objectively view the record and ensure that their position is
susceptible to meaningful review. A hallmark of such a record is
a reasoned exchange of views as to claim construction, especially
those aspects of the claims where the patentability issues lie.
This did not happen in this case
Nor do we find the fact that appellants, the examiner and
appeal conferees did not consider claim 1 to be ambiguous to mean
that the claim is definite under 35 U.S.C. § 112, second
paragraph. The provision of an administrative appeal within the
agency as well as the provisions of 37 CFR § 1.196(b) in regard
to the Board making new grounds of rejection presuppose that
appellants and the examiner, as well as reviewers or conferees in
the Examining Corps, may overlook or misapprehend reasons
relevant to the patentability of the pending claims. The lack of
a rejection by the examiner is not controlling on the issue.
Appeal No. 2001-0421
Application 08/926,835
18
We also take the opportunity to state that we are not making
a per se rule in regard to any specific claim language. We only
hold that the language used in claim 1, considered in the context
of the present record, is ambiguous and thus, indefinite.
Whether claims of similar format presented in a different case
meet the requirements of 35 U.S.C. § 112, second paragraph, will
have to be decided upon the facts of that case. The cases our
colleague cites at best provide further background as to the
issues we have raised. None are controlling either way.
Our colleague declines to express his views on the pending
prior art rejections because, in his view, to do so would be an
advisory opinion. This view is interesting since it is difficult
to discern how a dissenting opinion in and of itself is anything
but an advisory opinion. If our colleague would provide his
construction of claim 1 and with that construction in mind how he
would propose to decide the pending rejections, we would have a
basis to agree or disagree. Each of us is willing to listen and
be persuaded and it would only require a single changed vote to
transform the dissenting viewpoint to the majority. Regretfully,
our colleague has declined to do so.
Our colleague’s reticence to express his views on the merits
is puzzling also in that he has invited appellants and the
Appeal No. 2001-0421
Application 08/926,835
19
examiner to pursue extraordinary relief in response to our
actions today. Yet, he has not provided appellants any assurance
that they even have his vote on the issues as they are presented
on the existing record. Why should appellants expend their time
and resources in pursuit of the suggested relief only to discover
that they never had a single vote on the panel?
Our colleague’s actions appear to indicate his belief that
he can or should only react to what the majority has decided and
written in its supporting opinion. We do not believe that to be
the case. Each member of the panel has an independent vote on
the issues presented and any panel member may write separately to
express his or her views on a matter as our colleague does here.
Stating his view that claim 1 is broad, not indefinite, does not
provide a sufficient claim construction so that the prior art can
be properly applied.
Nor do we find our colleague’s view that claim 1 is
susceptible to only two interpretations to be controlling.
Assuming that to be the case, we do not find it sufficient to
mandate imposition of a specific construction at this point in
time. We do not have a record from which we can choose or
receive guidance from a well reasoned exchange of views between
appellants and the examiner as to claim construction and
Appeal No. 2001-0421
Application 08/926,835
20
subsequent application of the prior art. We did not create this
state of affairs, appellants and the examiner did. Since the
claims can still be amended, we believe the actions we take today
are entirely appropriate and proper and represent the most
expeditious way to achieve a prompt resolution of the
patentability issues presented in this appeal.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that, “A new
ground of rejection shall not be considered final for purposes of
judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE 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. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record . . . .
Appeal No. 2001-0421
Application 08/926,835
21
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
VACATED; 37 CFR § 1.196(b)
WILLIAM F. SMITH )
Administrative Patent Judge )
)BOARD OF PATENT
)APPEALS AND
)INTERFERENCES
LINDA R. POTEATE )
Administrative Patent Judge )
LRP:pgg
Appeal No. 2001-0421
Application 08/926,835
22
BRADLEY R. GARRIS, Administrative Patent Judge, dissenting.
I dissent from the action taken by the majority on this
appeal whereby the examiner’s prior art rejections have been
vacated and a new rejection under the second paragraph of
35 U.S.C. § 112 has been made.
These actions are wholly inappropriate for a variety of
reasons. First, the majority’s section 112 position is without
merit. Second, even assuming the majority’s section 112 concerns
are valid, the circumstances of this case are such that the
examiner’s prior art rejections should be reviewed on the merits.
Third, the actions of the majority on this appeal militate
against the missions and goals of the U.S. Patent and Trademark
Office by exacerbating the pendency problems which are so widely
recognized as plaguing this agency and its customers. These
several reasons are expounded upon more fully below.
THE MAJORITY’S SECTION 112, SECOND PARAGRAPH,
REJECTION IS WITHOUT MERIT
The rejection is not supported by cited authority
Concerning their new rejection under the second paragraph of
section 112, the majority panel members state “[c]laims 1-37 are
indefinite in that, while purporting to be drawn to processes,
they fail to set forth any discernable method steps.” Slip Op.,
Appeal No. 2001-0421
Application 08/926,835
23
page 8. It is their view that “[t]he claims should actively
recite the steps of adding each of the individual components of
the reaction mixture.” Id., pages 8-9. In expressing this view,
the majority refers to Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat.
App. & Int. 1986), Anglo-American Extrusion Co. v. Ladd, 226 F.
Supp. 295, 300, 140 USPQ 304, 308 (D.D.C. 1964) and the Manual of
Patent Examining Procedure (MPEP) § 2173.05(q)(8th ed., Aug.
2001).
These citations do not support the majority’s new rejection
under the second paragraph of section 112.
The majority expressly characterizes Ex parte Erlich (which
was authored by one of the majority panel members) as non-
precedential. By its very nature, a non-precedential opinion
does not and cannot provide legal support for this rejection. In
addition, the indefiniteness issues discussed in Erlich and in
MPEP § 2173.05(q) involve claims directed to processes for using
a material without reciting any steps as to how the use is
actually practiced. Contrastingly, the appealed claims are
directed to processes for reacting an imine and hydrogen with
specific and considerable information as to how this reaction is
actually practiced. While possibly applicable to “process of
Appeal No. 2001-0421
Application 08/926,835
24
using” claims, the rationale in Erlich and in MPEP § 2173.05(q)
certainly is not applicable to “process of making” claims of the
type before us on this appeal.
In fact, these appealed claims are analogous to the “process
of making” claims involved in Ex parte Bull, 117 USPQ 302 (PTO
Bd. App. 1957), which the Erlich panel considered inapposite
because the claims of Bull “did recite active, positive steps
such as ‘bringing together . . .’” Erlich, 3 USPQ2d at 1017. It
is appropriate to clarify that Bull’s claim recitation “bringing
together . . .” relates to the ingredients of his reaction
mixture without specifying how these ingredients were caused to
be in the reaction mixture. Plainly, this claim recitation is
not conceptually different from the appellants’ claim recitation
of reaction mixture ingredients without specifying how these
ingredients were caused to be in the reaction mixture. It is a
mystery how the majority panel member of this appeal, who
authored the Erlich opinion, could rationally consider the claims
here on appeal to offend the second paragraph of section 112 and
yet consider the conceptually indistinguishable claims of Bull to
comply with this paragraph.
Appeal No. 2001-0421
Application 08/926,835
25
The case of Anglo-American Extrusion Co. v. Ladd also does
not support the majority’s section 112 position. It is true that
this case held a method claim to be indefinite. Few details are
apparent regarding this claim since it was not reproduced.
Nevertheless, it is reasonably clear that the holding was based
on the fact that the method claim was considered indefinite
because it recited “an indefinite result [wherein] [t]hat result
is set forth as a product ‘comparable to’ the definitely
described product of a definitely recited method.” Id., 226 F.
Supp. at 300, 140 USPQ at 308. Because the majority’s concerns
regarding the appealed claims do not involve such an indefinite
result, the new section 112, second paragraph, rejection of these
claims is not supported by Anglo-American.
Thus, the majority has proffered no legal authority in
support of their specific rationale for considering the appealed
claims to be indefinite. This is not surprising since there is
no such authority. What I do find surprising and indeed
troubling is the majority’s belief that, “[g]iven the varying
claim interpretations of the examiner and appellants, it is
apparent that the claims do not particularly point out and
distinctly claim the invention.” Slip Op., page 10. Contrary to
Appeal No. 2001-0421
Application 08/926,835
26
the majority’s belief, the test for determining compliance with
the second paragraph of section 112 is not whether the examiner
and the appellants agree or disagree in their interpretation of
the appealed claims. Instead, the test is whether the claims, as
interpreted by one possessing the ordinary level of skill in the
art, set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Moreover, this
disagreement in claim interpretation between the examiner and the
appellants is the raison d’etre of the appeal under
consideration. Therefore, it is an illogic of oxymoronic
character for the majority to believe that this disagreement
supports its refusal to consider the appeal.
I am also troubled by the fact that a substantial portion of
the majority opinion is devoted to criticism of the manner in
which the appellants and the examiner have prosecuted this
application. As with all appeals, the prosecution history of
this application, at least from the hindsight provided by
appellate review, may be regarded as falling short of achieving a
thorough crystallization and briefing of all issues engendered by
the appeal. Nevertheless, any such imperfection in the
prosecution history does not, in and of itself, support the
Appeal No. 2001-0421
Application 08/926,835
27
majority’s position that the appealed claims are indefinite.
These claims are statutorily presumed to comply with the second
paragraph of section 112. They are not somehow rendered non-
compliant by the silence of the appellants and the examiner
regarding the specific claim-construction issues raised by the
majority. This point cannot be gainsaid. Yet, I am concerned
the majority panel members may have unwittingly allowed their
section 112, second paragraph, rejection to be inappropriately
driven by and based upon their desire for a more completely
developed prosecution history. Certainly, this rejection is not
otherwise explicable based on the facts and law here under
consideration. While the desire for a well developed prosecution
history is understandable, an attempt to achieve this desideratum
via a meritless section 112 rejection is completely unacceptable.
The claims are broad not indefinite
As indicated earlier, the process claims on appeal recite
considerable and specific information regarding the process
defined thereby. For example, these claims specify the type of
reaction involved in the process (i.e., a hydrogenation
reaction), the ingredients involved in the reaction and a variety
Appeal No. 2001-0421
Application 08/926,835
5 At this point, it is necessary to express a caveat. As
support for their section 112 position, the majority panel
members have focused on the fact that the appealed claims do not
actively and positively recite the steps which result in a
reaction mixture which “additionally contains an acid.”
Independent claims 1 and 36. Nevertheless, the language of the
majority opinion is such that other aspects of the appealed
claims may well be considered by the majority panel members to
raise indefiniteness issues. For example, at no less than 3
different locations in their opinion, the majority panel members
indicate that the independent claim phrase “the reaction mixture”
lacks antecedent basis. Slip Op., at pages 6, 7 and 9. If the
majority believes this phrase offends the second paragraph of
section 112, they are in error as no one with ordinary skill in
this art would consider the phrase to be indefinite. As an
additional example, the majority expressly states that “[t]he
claims should actively recite the steps of adding each of the
individual components of the reaction mixture.” Slip Op., at
pages 8-9; emphasis supplied. Thus, although the majority
opinion focuses on the acid ingredient specifically, this express
statement reflects that the majority panel members will maintain
their indefiniteness position unless the appealed claims are
amended to actively recite the steps of adding each and every one
of the individual ingredients of the here claimed reaction
mixture.
28
of reaction conditions including pressure, temperature,
concentration and molar ratio. Nevertheless, the majority holds
that the appealed claims are indefinite under the second
paragraph of section 112. The majority has given one and only
one reasonably specific basis for this holding which is the fact
that the claims do not actively and positively recite the steps
which result in a reaction mixture containing the recited
ingredients including the acid ingredient in particular5. As
Appeal No. 2001-0421
Application 08/926,835
29
phrased by the majority, “[i]t does not appear that one skilled
in the art would be able to determine whether the claims are
limited to (1) the addition of an exogenous acid, (2) in situ
formation of an acid or are intended to encompass both manners of
providing the stated acid.” Slip Op., page 10. This is
incorrect.
As recognized (though not practiced) by the majority, the
definiteness of claim language must be analyzed, not in a vacuum
but, always in light 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. In
re Moore, 439 F.2d at 1235, 169 USPQ at 238.
In this regard, the appellants’ specification discloses that
their invention is based on the discovery that catalyst activity
in processes of the type under consideration can be increased if
the reaction mixture contains a halide and an acid. See the
subject specification at, for example, page 1, penultimate
paragraph. It is the presence of the halide and acid in the
reaction mixture which effects the increased catalyst activity.
There is absolutely no disclosure in the appellants’
specification that the increased catalyst activity results from
the particular manner by which these or any other ingredients are
Appeal No. 2001-0421
Application 08/926,835
30
caused to be present in the reaction mixture. Indeed, a number
of reaction mixture ingredients, such as the iridium catalysts,
are disclosed as being added exogenously or generated in situ.
Id., at the paragraph bridging pages 16 and 17.
As for the acid ingredient specifically, the appellants
disclose no preference for the manner by which the acid is caused
to be present in the reaction mixture. Instead, they generically
teach that “[t]he process according to the invention further
comprises the additional concomitant use of an acid.” Id., at
page 18. While at least some of the specification examples
indicate that the acid is added exogenously, it is important to
stress that the appellants’ specification contains no disclosure
of a preference for how the acid is caused to be present in the
reaction mixture. Presumably, this is because, as previously
mentioned, it is the presence of the acid in the reaction
mixture, rather than how it is supplied thereto, which yields
increased catalyst activity in the appellants’ claimed process.
In light of the above discussed specification disclosure,
one with ordinary skill in this art would interpret the appealed
claims as requiring that the process reaction mixture “contains
an acid” (independent claims 1 and 36) without regard to the
manner by which this requirement is achieved. This
Appeal No. 2001-0421
Application 08/926,835
6 The majority panel members do not explain, and I do not
independently perceive, their basis for concluding that the above
discussed claim interpretation “does not provide a sufficient
claim construction so that the prior art can be properly
applied.” Slip Op., at page 19.
31
interpretation is not only consistent with the specification
disclosure but is also consistent with the aforequoted literal
recitation of the appealed independent claims. Therefore, it is
my determination that these claims are simply broad, not
indefinite, with the respect to the manner by which the acid and
other ingredients are caused to be present in the reaction
mixture of the appellants’ claimed process6. It is here
necessary to remind the majority of the long settled legal
principle that claim breadth is not indefiniteness. In re
Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970).
The majority has created and applied a per se rule
It is, of course, the initial burden of the Patent and
Trademark Office to present a prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). For the above stated reasons, the
majority has failed utterly to present a prima facie case that
the appealed claims are unpatentable under the second paragraph
Appeal No. 2001-0421
Application 08/926,835
32
of 35 U.S.C. § 112. This circumstance forces me to conclude that
the majority has created and applied a per se rule for process
claims wherein compliance with the second paragraph of section
112 depends solely on whether “discernable method steps” are
“actively recite[d]” Slip Op., page 8. While administratively
convenient, such a per se rule is a legally improper substitute
for the thoughtful analysis required to assess section 112,
second paragraph, compliance. Compare In re Ochiai, 71 F.3d
1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995).
EVEN ASSUMING CLAIM INDEFINITENESS, THE EXAMINER’S PRIOR ART
REJECTIONS SHOULD BE EVALUATED ON THE MERITS RATHER THAN
VACATED
In support of their indefiniteness position, the majority
panel members state “[i]t does not appear that one skilled in the
art would be able to determine whether the claims are limited to
(1) the addition an exogenous acid, (2) in situ formation of an
acid or are intended to encompass both manners of providing the
stated acid since the claims do not recite positive, active
steps.” Slip Op., pages 10-11. Concomitantly, in support of
their vacatur determination, the majority panel members express
the following rationale:
Appeal No. 2001-0421
Application 08/926,835
33
In order to consider the merits of the Examiner’s
rejection, we would first have to compare the claimed
subject matter with the relevant prior art which would
necessarily require that we speculate or make
assumptions as to what is intended by the claims.
Thus, we have decided to vacate the examiner’s
rejection and enter a new ground of rejection under 37
CFR § 1.196(b). See In re Steele, 305 F.2d 859, 862-
63, 134 USPQ 292, 295-96 (CCPA 1962) and In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)
[Id., at pages 12-13].
As previously explained, the majority’s indefiniteness
position is without merit. However, even assuming that the
appealed claims are indefinite, the majority has acted improperly
and irresponsibly in vacating the examiner’s prior art
rejections. This is because the one and only reason given by the
majority for this vacatur is that the majority would have to
speculate or make assumptions regarding “whether the claims are
limited to (1) the addition of an exogenous acid, (2) in situ
formation of an acid or are intended to encompass both manners of
providing the stated acid.” Id., at page 10. Clearly, the
degree of uncertainty presumed by the majority is extremely
narrow in that it includes only two possible “manners of
providing the stated acid.” Id. Under these circumstances, the
responsible course of action would be to evaluate the merits of
the examiner’s prior art rejections with respect to both of these
Appeal No. 2001-0421
Application 08/926,835
34
“manners of providing the stated acid.” Id. See Ex parte
Ionescu, 222 USPQ 537, 540 (Bd. App. 1984) and MPEP § 2173.06
(8th ed. Aug. 2001).
The benefits of this last mentioned approach are
transparent. It avoids the extraordinary inefficiencies of
piecemeal examination and appellate review. This Board has been
properly critical when an examiner has engaged in a piecemeal
evaluation of issues during examination proceedings. Ionescu,
222 USPQ at 540. For the majority to now engage in this same
piecemeal consideration of issues during appeal proceedings is
more than hypocritical. It also significantly multiplies the
inefficiencies of piecemeal patentability determination. The
case before us is the perfect example of the devastating
consequences of piecemeal review when performed at an appellate
level as will be discussed more fully below.
THE MAJORITY’S ACTIONS MILITATE AGAINST THE MISSIONS AND
GOALS OF THE U.S. PATENT AND TRADEMARK OFFICE
Of the many problems which currently face the Patent and
Trademark Office, few if any are more publicly discussed and
consequential than the ever growing problem of patent application
pendency. It has been a subject of increasing concern by Members
Appeal No. 2001-0421
Application 08/926,835
35
of Congress, present and past Directors of this agency as well as
practitioners before the PTO bar. Like few others, this problem
of increasing pendency has frustrated the missions and goals of
the Patent and Trademark Office.
The above discussed actions by the majority compound this
pendency problem and thereby militate against the missions and
goals of this agency. It is important to emphasize that the
claims before us on this appeal are identical to the claims first
filed in the Patent and Trademark Office in 1995 via parent
application Serial No. 08/532,779. Similarly, the rejections
first applied against these claims in the parent application are
identical to the prior art rejections now before us. By vacating
these prior art rejections, the majority in effect additionally
has vacated all the prosecution which has taken place since these
appealed claims were first filed in 1995.
Moreover, by making their new section 112, second paragraph,
rejection, the majority panel members compel the appellants to
now address indefiniteness issues which implicitly neither the
appellants nor the examiner (nor his conferring supervisory
patent examiner) have ever considered applicable to the claims on
appeal (and which certainly this dissenting panel member does not
consider applicable to these claims). Further, the avenues by
Appeal No. 2001-0421
Application 08/926,835
36
which the appellants may seek to address these claim
indefiniteness issues are not only very limited but also are
potentially very costly in terms of time as well as money. A sad
but conceivable outcome of the actions here taken by the majority
is that (after considerable expenditures of time, effort and
money) the majority’s section 112 rejection ultimately is
overcome with the consequence that at some distant point in the
future the very same prior art rejections of the very same claims
before us today are returned to the Board for an unnecessarily
delayed review. An even more sad but conceivable outcome is that
the appellants simply give up their attempt to obtain a patent on
the here claimed invention, not due to the merits of
patentability but rather, due to sheer exhaustion.
For the above stated reasons, the majority’s actions are
unnecessary and worse are antithetical to this agency’s missions
and goals in support of the patent system.
CONCLUSION
The majority’s new rejection is legally unwarranted and its
vacatur of the examiner’s prior art rejections is completely
unnecessary. There are no acceptable reasons in support of these
actions and yet many well founded reasons in disfavor of them.
Appeal No. 2001-0421
Application 08/926,835
37
The majority’s actions are unique in that they have clearly
undesirable consequences for both the appellants and the examiner
(as well as the Examining Corps in general). Yet, a particularly
frustrating aspect of these actions is that so few avenues exist
by which the appellants and the examiner may seek review of them
in a timely and efficient manner. One such avenue is by way of
requests from both the appellants and the examiner for rehearing
by an expanded panel of the Board. Though unusual, an expanded
panel may be requested by appellants via, for example, a petition
to invoke the supervisory authority of the Director (a.k.a.
Commissioner) and/or to address a question not specifically
provided for in the PTO regulations. See 37 CFR §§ 1.181 and
1.182 (2002). An examiner’s request for rehearing of a Board
decision must be approved by the Technology Center Director and
must also be forwarded to the Office of the Deputy Assistant
Commissioner for Patent Examination Policy for approval before
mailing. See, for example, MPEP § 1214.04.
In summary, by their unwarranted actions taken in this
appeal, the majority panel members have shirked their
responsibility under 35 U.S.C. § 6 and have abused their
authority under 37 CFR § 1.196(b). This circumstance can only be
condemned. The majority panel members should fulfill their
Appeal No. 2001-0421
Application 08/926,835
38
statutory responsibility under 35 U.S.C. § 6 by reviewing the
examiner’s prior art rejections of the claims on appeal. In the
forum of this dissenting opinion, it would be inappropriate for
me to express an advisory opinion concerning the merits of these
prior art rejections. Therefore, I will defer expressing my view
on these matters until such time as the majority members of this
or an expanded panel are willing or required to review the
examiner’s prior art rejections of the appellants’ long-pending
claims.
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
BRG:tdl
Appeal No. 2001-0421
Application 08/926,835
39
Michael W. Glynn
Novartis Corporation
564 Morris Avenue
Summit, NJ 07901