Ex Parte Jonas et al

Board of Patent Appeals and Interferences

Sep 21, 2009

10057027 (B.P.A.I. Sep. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte FRIEDRICH JONAS,
ANDREAS ELSCHNER, KLAUS WUSSOW,
and ROLF WEHRMANN
______________

Appeal 2009-000622
Application 10/057,027
Technology Center 1700
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Decided: September 21, 2009
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Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1, 4, 5, and 9 in the Office Action mailed
September 22, 2006. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2007).
We affirm the decision of the Primary Examiner.
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Application 10/057,027
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Claim 1, as it stands of record in the Amendment filed June 22, 2006,1
illustrates Appellants’ invention of a dispersion comprising, among other
things, cationic 3,4-polyalkylenedioxythiophenes, and is representative of
the claims on appeal:
1. A dispersion comprising:
polyanions;
cationic 3,4-polyalkylenedioxythiophenes; and
a solvent comprising water and optionally alcohol,
wherein said dispersion has a weight ratio of cationic 3,4-
polyalkylenedioxythiophene to polyanion of from 1:8 to 1:25, and 90% by
weight of the particles of the dispersion being less than 40 nm.
Appellants request review of the ground of rejection of appealed
claims 1, 4, 5, and 9 under 35 U.S.C. § 112, first paragraph, as being based
on a specification which does not provide a written description of the
manner of making the claimed invention, advanced on appeal by the
Examiner. Br. 5;2 Ans. 3.
Appellants argue the claims as a group. See generally Br. We decide
this appeal based on claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Issue
The issue in this appeal is whether Appellants have established that
one skilled in this art can make the claimed dispersion encompassed by
representative appealed independent claim 1 from the disclosure in the
written description in the Specification to use the dispersion prepared in
accordance with Example 2 of EP-A 991 303 as starting material.

1 The copy of claim 1 in the Claim Appendix contains error. See Br. 9.
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Findings of Fact
We find the written description in the Specification as filed3 contains
the following disclosures:
EP-A 991 303 discloses 3,4-polyalkylenedioxy-
thiophenes having particle sizes of < 250 nm and conductivities
of the dried polymers of < 2 S/cm, corresponding to a resistivity
of 0.5 Ωcm. . . . .
Surprisingly, it has now been found that by further
reducing the size of the particles, the resistance of the 3,4-
polyalkylenedioxythiophenes described in EP-A 991 303 can be
significantly increased without the desired hole-injecting action
being lost.
Spec. 3:3-13.
. . . These dispersions were prepared starting from dispersions
in accordance with EP-A 991 303 by subsequent comminution
of the particles.
Spec. 4:6-8.
The dispersions preferably comprise only small amounts of
ionic impurities in the limits as described in EP-A 991 303.
Spec. 6:20-21.
1 liter of a 1.4% by weight 3,4-polyalkylenedioxy-
thiophene/polystyrene sulfonate dispersion having a weight
ratio of the 3,4-polyalkylenedioxythiophene to polystyrene
sulfonic acid of 1:8, prepared by evaporating a 3,4-
polyalkylenedioxythiophene/polystyrene sulfonate dispersion in
accordance with Example 2 from EP-A 991 303 was
homogenized twice using a high-pressure homogenizer at 700
bar and with a nozzle diameter of 0.1 mm.

2 We considered the Brief filed October 2, 2007, and the Examiner’s
Answer mailed December 19, 2007.
3 Appellants amended the Specification back to its original disclosure in the
Amendment filed June 22, 2006.
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Spec. 10:2-9; see also Spec. 10:18-27, 11:4-13, and Table 1.
We find EP 0 991 303 A2 is a European Patent Application published
April 5, 2000.
Opinion
Appellants do not dispute the Examiner’s position that the method of
making the 3,4-polyalkylenedioxy-thiophene/polystyrene sulfonate
dispersion starting material specified in Example 2 of EP-A 991 303 is
“essential material” required to make the claimed dispersion invention; that
the Specification does not contain a description of the preparation of the 3,4-
polyalkylenedioxy-thiophene/polystyrene sulfonate dispersion starting
material other than to prepare the same in accordance with Example 2 of EP-
A 991 303; and that there is no language in the written description in the
Specification expressly incorporating EP-A 991 303 by reference into the
Application. Ans. 3-4; Br. 6-7.
Appellants essentially argue one skilled in the art in possession of EP-
A 991 303 would thus be in possession of the first step of the process, that
is, the preparation of the 3,4-polyalkylenedioxy-thiophene/polystyrene
sulfonate dispersion starting material, disclosed to prepare the claimed
dispersion as described in the written description in the Specification. Br. 5-
7. In this respect, Appellants state the disclosure in the Specification
“confirms that the first step for preparing the applicant’s dispersion is
preparing 3,4-polyalkylenedioxy-thiophene/polystyrene sulfonate dispersion
in known [sic] by one of ordinary skill in the art and refers to EP 0991303,”
and that “[a] person skilled in the art would know how to make the
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dispersion according to the first step, i.e. example 2 of EP 0991 303
discloses the preparation of such a dispersion in a known manner.” Br. 6.
We disagree with Appellant’s position. It is axiomatic that the written
description of a claimed invention in a specification must contain the full
disclosure of all information essential for one skilled in the art to make and
use the claimed invention in order to satisfy the provisions of
§ 112, first paragraph. Such “essential material” can be incorporated by
reference only to a United States patent or United States patent application
publication. 37 C.F.R. §§ 1.57(b)(1), (b)(2), and (c)(1) (September 21,
2004); see Manual of Patent Examining Procedure (MPEP) § 608.01(p),
I. Incorporation By Reference (8th ed., Rev. 5, August 2006). See, e.g.,
General Elec. Co. v. Brenner, 407 F.2d 1258, 1260 (D.C. Cir. 1968) (“[T]he
Commissioner has the authority to issue a patent upon an application
wherein the disclosure incorporates, by reference, (and relies thereon)
certain portions of a disclosure of an existing patent provided that this
information relied upon is available to the public.”).
On this record, even if one person skilled in the art was in possession
of EP-A 991 303, the “essentially material” in this foreign patent literature
document is not readily available to the public. General Elec. Co., 407 F.2d
at 1260; see also MPEP § 608.01(p), I. Incorporation By Reference (8th ed.,
Rev. 5, August 2006) (“The incorporation by reference practice with respect
to applications which issue as U.S. patents provides the public with a patent
disclosure which minimizes the public’s burden to search for and obtain
copies of documents incorporated by reference which may not be readily
available.”). Furthermore, Appellants have not established that one skilled
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in this art can make the claimed dispersion encompassed by representative
appealed independent claim 1 from the disclosure in the written description
in the Specification to use the dispersion prepared in accordance with
Example 2 of EP-A 991 303 without being in possession of EP-A 991 303.
Appellants’ recourse is to correct the matter as provided in 37 C.F.R. §§
1.57(g). See MPEP § 608.01(p), I. Incorporation By Reference, 2, Improper
Incorporation (8th ed., Rev. 5, August 2006).
Accordingly, Appellants have not rebutted the Examiner’s prima facie
case, and thus, we affirm the ground of rejection of appealed claims 1, 4, 5,
and 9 under 35 U.S.C. § 112, first paragraph.
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

kmm

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