Ex Parte Kim et al

Board of Patent Appeals and Interferences

Apr 17, 2009

10701317 (B.P.A.I. Apr. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOUNG H. KIM,
MICHAEL O'NEILL, and
JIAZHONG CHEN
____________

Appeal 2008-4984
Application 10/701,317
Technology Center 1700
____________

Decided:1 April 17, 2009
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge TIMM.

Opinion Dissenting filed by Administrative Patent Judge KRATZ.

TIMM, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 10/701,317

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-4 and 6-8. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
The invention relates to an ionomeric urea/urethane polymer. Claim 1
is illustrative:
1. An ionomeric urea/urethane polymer comprising (a) repeating
units derived from an aliphatic polyester polyol, and (b) repeating units
derived from a polyisocyanate,

wherein the urea/urethane polymer contains less than about 2
mole percent of urea units described by the formula – R – N(R2) – C(O) –
N(R2) – R1;

wherein R is a C6 – C20 aromatic hydrocarbon radical, R1 is a
C1 – C20 aliphatic hydrocarbon radical, and R2 is H or an amide group that is
described by the formula C(O) – N(R2) – R –; and

wherein the polyisocyanate is selected from the group
consisting of toluene diisocyanate, methylene diphenyldiisocyanate,
polymethylene polyphenylisocyanate, and mixtures thereof.

The Examiner maintains two rejections over the same prior art
reference, U.S. Patent 5,728,769, issued March 17, 1998 to Natesh et al.
(Natesh). Claims 1-4 and 6-8 are rejected under 35 U.S.C. § 102(b) as
anticipated by Natesh, and claims 1-4 and 6-8 are further rejected under
35 U.S.C. § 103(a) as unpatentable over Natesh.
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The Examiner and Appellants agree that Natesh describes using a
combination of first and second polyisocyanates for synthesizing a
polyurethane resin (Ans. 3-4 and 6-7; Br. 3). The Examiner and Appellants
also agree that the Natesh’s first polyisocyanate is outside the scope of the
claimed Markush group of claim 1 (Ans. 3; Br. 3). The Examiner maintains
that because the claim uses the transitional phrase “comprising,” the claim
encompasses polymers containing the additional first polyisocyanate
component of Natesh (Ans. 3). Appellants contend that claim 1 excludes
polymers having Natesh’s first polyisocyanate component. According to
Appellants, the claimed polymer is limited to those using only the
polyisocyanates listed in the claimed Markush group, and the Examiner has
improperly applied the law of claim interpretation to the present claims (Br.
3-4).
II. DISPOSTIVE ISSUE
The issue on appeal arising from the contentions of Appellants and the
Examiner is: Have Appellants established that the Examiner improperly
interpreted claim 1?
III. FINDINGS OF FACT
Claim 1 is directed, in relevant part, to “[a]n ionomeric urea/urethane
polymer comprising (a) repeating units derived from an aliphatic polyester
polyol and (b) repeating units derived from a polyisocyanate, . . . wherein
the polyisocyanate is selected from the group consisting of . . .” (emphasis
added).
IV. PRINCIPLES OF LAW
"It is a bedrock principle of patent law that the claims of a patent
define the invention to which the patentee is entitled the right to exclude."
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Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
(internal quotations omitted). “[T]he claims themselves provide substantial
guidance as to the meaning of particular claim terms.” Phillips v. AWH
Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). “A claim must be read in
accordance with the precepts of English grammar.” In re Hyatt, 708 F.2d
712, 714 (Fed. Cir. 1983).
“‘Comprising’ is a term of art used in claim language which means
that the named elements are essential, but other elements may be added and
still form a construct within the scope of the claim. In re Crish, 393 F.3d
1253, 1257 (Fed. Cir. 2004) (quoting Genentech, Inc. v. Chiron Corp.,
112 F.3d 495, 501 (Fed. Cir. 1997)).
The phrase “‘consisting of’ is closed-ended and conveys limitation
and exclusion.” CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1361
(Fed. Cir. 2007); see also In re Gray, 53 F.2d 520, 521 (CCPA 1931)
(noting that “consists” excludes elements not recited in the claim) and
Mannesmann Demag Corp. v. Engineered Metal Prods. Co., 793 F.2d 1279,
1282 (Fed. Cir. 1986) (“consisting of” within a clause of a claim closes the
element modified and nothing more).
A Markush group is a listing of specified alternatives of a group in a
patent claim, typically expressed in the form "a member selected from the
group consisting of A, B, and C," but which also can be expressed, for
instance, as "wherein R is A, B, C, or D." Abbott Labs. v. Baxter Pharm.
Prods., 334 F.3d 1274, 1280 (Fed. Cir. 2003); In re Harnisch, 631 F.2d 716,
724 (CCPA 1980). The element modified by the Markush group language
“selected from the group consisting of” is closed, i.e., that element is limited
to one member of the Markush group. Abbott Labs., 334 F.3d at 1281.
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V. ANALYSIS
Claim 1 requires at least two elements, a polyol (a) and a
polyisocyanate (b). Because the claim uses the transitional phrase
“comprising,” there is a presumption that the claim is open to the inclusion
of other ingredients including other polyols and polyisocyanates. However,
that is only true if the claim does not elsewhere use closed language with
respect to one of the elements. Claim 1, in fact, uses closed language with
respect to the polyisocyanate element. The claim recites that “the”
polyisocyanate must be “selected from the group consisting of toluene
diisocyanate, methylene diphenyldiisocyanate, polymethylene
polyphenylisocyanate, and mixtures thereof.” The claim language
effectively closes the polyisocyanates to only those listed. Abbott Labs., 334
F.3d at 1281.
The facts of the current case are, as pointed out by Appellants, similar
to the facts in Abbott Labs. Claim 1, at issue in Abbott Labs, was directed to
a composition comprising sevoflurane and a Lewis acid inhibitor, but the
claim further recited “said Lewis acid inhibitor selected from the group
consisting of” and recited a list of inhibitors. Just as in Abbott Labs, claim 1
of this application uses the transitional phrase “comprising,” lists elements,
and then limits one of the elements to a selection from a Markush group.
The court in the Abbott Labs case determined that the Lewis acid inhibitor
was limited by the language of the claim to a single member of the Markush
group. Abbott Labs., 334 F.3d at 1281. The language here does the same; it
limits the polyisocyanate to a single member of the recited Markush group.
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We are cognizant of the fact that Abbott Labs dealt with the
interpretation of a claim in an infringement context under a standard
differing from the broadest reasonable interpretation standard applied during
patent prosecution. See In re Morris, 1054 1027-28. However, we note that
“comprising,” “consisting of,” and “selected from the group consisting of”
are legal terms of art that have the same meaning in both prosecution and
infringement contexts. Moreover, the grammar of the claim referencing
“the” polyisocyanate when setting forth the Markush group is a clear
reference to the polyisocyanate recited in the first clause of the claim. This
grammar effectively limits the scope of the claim such that the broadest
reasonable interpretation excludes polyisocyanates other than those of the
Markush group. See Hyatt, 708 F.2d 712, 714 (“A claim must be read in
accordance with the precepts of English grammar.”).
VI. CONCLUSION
Appellants have established that the Examiner improperly interpreted
claim 1. This error affects both the anticipation and obviousness rejections.
Therefore, we cannot sustain the rejection of claims 1-4 and 6-8 under either
35 U.S.C. §102(b) or § 103(a).
VII. DECISION
The decision of the Examiner is reversed.
REVERSED

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KRATZ, Administrative Patent Judge, dissenting.

I respectfully dissent from the decision reached by my colleagues
reversing the Examiner’s rejection of claims 1-4 and 6-8 under 35 U.S.C.
§ 102(b) as anticipated by Natesh, and reversing the Examiner’s rejection of
claims 1-4 and 6-8 under 35 U.S.C. § 103(a) as unpatentable over Natesh for
substantially the reasons set forth by the Examiner in the Answer.
In this regard, I concur with the Examiner’s determination that the
rejected and appealed claims do not exclude a polymer that includes
repeating units of a type that can be derived from another reactive isocyanate
compound in addition to the repeating units (b) of claim 1.2
During examination, claims terms must be given their broadest
reasonable construction consistent with the specification. In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
I generally agree with the majority concerning the well established
meaning of the Markush group term “selected from the group consisting of”
and the long standing interpretation given to the transitional terms
“comprising” and “consisting of,” as set forth in the case law referenced in
the majority opinion. However, I come to a different conclusion than the
majority with respect to how appealed claim 1 should be construed, during
examination, in light of the cited precedent.
Claim 1 is drawn to a specified ionomeric urea/urethane polymer and
employs product- by-process format in laying out two repeating units that

2 Appellants argue the claims together as a group in the Appeal Brief. Thus,
claim 1, the sole independent claim on appeal, is representative of all of the
appealed claims for purposes of deciding this appeal.
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must be present in the polymer. Appellants employ the open transitional
term, “comprising,” in denoting the requirement for “(a) repeating units
derived from an aliphatic polyester polyol, and (b) repeating units derived
from a polyisocyanate” (claim 1). Thus, repeating units other than (a) and
(b) may be present in the polymer. Appellants limit the amount of specified
urea units that may be present in the polymer of claim 1 via a “wherein”
clause. In another “wherein” clause of claim 1, Appellants require the
polyisocyanate, as previously referred to as a source of repeating units (b),
to be selected from a limited list of options using closed Markush group
“selected from the group consisting of” terminology. Hence, the second
“wherein” recitation reads as a further limitation on repeating units (b); that
is, as part of the description of repeating units (b).
As indicated above and with respect to the “comprising” term,
appealed claim 1 does not otherwise limit the source or nature of other
repeating units that may be part of the polymer so long as the polymer may
be characterized as an ionomeric urea/urethane polymer. Appellants do not
argue that the subject Specification furnishes a limiting definition on what is
meant by the claim terms at issue herein.
Accordingly, claim 1 should be construed as being open to the
inclusion of polymers that include repeating units other than the repeating
unit (a) and repeating units (b), as specified in claim 1, when giving the
claim its broadest reasonable construction when read in light of the
Specification as it would be understood by one of ordinary skill in the art.
Thus, a polymer including repeating units of a type that can be derived from
another polyisocyanate of a kind like the first isocyanate of Natesh, in
addition to repeating units of a type derivable from the polyisocyanate as
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employed for the repeating units (b) of claim 1, are reasonably
accommodated by the claim 1 recitations as basically urged by the
Examiner.
In this regard, there is no apparent unfairness to an Appellant in
construing claims, during examination, in a manner that could prove
inconsistent with a claim construction that may be reached by a court during
patent litigation because the pending claims are subject to a narrowing
amendment during examination proceedings and are not subject to the same
rules of construction by which a patent claim is construed. See In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Consequently, Appellants’ contention that “every repeating unit in the
polymer that is derived from a polyisocyanate must be selected from toluene
diisocyanate, methylene diphenyldiisocyanate, polymethylene
polyphenyldiisocyanate, and mixtures thereof” is unpersuasive in showing
error in the Examiner’s rejections (Reply Br. 4). This is because appealed
claim 1contains no such limitation.
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Appellants present no other argument asserting that the Examiner
erred in maintaining the anticipation and obviousness rejections over Natesh
aside from the claim interpretation arguments (see the Appeal Brief in its
entirety).3

cam

INVISTA NORTH AMERICA S.A.R.L.
THREE LITTLE FALLS CENTRE/1052
2801 CENTERVILLE ROAD
WILMINGTON, DE 19808

3 Concerning the obviousness rejection, Appellants present a teaching away
argument alleging that Natesh requires an isocyanate component that is
outside the scope of the claimed subject matter, which argument is not
persuasive. Moreover, this argument was not timely presented and
addresses an issue (obviousness of elimination of the first isocyanate of
Natesh to one of ordinary skill in the art) that was not raised by the
Examiner as an alternative rationale in the obviousness rejection.
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