Ex Parte Lim et al

Board of Patent Appeals and Interferences

Oct 8, 2008

10520842 (B.P.A.I. Oct. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JONG CHEOL LIM
and SAM JOO YANG
__________

Appeal 2008-4998
Application 10/520,842
Technology Center 1700
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Decided: October 8, 2008
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Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-7. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE.

INTRODUCTION
Appellants disclose a flame retardant thermoplastic resin comprising a
polycarbonate resin, a rubber modified vinyl-grafted copolymer, a vinyl
polymer, a phosphorous compound mixture of a cyclic phosphazene
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oligomer compound and a phosphate ester morpholide compound as a flame
retardant, and a fluorinated polyolefin resin (Spec. 41). Appellants disclose
that the mixture of components produces a flame retardant thermoplastic
resin having a good balance of physical properties such as impact strength,
heat resistance, heat stability, processability and appearance (Spec. 4).
Claim 1 is illustrative:

1 We refer to the Specification originally filed on January 10, 2005.
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The rejection on appeal as presented by the Examiner is as follows:
1. Claims 1-7 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
The Examiner determines that Appellants’ deletion of the word
“consisting” from the (B), and (D) components as originally claimed
broadens the scope of the claims beyond the originally filed Specification
and thus, constitutes new matter (Ans. 3-4).
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Appellants only argue claim 1. As such, we address Appellants’
arguments regarding the rejection with respect to claim 1 only.

OPINION

Appellants argue that the Examiner has not explained why the written
description does not support the amended claim (i.e., with “consisting”
deleted from the (B) and (D) components) (App. Br. 4-5). Appellants
contend that “consisting of” as used in the written description has its plain
and ordinary meaning (i.e., “made up of”) and does not have the legal
meaning applied to the phrase when it is used within a claim (App. Br. 4).
Appellants contend that there is nothing in the originally filed Specification
that excludes additional monomers from the (B) component of the mixture
or additional organic phosphorous compounds from the (D) mixture (App.
Br. 4). We agree.
The fundamental factual inquiry in determining whether a claimed
invention satisfies the written description requirement of 35 U.S.C. § 112,
first paragraph, is whether the specification conveys with reasonable clarity
to those skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The PTO has the initial burden of
presenting evidence or reasons why persons skilled in the art would not
recognize in the disclosure a description of the invention defined by the
claims. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976).
When used in a claim, the transitional phrase “consisting of” excludes
any element, step, or ingredient not specified in the claim. In re Gray,
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53 F.2d 520 (CCPA 1931). See also, Conoco Inc. v. Energy &
Environmental Int’l L.C., 460 F.3d 1349, 1360 (Fed. Cir. 2006)
(“Transitional phrases, such as “comprising,” “consisting of,” and
“consisting essentially of,” are terms of art in patent law that “define the
scope of the claim with respect to what unrecited additional components or
steps, if any, are excluded from the scope of the claim.” (emphasis added)).
In the present appeal, the Examiner takes the position that “consisting
of” has the same legal meaning in the written description portion of the
Specification as it does in the claims (Ans. 3). The Examiner contends that
“consisting of” as used in Appellants’ original Specification excludes other
monomers or organic phosphorous compounds besides the ones listed in the
groups described (Ans. 3). We do not agree.
While the phrase “consisting of” has a particular closed meaning as a
“transitional phrase” in patent law parlance, such meaning is applied only to
the phrase when it is used within the claims. See, Gray, 53 F.2d at 520 (The
court applied the closed meaning of “consists” to construe claim 4). The
closed patent law meaning of “consisting of” does not apply to the phrase
“consisting of” when used in the written description portion of the
Specification for two reasons. First, a claim, not the written description, has
a “transitional phrase.” Accordingly, any meaning attributed to a claimed
transitional phrase does not apply to the phrase when used in the written
description portion of the Specification. Second, absent a definition
provided by an applicant in the written description portion of the
Specification, the plain and ordinary meaning of “consisting of” should be
applied to the phrase when present in the written description.
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With this distinction in mind, we agree with Appellants that
“consisting of” as used in the written description portion of the original
Specification, has the plain and ordinary meaning of “made up of” (App. Br.
4). The Examiner does not challenge Appellants’ definition of “consisting
of.” As such, we find that Appellants’ originally filed written description
indicates that the (B) monomer mixture is “made up of” the various claimed
monomers (e.g., Spec. 6:15-26) and the (D) mixture of organic phosphorous
compounds is made of various phosphorous compounds (e.g., Spec. 4:25-29;
9:12-14). Appellant’s originally filed written description portion of the
Specification does not indicate that other monomers or organic phosphorus
compounds may not be used or that the listed monomers or organic
phosphorous compounds are critical.
We further note that the written description indicates that the selection
of the various claimed and disclosed monomers of component (B) are
merely “preferable” (Spec. 7:2-10). This disclosure indicates that other
monomers may be used, albeit they are not preferred. This finding further
supports our determination that Appellants’ originally filed written
description portion of the Specification demonstrates that they possessed, at
the time of filing the patent application, the invention defined by the claims
as amended to delete “consisting” from the claim with regard to component
(B).
With regard to the organic phosphorous compounds (D), the originally
filed written description portion of the Specification indicates that the “[t]he
organic phosphorous compound of the present invention is a mixture of (d1)
. . . (d2) . . . .” (Spec. 9:12-14). Contrary to the Examiner’s finding that the
phrase “consisting of” is replaced with the word “is” at that portion of the
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Specification (Ans. 3), the word “is” appears in the originally filed
Specification (i.e., “consisting of” was not replaced with the word “is”).
This finding further supports that the Appellants, at the time of filing the
patent application, had possession of the amended claim with the more
broadly claimed organic phosphorous compounds (i.e., without “consisting”)
of component (D).
For these reasons, we reverse the Examiner’s rejection of claims 1-7
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.

DECISION
The Examiner’s decision is reversed.
REVERSED

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