Ex Parte Malz et al

Board of Patent Appeals and Interferences

Feb 24, 2010

10474926 (B.P.A.I. Feb. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HAUKE MALZ, JOHANN DIEDRICH BRAND,
THOMAS FLUG, and CHRISTA HACKL
____________

Appeal 2009-015123
Application 10/474,926
Technology Center 1700
____________

Decided: February 24, 2010
____________

Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-6 and 8-19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

Appeal 2009-015123
Application 10/474,926

I. STATEMENT OF THE CASE
The invention relates to a method of preparing a substance mixture for
the UV stabilization of plastics. (Spec. 1:5-6). Claim 1 is illustrative
(emphasis added):
1. A process for preparing a substance mixture (I) having a
number-average molar mass of from 500 to 15 000 g/mol, where the
number-average molar mass is not identical to the weight-average
molar mass, said process comprising

A) reacting UV absorbers (II), or a mixture of UV absorbers
(II) and stabilizers (III) for plastics, with diols (IV),
where the UV absorbers (II) and the stabilizers (III) have
at least one group that is reactive toward diols (IV) and at
least some of the UV absorbers (II) or of the stabilizers
(III) have at least two groups reactive toward diols (IV),

or

B) reacting UV absorbers (II), or a mixture of UV absorbers
(II) and stabilizers (III) for plastics, with a polyol (V),
where the UV absorbers (II) and the stabilizers (III) have
at least one group that is reactive toward polyol (V) and
at least some of the UV absorbers (II) or of the stabilizers
(III) have at least two groups reactive toward polyol (V),

where the reaction conditions for reaction A) or B) are
selected so as to give the substance mixture (I) an
aliphatic hydroxyl number below 20, and where the ratio
of the UV absorbers (II) and/or the stabilizers (III) to the
diols (IV) and/or the polyol (V) is about from 1 : 1 to
about 2 : 1, on a molar basis.

Independent claim 17 is identical to claim 1 except the emphasized
(italicized) phrase of claim 1 is replaced with “where the UV absorbers (II)
and/or the stabilizers (III) are present in the substance mixture in an amount
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of from about 52.3 to about 78.1% by weight based on a total weight of the
substance mixture”. Dependent claims 18 and 19 further limit the range of
“52.3 to about 78.1%” of claim 17 respectively to “55.4 to 73.3%” and “64.6
and 70.7%”.
The Examiner rejected all of the claims, that is, claims 1-6 and 8-19,
under the first paragraph of 35 U.S.C. § 112 as failing to comply with the
written description requirement due to the aforementioned ranges.
The Examiner also rejected claims 1-6 and 8-16 under the second
paragraph of 35 U.S.C. § 112 as indefinite (Ans. 3), and rejected claims 1, 2,
5, 6, 8-12 and 17-19 on the ground of nonstatutory obviousness-type double
patenting over claims 1-12 of U.S. Patent No. 6,995,230 (Ans. 4, 5).
Appellants do not contest the rejections under the second paragraph of
35 U.S.C. § 112 and under the judicially created doctrine of obviousness-
type double patenting advanced on appeal by the Examiner. Rather, in the
Appeal Brief, Appellants “acknowledge[ ] the other rejections to the claims
(the 35 U.S.C. § 112 ¶ 2 and non-statutory obviousness-type double
patenting rejections) and intend[ ] to later address and remedy these other
rejections, as permitted.” App. Br. 8.
Accordingly, we summarily affirm the 35 U.S.C. § 112 ¶ 2 and
obviousness-type double patenting rejections. See Manual of Patent
Examining Procedure § 1205.02 (8th ed., Rev. 3, August 2005) (“If a ground
of rejection stated by the examiner is not addressed in the appellant’s brief,
that ground of rejection will be summarily sustained by the Board.”); see
also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (in which the Board
affirmed an uncontested rejection of claims under 35 U.S.C. § 112, second
paragraph, and on appeal the Federal Circuit affirmed the Board’s decision
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and found that the Appellant had waived his right to contest the
indefiniteness rejection by not presenting arguments as to error in the
rejection on appeal to the Board).
ISSUE ON APPEAL
Have Appellants identified reversible error in the Examiner’s
determination that the claimed features of:
a) “where the ratio of UV absorbers (II) and/or the stabilizers (III) to
the diols (IV) and/or the polyol (V) is about 1:1 to about 2:1, on a molar
basis” as set forth in claim 1, and/or
b) “where the UV absorbers (II) and/or the stabilizers (III) are present
in the substance mixture in an amount of from about 52.3 to about 78.1% by
weight based on a total weight of the substance mixture” as set forth in
independent claim 17, and/or
c) the ranges as set out in dependent claims 18 and 19,
violate the written description requirement in the first paragraph of 35
U.S.C. § 112?
We answer all parts of this question in the negative, and accordingly
affirm the rejection.
FINDINGS OF FACT (“FF”)
It is not disputed that Appellants’ Specification does not explicitly
describe the claimed molar ratios and weight percentages of the claimed
generic ingredients as exemplified in the nine examples, rather, calculations
based on the amounts of each relevant ingredient in the nine examples
described in Appellants’ Specification need to be performed (e.g., Spec.
generally; App. Br. 9). It is also not disputed that once these calculations are
performed, these nine examples of Appellants’ Specification individually
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describe molar ratios and weight percentages that may form the claimed
ranges for the specific components used in the examples (Spec. 10:10-11;
Ans. 8-10; App. Br. 9).
The Examiner’s position is that the amounts used in the nine (9)
Specification examples do not provide adequate basis for the generic
components as claimed (Ans. 4, 6-12). Furthermore, as the Examiner points
out, each of claims 1 and 17 require that some of the UV absorbers and
stabilizers have “at least two groups reactive towards the diols (IV) or
polyol” (Ans. 11, 12; emphasis added). Appellants do not dispute the
Examiner’s factual findings that Examples 4, 6, and 9 have only one group
reactive towards polyol, and thus are outside of the scope of claims 1 and 17
(id., see also Reply Br. 4).
Furthermore, each of the ranges recited in claims 1, 17, 18, and 19
rely on an example outside the scope of the claim for at least the upper limit
of the respective range recited therein.
Appellants have not provided any evidence that the amounts used for
UV absorbers and stabilizers with only one group reactive towards polyol
are applicable for UV absorbers and stabilizers with at least two groups
reactive towards polyol. To the contrary, Appellants admit that the amounts
needed are dependent upon the number of reactive groups used (Reply Br. 4-
5).
Accordingly, for at least this reason, Appellants’ Specification does
not describe the recited ranges of ratios and weight percentages of claims 1,
17, 18, and 19.

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PRINCIPLES OF LAW
Compliance with the written description requirement is a question of
fact. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991).
In order to comply with the written description requirement, the applicant's
disclosure must “convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the [claimed]
invention.” Id. at 1563-64.
A disclosure that merely renders the later-claimed subject matter
obvious is not sufficient to meet the written description requirement; the
disclosure must describe the claimed invention with all its limitations.
Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998); Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997).
The original disclosure of a broader range may support the recitation
of a narrower range, even though the narrower range had not been explicitly
disclosed. In re Wertheim, 541 F.2d 257, 262-63 (CCPA 1976). However,
as noted in Wertheim, determination of questions relating to the written
description requirement depend upon the facts of each particular case (id.).
There are no hard and fast per se rules in this area. Mere comparison of
ranges is not enough. If the written description does not use precisely the
same terms used in a claim, the question then is whether the specification
directs or guides one skilled in the art to the subject matter claimed. See,
e.g., In re Smith, 458 F.2d 1389, 1394-95 (CCPA 1972); Purdue Pharma
L.P. v. Faulding, Inc., 230 F.3d 1320, 1326 (Fed. Cir. 2000); see also In re
Ruschig, 379 F.2d 990, 994-995 (CCPA 1967).

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ANALYSIS
Appellants contend that one of ordinary skill in the art would have
understood that the present application encompasses the claimed ranges and
ratios because of the explanation of the importance of molar ratios and
weight ranges in the Specification and no evidence exists to the contrary
(App. Br. 13-14). Appellants’ arguments rely on the premise that one of
ordinary skill in the art would have followed the obvious and explicit “blaze
marks” in their Specification (id.). This is not persuasive of error in the
Examiner’s position. The test is not whether one of ordinary skill in the art
would find the invention obvious after reading the disclosure, it is whether
the disclosure itself conveys that Appellants had possession of the later-
claimed subject matter.
Appellants rely on several precedents to support its view that the
claims comply with the written description (App. Br. 10-18). However,
none of these precedents involved the type of fact situation we have here in
which the later-added claims each recite a new range derived from working
examples disclosing, after the relevant calculations are performed, discrete
specific numerical values, not ranges.
One skilled in the art, reading the original disclosure, must reasonably
discern the limitation at issue in the claims. In the present case, the required
guidance is not present in the Specification. First, Appellants’ Specification
never explicitly describes the importance of the claimed ranges of ratios and
weight percentages (see FF).
Furthermore, contrary to Appellants’ arguments, Appellants do not
provide any blaze marks marking the path through the forest to a grove of
trees representing the range of the claim. See Ruschig, 379 F.2d at 994-995;
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see also Purdue Pharma, 230 F.3d at 1326. As noted by the Examiner,
numerous examples used in Appellants’ Specification and relied upon by
Appellants to create the claimed ranges do not correspond to the claimed
components (see FF). Appellants have failed to provide any rebuttal to this
finding (id.). While the Examiner has the initial burden of presenting
evidence of reasons why persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the claims, Wertheim,
541 F.2d at 263, the burden is met when the Examiner points out that the
claim reads on embodiments outside the scope of the original written
description (id.), as here. Thus, even assuming arguendo that the specific
amounts of components used in the Specification examples were adequate to
support the amounts of the generic claimed components, there is no dispute
that three of those nine examples are outside the scope of the present claims
and are being relied upon to support the newly recited ranges.
In this regard, the fact situation here differs from that in Wertheim
where a specific embodiment or example which corresponded to the claimed
invention was presented in the original disclosure close to the claimed lower
limit of the solids content. Wertheim, 541 F.2d at 264-65.1 Here, there are
no ranges explicitly described in the Specification, and at least the upper
endpoints of the newly added ranges are not supported by examples within
the scope of the claim.

1 Another relevant consideration can relate to Appellants’ purpose for
claiming the newly recited ranges. As also stated in Wertheim, 541 F.2d at
264-65, where it is clear “that the broad described range pertains to a
different invention than the narrower . . . claimed range, then the broader
range does not describe the narrower range.” However, since the Examiner
has satisfied his initial burden for establishing a lack of descriptive support,
we find it unnecessary to address this potential consideration.
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Application 10/474,926

Accordingly, we agree with the Examiner that the written descriptive
support relied upon by Appellants is insufficient to meet the requirements of
35 U.S.C. § 112, ¶ 1 for the claims on appeal.

ORDER
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 C.F.R. § 1.136(a).

AFFIRMED

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