Ex Parte Parris et al

Board of Patent Appeals and Interferences

Mar 31, 2008

10034005 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUANITA PARRIS, NING WU,
JEANNETTE SIMONI-TRUNCELLITO,
ROBERT CATENA, JITU MODI,
WILLIAM P. KEAVENEY,
and ROBERT AUERBACH
____________

Appeal 2008-0254
Application 10/034,005
Technology Center 1700
____________

Decided: March 31, 2008
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Examiner’s final rejection of
claims 1, 2, 6, 8, 9, 11-13, 15, and 19-24. We have jurisdiction pursuant to
35 U.S.C. § 6.

Appeal 2008-0254
Application 10/034,005

Appellants’ invention is directed to a method of preparing a universal base
composition including the step of dissolving a pigment in a resin that is
soluble in both water and organic solvent wherein the resin is defined in
terms of hydrophobic and hydrophilic monomer. Claim 1 is illustrative and
reproduced below:
1. A method of preparing a universal base composition comprising
dispersing a pigment in a sin that is soluble in both water and organic
solvent and wherein:

(a) said resin comprises both hydrophobic and hydrophilic monomers;

(b) the total weight of the hydrophobic and hydrophilic monomers is
at least about 20% of the total weight of the resin; and

(c) the weight ratio of hydrophobic monomers to hydrophilic
monomers is from about 1/5 to about 5.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Thomm 3,846,507 Nov. 5, 1974
Login 4,098,741 Jul. 4, 1978
Takahashi 4,234,466 Nov. 18, 1980
Burlone EP 0 116 666 Aug. 29, 1984
Scheibelhoffer 5,670,561 Sep. 23, 1997

Claims 1, 2, 12, 13, 19, and 24 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Scheibelhoffer. Claims 1, 2, 9, and 21-24
stand rejected under 35 U.S.C. § 102(b) as being anticipated by Takahashi.
Claims 1, 2, 6, 8, 9, 11, 12, 15, 19, 20, and 22-24 stand rejected under 35
U.S.C. § 102(b) as being anticipated by EP 116666, as further evidenced by
Thomm and Login.
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Application 10/034,005

We procedurally reverse the stated rejections and enter a new ground
of rejection under the second paragraph of 35 U.S.C. § 112, which rejection
is applied to all of the pending claims, including claims 1-52.
With respect to the stated rejections, Appellants basically maintain
that each of the applied allegedly anticipatory references does not disclose a
method of dispersing a pigment in a resin of a type in accordance with the
claimed hydrophobic/hydrophilic monomer ratio and weight percent
requirements for the resin, as well as describing the use of such a resin
having the here-claimed characteristics in terms of solubility in water and in
a organic solvent (Br. 5-12). The Examiner’s contentions are to the contrary
(Ans. 4-13).
However, in order to make a proper comparison between the claimed
invention and the prior art, the language of the claims must first be properly
construed. See In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994). See
also, Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed.
Cir. 1987) (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.") See Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997)
(requiring explicit claim construction as to any terms in dispute). During
examination, claims are given the broadest reasonable construction in light
of the Specification. See In re American Academy of Science Tech Center,
367 F.3d 1359, 1369 (Fed. Cir. 2004).
If the scope and breadth of the claims cannot be properly determined,
then the claims should be rejected under 35 U.S.C. § 112, ¶ 2. See In re
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Application 10/034,005

Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989)(if claims do not “particularly
point[ ] out and distinctly claim[ ]”, in the words of section 112, appropriate
PTO action is to reject the claims for that reason) and In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004)(“[A] patent applicant has the opportunity and
responsibility to remove any ambiguity in claim term meaning by amending
the application.”). Cf. In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) and
In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)(rejections under
35 U.S.C. § 103 cannot be based on speculations and assumptions).
With respect to the argued resin employed in the claimed process and
the called for ratio and total content of hydrophilic and hydrophobic
monomers associated therewith and the solubility characteristics thereof, we
note that Appellants have furnished definitions for the claim terms
hydrophilic monomer and hydrophobic monomer in the subject
Specification as follows:
A Hydrophilic monomer is defined for the purpose of this
invention as a monomer that, after being made into a polymer,
contains at least one functional group that impart[s] the
solubility in both water and solvent (lower alcohol and lower
alcohol/acetate mixtures). Such functional groups include but
are not limited to -COOH, -OH, -PEO, -NH2, -SO3H,
piperazine, pyrrolidone.
…
Hydrophobic monomer is defined for the purpose of this
invention as a monomer that contains [a] paraffinic chain with
at least six carbon atoms, or contains [a] hydrocarbon ring with
at least 8 carbon atoms. Furthermore, a hydrophobic monomer,
after being made into a polymer, does not contain the functional
groups that impart solubility in both water and solvent (lower
alcohol and lower alcohol/acetate mixtures).
(Spec. 4 and 5)
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Appeal 2008-0254
Application 10/034,005

Rather than clarifying the scope of the claims, however, these claim
term definitions render the scope thereof unclear and indeterminable. For
example, the hydrophilic monomer definition indicates that the portion of
the resin “monomers” that qualify for the “hydrophilic” moniker is
dependent on the polymer that is ultimately made, on the functional group(s)
that can be attributed to such a monomer after being turned into a polymer,
as well as on the functional characteristic thereof with respect to imparting
solubility not only in water, but also in a solvent (lower alcohol and lower
alcohol/acetate mixtures). In this regard, the provided definition does not
clearly delimit the type of alcohols or alcohol/acetate mixtures that are
considered to be “lower alcohol and lower alcohol/acetate mixtures” such
that a reasonable determination could be made as to which monomers would
count as “impart[ing] solubility…” and be considered “hydrophilic
monomer[s]” within the scope of the furnished definition. While Appellants
present some examples of functional groups in the formed polymer that are
included within the scope of the definition and would count as hydrophilic,
these examples are described as being non-limiting (Spec. 4 and 5). As
such, the furnished definition for the claim term “hydrophilic monomer”
works to undermine rather than clarify the scope of the claim terms
employed and hence the scope of the claims themselves given the relative
terminology employed in the solubility requirement for the hydrophilic
monomer definition. The furnished open ending listing of eligible
monomers and functional groups does not resolve this ambiquity.
This claim indefiniteness is further attenuated by considering, as we
must, the further provided definition for “hydrophobic monomer” together
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Appeal 2008-0254
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with the above-noted “hydrophilic monomer” definition. With regard to the
“hydrophobic monomer” claim term, the Specification provides a definition
including several requirements for a monomer to be considered hydrophobic
(Spec. 5). In particular, the monomer itself must contain a paraffinic chain
having at least six carbon atoms or, in the alternative, the monomer must
contain a hydrocarbon ring with at least eight carbon atoms (id.). In addition
and in order to earn the name “hydrophobic”, the monomer must, after being
made into a polymer, fail to contain functional groups that would serve to
impart resin solubility in both water and solvent, with the solvent being
parenthetically defined, as above, for the hydrophilic monomer (id.).
Again, as for the hydrophilic monomer definition, non-limiting
examples of monomers that could be considered hydrophobic are presented
(id.). Taking these two definitions together, it is not readily apparent how it
can be determined whether a given resin falls within or without the
hydrophobic monomer/ hydrophilic monomer ratio and total weight percent
ratio claimed. This is particularly so in light of the unclearly defined scope
of the solubility imparting requirement or non-solubility imparting
requirement for a polymer or polymer group made from a monomer, for the
monomer to be labeled as hydrophilic or hydrophobic. This is the case, at
least in part, because of the language employed in describing the functional
groups that can not be included in a polymer made from such a monomer.
This language is based on the unclearly identified reach of the solvents
(lower alcohol and lower alcohol/acetate mixtures) in addition to water, that
a polymer, made from a monomer, cannot possess functional groups that
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Application 10/034,005

would impart solubility toward, as one of the requirements for the monomer
to be counted as “hydrophobic.”.1
In sum, the Examiner and the Appellants disagree on the
correspondence of the hydrophobic monomer and hydrophilic monomer
weight ratio and total weight percent content of the applied references’
resins relative to the here-claimed requirements therefore. The Specification
definitions for the relevant claim terms necessary to determine the reach of
the claims with respect to these argued requirements have not been explicitly
employed in the Briefs and Answer before us. Moreover, these definitions,
from our perspective, leave the scope of the affected claims unclear and
seemingly indeterminate. Thus, we are unable to determine the propriety of
the Examiner’s § 102 rejections, on this record. To do so would require
speculation with regard to the metes and bounds of the claimed subject
matter. Accordingly, we procedurally reverse the Examiner’s § 102
rejections2, and we enter a new ground of rejection against the claims on
appeal as shown below.

1 We are aware that Table 2 of the subject Specification reports data for
hydrophilic group weight percent and hydrophobic group weight percent for
several resins. However, the manner in which the hydrophilic and
hydrophobic group content of these resins was assessed or measured for
each of the identified resins in a manner consistent with the definitions
furnished in the subject Specification has not been detailed in the
Specification. Moreover, the claims of this application are not limited to the
particular resins identified in Table 2 of the Specification.
2 This procedural reversal is not based upon the merits of the
Examiner’s § 102 rejections.
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Appeal 2008-0254
Application 10/034,005

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new ground of rejection.
Claims 1-52 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
invention for the reasons set forth above.3
After all, it is well settled that the purpose of the definiteness
requirement is:
to provide those who would endeavor, in future enterprise, to
approach the area circumscribed by the claims of a patent, with
the adequate notice demanded by due process of law, so that
they may more readily and accurately determine the boundaries
of protection involved and evaluate the possibility of
infringement and dominance.

In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970).
Here, the claimed requirement for using a resin having a specified
hydrophobic/hydrophilic monomer ratio and total resin content of such
monomers based on the furnished definitions for hydrophobic monomers
and hydrophilic monomers provided in the subject Specification renders the
scope of the claims indefinite for reasons discussed above. In this regard, it
is not clear how one of ordinary skill in the art could determine whether a
particular prior art resin would or would not possess or have been made from

3 Previously allowed claims 25-52 and objected to (as depending from
a rejected base claim) and claims 3-5, 7, 10, 14, and 16-18 are included in
this new ground of rejection, as these claims also employ the above-
discussed monomer characterizations that we determine, on this record, to
lend prima facie indefiniteness to the claims employing such terminology.
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Application 10/034,005

the claimed total content of hydrophobic and hydrophilic monomers and/or
the claimed ratio of these monomer types based on the seemingly unique and
indeterminate definitions furnished by Appellants in their Specification for a
monomer to be counted as a hydrophobic or hydrophilic in assessing the
claimed ratio and total amount requirements for such in a resin made
therefrom.
CONCLUSION
In view of the new rejection set forth above, the Examiner’s §§ 102
and 103(a) rejections are procedurally reversed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provide that the Appellants, 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 the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .

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Appeal 2008-0254
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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)(iv)(2006).

REVERSED/§ 41.50(b)

PL Initial:
sld

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