Ex Parte Peter

Board of Patent Appeals and Interferences

Feb 28, 2007

10277435 (B.P.A.I. Feb. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte THOMAS H. PETER
__________

Appeal 2007-0301
Application 10/277,435
Technology Center 1700
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ON BRIEF
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Before ADAMS, GREEN, and LEBOVITZ, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1, 7, and 13, which read as follows:
1. A composition comprising methylene bis-orthochloroaniline and a
stabilizing quantity of a hindered amine light stabilizer.

7. A method of stabilizing methylene bis-orthochloroaniline from the
effects of degradation by heat comprising blending with said methylene bis-
orthochloroaniline a stabilizing quantity of a hindered amine light stabilizer.

Appeal No. 2007-0301
Application No. 10/277,435

13. In a method for the production of polyurethane elastomers comprising
the mixing and curing of a polyurethane prepolymer with methylene bis-
orthochloroaniline, the improvement that comprises blending a stabilizing
amount of a hindered amine light stabilizer with the methylene bis-
orthochloroaniline.

The claims stand rejected under 35 U.S.C. § 112, first paragraph, on
the grounds that “the specification does not reasonably provide enablement
for compositions comprising methylene bis-orthochloroaniline and hindered
amine light stabilizers other than (1,2,2,6,6-pentamethyl-4-
piperidinyl)sebacate” (Answer 2). We reverse.1

DISCUSSION
Claims 1, 7, and 13 stand rejected under 35 U.S.C. § 112, first
paragraph, “because the specification, while being enabling for stabilized
compositions comprising methylene bis-orthochloroaniline and (1,2,2,6,6-
pentamethyl-4-piperidinyl)sebacate, does not reasonably provide enablement
for compositions comprising methylene bis-orthochloroaniline and other
hindered amine light stabilizers. The specification does not enable any
person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the invention commensurate in scope with these
claims” (Answer 3).

1 We note that Appellant submitted a Reply Brief on November 22, 2005,
which was not entered by the examiner.
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Application No. 10/277,435

The examiner argues the disclosure states that there are a number of
different hindered amine light stabilizers (HALS) that are similar in
chemistry, but that the disclosure fails “to exemplify other suitable
stabilizers or disclose the characteristics that a suitable hindered amine light
stabilizer must possess in order to satisfy the objectives of the invention.”
Id. According to the examiner, “appellant’s statement regarding similarities
in terms of chemistry and function, when considered in light of the
aforementioned stated differences, is vague and ambiguous to the point that
one cannot derive specific or definitive guidance from the language;
accordingly one cannot reasonably conclude from the disclosure that all
hindered amine light stabilizers will function equivalently for the given
specific application.” Id. at 3-4.
The examiner bears the initial burden of showing nonenablement. See
In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993). “[E]nablement requires that the specification teach those in the art to
make and use the invention without ‘undue experimentation.’ . . . That some
experimentation may be required is not fatal; the issue is whether the amount
of experimentation required is ‘undue.’” In re Vaeck, 947 F.2d 488, 495,
20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (emphasis in original). Some
experimentation, even a considerable amount, is not “undue” if, e.g., it is
merely routine, or if the specification provides a reasonable amount of
guidance as to the direction in which the experimentation should proceed.
See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
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Application No. 10/277,435

“[A] specification disclosure which contains a teaching of the manner
and process of making and using the invention in terms which correspond in
scope to those used in describing and defining the subject matter sought to
be patented must be taken as in compliance with the enabling requirement of
the first paragraph of § 112 unless there is reason to doubt the objective truth
of the statements contained therein which must be relied on for enabling
support.” In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA
1971) (emphasis in original). “[It] is incumbent upon the Patent Office,
whenever a rejection on this basis is made, to explain why it doubts the truth
or accuracy of any statement in a supporting disclosure and to back up
assertions of its own with acceptable evidence or reasoning which is
inconsistent with the contested statement.” Id. at 224, 169 USPQ at 370.
Here, the examiner has not provided “acceptable evidence or reasoning
which is inconsistent” with the specification, and therefore has not met the
initial burden of showing nonenablement.
Appellant asserts that “[a]ll hindered amine light stabilizers are
derivatives of 2, 2, 6, 6-tetramethyl piperidine” (Br. 7). The examiner
responds that Appellant has not sufficiently established that hindered amine
light stabilizers, as used in the claims, should not be so narrowly defined
(Answer 4). Thus, the issue is how the phrase “hindered amine light
stabilizer” as used in the claims should be defined.
According to the examiner, the disclosure as filed does not teach that
the hindered amine light stabilizers possess the argued piperidine group. Id.
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Application No. 10/277,435

Moreover, the specification uses Naugard 445, which the examiner
asserts is considered to be a hindered amine light stabilizer, as a comparative
example, yet that compound does not contain a piperidine group. Finally,
the examiner cites Furuta,2 which discloses at paragraph [0223] that
octylated diphenylamine, a compound that is analogous to Naugard 445, is a
hindered amine light stabilizer.
Appellant relies on page 5 of the specification to support his position
that all hindered amine light stabilizers are derivatives of 2, 2, 6, 6-
tetramethyl piperidine. That section of the specification states:
Hindered amine light stabilizers (HALS) are well known
in the art. Tinuvin 765 (Ciba Geigy) is a (1,2,2,6,6-
pentamethyl-4-piperidinyl) sebacate mixture. While there are a
number of different HALS available on the market today, they
are similar in chemistry and function, and tend to differ
primarily in physical attributes, such as melting point, volatility,
and concentration of active species.

During ex parte prosecution, claims are to be given their broadest
reasonable interpretation consistent with the description of the invention in
the specification. See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989). We find that the interpretation of the phrase

2 Furuta et al. (Furuta), US 2003/0220444 A1, published November 27,
2003.
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“hindered amine light stabilizer” that is reasonable and consistent with the
specification is appellant’s interpretation, i.e., the phrase as used in the
claims should be limited to hindered amine light stabilizers that are
derivatives of 2, 2, 6, 6-tetramethyl piperidine.3
As can be seen from the above excerpt, the specification teaches a
specific example of a preferred HALS—(1,2,2,6,6-pentamethyl-4-
piperidinyl) sebacate mixture. The specification also teaches that HALS are
“similar in chemistry,” thus supporting the interpretation that the HALS are
derivatives of 2, 2, 6, 6-tetramethyl piperidine.
Page 8 of the specification shows how Tinuven 765 compares to other
well known stabilizers, such as Naugard 445, which is 4,4’-bis(α,α-
dimethylbenzyl)diphenylamine. The specification teaches that the HALS
material (Tinuvan 765), which is a 2, 2, 6, 6-tetramethyl piperadine
derivative, provided the best stabilization. Thus, this example demonstrates
that the specification intended to exclude other well known stabilizers such
as Naugard 445 and octylated diphenylamine as taught by Furuta, from the
phrase “hindered amine light stabilizers.”

3 Although we do not rely upon the Reply Brief in reaching our decision, as
it was not entered by the examiner, we acknowledge Exhibit 1 as consistent
with this interpretation. The first paragraph of that exhibit states that “[t]he
second main category of light stabilisers consists of what are known as
hindered amine light stabilizers . . . . They are derivatives of 2,2,6,6-
tetramethyl piperidine and are extremely efficient stabilizers against light-
induced degradation of most polymers.”
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Appeal No. 2007-0301
Application No. 10/277,435

Given the interpretation of the phrase “hindered amine light
stabilizers” as being limited to hindered amine light stabilizers that are
derivatives of 2, 2, 6, 6-tetramethyl piperidine, and the guidance provided in
the specification at pages 7-9 as to measuring color stability provided by the
addition of the hindered amine light stabilizers, we conclude that it would
not require an undue amount of experimentation to practice the full scope of
the claimed invention, and the rejection is reversed.

REVERSED

Donald E. Adams )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Lora M. Green )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Richard M. Lebovitz )
Administrative Patent Judge )

LMG/lbg

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Appeal No. 2007-0301
Application No. 10/277,435

MR. DANIEL REITENBACH
CHIEF PATENT COUNSEL
CROMPTON CORPORATION
BENSON ROAD
MIDDLEBURY, CT 06749
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