Ex Parte Reed

Patent Trial and Appeal Board

Nov 29, 2016

12479052 (P.T.A.B. Nov. 29, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/479,052 06/05/2009 Wayne F. Reed P08129US (78442.18P2) 1672
22920 7590 11/29/2016
GARVEY SMITH NEHRBASS & NORTH, LLC
LAKEWAY 3, SUITE 3290
3838 NORTH CAUSEWAY BLVD.
METAIRIE, LA 70002
EXAMINER
CHEUNG, WILLIAM K
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
11/29/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE F. REED1
Appeal 2015-007173
Application 12/479,052
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s maintained final rejection of claims 1—12, 14, 73, 74, 82, 91, and
94—118. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
1 According to Appellant, the Real Parties in Interest are The Administrators
of the Tulane Educational Fund, and the inventor, Wayne F. Reed. Appeal
Brief filed February 23, 2015, (“App. Br.”) 4.
Appeal 2015-007173
Application 12/479,052
CLAIMED SUBJECT MATTER
Appellant’s claimed invention is generally directed to a method of
monitoring the evolution of polymer and/or colloid stimuli responsiveness
during synthesis of stimuli-responsive polymers and/or stimuli-responsive
colloids, and to an apparatus comprising a plurality of the same type of
monitoring devices for monitoring the same characteristics of polymers
and/or colloids during their synthesis. Spec. Abstract; claims 1, 73, 113, and
115.
Claims 1 and 73 are illustrative:
1. A method of monitoring the evolution of polymer
and/or colloid stimuli responsiveness during synthesis of
stimuli-responsive polymers having stimuli responsiveness
and/or stimuli-responsive colloids having stimuli
responsiveness, comprising:
a) providing a reactor in which stimuli-responsive
polymers having stimuli responsiveness and/or stimuli-
responsive colloids having stimuli responsiveness are
synthesized;
b) providing a stimuli responsiveness monitoring
device for monitoring the stimuli responsiveness of the
polymers and/or colloids during said polymer and/or colloid
synthesis; and
c) using the stimuli responsiveness monitoring
device, monitoring the evolution of stimuli responsiveness of
the polymers and/or colloids during said polymer and/or colloid
synthesis by noting stimulus or stimuli applied and the response
of the polymers and/or colloids to that stimulus or stimuli.
73. Apparatus comprising:
a reactor in which polymers and/or colloids are
synthesized;
a device for withdrawing a stream or streams from the
reactor; and
a plurality of the same type of monitoring devices for
monitoring the polymers and/or colloids in the stream or
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Application 12/479,052
streams during said synthesis, the monitoring devices each
monitoring the same characteristics of the polymers and/or
colloids.
App. Br. 24, 26 (Claims Appendix.)
REJECTIONS
The Examiner maintains the following final rejections2:
Claims 73, 74, 82, 93-96, 113, 114, 117, and 118 under 35 U.S.C.
§112, second paragraph as being indefinite for failing to particularly point
out and distinctly claim the subject matter that Appellant regards as the
invention.3
Claims 1-12, 14, 73,74, 82, 91, and 94—118 under 35 U.S.C. § 102(b)
as anticipated by Reed (US 6,653,150 Bl, issued November 25, 2003).
DISCUSSION
On the record before us, we are unpersuaded that the Examiner erred
in rejecting claims 73, 74, 82, 94—96, 113, 114, 117, and 118 under 35
U.S.C. § 112, second paragraph and we further determine that claims 1—12,
14, 91, 97—112, and 115—118 are indefinite and, thus, enter a new ground
under 35 U.S.C. § 112, second paragraph. We procedurally reverse the
2 Examiner’s Answer entered May 28, 2015 (“Ans.”).
3 Although the Examiner includes only claims 113, 114, 117, and 118 in this
ground of rejection in the Final Office Action entered September 14, 2014,
(“Final Act.” 2—3), the Examiner indicates in the Answer that claim 73 and
“its dependent claims” should have been included in this rejection “for the
same rationale.” Ans. 9. Appellant responds to this “new ground” of
rejection in the Reply Brief filed July 27, 2015, (“Reply Br.”) 4—5.
Therefore, independent claims 73 and 113, and all claims depending from
these independent claims, are included in this ground of rejection.
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Application 12/479,052
Examiner’s rejection of claims 1—12, 14, 73, 74, 82, 91, and 94—118 under
35 U.S.C. § 102(b). We add the following for clarity and explanation.
Independent claims 73 and 113 recite “a plurality of the same type of
monitoring devices” that each monitor “the same characteristics” of
polymers and/or colloids during synthesis. We find the Examiner’s position
that the metes and bounds of the recited “same type of monitoring devices”
where each monitor “the same characteristics” cannot be ascertained from
Appellant’s original disclosure to be well-founded. Final Act. 2.
Section 112, second paragraph, requires that “[t]he specification . . .
conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.”
“As the statutory language of ‘particularity]’ and ‘distinctness]’ indicates,
claims are required to be cast in clear—as opposed to ambiguous, vague,
indefinite—terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014).
Our reviewing court has held that when the USPTO has initially
issued a well-grounded rejection that identifies ways in which the language
in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter the applicant
fails to provide a satisfactory response, the USPTO can properly reject the
claim as failing to meet the statutory requirement that the claims be definite.
Id. at 1313—1314. The court explained a satisfactory response can take the
form of modification of the language identified as unclear, a separate
definition of the unclear language, or, in appropriate circumstances,
“persuasive explanation for the record of why the language at issue is not
actually unclear.” Id. at 1311.
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Application 12/479,052
Although Appellant asserts that paragraphs 40 and 45—48 of the
instant Specification as published4 explain the meaning of “a plurality of the
same type of monitoring devices” that each monitor “the same
characteristics” (Reply Br. 4—5), we are unable to ascertain from this portion
of Appellant’s Specification what Appellant intends to encompass by these
phrases, and are thus unable to ascertain the scope of what they include or
exclude. Specifically, these paragraphs of Appellant’s Specification do not
clarify whether “a plurality of the same type of monitoring devices” that
each monitor “the same characteristics” refers to, for example, a plurality of
identical devices that each measure identical characteristics; refers to devices
that are not identical, but measure identical characteristics (e.g. a differential
scanning calorimeter or a dynamic mechanical analysis instrument to
measure glass transition temperature); or refers to devices that are not
identical, but function to measure different characteristics considered to be
encompassed within the same general characteristic (e.g. a UV-visible
spectrophotometer or an infrared spectrophotometer to measure UV-visible
or near-infrared absorbance, which are encompassed within the general
characteristic of absorption of electromagnetic radiation).
Accordingly, we find that Appellant does not persuasively explain
with sufficient specificity why the relied-upon paragraphs of the
Specification circumscribe the scope of protection sought by the phrases at
issue. Therefore, we sustain the Examiner’s rejection of claims 73, 74, 82,
94—96, 113, and 114 under 35 U.S.C. § 112, second paragraph.
4 Citations to Appellant’s Specification throughout this Decision refer to the
published patent application, US 2009/0306311 Al, published December 10,
2009.
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As to the recitation of “high stimuli responsiveness” in claims 117 and
118, we likewise are unpersuaded by Appellant’s proffered argument and
evidence. Relying on the Declaration of Wayne Reed submitted to the
Patent Office on July 5, 2013, Appellant contends that one of ordinary skill
in the art would understand the meaning of stimuli-responsive polymers
and/or colloids having “high stimuli responsiveness.” App. Br. 12-13. The
Reed Declaration, however, fails to provide sufficient guidance or a standard
for ascertaining what constitutes the degree of stimuli-responsiveness
necessary to meet “high stimuli responsiveness” as these are used in the
Specification. The Reed Declaration sets forth that “stimuli responsiveness”
has an understood meaning in the art, and that only a “small subclass of
polymers are actually stimuli responsive” (Reed Declaration 1, || 1-2, citing
1235 of the published application), but the cited paragraph 235 itself is
inconsistent with the relied on understood meaning in the art because it sets
forth the factors that affect polymers’ interactions, and the types of
interactions, by way of non-limiting exemplary listings (discussed in further
detail below). Where terms of degree require some measure from a baseline,
but the baseline of what is not considered to be stimuli responsive is not
sufficiently defined, the Examiner’s indefmiteness rejection of claims 117
and 118 are well-founded. Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1370—71 (Fed. Cir. 2014) (terms of degree require some measure from
a baseline.); see also Seattle Box Company, Inc. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).
Therefore, we sustain the Examiner’s rejection of claims 117 and 118
under 35U.S.C. § 112, second paragraph.
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Regarding the new ground, we are also unable to ascertain the scope
of what is encompassed by the “stimuli-responsive polymers” recited in
independent claims 1 and 115. Appellant’s Specification does define
“stimuli-responsive polymers” as “one or more of the diverse types of
behaviors that polymers and/or colloids can manifest, depending on their
own structure, composition and other macromolecular and chemical
characteristics, the conditions of their synthesis, and the details of the
environment where they may be synthesized, transferred to, or otherwise
used or applied,” and this portion of the Specification goes on to provide
numerous non-limiting examples of “such behaviors.” Spec. 114.
However, this definition does not clearly delimit the “diverse behaviors” that
characterize stimuli-responsive polymers because it sets forth only
exemplary, non-limiting behaviors that stimuli-responsive polymers may
exhibit. Id. Thus, this definition does not indicate or describe with
particularity behaviors that characterize stimuli-responsive polymers.
Moreover, we find no guidance in Appellant’s Specification that
distinguishes “stimuli-responsive polymers” from polymers that are not
“stimuli-responsive,” and find no meaningful clarification of any difference
between the two types of polymers. Accordingly, Appellant’s Specification
does not clearly set forth which polymers are included or excluded by the
“stimuli-responsive polymers” recited in claims 1 and 115. Amgen, Inc. v.
Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1217 (Fed. Cir. 1991) (A claim is
considered indefinite under 35 U.S.C. § 112, second paragraph, if it does not
reasonably apprise those skilled in the art of its scope).
Although Appellant appears to contend that the Declarations of
inventor Wayne Reed submitted to the Patent Office on July 5, 2013, and
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Application 12/479,052
September 2, 2014, clarify the meaning of “stimuli-responsive polymers,”
we find no such clarification in either Declaration. App. Br. 12—13, 15—16,
20-21. Instead, the Declarations both indicate that paragraph 235 of
Appellant’s published application explains in detail that stimuli-responsive
polymers are a very small subclass of polymers. July 5, 2013, Declaration 1,
1—2; September 2, 2014 Declaration 2,13. This paragraph of Appellant’s
Specification broadly describes “more ‘intelligent’ functions” that can be
performed by “[precisely engineered complex and architecturally
sophisticated polymers” in contrast to “traditional polymers,” but describes
the factors that affect polymers’ interactions, and the types of interactions,
by way of non-limiting exemplary listings and so this paragraph does not
define the distinction to be made, and how to distinguish, between stimuli-
responsive polymers and polymers that are not stimuli-responsive. Thus,
this paragraph does not provide sufficient guidance as to what is
encompassed by the “stimuli-responsive polymers” recited in claims 1 and
115. Spec. 1235; see also 114 (discussed above). Further, while the
Specification fails to provide a clear distinction between stimuli-responsive
and normal (non-stimuli-responsive) polymers, it does provide a special
meaning of the phrase and that meaning is contrary to that set forth by
Appellant as being limited to a small subclass of polymers. Cf Vitronics
Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (When the
Specification sets forth a special meaning of the claim term, it must be given
that special meaning).
Accordingly, we cannot ascertain the scope of the subject matter
encompassed by claims 1—12, 14, 91, 97—112, and 115—118, and we, thus,
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Application 12/479,052
enter a new ground of rejection as to these claims under 35 U.S.C. § 112,
second paragraph.
Having added this new ground of indefiniteness to those of the
Examiner, which we sustain, all pending claims now stand rejected under 35
U.S.C. § 112, second paragraph.
It necessarily follows that we are unable to determine the propriety of
the Examiner’s § 102(b) rejection because to do so would require
considerable speculation with regard to the metes and bounds of the claimed
subject matter. In re Steele, 305 F.2d 859, 862 (CCPA 1962) (“Our analysis
of the claims indicates that considerable speculation as to meaning of the
terms employed and assumptions as to the scope of such claims were made
by the examiner and the board. [W]e do not think a rejection under 35
U.S.C. § 103 should be based on such speculations and assumptions.”); In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious— the claim becomes indefinite.”). Therefore, we
procedurally reverse the rejection of claims 1—12, 14, 73, 74, 82, 91, and 94—
118 under 35 U.S.C. § 102(b).
In doing so, we emphasize that we do not take any position on the
merits of the underlying prior art rejection, and upon clarifying the indefinite
language in the claims, we will consider such rejection based on the prior art
of record, if maintained by the Examiner and then brought before us again
on appeal.
CONCLUSION
The Examiner’s rejections of claims 73, 74, 82, 94—96, 113, 114, 117,
and 118 under 35 U.S.C. § 112, second paragraph are AFFIRMED.
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The Examiner’s rejection of claims 1—12, 14, 73, 74, 82, 91, and 94—
118 under 35 U.S.C. § 103(a) is procedurally REVERSED.
Pursuant to 37 C.F.R § 41.50(b), we enter a NEW GROUND OF
REJECTION against claims 1—12, 14, 91, 97-112, and 115-118 under 35
U.S.C. § 112, second paragraph as being indefinite.
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
AFFIRMED-IN-PART; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R, $ 41.50(b)
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