Ex parte Rosenfeld et al.

Board of Patent Appeals and Interferences

May 9, 2000

08220562 (B.P.A.I. May. 9, 2000)

Application for patent filed 31 March 1994. The real party in interest is1
Occidental Chemical Corporation.
The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JEROLD C. ROSENFELD,
SERGIO R. ROJSTACZER and JOHN A. TYRELL

_____________
Appeal 1997-2572
Application 08/220,5621
______________
Before: WINTERS, Administrative Patent Judge, and McKELVEY,
Senior Administrative Patent Judge, SCHAFER, Administrative
Patent Judge.
McKELVEY, Senior Administrative Patent Judge.
MEMORANDUM OPINION and ORDER
Decision on appeal under 35 U.S.C. § 134
The appeal is from a decision of the Primary Examiner
apparently intending to reject claims 1-22. We reverse.
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A. Findings of fact
The record supports the following findings by a
preponderance of the evidence.
The claims
1. The claims on appeal are claims 1-22.
2. Claim 1 reads as follows (certain indentation,
matter in bold and matter in brackets added):
A solution consisting essentially of[:]
(I) an organic solvent; [and]
(II) a polyamic acid consisting essentially of the
reaction product of[:]
(A) a dianhydride selected from the group
consisting of[:]
[1] 3,3',4,4'-biphenyltetracarboxylic
dianhydride [BPDA],
[2] bis(3,4-dicarboxyphenyl)ether
dianhydride [ODPA], and
[3] mixtures thereof; and
(B) total diamine in a molar ratio with said
dianhydride of about 1:2 to about 2:1,
where said total diamine consists
essentially of[:]
(1) about 1 to about 30 mole %, based on
total diamine, of a siloxane-
containing diamine and
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(2) about 70 to about 99 mole %, based on
total diamine, of a mixture of at
least two diamines selected from the
group consisting of[:]
(a) about 10 to about 90 mole %,
based on said mixture, of 2,2-
bis(4[4-
aminophenoxy]phenyl)propane
[BAPP];
(b) about 10 to about 80 mole %,
based on said mixture of 2,2'-
bis(4-aminophenyl)-1,4-
diisopropylbenzene [BAP];
(c) about 10 to about 90 mole %,
based on said mixture, of 3,3'-
diamino-phenylsulfone [APS]; and
(d) about 10 to about 90 mole %,
based on said mixture, of 1,3-
bis(3-aminophenoxy)benzene [APB].
Examiner's Rejections
3. In the Examiner's Answer (Paper 16), the
examiner maintains three prior art rejections:
4. Claims 1, 3-8, 11-13 and 19-22 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Okinoshima,
U.S. Patent 5,041,513 (1991).
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5. Claims 9-10 stand rejected under 35 U.S.C. § 103
over Okinoshima and European Patent Application (EPA)
0 538 075 A1 (published 21 April 1993).
6. Claim 2 stands rejected as being unpatentable
under 35 U.S.C. § 103 over Okinoshima and Nakashima, U.S.
Patent 5,262,505 (1993).
7. The record is somewhat unclear as to the status
of remaining claims 14-18, although some of these claims are
mentioned in passing in the Examiner's Answer. We assume that
claims 14-18 have also been rejected under 35 U.S.C. § 103
based one way or another on Okinoshima.
8. At one time these claims, along with other
claims, were rejected as being unpatentable under 35 U.S.C.
§ 103 over prior art, including EPA. See page 1 of the Final
Rejection (Paper 5), where it is indicated that claims 1-22
are rejected.
Okinoshima
9. Okinoshima describes polyamic solutions
containing
(I) an organic solvent and
(II) a polyamic acid made by reacting:
Appeal 1997-2572
Application 08/220,562
A dianhydride which does not fall within the scope of clause (II)(A) of2
applicants' claim 1.
A dianhydride within the scope of clause (II)(A) of applicants' claim 1.3
The amine of clause (II)(B)(2)(a) of applicants' claim 1.4
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(A) a tetracarboxylic acid dianhydride containing at
least 10 mole % of 2,2-bis(3,4-
benzenedicarboxylic anhydride)perfluoropropane
[6FDA] and
(B) a mixture of amines made up of:
(1) a siloxane-containing diamine and
(2) an ether diamine.
10. The examiner seems to regard Okinoshima Example
8 as highly pertinent. Example 8 is as follows:
Example 8
The procedure of Example 1 was repeated except that
4.4 grams (0.01 mol) of 2,2-bis(3,4-benzenedicarboxylic
anhydride)perfluoropropane [6FDA ] and 26.5 grams (0.092
mol) of 3,3',4,4'-biphenyltetracarboxylic dianhydride
[BPDA ] were used as the tetracarboxylic dianhydride3
component and 1.2 grams (0.005 mol) of bis(3-
aminopropyl)tetramethyl-disiloxane and 39.0 grams (0.095
mol) of 2,2-bis[4-(4-aminophenoxy)-phenyl]propane [BAPP ]4
were used as the diamine component. There was obtained
68.0 grams of a polyimide resin.
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This polyimide resin was soluble in any organic
ether and ketone solvents.
A 10% cyclohexanone solution of the polyimide resin
was prepared. As described in Example 1, this resin
solution composition was applied to various substrates
and heated at 150E C. for one hour, obtaining a
satisfactory coating having a smooth surface and improved
adherence to each substrate.
11. The Okinoshima polyamic acid must include a 6FDA
component.
B. Discussion
Applicants maintain, and the examiner denies, that the
preamble "consisting essentially" language of applicants'
claim 1 excludes the presence of 6FDA from applicants' claimed
solution. According to applicants, denied by the examiner,
the presence of 6FDA materially affects the properties of
applicants' claimed solutions. We also are told, without as
much as one scintilla of supporting evidence in the record,
that (Appeal Brief, paragraph bridging pages 5-6):
[Applicants] *** have used 6FDA to prepare
polyimidesiloxanes (using diamines outside the scope
of this invention) and have learned that 6FDA
reduces the bond strength. [Applicants] ***
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therefore expect that a polyimidesiloxane made from
6FDA and the diamines required in their claims would
not have sufficient bond strength to function as an
adhesive.
Applicants go on to make an unusual representation as
follows on page 6 of the Appeal Brief:
For the record, and for the purpose of creating a
file wrapper estoppel, *** [applicants] will state
that a polyimidesiloxane made from an anhydride
component that is at least 10 mole % 6FDA (and the
remainder BPDA) is outside the scope of their
claims.
Applicants cannot narrow a claim during prosecution
before the Patent and Trademark Office by explicitly creating
a file wrapper estoppel in a brief on appeal. The proper
manner to narrow a claim during prosecution is to amend the
claims.
Applicants cannot rely on experimental work without
presenting evidence of the experimental work. A discussion in
a brief on appeal of experimental work alleged to have taken
place is mere argument of counsel which all concerned should
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know is not evidence. Estee Lauder, Inc. v. L'Oreal, S.A.,
129 F.3d 588, 592, 44 USPQ2d 1610, 1615 (Fed. Cir. 1997).
At this point, we feel comfortable in saying that both
the applicants and the examiner have missed the mark. Neither
applicants nor the examiner have properly determined the scope
of claim 1. But, claim scope determination is an essential
first step in resolving patentability. One cannot evaluate
the applicability of prior art to a claim without first
determining the scope of the claim!
The Federal Circuit said it best when it gave the
following sage advice: "The invention disclosed in *** [the]
written description may be outstanding in its field, but the
name of the game is the claim." In re Hiniker Co., 150 F.3d
1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Moreover,
the Federal Circuit has provided meaningful guidance on how a
claim such as applicants' claim 1 should be construed. In
Mannesmann Demag Corp. v. Engineered Metal Products Co., Inc.,
793 F.2d 1279, 1281, 230 USPQ 45, 46 (Fed. Cir. 1986), the
following claim was before the court (material in bold added):
Appeal 1997-2572
Application 08/220,562
"Having" in the context of the Mannesmann claim means "comprising".5
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A vessel for a metal smelting furnace having a[5]
smelting zone including a heat-resistant interior
wall, and cooling means for protecting the interior
of said vessel, characterized by
(a) at least a portion of the interior wall of
said vessel above the smelting zone consisting of at
least one cooling pipe coil;
(b) said coil including fluid passage-forming
sections;
(c) said cooling pipe coil being exposed to the
center of the vessel, and
(d) neighboring sections of said coil being
arranged in a contacting relation.
The Federal Circuit, commenting on the district court's
construction of the claim, notes (id. at 1282, 230 USPQ at
46):
The district court correctly observed that the
phrase "consisting of" appears in clause (a), not
the preamble of the claim, and thus limits only the
element set forth in clause (a). The [district]
court correctly declined to read this usage of
"consisting of" as excluding all other elements from
the claim as a whole.
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Another relevant case is Berenter v. Quigg, 737 F.Supp.
5, 14 USPQ2d 1175 (D.D.C. 1988), involving a civil action
under 35 U.S.C. § 145 seeking judicial review of a decision of
this board. The following claim was before the district court
[matter in brackets, indentation and bold added]:
A method for treating an infestation of
cockroaches selected from the species ***, said
species being characterized in that a first habitat
of these species during early development and
reproduction is different from a second habitat ***
during a post-migratory stage, to substantially
eliminate said infestation and prevent its spread to
beyond the locus thereof which comprises
[1] identifying said first habitat, and
[2] applying lethally effective amount of
pesticide to an area consisting of said first
habitat, whereby to exterminate any cockroaches of
said species present in said area and substantially
prevent further reproduction thereof.
Berenter maintained that his claim limited the habitat to
which the pesticide is applied to the first habitat; the board
had held that "comprises" opened the claim to other steps,
including a step of applying a pesticide to the second
habitat. The district court, citing Mannesmann, agreed with
Appeal 1997-2572
Application 08/220,562
Ex parte Markush, 1925 Dec. Comm'r Pat. 126, 127 (Comm'r Pat. 1924) ("material6
selected from the group consisting of aniline, homologues of aniline and halogen
substitutes of aniline").
- 11 -
Berenter and determined that the scope of the claim precluded
application of a pesticide to the second habitat. As noted by
the district court, "[a]n additional step that allows the use
of the pesticide in an area other than the first habitat is
inconsistent with *** [Berenter's] claim."
Mannesmann's claim and Berenter's claim are similar to
the applicants' claim 1 in that all contain "consisting of" in
one clause of the claim and not in the preamble. The term
"consisting of", when used in a claim, is a term of art in
patent law. It closes the claim, or the clause of the claim
in which it appears, to the inclusion of materials other than
those recited except for impurities ordinarily associated
therewith. Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1949).
The "consisting of" in clause (II)(A) of applicants' claim 1
limits the dianhydrides used to make applicants' polyamic acid
to the Markush group of:6
[1] 3,3',4,4'-biphenyltetracarboxylic dianhydride
[BPDA],
Appeal 1997-2572
Application 08/220,562
There is no evidence in the record which would establish that 6FDA is an7
ordinary impurity in BPDA, particularly when 6FDA makes up 10% of a mixture of 6FDA and
BPDA and 6FDA is purposely used to make the mixture.
- 12 -
[2] bis(3,4-dicarboxyphenyl)ether dianhydride
[ODPA], and
[3] mixtures thereof.
Excluded from the dianhydrides of clause (II)(A) of
applicants' claim 1--as well as the rest of the claim--are
other dianhydrides, including 6FDA, an essential and7
necessary dianhydride in the Okinoshima polyamic acid.
On this record, we can perceive of no reason why a person
having ordinary skill in the art would eliminate 6FDA from the
polyamic acid solution described by Okinoshima. Thus, this is
not a case where it would have been obvious to eliminate an
element along with its function. Compare In re Karlson, 311
F.2d 581, 136 USPQ 184, 186 (CCPA 1963) and In re Wright, 343
F.2d 761, 145 USPQ 182, 190 (CCPA 1965). It follows that the
decision of the examiner rejecting claims based on Okinoshima
is not legally sufficient.
C. Other issues
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Application 08/220,562
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We recognize that the examiner withdrew a rejection based
on EPA, believing Okinoshima to be closer. In light of our
findings and conclusion, the examiner may wish to reevaluate
whether EPA is in fact a closer reference. Nothing in this
opinion should be construed as precluding the examiner from
entering a rejection of claims based on EPA.
D. Order
Upon consideration of the record, and for the reasons
given, it is
ORDERED that the examiner's rejections based on
Okinoshima are reversed.
REVERSED.
______________________________
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
______________________________)
FRED E. McKELVEY, Senior ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
Appeal 1997-2572
Application 08/220,562
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)
______________________________)
RICHARD E. SCHAFER )
Administrative Patent Judge )
Appeal 1997-2572
Application 08/220,562
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