Ex Parte Savonnet et al

Patent Trial and Appeal Board

Nov 18, 2016

13496308 (P.T.A.B. Nov. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/496,308 07/27/2012
23599 7590 11/22/2016
MILLEN, WHITE, ZELANO & BRANIGAN, P,C
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
Marie Savonnet
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PET-2752 1069
EXAMINER
WILLIS, DOUGLAS M
ART UNIT PAPER NUMBER
1624
NOTIFICATION DATE DELIVERY MODE
11/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIE SA VONNET, DAVID F ARRUSSENG,
CATHERINE PINEL, DELPHINE BAZER-BACH!, NICOLAS BATS,
and VINCENT LECOCQ 1
Appeal2015-005428
Application 13,496,308
Technology Center 1600
Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a crystallized
hybrid solid. The Examiner entered final rejections for indefiniteness and
that the claims have improper dependent form. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the Real Party in Interest as Centre National De La
Recherche Scientifique and IFP ENERGIES Nouvelles. App. Br. 1.
Appeal2015-005428
Application 13,496,308
STATEMENT OF THE CASE
The Specification discloses "[t]his invention relates to a new
crystallized hybrid solid with an organic-inorganic matrix, of three-
dimensional structure, and to its process for preparation starting from the
DMOF-1-NH2 crystallized hybrid solid with an organic-inorganic matrix
that is already described in the literature." Spec. 1 :4--7. Further according
to the Specification,
[t]his invention has as its object a new crystallized hybrid solid
with an organic-inorganic matrix that has a three-dimensional
structure. This new solid is called DMOF-l-N3. It contains an
inorganic network of zinc-based metal centers that are
connected to one another by organic ligands that consist of the
-02C-C6H3-N3-C02- and C6H12N2 entities.
Spec. 6:4--8.
Claims 1 and 3 are on appeal 2 and are set forth below:
1. A crystallized hybrid solid having a DMOF-l-N3
organic-inorganic matrix, of three-dimensional structure,
containing an inorganic network of zinc-based metal centers
connected to one another by the organic N3-bdc ligand-02C-
C6H3-N3-C02 and the organic DABCO ligand C6H12N2, such
that it has a chemical composition that has Zn2(-02C-C6H3-N 3-
C02-)2( C6H12N2) for its base pattern with said solid having an
2 Claims 2, 4, and 6-13 were withdrawn in response to a Restriction
Requirement. See Final Rejection, mailed June 25, 2014. Claim 5 was
cancelled in Appellants' Amendment, mailed August 25, 2014. We
recognize that Appellants submitted a Supplemental Amendment
concurrently with the Reply Brief, both dated April 27, 2015, in which
Appellants requested cancellation of claim 3; however, the Examiner has not
entered the Amendment and it remains pending for purposes of this appeal.
2
Appeal2015-005428
Application 13,496,308
X-ray diffraction diagram including at least the lines in the table
below:
: J.:.29{) 1 7. l n:'i:J..1. i inf • 19.698 i ~\005WH : ff
r "'"~:, +~~~~+ ,~ • ~~~: r~:~~+ ~
! 18.29 i 4 8467.:t.I r :'liJ.4.·rn ' "7<;<•·,o ' ·1· i .-\.... . ~ ... '.>\ . 1.) .. ~~-.:. l t ~ ;J..;... ..:.-.;i i ..:.. .. ,. f${h) • ., 1 t
1::::::::~~::~:;~~::::::::F::~-{~~~~::~:::::r:::::::::~~:~:::::::::::r::::::~-~~;;~::::::r:::~:;~~;:;:~:::::r:::::::::~~;~::::::::::::
·········~:~--~~~········l······~·;,~-;~~:~ ..... ., ............ :i~: ..................... ~~i~:~:~···············~:i;~~~:~·~····+···········~~: ...........
~ ........ ~.:::.:::.:~ ....... J .... ::.:~~:.:~::~:~ ..... ,, ............ '.?.~ ........... _. ....... ~~:.:::: ........ L ... : .. ~~-~-::~-~ ...... L .......... ~:~ .......... ..
,.'..\ ~F;r, j -~ :'i"-9-IN'i l ff '-:'i I !H i 2.:'i-.lfif.,R I ff
~I~ ; ,,J.).. j •.. Jl.>L44 : H i •. ,._., ; .. A5l'i .. <.! ; f1
• ............................ J ............................. : ............................. · ........................................................... ! ........................... .
whc.ro:: FF"- Vc.ry High; F "'High: m "'lVkdium: mf"' .!Vkdiwn l . .v.
where FF = Very High; F = High; m = Medium; mf = Medium
Low; f =Low; ff= Very Low, with the relative intensity I/10
being provided relative to a relative intensity scale where a
value of 100 is assigned to the most intense line of the X-ray
diffraction diagram: ff< 15; 15:'.Sf< 30; 30:::; mf < 50; 50:::; m <
65· 65 < F < 85· and FF> 85. ' - ' -
3. The crystallized hybrid solid according to Claim 1
indexed in a quadratic system of P4/m space group with, as
mesh parameters, a= b = 10.837 A; c = 9.614 A, and
alpha=beta=gamma=90°.
App. Br. Claims App'x. 7-8.
The Examiner rejects claims 1 and 3 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point
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Appeal2015-005428
Application 13,496,308
out and distinctly claim the subject matter which applicant regards as
the invention (Ans. 3).
The Examiner also rejects claim 3 under 35 U.S.C. § 112,
fourth paragraph, as being of improper dependent form for failing to
further limit the subject matter of the claim upon which it depends, or
for failing to include all the limitations of the claim upon which it
depends (Ans. 4).
I.
The Examiner has rejected claims 1 and 3 under 35 U.S.C.
§ 112, second paragraph, as indefinite (Ans. 3). The Examiner finds
that
the Markush group is so expansive that one of ordinary skill in
the art may not reasonably determine the metes and bounds of
the claimed invention. Consequently, since the Markush group,
D_l·vf OF- J-_l\[3 organic= inorganic matrix, of three dimensional
structure, containing an inorganic network of zinc-based metal
centers connected to one another by the organic N3-bdc ligand,
-02C-C6H3-N3-C02 and the organic DABCO ligand C6H12N2,
encompasses such a vast number of distinct alternative species,
the claim is rendered indefinite under 35 U.S.C. § 112, second
paragraph, since, one of ordinary skill in the art may not
reasonably determine the metes and bounds of the claim, due to
an inability to envision all of the members of the Markush
group.
Ans. 3--4 (italics in original).
According to the Examiner,
the claims fail to distinctly identify the chemical composition
containing Zn2(-02C-C6H3-N3-C02-h(C6H12N2) as a base
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Appeal2015-005428
Application 13,496,308
pattern with such particularity that one of ordinary skill would
reasonably envision a three-dimensional structure, where (1)
every zinc [] atom is surrounded and linked to four oxygen
[]atoms coming from four bdc-NH2 organic ligands, and (2)
each zinc [] atom is further surrounded and linked to one
nitrogen [] atom coming from a DABCO organic ligand ... the
cl aims fail to distinctly correlate the Wang, et al. 3 evidentiary
constitutional isomer representative of a chemical composition
containing the empirical formula,
Zn2(-02C-C6H3-N3-COrh(C6H12)N2), as a base pattern, with the
instantly recited x-ray diffraction diagram data ...
(Ans. 6-7) (italics in original).
The Examiner further states that "by relying on Wang[],
appellant deviates from both the instant specification and the claims to
arrive at one of over 100 constitutional isomers representative of a
chemical composition containing the empirical formula, Zn2(-02C-
C6H3-N3-COrh(C6H12)N2), as a base pattern." Id. at 8 (italics in
original).
Finally, the Examiner states a number of patent claim
construction axioms that the "[a ]ppellant should note", including that
a "claim referring to the specification is improper," "[I] somers having
the same empirical formula, but different structures, are not
necessarily considered equivalent by chemists skilled in the art and
3 Wang et al., Accessing Postsynthetic Modification in a Series of Meta/-
Organic Frameworks and the Influence of Framework Topology on
Reactivity, 48 INORG. CHEM. 296-306 (2009), is an evidentiary reference
submitted by Appellants that discloses a molecule similar to the claimed
invention. Appellants relied on Wang et al. as evidence of the definiteness
of the claimed invention.
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Appeal2015-005428
Application 13,496,308
therefore are not necessarily suggestive of each other, " that a claim
should be rejected where "the scope of the claims can't be determined
when considered in light of the specification", or where the claim may
be "amenable to two or more plausible claim constructions", and that
the "specification cannot impose a further limitation upon the plain
meaning of the claim language." (Id. at 8-9, emphasis in original).
Appellants argue among other things that "one of ordinary skill
in the art, from the description of the ligands surrounding the zinc
atom, and the x-ray diffraction diagram, has a full and complete
understanding of the me [ te] s and bounds of the claim" and that the
Examiner has not provided reasons "why the present claims cannot
be determined when considered in light of the specification." App.
Br. 3--4. According to Appellants, "an x-ray diffraction diagram,
alone, will be sufficient to characterize the solid so as to result in
definiteness under the statute." App. Br. 5. With regard to the
additional axioms noted by the Examiner, Appellants dispute that the
various issues raised apply to the claims at issue (e.g., "[i]t is not
understood why this allegation is made since the claims do not refer to
the specification"). Rep. Br. 2.
The issue with respect to this rejection is whether the evidence of
record supports the Examiner's conclusion that the Markush group of claims
1 and 3 is unreasonably expansive such that it renders claims 1 and 3
indefinite.
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Application 13,496,308
Principles of Law
"Any analysis [of compliance with 35 U.S.C. § 112, first and second
paragraphs] should begin with the determination of whether the claims
satisfy the requirements of the second paragraph. . . . [T]he claims must be
analyzed first in order to determine exactly what subject matter they
encompass." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). "[B]readth
is not to be equated with indefiniteness." In re Miller, 441 F.2d 689, 693
(CCPA 1971).
Analysis
The Specification discloses that the "The DMOF-l-N3
crystallized hybrid solid according to the invention [] has a chemical
composition that has Zn2(-02C-C6H3-N3-C02-)2(C6H12N2) for its base
pattern. This pattern is repeated n times, with the value of n based on
the crystallinity of said solid." Spec. 9:8-11. Thus, the core
inorganic-organic molecule has a precise chemical structure, with the
number of repeating units varying according the size of the
crystallized hybrid solid.
The Markush group of claim 1 states "at least the lines in the
table below" must be present in the x-ray diffraction pattern of the
claimed solid. Therefore, the 19 x-ray diffraction lines enumerated in
claim 1 lines act as a "fingerprint" to guide one of skill in the art in
identifying members of the claimed genus using elements familiar to
those of skill in the art. Pursuant to In re Moore, 439 F.2d at 1235,
the specificity of the claim terms here permits one of skill in the art to
determine the subject matter encompassed because the claim elements
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Application 13,496,308
define the chemical structure of the base solid (varying only by size)
and define a minimum set of additional characteristics (x-ray
diffraction signature) that are required for the molecule to fall within
the claim. We agree with the Appellants that the Examiner has not
sufficiently articulated the rationale for the rejection because the
Examiner has not identified why one of skill in the art would be
unable to envision all of the members of the Markush group given the
specific elements in the claim. That the claim may be "broad" is not
alone a reason to find it indefinite. In re Miller, 441 F .2d at 693.
Accordingly, the Examiner has not carried the burden of establishing
a prima facie case of indefiniteness and we reverse the Examiner's
rejection of claims 1 and 3 under 35 U.S.C. § 112, second paragraph,
as indefinite.
II
The Examiner rejected claim 3 under 35 U.S.C. § 112, fourth
paragraph, as being of improper dependent form (Ans. 4). The Examiner
finds that
the crystalline hybrid solid, as recited in claim 1, is indexed in a
quadratic system of the P4/m space group with, as mesh
parameters, a= b = 10.837 A; c = 9.614A, and
alpha=beta=gamma=90°. Consequently, since, the crystalline
hybrid solid, as recited in claim 1, being indexed in a quadratic
system of the P4/m space group with, as mesh parameters, a =
b = 10.837 A; c = 9.614 A, and alpha=beta=gamma=90°, fails
to result in a further structural limitation to the crystalline
hybrid solid, as recited in claim 1, and/or fails to include all the
limitations of the crystalline hybrid solid, as recited in claim 1,
it is not given patentable weight and thus, renders the instant
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Application 13,496,308
dependent claim improperly dependent under 35 U.S.C. § 112,
fourth paragraph.
(Ans. 4--5, italics in original).
The Examiner finds "dependent claim 3 ... fails to further limit the
indefinite subject matter of the claim upon which it depends, since, it fails to
clearly result in a further patentably distinct structural limitation to the
indefinite crystalline hybrid solid, as recited in claim 1, and thus is rendered
improperly dependent under 35 U.S.C. § 112, fourth paragraph." Ans. 10.
Appellants contend that "claim 3 reciting further parameters of the
solid does ... result in a further patentably distinct structural limitation to
the crystalline hybrid solid of claim 1. No reasons why this is not the case
had been offered, and none exist." App. Br. 5.
The issue with respect to this rejection is whether the evidence of
record supports the Examiner's conclusion that claim 3 is of improper
dependent form for failing to further limit the subject matter of claim 1.
Analysis
The Specification discloses:
the DMOF-l-N3 crystallized hybrid solid according to the
invention is indexed in a quadratic system of the P4/m space
group with, as mesh parameters, a= b = 10.837 A; c = 9.614 A,
and alpha=beta=gamma=90°, with these definitions (quadratic
system, space group and mesh parameters) being well known to
one skilled in the art.
Spec 8:9-12.
As with the x-ray diffraction pattern above, the claim element
"indexed in a quadratic system of the P4/m space group with, as mesh
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Application 13,496,308
parameters, a= b = 10.837 A; c = 9.614 A, and alpha=beta=gamma=90°"
provides additional information to permit one of skill in the art to identify
members of the claimed genus. Pursuant to In re Moore, 439 F.2d at 1235,
the claim terms here permit one of skill in the art to determine the subject
matter encompassed by claim 3 because the claim element at issue further
identifies the structure of the base solid by defining a precise set of
characteristics (quadratic system indices) that are required for the molecule
to fall within the claimed category.
We agree with Appellants that the Examiner has not met the burden to
identify reasons why the claim fails to further limit claim 1, which we held
above was sufficiently definite. Accordingly, the Examiner has not carried
the burden of establishing a prima facie case of indefiniteness and we
reverse the Examiner's rejection of claim 3 under 35 U.S.C. § 112, fourth
paragraph, as being of improper dependent form.
SUMMARY
We reverse the rejection of claims 1 and 3 under 35 U.S.C. §
112, second paragraph, for indefiniteness.
We reverse the rejection of claim 3 under 35 U.S.C. § 112,
fourth paragraph, as being of improper dependent form.
REVERSED
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