Ex Parte Tang et al

Patent Trial and Appeal Board

Feb 26, 2013

11368755 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/368,755 03/06/2006 Ben Zhong Tang WKG03-026-US 7679
20529 7590 02/27/2013
NATH, GOLDBERG & MEYER
112 South West Street
Alexandria, VA 22314
EXAMINER
HUHN, RICHARD A
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
02/27/2013 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 BEN ZHONG TANG
and
MATTHIAS HAEUSSLER
____________

Appeal 2011-012179
Application 11/368,755
Technology Center 1700
____________

Before CHARLES F. WARREN, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge

DECISION ON APPEAL
The Appellants1 seek our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1, 5, 6, and 8.2 We have jurisdiction under 35 U.S.C.

1 The Appellants identify the real party in interest as “The Hong Kong
University of Science and Technology.” Appeal Brief filed April 8, 2011
(“App. Br.”) at 1.
2 The Appellants state that “[c]laims 1, 5, 6, 8 and 12-18 are finally rejected,
of which claims 1, 5, 6 and 8 will be the subject of this appeal.” App. Br. 2.
The Appellants clarify, however, as follows: “The rejection of claims 12-18
App
App

§ 6(b
grou
the o
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are n
direc
claim
eal 2011-0
lication 11
). We rev
nd of rejec

The App
nly indepe
1.
w
group; R
m1; and
erization
cessable,
2, ¶ 1, as f
ment;

claim 1, e
the Board
a new
e claim 1,
ic

ailing to

ither
finds

Appeal 2011-012179
Application 11/368,755

3
II. Claims 1, 5, and 8 under 35 U.S.C. § 102(b) as anticipated by
Haeussler (“Häußler” in German language);3
III. Claims 1 and 5 under 35 U.S.C. § 103(a) as unpatentable over
Yoshikawa;4 and
IV. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over
Haeussler in view of Peng.5
Examiner’s Answer entered May 25, 2011 (“Ans.”) 6-22.

DISCUSSION
The first step in analyzing whether claims comply with 35 U.S.C. §
112, ¶ 1, or are unpatentable under 35 U.S.C. § 102 or 103(a) is to ascertain
the scope of the claims. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)
(“For the sake of completeness we will treat the claims on appeal as if they
were rejected under both the first and second paragraphs of § 112. Any
analysis in this regard should begin with the determination of whether the
claims satisfy the requirements of the second paragraph.”); In re Paulsen, 30

3 Matthias Haeussler, Jacky Wing Yip Lam, Han Peng, Ronghua Zheng,
Charles Chi Wang Lew, and Ben Zhong Tang, Synthesis of Hyperbranched
Poly(aryleneethynylene)s by Glaser Coupling, 89 Polymeric Materials:
Science & Engineering 804-805 (2003).
4 U.S. Patent Application Publication 2002/0001734 A1 published January
3, 2002.
5 Han Peng, Jacky Wing Yip Lam, Ronghua Zheng, Matthias Haussler,
Jingdong Luo, Kaitian Xu, and Ben Zhong Tang, Hyperbranched
Polyphenylenes: Synthesis, Light Emission, and Optical Limiting Properties,
44 Polymer Preprints 1159-60, vol. 1 (2003).
App
App

F.3d
the c
scop
to de
inqu
out a
and p
41.5
inde
and
are a
decid
1970
eal 2011-0
lication 11
1475, 147
laims at is
e and mea
To deter
termine ex
iry therefo
nd circum
articularit
For the r
0(b)) claim
finite. Bec
speculation
ppropriate
ing the su
); In re St
Claim 1
12179
/368,755
9 (Fed. Ci
sue, we m
ning.”).
mine defin
actly wha
re is mere
scribe a pa
y.” Moor
easons giv
s 1, 5, 6, 8
ause these
s are nece
. Therefo
bstantive
eele, 305 F
recites: “A
r. 1997) ([
ust constru
iteness, “t
t subject m
ly to determ
rticular ar
e, 439 F.2
en below,
, and 12-
claims ar
ssary to d
re, we reve
merits. In
.2d 859, 8
diacetyl
4
T]o prope
e the [disp
he claims
atter they
ine whet
ea with a r
d at 1235.
we reject
18 under 3
e indefinit
ecide whet
rse Reject
re Wilson
62-63 (CC
ene polym
rly compa
uted] term
must be an
encompas
her the cla
easonable
(pursuant
5 U.S.C. §
e, unwarra
her the Ex
ions I-IV p
, 424 F.2d
PA 1962)
er of form
re [the prio
...to ascer
alyzed fir
s . . . This
ims do, in
degree of
to 37 C.F.
112, ¶ 2,
nted assum
aminer’s r
ro forma
1382, 138
.
ula (I):
. . . .
r art] with
tain its
st in order
first
fact, set
precision
R. §
as
ptions
ejections
without
5 (CCPA
”

Appeal 2011-012179
Application 11/368,755

5
The claim further recites: “R3, R4 and R5 are all H.” Because the molecule
represented by formula (I) shows only three terminal hydrogen atoms in the
structure, one skilled in the relevant art would be unable to ascertain how the
repeating units defined by the two outer parentheses are actually bonded to
each other.
Furthermore, one skilled in the relevant art would be unable to
determine what the inventors mean by a “diacetylene polymer of formula
(I).” Specifically, when read in light of the Specification, the claim is
insolubly ambiguous because it is unclear whether the recited “diacetylene
polymer” possesses the structure defined by formula (I) or whether the
“diacetylene polymer” is produced from a compound defined by formula (I).
The Specification appears to indicate that a compound defined by formula
(I) is polymerized to form a molecule having a different structure. See
Schemes 1 and 2, Spec. ¶ [0010]. The inventors may have intended to claim
a product generally corresponding to Scheme 2 without the participation of
any monoyne, but the claim itself does not reflect this intent. Any conflict
between the inventors’ intent and the actual scope of the claims results in
indefiniteness. In re Cormany, 476 F.2d 998, 1000-02 (CCPA 1973); cf. In
re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicants’
burden to precisely define the invention, not the PTO’s.”).
The indefiniteness of the claims is exacerbated by the Appellants
refusal to specifically point out the exact structure of the claimed
“diacetylene polymer of formula (I)” to support the argument that the
Appeal 2011-012179
Application 11/368,755

6
claimed structure differs from the structures disclosed in the prior art
references. App. Br. 5 (“[T]he Haeussler reference never disclosed or
suggested the same polymer of the present invention because the particular
polymer disclosed in the reference is already cured, cross-linked, and
insoluble, clearly indicating a very different structural configuration.”); id. at
7 (“[T]he polymers disclosed in the [Yoshikawa] reference for achieving the
intended technical effects are predominantly linear polymer, that is, not
branched at all.”).
For these reasons, we conclude that claims 1, 5, 6, 8, and 12-18 are
indefinite.
37 C.F.R. § 41.50(b) provides that “[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 provides 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 . . . .

Appeal 2011-012179
Application 11/368,755

7
SUMMARY
The Examiner’s Rejections I-IV are reversed pro forma.
Claims 1, 5, 6, 8, and 12-18 are newly rejected under 35 U.S.C. § 112,
¶ 2, as indefinite.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED
37 C.F.R. § 41.50(b)

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