Ex Parte van Ooij et al

Board of Patent Appeals and Interferences

Aug 7, 2008

11041352 (B.P.A.I. Aug. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WIM J. VAN OOIJ,
ANUJ SETH, AND MATTHEW B. STACY,
APPELLANTS

____________

Appeal 2008-3517
Application 11/041,3521
Technology Center 1700
____________

Decided: August 7, 2008
____________

Before CHARLES F. WARREN, CAROL A. SPIEGEL, and
MARK NAGUMO, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge NAGUMO.

Opinion Concurring-in-part and Dissenting-in-part filed by
Administrative Patent Judge WARREN.

NAGUMO, Administrative Patent Judge.

1 Application 11/041,352 (“352 Specification,” cited as “Spec.”) , titled
Superprimer, filed 24 January 2005, as a continuation of international
application PCT/US03/23055, which was filed 24 July 2003, claiming the
benefit under 35 U.S.C. § 119(e) of 60/398,247, which was filed 24 July
2002. The real party in interest is listed as The University of Cincinnati.
(Appeal Brief filed 13 September 2007 ("Br."), at 3.)

2008-3517
Application 11/041,352

DECISION ON APPEAL
A. Introduction
Wim J. van Ooij, Anuj Seth, and Matthew B. Stacy (“van Ooij”)
appeal from the final rejection of claims 1, 5, 8, 11, 13, 18, and 20 under
35 U.S.C. § 112(1), for lack of an adequate written description for the
amended claims.2 Certain coordinate amendments to the specification have
been objected to as adding new matter in contravention of 35 U.S.C. § 132.
We REVERSE the rejections of the claims and, with the exception of
paragraph [0079], we REMOVE the objections to the specification. As
explained infra, the objection to amended paragraph [0079] as introducing
new matter in violation of § 132 is SUSTAINED.
B. Findings of Fact (FF)
1. The claimed subject matter relates to primers for metals. The primers
are said to be made from organofunctional bis-silanes, and are said to have
increased film thickness, chemical and scratch resistance, and to have low
levels of volatile organic compounds (“VOC”) compared to prior art silane-
based primers. (Spec. 1, ¶ 2.)
2. In an amendment filed on 28 September 2005 (“Amd1”), in response
to the first office action on the merits, van Ooij amended claims 1, 5, 8, 11,
13, 18, and 20, changing virtually every recitation of the amount of a
component specified by “percent of the composition” to —percent by weight
of the composition— or equivalent language. (Amd1 7-10.)

2 Claims 1-21 are pending. Claims 2-4, 6, 7, 9, 10, 12, 14-17, 19, and 21
have not been rejected. There are no other pending claims.
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3. In addition, certain ranges were amended or introduced in certain of
the claims. (Amd1 7-10.)
4. Claims 1, 5, and 11 are representative of the disputed issues, and read,
in “marked up” form (text deleted from the originally filed claims is
enclosed in square brackets; inserted text is underlined) as follows.
5. Claim 1
A hydrophilic composition capable of coating a substrate and
curing to provide a hydrophobic film inhibiting corrosion, the
composition comprising:
a bis-silane comprising between about [5] 15 percent by
weight to about 40 percent by weight of the composition;
a water soluble or dispersible polymer;
a water soluble solvent; and
nanoparticles having a mean particle size of ranging
between about 0.01 nanometers to about 500 nanometers.
6. Claim 1 has been amended by narrowing the range of the amount of
the bis-silane component and by stating that the percentage of bis-silane is
measured according to the weight of the composition.
7. Claim 5
The composition of claim 1, wherein:
the bis-silane comprises between about [10] 15 percent
by weight to about 25 percent by weight of the
composition;
the nanoparticles comprise between about 5 percent by
weight to about 25 percent by weight of the composition;
the water soluble or dispersible polymer comprises
between about 10 percent by weight to about 30 percent
by weight of the composition; and
the water soluble solvent comprises between about 10
percent by weight to about 87 percent by weight of the
composition.
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8. In claim 5, a similar narrowing of the amount range of bis-silane has
been introduced, and the percentage of each component has been specified
to be on the basis of the weight of the composition.
9. Claim 11
A hydrophilic composition capable of coating a substrate and
curing to provide a hydrophobic film inhibiting corrosion, the
composition comprising:
a water soluble bis-silane;
a water soluble or dispersible polymer including an
epoxy resin;
a water soluble solvent; and
nanoparticles having a mean particle size of ranging
between about 0.01 nanometers to about 500 nanometers,
wherein the nanoparticles comprise between about 15
percent by weight to about 40 percent by weight of the
composition.
10. In claim 11, the amount of nanoparticles has been introduced, again
specified as a weight percentage of the composition.
11. Moreover, the specification was amended in paragraphs [0061],
[0062], [0074], [0075], [0079], [0082], [0088], [0089], [0095], [0096], and
[0100] in a similar fashion. (Amd1 3-6.)
12. In particular, the last sentence of paragraph [0079] of the
352 Specification was amended as follows (square brackets substituted for
strike-through):
This preferred [concentrations] weight percentages of the
components of the mixture are: at least one silane comprising
30-40 [volume]%; a low-molecular weight polymer comprising
30-40 [volume]%; a nanoparticle pigment 20-30 [volume]%;
additives comprising less than 1 [volume]%.
(Amd1 4.)
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The Rejections
13. Claims 1, 5, 8, 11, 13, 18, and 20 stand rejected as lacking an
adequate written description under 35 U.S.C. § 112(1). (Ans.3 3.)
14. The Examiner finds that the introduction of the basis of the percentage
as the weight of the composition is new matter. (Ans. 3-4.)
15. With respect to claim 5, the Examiner finds further that claim 5
contains new matter because “[c]laim 5, whether as filed or as amended
9/28/2005, does not describe the same range as [0079].” (Ans. 5.)
16. The Examiner also maintains objections to the amendments to the
specification at paragraphs [0061], [0062], [0074], [0075], [0079], [0082],
[0088], [0089], [0095], [0096], and [0100], arguing that they introduce “new
matter” [in contravention to 35 U.S.C. § 132]. (Final Rejection4 4; Ans. 5.)
van Ooij’s Rebuttal
17. van Ooij argues that the Examiner erred:
by requiring in haec verba support for the claimed subject
matter (Br. 9);
by incorrectly placing the burden on the Appellants to show
that the percentages recited can only mean weight percentage to those skilled
in the art (id.); and

3 Examiner’s Answer mailed 15 October 2007 (“Ans.”).
4 Office Action mailed 11 January 2007 (“Final Rejection”).
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by failing to give appropriate weight to the declaration filed by
Dr. Rudolph G. Buchheit and to the declaration filed by Dr. Wim Johan van
Ooij (id. at, e.g., 9, 12).
18. van Ooij argues further that “a non-explicitly qualified percentage
constitutes a genus of percentages from which Appellants are free to more
narrowly disclose and defined the claimed invention by limiting the
disclosure and claims to a more specific percentage, such as weight
percentage.” (Br. 10., emphasis added)
Dr. van Ooij Declaration
19. Dr. Wim John van Ooij, one of the inventors (“Dr. van Ooij”),
testifies as to his extensive academic and professional qualifications in areas
of chemical technology relevant to paints and coating formulations. (van
Ooij Declaration, filed 16 February 2006, Br. App. 1, 1-4, ¶¶ 2-9.)
20. Dr. van Ooij testifies further that it is his “firm belief that those
skilled in the art of coatings would know and fully understand that the bare
percentages recited in the application, both in the written description and the
claims, refer to weight percentages. The recitation of bare percentages for
constituent components in the coatings field is commonly used to refer to
weight percentages.” (Br. App. 1, 4, ¶ 11.)
21. Dr. van Ooij discusses Exhibits A through E, which are said to be
refereed articles published in technical journals in which the content of
substances such as sodium hydroxide solutions, metallic coatings, sodium
chloride solutions, and powder coatings is expressed as a bare percentage,
but which, according to Dr. van Ooij, would have been understood by those
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skilled in the art to be based on weight percentage. (Br. App. 1, 4-6,
¶¶ 12-16.)
22. Finally, Dr. van Ooij discusses paragraph [0079] of the 352
specification, stating that the last sentence of that paragraph was intended:
to signify to those skilled in the art that while we would
describe our invention in terms of weight percentages, it is
theoretically possible to describe the formulations in volume
percentages. The last sentence of [0079] was provided only to
give some context to the weight percentages (bare percentages)
disclosed without requiring detailed correlation charts reciting
what the corresponding volume percentages would be to the
bare percentages (weight percentages) already disclosed. In
other words, the inclusion of the last sentence of [0079] does
not, and was not intended to, transform the bare weight
percentages disclosed throughout the application into
something other than weight percentages.
(Br. App. 1, 6, ¶ 17.)
Dr. Buchheit Declaration
23. Dr. Rudolph G. Buchheit, a non-inventor at another institution (The
Ohio State University), testifies as to his extensive academic and
professional qualifications in areas of chemical technology relevant to paints
and coating formulations. (Buchheit Declaration, filed 25 August 2006, Br.
App. 2, 1-2, ¶¶ 2-5.)
24. In particular, Dr. Buchheit testifies that:
[i]t is my learned opinion, as one having experience in the
coatings art, that those bare percentages recited in the
application, both in the written description and the claims, refer
to weight percentages. The recitation of bare percentages for
constituent components in the coatings field is commonly used
to refer to weight percentages and those in this art would
understand the same.
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(Br. App. 2, 3, ¶ 7.)
25. Regarding paragraph [0079], Dr. Buchheit testifies that:
It is also my opinion that paragraph [0079] of the ‘352
application that refers to volume percent is objective evidence
that bare percentages refer to weight percentages. This
paragraph specifically lists percentages and modifies the same
with “volume.” I can find not [sic] portion of the disclosure,
however, where a bare percentage would be understood to be
referring to a volume percent, or other percent besides weight
percent.
(Br. App. 2, 3-4, ¶ 8.)
C. Discussion
Whether the written description requirement has been met is a
question of fact, In re Alton, 76 F.3d 1168, 1171-72 (Fed. Cir. 1996), that we
decide according to the preponderance of the evidence of record. In re
Epstein, 32 F.3d 1559, 1564 (Fed. Cir. 1994) (“Preponderance of the
evidence is the standard that must be met by the PTO in making rejections.”)
(citation omitted). Because the disclosure is directed to those of ordinary
skill in the art, credible evidence of what one of ordinary skill in the art
would understand a disclosure to mean is particularly valuable in
determining whether or not “new matter” has been added to a specification.
See, e.g., Alton, 76 F.3d at 1176 (discussing the proper treatment of a
declaration by Dr. Wall).
As our reviewing court has explained repeatedly, “[f]acts established
by rebuttal evidence must be evaluated along with the facts on which the
earlier conclusion was reached, not against the conclusion itself. . . . [A]
final finding of obviousness may of course be reached, but such finding will
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rest upon evaluation of all facts in evidence, uninfluenced by any earlier
conclusion reached by an earlier board upon a different record.” In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984), quoting In re Rinehart, 531
F.2d 1048, 1052 (CCPA 1976).
Generally, consideration of objections has been delegated by the
Director of the USPTO to the Technology Center Directors. Manual of
Patent Examining Procedure (“MPEP”) 1002.02(c)3.(c) 8th ed., Rev. 6
(September 2007). When, however, the decision on an appeal of rejected
claims involves resolution of the same issue, it is appropriate for the Board
of Patent Appeals and Interferences to decide the new matter issue vis-à-vis
the specification as well. MPEP 608.04(c), citing 37 C.F.R. §§ 1.181
and 1.191 [sic: 37 C.F.R. § 41.31 (2007)].
In the present case, the declarations of Dr. van Ooij and Dr. Buchheit
present sufficient credible evidence that a person of ordinary skill in the
relevant arts would understand, in the absence of evidence to the contrary,
that an unlabeled percentage of the composition, particularly for
compositions containing both solids and liquids, refers to percentages by
weight. Both Dr. van Ooij and Dr. Buchheit are highly qualified
professionals in the field of coatings. Dr. van Ooij discussed several
instances in which electrolyte solutions (sodium hydroxide, sodium chloride)
and compositions based on solids such as pigments where, although the
basis was not stated, those skilled in the art would have understood the basis
to have been weight. Dr. Buchheit, who has no apparent interest in the
outcome of this case, testified similarly, albeit less specifically.
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The Examiner cited two documents, van Ooij 8695 and van Ooij 303,6
in the final rejection, mailed 11 January 2007 (Final at 3), and listed them on
a form PTO-892. These two documents, as the inventors knew or should
have known (Dr. van Ooij being the common principal inventor), describe
silane percentages on the basis of volume in primer coating compositions.
Moreover, both contain the following text:
It should be noted that the various silane concentrations
discussed and claimed herein are all defined in terms of the
ratio between the amount (by volume) of unhydrolyzed
silane(s) employed to prepare the treatment solution (i.e., prior
to hydrolyzation), and the total volume of treatment solution
components (i.e., bis-silyl aminosilanes, bis-silyl polysulfur
silanes, water, optional solvents and optional pH adjusting
agents).
(van Ooij 869 7:36-42; van Ooij 303 13:19-24.)
Thus, the principal inventor’s own teachings indicate that volume
percentages are desirably used for combining silanes. Moreover, the
principal inventor teaches that the non-ideality of the solutions (non-
additivity of volumes upon mixing) is dealt with by referring to volumes
prior to mixing. This passage directly contradicts van Ooij’s arguments filed
in the principal brief that “the Examiner is blatantly ignoring is the fact that
weights are always additive, while volumes may not always be additive.
This is precisely why the claimed percentages would be understood by those

5 Wim J. van Ooij et al., Silane Coatings for Bonding Rubber to Metals, U.S.
Patent 6,416,869 B1 (9 July 2002), based on application 09/356,912, filed
19 July 1999.
6 Wim J. van Ooij and Guru P. Sundararajan, Silane Treatments for
Corrosion Resistance and Adhesion Promotion, WO 00/63303
(26 October 2000).
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skilled in the art of paints and primers as reciting weight percentages.”
(Reply Br. 8; emphasis original.)
van Ooij’s argument that “[m]oreover, it is completely irrelevant that
some other patents or patent applications, drafted by other attorneys, having
differing inventors than the instant application, directed to other inventions,
recite silanes in terms of volume percent” (Reply Br.7 9), while arguably
technically correct, as the inventive entities are not identical, is
hypertechnically trivial at best and misleading (to the extent anyone does not
realize the principal inventor is the same) at worst. We find it highly
relevant that the disclosure of a silane coating that is corrosion resistant and
that bonds rubbers to metals is described by percentages based on volume.
The difference between that disclosure and the appealed subject matter
needs to be explained.
Under these circumstances, particularly in light of the inconsistency of
van Ooij’s explanation for the substitution of weight percentages in
paragraph [0079] for the originally presented volume percentages8 with the
inventor’s testimony quoted supra on the same matter,9 we find van Ooij’s
unsupported attorney arguments of extremely limited credibility.

7 Reply Brief filed 15 November 2007 (“Reply Br.”).
8 Counsel for van Ooij argued: “Moreover, the single passage in the
specification, [0079] that erroneously referred to volume percent of the
composition was in error. This error is clear when reading the prefatory
language in the same sentence of “concentration”, which is not properly
described as a percentage, as concentration is in weight PER volume.”
(Amendment filed 28 September 2005, at 14 (emphasis original).)
9 (FF 21; Br. App.1 6, ¶ 17)
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We also find van Ooij’s argument that the Examiner is applying an
improper in haec verba standard of proof unpersuasive. Rather, we think
that the Examiner was seeking a reasonable explanation for the changes, but
found factually inconsistent arguments based on misapprehended legal
theories. For example, van Ooij’s argument that “a non-explicitly qualified
percentage constitutes a genus of percentages from which Appellants are
free to more narrowly disclose and define the claimed invention by limiting
the disclosure and claims to a more specific percentage, such as weight
percentage” (Br. 10; emphasis added) is particularly unconvincing. The law,
as well as common sense based on every day experience, indicates that a
description of a genus is not necessarily a description of individual species
within that genus. There must be some “blazemarks” that direct the person
of ordinary skill towards the particular area from which an applicant wishes
to exclude the public. In re Ruschig, 379 F.2d 990, 994-95 (1967).
Moreover, while an applicant is free to be his own lexicographer, terms that
are later used in the claims must be clearly and unequivocally defined.
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005).
We are not surprised that, faced with these contradictions and the ad
hominem character of much of the argument, the Examiner did not give
much weight to the one argument that, in our judgment, tips the balance in
favor of van Ooij. That argument is most clearly articulated in the
Background section of the principal brief:
[c]ompositions without substantial particulate components are
generally described using a volume-percentage-basis, while
compositions with substantial particulate components are
generally described using a weight-percentage-basis. For the
instant invention, given that the disclosed and claimed
substances include substantial particulate components in the
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form of water soluble polymers and nanoparticles means that,
unless otherwise qualified, recited percentages would generally
be understood to constitute weight percentages.
(Br. 10.) The declarations of Dr. van Ooij and Dr. Buchheit are consistent
with and support this argument. van Ooij 869 and van Ooij 303 describe
silane primer compositions that do not contain solids; they are thus not
inconsistent with this argument. The absence of direct testimony on this
very issue does not detract from the evidence advanced in favor of the
argument.
We therefore conclude that, in the present case, the preponderance of
the evidence of record indicates that when both solids and liquids are
combined to form a mixture, and the amounts are presented as unqualified
percentages, those of ordinary skill in the art would understand the basis of
those unqualified mixtures to be weight percentages. Original claims are
part of the original disclosure in an application for patent. The
preponderance of the evidence of record thus indicates that those of ordinary
skill in the art would have understood the bare percentages recited in the
claims and the specification to refer to percent-by-weight because the
compositions claimed contain both solids and liquids.
It has not escaped our notice that the examples, Experiments 1
through 3 (Spec. 19-25), report volumes for each component. Inspection
shows that this is likely because the solid polymer and nanoparticles used
were provided as solutions or suspensions. (See, e.g., Spec. 19.)
Consideration of the relative amounts of components based on volume
versus estimates based on weights of solids and silanes indicates that volume
percentage is not a credible basis for the formulations. The Examiner has
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not directed our attention to credible evidence in the record that contradicts
the Declarations of Dr. van Ooij and of Dr. Buchheit.
We do not wish to leave the impression that we disapprove of the
Examiner’s initial new matter rejection. On the contrary, the Examiner’s
rejection elicited a response from Applicants that, on balance, clarified the
record. This is the purpose of examination, and that purpose has been well
served by the Examiner’s actions in this case. Nor do we wish to fault the
extensive findings and analysis provided by our colleague in dissent: his
efforts have also enriched the record. We do not, however, agree as to the
weight to be given to various findings of facts and arguments in the record.
Accordingly, we REVERSE the rejection of claims 1, 5, 8, 11, 13, 18,
and 20 under 35 U.S.C. § 112(1), for lack of an adequate written description
for the amended claims. For the same reason, we REMOVE the objection to
the amendments to paragraphs [0061], [0062], [0074], [0075], [0082],
[0088], [0089], [0095], [0096], and [0100].
The Examiner’s second basis for rejecting claim 5 under § 112(1)—
that it does not cover the range described in paragraph [0079]—is without
merit. By its own terms, the composition described in paragraph [0079] is a
preferred composition. There is no requirement that preferred compositions
be claimed or that nonpreferred compositions not be claimed: what matters
is that subject matter that is claimed is described in the original specification.
In determining that the rejections are reversed, we have not found it
necessary to resolve whether the amendments to paragraph [0079] involve
“new matter.” Under these circumstances, it would be proper to return the
issue to the Director of the Technology Center, to whom the Director of the
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USPTO has delegated authority to decide objections to the specification.
Nonetheless, in the interests of resolving all issues compactly, we turn to the
merits of the objection.
van Ooij, in the amendment filed 28 September 2005, amended
paragraph [0079] as follows: (square brackets substituted for strike-through):
This preferred [concentrations] weight percentages of the
components of the mixture are: at least one silane comprising
30-40 [volume]%; a low-molecular weight polymer comprising
30-40 [volume]%; a nanoparticle pigment 20-30 [volume]%;
additives comprising less than 1 [volume]%.
(Amd1 4; FF25.) Thus, the characterization of the components was changed
from “concentration” to —weight percentages— and the percentages were
changed from “volume%” to unmarked percentages. As a result, one of
ordinary skill in the art reading amended paragraph [0079] would understand
that the percentages refer to weight percentages. On the present record, we
have found that unmarked percentages are understood to denote weight
percentages by default. Even without the change of “concentration” to —
weight percentages—, the understanding would be the same.
Paragraph [0079] of the original specification, however, expressly
reported the concentrations as volume percentages. Moreover, Dr. van Ooij
testified that “[t]he last sentence of [0079] was provided only to give some
context to the weight percentages (bare percentages) disclosed without
requiring detailed correlation charts reciting what the corresponding volume
percentages would be to the bare percentages (weight percentages) already
disclosed.” (Br. App. 1, 6, ¶ 17; FF22.) Moreover, Dr. Buchheit testified
that the recitation of volume percentages “is objective evidence that bare
percentages [elsewhere in the specification] refer to weight percentages.”
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(Br. App. 2, at 3, ¶ 8.) We find compelling an inventor’s testimony that the
volume percentages were used deliberately in a given paragraph, and an
independent expert’s testimony that the use of the volume percentages there
supported his conclusion that bare percentages elsewhere would be
understood to refer to weight percentages. We decline to credit the
arguments of counsel that appropriate weight has not been given to the
declarational evidence. As van Ooij has not come forward with credible
evidence supporting the change from volume percentages to bare
percentages, we SUSTAIN the objection to the amendments to
paragraph [0079] as incorporating new matter.
D. Summary
In view of the record and the foregoing considerations, it is:
ORDERED that the rejections of claims 1, 5, 8, 11, 13, 18, and 20
under 35 U.S.C. § 112(1) are REVERSED;
FURTHER ORDERED that the objections to paragraphs [0061],
[0062], [0074], [0075], [0082], [0088], [0089], [0095], [0096], and [0100] as
adding new matter in contravention of 35 U.S.C. § 132 are REMOVED;
FURTHER ORDERED that the objection to paragraph [0079] as
adding new matter in contravention of 35 U.S.C. § 132 is SUSTAINED.
REVERSED

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WARREN, Administrative Patent Judge, Concurring-in-part and Dissenting-
in-part:
I cannot join in the decision of the majority of this panel for several
reasons. First, the written description in the Specification, claims, and
drawings as a filed as a whole support the Examiner’s case that, prima facie,
as a matter of fact the appealed claims as a whole do not comply with
35 U.S.C. § 112, first paragraph, written description requirement,10,11 and
Appellants’ contentions as well as testimonial and documentary evidence
fail to rebut the Examiner’s prima facie case. Ans. 3-4; App. Br. and Reply
Br. in entirety.
Second, the written description in the Specification, claims, and
drawings as a filed as a whole support the Examiner’s case that, prima facie,
the Amendment filed September 28, 2005 (Amendment), fails to comply
with 35 U.S.C. § 132(a) because new matter is added to the Specification by
the insertion of the language “by weight” and similar language into ¶¶ 0061,
0062, 0074, 0079, 0088, 0095, and 0100, along with additional language to
the same effect in ¶ 0100. Review of the Examiner’s objection to the
Amendment under this statutory provision involves the same issues of fact

10 Pending dependent claims 2 through 4, 6, 7, 9, 10, 12, 14 through 17, 19,
and 21, that do not stand rejected, fail to cure the deficiencies of independent
claims 1 and 11 under this statutory provision. This includes dependent
claim 15 as the language “5 percent of the composition” refers to “the
leachable inhibitor.”
11 The separate ground of rejection of claim 5 under § 112, first paragraph,
written description requirement (Ans. 4) involves the insertion of the
language “by weight” in claim 5 as originally filed, and thus, this ground is
subsumed in the first ground of rejection. In this respect, it is well settled
that an original claim is its own written description. See, e.g., In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976).
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that are part and parcel of the ground of rejection under § 112, first
paragraph, written description requirement. Amendment 2-5 and 13; Ans. 5;
App. Br. 22-23. Thus, it is necessary to resolve these issues as to all
amended disclosures, including ¶ 0079, in deciding this appeal. Indeed,
where “both the claims and the specification contain new matter either
directly or indirectly, and there has been both a rejection and an objection by
the Examiner, the issue becomes appealable and should not be decided by
petition.” Manual of Patent Examining Procedure § 2163.06, II. Review of
New Matter Objections And/Or Rejections (8th ed., Rev. 6, August 2007);
see also § 608.04(c) (8th ed., Rev. 6, August 2007). Thus, the ground of
rejection under § 112, first paragraph, written description requirement, and
the objection under § 132(a) must be decided together. In this respect, the
Board’s decision may affirm or reverse the decision of the Examiner with
respect to the rejection and the objection, or remand the Application to the
Examiner with respect thereto. 37 C.F.R. § 41.50(a) (2007). However, the
Board has no authority to separately consider the objection and “remove” the
same in whole or in part in any respect. See id.
Third, I agree with the majority that the Examiner’s objection to the
Amendment can be sustained with respect to ¶ 0079 but not with respect to
¶¶ 0075, 0082, 0089, and 0096. However, I do so for reasons set forth
below.
In considering the ground of rejection of representative independent
claims 1 and 11 and dependent claim 5 on appeal, and the related objection,
I determine independent claims 1 and 11 and dependent claim 5 as originally
filed and as appealed are drawn to “[a] hydrophilic composition capable of
coating a substrate and curing to provide a hydrophobic film inhibiting
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corrosion” and comprise at least a bis-silane, a water soluble or dispersible
polymer, water soluble solvent, and nanoparticles with the specified particle
size. The insertion of the term “by weight” after the term “percent” by
amendment into the claims and, along with similar language into
Specification ¶¶ 0061, 0062, 0074, 0081, 0088, and 0095, as well as
additional language to the same effect in ¶ 0100, and the substitution of the
term “weight” for the term “volume” in Specification ¶ 0079 have the effect
of limiting the written description of the invention in the Specification and
the appealed claims to hydrophilic compositions defined by the components
in “percent by weight.”
I find that the only statement describing a generic or subgeneric
embodiment of a “hydrophilic composition” containing a water soluble
solvent invention in quantitative terms disclosed in the written description in
the Specification, claims, and drawings as filed is the following:
[0079] These components comprising the present invention
may be stored individually, optionally with the polymer being
in an aqueous solution. Prior to use, these components in pure
chemical form are mixed together, diluted with water, and than
dispersed . . . . This preferred concentration of the components
of the mixture are: at least one silane comprising 30-40 volume
%; a low-molecular weight polymer comprising 30-40 volume
%; a nanoparticle pigment 20-30 volume %; additives
comprising at least 1 volume %.
Original Spec. 18:19-27.
Immediately following ¶ 0079 is Experiment 1. Original Spec.
¶¶ 0080-0086; Spec. Figs. 6-11. In this example, “[t]he total volume of the
coating solutions produced is 100 ml.” Original Spec. ¶ 0080. The three
components in each of the coating solutions are “(1) Silane mixture” which
is one of three different combinations of 2 or 3 silanes, one of which is a
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bis-silane, added as “[a] pure silane oil mixture at a 4:1 or a 1/5/1 ratio;”
“(2) Resin” which is one of two “acrylic emulsions,” each from different
vendors, “with approx. 50% (by weight) solids” which is "added as
received;” and “(3) Particles” which is “a colloidal suspension of silica
particles” from a vendor with “(20% by weight) in water” which is “added
as received.” Original Spec. ¶ 0081 (italics omitted). The NaCl reagent
used in tests is in the amount of “3.5% (by weight).” Original Spec.
¶¶ 0084 and 0086.
“Fig. 6 reflects the various compositions evaluated” with respect to
“direct current polarization.” Original Spec. ¶ 0084. Specification Figure 6
lists six different combinations of (resin):(silane):(particle) forming coating
compositions, wherein the sum of each of the three components in each of
the coating compositions is 10. “A ternary ratio program was used to
evaluate various components of the coating” wherein “[a]
(resin):(silane):(particle) system was adopted,” and “[t]he most promising
coating compositions are listed in Fig. 7.” Original Spec. ¶ 0085.
Specification Figure 7 shows a table which has the heading “100 ml
solution” and lists four coating compositions with specific components for
each of the (resin):(silane):(particle) components, wherein the sum of each
of the three components in each of the coating compositions is 10. With
respect to two of the specific compositions, “Fig. 8 also indicates that there
is a measurable effect of coating composition and solids content, as both G4
and H6 use the same components, but at a different ratio.” Original Spec.
¶ 0086.
In Experiment 2, “[t]he total volume of the coating solutions produced
is 100 ml.” Original Spec. ¶ 0087. The “(1) Silane solution” includes two
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different mixtures of silsesquioxanes, that are not bis-silanes, in which the
ratio of the silsesquioxanes is stated as a percentage; a “Silane” that
“includes nanoparticles;” “a polyurethane resin;” and, in compositions 7 and
8, “deionized water.” Original Spec. ¶ 0088; see also original Spec.
¶¶ 0058 and 0068-0071. The coating compositions listed in Table 1 show
the amount of each component in “mL.” Original Spec. ¶ 0088. “One
obvious trend is the addition of water to dilute the solution provided positive
results, potentially showing that a thinner film coat is better adaptable to
changes in orientation of the substrate.” Original Spec. ¶ 0093.
In similar manner, in Experiment 3, “[t]he total volume of the coating
solutions produced is 100 ml.,” and the “(1) Silane solution” contains the
same silsesquioxane mixtures and polyurethane resin as the only two
components, that is, the compositions do not contain a silane or bis-silane
with nanoparticles or deionized water. Original Spec. ¶¶ 0094 and 0095.
Two coating compositions are listed in Table 3 with the amount of each of
the two components in “mL,” and are tested as shown in Table 4. Original
Spec. ¶¶ 0095 and 0097.
In the original claims, the term “percent” is associated with the
language “of the composition” without a stated unit. Original product
claims 1, 5, 8, 11, 13, 15, and 18, and original method claim 25.
Similarly, in original Specification ¶ 0061, “[t]he concentration of
. . . [a water soluble inhibitor] will generally [sic, be] less than 1.0% of the
resultant superprimer” composition, without a stated quantitative unit. In
original Specification ¶ 0062, the composition can contain additional
components “present in very low concentrations on the order of
0.5% solids,” without a stated quantitative unit.
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In Specification Figure 4, test results are reported for three
compositions with the components specified in terms of “% concentration”
without a stated quantitative unit. One of the tested compositions is an
“exemplary embodiment of the present invention” identified as coating
composition “(4)”in the Specification and as “primer coating B2” in Figure
4. In similar manner to the compositions of Experiment 1, composition
“(4)” contains “a water-based silane mixture of 2% concentration” identified
as “A1170/VTAS (5:1),” which mixture is used in Experiment 1 at a 4:1
ratio; “4% water soluble acrylic resin,” compared to an “acrylic emulsion”
from different vendors used in Experiment 1; and “5% colloidal silica,”
compared to a “colloidal suspension of silica particles” used in Experiment
1. No quantitative unit is stated for the “% concentration” of any
component. Original Spec. ¶¶ 0074 and 0081.
In Specification Figure 5, test results are reported for coating
composition B6 of Experiment 1. Original Spec. ¶ 0075 and Fig. 7.
The tests reported in Specification Figures 4 and 5 employed “3.5%
aerated NaCl” and “3.5% NaCl,” respectively. Original Spec. ¶¶ 0009,
0074, and 0075. In each of Experiments 1-3, the NaCl reagent used in tests
is in the amount of “3.5% (by weight).” Original Spec. ¶¶ 0084, 0086, 0091,
and 0098. In each of the Experiments, the metal panels are cleaned with “a
7% KOH solution” prior to coating with the tested compositions. Original
Spec. ¶¶ 0082, 0089, and 0096.
I find commonly assigned van Ooij ‘303 and ‘869 each disclose:
It should be noted that the various [bis-]silane concentrations
discussed and claimed herein are all defined in terms of the
ratio between the amount (by volume) of unhydrolyzed
silane(s) employed to prepare the treatment solution (i.e. prior
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to hydrolyzation), and the total volume of treatment solution
components (i.e., bis-silyl aminosilanes, bis-silyl polysulfur
silanes, water, optional solvents and optional pH adjusting
agents).
van Ooij ‘303, 13:19-24, and van Ooij ‘869, col. 7, ll. 36-42); see also van
Ooij ‘303, 9:8-16. van Ooij ‘869 further discloses:
As for the concentration of hydrolyzed silanes in the final,
mixed silane solution (i.e., the solution applied to the metal
substrate) beneficial results will be obtained over a wide range
of silane concentrations and ratios. It is preferred, however,
that the hydrolyzed solution have at least about 0.1% silanes by
volume, wherein this concentration refers to the total
concentration of bis-silyl aminosilane(s) and bis-silyl polysulfur
silane(s) in the solution. More preferably, the solution has
between about 0.1 and about 10% silanes by volume. As for
the ratio of bis-silyl aminosilane(s) to bis-silyl polysulfur
silane(s) in the hydrolyzed silane solution, a wide range of
silane ratios provide beneficial results.
van Ooij ‘869, col. 7, l. 59 to col. 8, l. 4. van Ooij ‘303 has similar
disclosure. van Ooij ‘303, 13:29 to 14:19.
Both references include the bis-silyl aminosilane “A1170” in
exemplary compositions, which is a component of the coating compositions
in Experiment 1 of the original Specification. van Ooij ‘869, cols. 14-22;
van Ooij ‘303, 18-29; original Spec. ¶0081. The coating compositions
disclosed in the original Specification can include bis-silyl polysulfur silanes
as well. Original Spec. ¶0058. Both references disclose the use of a 3%
NaCl solution in corrosion evaluations. van Ooij ‘869, col. 21, ll. 52-54; van
Ooij ‘303, 23 and 29.
In his declaration, Appellant van Ooij testifies (emphasis supplied):
11. . . . Upon learning of the patent examiner’s concerns, I
explained to patent counsel representing the University of
Cincinnati that it was my firm belief that those skilled in the art
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of coatings would know and fully understand that the bare
percentages recited in the application, both in the written
description and the claims, refer to weight percentages. The
recitation of bare percentages for constituent components in the
coatings filed is commonly used to refer to weight percentages.
I have gathered a number of publicly available documents those
skilled in the art of coatings might refer to as objective evidence
that bare percentages are commonly utilized to refer to weight
percentages.
Appellant van Ooij supplies five documents. van Ooij Declaration
Exhibits A-E.12 With respect to the Beentjes et al. document (Exhibit A),
Appellant van Ooij testifies:
12. . . . A bare percentage is cited on page 3 in section 2.2
Application Method. A 5% sodium hydroxide solution is
described. In section 2.1 Materials, the authors mentions a 50%
solution in water of polyacrylic acid. In other instances they
specify that the percentages recited are weight percent. Where
they do not specify weight percent, their use of a bare percent
refers to weigh percent, which is obvious to those skilled in the
art. For example, a 5% sodium hydroxide solution does not
refer to volume percent because a 5% volume solution is not
easily made. Those reading this article would know that the 5%
refers to weight percent, knowing that sodium hydroxide and
polyacrylic acid are generally in solid form.
I find Beentjes et al. (“Beentjes”) is directed to mechanisms bonding
single organic polymers to steel. Beentjes, e.g., 1 and 3-4. “All the
polymers were used as 0.05 wt% solutions” in solvents that are soluble,
slightly soluble or miscible with water. Beentjes, e.g., 2, 3, and Fig. 5.
Several polymers were commercially obtained as a powder or in water, e.g.,
“[p]oly(acrylic acid) (50% in water)” and “poly(vinyl phosphonic acid)

12 These documents have not been made of record by the Examiner.
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(30 wt% in water . . . ).” Beentjes 2. “5% sodium hydroxide solution” was
used to prepare glassware and the steel samples. Beentjes 3.
With respect to the Moreira et al. document (Exhibit B), Appellant
van Ooij testifies
13. . . . The authors discuss metallic coatings on steel
consisting of Zn. Al and Si. The bare percentages mentioned
on page 565 and through the article do not specify that each is a
weight percentage. It is common to use % in the metallurgical
industry and science without specifying that this bare
percentage refers to eight percent. Figure 7 has on the
horizontal axis composition (wt % Zn)”. When one reads the
text and compares it with this Figure, it becomes clear that the
bare percentages recited in the article refer to weight percent,
not volume or atomic percent.
I find Moreira et al. (“Moreira”) is directed to the commercial Zn/5Al
alloy coatings which “typically” has the composition “55.4% aluminum.
43. 4% zinc and 1.6% silicon.” Moreira 565. Figure 7 depicts “Aluminum-
zinc binary equilibrium diagram with indication of six points during cooling
in a straight line that locates the Zn/5Al alloy.” Moreira 571.
With respect to the Tüken document (Exhibit C), Appellant van Ooij
testifies
14. . . . In the abstract and again on page 61, the author
mentions a 3.5% NaCl solution. This is undoubtedly a weight
percent solution, as such a solution is commonly used in
electrochemistry. At 3.5 weight percent or 0.6 M, NaCl has the
highest corrosivity, so it is often formulated at that weight
percentage.
I find Tüken is directed to the investigation of the corrosion
performance of zinc modified pilferer coatings on copper in a 3.5% NaCl
solution, wherein the coating was obtained by electrosynthesizing
polypyrrole and polyaniline coatings on copper and then depositing zinc
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particles thereon. Tüken Abstract and 60-61. A 3.5% NaCl solution having
a pH value of 6.8 ± 0.1, was used to determine corrosion performance.
Tüken Abstract and 61.
With respect to the Monsterrat et al document (Exhibit D), Appellant
van Ooij testifies
15. . . . The article deals with powder coatings. In Table 1,
page 36, the composition of the powder coatings is mentioned
in bare percentages, without specifying that these percentages
are in fact weight percentages. However, the additives and
pigments are powdered solids, evidencing that the percentages
can only be referring to weight percentages, not volume or
atomic percentages. Thus, the bare percentages of the entire
table are referring to weight percents.
I find Monsterrat et al (“Monsterrat”) is directed to thermosetting
powder coating compositions that are thermally cured. Monsterrat 35-36.
The polyester, crosslinking agent, and additives, if any, are in %. Monsterrat
36 and Table 1.
With respect to the Selvaraj et al document (Exhibit E), Appellant van
Ooij testifies
16. . . . The article deals with corrosion protection of steel by
coatings. On page 3 and in Figures 2, 3 and 5, the authors
mention a 3% NaCl solution for conducting their
electrochemical experiments. As discussed previously with
respect to Exhibits A and C, this recitation of a bare percentage
is referring to weight percent, as NaCl is a powder that is not
easily measured on a volume basis.
I find Selvaraj et al (“Selvaraj”) is directed to polymer blends for
protection of steel structures in corrosive environments wherein the blends
are silicone-acrylic acid, silicone-titanate, and epoxy-acrylic acid, which are
diluted with a solvent mixture containing a water insoluble solvent. Selvaraj
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1-2. The tests of the coated structures were carried out in 3% NaCl
solutions. Selvaraj 2.
Appellant van Ooij further testifies (emphasis supplied):
17. . . . I can see why the patent examiner may have
become confused by reading the disclosure [of paragraph
[0079]] of the ‘352 application in the abstract, without giving
proper consideration to how those skilled in the art would
understand the disclosure. The inclusion of the last sentence of
[0079] was brought about to signify to those skilled in the art
that while we would describe our invention in terms of weight
percentages, it is theoretically possible to describe the
formulations in volume percentages. The last sentence of
[0079] was provided only to give some context to the weight
percentages (bare percentages) disclosed without requiring
detailed correlation charts reciting what the corresponding
volume percentages would be to the bare percentages (weight
percentages) already disclosed. In other words, the inclusion
of the last sentence of [0079] does not, and was not intended to,
transform the bare weight percentages disclosed throughout the
application into something other than weight percentages.
In his declaration, Dr. Buchheit testifies (emphasis supplied):
7. It is my learned opinion, as one having experience in the
coatings art, that those bare percentages recited in the
application, both in the written description and the claims, refer
to weight percentages. The recitation of bare percentages for
constituent components in the coatings field is commonly used
to refer to weight percentages and those in this art would
understand the same.
8. It is also my opinion that paragraph [0079] of the ‘352
application that refers to volume percent is objective evidence
that bare percentages refer to weight percentages. This
paragraph specifically lists percentages and modifies the same
with “volume.” I can find not [sic] portion of the disclosure,
however, where a bare percentage would be understood to be
referring to a volume percent, or other percent besides weight
percent.
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In the Amendment, Appellants state:
[T]he single passage in the specification, [0079], that
erroneously referred to volume percentage of the composition
was in error. This error is clear when reading the prefatory
language in the same sentence of “concentration,” which is not
properly described as a percentage, as concentration is in
weight PER volume.
Amendment 13:13-16 (emphasis original).
The term “concentration” has the following meanings in common
usage in the chemical arts: “[t]he amount of a given substance in a stated
unit of mixture, solution, or ore. Common methods of stating concentration
are percentage by weight or by volume, normality, or weight per unit
volume (as grams per cubic centimeter or pounds per gallon.” Hawley’s
Condensed Chemical Dictionary 290 (13th ed., Richard J. Lewis, Sr.,
revisor, New York, Van Nostrand Reinhold Company, 1997). The common
usage of the term can be stated another way: “[i]n solution, the mass,
volume, or number of moles of solute in proportion to the amount of solvent
or total solution.” McGraw-Hill Encyclopedia of Science & Technology 430
(7th ed., New York, McGraw-Hill, Inc. 1992).
The Examiner establishes a prima facie case that claims do not
comply with 35 U.S.C. § 112, first paragraph, written description
requirement, by setting forth evidence or reasons why, as a matter of fact,
the written description in the Specification, claims, and drawings as filed as
a whole would not reasonably convey to persons skilled in this art that
Appellants were in possession of the invention defined by the appealed
claims, including all of the limitations thereof, at the time the Application
was filed. See, e.g., In re Alton, 76 F.3d 1168, 1172, 1175-76 (Fed. Cir.
1996) (citing Wertheim, 541 F.2d at 262-64).
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In similar manner, in order to establish an objection to an amendment
to the disclosure in the Application as introducing new matter into the
written description of the invention in contravention of 35 U.S.C. § 132(a),
the Examiner must also establish that prima facie, as a matter of fact, the
Specification, claims, and drawings at the time the Application was filed as a
whole would not reasonably convey to persons skilled in this art that
Appellants were in possession of the invention defined by written
description in the Application as amended. As explained by the court in
TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec.
Co.:
The written description requirement and its corollary, the new
matter prohibition of 35 U.S.C. § 132, both serve to ensure that
the patent applicant was in full possession of the claimed
subject matter on the application filing date. When the
applicant adds a claim or otherwise amends his specification
after the original filing date, . . . the new claims or other added
matter must find support in the original specification.
264 F.3d 1111, 1118 (Fed. Cir. 2001) (citing Schering Corp. v. Amgen Inc.,
222 F.3d 1347, 1352 (Fed. Cir. 2000) (“The fundamental inquiry is whether
the material added by amendment was inherently contained in the original
application.”); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991)
(“[T]he test for sufficiency of support . . . is whether the disclosure of the
application relied upon ‘reasonably conveys to the artisan that the inventor
had possession at the time of the later claimed subject matter.” (quoting
Ralston Purina Co. v. Far-Mar-Co., 772 F.2d 1570, 1575 (Fed. Cir. 1985));
see also Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1255 (Fed. Cir.
2004); Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed.
Cir. 2003) (“This court’s predecessor explained that the use of § 132 or
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§ 112 was synonymous because ‘a rejection of an amended claim under §
132 is equivalent to a rejection under § 112, first paragraph.’”) (quoting In re
Rasmussen, 650 F.2d 1212, 1214 (CCPA 1981)).
The original disclosure in the Specification as filed as a whole must be
sufficiently detailed to enable one skilled in the art to recognize that
Appellants invented what is now claimed. TurboCare, 264 F.3d at 1118-20,
and case cited therein. The written description in the original disclosure as a
whole does not have to describe the invention later claimed in haec verba,
but such written description “must . . . convey with reasonable clarity to
those skilled in the art that . . . [appellant] was in possession of the invention
. . . now claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991); see also Purdue Pharma L.P. v. Faulding Inc., 230 F.3d
1320, 1323 (Fed. Cir. 2000); Wertheim, 541 F.2d at 262 (“The function of
the description requirement is to ensure that the inventor had possession, as
of the filing date of the application relied on, of the specific subject matter
later claimed by him; how the specification accomplishes this is not
material. It is not necessary that the application describe the claim
limitations exactly, but only so clearly that persons of ordinary skill in the
art will recognize from the disclosure that appellants invented processes
including those limitations.” (citations omitted)). Compliance with § 112,
first paragraph, written description requirement, is a question of fact and is
determined on a case-by-case basis. Vas-Cath, 935 F.2d at 1563.
Where the claimed invention is alleged by Appellants to be based on
an inherent limitation in the original disclosure, Appellants, in order to rebut
the Examiner’s prima facie case, must establish that the written description
in the Application as filed necessarily describes the later claimed subject
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matter such that one skilled in the art would recognize such a disclosure
therein. See, e.g., TurboCare, 264 F.3d at 1119 (citing Tronzo v. Biomet,
Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998)). Where the original disclosure
lacks any description of an embodiment of the now claimed invention, an
embodiment that may have been obvious from the original description is not
sufficient to satisfy the written description requirement. TurboCare, 264
F.3d at 1119 (citing Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1571 (Fed. Cir. 1997)). In Lockwood, the court stated:
It is the disclosures of the applications that count. . . . While the
meaning of terms, phrases, or diagrams in a disclosures is to be
explained or interpreted from the vantage point of one skilled in
the art, all the limitations must appear in the specification. The
question is not whether a claimed invention is an obvious
variant of that which is disclosed in the specification. Rather, a
prior application itself must describe an invention, and do so in
sufficient detail that one skilled in the art can clearly conclude
that the inventor invented the claimed invention as of the filing
date sought.
107 F.3d at 1571-72 (citing Martin v. Mayer, 823 F.2d 500, 504 (Fed. Cir.
1987)). In other words:
One shows that one is ‘in possession’ of the invention by
describing the invention, with all its claimed limitations, not
that which makes it obvious. One does that by such descriptive
means as words, structures, figures, diagrams, formulas, etc.,
that fully set forth the claimed invention. Although the exact
terms need not be used in haec verba, the specification must
contain an equivalent description of the claimed subject matter.
A description which renders obvious the invention for which an
earlier filing date is sought is not sufficient.
. . . It is not sufficient for purposes of the written
description requirement of § 112 that the disclosure, when
combined with the knowledge in the art, would lead one to
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speculate as to modifications that the inventor might have
envisioned, but failed to disclose.”
Lockwood, 107 F.3d at 1572 (citations omitted).
In order to establish a prima facie case, the Examiner or the Board
need only establish that as a matter of fact, Appellants claim “embodiments
of the invention that are completely outside the scope of the specification.”
See Alton 76 F.3d at 1175-76; see also Wertheim, 541 F.2d at 263-64.
When the Examiner establishes a prima facie case of noncompliance
with this statutory provision, the burden shifts to Appellants to establish
otherwise with argument and/or evidence. When Appellants submit
argument and/or evidence in rebuttal, the burden shifts back to the Examiner
to again establish a prima facie case based on the totality of the record
including such arguments and evidence. Alton, 76 F.3d at 1175-76.
The Examiner contends the addition of the “by weight” language to
the claims results in claimed hydrophilic compositions specified by “percent
by weight” falling outside of the written description in the Specification as
filed which discloses hydrophilic compositions specified by “percent by
volume.” Ans. 3. The Examiner finds “there is evidence that volume %, at
[0079] as originally filed, was intended at least for the silane, because
[0081] states that the silane is a ‘pure silane oil.’” Ans. 4. In this respect,
the Examiner further finds van Ooij ‘869 and ‘303 are “examples of patents
in which silane percentages are reported on the basis of volume.” Ans. 4;
see also 5. The Examiner contends the Amendment filed September 28,
2005, fails to comply with § 132(a) because of the amendments to change
the disclosure to hydrophilic compositions specified by “by weight
language” in, among others paragraphs, ¶¶ 0061, 0062, 0074, 0075, 0088,
0095, and 0100, and the replacement of the term “by volume” with “by
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weight” in ¶ 0079, all of which paragraphs affect the disclosure of subject
matter directed to the content of hydrophilic compositions.
I am of the opinion the original disclosure in the Specification, claims,
and drawings as filed as a whole supports the Examiner’s prima facie case
that the appealed claims fail to comply with the provisions of § 112, first
paragraph, written description requirement, and that the amendments to the
Specification, necessary to provide support for the invention now claimed in
the appealed claims, fail to comply with the provisions of § 132(a) by a
preponderance of the evidence on the record, including the original
disclosure in the Specification, claims and drawings as filed as a whole, van
Ooij ‘869 and ‘303, and the testimony in the van Ooij and Buchheit
Declarations.
On this record, it is apparent the Examiner’s contentions establish
that, prima facie, the appealed claims and the amended Specification read on
embodiments of hydrophilic compositions containing a water soluble solvent
and other components in “percent by weight” amounts that fall outside the
original disclosure. There is no 1:1 correspondence between the units
“percent by volume” and “percent by weight” with respect to the amounts of
components in hydrophilic compositions having the claimed components.
This is made clear by Appellant van Ooij’s testimony: “The last sentence of
[0079] was provided only to give some context to the weight percentages
(bare percentages) disclosed without requiring detailed correlation charts
reciting what the corresponding volume percentages would be to the bare
percentages (weight percentages) already disclosed.” See above p. 27.
Furthermore, that original Specification ¶ 0079 defines embodiments
specified in percent by volume is substantiated by Declarant Buchheit
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testimony in which he accepts the reference to “volume percent” in
Specification ¶ 0079 as the foundation for his testimony. Thus, based on
Appellant van Ooij’s testimony, amending Specification ¶ 0079 by the
substitution of “weight percentages” for “volume %” in fact results in
different hydrophilic composition embodiments than originally disclosed
and thus, the appealed claims and the amendments to the Specification
drawn in “percent by weight” constitute new matter.
Indeed, there is no evidence in the Specification, claims, and drawings
as filed as a whole that establishes that Appellants described therein the
amounts of each component in the hydrophilic compositions in units other
than “volume %.” This is the quantitative unit specified for the components
of the hydrophilic compositions “diluted with water” in Specification
¶ 0079. I find one of skill in this art would recognize that the percent by
volume of the components used in Specification ¶ 0079 must take into
account the percent by volume of water.
Percent by volume is also the quantitative unit employed with
hydrophilic compositions containing water in original Experiments 1 and 2
as well as with the other compositions in original Experiments 2 and 3. In
original Experiments 1-3, each composition has a total volume of 100 mL
and the volume occupied by individual components are expressed in mL,
thus providing the percent by volume of each component in the composition.
Indeed, with respect to original Experiment 1, the formulations are reported
in this context in the tables of Figures 6 and 7, as made clear by the heading
“100 ml solution” of the table in Figure 7. In original Experiments 2 and 3,
the components are in “mL” in original Tables 1 and 3.
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I find one skilled in this art would consider the original disclosure in
Experiments 1-3 of the compositions as a whole to be in “volume %” of the
composition as a whole even though the content of the individual
components “acrylic emulsions” and the “colloidal suspension of silica
particles,” both added “as received from the vendor, are specified as “% by
weight” in water prior to combining the components in original Experiment
1. Indeed, it is apparent from the plain language of the disclosure of
Experiment 1 in the original Specification that the individual components
“acrylic emulsions” and the “colloidal suspension of silica particles” are
specified in terms of “volume %” with respect to the composition as a
whole. Thus, even if the amendments to Specification ¶¶ 0081, 0088, and
0095, changing bare percentages to “% by weight” with respect to individual
components of the silane mixtures were held to comply with § 132(a), one
skilled in this art would recognize that the mixture of silanes were each used
as a component in each of the compositions in terms of “mL” and thus, in
“volume %” of the compositions as reported in Experiments 1-3.
I find one skilled in this art would recognize that the original
disclosure of hydrophilic compositions in which the components are
specified in “volume %” extends to the remainder of the Specification as
filed, including the original claims and drawings. In Specification Figure 5,
the data reported is based in part on composition B6 disclosed in “volume
%” in original Experiment 1.
I find that the bare percentages with respect to the additives “water
soluble inhibitor” and “additional components” which are in the amounts of
“less than 1.0% of the resultant superprimer” and “very low concentrations
on the order of 0.5% solids” in original Specification ¶¶ 0061 and 0062,
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respectively, fall within the disclosure that “preferred concentrations”
include “additives comprising less than 1 volume %” in original
Specification ¶ 0079. On this basis, I am not persuaded that the original
disclosures of Specification ¶¶ 0061 and 0062 involve “% by weight” by
Declarant Buchheit’s testimony. Indeed, I find no indication in Declarant
Buchheit's testimony that he considered the disclosure of hydrophilic
compositions in terms of percent by volume in the original Specification as a
whole even though he refers to “volume percent” in Specification ¶ 0079 in
his testimony. To the contrary, Declarant Buchheit bases his testimony only
on his opinion that “[t]he recitation of bare percentages for constituent
components in the coatings field is commonly used to refer to weight
percentages and those in this art would understand the same.” See above
p. 27.
Similarly, Appellant van Ooij testifies: “The recitation of bare
percentages for constituent components in the coatings filed is commonly
used to refer to weight percentages.” See above p. 24. However, of the five
documents relied on by Appellant van Ooij, I find that only Beentjes
(Exhibit A) discloses compositions containing a single polymer and water in
which “[a]ll the polymers were used as 0.05 wt% solutions,” and Selvaraj
(Exhibit E) discloses compositions contain a two component polymer blend
diluted with solvents including a water insoluble solvent without indication
of amounts. Neither the commercial alloy compositions of Moreira (Exhibit
B), the zinc modified coatings of Tüken (Exhibit C), nor the thermosetting
powder coating compositions of Monsterrat (Exhibit D) employ solvents.
I find no evidence in the testimony of Appellant van Ooij and
Declarant Buchheit establishing that one skilled in this art would never state
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the amounts of components of a hydrophilic coating composition containing
a water soluble solvent in “percent by volume.” Evidence that Appellant
van Ooij found it unnecessary to employ “percent by weight” for a
composition containing claimed components in a water soluble solvent is
found in van Ooij ‘869 and ‘303 which the Examiner points to as “examples
of patents in which silane percentages are reported on the basis of volume.”
Indeed, the references disclose a bis-silyl aminosilane used in original
Experiment 1 as well as a bis-silyl polysulfur silane which can be used in the
hydrophilic compositions disclosed in the original Specification as well.
Thus, the record supports only the common testimony of both Appellant van
Ooij and Declarant Buchheit that “[t]he recitation of bare percentages for
constituent components in the coatings field is commonly used to refer to
weight percentages” (emphasis supplied). See above pp. 24 and 27.
To the extent that Appellant van Ooij’s testimony expresses his mere
intent to have included a description of hydrophilic compositions containing
a water soluble solvent in terms of “percent by weight” in the original
Specification as whole (see above p. 23-24), the same is entitled to no
weight for any purpose in patent law. Indeed, the evidence in van Ooij ‘869
and ‘303 establishes that Appellant van Ooij followed the same “percent by
volume” disclosure format in the present Specification, claims, and figures
as filed as a whole as in van Ooij ‘869 and ‘303.
Accordingly, on this record, I find no evidence establishing as a
matter of fact that one skilled in this art would necessarily, that is,
inevitably, use only “percent by weight” to specify the amounts of
components in a hydrophilic coating composition.
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Thus, I find that, prima facie, as matter of fact one skilled in this art
would have recognize in the Specification, claims, and drawings as filed as a
whole a description of hydrophilic coating compositions containing a water
soluble solvent in which the amounts of the components are specified in
“percent by volume” even though this person would have also recognized
that it would have been obvious to state the amounts in “percent by weight.”
Accordingly, in view of the prima facie case established by the
Examiner with respect to § 112, first paragraph, written description
requirement, and § 132(a) that the appealed claims and the Specification as
amended with respect to ¶¶ 0061, 0062, 0074, 0079, 0088, 0095, and 0100
read on embodiments entirely outside of the written description in the
Specification, claims, and drawings as filed as a whole, the burden has
shifted to Appellants to supply argument or objective evidence in rebuttal.
Upon reconsideration of the record as a whole in light of Appellants’
contentions, I am of the opinion that Appellants have not successfully
rebutted the prima facie case under either statutory provision.
Contrary to Appellants’ contentions, the Examiner properly shifted
the burden to Appellants to establish basis in the original Specification,
claims, and drawings as a whole for the now claimed invention because the
Examiner established that the original Specification, claims, and drawings as
a whole were drawn to hydrophilic compositions wherein each of the
components is specified in “percent by volume” and not “percent by
weight.” Appellants choose not to establish basis in the original
Specification as a whole for the now claimed invention, and did not do so
even in summarizing the claimed subject matter in the Appeal Brief. App.
Br., e.g., 4-7, 9-19, and 22-23; Reply Br., e.g., 1-10 and 14-15. Indeed,
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Appellants elected instead to contend that the Examiner had not made out a
prima facie case because one skilled in this art would find in the original
Specification as a whole a clear disclosure of compositions in which the
components are specified in “percent by weight” because this person would
know that the component of any coating solution should obviously be stated
in terms of percent by weight as commonly done in the art. App. Br., e.g.,
9-10. In this respect, I point out here that contrary to Appellants’
contentions in amending Specification ¶ 0079 (see above p. 28), the
common meaning of the term “concentration” in the chemical arts is not
quantitatively limited to “percent by weight” and includes “percent by
volume.” See above p. 28.
Appellants are indeed free to narrow a claimed invention by limiting
the claims and the disclosure in the specification, as they contend. App. Br.,
e.g., 10; see also App. Br. 17-18. However, while Appellants can amend the
originally claimed invention for any purpose, there must be an adequate
written description in the Specification, claims, and drawings as filed as a
whole establishing that Appellants were in possession of the invention to
which they retreat at the time the application was filed. See, e.g., In re
Johnson, 558 F.2d 1008, 1017-19 (CCPA 1977); Wertheim, 541 F.2d at
263-64.
Upon reconsideration of the evidence in the record in light of
Appellants’ arguments (App. Br., e.g., 12-16; reply Br., e.g., 8-10 and
14-15), I again find that, prima facie, as a matter of fact one skilled in this art
would find in the Specification, claims and drawing as filed as a whole the
disclosure of hydrophilic coating compositions containing a water soluble
solvent wherein the components are specified in “percent by volume” and
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not “percent by weight.” Thus, I remain of the view on these matters I
expressed above.
Accordingly, in the absence of evidence in the record establishing that
Appellants were in fact in possession of the invention of a hydrophilic
compositions containing a water soluble solvent capable of coating a
substrate wherein the components are limited in amount to “percent by
weight” to which the appealed claims and the disclosure in the specification
have been limited by amendment, I would affirm the decision of the Primary
Examiner with respect to the ground of rejection of the appealed claims
under 35 U.S.C. § 112, first paragraph, written description requirement, and
to the objection to the Specification under 35 U.S.C. § 132(a) to the extent
the amendments to Specification ¶¶ 0061, 0062, 0074, 0079, 0088, 0095,
and 0100, along with additional language to the same effect in ¶ 0100.
Thus, I agree with the result reach by the majority sustaining the Primary
Examiner’s objection to the ¶ 0079.
I further agree with the result reach by the majority with respect to the
Primary Examiner’s objection to the amendments to Specification ¶¶ 0075,
0082, 0089, and 0096 under 35 U.S.C. § 132(a). I would reverse the
Examiner’s objection to these amendments which involve reagent solutions
containing NaCl and KOH because I find from the record, including the
Specification as filed as a whole as well as from Appellant van Ooij’s
testimony, that as a matter of fact one skilled in the art would use NaCl and
KOH in percent by weight in the reagent solutions.

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