Ex parte Werner et al.

Board of Patent Appeals and Interferences

Jun 21, 2001

08410177 (B.P.A.I. Jun. 21, 2001)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOACHIM WERNER, SCOTT A. KANE,
HERMAN P. DOERGE and ERIC F. BOONSTRA
____________
Appeal No. 1998-1146
Application No. 08/410,177
____________
ON BRIEF
____________
Before, KIMLIN, OWENS, and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 4-6 and 8-10. Claims 3 and 7, which
are all of the remaining claims pending in this application,
stand withdrawn from further consideration by the examiner as
drawn to a non-elected invention.
Appeal No. 1998-1146 Page 2
Application No. 08/410,177
BACKGROUND
Appellants' invention in its broadest form relates to a
composition consisting essentially of 1,3-dioxolane and one of
cyclopentane, 2-methyl pentane, 3-methyl pentane or n-hexane
in specified amounts. The composition is described as
possessing azeotropic attributes by appellants. The
composition is disclosed as being useful as a blowing agent in
the production of foams and for solvent cleaning applications
(specification, pages 4 and 5). An understanding of the
invention can be derived from a reading of exemplary claim 1,
which is reproduced below.
1. An azeotropic composition consisting
essentially of
a) from about 4 to about 50% by weight 1,3-
dioxolane and
b) one compound selected from the group
consisting of
1) from about 75 to about 96% by weight
cyclopentane or
2) from about 60 to about 79% by weight 2-
methyl pentane or
3) from about 59 to about 77% by weight 3-
methyl pentane or
4) from about 50 to about 69% by weight n-
hexane in which the sum of the weight percent of
a) plus weight percent b) is approximately 100
percent.
Appeal No. 1998-1146 Page 3
Application No. 08/410,177
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Comelli et al. (Comelli), "Liquid Phase Excess Enthalpies for
the Binary Systems of 1,3-Dioxolane with n-Pentane, 3-
Methylpentane, or Methylcyclopentane," J. Chem. Eng. Data.,
35, 283-84 (1990).
Inglese et al. (Inglese), "Thermodynamics of binary mixtures
containing cyclic ethers 2. Excess enthalpies of oxolane,
1,3-dioxolane, oxane, 1, 3-dioxane, and 1, 4-dioxane with
cycloalkanes," J. Chem. Thermodynamics, 12, 1047-1050 (1980).
Claims 1, 2, 4-6 and 8-10 stand rejected under 35 U.S.C.
§ 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicant regards as the invention. Claims 1, 2, 5 and
9 stand rejected under 35 U.S.C. § 102 as anticipated by
Comelli. Claims 1 and 2 stand rejected under 35 U.S.C. § 102
as anticipated by Inglese.
Since appellants do not argue any of the claims
separately as they are grouped with respect to each of the
above-noted grounds of rejection (brief, page 3), our focus
here is primarily limited to the application of each separate
Appeal No. 1998-1146 Page 4
Application No. 08/410,177
ground of rejection to one claim within each grouping, in this
case the subject matter defined by independent claim 1. See
37 CFR § 1.192(c)(7) and (c)(8) (1995).
Appeal No. 1998-1146 Page 5
Application No. 08/410,177
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. This review leads us to conclude that the
examiner’s
§ 112, second paragraph rejection is not sustainable.
However, we shall sustain the examiner’s rejections based on
the applied prior art. Our reasoning follows.
Rejection Under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have
been interpreted by one of ordinary skill in the art in light
of appellants’ specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
of precision and particularity. See In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
With regard to the appealed claims, the examiner (answer,
pages 3 and 4) argues that:
Appeal No. 1998-1146 Page 6
Application No. 08/410,177
Said claims are indefinite in failing to recite
either the boiling point at a specified pressure or
the vapor pressure at a specified temperature to
define the azeotropic or azeotropic-like
compositions.... A single boiling point (at a
particular pressure) is the characteristic by which
the presence or absence of an azeotrope is
determined. Therefore by failing to define this
critical, defining characteristic applicant fails to
particularly point out and distinctly claim the
inventive subject matter.
The examiner, however, does not carry the burden of
persuasively explaining why the language of the appealed
claims, as it would have been interpreted by one of ordinary
skill in the art in light of appellants’ specification,
drawings and the prior art, fails to set out and circumscribe
a particular area with a reasonable degree of precision and
particularity.
We give the terms of the appealed claims their ordinary
meaning unless we find that another meaning is intended by
appellants. See In re Morris, 127 F.3d 1048, 1054-55, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1996). Here, as
explained by appellants in their specification (page 6, lines
10-25), any of the compositions made up of the specified
components in the specified amounts have "properties which are
Appeal No. 1998-1146 Page 7
Application No. 08/410,177
characteristic of a true binary azeotrope." While we are
cognizant that appellants offer a more conventional and
perhaps more limiting definition of "azeotrope" (page 9, lines
25-29 of their specification), it is clear from the
specification as a whole that appellants use the term
"azeotropic" in their claims to embrace all of the
compositions that include the claimed specified components in
the specified amounts. In this regard, we note that the
specification makes manifest that mixtures that do "not tend
to fractionate to any great extent upon evaporation"
(specification, page 6, lines 18-20) are included within
appellants’ definition of "azeotropic." This expansive
definition of "azeotropic" is in accord with appellants’ use
of components of "normal commercial purity (i.e., at least
95%)" (specification, page 6, lines 8 and 9) in forming their
so called azeotropic composition. Also see appellants’ brief,
page 4, lines 3-7.
Since we find appellants’ claims reasonably definite, we
will not sustain the examiner’s rejection of the appealed
claims under 35 U.S.C. § 112, second paragraph.
§ 102 Rejections
Appeal No. 1998-1146 Page 8
Application No. 08/410,177
The examiner (answer, pages 4 and 5) has found that
Comelli exemplifies the use of a mixture of 1,3-dioxolane with
3-methylpentane in determining thermodynamic properties of
such mixtures. As found by the examiner, the fifth
composition reported in the third column of Table II of
Comelli "exemplifies having a molar ratio of 0.3182 moles of
1,3-dioxolane and 0.6818 moles of 3-methylpentane" which
corresponds to "a weight ratio of about 29 weight percent 1,3-
dioxolane and about 71 weight percent 3-methylpentane" (answer
pages 5 and 6). Appellants’ representative claim 1 is
inclusive of such a composition by calling for from about 4 to
about 50% by weight of 1,3-dioxolane and from about 59 to
about 77% by weight of 3-methylpentane as one optional
azeotropic mixture. As such, we agree with the examiner that
Comelli anticipates, prima facie, the composition required by
representative claim 1 as well as claims 2, 5 and 9 which
latter claims stand or fall together with representative claim
1. Similarly, we agree with the examiner that Inglese
anticipates, prima facie, the composition required by
representative claim 1 as well as claim 2 for reasons as et
forth by the examiner at page 7 of the answer.
Appeal No. 1998-1146 Page 9
Application No. 08/410,177
Appellants initially disagreed with the examiner’s1
determination regarding the corresponding weight percents of
the components in Table II, column 3, row 5 of Comelli (reply
brief, page 4). However, the examiner maintained the correct
weight percents were 29% for 1,3-dioxolane and 71% for 3-
methylpentane in the supplemental answer. Appellants did not
dispute that continued assertion by the examiner in their
supplemental reply brief. We note that the molecular weight
of 1,3-dioxolane is approximately 74 and the molecular weight
of 3-methylpentane is approximately 86, which upon a routine
calculation would support the examiner’s position.
Appellants do not continue to maintain any serious
disagreement with the examiner’s determinations regarding the
weight percents that correspond to the molar percents
described in the applied references. Rather, appellants1
argue that Comelli does not teach the compositional ranges set
forth in representative claim 1 and that both of the
separately applied references do not teach that their
respective mixtures are azeotropic. In this regard,
appellants assert that the applied references being relied
upon represent accidental results. We are not persuaded by
those arguments.
It has long been held that the disclosure in the prior
art of any value within a claimed range is an anticipation of
the claimed range. In re Wertheim, 541 F.2d 257, 267, 191
Appeal No. 1998-1146 Page 10
Application No. 08/410,177
USPQ 90, 100 (CCPA 1976); Ex parte Lee, 31 USPQ 1105, 1106
(Bd. App. & Int. 1993). Additionally, we observe that the
azeotropic property simply does not serve to distinguish over
the applied prior art, when, as here, it is inherently or
intrinsically possessed by the prior art exemplified
composition. See In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433-434 (CCPA 1977). Moreover, when a claimed product
appears to be identical or substantially identical, the burden
is on appellants to prove that the product of prior art does
not possess characteristics attributed to the claimed product.
See In re Spada, 911 F.2d 705, 708-709, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990). In this regard, we note that the making of
the particular tested compositions of each of the applied
references was purposeful to obtain useful information on the
properties of such mixtures and not mere happenstance or
accidental as apparently urged by appellants. Appellants
reference to an election/restriction requirement at page 9 of
the brief is noted. However, the propriety of the rejections
made by the examiner is before us for review, not the
propriety of any election or restriction requirement that may
Appeal No. 1998-1146 Page 11
Application No. 08/410,177
have been maintained by the examiner. On this record, we
shall sustain the stated § 102 rejections.
CONCLUSION
The decision of the examiner to reject claims 1, 2, 4-6
and 8-10 under 35 U.S.C. § 112, second paragraph as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as
the invention is reversed. The decision of the examiner to
reject claims 1, 2, 5 and 9 under 35 U.S.C. § 102 as
anticipated by Comelli and to reject claims 1 and 2 under 35
U.S.C. § 102 as anticipated by Inglese is affirmed.
Appeal No. 1998-1146 Page 12
Application No. 08/410,177
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
Appeal No. 1998-1146 Page 13
Application No. 08/410,177
PATENT DEPARTMENT
MILES INC.
MOBAY ROAD
PITTSBURGH, PA 15205-9741
APPEAL NO. - JUDGE KRATZ
APPLICATION NO.
APJ KRATZ
APJ
APJ
DECISION: ED
Prepared By:
DRAFT TYPED: 29 Apr 02
FINAL TYPED: