Ex Parte Xie et al

Board of Patent Appeals and Interferences

Dec 10, 2008

10960552 (B.P.A.I. Dec. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAO XIE and TIMOTHY J. FULLER
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Appeal 2008-6020
Application 10/960,552
Technology Center 1700
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Decided: December 15, 2008
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Before EDWARD C. KIMLIN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 2, 4, 6-8, 10, and 12-14.1 We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).

1 Claims 15 and 17 are listed as being on appeal (App. Br. 3). However, the
Examiner objected to these claims as being dependent upon a rejected base
claim (Final Office Action 3). Because claims 15 and 17 are objected to and
not rejected, they are not subject to appeal. 37 CFR § 41.31(c) (2007). See
also, Manual of Patent Examining Procedure (MPEP) § 706.01 (Rev. 6,
Sept. 2007). Accordingly, we have not considered claims 15 and 17 in our
Decision.
Appeal 2008-6020
Application 10/960,552

We AFFIRM.

INTRODUCTION
Appellants disclose an organic/inorganic hybrid composite proton
exchange membrane (PEM) for use in fuel cells having a solid inorganic
conductor filler material which imparts high water retention capabilities to
the membrane at high temperatures and enhances proton conductivity of the
membrane (Spec. ¶ [001]).
Claims 1 and 13 are illustrative:
1. An organic/inorganic composite proton exchange
membrane, comprising:
a proton exchange membrane; and
a particulate inorganic conductor filler material provided
in said proton exchange membrane, wherein the particulate
inorganic conductor filler material comprises SiO2-P2O5
particles, with the proviso that the particles do not include
P2O5-ZrO2-SiO2.

13. A method of forming an organic/inorganic composite
proton exchange membrane, comprising:
providing a proton exchange membrane;
providing a filler-forming liquid; and
forming particulate inorganic conductor filler material in
said proton exchange membrane by immersing said proton
exchange membrane in said filler-forming liquid.

The Examiner relies on the following prior art reference as evidence
of unpatentability:
Grot US 5,919,583 Jul. 6, 1999

The rejections as presented by the Examiner are as follows:
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1. Claim 1, 2, 4, 6-8, 10, and 12 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 13 and 14 are rejected under 35 U.S.C. § 102(b) as being
unpatentable over Grot.

Appellants separately argue independent claims 1 and 13. Accordingly,
we address Appellants’ arguments regarding rejection 1 with respect to
claim 1, and we address Appellants’ arguments regarding rejection 2 with
regard to claim 13.

35 U.S.C. § 112, FIRST PARAGRAPH: WRITTEN DESCRIPTION

STATEMENT OF THE CASE

The Examiner, citing to Ex parte Grasselli, 231 USPQ 393 (BPAI
1983), determines that Appellants’ addition of the phrase “with the proviso
that the particles do not include P2O5-ZrO3 [sic ZrO2]-SiO2” fails to comply
with the written description requirement because it introduces new concepts
to the written description (Ans. 4).
Appellants argue that the “proviso language does not introduce new
concepts in violation of the written description requirement” (App. Br. 5).
Appellants contend that they are not precluded from retreating in scope of
the invention simply because they mistakenly thought they were originally
entitled to broader protection of what they thought was their invention (App.
Br. 5-8).

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ISSUE
Did Appellants show that the Examiner erred in determining that the
negative limitation claim phrase “with the proviso that the particles do not
include P2O5-ZrO2-SiO2” fails to comply with the written description
requirement because it introduces new concepts to the written description?
We answer that question in the negative.

PRINCIPLES OF LAW
The fundamental factual inquiry in determining whether a claimed
invention satisfies the written description requirement of 35 U.S.C. § 112,
first paragraph, is whether the specification conveys with reasonable clarity
to those skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563-64 (Fed. Cir. 1991). The PTO has the initial burden of
presenting evidence or reasons why persons skilled in the art would not
recognize in the disclosure a description of the invention defined by the
claims. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976).
With regard to negatively claimed features and the written description
requirement, the critical question is whether such negatively claimed
features introduce new concepts. Ex parte Grasselli, 231 USPQ 393, 394
(BPAI 1983) affirmed by the Federal Circuit in an unpublished
memorandum opinion 738 F.2d 453 (Fed. Cir. 1984) (The Board determined
that the negatively claimed language “said catalyst being free of uranium
and the combination of vanadium and phosphorous” in a product claim
introduced new concepts because “the express exclusion of certain elements
implies the permissible inclusion of all other elements not so expressly
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excluded” citing In re Anderson, 471 F.2d 1237, 1241 (CCPA 1973).). Cf.
Ex parte Parks, 30 USPQ2d 1234 (BPAI 1993) (The Board determined that
the claimed phrase “in the absence of a catalyst” in a process claim did not
violate the written description requirement because it was implicitly clear
from the Specification that the reactions were carried out without a catalyst
such that no new concept was introduced by the negatively claimed
language.). See also, In re Johnson, 558 F.2d 1008 (CCPA 1977) (Applicant
removed two disclosed species from a generic claim via a negative limitation
in response to a lost interference count which was held not to violate the
written description requirement).

FACTUAL FINDINGS (FF)
1. Claim 1 was amended on January 5, 2007, after the filing date of the
application, to recite the disputed claim feature “with the proviso that
the particles do not include P2O5-ZrO2-SiO2” to overcome a prior art
rejection (Amendment filed Jan. 5, 2007, 6).
2. The Specification describes a proton exchange membrane (PEM)
made of solid inorganic conductor filler material (Spec. ¶¶ [001],
[005]).
3. The Specification further discloses “solid inorganic conductor (SiO2-
P2O5) particles [] are used as filler in a perfluorosulfonic acid (PFSA)
resin to impart enhanced water retention capabilities to the PEM”
(Spec. ¶ [006]).
4. The Specification reads “[a]ccording to the invention, solid inorganic
conductor particles, which are SiO2-P2O5 glass particles . . .” (Spec. ¶
[0010]).
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5. The Specification does not disclose that P2O5-ZrO2-SiO2 particles are
excluded as the particulate inorganic conductor filler material or that
zirconium is excluded from being present, including in impurity form,
during the particle formation process.

ANALYSIS
Appellants’ amendment of the claims to recite the negative limitation
that “the particles do not include P2O5-ZrO2-SiO2” introduces new concepts
to the Specification, as originally filed, so as to violate the written
description requirement of 35 U.S.C. § 112, first paragraph. Anderson, 471
F.2d at 1241. Specifically, the addition of the disputed claim language
precludes any zirconium, including impurities, from being present during
formation of the particles. Nowhere does the Specification disclose that
zirconium impurities may not be present during the formation of the
particulate inorganic conductor filler (FF 5). This demonstrates that the
addition of the negative limitation introduces new concepts and, thus, fails to
comply with the written description requirement of 35 U.S.C. § 112, first
paragraph.
Appellants cite to several cases that they argue support the addition of
the disputed negative limitation (App. Br. 5-8). For example, Parks, 30
USPQ2d 1234, Wertheim, 541 F.2d 257, Johnson, 558 F.2d 1008, and In re
Driscoll, 562 F.2d 1245 (CCPA 1977) were cited as supporting Appellants’
position. However, these cases are distinguishable from the facts of the
present appeal.
In Parks, 30 USPQ2d 1234, the Board found that the negatively
claimed feature “in the absence of a catalyst” in a process claim was
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implicitly supported based on the examples that used high temperatures to
perform the process, which would have called for a catalyst but no catalyst
was used. Id. at 1236. In other words, the Specification in Parks provided a
basis where one could reason from the process steps that there was support
for the “absence of a catalyst” feature.
In contrast, in the present appeal claim 1 is directed to a product as
was the case in Grasselli, 231 USPQ 393. Appellants’ Specification does not
indicate to avoid zirconium or that the particular “P2O5-ZrO2-SiO2” particles
should not be included. Appellants’ process used to form the inorganic
conductor filler material does not disclose that zirconium addition is to be
avoided or that zirconium impurities are to be removed (FF 5). Accordingly,
there is no disclosure in Appellants’ Specification that would expressly or
implicitly support the negatively claimed feature.
In Wertheim and Driscoll, the court found that the applicants had
described the disputed claim features sufficiently to provide support. In
Driscoll, the appealed claim recited a disputed “alkylsulfonyl” group which
was expressly disclosed as member of the Markush group for a substitute in
a chemical compound in a parent application. Driscoll, 562 F.2d at 1249.
In Wertheim, the court affirmed the Examiner’s §112, first paragraph,
rejection of the claim feature “at least 35%” because applicant failed to
carry the burden of showing that the upper end of the range was inherently
limited to the disclosed 60% amount. Wertheim, 541 F.2d at 263-64. This
factual scenario is similar to the facts presented in the present appeal where
Appellants have not established they have written descriptive support that
“the particles do not include P2O5-ZrO2-SiO2.”
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Appellants refer to the part of the Wertheim decision where the court
found written descriptive support for the range of “between 35 and 60
percent” and reversed the Examiner’s written description rejection (App. Br.
6). However, the court based its determination on the broader disclosed
range of “25- 60%” and the PTO’s failure to establish that the narrower
range would not have been described by the broader range. Id. at 264. The
court drew an important distinction between chemical genus-specie claims
and claims reciting process parameters as were present in Wertheim.
Specifically, the court indicated that each specie of a chemical genus is a
separate embodiment of the invention, whereas the range of solids content is
but one of several process parameters. Id. In other words, the court in
Wertheim found explicit support of the amended range in the specification
unlike the factual scenario presented in this appeal.
In Johnson, the disputed negatively claimed feature simply removed
expressly disclosed species that were lost in an interference from the
disclosed genus. Johnson, 558 F.2d at 1017-18.
Driscoll, Wertheim, and Johnson are distinguishable from the facts of
the present appeal because in each case the specification expressly described
the disputed claim features, whereas the particular claim feature at issue here
(i.e., particles not including P2O5-ZrO2-SiO2) was not expressly disclosed by
Appellants. Moreover, Appellants have not provided any evidence that
establishes that they inherently possessed a proton exchange membrane in
which “particles do not include P2O5-ZrO2-SiO2.”
For the above reasons, we sustain the Examiner’s § 112, first
paragraph, rejection of claims 1, 2, 4, 6-8, 10, and 12.

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35 U.S.C. § 102 REJECTION OVER GROT
CLAIM 13: METHOD CLAIMS
STATEMENT OF THE CASE
Appellants contend that Grot does not disclose “forming particulate
inorganic conductor filler material in said proton exchange membrane by
immersing said proton exchange membrane in said filler-forming liquid” as
claimed (App. Br. 10).
ISSUE
Did Appellants show that the Examiner erred in finding that Grot
discloses “forming particulate inorganic conductor filler material in said
proton exchange membrane by immersing said proton exchange membrane
in said filler-forming liquid”? We answer that question in the negative.

PRINCIPLES OF LAW
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

FACTUAL FINDINGS (FF)
6. Grot discloses ion exchange membranes useful in fuel cells (col. 1, ll.
18-21).
7. Grot discloses a method of forming a cation exchange membrane by
forming a membrane and dispersing inorganic filler in the membrane
by in situ precipitation (col. 3, ll. 11-20).
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8. Grot discloses that the in situ precipitation includes soaking the
membrane in a solution to precipitate the inorganic filler in the
membrane (col. 7, ll. 4-24).
9. A “precipitate” is “small particles that have settled out of liquid or
gaseous suspension by gravity, or that result from a chemical
reaction.”2

ANALYSIS
Grot plainly discloses that the previously formed membrane is soaked
(i.e., immersed) in a solution to cause the precipitation of inorganic filler
in the membrane (FF 7 and 8). A precipitate is a small particle (FF 9).
Accordingly, we find that Grot discloses the argued claim feature and
anticipates Appellants’ claims 13 and 14.

DECISION
We AFFIRM the Examiner’s § 112, first paragraph, rejection of
claims 1, 2, 4, 6-8, 10, and 12 as failing to comply with written description
requirement.
We AFFIRM the Examiner’s § 102(b) rejection of claims 13 and 14
as being unpatentable over Grot.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR §1.136(a)(1)(iv).

ORDER

2 Hawley’s Condensed Chemical Dictionary, 961 (12th Ed. 1993).
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The Examiner’s decision is affirmed.

AFFIRMED

tc

CARY W. BROOKS
General Motors Corporation
Mail Code 482-C23-B21
P.O. Box 300
Detroit, MI 48265-3000
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