Ex Parte Yabu et al

Board of Patent Appeals and Interferences

Dec 15, 2008

10488838 (B.P.A.I. Dec. 15, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TADAHIRO YABU,
YOSHIYUKI TAKASE,
MASAYUKI NAMIMATSU
and YOSHIYUKI HIRAGA
____________

Appeal 2008-2773
Application 10/488,838
Technology Center 1700
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Decided: December 15, 2008
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Before CHUNG K. PAK, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 and 3-20,
the only claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The invention is directed to a fluororesin composition (independent
claims 1 and 16) and to a process for preparing a fluororesin composition
(independent claim 3). Each of the independent claims includes the
Appeal 2008-2773
Application 10/488,838

limitation “said composition having a melt flow rate of at least 15 g/10 min
at 372 ºC” (claims 1, 3, and 16). The sole ground of rejection of claims 1
and 3-20 is under 35 U.S.C. § 112, first paragraph.
The issue presented for our review is: Have Appellants shown that a
preponderance of the evidence weighs in favor of a finding that the
Specification, as originally filed, described the invention in sufficient detail
that one skilled in the art would clearly conclude that the unit of measure of
the melt flow rate is “g/10 min”? We answer this question in the
affirmative.
The Examiner contends that the claims fail to comply with the § 112
written description requirement because the Specification fails to identify
“g/10 min.”, or any other unit of measure, for the melt flow rate. (Ans. 4.)
According to the Examiner, one of ordinary skill in the art, upon reading the
Specification, would not be able to determine the unit of measure being
employed by the inventors. (Ans. 6.) The Examiner cites four U.S. patents
(Ans. 3, § (8)) as evidence that melt flow rate may be expressed in a variety
of units (Ans. 5, § (9), para. (a); Ans. 7, § (10), last para.)
The claims, as originally filed, did not include the units “g/10 min”
(Spec. 17-18, original claims 1-15). Likewise, the Specification does not
identify the units for melt flow rate, but states that “the fluororesin
composition . . . has a melt flow rate measured according to ASTM D-2116
of at least 15 at 372ºC” (Spec. 7, ll. 1-4). With respect to the Examples
(Spec. 12, l. 20 – p. 15, l. 10), the Specification states that “Melt flow rate
was measured according to ASTM D 2116 by the method of 372ºC and 5 kg
load” (Spec. 13, ll. 11-12). ASTM D 2116 provides that “melt flow rate is
determined at 372 ± 1ºC using Procedure A or B described in Test Method D
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Appeal 2008-2773
Application 10/488,838

1238.” The American Soc’y for Testing and Mat’ls, Annual Book of
Standards, Vol. 8.01, (D 2116 - 02), Standard Specification for FEP-
Fluorocarbon Molding and Extrusion Materials, p. 521, § 11.1.1. ASTM D
1238 identifies the units of measure for flow rate as “g/10 min.” The
American Soc’y for Testing and Mat’ls, Annual Book of Standards, Vol.
8.01, (D 1238 - 99), Standard Test Method for Melt Flow Rates of
Thermoplastics by Extrusion Plastometer, p. 261, § 1.2 p. 265, § 9.1, p. 267,
§ 11.1.
“When the scope of a claim has been changed by amendment in such
a way as to justify an assertion that it is directed to a different invention than
was the original claim, it is proper to inquire whether the newly claimed
subject matter was described in the patent application when filed as the
invention of the applicant. That is the essence of the so-called ‘description
requirement’ of § 112, first paragraph.” In re Wright, 866 F.2d 422, 424
(Fed. Cir. 1989).
Whether an applicant has complied with the written
description requirement is a finding of fact, to be analyzed from
the perspective of one of ordinary skill in the art as of the date
of the filing of the application. . . .
The written description requirement of 35 U.S.C. § 112,
¶ 1, is straightforward: “The specification shall contain a
written description of the invention. . . .” To satisfy this
requirement, the specification must describe the invention in
sufficient detail so “that one skilled in the art can clearly
conclude that the inventor invented the claimed invention as of
the filing date sought. . . .”
The requirement “serves a teaching function, as a ‘ quid
pro quo’ in which the public is given ‘meaningful disclosure in
exchange for being excluded from practicing the invention for a
limited period of time.’ ''
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Appeal 2008-2773
Application 10/488,838

In re Alonso, No. 2008-1079, 2008 WL 4762048, at **2-3 (Fed. Cir. Oct.
30, 2008) (citations omitted).
Appellants have persuasively argued that one of ordinary skill in the
art would understand from the Specification that the unit of measure of melt
flow rate of the inventive fluororesin composition is “g/10 min.” The
Examiner has not established that one of ordinary skill in the art would not
be able to ascertain the unit of measure used in the Specification merely
because other references express melt flow rate using different units of
measure. The Specification unequivocally states that melt flow rate is
determined by ASTM D 2116 (and ASTM D 1238), which identifies the unit
of measure for melt flow rate as “g/10 min.” As pointed out by Appellants,
it is unclear whether the prior art references cited by the Examiner measure
melt flow rate using ASTM D 2116.
In view of the foregoing, the decision of the Examiner rejecting
claims 1 and 3-20 is under 35 U.S.C. § 112, first paragraph, is reversed.

REVERSED

Ls

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