Kevin Wyndham et al.

Patent Trials and Appeals Board

Feb 8, 2021

2020000821 (P.T.A.B. Feb. 8, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/639,328 01/11/2013 Kevin D. Wyndham 10460US.PCT2
(W-589-US2)
5331
13871 7590 02/08/2021
WOMBLE BOND DICKINSON (US) LLP / Waters
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
02/08/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN D. WYNDHAM, BEATRICE W. MURIITHI,
MICHAEL F. MORRIS, and NICOLE L. LAWRENCE
Appeal 2020-000821
Application 13/639,328
Technology Center 1700
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
BRIAN D. RANGE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 14, 29, 58–60, 73, 76, 79, 82, 86,
89, 92, and 93. See Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “WATERS
TECHNOLOGIES CORPORATION.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to superficially porous materials useful for
chromatographic separations. Claim 1, reproduced below, is illustrative of
the claimed subject matter (emphasis added to highlight key disputed
limitation):
1. A superficially porous material comprising a nonporous core
material and one or more uniform layers of a porous shell
material surrounding the nonporous core material, wherein the
porous shell material is a porous inorganic/organic hybrid
material, and wherein the porous inorganic/organic hybrid
material is a material according to formula (I):
(SiO2)d/[R2((R)p(R1\)qSiOt)m] (I) wherein, Rand R1 are
each independently C1-C18 alkoxy, C1-C18 alkyl, C2-C18
alkenyl, C2-C18 alkynyl, C3-C18 cycloalkyl, C1-C18
heterocycloalkyl, Cs-C18 aryl, Cs-C18 aryloxy, or C1-C18
heteroaryl;
R2 is C1-C18 alkyl, C2-C18 alkenyl, C2-C18 alkynyl, C3-
C18 cycloalkyl, C1-C18 heterocycloalkyl, C5-C18 aryl, C1-C18
heteroaryl, wherein each R2 is attached to two or more silicon
atoms;
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Legendre US 2004/0035793 A1 Feb. 26, 2004
Wei US 2010/0051877 A1 Mar. 4, 2010
REJECTIONS
Claims 1, 2, 14, 29, 58–60, 73, 76, 79, 82, 86, 89, and 92, and 93 are
rejected under 35 U.S.C. § 112, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the applicant regards
as the invention. Final Act. 2–3.
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Claims 1, 2, 14, 29, 60, 73, 76, 79, 82, 86, 89, 92, and 93 are rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Wei. Final
Act. 4.
Claims 58 and 59 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Wei in view of Legendre. Final Act. 7.
OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s § 112 rejection (e.g., see generally Ans.). In re Jung, 637 F.3d
1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice
of requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the §§ 112 and 103 rejections generally for the
reasons expressed by the Examiner in the Final Office Action and the
Answer.
We add the following primarily for emphasis.
The § 112 Rejection
During prosecution, claims are definite if they “set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Examiner found the language of independent claim 1 was
indefinite because the claim requires at least one “uniform layer[]” and there
is no definition or standard set out in the Specification by which to ascertain
what exactly is uniform about the layer and/or how much uniformity is
needed for the layer to be uniform, as “uniform . . . is a relative term” (Final
Act. 3). Appellant points out that the Specification describes a prior art
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coating which is non-uniform, and shows in Figs. 7 and 8 respectively a
uniform coating as claimed versus a non-uniform prior art coating using
FIB/SEM analysis such that one of ordinary skill would have understood
what the term uniform layer means (Appeal Br. 11–12 (citing Spec. 2,
31:22–30, 91:7–8, Figs. 7, 8); Reply Br. 2–5).
In prosecution before the USPTO “[i]t is the applicants’ burden to
precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997). The purpose of this requirement is to provide the
public with adequate notice of the boundaries of protection involved. The
time to do so is during prosecution where an applicant has the ability to
amend the claims to more precisely define the metes and bounds of the
claimed invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1210–12
(BPAI 2008).
Notably, as pointed out by the Examiner, the Specification does not
describe any definition or provide any standard to determine exactly what
must be uniform and how much uniformity is required for the coating layer
to be considered uniform (Ans. 5, 6). Fig. 8, which is exemplary of non-
uniformity, has no scale or description of exactly what is uniform. One
might assume that Appellant intended the coating thickness to be uniform,
but Appellant denies that this is the case (Appeal Br. 17 (“At no time did
Appellant state that the term uniform requires an even thickness
distribution.”)). In any event, we agree with the Examiner that the
Specification Figs. 7 and 8 are not adequate to provide any meaningful
standard or definition for the claim term “uniform layer[]” (Ans. 9, 10). It
may well be reasonable to presume that a layer having an even thickness
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meets the required “uniform” layer.2 Appellant however appears to argue
that the intent is that the depth of the pores must be uniform (Appeal Br. 17).
In light of the fact that there is no meaningful scale or measurements
disclosed to define the standard of uniformity necessary, and in light of the
different possible scopes of this term which results in multiple
interpretations applicable to the claims, it is appropriate for Appellant to
make clear which interpretation is required.
Accordingly, we affirm the Examiner’s § 112 rejection of all the
claims on appeal for indefiniteness.
The § 103 Rejection
While the scope of the claims is indefinite for the reasons stated
above, nonetheless, for the purposes of judicial economy, we shall decide
the prior art rejections on appeal by interpreting the claim term “uniform”
layer, consistent with the Examiner’s interpretation, to encompass any one
of particles having a layer having an ordered pore structure and a narrow
particle size distribution, or particles of the same composition keeping the
same general size, or a particle layer having a uniform smooth surface as
apparently exemplified in Wei’s Fig. 5 (Ans. 11, 12).
With respect to claim 1, Appellant’s only argument is that Wei’s
coating layer would not have been uniform since it was made by a process

2Cf. Howmedica Osteonics Corp. v. Wright Medical Tech., Inc., 540 F.3d
1337, 1345 (Fed. Cir. 2008) (It has been established that “the fact that the
specification describes only a single embodiment, standing alone, is
insufficient to limit otherwise broad claim language.” (citing Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc))); Liebel-
Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004); Teleflex,
Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327–28 (Fed. Cir. 2002)).

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that creates pockets of porosity in the starting solid metal oxide material
(Appeal Br. 15, 16). In the Reply Brief, Appellant further argues that Wei’s
process is similar to the prior art process which produced the non-uniform
coating of Fig. 8 of Appellant’s Specification (Reply Br. 5–6).3 These
arguments are not persuasive of error in the Examiner’s rejection for reasons
stated by the Examiner (Ans. 10–12).
Notably, as pointed out by the Examiner, Wei specifies that the
porous shell has an “ordered pore structure and a narrow particle size
distribution” (Wei, Abstract) and that the porous particles are of the same
composition and the same general size (Wei ¶ 34). Furthermore, Wei
exemplifies a product in Fig. 5 that appears to show a product having a
uniform smooth surface layer comparable to that depicted in Appellant’s
Fig. 7 (Ans. 12).
Furthermore, Appellant has not provided any persuasive technical
reasoning or proffered any evidence to show that Wei’s product does not
have a uniform layer of porous shell material, consistent with any of the
claim interpretation(s) given above. What’s more, it has been held that when
the Examiner establishes a reasonable basis for determining that the product
claimed by the applicant and disclosed in the prior art appears to be the same
or substantially similar, the burden is properly shifted to the applicant to
show that they are not. See e.g., In re Spada, 911 F.2d 705, 708 (Fed. Cir.

3 Appellant has not shown good cause why these new arguments could not
have been presented in the Appeal Brief. Therefore, we need not consider
the arguments newly raised in the Reply Brief. 37 C.F.R. § 41.41(b)(2).
Nonetheless, they are not persuasive or reversible error for reasons set out in
this Decision.

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1990). Appellant has not met that burden here. Technical assertions
unsupported by factual evidence are not persuasive. In re Geisler, 116 F. 3d
1465, 1470 (Fed. Circ. 1987). It has long been established that an attorney’s
arguments in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
Accordingly, Appellant has not shown reversible error in the
Examiner’s rejection of claim 1 as well as all claims not separately argued,
including claims 58 and 59 which were separately rejected.
With respect to Appellant’s argument that Wei does not render
obvious multiple layers as recited in claim 29, a preponderance of the
evidence supports the Examiner’s obviousness determination (Ans. 13, 14
(explaining that combining two methods each know to create superficially
porous material would have been obvious especially since it is well settled
that mere duplication of parts is ordinarily prima facie obvious)). It is noted
that claim 29 does not require that each uniform layer be different, only that
there be more than one uniform layer. Wei specifically refers to a
“multilayer” method (Wei ¶¶ 22, 23). Even if that method is a prior art
method, as argued by Appellant, nonetheless it establishes that the use
multiple porous layers are known and thus obvious. Indeed, Appellant
admits that using multiple porous layers is known (Spec. 1:12–14, Spec.
2:10–24). Claim 1 is directed to a product, not to a method. Appellant’s
conclusory argument that one would not have combined the inventive
method of Wei (which Appellant contends would not make multiple layers)
with a multilayer method of the prior art (Appeal Br. 18, 19) is not
persuasive of error. A preponderance of the evidence supports the
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Examiner’s determination that it would have been obvious to use more than
one porous layer on Wei’s nonporous core material.
Accordingly, we sustain the Examiner’s 103 rejections on appeal.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 14, 29,
58–60, 73,
76, 79, 82,
86, 89, 92,
93
112 Indefiniteness 1, 2, 14, 29,
58–60, 73,
76, 79, 82,
86, 89, 92,
93

1, 2, 14, 29,
60, 73, 76,
79, 82, 86,
89, 92, 93
103(a) Wei 1, 2, 14, 29,
60, 73, 76,
79, 82, 86,
89, 92, 93

58, 59 103(a) Wei, Legendre 58, 59
Overall
Outcome
1, 2, 14, 29,
58–60, 73,
76, 79, 82,
86, 89, 92,
93

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED