3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Nov 25, 2020

2020001512 (P.T.A.B. Nov. 25, 2020)

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.
14/356,681 05/07/2014 Zai-Ming Qiu 67911US004 4677
32692 7590 11/25/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
BUIE-HATCHER, NICOLE M
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
11/25/2020 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ZAI-MING QIU and MIGUEL A. GUERRA
____________________

Appeal 2020–001512
Application 14/356,681
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections under 35 U.S.C. § 112 of claims 1–4, 6, 7, 11–13, and 19–24 for
failing to comply with the written description requirement. Claims 5, 8–10,
and 14–18 have been cancelled. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Nestec
S.A. (Appeal Br. 2).
Appeal 2020-001512
Application 14/356,681

2
Independent claim 1 below is illustrative of the subject matter on
appeal (emphasis added to highlight the disputed limitation):
1. A composition comprising a compound, wherein the
compound consists of end groups R1 and R2 and at least m
repeating segments of the following structure:

wherein Y is an anionic group selected from the group consisting
of: sulfate, carboxylate, phosphate, phosphonate, and sulfonate,
wherein each X1, X2, and X3 are independently selected from F,
Cl, H, and CF3; R is a linking group; each Z1 and Z2 is
independently selected from F and CF3; m is at least 2; wherein
the compound comprises substantially no other anionic pendant
functional groups, except those selected from the group
consisting of: sulfate, carboxylate, phosphate, phosphonate, and
sulfonate, wherein the compound has a number average
molecular weight of no more than 10,000 grams/mole and an
average number of anionic groups of greater than 2.
ANALYSIS
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir.
1991)).
Appeal 2020-001512
Application 14/356,681

3
Claim 1 recites that the compound of claim 1 has “an average number
of anionic groups of greater than 2” (Appeal Br. 12, Claims App.). There is
no dispute that the Specification discloses examples wherein the average
number of anionic groups range from 2.09 to 15 (e.g., Spec. ¶¶ 120, 125;
Appeal Br. 10, 11; Final Act. 3). The Examiner’s rejection is based on the
lack of an upper limit for the range “greater than 2” recited in claim 1 (Final
Act. 3).
Appellant contends that even though the upper end of the claimed
range is open-ended, the Federal Circuit has held that this is not inherently
improper, and that such a claim limitation may be supported (Appeal Br. 8, 9
(discussing Anderson Corp. v. Fiber Composites, LLC, 474 F.3d 1361(Fed.
Cir. 2007))). As stated in Anderson,
As we have said, “[o]pen-ended claims are not inherently
improper, as for all claims their appropriateness depends on the
particular facts of the invention, the disclosure, and the prior art.
They may be supported if there is an inherent, albeit not precisely
known, upper limit and the specification enables one of skill in
the art to approach that limit.”

Id. at 1376–77, quoting Scripps Clinic & Research Found. v.
Genetech, Inc., 927 F.2d 1565, 1572 (Fed. Cir. 1991).
Contrary to the Examiner’s apparent belief that this principle only
applies to a question of enablement (Ans. 4), Anderson was explicitly
directed to both the written description and enablement requirements.2
Thus, the Examiner has not adequately explained why the case law

2 For example, see Anderson at 1377 (“The jury was free to credit that
testimony in reaching its conclusion that the invention was adequately
described and enabled. We therefore uphold the jury's verdicts on the issues
of enablement and written description.”)
Appeal 2020-001512
Application 14/356,681

4
discussed by Appellant in the briefs is not applicable to the question of
written description presented herein.
Appellant further points out that since the claim requires an upper
limit for the molecular weight of the compound, the Specification as a whole
enables one of ordinary skill in the art to determine the inherent upper limit
on the number of anionic groups for any particular compound circumscribed
by the claimed requirements (e.g., Appeal Br. 10, 11; Reply Br. generally).
Accordingly, we agree with Appellant that a preponderance of the
evidence supports Appellant’s position that one of ordinary skill in the art
would have understood that Appellant was in possession of the claimed
subject matter.
Accordingly, we reverse the Examiner’s § 112 rejection for lack of
written description.

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–8,
10–12 112 Written Description
1–3, 5–8,
10–12

REVERSED