Ex Parte Menschig et alDownload PDFPatent Trial and Appeal BoardJun 16, 201712932837 (P.T.A.B. Jun. 16, 2017) Copy Citation 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. TPC-10-22 D1 5717 EXAMINER HUHN, RICHARD A ART UNIT PAPER NUMBER 1764 MAIL DATE DELIVERY MODE 12/932,837 03/08/2011 40256 7590 FERRELLS, PLLC P.O.BOX 312 CLIFTON, VA 20124-1706 06/16/2017 Klaus R. Menschig 06/16/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KLAUS R. MENSCHIG, SOHEL SHAIKH, SATHY R. PONNUSWAMY, and REX LAWSON Appeal 2016-004556 Application 12/932,8371 Technology Center 1700 Before JEFFREY T. SMITH, DONNA M. PRAISS, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL2 1 Appellants identify TPC Group LLC as the real party in interest. Appeal Br. 3. 2 In our Opinion, we refer to U.S. Patent Application Serial No. 12/468,195, the parent of the pending application (“’195 parent application”); the Non- Final Action mailed July 29, 2014 (“Non-Final Act.”); the Final Action mailed January 22, 2015 (“Final Act.”); the Appeal Brief filed July 22, 2015 (“Appeal Br.”); the Examiner’s Answer mailed February 8, 2016 (“Ans.”); and the Reply Brief filed March 25, 2016 (“Reply Br.”). Appeal 2016-004556 Application 12/932,837 STATEMENT OF THE CASE The Examiner maintains and Appellants appeal under 35 U.S.C. § 134(a) the rejection of claims 1—7, 12—15, 18, and 27—36. Ans. 2; App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The claims are directed to processes for production of polyisobutylene. Independent claims 1,12, and 34, reproduced below with disputed limitations emphasized, are illustrative of the claimed subject matter: 1. A process for production of polyisobutylene comprising: subjecting a reaction admixture comprising isobutylene, a diluent for said isobutylene and a catalyst composition to reaction conditions suitable for causing at least a portion of said isobutylene to undergo polymerization to form a polyisobutylene product including polyisobutylene molecules, at least a fraction of said polyisobutylene molecules having alpha position double bonds, said polyisobutylene product having a number average molecular weight and a polydispersity index; and selecting a predetermined concentration of said diluent in said admixture to thereby control the relative size of said fraction and to maintain or increase the alpha position double bond fraction size as the size of the polymerized portion increases; wherein the concentration of the diluent in the admixture is no more than about 30 weight %; wherein further said diluent comprises C3-C16 alkane or a mixture of a C3-C16 alkane and C3-C161-alkene; and wherein the diluent comprises from 95 weight percent C3-C16 alkane up to 99.99 weight percent C3-C16 alkane. 2 Appeal 2016-004556 Application 12/932,837 12. A process for liquid-phase production of polyisobutylene comprising: subjecting a reaction admixture comprising isobutylene, a diluent for said isobutylene and a catalyst composition to reaction conditions suitable for causing at least a portion of said isobutylene to undergo polymerization to form a polyisobutylene product including polyisobutylene molecules, at least a fraction of said polyisobutylene molecules having alpha position double bonds, maintaining a number average molecular weight of said product while achieving a polydispersity index of between 1.6 and 3.31 such that a ratio of the number average molecular weight of said product to the polydispersity index of said product ranges from 815 up to 1293 by choosing a diluent concentration corresponding to a pre selected value of at least one parameter selected from the number average molecular weight or the polydispersity index; and maintaining the admixture at said chosen diluent concentration to thereby hold said parameter at said pre selected value, wherein said diluent comprises C3-C16 alkane or a mixture of a C3-C16 alkane and C3-C161-alkene and wherein further the diluent comprises from 95 weight percent C3-C16 alkane up to 99.99 weight percent C3-C16 alkane. 34. A process for production of polyisobutylene comprising: subjecting a reaction admixture comprising isobutylene, a diluent for said isobutylene and a catalyst composition to reaction conditions suitable for causing at least a portion of said isobutylene to undergo polymerization to form a polyisobutylene product including polyisobutylene molecules, at least a fraction of said polyisobutylene molecules having alpha position double bonds, said polyisobutylene product having a number average molecular weight and a polydispersity index, said polyisobutylene product having at least one 3 Appeal 2016-004556 Application 12/932,837 parameter that is variable as a function of the concentration of said diluent in said admixture, said at least one parameter comprising (a) the relative size of said fraction, (b) the number average molecular weight of said product, (c) the polydispersity index of said product or (d) the relative size of said portion; choosing a diluent concentration corresponding to a pre selected value of at least one parameter; and maintaining the admixture at said chosen diluent concentration to thereby hold said parameter at said pre selected value, wherein diluent comprising a C3-C161-alkene and optionally a C3-C16 alkane is provided to a reactor independently of fresh isobutylene monomer. Appeal Br. A-l—A-3, A-5 (Claims App’x). REJECTIONS The Examiner rejects all of the pending claims under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. The specifics of the rejections are discussed in the Opinion below. OPINION The only analysis provided in the Final Action is that set forth in the Non-Final Action. Final Act. 2. During the time between the Non-Final Action and the Final Action, Appellants filed amended claims to address many of the Examiner’s rejections during the time between the Non-Final Action and the Final Action. Applicants’ Amendment and Response, filed Oct. 29, 2014. Appellants urge the patentability of all of the pending claims over the Examiner’s rejections, separately addressing (1) claim 1 and its dependent claims 27, 29, 31, and 33; (2) claim 12 and its dependent claims 13 and 35; 4 Appeal 2016-004556 Application 12/932,837 (3) claim 18 and its dependent claim 28; and (4) claim 34 and its dependent claim 36. See Appeal Br. generally. Therefore, claims 2—7, 30, and 32 stand or fall with independent claim 1 from which they depend and claims 14 and 15 stand or fall with independent claim 12 from which they depend. See 37 C.F.R. § 41.37(c)(l)(iv). Written description of a diluent comprising mixtures The Examiner finds all of the pending claims lack written description of a diluent comprising a mixture of a C3-C16 alkane and C3-C16 1-alkene (independent claims 1, 12, and 34, and their dependent claims), an isobutane and a C3-C161-alkene (claims 18 and 36), an isobutane and a 1-alkene (claim 27), isobutane and 1-butene (claims 13, 28, and 29), or isobutane and other light hydrocarbons (claim 31). Non-Final Act. 5, 6, 9, 13, 14, 19, and 22. Appellants cite the Specification, certain claims as filed, and certain original claims from the ’195 parent application as supporting written description of the claimed mixtures. Appeal Br. 7, 8, 11, 15, 16, 21, and 22; Reply Br. 2—5. Specifically, Appellants argue that pages 14—15 of the Specification and claims 48 and 49 of the ’195 parent application provide written description of “a mixture of a C3-C16 alkane and C3-C16 1-alkene.” Id. at 7, 11. The Specification states “a C3-C16 alkane or alkene, or a mixture of such substances, may be used as the diluent. Desirably the diluent may be a C3-C161-alkene.” Spec. 15,11. 1—3. Claims 48 and 49 of the ’195 parent application recite: 48. A process as set forth in claim 1, 6, 12, 13, 20, 21, 23, 25, 26, 31, 32, 33 or 34, wherein said diluent comprises a C3-C16 alkane or alkene, or a mixture of such substances. 49. A process as set forth in claim 48, wherein said diluent comprises a C3-C16 1-alkene. 5 Appeal 2016-004556 Application 12/932,837 Appeal Br. B-8 (Evidence App’x). Appellants argue that these disclosures support alternative diluent compositions, including a mixture of a C3-C16 alkane and a C3-C16 1-alkene. Id. at 7—8. The Examiner finds that page 15 of the Specification fails to provide written description of a mixture of a C3-C16 alkane and C3-C16 1-alkene, because “[djesirably the diluent may be a C3-C16 1-alkene” describes “an embodiment of the diluent rather than a narrower statement of the alkene in a mixture of alkane and alkene.” Advisory Act. 2 (emphasis omitted). The Examiner also finds that claims 48 and 49 of the ’195 parent application do not “expressly recite” a diluent comprising a mixture of a C3-C16 alkane and C3-C16 1-alkene, as Appellants contend. Ans. 4. The written description inquiry is a factual one and must be assessed on a case-by-case basis. Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). The test for sufficiency of written disclosure is whether the disclosure relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the application filing date. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (internal citations omitted). Based on this test, the Specification and claims of the ’195 parent application cited by Appellants reasonably convey to one of skill in the art that Appellants had possession of a mixture of a C3-C16 alkane and C3-C161-alkene at the time of filing. The Specification’s disclosure that a mixture of a C3-C16 alkane or C3-C16 alkene may be used as a diluent (Spec. 15), followed by the statement that the diluent may desirably be a C3-C16 1-alkene (id.) to reasonably convey that the C3-C16 alkene in the mixture includes the C3-C161-alkene subgenus. Similarly, the opening “comprising” language of claims 48 and 6 Appeal 2016-004556 Application 12/932,837 49 of the ’195 parent application is reasonably interpreted as conveying that the mixture of C3-C16 alkane and alkene disclosed in claim 48 includes a C3- Ci6 1-alkene. With regard to a mixture of an isobutane and a C3-C161-alkene (claims 18 and 36), the Examiner finds that the Specification does not describe a mixture of an isobutane with a C3-C16 1-alkene. Non-Final Act. 13. Appellants amended claims 18 and 36 after the Non-Final Action to delete the requirement that the isobutane be “essentially pure.” Appellants contend that original claim 27 and claims 51, and 53 of the ’195 parent application provide written description for these pending claims: 27. A process as set forth in claim 1, wherein said diluent consists essentially of a mixture of isobutane and 1-alkene. 51. A polyisobutylene product as set forth in 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45, 45 or 47, wherein the diluent comprises a C3-C16 1-alkene 53. A polyisobutylene product as set forth in claim 51, wherein the diluent comprises isobutane Appeal Br. A-4 (Claims App’x) and B-8 (Evidence App’x). We determine that original claim 27 provides written description of a mixture of isobutane and a 1-alkene. We also determine that claim 53 of the ’195 parent application reasonably provides written description of a mixture of isobutane and a C3-C16 1-alkene, as claim 51 requires a diluent “comprising” a C3-C16 1-alkene, and claim 53’s dependence from claim 51 requires a mixture comprising both a C3-C16 1-alkene and isobutane, since isobutane cannot be the C3-C16 1-alkene in claim 51. Original claims 13, 28, and 29 each require a mixture comprising isobutane and 1-butene. Appeal Br. A-4, A-6 (Claims App’x). “The claims as filed are part of the specification, and may provide or contribute to 7 Appeal 2016-004556 Application 12/932,837 compliance with § 112.” Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998). Claim 13 depends from claim 12, claim 28 depends from claim 18, and claim 29 depends from claim 27, all of which we addressed supra. Because the claims reasonably convey to one of skill in the art that the inventor had possession of the invention on the filing date, and the claims from which each dependent claim depends is also supported by written description, we reverse the rejections of these claims under § 112, first paragraph. The Examiner rejects claim 31, which claims, inter alia, a diluent that consists essentially of isobutane and light hydrocarbons, as lacking written description. Non-Final Act. 14. Appellants amended claim 31 to require a diluent consisting essentially of isobutane and other light hydrocarbons. Appeal Br. 15. Appellants identify a portion of the Specification as supporting written description for the claim: “the diluent may advantageously comprise a mixture of hydrocarbons such as, for example, C4S and other light hydrocarbons.” Spec. 15,11.3—5. The Examiner finds that “C4S” is a term of art, and may refer to varied mixtures of 4-carbon hydrocarbons, and they need not be alkanes (such as isobutane). Ans. 10. The subgenus C4S reasonably discloses the species isobutane, therefore the Specification reasonably discloses to one of ordinary skill in the art a mixture of isobutane (a C4S) and other light hydrocarbons, as recited in claim 31. In sum, we determine that Appellants reasonably disclosed to one of ordinary skill in the art at the time of the invention that they had possession of the mixtures claimed in claims 1, 12, 13, 18, 28, 29, 31, 34, and 36. We 8 Appeal 2016-004556 Application 12/932,837 therefore reverse the Examiner’s rejection of claims 1, 12, 13, 18, 28, 29, 31, 34, and 36 for lacking written description support for the claimed mixtures. Written description of 95 weight percent C3-C16 alkane up to 99.99 weight percent C3-C16 alkane Independent claims 1 and 12 were amended after the Non-Final Action to replace the phrase “the diluent comprises from at least 95 weight percent C3-C16 alkane up to a concentration at which the diluent is essentially pure C3-C16 alkane” with the limitation “the diluent comprises from 95 weight percent C3-C16 alkane up to 99.99 weight percent C3-C16 alkane.” Compare Non-Final Act. 3 and Appeal Br. A-l, A-3 (Claims App’x). Appellants argue that a diluent content of up to 99.99 weight percent C3-C16 alkane is fully supported by the Specification at page 22 and Table 5. Appeal Br. 12. The Examiner finds that claims 1 and 12 lack written description of the recited percentage range of C3-C16 alkanes. Non- Final Act. 4; Ans. 2. The Examiner further finds that the diluent recited in the claims is significantly broader in scope than the limited example that Appellants identity as supporting written description. Ans. 3. Page 22 of the Specification discloses “[a]n essentially pure isobutane stream having a composition as set forth in Table 5,” and Table 5 on page 12 of the Specification discloses the purity of individual components of an isobutene-containing diluent which includes 0.02 weight percent propane, 99.79 weight percent isobutane, and 0.18 weight percent N-butane. In contrast, the claims are not limited to 95 to 99.99 weight percent of C3-C4 alkanes, which is all that the Specification arguably discloses. We agree with the Examiner that Appellants have not provided written description that is commensurate in scope with the claims, i.e., Appellants have not provided 9 Appeal 2016-004556 Application 12/932,837 any written description of the claimed weight percentages of even a single species of a C5-C16 alkane. Independent claims 1 and 12 and their respective dependent claims therefore lack written description of at least this limitation. Accordingly, we affirm the Examiner’s rejection of claims 1, 12, and their respective dependent claims for lacking written description for “the diluent comprises from 95 weight percent C3-C16 alkane up to 99.99 weight percent C3-C16 alkane.” Written description of maintaining the alpha position double bond fraction size as the size of the polymerized portion increases Independent claim 1 requires selecting a predetermined concentration of said diluent in said admixture to thereby control the relative size of said fraction to maintain or increase the alpha position double bond fraction size as the size of the polymerized portion increases. Appeal Br. A-l (Claims App’x). In Appellants’ Amendment and Response filed October 29, 2014, Appellants amended claim 1 to recite “to maintain or increase” instead of “to maintain.” The Examiner finds that Appellants did not address the merits of the rejection in the Non-Final Action as to how the “maintain” limitation is supported by the original specification. Ans. 6. Appellants respond that the Specification introduces relative alpha position double bond fraction size and teaches holding the relative fraction size “essentially constant.” Reply Br. 4 (quoting Spec. 9,11. 9-11). Appellants provide a dictionary definition for the word “maintain” as meaning “keep (something) at the same level or rate.” Id. (citing Oxford Dictionaries, www. oxforddictionaries. com/ definition/ american_english/maintain). 10 Appeal 2016-004556 Application 12/932,837 During prosecution, an application’s “claims are to be given their broadest reasonable interpretation consistent with the specification.” In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We adopt Appellants’ definition of “maintain,” which is reasonable and consistent with the Specification. Thus, we determine that the Specification provides adequate written description of maintaining the alpha double bond fraction size. We therefore reverse the Examiner’s rejection of claim 1 for lacking written description support for “maintain.” Written description of providing a C3-C161-alkene and optionally a C3-C16 alkane to a reactor independently of fresh isobutylene monomer Independent claim 34 requires “wherein diluent comprising a C3-C16 1-alkene and optionally a C3-C16 alkane is provided to a reactor independently of fresh isobutylene monomer.” Appeal Br. A-5 (Claims App’x). We addressed the written description of a mixture of a C3-C16 1- alkene and optionally a C3-C16 alkane above, finding that the Specification and ’195 parent application claims provide adequate written description. The Examiner also rejects claim 34 as lacking written description of “independently.” Non Final Act. 19; Ans. 12—13. The Examiner finds that the claim is not limited to the reaction system disclosed at Figure 1 and page 15 of the Specification. Id. The Examiner therefore finds that the claim encompasses many ways of adding the diluent independently from the monomer, thus is broader in scope than the limited disclosure of Figure 1. Appellants argue that Figure 5 illustrates isobutylene and isobutane (a diluent) are each fed separately, via respective lines 210 and 216, to the reactor, which supports claim 34. Appellants contend that “independent” in 11 Appeal 2016-004556 Application 12/932,837 claim 34 means “not connected with another or with each other; separate.” Reply Br. 3. According to Appellants, Figure 5 shows separate lines feeding the diluent (isobutane) and the monomer (isobutylene) to the reactor, and the Specification’s text describing Figure 5 discusses “the diluent concentration,” “adding diluent via line 216,” and “the diluent concentration may be varied,” i.e., refers to diluent more broadly than the isobutane shown in Figure 5. Id. at 3^4 (citing Spec. 19, In. 4—20, In. 14 and Fig. 5). Using the broadest reasonable scope of the claim term consistent with the Specification, we adopt Appellants’ definition of “independent” in claim 34. See In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d at 1364. We also note that the description of Figure 5 in the Specification clarifies that the separately-fed diluent is “advantageously isobutane,” therefore we agree with Appellants that the diluent is not necessarily limited to isobutane. See Spec. 19,11. 6—8. For these reasons and those discussed above regarding “mixtures,” the Examiner reversibly erred in rejecting claim 34 for lacking written description. Written description of “wherein the diluent is inert... and consists essentially of isobutane and other light hydrocarbons ” Claim 31 requires that the diluent be both inert and consist of a mixture of isobutane and other light hydrocarbons. We addressed the “mixture” issue above, finding that Appellants provided adequate disclosure of a mixture of isobutane and other light hydrocarbons. Therefore, we turn to whether there is adequate disclosure that the diluent comprising the mixture is also inert. Appellants contend that the Specification teaches a diluent that is both inert to polymer forming reactions taking place in the reactor and also may 12 Appeal 2016-004556 Application 12/932,837 be a mixture of C3-C16 alkane or alkene, such as C4S and other light hydrocarbons. Appeal Br. 15—16. Ideally the desired diluent for isobutylene may be isobutane. However, in a more general sense, the desirable diluent should simply be capable of dissolving both isobutylene and polyisobutylene and should be inert to the polymer forming reactions taking place in the reactor. In this latter regard, a C3- Ci6 alkane or alkene, or a mixture of such substances, may be used as the diluent. Desirably the diluent may be a C3-C16 1- alkene such as, for example, butene-1. In another sense, the diluent may advantageously comprise a mixture of hydrocarbons such as, for example, C4s and other light hydrocarbons. Spec. 14,11. 5, 14—15 (emphasis added). The Examiner finds that the passage in the Specification to which Appellants point describes two different senses (different embodiments) of the invention and that there is no nexus between them. Non-Final Act. 16; Ans. 10—11 (finding “in a more general sense” to refer to one embodiment of the diluent and “[i]n another sense” to refer to a different embodiment that is not inert). The Examiner finds that claim 31 combines features of two unrelated disclosures in the original Specification and that the subject matter claimed was not present in the original written description. Id. We agree with Appellants. The Specification describes the desirable diluent as isobutane, and, “in a more general sense” as inert to the polymer forming reactions and, in this (latter) regard to comprise a C3-C16 alkane or alkene, or a mixture of such substances. The disclosure reasonably conveys to those skilled in the art that Appellants had possession of a diluent consisting essentially of a mixture of isobutane and other light hydrocarbons that was inert to the polymerization reactions of the process. See Ariad Pharms., Inc., 598 F.3d at 1351. 13 Appeal 2016-004556 Application 12/932,837 However, as claim 31 depends from claim 1, which we previously determined was lacking in written description of 95 weight percent C3-C16 alkane up to 99.99 weight percent C3-C16 alkane, the claim as a whole fails the written description requirement. Written description of “wherein the fraction of polyisobutylene molecules having alpha position double bonds is greater than 80 mole percent” Claim 33 depends from claim 1, which lacks written description of the limitation “95 weight percent C3-C16 alkane up to 99.99 weight percent C3- Ci6 alkane.” Although claim 33 lacks written description for the same reasons as claim 1, we address claim 33’s additional limitation for the sake of completeness. Claim 33 originally recited “greater than 70 mole percent.” Non-Final Act. 16. The Examiner found that the portion of the Specification cited in support of claim 33 was directed to prior art patents, and not the invention. Id. at 17. Appellants responded by amending claim 33 to claim “greater than 80 mole percent,” directing us to pages 20 and 21 of the Specification, and indicating the belief that the Examiner’s rejection was moot. Appeal Br. 17. Page 21 of the Specification states that “it is desirable” for the product to have alpha double bond content greater than 80 mole percent. On this basis, we determine that Appellants provide adequate written description for this limitation of claim 33. Written description of “a ratio of the number average molecular weight of said [polyisobutylene] product to the polydispersity index of said product ranges from 815 up to 1293” Claim 12 requires, inter alia, “a ratio of the number average molecular weight of said [polyisobutylene] product to the polydispersity 14 Appeal 2016-004556 Application 12/932,837 index of said product ranges from 815 up to 1293.” Appeal Br. A-2 (Claims App ’x). The claim was amended after the Non-Final Action from “ration . . . ranges from at least 815 up to about 1290.” Amendment After Non-Final Act. filed Oct. 29, 2014, p. 3. The Examiner finds that the Specification does not contain a written description of the “presently recited combination of polydispersity indices and number average molecular weights.” Ans. 7. Appellants contend that the Examiner acknowledged in the Non-Final Action that examples of the original Specification support a ratio number average molecular weight to polydispersity index ranging from 815 to 1293. Appeal Br. 18. However, we do not read the Examiner’s statement as making the statement suggested by Appellants. Specifically, the Examiner stated that “Applicants] presented the calculations that 1785/2.19 = 815 and 2909/2.25 = 1293.” Non-Final Act. 10. This is not the same as stating that the Specification contains written description for the ratio as claimed. Appellants disclosed no ratios of the number average molecular weight of said polyisobutylene product to the polydispersity index of said product ranges. Appellants merely provided examples from which some of which the claimed ratios could be calculated. Spec. 18—19. Such is not adequate disclosure of the claimed ratios. See Purdue Pharma LP v. FauldingInc., 230 F.3d 1320, 1326 (Fed. Cir. 2000) (holding that one of ordinary skill in the art would not be directed to the claimed ratio as an aspect of the invention because, “[although [some of] the examples provide data from which one can piece together the [claimed] limitation, neither the text accompanying the examples, nor the data, nor anything else in the specification in any emphasizes the [claimed] ratio.”) (citing In re Ruschig, 15 Appeal 2016-004556 Application 12/932,837 379 F.2d 990, 994—95 (“It is an old custom in the woods to mark trails by making blaze marks on the trees. It is no help in finding a trail or in finding one’s way through the woods where the trails have disappeared— or have not yet been made, which is more like the case here— to be confronted simply by a large number of unmarked trees. Appellants are pointing to trees. We are looking for blaze marks which single out particular trees. We see none.”). One cannot disclose a forest in the application and later pick a tree out of the forest to claim as one’s invention. Purdue Pharma, 230 F.2d at 1326. To satisfy “the written description requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed disclosure.” Id. at 1326—27. Written description of “wherein the polyisobutylene comprises from about 15 mole percent up to 34.8 mole percent of a 1,1,2 trisubstituted isomer” Amended claim 35, which depends from claim 1, further requires that the polyisobutylene product comprises from about 15 mole percent up to 34.8 mole percent of a 1,1,2 trisubstituted isomer. Appeal Br. A-6 (Claims App’x). Appellants identify page 5 and Table 4 of the Specification as providing written description for this limitation. Id. at 20. Appellants argue that the Examiner’s rejection over the earlier version of the claim (requiring 34.8 mole percent or less or a 1,1,2 trisubstituted monomer) is moot. Id. The Examiner finds that the Specification lacks written description of the recited amount of trisubstituted isomer. Ans. 14. As the Examiner explains, the lower range recited in the claim, “about 15 mole percent,” appears in the Specification only in reference to the Background of the Invention, discussing prior art patents. Id. (citing Spec. 5,11. 1—6). 16 Appeal 2016-004556 Application 12/932,837 In response, Appellants contend that one of ordinary skill in the art would understand that the mid-range vinylidene content and highly reactive PIB products of the invention find support on page 13, lines 12—17 of the Specification. Reply Br. 6—7. However, page 13 of the Specification merely provides that the invention is generally applicable to known PIB reactors and processes. Spec. 13,11. 13—17 (“[t]he concepts and principles of the invention described herein are generally applicable in connection with each of the various PIB reactors and PIB production processes illustrated in the ‘913, ‘999, ‘152 and ‘401 patents discussed above, and should be applicable in connection with all reactors and reactor systems that are used for the production of highly reactive and/or mid-range vinylidene content PIB polymer products using liquid phase polymerization procedures.”). Accordingly, we sustain the Examiner’s rejection of claim 35 as lacking written description. DECISION For the above reasons, the Examiner’s rejections of independent claim 1 and dependent claims 2—7, 27, 29—33, and independent claim 12 and dependent claims 12—15 and 35 are affirmed. The Examiner’s rejections of independent claim 18 and dependent claim 28, as well as independent claim 34 and dependent claim 36, are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2013). AFFIRMED-IN-PART 17 Copy with citationCopy as parenthetical citation