Ex Parte Menschig et al

Patent Trial and Appeal Board

Jun 16, 2017

12932837 (P.T.A.B. Jun. 16, 2017)

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.
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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
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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;
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(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.
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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
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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
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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
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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
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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).
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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
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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
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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.
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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
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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,
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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).
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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
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