Ex Parte OOI et al

Patent Trial and Appeal BoardNov 5, 2012

12212243 (P.T.A.B. Nov. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TAKASHI OOI and DAISUKE URAGUCHI ____________ Appeal 2011-010950 Application 12/212,243 Technology Center 1600 ____________ Before DONALD E. ADAMS, LORA M. GREEN, and FRANCISCO C. PRATS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1-6 (App. Br. 2; Ans. 2). 1 We have jurisdiction under 35 U.S.C. § 6(b). 1 Pending claims 7 and 8 stand “withdrawn as directed to non-elected subject matter” (App. Br. 2; Ans. 2). Appeal 2011-010950 Application 12/212,243 2 STATEMENT OF THE CASE The claims are directed to a chiral tetraaminophosphonium salt having a defined general formula. Claim 1 is representative and is reproduced below: 1. A chiral tetraaminophosphonium salt represented by the general formula (1): wherein R 1 to R 4 are independently a hydrogen atom or a monovalent hydrocarbon group; and, R 1 and R 2 are different groups or R 3 and R 4 are different groups, and wherein X - is a monovalent or polyvalent anion. Claims 1-6 stand rejected under 35 U.S.C. § 112, second paragraph. We reverse. ISSUE Is the term “X - ,” as set forth in Appellants‟ claimed invention, indefinite when read in light of Appellants‟ Specification? FACTUAL FINDINGS (FF) FF 1. Appellants disclose that “[i]n the general formula (1), there are no particular restrictions on the type or valence of X - counter-ion. X - may be a conventionally monovalent or polyvalent anion” (Spec. 8: 1-3). Appeal 2011-010950 Application 12/212,243 3 ANALYSIS Examiner asserts that “[t]he phrase „X - is a monovalent or polyvalent anion‟ … makes the claims unclear as to how the variable „X - ‟ shown in the general formula (1) can be a polyvalent anion when said variable is limited to a charge of -1” (Ans. 3). We are not persuaded. “The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification.” Miles Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993). Appellants‟ Specification clearly defines the term “X - ” as encompassing monovalent or polyvalent anions (FF 1; Cf. App. Br. 4 (“[t]he present specification clearly describes that the kind and valence of „X - ‟ are not limited”)). Therefore we are not persuaded by Examiner‟s assertion that Appellants‟ “[S]pecification does not contain language defining … the mark „-‟ does not represent the valence of the anion in formula (1)” (Ans. 5). CONCLUSION OF LAW The evidence of record fails to support Examiner‟s rejection of claims 1-6 stand rejected under 35 U.S.C. § 112, second paragraph. Therefore, the rejection of record is reversed. REVERSED cdc