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PTAB: “Derived From the Reaction Product of …” Closed to Unrecited Reactants

November 29, 2021by Beau Burton

In Ex parte Talamoni (Appeal No. 2020-006553), the Patent Trial and Appeal Board (“Board”) rejected an Examiner’s claim construction overriding the phrase “derived from the reaction product of” with “comprising.”

The independent claim on appeal read:

A composition comprising an acrylic adhesive derived from the reaction product of

(a) an acrylic ester of monohydric alcohol having an alkyl group of the 5 to 10 carbon atoms; and

(b) a nonpolar acrylic monomer having a solubility of less than 9.2 as measured by the Fedors method using a homopolymer of the nonpolar acrylic monomer,

wherein the reaction product has a side chain crystallinity.

The Examiner rejected the claim as anticipated by or, in the alternative, obvious in view of a reference that disclosed a terpolymer produced from monomers (a) and (b) and 0.5–5 wt% of a monomer (c) (a monoolefinically unsaturated ketone). The Examiner argued the “side chain crystallinity” although not disclosed would be present in view of In re Spada (i.e., “[w]hen the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not”). The Board disagreed.

At the outset, the Board found that the phrase “derived from the reaction product of” monomers (a) and (b) would be understood by those of skill in the art to exclude the terpolymer of the prior art derived from monomers (a), (b), and (c). The Board did agree that the use of “comprising” in the preamble opened the claim up to additional unrecited ingredients such as tackifiers but it did not override or expand the requirement for a reaction product obtained from the two monomers (a) and (b). Accordingly, the Board reversed the anticipation rejection.

As for obviousness, the Board found that the prior art taught away from omitting monomer (c) since it taught the monomer (c) provided the terpolymer with stability and stated, “if the amount of monomer (c) is less than 0.5 mass %, an insufficient effect is produced by the addition.” With no reason for why a person of ordinary skill in the art would have been motivated to omit monomer (c) from the prior art, the Board reversed the obviousness rejection.

Finally, the Board emphasized that the Examiner was not entitled to rely on the presumption from Spada because Appellant’s claim did not cover a reaction mixture containing monomer (c) and the breadth of monomer (c) in terms of the amount and potential species was too broad to conclude that the prior art’s terpolymer was substantially identical to the claimed copolymer of monomers (a) and (b).

Takeaway: In re Talamoni is notable for two reasons. First, the Board found the phrase “derived from the reaction product of … (a) … and (b)” to be closed. While savvy US applicants are accustomed to “comprising” and “consisting of,” phrases like this tend to be more common in applications originating outside the US. Accordingly, it is a good practice to replace uncommon transitional phrases with the corresponding US equivalent (e.g., comprising, consisting essentially of, or consisting of) to limit these types of disputes. And second, the Board correctly found that use of the transitional phrase “comprising” in the preamble did not render the following transitional phrase obsolete. Unfortunately, this type of interpretation before an Examiner is not uncommon, but it is promising to see the Board consistently reaching the correct conclusion. See, e.g., https://www.elementiplaw.com/comprising-is-not-a-weasel-word/ (PTAB rejecting an Examiner’s attempt to construe “comprising … a single odorant chamber” to allow for a plurality of chambers).

Judges: G. Best, N. Wilson, M. Cashion, Jr.

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Broad Interpretation of Claims Must be Reasonable

November 12, 2021by Matthew Barnet

During patent prosecution in the U.S., claims are given their broadest reasonable interpretation consistent with the specification. Ex parte Adel (Appeal No. 2020-006165) is a recent case in which the Patent Trial and Appeal Board (“Board”) found an examiner’s broad interpretation to be unreasonable.

Independent claim 1 recited (in part):

A process for manufacturing an edible water-in-oil emulsion, comprising the steps of:

a) providing a water-phase;

b) providing a liquid oil;

c) providing a fat powder comprising hardstock fat;

d) providing a hardstock fat in liquid form;

e) mixing the fat powder comprising hardstock fat, the hardstock fat in liquid form, and the liquid oil to form an oil-slurry, wherein the hardstock fat in liquid form is completely liquid before contact with the fat powder; …

The examiner rejected the claims as obvious over a combination of references. In the examiner’s proposed combination, the hardstock fat in liquid form included a portion that had crystallized (i.e., solidified) before contacting the fat powder.

The appellant argued that the existence of the crystallized portion meant that the hardstock fat in liquid form was not completely liquid before contact with the fat powder, contrary to the requirement of claim 1.

The examiner took the position that the hardstock fat containing the crystallized portion nonetheless satisfied the claim limitation of being “completely liquid.” The examiner noted that the primary reference described the hardstock fat as being “pumpable,” and stated that “[i]t is well understood that pumpable refers to the ability to move or transfer fluids or liquids.” The examiner took the position that the hardstock fat containing the crystallized portion “successfully meets the claimed limitation of the hardstock fat in liquid form [being] completely liquid.”

The Board disagreed with the examiner. The Board found it “unreasonable to interpret the term ‘completely liquid’ as encompassing hardstock fats that have already undergone some amount of crystallization. A liquid that has already undergone some amount of crystallization is not ‘completely’ liquid.” The Board found that such an “interpretation renders the word ‘completely’ a nullity, and such interpretations are disfavored.” Accordingly, the Board reversed the obviousness rejection.

Takeaway: U.S. examiners sometimes interpret the claims in a broader way than applicants intend. In such situations, it might be possible to argue that an examiner’s interpretation is unreasonably broad, and thus improper. Since examiners are likely to consider their interpretations to be reasonable, however, such arguments might require a supporting declaration from a skilled artisan, or an appeal to the PTAB.

Judges: Wilson, Kennedy, Gupta

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PTO’s Claim Construction Cannot be Inconsistent with the Art

September 10, 2021by Beau Burton1

In Ex parte Johnson, the Patent Trial and Appeal Board (“Board”) rejected an Examiner’s construction of a claim term because it conflicted with the meaning given in other patents from analogous art. 

The claims on appeal in Johnson were drawn to a prosthetic heart valve including, inter alia, a “cloth-covered undulating rod-like wireform.” Appellant’s specification defined the term “wireform” as “an elongated rod-like structure formed into a continuous shape defining a circumference around a flow orifice for supporting flexible leaflets in the various prosthetic valves herein.”  See US 2017/0239044, ¶ [0041]. 

In rejecting the claims as anticipated by US 5,928,281 (“Huynh”), the Examiner relied on element 99 of Huynh, which is shown below and linked here for convenience: 

Applying the broadest, reasonable interpretation and relying on a dictionary published in 2020, the Examiner found that element 99 of Huynh was a rod-like wireform because it had “an elongated structure with a shape similar to a stick, wand, staff, or the like.”  

Appellant disagreed with the Examiner’s construction, arguing element 99 of Huynh referred to a cloth top edge of a stent assembly rather than an “undulating rod-like wireform formed into a continuous shape having alternating cusps and commissures around a periphery.” Appellant’s argument was supported by Huynh’s description of element 99 as an “upper surface 99 (see FIG. 1) of [the] stent” and Huynh’s use of the term “wireform” elsewhere to refer to a “wire” or “wire-like” structure. Appellant’s construction was also consistent with the description of “wireform” in two separate analogous references to mean a bent “wire” structure (US 6,539,984 B2, issued Apr. 1, 2003) and a bent, machined, or molded “wire-like” structure (US 7,871,435 B2, issued Jan. 18, 2011).  

Rejecting the Examiner’s construction as unreasonably broad, the Board noted: 

It is well settled that prior art references may be indicative of what all those skilled in the art generally believe a certain term means . . . [and] can often help to demonstrate how a disputed term is used by those skilled in the art. Accordingly, the PTO’s interpretation of claim terms should not be so broad that it conflicts with the meaning given to identical terms in other patents from analogous art. 

Relevant to the Board’s decision were the contemporaneous patents and even the prior art relied on in the rejection, all of which were consistent with Appellant’s specification and construction.  

With Huynh lacking the claimed cloth-covered undulating rod-like wireform, the Board reversed the anticipation rejection.  

Takeaway: While it can be difficult to rebut an Examiner’s unreasonably broad construction of a claim term when the specification does not define, or does not sufficiently define, the claim term in question, valuable rebuttal evidence may be found in contemporaneous publications. As shown in Johnson, the Board found the consistent usage of the claim term in three analogous publications (including the allegedly anticipating reference) trumped the Examiner’s construction based on a generic dictionary definition. This is not to say dictionaries are always a poor source of evidence, but dictionaries typically include multiple definitions and a general definition may not accurately reflect how the claim term is used in the relevant art.  

Judges: S. Staicovici, E. Brown, W. Capp 

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Obviousness Rejection Based on Unreasonably Broad Claim Interpretation Cannot Be Sustained

November 23, 2020by Yanhong Hu

A threshold issue for the Patent Trial and Appeal Board (“Board”) to resolve is often claim interpretation.  It is well-settled that claims must be “given their broadest reasonable interpretation consistent with the specification” during patent examination.  In Ex parte Awad (Appeal 2019-005866), the Board reversed the Examiner’s obviousness rejection because the Board found the rejection was based on an unreasonably broad claim interpretation when the relevant claim language was read in light of the specification.

Claim 1 was illustrative and was drawn to a flexible solar panel, which contained a polymer matrix and a plant extract completely incorporated in the polymer matrix and “being a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts.”

The Examiner rejected the claimed solar panel as obvious over Ochiai in view of Pavokovic and Yang.  In particular, the Examiner found Ochiai taught a solar panel containing a PVA matrix and a plant extract completely incorporated in the polymer matrix wherein the extract included green-colored chloroplasts.  The Examiner admitted Ochiai did not disclose that the plant extract was “a green-colored extract of B. vulgaris subsp. cicla.”  However, the Examiner found Pavokovic taught that betalains, such as those from B. vulgaris subsp. cicla, were useful as “natural pigments” in solar cells and found Yang taught that incorporating chlorophyll-containing plant extracts in a PVA polymer matrix stabilized the extracts against light- and oxygen-induced damage.

In response to Appellant’s arguments that betalains described in Pavokovic were “classified in two groups: red-violet betacyanins and yellow betaxanthins” and that Pavokovic did not teach “the usage of a green, chloroplast-containing extract of B. vulgaris subsp. [cicla] in a [dye-sensitized solar cell],” the Examiner argued he did not rely on Pavokovic “for teaching the entirety of the claimed plant extract,” instead, he relied on Pavokovic “only to teach that betalain extracts of B. vulgaris subsp. cicla are useful as natural pigments in solar cells to convert radiant energy into electric energy.”  The Examiner argued “Ochiai teaches a plant extract that is green and includes chloroplasts” and further argued “even if the betalains of B. vulgaris subsp. cicla are colors other than green, the final product created from the combination of the prior art references still contains a plant extract comprising the green-colored chlorophyll chloroplasts taught by Ochiai because these betalains are added to Ochiai’s plant-extract composition.”

Therefore, as noted by the Board, the Examiner interpreted the claim limitation of the plant extract “being a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts” to encompass any combination of plant extracts “as long as the final combination (a) is green-colored, (b) includes a B. vulgaris subsp. cicla extract, and (c) includes chloroplasts.”

The Board found such interpretation was broader than what was reasonable when the claim language was read in light of the specification.  Specifically, the Board noted that the specification stated that the field of the invention related “particularly to a flexible solar panel including an extract of chard (B. vulgaris subsp. cicla)” and that at no point did the specification discuss extracts from any plant other than B. vulgaris subsp. cicla.  The Board further found the specification specifically taught “a green colored extract of B. vulgaris subsp. cicla” and each of the working examples used an extract from B. vulgaris subsp. cicla, not from any other plant and not mixed with any other plant extract.

The Board thus concluded that, when the claim language was interpreted in light of the specification, the broadest reasonable interpretation of the claim limitation required “an extract from B. vulgaris subsp. cicla that itself is green-colored and also contains chloroplasts; i.e., the chloroplasts are derived from B. vulgaris subsp. cicla.”  The Board further explained “‘being’ in the quoted limitation is construed to mean ‘consisting of’: the plant extract consists of a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts.”  The Board explicitly pointed out that “[to] interpret the quoted limitation to encompass a mixture of plant extracts would be inconsistent with the specification’s disclosure.”

With the correct claim interpretation, the Board further found none of the cited references disclosed a green-colored extract from B. vulgaris subsp. cicla that included chloroplasts as required by the claim limitation.  Because the Board did not find the Examiner had shown the plant extract as required by the claim would have been obvious over the cited references or that the prior art would have provided a reason to use such an extract in the claimed solar panel, the Board reversed the obviousness rejection.

Takeaway:  U.S. examiners are required to give claims their broadest reasonable interpretation in light of the specification.  However, in practice, they sometimes fail to consider whether their “broadest” interpretation of the claim language is “reasonable in light of the specification.”  Therefore, it is advisable to scrutinize an Examiner’s claim interpretation especially when there is a complicated claim limitation that includes multiple sub-features.  As illustrated by Awad, examiners sometimes fail to recognize that sub-features are related, instead treating them separately. This approach can lead to unreasonably broad interpretations.

Judges:  E. B. Grimes, L. M. Gaudette, and L. Ren

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Examiners Must Construe Claim Terms in the Context of the Entire Disclosure

June 29, 2020by Yanhong Hu1

During patent examination, examiners must give claim terms “their broadest reasonable interpretation consistent with the specification.” MPEP 2111. The Patent Trial and Appeal Board (“Board”) emphasized the importance of correct application of the broadest reasonable interpretation standard in Ex parte Blum, reversing the examiner’s anticipation rejection because the examiner interpreted a key claim term in an unreasonably broad manner.

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