Takeaway: In Ex parte Brabec, the Examiner interpreted the claim term "polymeric compound" broadly to include a small number of repeating units. The Applicant argued that the ordinary meaning of polymer required a large number of molecules. However, the claim term "polymeric compound" was not present in the spec, and the spec did include an expansive definition of "polymer." This definition said the term "polymer" was “not intended to be subject to any limitation with respect to molecular size." The Board found that the spec's expansive definition of "polymer" also applied to the claim term "polymeric unit" and thus affirmed the obviousness rejection.
Ex parte Brabec
Appeal 2009008774; Application 10/522,862; Tech. Center 1700
Decided July 28, 2010
The application involved an integrated circuit card having an integrated energy supply, such as a solar cell. Cards of this type are often used for a security cards or "smart" credit cards.
The claim on appeal read:
1. A chip card comprisingThe limitation at issue was the "photovoltaically active polymeric compound."
an energy converter that occupies either a portion or an entire surface area of the chip card, so that an energy supply of the chip card is integratedly present thereon,
wherein the energy converter comprises a photovoltaically active polymeric compound.
In a final Office Action, the Examiner rejected claim 1 as obvious over two references: a primary reference that taught the chip card and a solar cell (energy converter); and a secondary reference that disclosed a solar cell which used metal-free phthalocyanine as a photovoltaically active compound.
In response, the Applicant argued that the Examiner's reliance on metal-free phthalocyanine was misplaced, since metal-free phthalocyanine was not a "polymeric compound." Specifically, the Applicant argued that "it is well known in the art that a polymeric compound is a molecule containing a large number of monomeric repeat units," whereas phthalocyanine is monomeric compound.
In an Advisory Action, the Examiner noted that the Applicant's position -- a polymeric compound is a molecule containing a large number of monomeric repeat units -- is inconsistent with the expansive definition of polymer in the Applicant's specification:
The terms polymer, organic material, and functional polymer are not intended to be subject to any limitation with respect to molecular size, particularly to polymeric and/or oligomeric materials, but instead the use of 'small molecules' is completely feasible as well.
Using the Applicant's own definition, the phthalocyanine compound in Loutfy met the claim limitation, since it was a "small molecule" with repeating units.
The Advisory Action also offered a dictionary definition of "polymer" as "a chemical compound or mixture of compounds formed by polymerization and consisting essentially of repeating structural units." Phthalocyanine was made of repeating structural units and so was a polymer under this definition too.
In the Appeal Brief, the Applicant acknowledged the expansive definition of "polymer" in the specification, but noted that the claim limitation used the term "polymeric compound" rather "polymer." Thus, the expansive definition did not apply. Furthermore, because the specification did not provide a special definition for "polymeric compound," the term took on its ordinary meaning.
The ordinary and accustomed meaning of the term "polymeric compound" is a molecule containing a relatively large number of monomeric repeat units. This meaning is consistent with the specification.
The Applicant then asserted that the phthalocyanine compound disclosed in the reference was an oligomeric compound, defined as "a few repeating units," rather than a polymeric compound. Finally, the Applicant argued that the specification's use of the claim term "polymeric compound" actually excluded oligomeric compounds.
Indeed, given that the specification recites both "polymeric materials" and "oligomeric materials," one skilled in the art could readily understand that a polymeric material is different from and has a larger molecular size than an "oligomeric material." Thus, one skilled in the art could recognize that Appellant's intention for reciting the term "a polymeric compound" in claims 1 and 9, rather than the terms "polymer," "organic material," and "functional polymer'' defined in the specification, is to exclude oligomeric materials or small molecules from these two claims.
In the Examiner's Answer, the Examiner explained that the specification did not actually define the claim term "polymeric compound" yet expressed the Applicant's intention of not limiting the molecule size of a "polymer." Therefore, the Examiner interpreted "polymeric compound" as having "any number of repeating monomeric structure and can be small molecules as well." The compound disclosed in the reference, with a structure of four repeated monomers, met this definition.
On appeal, the BPAI agreed with the Examiner's claim construction, and thus affirmed the rejection. The Board first noted that the claim term "polymeric compound" was not even present in the specification or originally filed claims.
The closest term appears to be in the sentence, “Due to the ability to make a polymer solar cell out of photovoltaically active dyes/functional polymers, a chip card can be printed and inscribed with a polymer solar cell instead of printing ink.” (Spec. 2, 4th full para.; emphasis added.) This sentence, by itself, does not illuminate the meaning of the critical term used in claim 1.
To ascertain the meaning of the claim term, the Board then turned to the spec's expansive definition of "polymer," characterizing this as the "critical disclosure." (Definition reproduced above in discussion of Advisory Action.)
The Board then rejected the Applicant's reliance on ordinary meaning, and found instead that the spec's expansive definition of "polymer" also applied to the claim term "polymeric compound."
We do not find persuasive Brabec’s attempt to dissociate the term “polymeric compound” from the broad definition given by the supporting 862 Specification to the root term “polymer.” The only express exclusions from the term “polymer” are conventional semiconductors and “typical metallic conductors.” The 862 Specification, in the passage quoted supra, expressly includes “small molecules” and “oligomers” as being within the scope of the terms “polymer solar cell” and “functional polymer.”
The only requirement is that the “organic material” be photovoltaically active.
We therefore reject Brabec’s claim interpretation as being inconsistent with the originally filed specification. ...
Had the Examiner read the claims in a vacuum, without benefit of the teachings of the 862 Specification, we have no doubt that the Examiner would not have interpreted the “photovoltaically active polymeric component” recited in claim 1 as encompassing a small molecule made from four monomers. Such an interpretation, however congruent with “common understanding,” would have been legal error, as it would have ignored the teachings of the 862 Specification.
My two cents: Since I don't practice in the chemical arts, my opinion isn't worth two cents. Maybe half a cent. Even so, this case is mostly about definitions, so the reasoning is probably relevant to any case where the Applicant defines one term and uses a different term in the claim.
The Applicant's expansive definition of one term – not used in the claims but related to a claim term – seems to have infected the meaning of another term actually used in the claims. I don't know enough about chemistry to agree or disagree with the specific outcome of this case, but the Board's basic claim construction rationale – looking to the express definition of one term when a similar term is not even present in the spec – seems reasonable.
I see this as a good case study on the pitfalls involved when you try to write a definition. Because I found the spec paragraph which the Board relied on as a "definition" to be ambiguous.
The terms "polymer" in "polymer solar cell," "organic material," and "functional polymer" herein encompass all types of organic, metalorganic and/or organic/inorganic synthetics and composites (hybrids) that are photovoltaically active. They signify, for example, all those denoted in English by terms such as "plastics." This includes all types of materials except for the semiconductors that form conventional diodes (germanium, silicon) and typical metallic conductors. Hence, there is no intended limitation in the dogmatic sense to organic material as carbon-containing material, but rather, the broadest use of silicones, for example, is also contemplated. Furthermore, the terms are not intended to be subject to any limitation with respect to molecular size, particularly to polymeric and/or oligomeric materials, but instead the use of "small molecules" is completely feasible as well. The word "polymer" in "functional polymer" is historically derived and makes no statement as to the presence of any actual polymeric compound. "Functional polymers" can mean semiconducting, conducting and/or insulating materials.
Does this passage really define "polymer" as the Board implied? Or does it define only the three more specific terms "polymer solar cell," "organic material," and "functional polymer?" And does it even define those terms?
To me, the passage does define "functional polymer." But I'm not so sure about "polymer solar cell" and "organic material." Note that "organic material" doesn't even contain the word "polymer." So what do we make of this sentence:
The terms "polymer" in "polymer solar cell," "organic material," and "functional polymer" herein encompass ...Does this discrepancy mean the passage fails as a definition for "organic material" but nonetheless succeeds as a definition for "functional polymer" ?