Friday, March 25, 2011

BPAI finds that expansive definition of "functional polymer" in spec applies to claim term "polymeric compound" having same root


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.

Details:
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 comprising
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.
The limitation at issue was the "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" ?

11 comments:

  1. Classic dust kicking by appellant. The idea that you can add the term "compound" after the word "polymer" (which is defined extensively in the spec) to avoid having the prior art read on your claimed polymer is nonsensical. "Oh, well you see your honors, we're not claiming a polymer like what we defined, we're claiming a polymer compound. Big difference."

    Orly? The allegedly distinguishing feature of your claim, polymer "compound" vs. polymer, is so special that you didn't even bother to define, or even disclose, let alone mention, it in your spec?

    This is sh!tty advocacy. This kind of garbage appeal does nothing but raise the examining corps' "affirmance" rate. Stop taking dog crap cases like this to appeal. Please. You're making us competent practitioners look bad.

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  2. A great case to demonstrate when a 112 1st WD rejection solves the issue post haste. If the originally filed app didn't even say anything about a polymeric compound then how the sam he ll did they have WD support for it? Were there examples of such?

    I also agree with the attorney above me.

    What is especially funny about this case though is that 102b's are very likely easy to google up in 5 seconds, and I know dam well I can google a polymer compound secondary reference like is needed for this combo. Indeed, I may have a ref sitting somewhere here in the office.

    I probably would not have made the 103 if that was the best secondary available. Even though the applicant bashed in his own brains with a special definition there is no reason not to just go ahead and humor the applicant with a polymer compound reference. Other than to make fun of him I suppose, which may have been the aim in this case lol.

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  3. Oh look, even the wiki cites several very likely combinable secondary's.

    http://en.wikipedia.org/wiki/Polymer_solar_cell

    Looks like some go back to 1992, but here's a gem:

    „Plastic Solar Cells“ Christoph J. Brabec, N. Serdar Sariciftci, Jan Kees Hummelen, Advanced Functional Materials, Vol. 11 No: 1, pp. 15–26 (2001)

    From public pair it appears as though the FD is 2005 and I don't see any FP. Presuming the date we need to beat is 2005, there's a good ref. Looking at the rejection it appears the latest ref used was 2001. So perhaps we need a 2001 reference. Here's a great ref that links to a sht ton of references with good dates.

    A. Mayer, S. Scully, B. Hardin, M. Rowell, M. McGehee, Polymer-based solar cells, Materials Today 10, (2007) 28

    And wallah, a perfect reference;

    http://apl.aip.org/resource/1/applab/v77/i17/p2635_s1

    Note also that the ref above leads off by telling us that there were conventional polymer solar cells prior to that writing and it cites refs for that.

    Ding ding ding, that'll be the dinner bell, I think we've having cooked claims tonight.

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  4. "Ding ding ding, that'll be the dinner bell, I think we've having cooked claims tonight."

    What does it say about the examining corp when the examiner cannot find the best reference when it is so easy to find????

    A good examiner cites the best reference in the first office action -- this leads to quicker abandonments, which saves applicants money and reduces backlog at the USPTO.

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  5. "What does it say about the examining corp when the examiner cannot find the best reference when it is so easy to find????"

    It says that 1. I'm the man. You might even say that's all it says. Be clear, what I just did might not be so easy for the avg tard. You just got the benefit of like 20 years 'net searching and 4 years of learning how to dig through the NPL for what I want. Sure, I make it look easy.

    But if you really think there's more then: 2. that examiners in whatever art this app got dropped into probably don't know sht 'bout NPL on polymer based solar cells. To be fair, there's probably a handfull of people in my art who are likewise as ignorant. Others wouldn't be able to backwards cite well enough to do what I just did.

    And it might say 3. that the wiki probably wasn't in such good shape back 3 years ago and I cheated somewhat by using it. Although, with the right search string I would have had the right ref on first google anyway.

    Oh and it also says 4. the attorneytard and the applicanttard are probably being pretty disingenuous if they didn't know jack about any written publications dealing with polymer based solar cells prior to just happening to putting one on this other device. Not to worry though, if the claim issued someone would IC them right?

    Finally I note that finding those references back in 2001-3 may not have been anywhere near easy. Many of those journals probably did not have a robust online presence until around 2005-07.

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  6. "From public pair it appears as though the FD is 2005 and I don't see any FP."

    You must not have looked very hard. The app was clearly the national phase of a PCT claiming priority to an August, 2002 German application.

    "Presuming the date we need to beat is 2005, there's a good ref."

    The date you need to beat is August, 2002. And that "good ref" you cited was applicant's own prior published paper.

    "Here's a great ref that links to a sht ton of references with good dates.

    A. Mayer, S. Scully, B. Hardin, M. Rowell, M. McGehee, Polymer-based solar cells, Materials Today 10, (2007) 28

    And wallah, a perfect reference;

    http://apl.aip.org/resource/1/applab/v77/i17/p2635_s1"

    The 2007 reference is clearly no good. I didn't see anything in the list of references from that link that were knock outs.

    I would say "nice try" except that it clearly wasn't.

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  7. "The 2007 reference is clearly no good."

    Obviously, but thanks for spurring me to learn how to use pair a little better. I never really use it.

    "I didn't see anything in the list of references from that link that were knock outs."

    Oh really? Did you bother to read the references? Did you bother to look up the references that don't have their titles mentioned? Or did you just peruse like a brainless tardface? The later? Oh, who'd a thunk it?

    You clearly did not look at the one you just linked.

    "http://apl.aip.org/resource/1/applab/v77/i17/p2635_s1"

    All we need is a combinable secondary reference showing a solar cell made of a polymer compound tardface. He already has a primary reference.

    "a primary reference that taught the chip card and a solar cell (energy converter);"

    Of course you'd say it was a nice try, after you actually bother yourself to read the references which I claimed were particularly good. Tard.

    And just btw, after taking a quick look I can assure you that the ref's are combinable and there is sufficient motivation for an old school TSM.

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  8. I just realized, perhaps JD tard above thinks that this reference

    http://apl.aip.org/resource/1/applab/v77/i17/p2635_s1

    is dated from 2007 rather than 2000.

    Check it tard.

    Appl. Phys. Lett. 77, 2635 (2000); doi:10.1063/1.1320022 (3 pages)

    Efficient photovoltaic cells from semiconducting polymer heterojunctions

    The opening line:

    Conventional single-layer Schottky barrier and two-layer heterojunction photovoltaic cells from conjugated polymers generally have poor photon-to-current conversion efficiencies.1,2

    Here are 1 and 2

    H. Antoniadis, B. R. Hsieh, M. A. Abkowitz, S. A. Jenekhe, and M. Stolka, Synth. Met. 62, 265 (1994). [Inspec] [ISI] first citation in article

    K. Tada, M. Onoda, A. A. Zakhidov, and K. Yoshino, Jpn. J. Appl. Phys., Part 2 36, L306 (1997). [ISI] first citation in article

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  9. "And just btw, after taking a quick look I can assure you..."

    Lulz. Your assurances are worth about as much as your legal opinion.

    ReplyDelete
  10. "Lulz. Your assurances are worth about as much as your legal opinion. "

    And your lulz are about as justified as your st upidity.

    ReplyDelete
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    ReplyDelete