Tuesday, March 05, 2013

Wolfgang Ebert comes up short at the Board

Wolfgang Ebert is the first named inventor in Ex parte Bayer MATERIALSCIENCE AG in a Board decision written by FRED E. McKELVEY, with Donna Praiss on the panel.

A claim included the text:

A process for purifying polycarbonate comprising

[1] obtaining molten polycarbonate having a weight average
molecular weight of 14,000 to 30,000 g/mol and
[2] filtering said polycarbonate through at least one non-woven
metal structure under a pressure of from 5 to 35 bar to obtain

Footnote 3 noted: The 5-35 bar pressure limitation initially appeared in original dependent
Claim 7. It has now been added to independent Claims 1 and 11. The Examiner’s
reference in the Answer (page 5) to Claim 7 is to original Claim 7.

Of applicants' attempted distinction over the art:

We find it difficult to believe that one skilled in the art would have been incapable of
determining an appropriate pressure to achieve the purity sought by Kawasaki and
Takayoshi.5 Both Kawasaki and Takayoshi, using a suitable albeit undescribed
pressure, nevertheless describe passing polycarbonate through a filter.

Of the need for claimed ranges to be commensurate:

2 Moreover, a showing of unexpected results must be commensurate scope with a
claimed range. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“[T]he record
does not show that the improved performance would result if the weight
percentages were varied within the claimed ranges. Even assuming that the results
were unexpected, Harris needed to show results covering the scope of the claimed


We also will observe in the event of future prosecution that the data in the
Specification based on a pressure of 20-25 bar is not commensurate in scope with
the claimed range of 5-30 bar. In re Harris, 409 F.3d at 1344.

[IPBiz query: 30? or is it 35 bar???]

Bottom line:

Upon consideration of the appeal, and for the reasons given herein, it is
12 ORDERED that the decision of the Examiner rejecting the claims on
13 appeal § 103 over the prior art is affirmed.


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