Application of Moore

• Decision Date: 01 April 1971
• Docket Number: Patent Appeal No. 8428.
• Citation: 169 USPQ 236,439 F.2d 1232
• Parties: Application of Robert E. MOORE and Edward J. Janoski.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

169 USPQ 236, 439 F.2d 1232 (1971)

Application of Robert E. MOORE and Edward J. Janoski.

Patent Appeal No. 8428.

United States Court of Customs and Patent Appeals.

April 1, 1971.

Barry A. Bisson, Wilmington, Del., attorney of record, for appellants.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Joseph F. Nakamura, Washington, D. C., of counsel.

Before RICH, ALMOND, BALDWIN, and LANE, Judges, and DURFEE, Judge, United States Court of Claims, sitting by designation.

BALDWIN, Judge.

The sole issue in this appeal is whether the Patent Office Board of Appeals was correct in affirming the rejection of claims 1-7 in appellants' application¹ as failing to comply with the requirements of 35 U.S.C. § 112. Five other claims were allowed.

THE INVENTION

The subject matter of the appealed claims involves products which are obtained when hydrocarbon compounds of the following nature are fluorinated:

The two-dimensional drawing shown above is supposed to represent a highly complex, three-dimensional compound referred to as an alkyladamantane. According to appellants' specification, the carbon atoms of the basic adamantane nucleus are "arranged in a completely symmetrical, strainless manner such that four of the carbon atoms occupy bridgehead positions." This arrangement, and the fact that dehydrogenation cannot occur because of the bridgehead carbon atoms, produces a "highly stable hydrocarbon." The specification goes on to teach that when "these alkyladamantanes are subjected to fluorinating conditions effective to result in a degree of fluorination which is at least 75% of that corresponding to perfluorination," there results a highly fluorinated product with some very desirable properties.

The rejected claims fall into two groups. Claims 1 and 2 make up the first group, of which claim 1 is illustrative:

1. As a composition of matter, a mixture of highly fluorinated alkyladamantanes prepared by fluorinating an alkyladamantane

selected from the group consisting of 1, 3-dimethyladamantane, 1, 3, 5-trimethyladamantane, 1-ethyladamantane, 1-ethyl-3-methyladamantane and 1-ethyl-3, 5-dimethyladamantane,

and in which the degree of fluorination is at least 75% of that corresponding to perfluorination of said alkyladamantane.

Claims 3-7 are directed to compositions formed from specific alkyladamantanes. Claim 3 is illustrative:

3. As a composition of matter, highly fluorinated 1-ethyladamantane containing at least 15 fluorine atoms per molecule.

The allowed claims are directed to perfluorinated compositions, i. e., wherein all available hydrogens are replaced by fluorine atoms. No references have been relied on.

THE REJECTION

It appears from the record that while appellants' claims were consistently rejected under 35 U.S.C. § 112, the specific grounds for so rejecting were not fully articulated until the examiner's Answer to appellants' brief before the Board of Appeals. With respect to claims 1 and 2, the examiner there took the position that the recitation therein of "a mixture of highly fluorinated alkyladamantanes prepared by fluorinating an alkyladamantane" rendered those claims product-by-process claims. He went on to hold that, as such, the claims were indefinite since in the absence of a recitation of specific process limitations "it is not clear which products are produced" or "whether a given fluorination process will preferentially substitute the ring, chain or bridgehead carbon atoms".

As to claims 3-7, which employ the language "highly fluorinated" to modify the particular alkyladamantane recited, the examiner stated first that he was unsure "whether a regular generic product or product-by-process claim is intended." He then went on to indicate that if these claims were to be regarded as product-by-process claims he would hold them indefinite on the same grounds applied to claims 1 and 2. These grounds he later summarized as "there are insufficient process limitations to define the product produced by said process." If, on the other hand, the claims were intended to be "regular generic product" claims, the following alternative ground of rejection was set forth:

there is no evidence that any particular product within the scope of the claims can be prepared at will nor is there any disclosure of a single species. Thus there is no support for a claim generic to all conceivable species when only certain mixtures can be prepared.

Again, in response to certain of appellants' arguments, the examiner later expanded on this reasoning as follows:

in order for the disclosure to properly support these claims it must be evident that all individual isomers covered can be prepared. The present record does not make this evident. Even assuming that random fluorination occurs, the genus is readable on compounds which are not randomly fluorinated, e. g. those which have no fluorine on the alkyl groups, with all of the fluorine on the rings and bridgehead. Thus, it is clear that these unsymmetrically fluorinated products cannot be prepared by random fluorination, yet they are encompassed by the claims. Emphasis quoted.

It seems indisputable that the examiner's reasoning in support of the rejection before us, as finally articulated, set forth two separate grounds for rejection. The first was that all of the claims, when viewed as product-by-process claims, are lacking in definiteness as required by the second paragraph of 35 U.S.C. § 112. The second, applicable only to claims 3-7 and clearly alternative rather than cumulative to the first ground, was that, if these claims were viewed as being drawn to generic product coverage, they would not be supported by an adequate enabling disclosure as required by the first paragraph of § 112.

The Board of Appeals found "no reversible error in the rejection of the claims under 35 U.S.C. § 112." However, for whatever reasons they saw fit, the board chose only to treat the question of the claims' definiteness, stating:

We view the claims before us as drawn too incomplete and therefore indefinite product-by-process claims in the language "highly fluorinated alkyladamantanes prepared by * * *" (claims 1-2) and "highly fluorinated" (claims 3-7). It is our view that the omission from the claims of process parameters, requisite to yield the desired fluorinated alkyladamantanes, renders the claims indefinite. It is too well-known in the art to belabor, that fluorination reactions broadly would yield not only the desired fluorinated alkyladamantanes but also as presented, undesired fluorinated degradation products of the alkyladamantanes.

With respect to Claims 3 through 7, we find the additional infirmity that while the language of each of these claims seems to be directed to a single compound, Claims 3 through 7 cover, in fact, any one or a mixture of more than one compound. If generic coverage was intended, appropriate definite generic claim language was available and no need is seen for resort to ambiguous claim terminology.

OPINION

The solicitor has not aided us in resolving the status of the issues on appeal, stating at one point in his brief that "an issue before the Court" is the correctness of the holdings by the examiner and the board that the claims are indefinite, and later on in his argument that the claims ...