Ex Parte Augenstein

Board of Patent Appeals and Interferences

Aug 20, 2007

10138617 (B.P.A.I. Aug. 20, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DON C. AUGENSTEIN
__________

Appeal 2007-2235
Application 10/138,617
Technology Center 1700
__________

Decided: August 20, 2007
__________

Before DONALD E. ADAMS, ERIC GRIMES, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of removing biodegradable pollutants from contaminated gases. The
Examiner has rejected the claims as having new matter and being obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse the new matter
rejection and affirm the obviousness rejections.
Appeal 2007-2235
Application 10/138,617

BACKGROUND
“The combustion of fuels for energy, or burning of materials for
disposal results in contaminants in product gas that include oxides of
nitrogen, carbon monoxide, volatile organic compounds, and sulfur oxides”
(Specification 1). The Specification discloses “methods and apparatus for
removing polluting gases, including nitrogen oxides (NOx), carbon
monoxide, sulfur oxides (SOx) and volatile organic compounds . . . from a
gas stream, by passing the gas stream through a landfill biofiltration system”
(id. at 5).
“Biofiltration . . . refers to the venting and permeation of
contaminated air, vapors, or gases through a biologically active material
comprising microorganisms capable of metabolizing one or more of the
polluting gases” (id. at 6). Thus, “[t]he biofilter of the present invention is a
managed landfill, or alternately, waste dump . . . [that] may be at least about
1000 tons or more in mass” (id.). The contaminated gases are injected into
the landfill, for example, by a pressurized system of pipes (id. at 15). “The
important feature . . . for pollutant-contaminated gas introduction and
withdrawal is that it assure at minimum a gas residence and waste contact
time that is adequate for required pollutant bioremediation” (id.).
DISCUSSION
1. CLAIMS
Claims 1, 2, and 4-24 are pending and on appeal. All of the claims
stand rejected under 35 U.S.C. § 103, and claims 7-10, 20, and 21 also stand
rejected under 35 U.S.C. § 112, first paragraph.
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Appellant separates the claims rejected under § 103 into three groups
for argument: (1) claims 1, 2, 5, 14, and 22; (2) claims 7, 20, 21, and 24; and
(3) claim 18 (Br. 5).1 Claims 1, 7, and 18 are therefore representative of the
appealed rejections and read as follows:
1. A method for removing biodegradable gaseous pollutants
from contaminated gases, the method comprising:
permeating said contaminated gases into a 1000 ton or
more tonnage landfill waste mass, wherein said gaseous
pollutants comprise nitrogen oxides, including one or more of
nitrous oxide (N2O), nitric oxide (NO) and nitrogen dioxide
(NO2); and
maintaining said waste mass such that microorganisms
present in said waste mass biodegrade said gaseous pollutants
to substantially reduce said nitrogen oxides to N2.

7. A method for removing biodegradable gaseous pollutants
from contaminated gases, the method comprising:
permeating said contaminated gases into a landfill of at
least 1000 tons in landfill mass;
measuring oxygen consumption in said landfill;
providing an aqueous amendment to said landfill at a
volume of from 50 to 120 ml water per gram atomic weight of
oxygen consumed in the landfill; and
maintaining said landfill such that microorganisms
present in said landfill substantially reduce said gaseous
contaminants.

18. The method according to claim 7, wherein said landfill
comprises at least 40 hours detention time for said
contaminated gases.

Thus, claim 1 is directed to a method of removing biodegradable
gaseous pollutants from gases contaminated with nitrous oxide, nitric oxide,

1 Appeal Brief filed August 23, 2006.
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and/or nitrogen dioxide by permeating the gases into a landfill that is
maintained such that the microorganisms in the landfill substantially reduce
the nitrogen oxide pollutants to nitrogen gas.
Claim 7 is directed to a similar method but also requires measuring
oxygen consumption of the landfill and adding, for each gram atomic weight
of oxygen consumed by the landfill, 50 to 120 ml of water (or other
“aqueous amendment”).
Claim 18 limits the method of claim 7 to one in which the gases are
detained for at least 40 hours in the landfill.
2. PRIOR ART
The Examiner relies on the following references:
Pomeroy US 2,793,096 May 21, 1957
Kneer US 5,066,392 Nov. 19, 1991
Poulsen WO 94/09885 May 11, 1994
Apel US 5,795,751 Aug. 18, 1998
Bonnin US 5,858,768 Jan. 12, 1999
Hudgins US 6,024,513 Feb. 15, 2000
Breckenridge US 6,117,672 Sep. 12, 2000
Hater US 6,283,676 B1 Sep. 4, 2001

3. NEW MATTER
Claims 7-10, 20, and 21 stand rejected under 35 U.S.C. § 112, first
paragraph, as “contain[ing] subject matter which was not described in the
specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor(s), at the time the application was filed, had
possession of the claimed invention” (Answer 4).
The Examiner states that “the originally filed specification and claims
do not provide support for the . . . claim limitations that oxygen consumption
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is measured in the waste mass and the aqueous amendment is added based
on the oxygen consumed” (Answer 4). The Examiner urges that “[t]he
originally filed disclosure implies that the amount of water to be added has
been previously determined prior to performing the treatment process while
the instant claims reflect that the oxygen consumption is measured and the
amendment addition is adjusted according to the measurement performed
during the process” (id. at 4-5).
Appellant argues that original claim 7 and paragraphs 44 and 45 of the
Specification provide adequate support for the steps presently recited in
claim 7 (Br. 6). Specifically, Appellant urges that “[i]t is a key inventive
insight disclosed in this patent application that the amount of water that
should be provided is linked to the amount of oxygen consumed in the
landfill. The links of logic leading to this insight are disclosed in paragraphs
44 and 45” which disclose that “one can calculate a figure of about 60-200
grams of water that must be evaporated per gram-atom oxygen consumed to
dissipate the heat produced by the oxygen-consuming biodegradation
reactions” (id. at 7). Because original claim 7’s step of providing the landfill
with 50 to 120 ml of water per gram atomic weight of consumed oxygen
necessarily requires measuring the water and the oxygen, Appellant argues,
“there is clear implicit, and probably also inherent, support for measuring
oxygen consumption” (id. at 8).
“[T]he applicant must . . . convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention. The invention is, for purposes of the ‘written description’
inquiry, whatever is now claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d
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1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). However, “claimed
subject matter need not be described in haec verba in the specification in
order for that specification to satisfy the description requirement.” In re
Wright, 866 F.2d 422, 425, 9 USPQ2d 1649, 1651 (Fed. Cir. 1989).
We agree with the Examiner that the Specification does not disclose,
word-for-word, measuring oxygen consumption. However, the
Specification discloses that the heat generated by the landfill’s oxidative
processes “is most practically removed by adding . . . supplemental water or
aqueous liquid” (Specification 12, ¶ [44]). The Specification then discloses
that the heat generated by the landfill causes the landfill to lose, by
evaporation, “between 60 and 200 grams [of water] per gram-atom of
oxygen consumed. . . . The injection of gases and injection or presence of
water in the landfill is preferably at a level such as to achieve a temperature
of from about 70° to about 180° F . . . in the landfill cell” (id. at ¶ [45],
emphasis added).
Thus, the Specification discloses that water must be added to dissipate
heat generated by the landfill bioreactor system. The Specification also
discloses that oxygen consumption is a measure of how much water
evaporates from the system, and is therefore also a measure of how much
water must be added to the system to maintain a suitable temperature. To
follow the Specification’s direction and use oxygen consumption as a
measure of how much water to add, one must necessarily measure oxygen
consumption.
Given these facts, we do not agree with the Examiner that the
Specification failed to convey to one of ordinary skill that Appellant
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possessed a process having the steps of measuring the landfill’s oxygen
consumption and adding water based on the amount of oxygen consumption
measured. We therefore reverse the Examiner’s rejection of claims 7-10, 20,
and 21, based on 35 U.S.C. § 112, first paragraph.
4. OBVIOUSNESS -- CLAIMS 1, 2, 5, 7, 14, 18-22, and 24
Claims 1, 2, 5, 7, 14, 18-22, and 24 stand rejected under 35 U.S.C.
§ 103 as obvious in view of Hudgins, Kneer, and Apel (Answer 5-7).
The Examiner cites Hudgins as disclosing “a method of treating a
landfill of waste mass material so as to biodegrade material in the mass
through aerobic biodegradation. Air is injected through pipes . . . and the
landfill serves as a large bioreactor” (id. at 5). The Examiner concedes that
claim 1 differs from Hudgins “by reciting that contaminated gases including
nitrogen oxides are permeated through the mass such that microorganisms
present in the landfill biodegrade the gaseous pollutants to substantially
reduce the nitrogen oxides to N2” (id.).
The Examiner cites Kneer as disclosing that “it is known in the art to
employ a mass of organic waste that is subjected to biodegradation as a
biofilter for an exhaust gas” (id.). The Examiner cites Apel as disclosing “a
method for removing biodegradable gaseous pollutants from contaminated
gases that includes permeating the contaminated gases into a mass of waste
material wherein the waste mass is maintained such that microorganisms
present in the waste mass biodegrade the gaseous pollutants such that
nitrogen oxides are substantially reduced to N2” (id. at 5-6). The Examiner
concludes that one of ordinary skill viewing the combined teachings of the
references would have considered it obvious “to employ the landfill
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bioreactor of [Hudgins] for treating a contaminated gas stream for the known
and expected result of employing a bioreactor for treating biodegradable
waste as a biofiltration device as is suggested by the secondary references of
record” (id. at 6).
The Examiner acknowledges claim 1’s limitation that the landfill be at
least 1000 tons, but concludes that “in the absence of a showing of criticality
and/or unexpected results, it would have been obvious to one of ordinary
skill in the art to employ the landfill treatment method as suggested above to
any size or quantity of landfill mass while providing the required
biodegradation. . . [M]ere scaling up of a prior art process capable of being
scaled up, does not establish patentability in a claim to an old process so
scaled” (id.).
Appellant argues that “none of the cited references disclose or suggest
the element of biodegrading gaseous pollutants with a landfill” (Br. 11).
Appellant urges that “Hu[d]gins, Apel, and Kneer also do not provide a
suggestion or motivation to modify reference teachings to arrive at a method
of removing biodegradable gaseous pollutants comprising permeating
contaminated gases into a 1000+ ton landfill mass” (id. at 12; see also Reply
Br. 5).
We do not find this argument persuasive. Recently addressing the
issue of obviousness, the Supreme Court stated that the analysis under 35
U.S.C. § 103 “need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385,
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1396 (2007). The Court advised that “[a] person of ordinary skill is . . . a
person of ordinary creativity, not an automaton.” Id. at 1742, 82 USPQ2d at
1397.
In the instant case, Hudgins discloses that “aerobic biodegradation
processes, such as municipal waste composting, have demonstrated for years
that the biodegradable mass of MSW [municipal solid waste] can be
stabilized in a significantly shorter time than that required under anaerobic
conditions by adding air and moisture to the waste mass” (Hudgins, col. 3, ll.
31-35). Hudgins discloses that
aerobic biodegradation of MSW is achieved in-situ using the
present invention whereby the landfill itself serves as a large
bioreactor. By maintaining an aerobic environment,
indigenous, facultative bacteria consume oxygen and convert
the biodegradable mass of MSW to mostly carbon dioxide and
water, with a stabilized humus remaining.
(Id. at col. 3, ll. 41-46.)
Apel discloses that nitrogen oxides in polluted gases can be reduced to
nitrogen gas by a biofilter comprised of “a compost selected from organic
matter such as wood, leaves, grass clippings, or the like, or mixtures thereof.
The bed medium can further contain peat, clay, soil, wood chips, wood bark,
or the like, or mixtures thereof” (Apel, col. 2, l. 64 through col. 3, l. 1).
Thus, one of ordinary skill apprised by Hudgins that landfills contain
significant amounts of aerobically biodegradable organic compost material,
would have inferred from Apel that introducing nitrogen oxides into
Hudgins’ aerobically active landfill would result in their reduction to
nitrogen. We therefore agree with the Examiner that, in view of Hudgins
and Apel, one of ordinary skill would have considered it obvious to inject
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gases contaminated with nitrogen oxides into an aerobically operated landfill
so as to reduce the contaminants to nitrogen.
We note that none of Hudgins, Apel, or Kneer discloses using a
landfill at least 1000 tons in size to decontaminate nitrogen oxide-
contaminated gases. However, we agree with the Examiner that one of
ordinary skill, advised by Apel that an aerobically operated landfill such as
that of Hudgins would reduce nitrogen oxides to nitrogen, would have
considered it obvious to use a landfill of that size to perform the
decontamination. It is well settled that “mere scaling up of a prior art
process capable of being scaled up, if such were the case, would not
establish patentability in a claim to an old process so scaled.” In re
Rinehart, 531 F.2d 1048, 1053, 189 USPQ 143, 148 (CCPA 1976).
Appellant argues that because Apel discloses that a smaller biofilter
worked better than a large biofilter, Apel teaches away from scaling up the
nitrogen oxide decontamination process and using a landfill to
decontaminate nitrogen oxide-containing gases (Br. 12). Appellant also
argues that Apel teaches that “NO removal was improved by . . . adding
glucose, and that adding buffer was important as well. These . . . additions
are not likely to be feasible or economical with a landfill” (id.). Finally,
Appellant urges that “Kneer discloses that engineering problems become
much more serious with increasing volume of organic waste mass (col. 2,
lines 61-65), which also teaches against the use of a landfill” (id.). In view
of these teachings, Appellant argues, the references “do not provide a
reasonable expectation of success” (id.; see also Reply Br. 5).
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We are not persuaded by this argument. “A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Kahn, 441 F. 3d 977, 990, 78 USPQ2d 1329, 1338 (Fed.
Cir. 2006)).
We note that Apel discloses that a shorter (12 inch)
compost-containing biofilter is “more efficient” than a longer (36 inch)
biofilter with respect to nitrogen oxide removal (Apel, col. 6, ll. 41-58).
However, even the larger biofilter disclosed by Apel was capable of
“removing 94% of the NO in an influent gas stream containing 250 μl/l NO”
(id. at col. 6, ll. 45-46). Given this level of decontamination, we do not
agree that Apel would have discouraged one of ordinary skill from using
large scale compost-containing bodies, such as Hudgins’ landfill, to
decontaminate larger amounts of contaminated gases.
We also note that Apel added glucose and buffer to the biofilters in
certain experiments (id. at col. 7, ll. 1-54). However, Apel obtained similar
results in the absence of glucose (id. at col. 7, l. 65, through col. 8, l. 14)
(Nox removal in glucose-added experiments ranged from 70% to 99%; Nox
removal in no-glucose-added experiment ranged from 79% to 94%).
Therefore, a person of ordinary skill in the art would not have understood
Apel to teach that adding glucose was necessary for Nox decontamination.
Moreover, claim 1 does not require the landfill to degrade nitrogen
oxides at any particular level of efficiency. Rather, claim 1 requires only a
“substantial” reduction of the nitrogen oxides to nitrogen gas. We agree
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with the Examiner that one of ordinary skill, advised by Apel that
microorganisms in compost are capable of degrading nitrogen oxides to
nitrogen, would have reasonably expected that injecting nitrogen
oxide-containing gas into Hudgins’ compost-containing aerobic landfill
bioreactor would result in a substantial reduction of those oxides to nitrogen
gas.
We note that Kneer states that “the engineering problems of the
mechanical feeding and discharge and hence of the control of the forced
aeration become much more serious with increasing volume of the heap
which is to be degraded microbiologically” (Kneer, col. 2, ll. 61-65).
However, Hudgins clearly discloses that aerobic waste degradation can be
carried out advantageously on the scale of a municipal waste landfill (see
e.g., Hudgins, col. 2, ll. 34-50). Thus, one of ordinary skill viewing the
references in combination would have recognized the feasibility of high
volume aerobic waste degradation, despite the concerns raised by Kneer. It
is well settled that “[n]on-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed.
Cir. 1986).
Appellant argues that “[u]se of a landfill of 1000 or more tons, or any
size, is not mere scaling up but a new method involving use of a landfill,
which is typically preexisting and created for another purpose, to degrade
gaseous pollutants” (Br. 13). Appellant argues that “[m]oving from [Apel’s]
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carefully constructed device of 1.4 liters to a haphazardly filled preexisting
landfill of greater than 1000 tons is hardly mere scaling up” (Reply Br. 6).
We are not persuaded by this argument. Hudgins discloses that
injecting air into a landfill allows microorganisms to degrade the organic
compost in municipal solid waste (Hudgins, col. 1, l. 50 through col. 2, l.
21). Apel discloses that “a compost selected from organic matter such as
wood, leaves, grass clippings, or the like, or mixtures thereof” can
decontaminate a nitrogen oxide-contaminated gas stream (Apel, col. 2, l. 50
through col. 3, l. 1). Thus, the scaling up suggested by the references is not
moving from Apel’s device to a landfill, as argued by Appellant, but the
selection of a landfill having at least 1000 tons of waste mass. Because one
of ordinary skill viewing the cited references would have expected a
compost-containing landfill of at least 1000 tons to degrade a substantial
amount of the nitrogen oxides injected into it, we agree with the Examiner
that it would have been obvious to use a landfill of that size to process
nitrogen oxide-contaminated gases.
Appellant argues that landfills have various advantages over the
devices of Kneer and Apel: they are cheaper, and include a larger surface
area for the biological remediation and longer residence times (Br. 13).
Appellant concludes that even if the Examiner had made out a prima facie
case of obviousness, “the size and nature of a landfill is critical to the
invention, and provides unexpected advantages in degrading polluted gases
that are not suggested by the cited prior art” (id.).
We are not persuaded by this argument. “[I]t is well settled that
unexpected results must be established by factual evidence. ‘Mere argument
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or conclusory statements in the specification does not suffice.’” In re
Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997)
(quoting In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir.
1984)). Moreover, “when unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.” In re Baxter-Travenol Labs., 952 F.2d 388, 392, 21
USPQ2d 1281, 1285 (Fed. Cir. 1991). Also, “the objective evidence of
nonobviousness must be commensurate in scope with the claims.” In re
Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972).
In the instant case Appellant does not point to, and we do not see, any
factual evidence supporting the assertions of unexpected results. Nor does
Appellant provide any comparison between the claimed method and prior art
methods, such that the asserted advantages can be evaluated. Finally,
because claim 1 is not limited to the use of preexisting landfills, nor does it
recite a specific gas retention time, claim 1 is not commensurate in scope
with any of the advantages asserted by Appellant.
To summarize, we agree with the Examiner that one of ordinary skill
in the art viewing Hudgins, Kneer, and Apel would have considered it
obvious to reduce the nitrogen oxides in contaminated gases to nitrogen by
injecting the contaminated gases into a landfill of at least 1000 tons, and
maintaining the contaminated gases in the landfill until the nitrogen oxides
are reduced. We therefore affirm the Examiner’s obviousness rejection of
claim 1.
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Claims 2, 5, 14, and 22 were not argued separately from claim 1 (see
Br. 5). Claims 2, 5, 14, and 22 therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellant separately argues the patentability of claim 7 over Hudgins,
Kneer, and Apel (Br. 14-15). Claim 7 recites permeating gases
contaminated with biodegradable pollutants into a landfill of at least 1000
tons, measuring the oxygen consumption of the landfill, providing 50 to 120
ml of water for each gram atomic weight of oxygen consumed by the
landfill, and maintaining the landfill such that the microorganisms in the
landfill substantially reduce the gaseous contaminants.
Regarding claim 7, the Examiner states that Hudgins “discloses that
optimal moisture and temperatures are maintained within the bioreactor
device[,] that air and leachate are supplied in a controlled manner to achieve
optimum moisture content and temperatures[,] and that a plurality of
measurements including off-gas concentration and temperature are vital for
optimizing performance of the system” (Answer 7, citations omitted). The
Examiner concludes that one of ordinary skill in the art would have
considered it obvious “to measure parameters such as oxygen consumption
and temperature and control process conditions such as liquid amendment
feed to the bioreactor so as to optimize the reaction conditions within the
bioreactor so as to efficiently biodegrade the pollutants in the gas stream”
(id.).
Appellant argues that “none of the references discloses or suggests
measuring oxygen consumption in a landfill and providing an aqueous
amendment to said landfill at a volume of from 50 to 120 ml water per gram
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atomic weight of oxygen consumed in the landfill” (Br. 14). Appellant
urges that “[n]one of the references discloses or suggests the inventive
insight reflected in these claims that the amount of water that should be
provided is linked to the amount of oxygen consumed in biodegradation
reactions in the landfill” (id.). Appellant concludes that the Examiner’s
conclusory statement regarding measuring oxygen consumption “is far from
establishing any of the requirements for a prima facie case of obviousness”
(id.; see also Reply Br. 6-7).
We are not persuaded by this argument. Hudgins states that “[d]ata
collection is vital for optimizing the performance of the landfill and to
ensure its safe and efficient operation. Waste mass moisture content,
temperature and off-gas concentrations (volatile organic compounds, carbon
dioxide, oxygen, and methane) are measured . . .” (Hudgins, col. 6, ll. 21-25,
emphasis added). Hudgins also discloses that “if oxygen levels begin to
decline, air flow should be increased to maintain the rate of oxygen
consumption” (id. at col. 5, ll. 30-32). Because Hudgins discloses that
oxygen consumption is indicative of the overall performance of the landfill
bioreactor system, we agree with the Examiner that one of ordinary skill
would have considered it obvious to measure the system’s oxygen
consumption.
Hudgins also states that “[i]f temperatures of the waste mass begin to
increase, leachate application should be increased. If temperatures decrease,
oxygen levels should be increased by increasing air flow” (Hudgins, col. 5,
ll. 26-29). Thus, Hudgins also recognizes a relationship between
temperature, moisture, and oxygen consumption. For example, Hudgins
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discloses that “[t]he landfill’s aerobic operation is optimized by adjusting air
injection and leachate application rates so that the waste mass temperatures
remain stable preferably between approximately 120 degrees F. and
approximately 140 degrees F. after aerobic conditions have been
reached . . .” (id. at col. 6, ll. 57-62). Hudgins also discloses that “[t]arget
waste mass moisture is roughly 40%-60% by weight following the initial
saturation of the waste mass” (id. at col. 6, ll. 65-67).
In comparison, Appellant discloses that the landfill should be
maintained at “a temperature of from about 70° to about 180° F”
(Specification 12, ¶ 45) and “preferably maintained at moisture levels
between about 20% and about 60% moisture as a weight percentage of wet
waste (id. at 13, ¶ 46). Because Hudgins discloses using water to maintain
the same temperatures and moisture levels disclosed by Appellant as being
optimal in a landfill bioreactor, on the current record it appears that Hudgins
discloses adding water to the landfill at the same rate recited in claim 7.
“[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic relied
on.” In re Best, 562 F.2d 1252, 1254-1255, 195 USPQ 430, 433 (CCPA
1977) (quoting In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229
(CCPA 1971)). Appellant has not shown that the amount of water Hudgins
adds to the landfill bioreactor is different than the amount recited in claim 7.
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We therefore agree with the Examiner that the cited references would have
suggested the method of claim 7.
We therefore affirm the Examiner’s rejection of claim 7. Claims 19,
20, 21, and 24 fall with claim 7. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant separately argues claim 18 (Br. 15). Claim 18 recites that
the “landfill comprises at least 40 hours detention time for said contaminated
gases.” To meet this limitation the Examiner states that one of ordinary skill
would have considered it obvious to optimize the “retention time of the
contaminated gases as they pass through the landfill bioreactor based merely
on the size of the landfill, volume of gas to be treated and/or the amount of
contamination within the gas stream to be treated while minimizing the
release of contaminated gases to the external environment” (Answer 7).
Appellant argues that, “[a]t pages 10-11, paragraph 40, the
specification discloses that a 10-acre landfill 60 feet deep could make
available 40 hours detention time for the exhaust gas from a 1-Megawatt
electric engine” (Reply Br. 7). In contrast, Appellant argues, the Examiner
has not stated where any of the references discloses anything about detention
time, nor do the references provide “any disclosure of the importance of a
long detention time to biodegrade gaseous pollutants, nor any disclosure that
a landfill could be used to provide long detention times, nor any disclosure
or suggestion of the figure of at least 40 hours detention time as is recited in
claim 18” (id at 7-8.).
We are not persuaded by this argument. It is well settled that
determining the optimal value of a result-affecting variable is normally
obvious, unless the claimed process condition produces an unexpected
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result. See Pfizer Inc. v. Apotex Inc., 480 F.3d 1348, 1368-69, 82 USPQ2d
1321, 1335-36 (Fed. Cir. 2007). Moreover, as noted above, the analysis
under 35 U.S.C. § 103 “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82
USPQ2d 1385, 1396.
In our view, one of ordinary skill would have inferred from Apel and
Kneer that contacting the contaminated gases with the decontaminating
microorganisms for longer periods would result in removing increased
amounts of contaminant. Thus, one of ordinary skill, being a person of
ordinary creativity, would have recognized that the duration of contact
between the microorganisms and the contaminated gases was a
result-affecting parameter. We therefore agree with the Examiner that
determining an optimal time for retaining the polluted gases within Hudgins’
aerobic landfill would have been a matter of routine optimization on the part
of one of ordinary skill. Because Appellant has not shown that a 40 hour
detention time produces any unexpected result when compared to the prior
art, we also agree that the detention time recited in claim 18 would have
been obvious. We therefore affirm the Examiner’s rejection of claim 18
over Hudgins, Apel and Kneer.
5. OBVIOUSNESS -- CLAIMS 4, 6, 8-13, 15-17, and 23
Claims 4 and 23 stand rejected under 35 U.S.C. § 103 as obvious in
view of Hudgins, Kneer, Apel, and Pomeroy (Answer 8).
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Appeal 2007-2235
Application 10/138,617

Claim 6 stands rejected under 35 U.S.C. § 103 as obvious in view of
Hudgins, Kneer, Apel, and Breckenridge (id. at 8-9).
Claims 8-11 stand rejected under 35 U.S.C. § 103 as obvious in view
of Hudgins, Kneer, Apel, and Hater (id. at 9-10).
Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as obvious in
view of Hudgins, Kneer, Apel, and Poulsen (id. at 10).
Claims 15-17 stand rejected under 35 U.S.C. § 103 as obvious in view
of Hudgins, Kneer, Apel, and Bonnin (id. at 11).
Appellant states that these obviousness rejections “are not contested
herein in favor of allowing dependent claims 4, 6, 11-13, 15-17, and 23 to
stand or fall with independent claim 1, from which they depend, and
allowing dependent claims 8-10 to stand or fall with independent claim 7,
from which they depend” (Br. 5). Because we see no error in the
Examiner’s obviousness rejections of claims 4, 6, 8-13, 15-17, and 23, we
affirm the rejections of those claims.
SUMMARY
We reverse the Examiner’s rejection of claims 7-10, 20, and 21 under
35 U.S.C. § 112, first paragraph.
We affirm the Examiner’s rejections of claims 1, 2, and 4-24 under 35
U.S.C. § 103.

20
Appeal 2007-2235
Application 10/138,617

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Ssc

MCTAVISH PATENT FIRM
429 BIRCHWOOD COURTS
BIRCHWOOD, MN 55110
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