Ex parte BECK

Board of Patent Appeals and Interferences

Sep 4, 2001

09035655 (B.P.A.I. Sep. 4, 2001)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KENNETH C. BECK
____________
Appeal No. 2001-0129
Application No. 09/035,655
____________
ON BRIEF
____________
Before ABRAMS, NASE, and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of claims 1 through 9 which all the claims pending
in the application.
The appellant’s invention relates to a package for animal
bedding which comprises a rigid planar fibrous pad disposed
within a plastic pouch. An understanding of the invention can
be derived from a reading of exemplary claim 1 which appears
in the appendix to the appellant’s brief.
Appeal No. 2001-0129
Application No. 09/035,655
2
The prior art
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Masuda et al. (Masuda) 4,813,210 Mar. 21,
1989
Siciliano 4,961,735 Oct. 9,
1990
The rejections
Claims 1 through 9 stand rejected under 35 U.S.C. § 112,
first paragraph, as containing subject matter which is not
described in the specification is such a way as to enable one
skilled in the art to which it pertains to make and/or use the
invention.
Claims 1 through 3, 5, 6, 8 and 9 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Masuda.
Claims 4 and 7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Masuda in view of Siciliano.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper
Appeal No. 2001-0129
Application No. 09/035,655
3
No. 10) for the examiner’s complete reasoning in support of
the rejections, and to the brief (Paper No. 9) for the
appellant’s arguments thereagainst.
Appeal No. 2001-0129
Application No. 09/035,655
4
OPINION
In reaching our decision in this appeal, we have give
careful consideration to the appellant’s specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
We turn first to the examiner’s rejection of claims 1
through 9 under 35 U.S.C. § 112, first paragraph. We
initially note that an analysis of whether the claims under
appeal are supported by an enabling disclosure requires a
determination of whether that disclosure contains sufficient
information regarding the subject matter of the appealed
claims as to enable one skilled in the pertinent art to make
and use the claimed invention. The test for enablement is
whether one skilled in the art could make and use the claimed
invention from the disclosure coupled with information known
in the art without undue experimentation. See United States
v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223
(Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
Appeal No. 2001-0129
Application No. 09/035,655
5
In order to make a rejection, the examiner has the
initial burden to establish a reasonable basis to question the
enablement provided for the claimed invention. See In re
Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993) (examiner must provide a reasonable explanation as
to why the scope of protection provided by a claim is not
adequately enabled by the disclosure). A disclosure which
contains a teaching of the manner and process of making and
using an invention in terms which correspond in scope to those
used in describing and defining the subject matter sought to
be patented must be taken as being in compliance with the
enablement requirement of
35 U.S.C. § 112, first paragraph, unless there is a reason to
doubt the objective truth of the statements contained therein
which must be relied on for enabling support. Assuming that
sufficient reason for such doubt exists, a rejection for
failure to teach how to make and/or use will be proper on that
basis. See In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367,
369 (CCPA 1971). As stated by the court, "it is incumbent
upon the Patent Office, whenever a rejection on this basis is
made, to explain why it doubts the truth or accuracy of any
Appeal No. 2001-0129
Application No. 09/035,655
6
statement in a supporting disclosure and to back up assertions
of its own with acceptable evidence or reasoning which is
inconsistent with the contested statement. Otherwise, there
would be no need for the applicant to go to the trouble and
expense of supporting his presumptively accurate disclosure."
In re Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
Once the examiner has established a reasonable basis to
question the enablement provided for the claimed invention,
the burden falls on the appellant to present persuasive
arguments, supported by suitable proofs where necessary, that
one skilled in the art would be able to make and use the
claimed invention using the disclosure as a guide. See In re
Brandstadter, 484 F.2d 1395, 1406, 179 USPQ 286, 294 (CCPA
1973). In making the determination of enablement, the
examiner shall consider the original disclosure and all
evidence in the record, weighing evidence that supports
Appeal No. 2001-0129
Application No. 09/035,655
The appellant may attempt to overcome the examiner's1
doubt about enablement by pointing to details in the
disclosure but
may not add new matter. The appellant may also submit factual
affidavits under 37 CFR § 1.132 or cite references to show
what one skilled in the art knew at the time of filing the
application.
7
enablement against evidence that the specification is not1
enabling.
Thus, the dispositive issue is whether the appellant's
disclosure, considering the level of ordinary skill in the art
as of the date of the appellant's application, would have
enabled a person of such skill to make and use the appellant's
invention without undue experimentation. The threshold step
in resolving this issue as set forth supra is to determine
whether the examiner has met his burden of proof by advancing
acceptable reasoning inconsistent with enablement.
In the instant case, the examiner, noting that the
appellant’s specification states that the pads being formed
are cotton based cellulosic fibers, states:
Cotton is well known to be a soft pliable fibrous
material. The examiner believes that in order to
make cotton rigid, some process must be applied to
the material. The specification does not disclose
any process for making cotton rigid or the amount of
rigidity inherent in the pad.
Appeal No. 2001-0129
Application No. 09/035,655
8
In summary, the examiner is unclear form [sic,
from] the disclosure how the cotton pad is capable
of being rigid, and as such the examiner believes
that one having ordinary skill in the art is not
enabled to make or use the invention. [examiner’s
answer at pages 4 and 5].
In our view, the examiner has not met his burden.
Specifically, the examiner has not established that one
skilled in the art could not make and use the claimed
invention from the disclosure coupled with the information
known in the art without undue experimentation. The examiner
has not addressed what a person skilled in the art would have
known about how to make the cotton based cellulose of the
appellant’s invention rigid. In
our view, it would have been well within the skill of the
ordinary skilled person in the art to ascertain through
routine experimentation a process which would render the
cotton-based cellulose fibers disclosed in the appellant’s
specification rigid. In this regard, we note that rigid
cellulose material such as cardboard and the process of making
same is notoriously well known. In view of the foregoing, we
will not sustain the examiner’s rejection of claims 1 through
9 under 35 U.S.C. § 112, paragraph one.
Appeal No. 2001-0129
Application No. 09/035,655
9
We turn next to the examiner’s rejection of claims 1
through 3, 5, 6, 8 and 9 under 35 U.S.C. § 102(b) as being
anticipated by Masuda. In support of this rejection, it is
the examiner’s opinion that Masuda discloses a package
containing a planar fibrous pad (medical device 1) disposed in
a plastic pouch (sterile bag 2) which is hermetically sealed.
The examiner is of the view that the sterile bag 2 containing
the medical device 1 is capable of functioning as animal
bedding. In regard to the recitation of a “rigid” planar
fibrous pad, the examiner states:
The examiner points the applicant to col. 2, lines
2-9, wherein Masuda claims a medical device for use
with the package being a “cellulose acetate hollow
fiber membrane . . . preferable a laminated
polyester-aluminum-polyethylene sheet”. The
examiner believes that a “cellulose acetate hollow
fiber membrane . . . preferable a laminated
polyester-aluminum-polyethylene sheet” does indeed
anticipate a rigid planar fibrous pad as recited by
the applicant in claims 1 and 5. [answer at page 9]
We agree with the appellant that Masuda does not disclose
a rigid planar fibrous pad. The laminated polyester aluminum-
polyethylene sheet referred to by the examiner is the oxygen-
impermeable wrapper 4 not the medical device 1 which the
examiner finds to be a planar fibrous pad (See Col. 1, line 51
Appeal No. 2001-0129
Application No. 09/035,655
10
to Col.2, line 9). Masuda discloses that the medical device
or planar fibrous pad is preferably a hollow blood processing
device employing cellulose acetate hollow fibers (Col. 4,
lines 40 to 62). Masuda does not disclose that the medical
device or fibrous pad is rigid. Therefore, we will not
sustain the examiner’s rejection of claim 1 and claims 2 and 3
dependent thereon. Likewise, we will not sustain this
rejection as it is directed to claim 5 and claims 6, 8 and 9
dependent thereon because claim 5 recites “providing at least
one rigid, planar fibrous pad.”
We turn next to the examiner’s rejection of claims 4 and
7 under 35 U.S.C. § 103 as being unpatentable over Masuda in
view of Siciliano. The examiner relies on Siciliano for
teaching a pad formed from an absorbent material being
fabricated from cotton. The examiner concludes:
It would have been obvious to one having ordinary
skill in the art at the time the invention was made
to have formed the planar fibrous pad as taught by
Masuda of cotton as taught by Siciliano since cotton
material
is an effective material for absorbance of body fluids
. . .[examiner’s answer at page 7].
Appeal No. 2001-0129
Application No. 09/035,655
11
We will not sustain this rejection as it is directed to
claims 4 and 7 which are dependent on claims 1 and 5
respectively because Siciliano like Masuda does not disclose a
rigid pad. Rather, Siciliano discloses a bandage comprised of
cotton
terry cloth.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
NORMAN E. LEHRER
Appeal No. 2001-0129
Application No. 09/035,655
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1205 NORTH KINGS HIGHWAY
CHERRY HILL, NJ 08034
Jenine Gillis
Appeal No. 2001-0129
Application No. 09/035,655
Copies:
______ APJ CRAWFORD
______ APJ NASE

______ APJ ABRAMS
DECISION: REVERSED
Panel Change: Yes No
Prepared: May 24, 2002
3 MEM. CONF. Y N
OB/HD
GAU: 3600
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