Ex parte Benzaria

Board of Patent Appeals and Interferences

Feb 25, 1998

07911354 (B.P.A.I. Feb. 25, 1998)

Application for patent filed July 9, 1992. According to appellant, the1
application is a division of Application 07/790,984, filed November 13, 1991.
(ABN)
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JACQUES BENZARIA
_____________
Appeal No. 94-4150
Application 07/911,3541
______________
ON BRIEF
_______________
Before KIMLIN, GARRIS and ELLIS, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 2-11,
17-21, 23, 24, 26 and 27 which are all of the claims remaining in
the application.
The subject matter on appeal relates to a method of
establishing contact between fluids and solid materials which
comprises passing a fluid through a container filled with
Appeal No. 94-4150
Application 07/911,354
2
granular solid materials wherein the container comprises four
substantially triangular faces which substantially constitute a
tetrahedron. This appealed subject matter is adequately
illustrated by independent claim 17 which reads as follows:
17. A method of establishing contact between fluids
and solid materials, said method comprising passing a fluid
through a container filled with granular solid materials, said
container comprising a closed casing permeable to said fluid,
said casing having pores sufficiently small to retain said
granular solids, said container comprising four substantially
triangular faces which substantially constitute a tetrahedron,
and contacting said fluid with the granular solids within said
container, said container being sufficiently rigid to maintain
the substantially tetrahedron shape during said contacting step.
The references relied upon by the examiner in the rejections
on appeal are:
Smith 4,232,177 Nov. 4, 1980
Mitchell 4,417,433 Nov. 29, 1983
Margel 4,732,811 Mar. 22, 1988
Haney et al. (Haney) 4,792,399 Dec. 20, 1988
Claims ?2-15 [sic, 2-11], 17-21, and 23-27 [sic, 23, 24, 26
and 27] are rejected under 35 USC § 112, first and second
paragraphs, as the claimed invention is not described in such
full, clear, concise and exact terms as to enable any person
skilled in the art to make and use the same, and/or for failing
to particularly point out and distinctly claim the subject matter
Appeal No. 94-4150
Application 07/911,354
3
of which applicant regards as the invention? (Supplemental
Examiner’s Answer, page 3).
Claims 2-11 and 17-20 are rejected under 35 USC § 103 as
being obvious over Haney or Margel.
Claims 2-9, 11 and 17-21 are rejected under 35 USC § 103 as
being obvious over Smith.
Finally, claims 17, 5, 8, 23 and 24 are rejected under 35
USC § 102(b) as being anticipated by or under 35 USC § 103 as
being obvious over Mitchell.
As a preliminary matter, we note that the appealed claims
will stand or fall together in accordance with their groupings in
the above noted rejections; see 37 CFR § 1.192(c)(5) (1993) and
page 2 of the Supplemental Examiner’s Answer.
OPINION
We will sustain the examiner’s § 102 and § 103 rejections of
claims 17, 5, 8, 23 and 24 over Mitchell, but we will not sustain
any of the other rejections advanced by the examiner on this
appeal.
THE SECTION 112 REJECTION
This rejection is not well founded for the reasons detailed
by the appellant on pages 3 through 5 of his Supplemental Brief.
Appeal No. 94-4150
Application 07/911,354
4
We add the following comments for emphasis and completeness.
The examiner’s burden of proof in calling into question the
enablement of an applicant’s disclosure requires that the
examiner advance acceptable reasoning inconsistent with
enablement. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ
561, 563 (CCPA 1982). In the case before us, the examiner has
advanced no such acceptable reasoning. In particular, the mere
fact that the independent claims on appeal are directed to a
method of establishing contact between fluids and solid materials
generally is not, in and of itself, inconsistent with enablement
as the examiner seems to believe. It follows that we discern
little if any merit in the examiner’s position that the here
rejected claims are not enabled within the meaning of the first
paragraph of § 112.
Similarly, the examiner is incorrect in believing that the
breadth of the rejected claims renders them offensive to the
second paragraph of § 112. It has been long established that
breadth is not indefiniteness. In re Gardner, 427 F.2d 786, 788,
166 USPQ 138, 140 (CCPA 1970). As for the examiner’s view that
the independent claim term ?substantially? renders the appealed
claims unclear, we agree with the appellant that one with
ordinary skill in the art would have a reasonable appreciation of
Appeal No. 94-4150
Application 07/911,354
5
the here claimed subject matter notwithstanding the presence of
this term. In this latter regard, we emphasize the appellant’s
point that Figure 1 of his drawing shows a container shape which
is plainly not an exact tetrahedron in view of the seam disposed
on the right side of the figure and therefore is properly and
accurately characterized as ?substantially? constituting a
tetrahedron in accordance with the appealed claims.
For the reasons set forth above and in the appellant’s
Supplemental Brief, we cannot sustain the examiner’s § 112, first
and second paragraphs, rejection of claims 2-11, 17-21, 23, 24,
26 and 27.
THE SECTION 103 REJECTION BASED ON
HANEY, MARGEL or SMITH
On pages 5 and 6 of his Supplemental Answer, the examiner
acknowledges that the references under consideration do not
disclose a container for solid materials in the shape of the
tetrahedron but argues that one of ordinary skill in the art
would have used any shape container. However, the examiner has
proffered no evidence whatsoever in support of his argued
position. We are constrained, therefore, to regard this position
as founded upon conjecture, speculation or assumptions on the
examiner’s part. Since a rejection based on § 103 must rest on a
Appeal No. 94-4150
Application 07/911,354
6
factual basis rather than conjecture, speculation or assumptions
(In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), it is clear to us that we cannot sustain the examiner’s
§ 103 rejections of claims 2-11 and 17-20 over Haney or Margel or
of claims 2-9, 11 and 17-21 over Smith.
THE REJECTION BASED ON MITCHELL
With the respect to this rejection, the appellant argues
that ?materials which swell like [Mitchell’s] tea are not
embraced within either the original or present scope of the
claims, which recite ?granular materials?? (Supplemental Brief,
page 7). However, independent claim 17 contains no recitation
which would exclude materials which swell from the claim phrase
?granular solid material?. Moreover, the appellant points to
nothing in his specification disclosure, and we find nothing
independently, which requires the claim 17 phrase ?granular solid
material? to be interpreted as excluding materials which swell.
We therefore share the examiner’s determination that the
independent claim under review encompasses, rather than excludes
as argued by the appellant, granular materials such as the tea of
Appeal No. 94-4150
Application 07/911,354
7
Mitchell.
The appellant also argues that ?the container [of the
appealed claims] is sufficiently rigid to maintain its
substantially tetrahedral shape during contact? whereas ?[t]he
Mitchell container does not do so? (Supplemental Brief, page 7).
For a number of reasons, this argument is unconvincing.
Certainly, the tea bag of Mitchell exhibits a tetrahedral
shape when disposed in the air from its strip 13 and tab 14
(e.g., see Figure 3 of the drawing and lines 10 through 25 in
column 2). The air/tea contact which occurs in this disposition
is encompassed by the broad claim 17 recitation of ?contact
between fluids and solid materials? since the claim phrase
?[granular] solid materials? embraces tea as previously explained
and since the claim term ?fluids? embraces a gas including air.
In any case, it is appropriate to conclude that Mitchell’s tea
bag maintains its tetrahedral shape, which is described as ?its
stable, three-dimensional configuration? (column 2, line 25;
emphasis added), even when disposed in water in light of
patentee’s teaching that his bag does not collapse when immersed
(see lines 26-29 in column 2).
Appeal No. 94-4150
Application 07/911,354
8
Because the here rejected claims fail to distinguish over
Mitchell in any of the ways argued by the appellant, we will
sustain the examiner’s § 102 and § 103 rejections based on
Mitchell of independent claim 17 and claims 5, 8, 23 and 24 which
depend therefrom.
SUMMARY
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 94-4150
Application 07/911,354
9
BRADLEY R. GARRIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOAN ELLIS )
Administrative Patent Judge )

MILLEN, WHITE & ZELANO
Arlington Courthouse Plaza 1
Suite 1201
2200 Clarendon Blvd.
Arlington, Virginia 22201