Ex Parte Borchard

Board of Patent Appeals and Interferences

Nov 28, 2007

09947083 (B.P.A.I. Nov. 28, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES A. BORCHARD
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Appeal 2007-1176
Reissue Application 09/947,083
Patent 5,945,147
Technology Center 1700
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Decided: November 28, 2007
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Before BRADLEY R. GARRIS, Administrative Patent Judge,
FRED E. McKELVEY, Senior Administrative Patent Judge, and
ALLEN R. MacDONALD, Administrative Patent Judge.
Opinion for the Board filed by Administrative Patent Judge GARRIS

Opinion Concurring-in-part and dissenting-in-part filed by Administrative
Patent Judge McKELVEY

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the Examiner’s decision
rejecting claims 1-33. We have jurisdiction under 35 U.S.C. § 6.

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We REVERSE.
Appellant claims a method of packaging fresh perishable foods which
comprises placing a sheet of flexible plastic on a pallet 12 to provide a
bottom sheet 15 having outer edges 16 overhanging the perimeter of the
pallet, stacking a plurality of cartons 13 on the bottom sheet, covering the
top and sides of the carton stack with a flexible bag 14 having a closed top
and an open bottom with a lower edge overhanging the perimeter of the
pallet, overlaying the lower edge of the bag and the outer edges of the
bottom sheet, and folding the overlaid edges upward against the bag, thereby
forming a first seal (claim 1; figure 6).
Representative independent claim 1 is reproduced below:
1. In a method of packaging fresh perishable foods wherein the
perishable food product is packed in a plurality of cartons and the cartons are
stacked on a pallet for storage and/or transportation, the method including
the steps of:
placing a sheet of flexible plastic material on a pallet to provide a
bottom sheet, the bottom sheet having outer edges extending beyond the
sides of the stack and overhanging the perimeter of the pallet;
stacking a plurality of cartons on the bottom sheet on the pallet to
form a carton stack;
covering the top and sides of the carton stack with a flexible bag made
of a gas permeable material, the bag having a closed top and an open bottom
with a lower edge overhanging the perimeter of the pallet;
overlaying the lower edge of the bag and the outer edges of the
bottom sheet; and
folding the overlaid lower edge of the bag and the outer edges of the
bottom sheet upward against the bag, whereby forming a first seal.
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Claims 1-33 are rejected under 35 U.S.C. § 251 “as being based upon
a defective reissue declaration . . . and . . . as being based upon new matter
added to the [‘147] Patent for which reissue is sought” (Answer 2).
THE REJECTION BASED UPON A DEFECTIVE REISSUE
DECLARATION

Appellant states that this rejection has been rendered moot by duly
executed documents submitted with the Brief which include a Supplemental
Declaration for Reissue Patent Application (Br. 5). The Examiner appears to
agree with this statement (Answer 3, second para.).
These circumstances reflect that the rejection under review has been
inadvertently and erroneously maintained by the Examiner. Regardless, the
Examiner has proffered no reasons for maintaining this rejection in the face
of the executed documents submitted with Appellant’s Brief. In either case,
the rejection cannot be sustained.
THE REJECTION BASED UPON NEW MATTER
It is undisputed that appealed reissue claim 1 is broader than
Appellant’s patent claim 1 by not requiring the patent claim 1 limitation
“introducing a quantity of nitrogen gas through an opening into the interior
of the bag without withdrawing any gas from the bag; and sealing the
opening to retain the nitrogen within the bag.” According to the Examiner,
“[b]y deleting this recitation applicant has introduced new matter into the
claims” (Final Office Action 3).
Appellant indicates that dependent claims 8, 9, 12-14, 17-19, and 23-
28 contain the gas introducing limitation of patent claim 1, the absence of
which is considered by the Examiner to introduce new matter into the
appealed claims (Br. 4). The Examiner appears to agree with Appellant on
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this matter (Answer 3, first para.). For these reasons, the Examiner appears
to have inadvertently and erroneously maintained the new matter rejection
against the aforementioned dependent claims. Analogously, the Examiner
appears to have inadvertently and erroneously maintained this rejection
against claim 11 which also contains the above-discussed limitation.
More generally, Appellant argues that absence of the gas introducing
limitation does not introduce new matter into the appealed claims because
this limitation is not critical to operation or patentability of the here claimed
method. In support of this argument, Appellant cites In re Peters, 723 F.2d
891 (Fed. Cir. 1983) and In re Rasmussen, 650 F.2d 1212 (CCPA 1981) (Br.
5-6; Reply Br. 1-2).
In response, the Examiner points out that, in the ‘147 patent for which
reissue is sought, the nitrogen gas introducing step is described as an
important feature of the invention and that “there is no example or figure in
the patent or originally filed application where a quantity of nitrogen is not
introduced into the packaging” (Answer 4).
In light of the conflicting positions of the Appellant and the Examiner,
the issue raised by this rejection is whether the appealed reissue claims,
which do not contain the nitrogen gas introducing step of the patent claims,
are directed to new matter (as prohibited by § 251), that is, subject matter
not in Appellant’s possession on the filing date sought in the view of those
skilled in the art upon reading the written description of the invention (as
prohibited by the 1st paragraph, written description requirement of § 112).
See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
In order to assess this issue, we make the Findings of Fact set forth
below.
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(1) The Examiner is correct that the nitrogen gas introducing step is
described in the ‘147 patent as an important feature of the invention (col. 7,
ll. 39-50).
(2) However, we find nothing and the Examiner points to nothing in
the patent disclosure which teaches that the gas introducing step is necessary
for practicing the invention as disclosed in the patent and as defined by
appealed claim 1.
(3) To the contrary, we find the patent teaches that the disclosed
invention overcomes prior art disadvantages unrelated to a gas introducing
step including problems with the prior art flexible packaging material which
is sealed around the carton stack (‘147 patent, col. 2, ll. 10-11, 28-30).
These problems are occasioned by the prior art material being too thin to
provide an adequate insulation barrier and being not strong enough to endure
chafing amongst packages thereby causing the package seal to fail (id. at ll.
11-16).
(4) In reviewing the prosecution history of the original patent
application, we find that the gas introducing limitation under review was
required by all of the originally filed method claims elected for prosecution
(i.e., in response to a restriction requirement by the Examiner) and
concomitantly that the limitation was not added during prosecution in order
to overcome (e.g., prior art) rejections. We also find that the gas introducing
limitation was never argued during prosecution as a distinction overcoming
(e.g., prior art) rejections.
(5) Correspondingly, we find that the gas introducing limitation under
review was not necessary to avoid prior art rejections during prosecution of
the present reissue application.
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These findings lead us to the following determinations.
Because the gas introducing step is disclosed merely as important
(Finding of Fact 1) rather than necessary (Finding of Fact 2), the patent
claim 1 method which includes this step constitutes a specific embodiment
of Appellant’s broader invention. Indeed, the fact that Appellant’s disclosed
invention is described as overcoming problems with prior art packaging
materials unrelated to the gas introducing step (Finding of Fact 3) supports a
determination that the broadly disclosed invention includes the reissue claim
1 method wherein a gas introducing step is not required. Stated differently,
the gas introducing step is not necessary or critical to operation of
Applicant’s broadly disclosed invention. For these reasons, the absence of
this step from reissue claim 1 conforms to the statutory provision for
broadened reissue claims. In re Rasmussen, 650 F.2d at 1215 (“[T]hat a
claim may be broader than the specific embodiment disclosed in a
specification is in itself of no moment. Indeed, the statutory provision for
broadened claims in reissue applications is intended to meet precisely the
situation in which a patentee has claimed ‘less’ than he had a right to claim.
35 U.S.C. § 251.”).
We further determine that the prohibitions against new matter under
§ 251 and lack of written description support under § 112, first paragraph,
are not violated where, as here, the limitation omitted from the broadened
reissue claims is not necessary or critical to either the operation of the
invention (as determined above) or the patentability of the invention
(Findings of Fact 4 and 5). See In re Peters, 723 F.2d at 893 (lack of
support rejection under § 112 and § 251 reversed where broadened reissue
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claims merely omit unnecessary limitation not critical to either the operation
or patentability of the invention).
Under these circumstances, it is our ultimate determination that the
absence of a gas introducing step from reissue claim 1 does not violate the
new matter prohibition of § 251 or the written description requirement in the
first paragraph of § 112. Therefore, we hereby reverse the Examiner’s
§ 251 rejection of claims 1-33 as being directed to new matter.
CONCLUSION
The decision of the Examiner is reversed.
REVERSED

clj
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FRED E. McKELVEY, Senior Administrative Patent Judge, concurring-in-
part and dissenting-in-part.

A. Introduction
I concur with the majority that appellant (Cold-bag, Inc.) has
sustained its burden of showing that the Examiner erred in rejecting all
claims based on an allegedly defective reissue oath.
The Examiner rejected claims 1-33 as being unpatentable under
35 U.S.C. § 112, first paragraph, based on a lack of an adequate written
description. Because claims 8-9, 11-14, 17-19 and 23-28 require
introduction of nitrogen gas, I concur with the majority that Cold-bag, Inc.,
has sustained its burden of showing that the Examiner erred in rejecting
those claims for lack of an adequate written description. However, because
claims 1-7, 10, 15-16, 20-22, and 29-33 do not require the introduction of
nitrogen gas, I respectfully disagree with the decision to reverse the
Examiner's lack of written description rejection with respect to those claims
and therefor dissent.
B. Issue on appeal
The issue before the Board, at least as I see it, is whether Cold-bag,
Inc., has sustained its burden of appeal of establishing that the Examiner
erred in rejecting claims 1-7, 10, 15-16, 20-22, and 29-33 for failure to
comply with the written description requirement 35 U.S.C. § 112.
Whether a specification contains a written description of later-claimed
subject matter involves a question of fact. In re Wilder, 736 F.2d 1516,
1520 n* (Fed. Cir. 1984) ("[t]he inquiry into whether the description
requirement is met is a question of fact).
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In patent examination, generally a fact must be established by a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985); In re Epstein, 32 F.3d 1559, 1565 (Fed. Cir. 1994).
The burden of showing something by a preponderance of the evidence
simply requires the trier of fact to believe that the existence of a fact is more
probable than its nonexistence. Concrete Pipe & Products of California,
Inc. v. Construction Laborers Pension Trust for Southern California,
508 U.S. 602, 622 (1993). Devitt, Federal Jury Practice and Instructions,
' 71.01 (2d ed. 1970), defines "preponderance of the evidence" as follows:
to "establish by a preponderance of the evidence" means to prove that
something is more likely so than not so. In other words, a preponderance of
the evidence in the case means such evidence as, when considered and
compared with that opposed to it, has more convincing force, and produces
in the mind of the trier or fact a belief that what is sought to be proved is
more likely true than not true.
If on appeal from an examiner to the Board an appellant contends that
an examiner erred in making a finding of fact, the appellant must establish
that the examiner erred in making that finding. In my view, the mere fact
that different people might reasonably reach different conclusions on
whether particular evidence supports a finding of fact by a preponderance of
the evidence does not per se establish that a finding of fact is erroneous.
Further in my view, the Board should not be in the business of substituting
its judgment for that of an examiner when reviewing an issue of whether an
examiner has erred in fact finding. Rather, the appellant must establish that
the examiner erred.

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The Examiner in this case found that the subject matter of claims 1-7,
10, 15-16, 20-22, and 29-33 is not described in the specification, as filed, of
the application (08/956,803) which matured into the patent (5,945,147)
sought be reissued. Accordingly, Cold-bag, Inc., to get my vote has to show
that the evidence does not support the Examiner's finding by a
preponderance of the evidence. For reasons which follow, Cold-bag, Inc.,
has not sustained its burden.
C. Written description
In order to comply with the written description requirement, an
applicant must convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, the applicant was in possession of the invention
now claimed. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.
Cir. 1991). See also, In re Alton, 76 F.3d 1168, 1172 (Fed. Cir. 1996) (the
adequate written description requirement serves to ensure that the inventor
had possession, as of the fling date relied on, of the specific subject matter
claimed by the inventor).
D. The Borchard patent sought to be reissued by Cold-bag, Inc.
The only admissible evidence in the record with respect to the written
description issue is (1) the Borchard patent and (2) the specification, as filed,
of the application which matured into the Borchard patent.
1. Background
According to Borchard, the invention relates to the preservation of
fresh produce, and more specifically to methods and apparatus for
packaging perishable fruits such as strawberries. The invention is said to
preserve and protect fresh fruit during storage and shipment from the
cooling facility to the distant marketplaces through the world. Col. 1:5-10.
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We are told that strawberries are picked in the fields and placed into
small plastic containers. Most of the packed containers are placed into
open faced cartons which are stacked onto a pallet for transportation of the
containers of fresh produce. Col. 1:11-16.
Produce is then brought from the field to a cooling facility where an
entire pallet of strawberries is brought down to a temperature no less than
about 33 ºF and no more than about 40 ºF. Col. 1:17-21.
Produce is often shipped to what Borchard calls "distant markets."
When shipped, stacks of cartons are wrapped in some form of flexible
material. Typically, this flexible packing material is sealed around the
stack of cartons. In a presently used system, the interior of the package is
exhausted with a vacuum, and recharged with carbon dioxide gas. A
variety of packaging methods and equipment are reported. In another
reported system the interior of the package is flushed with a gas under
pressure, such as a nitrogen rich gas, or may be exhausted with a vacuum.
If a vacuum has been used, the interior typically may be charged with
carbon monoxide, carbon dioxide, oxygen and mixtures thereof.
Col. 1:22-33.
2. Disadvantages
According to Borchard, there are many disadvantages to the system
that was used when he originally filed his application in 1997. First, the
system were said to be inefficient. Second, carbon dioxide gas is not the
ideal gas to be used for this process. Third, the packaging film used does
not perform as needed for quality assurance. Col. 1:35:39. Borchard
proceeds to discuss each of the disadvantages.
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With respect to the first identified disadvantage, the systems used are
not economically nor ergonomically efficient. With most systems, there is
a designated room or wide area within the cooling facility to operate the
large, stationary machine used in the process. This is valuable, cooled
space that could be used for holding/storing produce awaiting transit. Next,
the process of packaging the stack of cartons is said to involve an excessive
amount of labor, time, and equipment. After the stack of cartons has been
covered, an operator must transport the package from a holding room to the
designated area with a forklift. Another operator, then seals, exhausts, and
recharges the package with the machine. After which, the package is
picked up again with the forklift and taken back to the holding facility or
loaded onto a waiting truck. According to Borchard, the entire system and
process can be made much more efficient by implementing a much smaller
machine that is portable throughout the cooling facility, and eliminating the
steps of moving the package to another room for the gas process and
returning the package to the holding room. Col. 1:40-58.
With respect to the second identified disadvantage, Borchard tells us
that carbon dioxide is not necessarily the "ideal gas" for preserving
strawberries. Carbon dioxide gas is said to alter the taste of the fruit and is
too permeable to the package that holds it. The process that is used today
[meaning 23 October 1997] exhausts the package of oxygen and replenishes
it with carbon dioxide as a preservative gas. When fruit is starved of
oxygen it begins to ferment, giving off acetaldehyde, ethanol, and ethyl
acetate, in turn altering the taste. Carbon dioxide is also 16/1 times more
permeable to polyethylene film than nitrogen, meaning that when placed
into the package, the gas quickly escapes. In a short time, excessive carbon
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dioxide can absorb into the fruit creating a "fizzy" taste in the strawberry,
different from the fermented taste. Also, when carbon dioxide is injected
into the stack of cartons it leaves an oil residue on the produce, which
affects the skin of the fruit and again the taste. Carbon dioxide is said not
to preserve the fruit from gray mold, a bacteria that feeds on oxygen, but in
the process of which it is used, it alters the fruit's taste before it reaches the
consumer in the marketplace. Col. 1:59 to col. 2:9.
Third, Borchard further tells us that there are problems with the
flexible material that is used. The material presently used is said to be too
thin to provide an insulation barrier significant enough to protect the
perishable fruit from exposure to the elements, such as fluctuating
temperatures while loading or unloading or within the transport trailer, and
wind chill caused by refrigeration units. The material is also not strong
enough to endure chafing amongst packages causing the seal of the package
to fail. Finally, the low density polyethylene film (LDPE) is not as
effective as other materials available, in controlling the permeability of
the gases within the package to those which are in the atmosphere.
Col. 2:10-20.
3. Borchard's invention
An object of Borchard's invention is to provide a new and improved
method and apparatus for overcoming these disadvantages. Col. 2:28-30.
In Borchard's method of packaging perishable foods is said to involve
at least the following steps (Col. 2:35-49) (italics added):
(1) perishable food product is packed in a plurality of cartons
and the cartons are stacked on a pallet for storage and/or transportation,
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(2) a sheet of material is placed on a pallet to provide a bottom
sheet, with the bottom sheet extending beyond the sides of the stack,
(3) a plurality of the cartons are stacked on the bottom sheet on
the pallet to form a carton stack,
(4) the top and sides of the carton stack are covered with a bag
of a gas permeable material, the bag having a closed top and an open
bottom with a lower edge,
(5) the edges of the bottom sheet are sealed to the lower edge
of the bag,
(6) a quantity of nitrogen gas is introduced through an opening
into the interior of the bag without withdrawing any gas from the bag, and
(7) the opening is sealed to retain the nitrogen within
the bag.
An apparatus for accomplishing the invention is also described.
Col. 2:50 et seq. The apparatus includes means for introducing a quantity
of nitrogen gas into the interior of the bag without withdrawing any gas
from the bag, and means for sealing the opening in the bag through which
the nitrogen gas was introduced.
Borchard states that "preferably" the gas permeable material of the
bag is of a selective permeable material which is more permeable to oxygen
than to nitrogen. Col. 2:64-67. Borchard reiterates his "preference" for a
plastic material such as linear low density polyethylene film (LLDPE) at
col. 4:3-5. Likewise, at col. 4:23-31, Borchard tells us that preferably, the
gas permeable material of the bag is a selective permeable material which is
more permeable to oxygen than to nitrogen. The presently preferred
material for this purpose is LLDPE. Other suitable materials for this
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purpose are very low density polyethylene film (VLDPE). Preferably the
ratio of the permeability to oxygen to the permeability to nitrogen for the
material is in the range of about 2.8/1.0 to about 3.5/1.0. More preferably,
the ratio is about 3.0/1.0 to about 3.3/1.0.
Contrasting Borchard's "preference" for using a particular film,
Borchard says point blank that in his "invention" "high purity dry nitrogen
gas is utilized." Col. 6:9-10. Borchard does not say "preferably" used as he
does with the film. Nor does Borchard say "may be used."
Borchard goes on to say that after the nitrogen gas has been
introduced into the interior of the bag, the probe is withdrawn from the bag
and the opening in the bag is sealed with a patch 62 [Fig. 5]. Borchard's
own words are: "[t]hus it is seen that the objectives of the method and of
the apparatus of the invention are achieved solely with the introduction of
nitrogen gas." Col. 6:25-27.
Not only is nitrogen gas utilized, but Borchard tells us why. We are
told that there are several advantages to using nitrogen gas. Nitrogen has
greater mass and is less permeable than oxygen and carbon dioxide making
it ideal for displacing the oxygen within the package. It is also a tasteless
gas which does not alter the taste of the fruit, unlike carbon dioxide which
can be detected as a "fizzy" taste when absorbed. Col. 6:28-33.
The invention is said to accomplish objectives not previously
accomplished. According to Borchard, several key things are accomplished
which are not implemented in any presently known system. The main
objective is to preserve and protect the fruit in an efficient manner, from the
time that it is packaged in the cooling facility to the time that the seal of the
package is broken at the marketplace. A number of things are done to
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accomplish this aim. First, implementing a portable, self contained
machine, which in turn cuts labor and operating costs. Secondly, utilizing a
multi-purpose plastic package to protect and preserve the packaged fruit.
Next, using a "double seal" to contain the pressurized gas. Last, selecting a
more effective type of gas for the preservation process, that does not affect
the taste of the produce. Col. 6:34-46.
If Borchard's pre-filing date "testimony" mentioned to this point is not
enough to reveal the importance of introducing nitrogen, Borchard tells
even more—right in his own specification! Borchard continues by
informing us that an important feature of the invention is the use of nitrogen
gas. When injected into the package, nitrogen displaces the oxygen within
the package. The oxygen level desirably is brought from about 20% at
atmospheric pressure down to an average of 10%. The oxygen which
remains is either consumed by the respiration process of the fruit,
converting it to carbon dioxide gas or else forced out of the package
through the permeability of the plastic. The package is three times more
permeable to oxygen that it is to nitrogen, hence the nitrogen stays in the
package. Nitrogen is also a tasteless gas that does not leave a residue on the
fruit when injected into the package, nor create a "champagne" or "fizzy"
taste in the fruit. Col. 7:39-51.
Borchard wraps it all up by alleging that "the invention" "will be a
great improvement for the entire fruit industry, especially strawberries: an
ergonomically efficient machine, that preserves a fresh product being
transported to a distant marketplace, arriving in outstanding condition."
Col. 7:51-56.
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4. Borchard's original claims
The majority correctly points out that all original claims had an
introducing nitrogen gas limitation.
By way of example, original claim 1 reads [italics added]:
1. In a method of packaging fresh perishable foods wherein the
perishable food product is packed in a plurality of cartons and
the cartons are stacked on a pallet for storage and/or
transportation, the method including the steps of:
placing a sheet of flexible plastic material on a pallet to
provide a bottom sheet, the bottom sheet having outer edges
extending beyond the sides of the stack and overhanging the
perimeter of the pallet;
stacking a plurality of cartons on the bottom sheet on the
pallet to form a carton stack;
covering the top and sides of the carton stack with a
flexible bag made of a gas permeable material, the bag having a
closed top and an open bottom with a lower edge overhanging
the perimeter of the pallet;
overlaying the lower edge of the bag and the outer edges
of the bottom sheet;
folding the overlaid lower edge of the bag and the outer
edges of the bottom sheet upward against the bag, whereby
forming a first seal;
introducing a quantity of nitrogen gas through an
opening into the interior of the bag without withdrawing any
gas from the bag; and
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sealing the opening to retain the nitrogen within the bag.
E. Analysis
One cannot read the Borchard patent and walk away with a view that
introduction of nitrogen gas into his package is not important.
The majority bottoms its rationale on a finding that while use of
nitrogen may be "important" its use is not "critical" or "necessary" to the
operation of the invention. The majority's finding second-guesses a contrary
finding made by the examiner and, in any event on this record, is not
supported by substantial evidence.
The Examiner found that "[t]he specification in fact teaches that the
introduction of nitrogen into the bag is critical in maintaining the freshness
of the produce being packaged and stored on pallets." Paper 4, page 4. The
Examiner goes on to say that "[t]here is no teaching that introducing
nitrogen is optional." Paper 4, paragraph bridging pages 4-5.
Borchard set out to accomplish certain objectives. Nowhere does
Borchard remotely tell us in the specification how those objectives can be
accomplished without use of nitrogen. Borchard emphasizes over and over
throughout the specification that nitrogen is a "big deal" or in his words is
"utilized" (Col. 6:10) [not may be utilized] and is an "important feature"
(Col. 7:39) [not is an optional feature]. On the other hand when it comes to
the film, Borchard expresses mere "preferences" for a certain type of film,
suggesting that he had possession of an invention which uses "non-
preferred" films. Nowhere does Borchard express a "preference" for the use
of nitrogen. Use of nitrogen is "necessary", and therefore not optional, while
use of a certain polyethylene films is "preferable" and therefore optional.
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After the original application was filed, probably at a time after the
patent issued, Borchard had an afterthought that his invention was broader
than described in the patent. However, the problem is that Borchard did not
have possession of a broader invention when he originally filed his
application and therefore his post-issuance afterthought "flunks" the written
description requirement.
Nowhere does the majority explain how Borchard describes an
invention which does not use nitrogen, yet accomplishes Borchard's
objectives. Nor, can such an invention be found in the patent because it is
not described therein.
Both Cold-bag, Inc. and the majority conclude that one Federal
Circuit and one CCPA decision suggest reversal, principally based on a
finding that use of nitrogen is not "critical" or "necessary" for (1) operation
of patentability or (2) patentability. See In re Peters, 723 F.2d 891 (Fed. Cir.
1983) and In re Rasmussen, 650 F.2d 1212 (1981). Neither decision
suggests, or compels, reversal in this appeal. Whether an application
contains a written description of later-claimed invention is a question of
fact. Manifestly, each case turns on its own facts.
The majority's observation that a limitation may or may not be
"critical" or "necessary" for patentability over the prior art, while interesting,
is not helpful in what is essentially a fact-bound analysis. A claimed
invention which is patentable over the prior art may or may not be described
in a specification. As binding precedent reveals, "[a]n applicant is entitled to
claims as broad as the prior art and his disclosure will allow." In re
Rasmussen, 650 F.2d 1212, 1214 (CCPA 1981). If a disclosure will not
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"allow," then it does not matter how patentable an invention may be over the
prior art.
The Federal Circuit found in In re Peters that one skilled in the art
would readily understand that in practicing the invention it is unimportant
whether claimed tips are tapered. 723 F.2d at 893. Here, Borchard tells that
the use of nitrogen is important. What was not important in Peters turns out
to be important in this case. So much for Peters being controlling.
Rasmussen is not controlling for precisely the same reason that Peters
is not controlling. According to the CCPA, "one skilled in the art who read
Rasmussen's specification would understand that it is unimportant how the
layers are adhered, so long as they are adhered." 650 F.2d at 1215. It is
difficult, if not impossible, under the facts of the case before us to say that
use of nitrogen is "unimportant" when Borchard tells us that it is!
In re Wilder, 736 F.2d 1516 (Fed. Cir. 1984), is illustrative of how a
broadened invention may not be described in a specification. Like
Rasmussen, Wilder confirms the well-known proposition of patent law that
an objective of most applicants is to claim as broadly as possible. 736 F.2d
at 1520. Wilder omitted a limitation in presenting broadened claims, viz.,
that lights be scanned in synchronism with the scanning of a record medium.
736 F.2d at 1517. Wilder held that Wilder had not shown that his originally
described invention supported his broadened invention. Wilder relied, inter
alia, on the objects of his invention to bolster his argument that an invention
included a "generic" invention where lights did not have to be scanned as
originally claimed. As the Federal Circuit notes, the invention which
achieves these general objects must still be described. 736 F.2d at 1518.
Nowhere did the Federal Circuit find such an invention described.
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Appeal 2007-1176
Application 09/947,083

Significantly, Wilder distinguishes Peters noting that Peters merely deleted
an unnecessary limitation relating to the non-critical shape of a tip described
in the Peters patent. In the case before us, Borchard does not give us even as
much as a hint how his stated objectives can be carried out without the use
of nitrogen. Rather, Borchard "testifies" in his original specification that the
use of nitrogen is "important."
Unlike Peters and Rasmussen, where the deleted material was found
to be unimportant, this case is reminiscent of PIN/NIP, Inc. v. Platte Chem..
Co., 304 F.3d 1235, 1247-48 (Fed. Cir. 2002), where the Federal Circuit
held that a claim added post-filing date did not comply with the written
description requirement. The Federal Circuit held that nothing in the
specification indicates that the invention is anything other than a mixture of
two chemicals and therefore a method to use of the two chemicals in
sequence was not described. In this case, nothing in the specification
indicates that any of the objectives can be accomplished without the use of
nitrogen.
The Examiner's fact-finding in this case has not been shown to have
been erroneous. Indeed, in my opinion the opposite is the case—the fact
finding is absolutely correct. The Examiner's fact-finding is more than
adequately supported by the record and therefore cannot be erroneous.
There is no reason to set aside the Examiner finding related to the
importance of nitrogen to the Borchard invention and therefore there is no
adequate legal basis for disagreeing with the Examiner's lack of written
description rejection.
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Appeal 2007-1176
Application 09/947,083

To the extent indicated, I respectfully dissent.

sd

ERIC K. SATERMO
P.O. BOX 19099
IRVINE, CA 92623-9099

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