Ex parte Brody

Board of Patent Appeals and Interferences

Feb 8, 2000

08683411 (B.P.A.I. Feb. 8, 2000)

Application for patent filed July 19, 1996. According to appellants, the application is a division of1
Application 08/329,907, filed October 27, 1994, now U. S. Patent No. 5,564,222, issued October 15, 1996, which is a
continuation of Application 08/160,793, filed December 3, 1993, now abandoned.
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not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YAAKOV BRODY
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Appeal No. 1999-0647
Application No. 08/683,4111
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ON BRIEF
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Before COHEN, PATE, and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 4, 5 and 20-23,
which are all of the claims pending in this application. We REVERSE and REMAND.
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Application No. 08/683,411
This reference was cited by the examiner in Paper No. 4 and a copy is of record in the application file.2
BACKGROUND
The appellant's invention relates to a method of eradicating termites without poisoning soil
comprising placing on the soil a mulch consisting of tree bark, wood chips, and mixtures thereof
impregnated with a borate salt (claims 1, 4 and 5) and to the mulch (claims 20-23). A copy of the
claims on appeal appears in the appendix to the appellant's brief.
The prior art references of record relied upon by the examiner in rejecting the appealed claims
are:
Hedges 5,105,577 Apr. 21, 1992
Savoy 5,194,323 Mar. 16, 1993
An additional reference of record relied on by this panel of the Board is:2
Palmere et al. (Palmere) 5,104,664 Apr. 14, 1992
The following rejection is before us for review.
Claims 1, 4, 5 and 20-23 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Hedges in view of Savoy.
Reference is made to the brief (Paper No. 8) and reply brief (Paper No. 10) and the non-final
rejection (Paper No. 4), final rejection (Paper No. 6) and answer (Paper No. 9) for the respective
positions of the appellant and the examiner with regard to the merits of this rejection.
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OPINION
In reaching our decision in this appeal, we have given careful consideration to appellant's
specification and claims, the applied prior art references, and the respective positions articulated by the
appellant and the examiner. Based on our review, we shall not sustain the rejection.
Before addressing the examiner's rejections based upon prior art, it is essential that the claimed
subject matter be fully understood. Analysis of whether a claim is patentable over the prior art under
35 U.S.C. §§ 102 and 103 begins with a determination of the scope of the claim. The properly
interpreted claim must then be compared with the prior art. Claim interpretation must begin with the
language of the claim itself. See Smithkline Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d
878, 882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988). Moreover, in proceedings before it, the PTO
applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be afforded by the written
description contained in the applicant's specification. In re Morris, 127 F.3d 1048, 1054, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997).
At the outset, we note that both independent claims 1 and 20 require a mulch "consisting of tree
bark, wood chips, and mixtures thereof impregnated with a borate salt." In this regard, appellant's
specification (page 8, lines 15-20) states:
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Application No. 08/683,411
[a]s used here, mulch means any conventional cellulose mulch product, such as wood
chips, tree bark, and other commonly sold wood articles and by-products, that are
used as a ground cover for decorative or weed control purposes.
Therefore, it is apparent to us that the claim language "tree bark, wood chips, and mixtures thereof" as
used in the claims is limited to cellulosic tree bark or wood chips derived from trees and would not
encompass plastic chips having embossing and coloring simulating that of natural tree bark chips, as
suggested by the examiner (answer, page 3).
Hedges discloses a mulching material made of small thermoplastic chips having embossing and
coloring simulating that of natural tree bark chips (column 4, lines 16-21). The chips have insecticides
incorporated therein to discourage or eliminate insects which might otherwise seek shelter thereabout
(column 3, lines 35-49). Hedges particularly teaches the use of plastic chips to provide chip-like
mulches which are more permanent than those formed from naturally occurring cellulosic materials
(column 2, lines 1-3).
Savoy discloses a composite building panel, comprising wood-based skins (12) surrounding a
core (14) of insulating foam, treated with a borate, such as disodium octaborate tetrahydrate, to
prevent insects from boring through the skins and nesting in the core. Savoy teaches that the use of
such sodium borates is preferred because they are highly insecticidal and fungicidal but not significantly
toxic to household pets and human beings (column 4, lines 20-31).
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Application No. 08/683,411
In rejecting the claims on appeal, it is the examiner's position (final rejection, page 2, and
answer, page 3) that Hedges discloses a mulch consisting of "tree bark, wood chips, and mixtures
thereof" as claimed, but lacks a teaching that the mulch is impregnated with a "borate salt." However,
according to the examiner (Paper No. 4, page 2), it would have been obvious to one of ordinary skill in
the art at the time of appellant's invention to impregnate the Hedges mulch with a borate salt in order to
eliminate insects while providing safety to pets and human beings, in view of the recognition by Savoy
that borate salts are insecticidal while not being toxic to household pets or human beings.
We conclude that, even if Hedges and Savoy were combined as proposed by the examiner,
there is no teaching or suggestion in either Hedges or Savoy to impregnate "a mulch consisting of tree
bark, wood chips, and mixtures thereof," as used in the claims, with a borate salt to arrive at the
claimed invention. Given our interpretation of "a mulch consisting of tree bark, wood chips, and
mixtures thereof" as discussed above, it should be clear that we find untenable the examiner's position
that the mulch of plastic chips of Hedges is such a mulch. We are also not persuaded by the examiner's
suggestion (final rejection, page 3) that the use of a "natural mulch" impregnated with a borate salt
would have been obvious to one skilled in the art "since the disadvantages of natural mulch as pointed
out by Hedges clearly suggests that natural mulch had been used." While we agree with the examiner
that Hedges' discussion of the prior art mulches in column 1, lines 33-64, establishes that naturally
occurring cellulosic materials, such as wood chips, were known for use as mulch material at the time of
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Application No. 08/683,411
appellant's invention, we find nothing in Hedges which would have suggested impregnating such mulch
material with an insecticide, such as a borate salt.
Therefore, we shall not sustain the examiner's rejection of independent claims 1 and 20, or
claim claims 4, 5 and 21-23 which depend therefrom.
REMAND TO THE EXAMINER
We remand this application to the examiner to consider whether claims 1, 4, 5 and 20-23 are
unpatentable over Palmere (U.S. Patent No. 5,104,664), either alone or in combination with other
prior art.
Palmere discloses methods and compositions for retarding and eradicating infestations of insects
and fungi in living trees, cut timber or lumber and other wood based products. It is an object of
Palmere's invention to provide solutions to the problems of wood infestation which are environmentally
safe, economical and adapted for efficient application under a wide variety of circumstances, including
application to living trees, lumber and other tree derived products, existing structures and dwellings as
well as within and around such structures and dwellings (column 3, lines 7-14). Palmere's invention is
specifically directed to treating such products with a composition comprising a borate salt, such as
disodium octaborate tetrahydrate and sodium salts of boric acid and boric oxide (column 4, lines 15-
17). The examiner should note especially Palmere's disclosure, in column 22, lines 15-16, that the
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formulations of Palmere's invention "may be used to treat decorative bark mulch to protect it from
infestation" (emphasis added).
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CONCLUSION
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To summarize, the decision of the examiner to reject claims 1, 4, 5 and 20-23 under 35 U.S.C.
§ 103 is reversed. However, the application is remanded to the examiner to consider the patentability
of the claims in light of the Palmere patent, as discussed above, and to take any appropriate action.
REVERSED and REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. PATE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
jdb/ki
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Application No. 08/683,411
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