Ex parte CARLE et al.

Board of Patent Appeals and Interferences

Nov 13, 1997

07908856 (B.P.A.I. Nov. 13, 1997)

Application for patent filed July 1, 1992. According1
to appellants, this application is a continuation of
Application 07/780,387, filed October 23, 1991, now abandoned;
which is a continuation of Application 07/155,555, filed
February 12, 1988, now abandoned.
-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journal and (2) is not binding precedent of the Board.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. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte REINHOLD CARLE and OTTO ISAAC
________________
Appeal No. 93-2757
Application 07/908,8561
________________
ON BRIEF
________________
Before WINTERS, SOFOCLEOUS and GRON, Administrative Patent
Judges.
WINTERS, Administrative Patent Judge.
Appeal No. 93-2757
Application 07/908,856
-2-
DECISION ON APPEAL
This appeal was taken from the examiner’s decision
rejecting claims 7 through 14, which are all of the claims
remaining in the application.
REPRESENTATIVE CLAIMS
Claims 13 and 14, which are illustrative of the subject
matter on appeal, read as follows:
13. A process for the manufacture of camomile oil having
a high content of natural spiroethers including a cis-
spiroether content of at least 0.5 mg per 100 g of the
camomile oil and a trans-spiroether content of at least 0.3 mg
per 100 mg of camomile oil, which process comprises subjecting
an extraction residue of a camomile extraction to steam
distillation or to an aqueous distillation.
14. A process for the manufacture of camomile oil having
a high content of natural spiroethers including a cis-
spiroether content of at least 0.5 mg per 100 g of the
camomile oil and a trans-spiroether content of at least 0.3 mg
per 100 mg of camomile oil, which process comprises subjecting
fresh camomile, Matricaria Chamomilla (L.), to steam
distillation or to an aqueous distillation.
THE PRIOR ART REFERENCE
The prior art reference cited and relied on by the
examiner is:
Franz et al. GB 2 170 404 A Aug. 6, 1986
(UK Patent Application)
THE ISSUE
Appeal No. 93-2757
Application 07/908,856
-3-
The issue presented for review is whether the examiner
erred in rejecting claims 7 through 14 under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under
35 U.S.C. § 103 as unpatentable over GB 2 170 404 A.
DELIBERATIONS
Our deliberations in this matter have included evaluation
and review of the following materials: (1) the instant
specification, including all of the claims on appeal; (2)
appellants’ main Brief and Reply Brief before the Board; (3)
the Examiner’s Answer and the communication mailed by the
examiner March 28, 1996 (Paper No. 39); (4) GB 2 170 404 A;
(5) the Carle Declaration, filed under the provisions of
37 CFR § 1.132, executed May 20, 1992; and (6) the opinion and
decision entered by a different merits panel of this Board in
Serial No. 07/155,555 (Appeal No. 90-1845, dated August 28,
1991).
On consideration of the record, including the above-
listed materials, we affirm the examiner’s decision rejecting
claims 7 through 13. However, we reverse the examiner’s
decision rejecting claim 14.
CLAIMS 7 THROUGH 13
Appeal No. 93-2757
Application 07/908,856
-4-
Claims 7 through 13 define a process for manufacturing
camomile oil having a high content of natural spiroethers,
wherein the manipulative step comprises subjecting “an
extraction residue of a camomile extraction” to steam or
aqueous distillation. The relatively broad phrase “an
extraction residue of a camomile extraction” places no
restriction on the nature or parameters of the extraction
step. Furthermore, the extraction residue may be, for
example, a dry residue. See the instant specification, page
8, second full paragraph.
Giving these claims their broadest reasonable
interpretation consistent with the specification, In re Sneed,
710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983), we
conclude that appellants’ starting material “reads on” the
dried camomile flowerheads or drug of the camomile as disclosed
by GB 2 170 404 A in Example 1, page 13, lines 4 through 18.
Simply stated, we discern no limitation in claims 7 through 13
serving to distinguish “an extraction residue of a camomile
extraction” from the dried flowerheads disclosed by the
reference. Again, during patent examination, pending claims
must be interpreted as broadly as their terms reasonably allow.
Appeal No. 93-2757
Application 07/908,856
-5-
In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989).
GB 2 170 404 A describes a process for preparing camomile
oil which comprises subjecting dried camomile flowerheads or
drug of the camomile to aqueous or steam distillation. See
page 16, Example 7 of the reference. This reasonably appears
to constitute a description of the invention defined in claims
7 through 13 within the meaning of 35 U.S.C.
§ 102(b). Compare In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433-34 (CCPA 1977). See also In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) (discovery
of a new benefit of an old process does not make the old
process patentable again).
Accordingly, we affirm the examiner’s decision rejecting
claims 7 through 13 on prior art grounds based on GB 2 170 404
A.
CLAIM 14
In Example 7, page 16, GB 2 170 404 A discloses a process
for preparing camomile oil which comprises subjecting dried
camomile flowerheads to aqueous or steam distillation. Claim
17 of the reference, page 19, describes in relevant part “[a]n
Appeal No. 93-2757
Application 07/908,856
-6-
essential oil obtained using fresh, frozen or dried flowers of
a tetraploid camomile as claimed in claim 1 or 2" (emphasis
added).
To sustain the examiner’s rejection of claim 14 under
35 U.S.C. § 102(b), it would be necessary to combine the
disclosures of Example 7 and claim 17 of the British patent.
This is improper. As stated in In re Arkley, 455 F.2d 586,
587-88, 172 USPQ 524, 526 (CCPA 1972):
Thus, for the instant rejection under 35 U.S.C.
§ 102(e) to have been proper, the Flynn reference
must clearly and unequivocally disclose the claimed
compound or direct those skilled in the art to the
compound without any need for picking, choosing, and
combining various disclosures not directly related
to each other by the teachings of the cited
reference. Such picking and choosing may be
entirely proper in the making of a 103, obviousness
rejection, where the applicant must be afforded an
opportunity to rebut with objective evidence any
inference of obviousness which may arise from the
similarity of the subject matter which he claims to
the prior art, but it has no place in the making of
a 102, anticipation rejection.
Accordingly, we shall not sustain the examiner’s rejection
under 35 U.S.C. § 102(b) because “such picking and choosing”
has no place in the making of a § 102 rejection.
Furthermore, GB 2 170 404 A expounds the importance of
drying camomile flowerheads during recovery of the drug. The
Appeal No. 93-2757
Application 07/908,856
-7-
reference teaches that the temperature of drying is a result-
effective variable, i.e., drying the flowerheads at
temperatures no higher than 50EC produces a relatively high
content of chamazulene and (-)-"-bisabolol in the recovered
product. See the reference, page 7, line 62 through page 8,
line 30; page 9, lines 46 through 52; and page 13, lines 4
through 25. On these facts, we do not believe that claim 17
of GB 2 170 404 A, considered in conjunction with Example 7,
unequivocally describes a process of subjecting fresh camomile
flowers to aqueous or steam distillation. Rather, the more
plausible interpretation of the reference is that fresh
flowerheads are used to prepare dried flowerheads which, in
turn, are used to prepare essential oils by aqueous or steam
distillation. To the extent that the previous Board opinion
(Appeal No. 90-1845, dated August 28, 1991) may be interpreted
as finding that Example 7 of the British patent, coupled with
claim 17 therein, describes the invention here defined in
claim 14, we disagree.
For these reasons, we reverse the rejection of claim 14
under 35 U.S.C. § 102(b) based on the description in GB 2 170
404 A.
Appeal No. 93-2757
Application 07/908,856
-8-
We shall not pass on the question whether the invention
defined in claim 14 would have been prima facie obvious over
GB 2 170 404 A. Rather, for the purposes of this appeal, we
shall assume arguendo that GB 2 170 404 A establishes a case
of prima facie obviousness of this claim. The Carle
Declaration, however, rebuts any such prima facie case.
In the Carle Declaration, executed May 20, 1992, the
declarant conducted side-by-side tests comparing the aqueous
distillation of fresh and dried camomile flowers. Both
distillations were carried out “exactly as in Example 7 of
British patent 2 170 404.” As reported in the declaration,
the aqueous distillation of fresh flowers provided a
significantly enhanced yield of (-)-"-bisabolol, chamazulene,
cis-spiroether and trans-spiroether.
The examiner does not critique the Carle Declaration in
any manner whatsoever, e.g., by arguing that the tests therein
are not truly comparative or that the results achieved are
merely expected or that the enhanced yields of (-)-"-
bisabolol, chamazulene, cis-spiroether and trans-spiroether
are insignificant. On the contrary, with respect to the
declaration evidence, the examiner is silent. This
Appeal No. 93-2757
Application 07/908,856
-9-
constitutes reversible error. As stated in Richardson-Vicks
Inc. v. The Upjohn Co., 122 F.3d 1476, 1483, 44 USPQ2d 1181,
1186 (Fed. Cir. 1997), quoting from In re Soni, 54 F.3d 746,
750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), “all evidence of
nonobviousness must be considered when assessing
patentability.”
On this record, we find that (1) the distillation of
fresh camomile flowers gives rise to unexpectedly superior
results as reported in the Carle Declaration, and (2) the
declaration evidence serves to rebut any prima facie case of
obviousness of claim 14 said to be established by 2 170 404 A.
On the strength of the declaration evidence, we reverse the
examiner’s rejection of claim 14 under 35 U.S.C. § 103.
CONCLUSION
For the reasons set forth in the body of this opinion, we
affirm the examiner’s decision rejecting claims 7 through 13
on prior art grounds based on GB 2 170 404 A. We reverse the
rejection of claim 14 under 35 U.S.C. § 102(b) or, in the
alternative, under 35 U.S.C. § 103 as unpatentable over
GB 2 170 404 A. Accordingly, the examiner’s decision is
affirmed-in-part.
Appeal No. 93-2757
Application 07/908,856
-10-
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

SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
MICHAEL SOFOCLEOUS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TEDDY S. GRON )
Administrative Patent Judge )
Appeal No. 93-2757
Application 07/908,856
-11-
Cushman, Darby & Cushman
9th Floor
1100 New York Ave.
Washington, DC 20005-3918