Ex parte COX

Board of Patent Appeals and Interferences

Aug 31, 1999

08117648 (B.P.A.I. Aug. 31, 1999)

Application for patent filed September 8, 1993. 1
According to appellant, this application is a continuation of
Application 07/810,962, filed December 20, 1991, 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not written for publication in a law journal and (2) is not binding
precedent of the Board.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. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS C. COX
____________
Appeal No. 1996-0858
Application No. 08/117,6481
____________
ON BRIEF
____________
Before, JOHN D. SMITH, PAK, and KRATZ, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 1-4, 6-10, and 12-17, which are all of the
claims pending in this application.
Appeal No. 1996-0858 Page 2
Application No. 08/117,648
The appellant's invention relates to a method for
softening cotton toweling during its manufacture by treatment
with an aqueous cellulase solution and the cotton toweling
product thereof. An understanding of the invention can be
derived from a reading of exemplary claims 1 and 17, which
claims are reproduced below.
1. A method for softening cotton toweling during its
manufacture by treatment with cellulase which method
comprises:
(a) applying onto the surfaces of said toweling prior to
application of a finish to said toweling an aqueous cellulase
solution containing at least about 0.2 grams per liter
cellulase wherein the weight amount of said aqueous cellulase
solution applied onto the surface(s) of said toweling is
between about 10 to 50 percent of the weight of said toweling
and further wherein said aqueous cellulase solution is free of
surfactant;
(b) incubating the toweling at a temperature of from
about 20° to about 65°C for a period of from about 1 to about
16 hours to impart softening to said toweling; and
(c) treating the cotton toweling in a manner to remove
and/or inactivate the cellulase enzyme.
17. Cotton toweling prepared by the method which
comprises:
(a) applying onto the surfaces of said toweling prior to
application of a finish to said toweling an aqueous cellulase
solution containing at least about 0.2 grams per liter
cellulase wherein the weight amount of said aqueous cellulase
solution applied onto the surfaces(s) of said toweling is
between about 10 to 50 percent of the weight of said toweling
Appeal No. 1996-0858 Page 3
Application No. 08/117,648
The examiner refers to claims 1-4 and 6-16 as standing2
rejected under this ground of rejection (answer, page 3).
However, we note that claim 11 was canceled in an amendment
after final rejection filed April 22, 1994. The amendment was
indicated by the examiner as being entered upon the filing of
an appeal in an advisory action mailed June 23, 1994. We
and further wherein said aqueous cellulase solution is free of
surfactant;
(b) incubating the toweling at a temperature of from
about 20° to about 65°C for a period of from about 1 to about
16 hours to impart softening to said toweling; and
(c) treating the cotton toweling in a manner to remove
and/or inactivate the cellulase enzyme.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Barbesgaard et al. (Barbesgaard) 4,435,307 Mar. 06,
1984
Tai 4,479,881 Oct. 30,
1984
Spendel 4,489,455 Dec. 25,
1984
This merits panel of the Board of Patent Appeals &
Interferences cites and discusses the following reference.
Cox et al. (Cox) 5,232,851 Aug. 03, 1993
102(e) date - Oct. 16, 1990
Claims 1-4, 6-10 and 12-16 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Tai in view of Spendel.2
Appeal No. 1996-0858 Page 4
Application No. 08/117,648
observe that the above-noted amendment has not, as yet, been
physically entered by the examining group not withstanding a
Remand to the examiner mailed April 24, 1998 that ordered the
physical entry of that amendment in light of the advisory
action. Accordingly, the April 22, 1994 amendment should be
physically entered by the appropriate group personnel prior to
the final disposition of this application.
Claim 17 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Tai in view of Spendel or Barbesgaard.
Pursuant to the provisions of 37 CFR § 1.196(b), we make
the following new rejection: claim 17 is rejected under 35
U.S.C.
§ 102 as anticipated by and/or alternatively under 35 U.S.C.
§ 103 as being unpatentable over the admitted prior art in the
specification including the admissions as set forth at page 2,
lines 1-19, page 6, lines 7-14, and pages 16 and 17,
comparative example A.
OPINION
We have carefully reviewed the respective positions
presented by appellant and the examiner. In so doing, we find
ourselves in agreement with appellant's basic contention that
the applied prior art fails to establish a prima facie case of
Appeal No. 1996-0858 Page 5
Application No. 08/117,648
obviousness of the claimed subject matter. Accordingly, we
will not sustain the examiner's rejections.
The Tai reference as applied by the examiner is directed
to a laundering detergent combining cleaning and softening
performance properties during the use thereof in laundering
textiles. The Spendel reference as applied by the examiner is
directed to a laundering process and apparatus utilizing small
quantities of water compared to conventional washing
techniques.
The subject matter of claims 1-4, 6-10, and 12-16 is
drawn to a process for softening cotton toweling during its
manufacture by (a) applying a surfactant free aqueous
cellulase solution of a specified concentration and amount
onto the surfaces of the toweling prior to the application of
a finish to the toweling; (b) incubating the toweling for a
specified period of time under specified temperature
conditions; and (c) treating the toweling to remove or
inactivate the enzyme.
The fundamental flaw in the examiner's rejection of the
process claims under 35 U.S.C. § 103 as being unpatentable
over the combined teachings of Tai and Spendel is that the
Appeal No. 1996-0858 Page 6
Application No. 08/117,648
examiner's application of the applied references ignores the
claimed limitations as underlined in the paragraph above. The
examiner's assertions in the answer regarding whether or not
it would have been obvious to employ a spray technique as
opposed to a soaking step, vary the enzyme concentration and
vary the reaction time in the laundering technique of Tai in
view of Spendel's teachings of laundering techniques that save
water simply do not fully address and appreciate the subject
matter that is actually recited in the claims on appeal. As
indicated above, the examiner has not provided a satisfactory
explanation as to how the claimed step of applying surfactant
free aqueous cellulase solution to cotton toweling prior to
the application of a finish during the toweling manufacture
would have been rendered obvious by the applied prior art
teachings.
Likewise, conspicuously missing from the examiner's
discussion of the rejection of product by process claim 17
under 35 U.S.C. § 103 as being unpatentable over the combined
teachings of Tai in view of Spendel (as discussed above) or
Barbesgaard is recognition by the examiner that the product of
claim 17 is drawn to a cotton toweling that is treated with
Appeal No. 1996-0858 Page 7
Application No. 08/117,648
aqueous cellulase prior to the application of a finish
thereto. In this regard, the examiner's analysis of the
combined teachings of the applied laundering references
(answer, pages 5, 9 and 10) does not adequately explain how
the references are being combined such that the manufactured
toweling product of claim 17 would have been prima facie
obvious over the textiles laundered with the detergent of Tai
as modified by the teachings of Spendel or Barbesgaard. On
this record, we cannot conclude that a cotton toweling product
that has cellulase applied thereto prior to a finish as
claimed would have reasonably been expected to have
substantially the same or similar properties as a previously
manufactured textile product that is laundered with a combined
detergent and cellulase as apparently suggested by the
examiner.
We point out that in a rejection under 35 U.S.C. 103, it
is basic that all elements recited in a claim must be
considered and given effect in assessing the patentability of
that claim against the prior art. In re Geerdes, 491 F.2d
Appeal No. 1996-0858 Page 8
Application No. 08/117,648
1260, 1262-63, 180 USPQ 789, 791 (CCPA 1974); In re Wilder,
429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970).
Accordingly, in our judgement, a convincing factual
basis to support a legal conclusion that the claimed process
and/or product would have been obvious within the meaning of
35 U.S.C.
§ 103 from the combined teachings of the applied references
has not been furnished by the examiner. In light of the
foregoing, we will not sustain the examiner's rejections of
the appealed claims under 35 U.S.C. § 103 as being
unpatentable over the applied references.
Rejection of Claim 17 Pursuant to 37 CFR § 1.196(b)
Claim 17 is rejected under 35 U.S.C. § 102 as anticipated
by, and/or alternatively under 35 U.S.C. § 103 as unpatentable
over the admitted prior art in the specification (page 2,
lines 1-19, page 6, line 7-14, and pages 16 and 17,
comparative example A).
The admitted prior art in the specification describes a
cotton toweling product prepared by applying an aqueous
cellulase solution to a cotton cloth to soften the toweling.
The toweling is maintained in contact with the aqueous
Appeal No. 1996-0858 Page 9
Application No. 08/117,648
[T]he lack of physical description in a3
product-by-process claim makes determination of the
patentability of the claim more difficult, since in spite of
the fact that the claim may recite only process limitations,
it is the patentability of the product claimed and not of the
recited process steps which must be established. We are
therefore of the opinion that when the prior art discloses a
product which reasonably appears to be either identical with
or only slightly different than a product claimed in a
product-by-process claim, a rejection based alternatively on
either section 102 or section 103 of the statute is eminently
fair and acceptable.... As a practical matter, the Patent
Office is not equipped to manufacture products by the myriad
of processes put before it and then obtain prior art products
and make physical comparisons therewith. In re Brown, 459
F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
cellulase solution for a period of time at an elevated
temperature as specified in the comparative example A.
Thereafter, the treated toweling is rinsed and dried to
recover a softened toweling product.
Claim 17 is directed to a cotton toweling product that is
described by way of a product-by-process claim. It is well-
settled that the determination of the patentability of a
product-by-process claim is based on the product itself. With
regard to product-by-process claims, the Federal Circuit has
indicated in In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964,
965-66 (Fed. Cir. 1985) citing In re Brown , 459 F.2d 531,3
Appeal No. 1996-0858 Page 10
Application No. 08/117,648
535, 173 USPQ 685, 688 (CCPA 1972) and In re Pilkington, 411
F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969) that
product-by-process claims are not specifically discussed
in the patent statute. The practice and governing law
have developed in response to the need to enable an
applicant to claim an otherwise patentable product that
resists definition by other than the process by which it
is made. For this reason, even though product-by-process
claims are limited by and defined by the process,
determination of patentability is based on the product
itself. (citations omitted)
The patentability of a product does not depend on
its method of production. (citation omitted) If the
product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a
different process. (citations omitted)
Thus, the patentability of a product does not depend on
its method of production. If the product in a
product-by-process claim would have been obvious from or
anticipated by a product of the prior art, the claim is
unpatentable even if the prior product was made by a different
process.
Based on the record before us, we cannot ascertain any
patentably significant difference between the product cotton
toweling defined by claim 17 and the corresponding product of
the admitted prior art. In this regard, claim 17 defines a
Appeal No. 1996-0858 Page 11
Application No. 08/117,648
toweling product that is prepared by essentially the same
method as the prior art product with the specified exception
of the weight amount of aqueous cellulase solution applied to
the toweling and the length of time of the application. In
both the admitted prior art product production method
(comparative Example A, for example) and the claimed product
preparation process, the applied cellulase enzyme is removed
and/or inactivated by subsequent steps such as rinsing and
drying. Thus, the only apparent potential difference(s) in
the respective products is whether the different methods of
application of the cellulase solution result in products
having diverging properties. However, no particular product
characteristics or properties are specifically required by
claim 17 so as to differentiate the claimed product from the
admitted prior art. We note that claim 17 is not limited to a
product prepared by the method of example 1 of the
specification such that the tensile strength and absorbency
properties reported for example 1 of the specification could
be imputed to the claimed product. In this regard, we observe
that the toweling product of example 1 was prepared by a
method that included using cotton terry cloth that was sprayed
Appeal No. 1996-0858 Page 12
Application No. 08/117,648
on both sides with a specified cellulase formulation that
included a surfactant which surfactant is excluded by the
preparation method for the product recited in claim 17.
Moreover, the product of claim 17 is not limited to the
particulars of the preparation method specified in example 1.
In addition, as set forth at pages 5 through 10 of the
specification, a variety of unspecified factors to which claim
17 is open, such as the presence or absence of buffers, ph,
the particular cellulase enzyme utilized, etc., will effect
the toweling product properties. Thus, we find that the
product toweling of claim 17 embraces a wide range of
softness, tensile strength, absorbency, and other properties
as would toweling products of the admitted prior art.
Accordingly, on this record, we conclude that the claimed
toweling product would reasonably appear to embrace the
admitted prior art toweling product including being open to
having the same or similar softness, tensile strength,
absorbency, and other properties of the admitted prior art
product.
In view of the above, one skilled in the art would have a
reasonable expectation that the products are the same. See In
Appeal No. 1996-0858 Page 13
Application No. 08/117,648
re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA
1977). Appellants have not shown that the claimed product
differs from the prior art product in any patentably
significant way.
From the above, we conclude that the admitted prior art
product anticipates the claimed product under 35 U.S.C. § 102
and/or would have rendered the claimed product prima facie
obvious to a skilled artisan under 35 U.S.C. § 103.
Appellants' arguments, of record, have been considered
but are not found convincing for reasons expressed above. In
addition, with respect to the § 103 alternative rejection, we
do not find example 1 of the specification to be commensurate
in scope with the claimed product for the reasons set forth
above. Accordingly, we cannot subscribe to appellant's
assertion that convincing evidence of unexpected results has
been presented.
OTHER ISSUES
In the event of further or continuing prosecution, the
examiner and appellants should determine the patentability of
Appeal No. 1996-0858 Page 14
Application No. 08/117,648
A copy of the Cox Patent is being forwarded to appellant4
together with this decision.
the claimed subject matter in view of Cox (U.S. Patent No.4
5,232,851) and the references cited therein, particularly at
columns 1 and 2 thereof. Cox discloses a method for treating
cotton woven fabric with cellulase to improve the feel and
appearance thereof. Moreover, Cox provides references to prior
art methods of treating cotton fabrics with cellulase prior to
a finishing treatment thereof.
Appeal No. 1996-0858 Page 15
Application No. 08/117,648
CONCLUSION
The examiner's rejections of claims 1-4, 6-10 and 12-16
under 35 U.S.C. § 103 as being unpatentable over Tai in view
of Spendel, and of claim 17 as being unpatentable under 35
U.S.C.
§ 103 over Tai in view of Spendel or Barbesgaard are reversed.
Pursuant to the provisions of 37 CFR § 1.196(b), the
following new ground of rejection has been made. Claim 17 is
rejected under 35 U.S.C. § 102 as anticipated by and/or
alternatively under 35 U.S.C. § 103 as being unpatentable over
the admitted prior art in the specification including the
admissions as set forth at page 2, lines 1-19, page 6, lines
7-14, and pages 16 and 17, comparative example A.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53, 131, 53, 197 (Oct. 10,
1997), 1203 off. Gaz. Pat. & Trademark Office 63,122 (Oct 21,
1997) ). 37 CFR § 1.196 (b) provides that, "A new ground of
rejection shall not be considered final for purposes of
judicial review."
Appeal No. 1996-0858 Page 16
Application No. 08/117,648
37 CFR § 1.196 (b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (§
1.197 (c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts
relating to the claims so rejected, or
both, and have the matter reconsidered by
the examiner, in which event the
application will be remanded to the
examiner. . . .
(2) Request that the application be reheard
under § 1.197 (b) by the Board of Patent Appeals
and Interferences upon the same record . . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED - 37 CFR § 1.196 (b)
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 1996-0858 Page 17
Application No. 08/117,648
CHUNG K. PAK )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PETER F. KRATZ )
Administrative Patent Judge )
PFK/jlb
Gerald F. Swiss
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