Ex Parte Dando

Board of Patent Appeals and Interferences

Jul 13, 2007

10845785 (B.P.A.I. Jul. 13, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS E. DANDO
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Appeal 2007-0086
Application 10/845,785
Technology Center 1700
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Decided: July 13, 2007
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-40.1 We have jurisdiction under 35 U.S.C. § 6.

1 As correctly pointed out by the Examiner (Answer 2), the Appellant’s
discussion in the Brief of objections to the Specification and certain claims
relates to a petitionable rather than appealable matter. See Manual of
Patenting Examining Procedure (MPEP) § 1201 (8th ed., Rev. 3, Aug.
2005). Accordingly, this matter will not be addressed in the opinion which
follows.
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We AFFIRM.
The Appellant claims a process for preparing a foundry shape which
comprises: preparing a foundry mix comprising foundry aggregate, an acid-
curable resin, and a catalytically effective amount of an acid catalyst and
having a work time of 3-10 minutes; shaping the foundry mix into a foundry
shape; and partially or totally removing water from the foundry shape to
thereby improve the speed of cure of the acid-curable resin. According to
Appellant, “[t]he novel aspect of this process is that water is partially or
totally removed from the foundry shape after it is shaped in the pattern”
(Specification 8). This claimed subject matter is adequately illustrated by
independent claim 1 and dependent claim 40 which read as follows:
1. A process for preparing a foundry shape comprising:
A. preparing a foundry mix comprising a major amount of foundry
aggregate, an effective binding amount of an acid-curable resin, and a
catalytically effective amount of an acid catalyst and having a work time of
3-10 minutes;
B. then shaping the foundry mix into a foundry shape; and
C. then partially or totally removing water from the foundry shape
to thereby improve the speed of cure of the acid-curable resin.
40. The process claim 1, 16 or 28 wherein the foundry shape is
substantially cured within 15 minutes.
The references set forth below are relied upon by the Examiner as
evidence of unpatentability:
Brown US 3,184,814 May 25, 1965
Lang US 3,306,864 Feb. 28, 1967
Marsden US 4,782,102 Nov. 1, 1988
Iyer US 4,848,442 Jul. 18, 1989
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Claims 1-40 are rejected under the first paragraph of 35 U.S.C. § 112
for failing to comply with the written description requirement.
Claim 40 is rejected under the second paragraph of 35 U.S.C. § 112
for failing to particularly point out and distinctly claim the subject matter
which Appellant regards as his invention.
Claims 1-3, 11-18, 26-30, and 38-40 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by, or alternatively under 35 U.S.C. § 103(a) as
being obvious over, Brown.
The remaining appealed claims are rejected under 35 U.S.C. § 103(a)
as being obvious over Brown in view of Marsden or Brown in view of either
Iyer or Lang.

OPINION
For the reasons expressed in the Answer and below, we will sustain
the § 112, 2d ¶, rejection as well as each of the § 102 and § 103 rejections.
However, we will not sustain the § 112, 1st ¶, rejection as fully explained
hereinafter.

The § 112, 2d ¶, Rejection
Claim 40 requires the foundry shape to be “substantially cured” within
15 minutes. According to the Examiner, the claim is indefinite because the
Specification contains no definition or guidance as to the meaning or scope
of the term “substantially” (Answer 4, 8). We agree.
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An imprecise term of degree, such as “substantially,” does not
automatically render a claim indefinite. Seattle Box v. Indus. Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1981).
Whether the claim is indefinite depends upon whether the Specification
provides some standard for measuring the degree of the term such that an
artisan would understand what is claimed when the claim is read in light of
the Specification. Id. Therefore, the § 112, 2d ¶, question raised by an
imprecise term such as “substantially” is fact-dependent by its nature. Id.,
731 F.2d at 829, 221 USPQ at 576.
The Examiner is correct that the phrase “substantially cured,” though
recited in the Specification at page 11, line 23, is not accompanied by any
definition or guidance as to the meaning of “substantially.” The Appellants
state that “[p]ersons skilled in the art would appreciate that to be
‘substantially cured,’ the shape would be capable of being removed from the
mold while maintaining its desired shape” (Br. 7). However, no evidence
has been proffered in support of this statement.
Moreover, the statement is not compatible with the Specification
disclosure. This is because the afore-quoted meaning ascribed to
“substantially cured” in the Brief is described in the Specification, at page 1,
as relating to foundry shapes after the striptime has elapsed (ll. 25-31). On
the other hand, the Specification at page 2 describes foundry shapes as
“cured” when they can be used for casting metals (ll. 3-4). Therefore,
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Appellant’s proffered definition of “substantially cured” is inconsistent with
the Specification descriptions discussed above.
Under these circumstances, we determine that neither the
Specification nor any other aspect of the record before us evinces that one
with ordinary skill in this art would reasonably understand what is defined
by the claim 40 phrase “substantially cured.” We hereby sustain, therefore,
the Examiner’s § 112, 2d ¶, rejection of claim 40.

The § 112, 1st ¶, Rejection
The Examiner bears the initial burden of establishing a prima facie
case of unpatentability for lack of written description, and this burden is
discharged by presenting evidence or reasons why persons skilled in the art
would not recognize in the inventor’s disclosure a description of the
invention defined by the claims. In re Alton, 76 F.3d 1168, 1175,
37 USPQ2d 1578, 1583 (Fed. Cir. 1996).
In the Examiner’s opinion, the appealed claims fail to comply with the
written description requirement by virtue of the claim phrase “having a work
time of 3-10 minutes” (Claim 1). The Examiner acknowledges that page 1
of the Specification discloses “a desired worktime ranges from 3 to 10
minutes” (ll. 29-30) but indicates that this disclosure relates to the prior art
and not the Appellant’s invention (Answer 3).
The Appellant argues that the afore-noted Specification, page 1,
disclosure of desired work times relates to commercial processes requiring
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high productivity and that the invention is disclosed as increasing
productivity without adversely affecting the work time (Specification 4:1-4)
(Br. 7).
We share the Appellant’s implicit position that an artisan would
recognize in the above-discussed disclosures of the Specification at pages 1
and 4 a description of the here-claimed invention wherein the foundry mix is
defined as “having a work time of 3-10 minutes” (Claim 1). This is
particularly so because the invention is described as not adversely affecting
work time (Specification 4).
It follows that we cannot sustain the Examiner’s § 112, 1st ¶, rejection
of claims 1-40 as failing to comply with the written description requirement.

The Prior Art Rejections
In contesting these rejections, Appellant separately argues only
dependent claim 40 (Br. 2, 10). Therefore, in discussing these rejections, we
will focus on independent claim 1, which is the broadest appealed claim, and
separately argued dependent claim 40.
The Examiner’s § 102 rejection of these (and other) claims is well
taken for the reasons fully detailed by the Examiner (Answer 4-5, 8-9). The
Appellant argues that “[t]he compositions required by Brown are diluted in
water [and] do not contain a catalytically effective amount of acid catalyst
prior to shaping the foundry mix [because the catalyst] . . . only becomes
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effective upon modifying the initial composition by removing water” (Br. 8).
This argument is unpersuasive.
As correctly found by the Examiner, Brown’s foundry mix contains a
catalytically effective amount of an acid catalyst (col. 2, ll. 6-11 and 56-60).
We understand the Appellant’s point that the acid catalyst is initially diluted
with water and not catalytically active until the water is removed (id.).
However, we find nothing and the Appellant points to nothing in claim 1
which excludes an initially diluted acid catalyst from which water must be
removed in order to initiate the catalytic reaction.
To the extent Appellant believes Brown’s foundry mix would not
have the claim 1 work time of 3-10 minutes (Br. 9), such a belief is without
support on this record. As noted by the Examiner (and not disputed by
Appellant with any reasonable specificity), “it is inherent that the shaped
foundry of Brown exhibit[s] the presently claimed work time given that it
undergoes an identical process to the one presently claimed” (Answer 5).
This inherency position is also supported by Brown’s disclosure of water
removal to obtain shaped foundry specimens which have a sufficient green
hardness that they can be removed from the mold or pattern without danger
of breaking (col. 3, l. 28 - col. 4, l. 17). This is because the aforementioned
steps and parameters (e.g., hardness) of Brown correspond to those disclosed
(e.g., Specification 1) and claimed by Appellants.
In Brown’s above-discussed embodiment, water is removed with a
heated air stream to produce green hardness (80-90) sufficient to allow
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removal of the specimen from the mold whereupon final curing occurs under
room temperature conditions (col. 3, l. 28 - col. 4, l. 17). This final curing at
room temperature may require as much as 3 hours (col. 4, ll. 9-13) but may
require much less time, for example, 10 minutes (Example 1; col. 4, ll. 30-
33). Contrary to the Appellant’s argument (Br. 10), this last mentioned cure
time satisfies claim 40 which recites “the foundry slope [sic, shape] is
substantially cured within 15 minutes” (and therefore encompasses a
complete cure within 15 minutes). This claim also is satisfied by Brown’s
alternative embodiment wherein a heated gas stream is passed through the
specimen until complete curing is achieved in 5 minutes or less (col. 6, ll.
10-14, ll. 22-37, ll. 48-55; col. 8, ll. 5-8, ll. 44-47).
For the reasons set forth above and in the Answer, the Examiner has
established a prima facie case of unpatentability based on anticipation with
respect to claims 1 and 40 (i.e., the only claims argued in the record of this
appeal) which the Appellant has failed to successfully rebut with argument
or evidence of patentability. In re Oetiker, 977 F.2d 1443, 1444,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Therefore, we hereby sustain the
§ 102 rejection of claims 1-3, 11-18, 26-30, and 38-40 as being anticipated
by Brown. We also sustain the alternative § 103 rejection of these claims
based on the proposition that anticipation is the epitome of obviousness.
In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982).
The other § 103 rejections of the remaining claims on appeal are sustained
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because Appellant has submitted no arguments thereagainst which are
additional to the unsuccessful arguments discussed above.

Summary
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

AFFIRMED

clj

David L. Hedden
Ashland Inc.
P.O. Box 2219
Columbus, OH 43216