Ex parte Eklund et al.

Board of Patent Appeals and Interferences

Apr 13, 2000

08220212 (B.P.A.I. Apr. 13, 2000)

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not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MEL W. EKLUND, FRANK T. POYSKY,
ROHINEE N. PARANJPYE, LAURA C. LASHBROOK,
MARK E. PETERSON and GRETCHEN A. PELROY
____________
Appeal No. 1996-2598
Application No. 08/220,212
____________
HEARD: April 6, 2000
____________
Before WILLIAM F. SMITH, HANLON, and SPIEGEL, Administrative Patent Judges.
SPIEGEL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims
5 through 10 and 22. Claims 13-21 have been withdrawn from further consideration under 37 CFR §
1.142(b) as not readable on the elected invention. Claims 1-4 and 11-12, the only other claims
Appeal No. 1996-2598
Application No. 08/220,212
It is our understanding that appellants intend to remove the comma between the words “esculin” and1
“and” as unnecessary and editorially incorrect (reply brief, page 4, last para.).
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pending in this application, are not on appeal (brief, page 1). Claims 5 and 22 are representative of the
subject matter on appeal and read as follows:
5. A selective and differential medium for Listeria monocytogenes, devoid of
esculin, [sic] and phenylethanol comprising:
i) an agar base layer comprising lithium chloride, antibiotics and/or acceptable
salts thereof in amounts effective to selectively inhibit microbes other than Listeria, and
ii) an agar overlay comprising blood in amounts effective to produce ß-
hemolytic zones characteristic of L. monocytogenes colonies.1
22. A selective and differential medium for Listeria monocytogenes,
consisting essentially of
i) an agar layer comprising lithium chloride, antibiotics and/or acceptable salts
thereof in amounts effective to selectively inhibit microbes other than Listeria, and
ii) an agar overlay comprising blood in amounts effective to produce ß-
hemolytic zones characteristic of L. monocytogenes colonies.
The references relied on by the examiner are:
Blanco et al. (Blanco), “A technique for the direct identification of haemolytic-pathogenic
listeria on selective plating media,” 9 Letters in Applied Microbiology 125-128 (1989).
Cassiday et al. (Cassiday), “Evaluation of ten selective direct plating media for enumeration of
Listeria monocytogenes in hams and oysters,” 6 Food Microbiology 113-125 (1989).
Cox et al. (Cox), “Enhanced haemolysis agar (EHA) - an improved selective and differential
medium for isolation of Listeria monocytogenes,” 8 Food Microbiology 37-49 (1991).
Lee et al. (Lee), “Improved Listeria monocytogenes Selective Agar,” 52 Applied and
Environmental Microbiology 5, 1215-1217 (November 1986).
Appeal No. 1996-2598
Application No. 08/220,212
According to the examiner, upon reconsideration the final rejection of claim 22 under 35 U.S.C. § 112,2
second paragraph, as indefinite is withdrawn (answer, page 2). Moreover, in that the final rejection of claims 5-10
under 35 U.S.C. § 112, second paragraph, is not repeated in the answer, it is presumed to have been withdrawn.
Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
This is a new ground of rejection entered by the examiner in her answer (page 6).3
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Appellants rely on the following reference supplied with their reply brief:
H. Ramsey Fowler et al. (Fowler), THE LITTLE, BROWN HANDBOOK 202-203 (5th ed.,
1992).
ISSUES2
Claims 5 and 22 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Blanco.
Claims 5-10 and 22 stand rejected under 35 U.S.C. § 103 as being unpatentable over Cox taken with
Blanco, Lee and Cassiday. Claims 5-10 are newly rejected under 35 U.S.C. § 112, first paragraph, as
based on new matter and because the specification fails to provide an adequate written description of
the claimed invention. We reverse all three rejections.3
In reaching our decision in this appeal we have given careful consideration to the appellants’
specification and claims and to the respective positions articulated by the appellants and the examiner.
We make reference to the examiner’s answer (Paper No. 9, mailed
June 1, 1995) and to the examiner’s supplemental answer (Paper No. 13, mailed
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Application No. 08/220,212
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October 18, 1995) for the examiner’s reasoning in support of the rejections and to the appellants’ brief
(Paper No. 8, filed March 30, 1995), to the appellants’ reply brief (Paper No. 12, filed
August 1, 1995) and to the appellants’ supplemental reply brief (Paper No. 15, filed
November 17, 1995) for the appellants’ arguments thereagainst.
Appellants’ claimed invention is directed to a selective and differential medium for the isolation
of Listeria monocytogenes (brief, page 2).
OPINION
I. Rejection of claims 5-10 under 35 U.S.C. § 112, first paragraph, based on new matter
because of a lack of adequate written description of the claimed invention in the
specification as originally filed.

The test for determining compliance with the written description requirement is whether the
disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter, rather than the presence or absence of literal
support in the specification for the claim language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375,
217 USPQ 1089, 1096 (Fed. Cir. 1983).
According to the examiner there is no basis or support in the specification for the exclusion of
phenylethanol from the claimed composition (answer, page 6). Appellants argue that page 15 of the
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Application No. 08/220,212
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specification states “only chemical agents that do not negatively impact the viability of L.
monocytogenes should be used in the medium of the invention and agents such as acriflavine are to be
avoided” and page 4 of the specification clearly discloses that phenylethanol inhibits repair of heat-
injured cells of Listeria (reply brief, page 2). We agree with appellants
that the originally filed disclosure supports excluding phenylethanol from the later claimed composition.
Literal support of the later claimed subject matter is not required. Id. The examiner has the initial
burden of establishing a prima facie case of lack of an adequate written description. In re Wertheim,
541 F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976). The examiner erred in not addressing
appellants’ explicit arguments based on pages 4 and 15. Thus, we will not sustain the rejection of
claims 5-10 on the basis of an inadequate written description and new matter. Having concluded that
the examiner has failed to establish a prima facie case of lack of an adequate written description, we
do not reach the rebuttal evidence discussed at pages 2-3 of appellants’ reply brief.
II. Rejection of claims 5 and 22 under 35 U.S.C. § 102 as anticipated by Blanco.
Blanco describes adding an agar overlay comprising red blood cells to a selective plating
medium after listeria growth in order to detect directly the hemolytic activity of pathogenic listeria
(abstract; page 126, col. 1, first full para.). Five selective media are disclosed, including
(1) modified McBride agar (MMA) (Lovett 1988), (2) lithium chloride-phenylethanol-moxalactam
(LPM), (3) polymyxin-acriflavine-lithium chloride-ceftazidime-aesculin-mannitol (PALCAM), (4)
Appeal No. 1996-2598
Application No. 08/220,212
See J. Lovett, “Isolation and Enumeration of Listeria monocytogenes,” 42 Food Technology 172-175,4
Table 4, page 174 (copy attached) as referenced by Blanco.
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listeria selective medium (LSM) (Oxford formulation), and (5) LSAMM composed of agar, lithium
chloride, aesculin, ammonium ferric citrate, potassium tellurite, acriflavine HCl, polymixin B sulphate
and sodium ceftazidine sulphate (page 126, “MEDIA”).
According to the examiner, “[t]he McBride agar (MMA) comprises lithium chloride and
antibiotics in amounts effective to selectively inhibit microbes other than Listeria, while the agar overlay
comprises blood in amounts effective to produce ß-hemolytic zones” and, thus, claims 5 and 22 are
anticipated by Blanco (answer, pages 3 and 4). However, MMA comprises phenyl ethanol agar,
glycine anhydride, lithium chloride and cycloheximide. Therefore, since the claim 5 preamble language4
“devoid of ... phenylethanol” and the claim 22 language “consisting essentially of” both preclude the
presence of phenylethanol, we will not sustain the examiner’s rejection of claims 5 and 22 based on
Blanco.
III. Rejection of claims 5-10 and 22 under 35 U.S.C. § 103 as unpatentable over Cox taken
with Blanco, Lee and Cassiday.
Cox describes a selective and differential medium for L. monocytogenes comprising an agar
base, lithium chloride, 4-methylumbelliferyl-ß-D-glucoside, antibiotic supplement (i.e., cycloheximide,
colistin sulphate, acriflavine, cefotetan, fosfomycin), whole sheep blood and sphinogmyelinase (Table 2,
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page 40). As discussed above, Blanco describes a blood agar overlay technique to determine the
hemolytic activity of plated selective media. Lee also describes using a blood agar overlay on a
streaked LPM agar to screen for hemolytic activity of
L. monocytogenes (page 1215). Cassiday describes ten direct plating media for isolating and
enumerating four strains of noninjured and injured L. monocytogenes, wherein the media used a variety
of antibiotics and chemicals (para. bridging pages 113-114; para. bridging pages 114-115).
According to the examiner, “[t]he sole difference between the claimed invention and the
teachings of Cox et al. is the application of the blood component as part of the mixture rather than as an
agar overlay” and Blanco especially suggests the benefits from use of the overlay method, e.g., clearer
visualization (answer, page 9). However, as noted above, the claim 5 preamble language “devoid of
esculin, [sic] and phenylethanol” and the claim 22 language “consisting essentially of” both preclude the
presence of ingredients, e.g., acriflavine (disclosed by Cox), phenylethanol (disclosed by Blanco and
Lee) and esculin (disclosed by Blanco), which negatively impact the viability of L. monocytogenes (see
specification, page 15, lines 1-3; page 4, lines 11-12 and 15-16; page 13, lines 10-12; page 14, line
21; original claims 1, 5, 13, 14 and 21). Rather than specifically addressing the exclusion of these
ingredients, the examiner argues that excluding phenylethanol would be expected to result in a medium
which was less selective for L. monocytogenes because the absence of phenylethanol, an antimicrobial,
would allow other contaminating bacteria to survive (answer, pages 10-11). However, the claimed
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invention does not exclude the presence of antimicrobials per se, only those which negatively impact the
viability of L. monocytogenes. Therefore, the examiner’s position is not well taken.
The examiner relies on Cassiday for its disclosure regarding optimization of antibiotics
concentration and addition of iron to solid media (answer, pages 4-5). The examiner does not point
out, and we do not find, where Cassiday addresses the ingredients excluded from claims 5 and 22.
Indeed, none of the references positively exclude ingredients excluded by the language of the claimed
invention. Thus, we will not sustain the examiner’s rejection of claims 5-10 and 22 over Cox taken
with Blanco, Lee and Cassiday. Having concluded that the examiner has failed to establish a prima
facie case of obviousness over Cox, Blanco, Lee and Cassiday, we do not reach the rebuttal evidence
discussed at page 6 of appellants’ reply brief.
Appeal No. 1996-2598
Application No. 08/220,212
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CONCLUSION
To summarize, the decision of the examiner (I) to reject claims 5-10 under 35 U.S.C.
§ 112, first paragraph, as based on new matter and because the specification fails to provide an
adequate written description of the claimed invention, (II) to reject claims 5 and 22 under
35 U.S.C. § 102(b) as being anticipated by Blanco and (III) to reject claims 5-10 and 22 under
35 U.S.C. § 103 as being unpatentable over Cox taken with Blanco, Lee and Cassiday is reversed.
REVERSED
WILLIAM F. SMITH )
Administrative Patent Judge )
Appeal No. 1996-2598
Application No. 08/220,212
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)
)
)
) BOARD OF PATENT
ADRIENE LEPIANE HANLON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
CAS/kis
THOMAS P. PAVELKO, ESQ.
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