Ex parte Engst

Board of Patent Appeals and Interferences

Mar 16, 2000

08170177 (B.P.A.I. Mar. 16, 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for publication in a law journal and (2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILHELM ENGST
____________
Appeal No. 1997-1122
Application No. 08/170,177
____________
HEARD: March 08, 2000
____________
Before GARRIS, OWENS, 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 14, 15, 17, 20, 22-32, and 34 as amended after
the final rejection, which are all of the claims pending in
this application.
BACKGROUND
Appellant's invention is directed to an absorption mat
for hydrocarbons in liquid, solid or paste form. The mat
includes a flat molded body of plate or block shape formed
from elastomeric granulates or shavings that are joined in a
Appeal No. 1997-1122 Page 2
Application No. 08/170,177
rigid bond with each other via a binding means. The binding
means is resistant to hydrocarbons so as to allow the mat body
to maintain its overall shape not withstanding contact with
the hydrocarbons. Moreover, the granulates or shavings are
joined in a fashion such that a multiplicity of hollow spaces
that communicate with each other are formed in the body.
Additional spaces are also formed in the body to provide for
swelling as hydrocarbons are taken in by the body. The body
has an uncovered top surface for receiving hydrocarbons.
According to appellant, the mat may be "... placed on floors,
ramps and service aisles..." (specification, page 2) to
protect the environment from hydrocarbons that may drip by
trapping such drippings in the mat. Claim 14, the only
independent claim on appeal, is reproduced below.
14. An absorption mat for hydrocarbons in liquid, paste
or solid form including oils, fats, fuels and solvents, the
absorption mat comprising:
a flat molded body having a plate or block configuration;
said body having an uncovered top surface completely
exposed to receive said hydrocarbons thereon;
said body being defined by granulate or shavings made of
elastomer for absorbing and trapping said hydrocarbons
therein;
Appeal No. 1997-1122 Page 3
Application No. 08/170,177
binding means for joining said granulate or shavings in a
form-maintaining rigid bond with each other and to define a
multiplicity of hollow spaces in said body communicating with
each other and said top surface thereby facilitating the
dispersal of said hydrocarbons within said body for absorption
thereby;
said binding means being resistant to hydrocarbons
thereby causing said body to retain its overall shape in the
presence of said hydrocarbons; and
said flat molded body having additional space formed
therein to accommodate swelling of said flat molded body as
the hydrocarbons become trapped therein.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Crouch et al. (Crouch) 3,591,494 July 06,
1971
Stark 4,481,335 Nov. 06,
1984
Valley 4,826,030 May 02,
1989
Kirk-Othmer Encyclopedia of Chemical Technology (Kirk-Othmer),
Third Edition, Vol. 16, pp. 433-34 and Vol. 20, pp. 367-69,
432 and 433, John Wiley and Sons (1981).
Claims 14, 15, 17, 20, 22, 23, 25, 26, 28-32, and 34
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Valley in view of Crouch and Stark. Claims 24 and 27
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Valley in view of Crouch and Stark as applied above, and
further in view of Kirk-Othmer.
Appeal No. 1997-1122 Page 4
Application No. 08/170,177
OPINION
We have carefully considered the respective positions
advanced by appellant and the examiner. In so doing, we find
ourselves in agreement with appellant's position that the
rejections are not well-founded. Accordingly, we will not
sustain the stated rejections.
It is the burden of the examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the reasonable teachings or suggestions
found in the prior art, or by a reasonable inference to the
artisan contained in such teachings or suggestions. See In re
Sernaker, 702 F.2d 989, 217 USPQ 1 (Fed. Cir. 1983). This the
examiner has not done.
Valley discloses a device comprising an absorption mat
made of an open-cell polyurethane foam block that is disclosed
as being useful for hydrocarbon absorption and collection.
Crouch discloses the use of rubbery and thermoplastic polymers
as part of a powder composition that is disclosed as useful
for removing floating hydrocarbons from an aqueous body.
Stark teaches that rubber scrap and a binder may be used as
part of a composition which may be molded to form "rubber-like
Appeal No. 1997-1122 Page 5
Application No. 08/170,177
slabs for shoe soles, floor mats and the like" (column 1,
lines 41-64).
Recognizing that the mat of Valley does not disclose
several of the features required by the appealed claims herein
(answer, page 4), the examiner additionally relies on the
teachings of Crouch and Stark in an attempt to make-up for the
deficiencies of Valley to establish the obviousness, within
the meaning of 35 U.S.C. § 103, of the claimed mat.
According to the examiner, it would have been obvious to
one of ordinary skill in the art to modify the block
containing mat construction of Valley to include a molded
porous body made of elastomeric granulate or shavings and a
binder rather than the unitary polyurethane or equivalent
material taught by Valley since Crouch would have suggested
that elastomeric materials were useful as oil absorbents and
Stark teaches that rubber scrap and binder and be combined and
molded into useful structures such as a mat (answer, pages 4
and 5). Moreover, it is the examiner's opinion that the
formation of additional spaces in the modified molded block
body of the mat of Valley as called for by the appealed claims
herein would have been obvious to one of ordinary skill in the
Appeal No. 1997-1122 Page 6
Application No. 08/170,177
art to improve absorption (answer, page 5). From the
examiner's perspective, this is so since it is allegedly well-
known that increasing surface area improves absorption
(answer, page 9).
The difficulty we have with the examiner's position is
highlighted by the examiner's viewpoint regarding the
obviousness of the additional spaces in the proposed modified
block body of the mat of Valley. This is so since the
examiner has not established where the teachings of the
applied references suggest this feature that is required by
all of the appealed claims herein. (answer, page 5). Even if
we could accept the examiner’s suggested officially noticed
fact that increasing surface area improves absorption, the
examiner has not met the burden of explaining why a skilled
artisan would have been motivated to use additional spaces
formed in a molded body as claimed herein as the means for
increasing surface area.
More fundamentally, however, we note that appellant
disputes the officially noted fact and the examiner’s
assertion of the obviousness of the claimed limitation at
issue. According to appellant, the examiner's officially
Appeal No. 1997-1122 Page 7
Application No. 08/170,177
noted fact "... cannot apply to an absorption mat" (brief,
page 11) and the claimed additional spaces limitation "...
places the applicant's invention even further out of the reach
of the person exercising only ordinary skill" (brief, page 9).
It is well settled that an allegation of obviousness
unsubstantiated by a factual basis upon which to establish the
prima facie obviousness of the claimed invention as a whole,
including each and every limitation of the claims is not
sufficient. See In re Fine, 837 F.2d 1071, 1075, 5 USPQ 1596,
1600 (Fed. Cir. 1988); In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1967).
Under the present circumstances, we can not agree
that the examiner has met the burden of establishing that a
skilled artisan would have been imbued with both a suggestion
and reasonable expectation of success in combining the
references as proposed so as to arrive at the claimed
invention by: (1) substantially modifying the mat of Valley to
correspond to the mat at issue herein by using a significantly
different construction of elastomeric granulate or shavings,
and a binding means resistant to hydrocarbons; and (2)
providing additional spaces in such a substantially altered
Appeal No. 1997-1122 Page 8
Application No. 08/170,177
mat to retain its overall shape after hydrocarbon contact.
See In re Rouffet, 149 F.3d 1350, 1356, 47 USPQ2d 1453, 1456
(Fed. Cir. 1998).
The determination of obviousness must be based on facts,
and not on unsupported generalities. See In re Freed, 425
F.2d 785, 787, 165 USPQ 570, 571 (CCPA 1970).
Since the additional Kirk-Othmer reference applied to
claims 24 and 27 does not cure the above-noted deficiencies,
we will not sustain either of the stated rejections.
CONCLUSION
The decision of the examiner to reject claims 14, 15, 17,
20, 22, 23, 25, 26, 28-32, and 34 under 35 U.S.C. § 103 as
being unpatentable over Valley in view of Crouch and Stark and
to reject claims 24 and 27 under 35 U.S.C. § 103 as being
Appeal No. 1997-1122 Page 9
Application No. 08/170,177
unpatentable over Valley in view of Crouch and Stark as
applied above, and further in view of Kirk-Othmer is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
tdl
Appeal No. 1997-1122 Page 10
Application No. 08/170,177
Walter Ottesen
P.O. Box 4026
Gaithersburg, MD 20885-4026
Appeal No. 1997-1122 Page 11
Application No. 08/170,177
APPEAL NO. - JUDGE KRATZ
APPLICATION NO. 08/170,177
APJ KRATZ
APJ OWENS
APJ GARRIS
DECISION: REVERSED
Prepared By: TINA
DRAFT TYPED: 16 Oct 00
FINAL TYPED: