Ex parte GLENDENING et al.

Board of Patent Appeals and Interferences

Jun 24, 1998

07834771 (B.P.A.I. Jun. 24, 1998)

Application for patent filed February 13, 1992.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LARRICK H. GLENDENING
and VINCENT J. SCUILLA
_____________
Appeal No. 94-2818
Application 07/834,7711
______________
HEARD: June 12, 1998
_______________
Before KIMLIN, PAK and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 through 37, as amended
subsequent to the final rejection in a response dated Sept. 1,
Appeal No. 94-2818
Application 07/834,771
This amendment was entered as noted in the advisory action dated Sept. 14,2
1993 (Paper No. 11). An earlier amendment dated July 7, 1993 (Paper No. 7), subsequent
to the final rejection, was refused entry as noted in the advisory action dated July 23,
1993 (Paper No. 8).
2
1993 (Paper No. 10). These are the only claims in this2
application.
According to appellants, the invention is directed to a
method and apparatus for waste degradation (brief, paragraph
bridging pages 1 and 2). This degradation is accomplished by
metering a liquid culture medium from a bag through a feed
line into the waste material, where the liquid culture medium
is formed by adding water to the concentrated organisms which
are stored in the bag (Id.).
Appellants state that all the claims are ?grouped
together?, i.e., the claims stand or fall together (brief,
page 8). Therefore this decision will be decided on the basis
of claim 1, which is an independent claim and is illustrative
of the subject matter on appeal. See 37 CFR §
1.192(c)(5)(1993), now 37 CFR
§ 1.192(c)(7)(1995). Claim 1 is reproduced below:
1. A method for treating a waste material to
degrade the waste material, which comprises:
Appeal No. 94-2818
Application 07/834,771
The final rejection of claims 22-29 and 36 under the second paragraph of 353
U.S.C. § 112 has been withdrawn by the examiner in view of appellants’ amendment dated
Sept. 1, 1993 (see the advisory action dated Sept. 14, 1993 (Paper No. 11), and page 2
3
(a) providing a flexible bag for holding
concentrated microorganisms that can degrade the waste
material for storage and shipment in the bag prior to use;
(b) filling the bag with water to form a liquid
culture medium with the microorganisms; and
(c) metering the liquid culture medium from the
bag using a feed line leading from the bag into the waste
material over time to degrade the waste material, wherein the
liquid culture medium is maintained at ambient temperatures
during the metering.
The examiner has relied upon the following references as
evidence of obviousness:
Bond 4,138,036 Feb.
6, 1979
Clarke et al. (Clarke) 4,415,085 Nov. 15,
1983
Daggett et al. (Daggett) 4,879,239 Nov.
7, 1989
Miller et al. (Miller) 4,911,832 Mar. 27,
1990
Mogna WO 90/02167 Mar. 8,
1990
(Published International Application)
Claims 1 through 37 stand rejected under 35 U.S.C. § 103
as unpatentable over Miller in view of Mogna, Clarke, Bond and
Daggett. We affirm this rejection for substantially the3
Appeal No. 94-2818
Application 07/834,771
of the answer).
See Graham v. John Deere, 383 U.S. 1, 148 USPQ 459 (1966), and the Manual of4
Patent Examining Procedure (MPEP), §2141.02, 6th ed. Rev. 3, July 1997.
4
reasons set forth by the examiner in the answer. We add the
following remarks primarily for emphasis.
OPINION
The first step in determining the differences between the
prior art and the claimed subject matter is to ascertain or
interpret the scope of the claimed language. It is well4
settled that, during patent prosecution, claims must be
interpreted as broadly as their terms reasonably allow. See
In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989).
The method of appealed claim 1 requires three steps,
namely, providing a flexible bag, filling the bag with water,
and metering the liquid culture medium from the bag using a
feed line leading from the bag into the waste material over
time to degrade the waste material, with the liquid culture
Appeal No. 94-2818
Application 07/834,771
Appellants admit that the third step of the method of claim 1 is well known in5
the art, i.e., ?waste degradation accomplished through use of metering a liquid bioactive
solution into the waste trap is known.? (brief, page 14).
537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976).6
5
maintained at ambient temperatures during the metering.5
As noted by the examiner (answer, page 10), the claims do
not exclude method steps such as found in Miller where
flushing or pretreatment occurs since the method of claim 1
recites ?comprising?. The term ?comprising? is a term of art
used in claim language which means that the claimed elements
or steps are essential, but other elements or steps may be
added and be within the scope of the claims. See Genentech
Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613
(Fed. Cir. 1997); Ex parte Davis, 80 USPQ 448, 450 (Bd. App.
1948). As stated by our reviewing court in In re Herz :6
It is axiomatic that claims are given their
broadest reasonable construction consistent
with the specification. [Citation omitted.]
This complements the statutory requirement
for particularity and distinctness (35 USC
112, second paragraph), so that an
applicant who has not clearly limited his
claims is in a weak position to assert a
narrow construction.
Appellants’ arguments are all directed to a narrow
Appeal No. 94-2818
Application 07/834,771
6
construction of the claims but, as in Herz, the claims are not
so limited.
Appellants’ arguments regarding the secondary references
are also not well taken. Appellants argue either limitations
that are not found in appealed claim 1 or discuss the
references individually, instead of correctly assessing the
prior art as a whole. See In re Gorman, 933 F.2d 982, 986, 18
USPQ2d 1885, 1888 (Fed. Cir. 1991)([T]he test is whether the
teachings of the prior art, taken as a whole, would have made
obvious the claimed invention).
It should also be noted that, giving the broadest
reasonable interpretation to the language of claim 1, there is
no positive limitation in step (a) that the flexible bag
actually contains concentrated microorganisms, only that it is
capable of ?holding concentrated microorganisms?. Furthermore,
giving the broadest reasonable interpretation, step (b) of
claim 1 does not require that the bag contains the stored
microorganisms while water is used to fill the bag to form a
liquid culture medium. This step merely requires that the bag
be filled with water to form a liquid culture medium, e.g.,
Appeal No. 94-2818
Application 07/834,771
7
the microorganisms could be added
with the water or after the water to form a liquid culture
medium (as taught by Mogna, page 2, line 20-page 3, line 12).

For the foregoing reasons and the reasons expressed by
the examiner in the answer, the claimed subject matter would
have been prima facie obvious based on the disclosure and
teachings of Miller, Mogna, Clarke, Bond and Daggett.
Appellants have not presented sufficient evidence of
nonobviousness to rebut this prima facie case of obviousness.
Accordingly, the rejection of claims 1 through 37 under 35
U.S.C. § 103 as unpatentable over Miller in view of Mogna,
Clarke, Bond and Daggett is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Appeal No. 94-2818
Application 07/834,771
8
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS WALTZ )
Administrative Patent Judge )
Ian C. McLeod
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Okemos, MI 48864