Ex parte GODA

Board of Patent Appeals and Interferences

Oct 19, 1999

08044961 (B.P.A.I. Oct. 19, 1999)

Application for patent filed April 8, 1993.1
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not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte YASUHIRO GODA
__________
Appeal No. 1996-1240
Application 08/044,9611
___________
ON BRIEF
___________
Before JOHN D. SMITH, OWENS and SPIEGEL, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 2 and 5. These are all of the claims remaining in the
application.
Appeal No. 1996-1240
Application 08/044,961
2
THE INVENTION
Appellant claims a method for making a microorganism
fertilizer, i.e., a fertilizer which makes microorganisms
multiply faster. Appellant states that when the fertilizer is
applied to soil, it causes phenomenal multiplication of
fluorescent Pseudomonas which are contained in the soil and
which break down environmental pollutants in the soil and
significantly suppress the common scab of potatoes grown in
the soil (specification, pages 2 and 4). Claim 2 is
illustrative and reads as follows:
2. A method for manufacturing a microorganism fertilizer
comprising the steps of adding medium-temperature and high-
temperature Actinomycetes as seed bacteria to an organic
substance, culturing, spreading and agitating said medium and
high-temperature Actinomycetes and said organic substance in
an isolated propagation bed to cause said medium-temperature
Actinomycetes to multiply during an intitial stage of
culturing so that the multiplication of miscellaneous bacteria
is partially suppressed, and then raising and maintaining a
temperature of said organic substance at 40 to 63EC so that
said high-temperature Actinomycetes are selectively cause to
multiply.
THE REFERENCE
Pinckard et al. (Pinckard) 5,100,455 Mar. 31,
1992
THE REJECTION
Appeal No. 1996-1240
Application 08/044,961
3
Claims 2 and 5 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Pinckard.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejection is not well
founded. Accordingly, we reverse this rejection.
Pinckard discloses a method wherein plant material having
a 10:1 to 30:1 carbon:nitrogen ratio is composted to produce a
microbially active humic substance which is mixed with
chemically contaminated soil to bioremediate the soil (col. 4,
lines 3-6; claim 1). The organisms in the compost include
Actinomycetes (col. 5, lines 38-40). The soils to which the
compost was applied by Pinckard include soils which contain,
inter alia, sewage sludge (col. 8, lines 63-68).
The examiner argues that Pinckard’s sewage sludge is
equivalent to appellant’s organic substance (answer, page 4).
This argument is not well taken because appellant’s culturing
of the Actinomycetes takes place after the Actinomycetes have
Appeal No. 1996-1240
Application 08/044,961
4
been added to the organic substance, whereas in Pinckard’s
method, the culturing takes place during the formation of the
compost before it is applied to the sewage sludge-containing
soil. The examiner
does not explain, and it is not apparent, where Pinckard
discloses or suggests culturing Actinomycetes in the presence
of an organic substance.
Pinckard does not state whether the Actinomycetes are
medium or high temperature Actinomycetes. The examiner argues
that Pinckard’s Actinomycetes inherently are medium and high
temperature Actinomycetes (answer, page 5). The examiner,
however, provides no evidence or technical reasoning in
support of this argument. When an examiner relies upon a
theory of inherency, “the examiner must provide a basis in
fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior
art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. &
Appeal No. 1996-1240
Application 08/044,961
5
Int. 1990). Inherency “may not be established by
probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not
sufficient.” Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat.
App. & Int. 1986).
The examiner argues that it is reasonable to conclude
that as the temperature rises in the Pinckard method, the
dominant species, which Pinckard states are Actinomycetes and
Pseudomonas
(col. 5, lines 38-40), will be thermophiles which, the
examiner asserts, have an incubation temperature of 50-60EC
(answer, page 4). This argument is not persuasive because the
examiner has provided no evidence or technical reasoning which
shows that the temperature in Pinckard’s method increases to
50-60EC. The examiner merely provides speculation, and such
speculation is not a sufficient basis for a prima facie case
of obviousness. See In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968);
In re Sporck, 301 F.2d 686, 690, 133 USPQ 360, 364 (CCPA
Appeal No. 1996-1240
Application 08/044,961
6
1962).
For the above reasons, we find that the examiner has not
set forth a factual basis which is sufficient to support a
holding of prima facie obviousness of the method recited in
either of appellant’s claims 2 or 5. We therefore reverse the
examiner’s rejection.
DECISION
The rejection of claims 2 and 5 under 35 U.S.C. § 103
over Pinckard is reversed.
REVERSED
Appeal No. 1996-1240
Application 08/044,961
7
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
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