Ex parte Gross

Board of Patent Appeals and Interferences

Mar 26, 1999

08465896 (B.P.A.I. Mar. 26, 1999)

Application for patent filed June 6, 1995. According to appellant, the1
application is a division of Application 08/164,112, filed December 7, 1993, now
abandoned, which is a continuation-in-part of Application 07/858,477, filed
March 27, 1992, now abandoned.
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publication in a law journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JAMES R. GROSS
_____________
Appeal No. 97-3290
Application 08/465,8961
______________
ON BRIEF
_______________
Before COHEN, JOHN D. SMITH and PATE, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 21
through 35. These claims constitute all of the claims
remaining in the application.
Appeal No. 97-3290
Application 08/465,896
2
Appellant’s invention pertains to a disposable absorbent
product for absorbing a body fluid. An understanding of the
invention can be derived from a reading of exemplary claim 21,
a copy of which can be found in the “Appendix” to the brief
(Paper No. 11).
The following rejections are before us for review.
Claims 21 through 35 stand rejected under 35 U.S.C. §
112, first paragraph, as being based upon a specification
which fails to enable the breadth of the claims.
Claims 21 through 35 stand rejected under 35 U.S.C. §
112, second paragraph, as being indefinite.
The full text of the examiner's rejections and response
to the argument presented by appellant appears in the final
rejection and answer (Paper Nos. 6 and 12), while the complete
statement of appellant’s argument can be found in the brief
(Paper No. 11).
Appeal No. 97-3290
Application 08/465,896
We note the presence in the application file of an2
“INFORMATION DISCLOSURE STATEMENT” (Paper No. 3) and a
“SUPPLEMENTAL INFORMATION DISCLOSURE STATEMENT” (Paper No. 7),
each of which should be given appropriate review upon any
further prosecution before the examiner.
3
In the brief (page 2), appellant indicates, in effect,
that as to the claims in each of the rejections on appeal,
they stand or fall as a group. Accordingly, in our analysis,
infra, we shall focus exclusively upon selected independent
claim 21;
37 CFR 1.192(c)(7).

OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant’s specification, drawing Figs. 1 and 2, claim 21,
and the respective viewpoints of appellant and the examiner. 2
As a consequence of our review, we make the determinations
which follow.
Appeal No. 97-3290
Application 08/465,896
4
Initially, we note that in a situation such as the
present one, wherein claims are rejected under both the first
and second paragraphs of 35 U.S.C. § 112, the definiteness of
the claims are
addressed prior to an analysis of whether the claimed subject
matter is supported by an enabling disclosure. See In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
Accordingly, at the outset, we determine that claim 21,
considered as a whole, is indefinite, for reasons articulated,
infra. However, following the pattern of the examiner and
appellant in discussing the first paragraph issue first and
the indefiniteness issue second, we likewise turn now to the
first paragraph issue.
The § 112, first paragraph rejection
We affirm this rejection.
The examiner is of the view (final rejection, page 2 and
answer, pages 3 through 5) that claim 21, in particular, is
Appeal No. 97-3290
Application 08/465,896
5
based upon a specification which fails to enable the breadth
of the claim in that certain surfactants within the claimed
range would render the claimed disposable absorbent product
inoperative (not be effective to reduce odor). From the
examiner’s standpoint, appellant’s “Odor Perception Test” is
subjective, and does not establish a standard by which the
amount of odor can be measured. Appellant, on the other hand,
argues (brief, page 3) that, notwithstanding that certain
surfactants having a HLB less than 12 are not suitable for use
in the present invention (specification, page 8, line 33 to
page 9, line 7), such
surfactants are excluded from the claimed invention since such
surfactants would not be effective in reducing the odor of
urine.
The circumstance that appellant discloses surfactants
having a hydrophilic/lipophilic balance less than about 12, as
claimed, and which are unsuitable for use in the present
invention, does not per se render the claimed invention
unpatentable based upon 35 U.S.C. 112, first paragraph. Each
case must be assessed on its own facts. See In re Angstadt,
Appeal No. 97-3290
Application 08/465,896
6
537 F.2d 498, 503, 190 USPQ 214, 218 (CCPA 1976). If the
number of inoperative combinations becomes significant, and in
effect forces one of ordinary skill in the art to experiment
unduly in order to practice the claimed invention, the claims
might indeed be invalid. See Atlas Powder Co. v. E. I. du
Pont de Nemours & Co., 750 F.2d 1569, 1576-77, 224 USPQ 409,
414 (Fed. Cir. 1984). An appellant must also demonstrate that
any range recited in claims reasonably bounds the area within
which satisfactory results could be produced by ordinary
design skill, i.e., an appellant must prove that there are
embodiments to be found, not only near those specifically
disclosed, but at various points throughout the claimed range
which would be operative. See In re Cook, 439 F.2d 730, 735,
169 USPQ 298, 302 (CCPA 1971).
In the present case, appellant relies upon an “Odor
Perception Test” and a “Surface-Active Agent Effectiveness
Test” (specification, page 12) to determine whether a specific
surface-active agent is effective to reduce the odor of urine.
According to appellant, samples to be tested are provided to a
“panel of two specialists” who independently rank the urine-
Appeal No. 97-3290
Application 08/465,896
The specification does not identify the two “odor specialists” (panel) that ran3
the tests to yield the data disclosed in the application, and does not reveal what
training and/or background would certify them as “odor specialists”. Distinct from the
disclosure of “odor specialists”, appellant indicates in the brief (pages 3 and 4)
that, in the Surface-Active Agent Effectiveness Test, samples are tested by “odor
experts”.

7
wet odor of the samples on a scale of 1 (least) to 10 (most)
for malodor and intensity. Appellant indicates that samples
yielding an odor ranking below about 3.0 possess an odor which
would “hardly be noticed by the general public.” It is also
set forth (specification, page 10) that “[a]s a general rule,
the surface-active agent will be present in the absorbent
product in an amount of from about 0.005 to about 25 weight
percent, based upon total weight of the absorbent structure”.
Based upon the information known to us, it is apparent
that the tests specified by appellant are not founded upon any
industry recognized testing standard for odor level
assessment, but instead rely upon the subjective perceptions
of a panel of individuals, the individuals being referred to
by appellant as “odor specialists”. We are not instructed by
the disclosure as to the qualifications of those individuals
denoted as “odor specialists”. The disclosure also does not3
Appeal No. 97-3290
Application 08/465,896
This determination relative to odor perceptions of the general public is not4
understood since the brief points out (page 4) that the test procedure does not permit
the use of “untrained” individuals.
8
inform us as to how it was determined that samples yielding an
odor ranking below about 3.0 possess an odor “which would
hardly be noticed by the general public”.4
Taking into full account the particular circumstances of
the present case, we believe it both reasonable and fair to
say that undue experimentation would be encountered on the
part of one having ordinary skill in seeking to determine
which surface-active agents having an HLB of less than about
12 were effective to reduce urine odor, as broadly claimed.
We reach this conclusion for the following reason. Claim 21
expressly requires a subjective test, a test performed by
“odor specialists”. Clearly, one of ordinary skill would not
have available to them the “odor specialists” referenced by
appellant, or knowledge of their particular qualifications, or
an appreciation of the personal spectrum of their particular
odor perceptions. Lacking this information, it follows that
an artisan would be unable to carry out the test required for
Appeal No. 97-3290
Application 08/465,896
9
ascertaining a surface-active agent, i.e., and operable agent,
consistent with claim 1. We do not consider it to be
reasonable on the part of an artisan to attempt the arduous
and uncertain task of seeking to reverse engineer the testing
carried out by appellant to see if individuals (a panel of
odor specialists) could possibly be found who would also give
average results for operable and inoperable agents, as
disclosed by appellant (specification, page 9 and Tables 1
through 3). In light of the above, the circumstances of the
present case clearly reveal to us that an undue, if not
impossible, effort is required for one seeking to practice the
present invention, as broadly claimed, notwithstanding
appellant’s disclosure of certain suitable and unsuitable
surface-active agents. Thus, we conclude that the claims on
appeal are based upon an underlying disclosure which fails to
enable the breadth of the claims.
The argument advanced by appellant (brief, pages 2 and 3)
fails to persuade us that the examiner erred in rejecting the
claims on appeal under 35 U.S.C. § 112, first paragraph. We
appreciate appellant’s view that the claims are intended to
Appeal No. 97-3290
Application 08/465,896
10
cover surfactants that will work. Nevertheless, as recognized
by appellant, the claims require determination of the
effective agents based upon the disclosed “Surface-Active
Agent Effectiveness Test”. As explained above, the
requirement of the subjective odor specialist determination,
forming an essential part of the test required by claim 21,
would not have enabled one of ordinary skill to practice the
now claimed invention.
The § 112, second paragraph rejection
We affirm this rejection.
In assessing the indefiniteness issue raised in this
appeal, we keep in mind the following principles. Relative to
the requirements of 35 U.S.C. § 112, second paragraph, the
court in In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208
(CCPA 1970) stated that
[i]ts purpose is to provide those who would
endeavor, in future enterprise, to approach
the area circumscribed by the claims of a
Appeal No. 97-3290
Application 08/465,896
In our view, one would have understood that the language “as described herein”5
referred to the description in the underlying specification.
11
patent, with the adequate notice demanded
by due process of law, so that they may
more readily and accurately determine the
boundaries of protection involved and
evaluate the possibility of infringement
and dominance.
Additionally, claims are considered to be definite, as
required by the second paragraph of 35 U.S.C. § 112, when they
define the metes and bounds of a claimed invention with a
reasonable degree of precision and particularity. See In re
Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
Independent claim 21 requires, inter alia, an amount of
surface effective agent effective to reduce urine odor as
determined by the “Surface-Active Agent Effectiveness Test as
described herein.” This test further encompasses the “Odor5
Perception Test” (specification, pages 12 and 13).
This panel of the board discussed, supra, the subjective
nature of the specified tests and the circumstance that the
identity, qualifications, and spectrum of odor perceptions of
Appeal No. 97-3290
Application 08/465,896
12
the “odor specialists” were indeterminate. In light of the
above, it is quite apparent to us that one having ordinary
skill would not be able to determine if a particular surface-
active agent was within the scope of the claim. As such, the
claims before us are indefinite under 35 U.S.C. § 112, second
paragraph, since the metes and bounds thereof are
indeterminate when read in light of the underlying
specification.
We are not in accord with appellant’s viewpoint (brief,
page 3) that the claimed subject matter is supported by a
disclosed standard, i.e., the Surface-Active Agent
Effectiveness Test, for determining whether or not an agent is
able to reduce the odor of urine. The test is clearly not a
standard, but one based upon the subjective perceptions of
“odor specialists”. It follows that we also do not share
appellant’s opinion (brief, page 4) that one skilled in the
art would understand what is meant by the surface agent being
effective to reduce the odor of urine. This would be so since
an agent may or may not be effective to reduce the odor of
urine as subjectively assessed by a particular, selected panel
Appeal No. 97-3290
Application 08/465,896
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of “odor specialists”. Appellant argues (brief, page 4) that,
while acknowledged in the specification (page 12) that odor
perception is, by nature, a very subjective determination, it
is a mischaracterization to infer that the Surface-Active
Agent Effectiveness Test is also subjective. We disagree.
Since the subjective perceptions of selected “odor
specialists” would clearly control determinations made
according to the test, we believe it fair to say to that the
test is subjective. This panel of the board is aware of
appellant’s statement (brief, page 4) that many tests relying
on perceptions are routinely employed in other industries.
However, we fail to comprehend how the indefiniteness
discussed above relative to appellant’s claimed test is
somehow diminished by a broad reference to perceptive testing
in other industries.
In summary, this panel of the board has:
affirmed the rejection of claims 21 through 35 under
35 U.S.C. § 112, first paragraph, as being based upon a
specification which fails to enable the breadth of the claims;
Appeal No. 97-3290
Application 08/465,896
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and
affirmed the rejection of claims 21 through 35 under
35 U.S.C. § 112, second paragraph, as being indefinite.
The decision of the examiner is affirmed.
AFFIRMED
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN D. SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
WILLIAM F. PATE, III )
Administrative Patent Judge )
Appeal No. 97-3290
Application 08/465,896
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ICC/kis
John R. Schenian
KIMBERLY CLARK CORPORATION
Patent Department
401 North Lake Street
Neenah, WI 54956
Appeal No. 97-3290
Application 08/465,896
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