Ex parte Hayes

Board of Patent Appeals and Interferences

Aug 10, 2000

08318462 (B.P.A.I. Aug. 10, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today is
not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte THOMAS D. HAYES
__________
Appeal No. 1997-0659
Application 08/318,462
__________
ON BRIEF
__________
Before JOHN D. SMITH, GARRIS, and OWENS, Administrative Patent
Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the
final rejection of claims 1 through 16.
Appealed claim 1 is representative and is reproduced
below:
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Application No. 08/318,462
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1. A process for in-situ remediation of contaminated
soils comprising:
introducing at least one treating agent into a
contaminated
soil; and
transporting said at least one treating agent to an
underground in-situ treatment zone of said contaminated soil
by means of a foam-based fluid.
The references of record relied upon by the examiner are:
Hoge et al. (Hoge) 4,203,837 May 20, 1980
Kirk et al. (Kirk) 4,435,292 Mar. 6, 1984
Gannon, “Environmental Reclamation Through use of Colloid Foam
Flotation, In-Situ Soil Aeration and In-Situ Surfactant
Flushing,” Dissertation Services, pp. 1-166 (1988).
Gannon Abstract, Dissertation Abstracts International, Vol.
50, No. 3, p. 975-B (1989).
Lindgren et al. (Lindgren), “Electrokinetic Remediation of
Unsaturated Soils,” ACS Symposia Series, Vol. 554, pp. 33-50,
(1994).
Appealed claims 1, 2, 6, 8, 9, and 11 through 14 stand
rejected under 35 U.S.C. § 102(b) as anticipated by the Gannon
Abstract. Claims 3 through 5 stand rejected under 35 U.S.C.
§ 103 as unpatentable over the combined teachings of the
Gannon Abstract and Kirk. Claims 10 and 15 stand rejected
under 35 U.S.C. § 103 over the combination of teachings in the
Gannon Abstract, Kirk, and Hoge. Claim 16 stands rejected
Appeal No. 1997-0659
Application No. 08/318,462
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under 35 U.S.C. § 103 as unpatentable over the combination of
the Gannon Abstract, Kirk, and Lindgren.
We cannot sustain the stated rejections. The subject
matter on appeal is directed to a foam transport process for
in-situ remediation of contaminated soils in which at least
one treating agent, such as nutrients, trace metals, bacterial
cultures, oxidants, solvents and/or surfactants, is introduced
into a contaminated soil and transported by a foam-based fluid
to an underground in-situ treatment zone of the contaminated
soil. In a preferred embodiment of the invention, the foam-
based fluid comprises an organic foam comprising between about
5% and about 50% of a liquid and between about 50% and about
95% of a gas. See the specification at page 13. As appellant
makes clear in the Summary of Invention section of his brief,
the critical feature of the process of the claimed invention
is the use of a foam-based fluid to transport “at least one
treating agent” to the underground in-situ treatment zone of
the contaminated soil.
The examiner’s anticipation rejection of appealed claims
1, 2, 6, 8, 9, and 11 through 14 is predicated on his factual
determination that the Gannon Abstract teaches a process for
Appeal No. 1997-0659
Application No. 08/318,462
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in-situ remediation of contaminated soil by introducing a
foam-based fluid which contains a surfactant, and then
removing the foam from the contaminated soil for the recovery
and recycling of the surfactant solution. As further
explained in his answer at page
9, it is the examiner’s position that based on the title of
the
Gannon Abstract, the Abstract is directed to treating soil in-
situ with colloidal foam.
On the other hand, appellant correctly points out that
the title of the Gannon Abstract states three separate and
distinct areas that are discussed in the entire Gannon
reference. As appellant correctly points out, the section of
the complete Gannon reference that discusses foams, relates to
the use of colloidal foam flotation to remove metals from a
very dilute liquid solution, not, contaminated soil, as
required by the appealed process. In the experiments
described in this section of the complete Gannon reference
(which is entitled “Removal of Antimony from Aqueous Systems”)
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Application No. 08/318,462
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at pages 4 through 27 of the reference, foam simply is not
passed through a static soil porous medium as required by the
process of the claimed invention. As appellant further points
out, nowhere in the Gannon reference is the process of a foam-
based fluid passing through a static soil either taught or
suggested. The mere happenstance that the words “foam” and
“soil” appear in the same title is not sufficient, as
appellant argues, to describe the herein claimed process.
As the examiner correctly observes, the Gannon reference
does disclose a chapter entitled “Soil Clean-Up By In-Situ
Surfactant Flushing” which appears at pages 94 through 129 of
the complete reference. However, again, as appellant
emphasizes, this section of the Gannon reference does not
disclose the removal of pollutants from a static soil matrix
with a foam-based fluid. As appellant correctly points out at
page 5 of his reply brief, the surfactant applications
discussed in this chapter of the Gannon reference relate to
the placement of surfactant into a water fluid and passing a
water solution through the soil. Again, in this section of
the Gannon reference, there is no teaching or suggestion to
use surfactants to make a foam which is then passed through a
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static soil medium to achieve pollutant removal.
Both the question of what a prior art reference teaches
and the question of anticipation under section 102(b) of the
statute are factual determinations. See In re Graves, 69 F.3d
1147, 1151, 3 USPQ2d 1697, 1700 (Fed. Cir. 1995). Here, the
examiner’s factual determination of what the Gannon Abstract
and Gannon complete reference teaches is erroneous. It
logically follows under the circumstances of this case, that
the examiner’s rejection of appealed claims 1, 2, 6, 8, 9, and
11 through 14 as anticipated by the Gannon Abstract cannot be
sustained. Moreover, since none of the “secondary references”
relied upon by the examiner in his stated 35 U.S.C. § 103
rejections of the remaining claims on appeal remedy the basic
deficiencies regarding the teachings in the Gannon Abstract,
these rejections similarly cannot be sustained.
The decision of the examiner is reversed.
REVERSED
John D. Smith )
Administrative Patent Judge )
)
)
Appeal No. 1997-0659
Application No. 08/318,462
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)
Bradley R. Garris ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Terry J. Owens )
Administrative Patent Judge )
JDS:tdl
Appeal No. 1997-0659
Application No. 08/318,462
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