Ex parte Herve

Board of Patent Appeals and Interferences

Mar 28, 2001

07985354 (B.P.A.I. Mar. 28, 2001)

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journal and (2) is not binding precedent of the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. 51
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PHILIP HERVE
____________
Appeal No. 95-0055
Application No. 07/985,354
____________
ON BRIEF
____________
Before WARREN, WALTZ, and LIEBERMAN, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 45 through 65, as amended
after the final rejection (see the amendment dated Dec. 20,
1993 (Paper No. 25), and the Advisory Action dated Feb. 3,
Appeal No. 95-0055
Application No. 07/985,354
An English translation of this reference is of record. 1
However, as noted by appellant (Brief, page 5, footnote 1),
French Patent 2 357 490 is the priority document for Bavaveas.
Neither appellant nor the examiner, in the record before us,
has pointed to any difference between these references.
Accordingly, we need only discuss and refer to Bavaveas in our
decision.
2
1993 (Paper No. 26)). Claims 45 through 65 are the only
claims remaining in this application.
According to appellant, the invention relates to a
biological activator for a septic tank comprising in admixture
particles of a kaolinite and particles of an essentially
vitreous material (Brief, pages 3-4). Claim 45 is
illustrative of the subject matter on appeal and a copy of
claim 45 is reproduced below:
45. A biological activator for a septic tank which activator
comprises particles of essentially vitreous materials and
kaolinite.
The examiner has relied upon the following references as
evidence of obviousness:
Bavaveas 4,213,871 Jul. 22, 1980
Eparco S.A. 2 357 490 Feb. 3, 1978
(French Patent)1
Claims 45 through 65 stand rejected under 35 U.S.C. § 103
as unpatentable over French Patent 2 357 490 or Bavaveas
Appeal No. 95-0055
Application No. 07/985,354
The final rejection of claims 47-50 and 58-62 under the2
first and second paragraphs of 35 U.S.C. § 112 has been
withdrawn by the examiner in view of the amendments and
response dated Dec. 20, 1993, Paper No. 25 (see the Advisory
Action dated Feb. 3, 1994, Paper No. 26).
Appellant’s Reply Brief dated Sept. 6, 1994 (Paper No.3
34), was refused entry by the examiner (Letter dated Sept. 19,
1994, Paper No. 35) and thus has not been considered in our
review.
3
alone, optionally taken with appellant’s admission on page 9,
lines 12-17, of the specification regarding EPARCYL® (Answer,
page 2). Upon careful review of the record, including the2
respective positions of the examiner and appellant in the
Answer and the Brief, we reverse this rejection for reasons3
which follow.
OPINION
The biological activator of appealed claim 45 comprises
"particles of essentially vitreous materials and kaolinite."
The "essentially vitreous materials" of appealed claim 45
include zeolites (see appealed claim 46 or the specification,
the sentence bridging pages 3-4).
The examiner finds that a finely divided zeolite product
is specifically identified in the French reference (Answer,
page 3). Bavaveas discloses a biological activator
Appeal No. 95-0055
Application No. 07/985,354
The word "vitreous" is not defined in the specification4
but is commonly used to mean "glassy". See Hackh’s Chemical
Dictionary, 3rd ed., p. 899, The Blakiston Co., 1953, a copy
of which is attached to this decision.
See The Condensed Chemical Dictionary, 5th ed., p. 286,5
Reinhold Publishing Corp., 1956, a copy of which is attached
to this decision. It is also noted that appellant discloses
that "[k]aolinite particles are used per se as biological
activators." (Specification, page 1, lines 22-23).
4
"constituted by a clay compound" (column 1, lines 55-57) with
non-limiting chemical compositions as taught in column 2,
lines 31-39. We find no evidence, on this record, that the
"clay compound" disclosed by Bavaveas is inclusive of
"essentially vitreous materials" such as zeolites.4
The examiner further concludes that "[t]he use of a
finely divided vitreous solid alone, or with a coarser ground
kaolin as the solid material, each of which is within the
scope of Bavaveas or the French reference, would also have
been an obvious expedient." (Answer, page 3, see also the
Brief, page 5). Although kaolin is a type of clay and thus5
within the scope of Bavaveas, the examiner has failed to point
to any disclosure or suggestion in Bavaveas to support the
finding that an essentially vitreous material is within the
Appeal No. 95-0055
Application No. 07/985,354
5
scope of this reference (see the Brief, page 7, penultimate
paragraph).
Similarly, the examiner has failed to support his
contention that appellant’s disclosure of "EPARCYL®" is an
"admission that mixtures of chabazite and phillipsite [natural
zeolites]... are known biological activators" (Answer, page
3). The disclosure on page 9, lines 12-17, of the
specification must be taken in context with the disclosure at
page 2, lines 6-7, that ZEOPORT B180 alone is a mixture of
natural zeolites and is not known to be suitable as a
biological activator (specification, page 4, lines 8-17, see
the brief, page 8, penultimate paragraph). The "prior
biological activator" EPARCYL® (specification, page 9) is a
natural clay material (see Exhibit 1 attached to the amendment
dated Oct. 15, 1991, Paper No. 9, in parent Application No.
07/492,713). There is no evidence in this record that
mixtures of chabazite and phillipsite were known biological
activators or that EPARCYL® contains any vitreous material or
zeolites.
For the foregoing reasons, we determine that the
examiner’s legal conclusion of obviousness is not supported by
Appeal No. 95-0055
Application No. 07/985,354
6
the facts. "Where the legal conclusion of obviousness is not
supported by facts it cannot stand." In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967). Since we reverse
on the basis that the examiner failed to establish a prima
facie case of obviousness, we need not reach the issue of the
sufficiency of the showing of unexpected results in the
Rambaud Declarations dated June 17, 1993, and December 15,
1993 (see the Brief, pages 10-14). In re Geiger, 815 F.2d
686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987). Accordingly,
the examiner’s rejection of claims 45 through 65 under 35
U.S.C. § 103 as unpatentable over French Patent 2 357 490 or
Bavaveas alone, or optionally taken with appellant’s admission
at page 9, lines 12-17, of the specification regarding
"EPARCYL®" is reversed.
Appeal No. 95-0055
Application No. 07/985,354
7
The decision of the examiner is reversed.
REVERSED
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
lp
Appeal No. 95-0055
Application No. 07/985,354
8
YOUNG & THOMPSON
SUITE 200
745 SOUTH 23rd STREET
ARLINGTON, VA 22202
Leticia
Appeal No. 95-0055
Application No. 07/985,354
APJ WALTZ
APJ LIEBERMAN
APJ WARREN
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): _____
Prepared: January 28, 2002
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
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