Ex parte Jalbert

Board of Patent Appeals and Interferences

Nov 28, 2001

08664432 (B.P.A.I. Nov. 28, 2001)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOCELYN JALBERT
and
ROLAND GILBERT
_____________
Appeal No. 1999-0726
Application No. 08/664,432
______________
HEARD: NOVEMBER 6, 2001
_______________
Before KIMLIN, PAK, and DELMENDO, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 2 through 5 and
7 through 20, which are all of the claims pending in the
above-identified application.
Claim 18 is representative of the claimed subject matter
Appeal No. 1999-0726
Application No. 08/664,432
2
and reads as follows:
18. A process, which comprises:
providing a material selected from the group
consisting of mineral oil, aromatic and aliphatic
solvents, said material containing small amounts of
water;
contacting said material with previously crushed
calcium carbide;
mechanically stirring said calcium carbide with said
material thereby causing said calcium carbide to react
with water present in said material for a time and under
conditions effective to form a liquid phase consisting of
said material having a water content less than 0.5 ppm
and a solid phase comprising calcium hydroxide and
unreacted calcium carbide;
separating said solid phase from said liquid phase;
taking aliquots of said liquid phase to form samples
of said material free of said solid phase and containing
less than 0.5 ppm water, said samples adapted to
constitute standards by adding water to each dehydrated
sample to achieve a water concentration level of at least
1 ppm, said standards to be used in a method of
determining water content in a given oil or solvent.
In support of his rejections, the examiner relies on the
following prior art references:
Alexander 2,399,192 Apr.
30, 1946
Earl 4,444,159 Apr.
Appeal No. 1999-0726
Application No. 08/664,432
3
24, 1984
Schneider et al. (Schneider) 4,577,978 Mar.
25, 1986
Szepes et al. (Szepes), “A New Analytical Method for the
Determination of the Water Content of Transformer Oils,”
Vol. EI-17, IEEE Transactions on Electrical Insulation, No. 4,
pp. 345-49 (Aug. 1982).
Appeal No. 1999-0726
Application No. 08/664,432
4
The appealed claims stand rejected as follows:
1) Claims 2, 3, 5 and 6 through 20 under 35 U.S.C. §
103 as unpatentable over the combined disclosures of
Alexander, Earl and Schneider; and
2) Claim 4 under 35 U.S.C. § 103 as unpatentable over
the combined disclosures of Alexander, Earl, Schneider, and
Szepes.
Having carefully reviewed the claims, specification, and
applied prior art, including all of the arguments advanced by
both the examiner and appellants in support of their
respective positions, we are persuaded that the examiner has
not established a prima facie case of unpatentability within
the meaning of 35 U.S.C. § 103. Consequently, we reverse each
of the aforementioned § 103 rejections for substantially the
same reasons set forth in the Brief and the Reply Brief. We
only emphasize that Earl and Schneider, which are drawn to
different processes than that taught by Alexander, would not
have suggested reacting calcium carbide with water present in
the claimed material “for a time and under conditions
effective to form a liquid phase consisting of said material
having a water content less than 0.5 ppm” for the purpose of
Appeal No. 1999-0726
Application No. 08/664,432
5
forming standard samples (via adding water thereto). For the
reasons indicated supra, we are convinced that the examiner’s
§ 103 rejections are fatally premised upon impermissible
hindsight. See W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
Accordingly, the decision of the examiner is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
CKP:hh
Appeal No. 1999-0726
Application No. 08/664,432
6
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