10994690 (B.P.A.I. Mar. 15, 2011)

Ex Parte Jha et al

Board of Patent Appeals and InterferencesMar 15, 2011

10994690 (B.P.A.I. Mar. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KAMAL PRAMOD JHA, and RAHUL ASHOK SALI ____________ Appeal 2010-003087 Application 10/994,690 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHARLES F. WARREN, and CATHERINE Q. TIMM, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL1 Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 12 and 14-23. We have jurisdiction under 35 U.S.C. § 6. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-003087 Application 10/994,690 2 We REVERSE. Appellants claim a method for continuous casting of shaped fatty acid soap melt-cast compositions comprising supplying a molten melt-cast fatty acid soap composition through a vertically disposable mold unit and controlling the mold temperature to favor selective solidification and shaping of the melt into cast fatty acid soap product, "wherein the fatty acid and soap melt-cast composition cannot be readily stamped and shaped into tablets or bars following extrusion" (claim 12). Representative claimed 12 reads as follows: 12. A method for continuous casting of shaped fatty acid soap melt- cast compositions comprising: - supplying a molten melt-cast fatty acid soap composition through a vertically disposable mould unit having temperature control means upstream from bottom, and allowing the melt to traverse upwards in the mould in a continuous casting process; controlling the mould temperature to thereby favour selective solidification and shaping of the melt into cast fatty acid soap product in the mould, which finally ejects from the top of the mould unit; and wherein the fatty acid and soap melt-cast composition cannot be readily stamped and shaped into tablets or bars following extrusion. The Examiner rejects all appealed claims under 35 U.S.C. § 112, 2nd paragraph, for failing to particularly point out and distinctly claim the subject matter which Appellants regard as their invention. The Examiner also rejects all appealed claims under 35 U.S.C. § 112, 1st paragraph, for failing to comply with the written description requirement. Appeal 2010-003087 Application 10/994,690 3 Finally, under 35 U.S.C. § 103(a), the Examiner rejects claims 12, 14- 20, and 23 as unpatentable over Chaffee (US 3,089,197, issued May 14, 1963) alone or further in view of Vogt (US 1,783,864, issued Dec. 02, 1930) and rejects the remaining claims on appeal over these references and further in view of other prior art of record. The § 112, 2nd paragraph, rejection is based on the Examiner's belief that the extrusion recitation in lines 10 -11 of claim 12 somehow applies to the casting limitations defined by this claim (Ans. 4). As correctly explained by Appellants, this belief is erroneous (Br. 8). Instead, the extrusion recitation would be understood by an artisan to define a limiting characteristic of the claim 12 composition (i.e., if the composition were to be extruded, it could not be readily stamped and shaped into tablets or bars) (id.). It follows that we will not sustain the Examiner's § 112, 2nd paragraph, rejection. The § 112, 1st paragraph, rejection is based on the Examiner's determination that the written description requirement is violated by the recitation in lines 10-11 of claim 12, particularly the recitation "cannot be readily stamped." However, we agree with Appellants that the last two paragraphs on page one of their Specification would reasonably convey to an artisan that Appellants had possession of the claim 12 invention as of the application filing date (Br. 7). That is, these Specification paragraphs provide written description support for the claim 12 requirement that the claimed composition "cannot be readily stamped and shaped into tablets or bars following extrusion." Appeal 2010-003087 Application 10/994,690 4 For this reason, we also will not sustain the Examiner's § 112, 1st paragraph, rejection. Each of the § 103 rejections depends upon the Examiner's determinations that the extruding method of Chaffee satisfies the continuous casting requirement of claim 12 and that Chaffee's teaching of an extruded bar which is firm satisfies the claim 12 requirement for a composition which "cannot be readily stamped and shaped into tablets or bars following extrusion" (Ans. 4-5). Appellants argue that neither of the Examiner's determinations is correct and, as support for this argument, refer to the § 1.132 Declaration of record filed 21 August 2008 (Br. 8-11). There is particularly persuasive merit in Appellants' argument that the Examiner has erred in finding Chaffee's extruded bar to satisfy the claim 12 requirement "wherein the fatty acid and soap melt-cast composition cannot be readily stamped and shaped into tablets or bars following extrusion." This argument is supported by the Chaffee reference itself. Specifically, Chaffee discloses that the extruded bar is cut into individual bars which are then conditioned by a cooling treatment "for the final stamping or pressing operation" (col. 3, l. 50). This disclosure completely undermines the Examiner's determination that Chaffee's extruded bars "cannot be readily stamped and shaped into tablets or bars following extrusion" as required by claim 12. Accordingly, we will not sustain the Examiner's § 103 rejections. The decision of the Examiner is reversed. REVERSED Appeal 2010-003087 Application 10/994,690 5 Ssl UNILEVER PATENT GROUP 800 SYLVAN AVENUE AG West S. Wing ENGLEWOOD CLIFFS, NJ 07632-3100