Ex parte Kaiser

Board of Patent Appeals and Interferences

Jul 21, 1998

07837666 (B.P.A.I. Jul. 21, 1998)

Application for patent filed February 14, 1992. 1
According to applicant, this application is a continuation of
Application No. 07/067,001, filed June 29, 1987, now
abandoned.
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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journal and (2) is not binding precedent of the Board.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. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JAMES J. KAISER
________________
Appeal No. 94-2901
Application No. 07/837,6661
________________
ON BRIEF
________________
Before WINTERS, DOWNEY and WILLIAM F. SMITH, Administrative
Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision
finally rejecting claims 18 through 22. Claims 2 through 4
and 14 through 17, which are the only other claims remaining
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in the application, also stand finally rejected. However,
with respect to the latter claims, no appeal was taken.
REPRESENTATIVE CLAIMS
Claims 19 and 20, which are illustrative of the subject
matter on appeal, read as follows:
19. A culture medium for use in a unitary sterilization
monitoring device, comprising a sterile admixture of water,
protein digests, soluble starch, a phosphate buffer, a salt,
and glycerol in an amount sufficient to support visually
detectable microbial growth, said culture medium being pH and
color stable to repeated subsequent heat sterilizations.
20. A twice sterilized culture medium comprising an
admixture of water with protein digests, minerals, a pH
indicator, and glycerol, wherein said first sterilization is
by heat or filtration and said second sterilization is by
heat, said culture medium being pH and color stable following
said first sterilization.
THE REFERENCES
The references relied on by the examiner are:
Orelski 4,291,122 Sep. 22, 1981
Brockmann 2,950,202 Aug. 23, 1960
Robert Jenness et al. (Jenness), Principles of Dairy Chemistry
346-49 (John Wiley & Sons, Inc. 1959)
A. Atkinson et al. (Atkinson), "Behaviour of Bacillus
stearothermophilus Grown in Different Media," 38 Journal of
Applied Bacteriology no. 3, 301-04 (1975)
THE ISSUES
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The issues presented for review are: (1) whether the
examiner erred in rejecting claim 19 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Orelski,
Atkinson, and the acknowledged prior art in the specification
(paragraph bridging pages 5 and 6) "and, if necessary,"
further taken in view of Jenness or Brockmann; (2) whether the
examiner erred in rejecting claims 18 through 22 under
35 U.S.C. § 112, second paragraph, as failing to particularly
point out and distinctly claim the subject matter which
applicant regards as his invention; (3) whether the examiner
erred in rejecting claims 20 through 22 under 35 U.S.C. § 112,
first paragraph, as based on an original specification which
does not provide adequate written descriptive support for the
invention now claimed; and (4) whether the examiner erred in
rejecting claims 18 through 22 under 35 U.S.C. § 112, first
paragraph, as based on a non-enabling disclosure.
DELIBERATIONS
Our deliberations in this matter have included evaluation
and review of the following materials: (1) the instant
specification, including Figures 1, 2 and 3, and all of the
claims on appeal; (2) applicant's Appeal Brief (Paper No. 31),
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the Reply Brief (Paper No. 34), and the "Answer to Examiner's
Supplemental Answer" (Paper No. 36); (3) the Examiner's Answer
(Paper No. 33), the first Supplemental Answer (Paper No. 35),
and the second Supplemental Answer (Paper No. 37); (4) the
above-cited references relied on by the examiner; and (5) the
previous opinion and decision issued by another merits panel
of the Board in parent Application Serial No. 07/067,001
(Appeal No. 91-2989, mailed January 14, 1992).
On consideration of the record, including the above-
listed materials, we reverse the examiner's rejections.
SECTION 103
The facts adduced by the examiner would appear to support
a conclusion of prima facie obviousness of claim 19 over
Orelski, Atkinson, and the acknowledged prior art in the
specification (paragraph bridging pages 5 and 6), further
considered in view of Jenness or Brockmann. That, however,
does not end the inquiry. See In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986) ("If a prima facie
case is made in the first instance, and if the applicant comes
forward with reasonable rebuttal, whether buttressed by
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experiment, prior art references, or argument, the entire
merits of the matter are to be reweighed.").
We have reviewed the objective evidence of nonobviousness
in applicant's specification, pages 5 through 8. There, in
side-by-side testing, applicant compares prior art Medium I
with culture Media II and III representing the claimed
invention. The evidence establishes that replacing a
monosaccharide such as dextrose with glycerol provides a
significant, unexpected improvement in the art, namely,
culture media containing glycerol are significantly less
sensitive to processing heat conditions and maintain a stable
pH. As stated in In re Papesch, 315 F.2d
381, 391, 137 USPQ 43, 51 (CCPA 1963), a composition and all
of its properties are inseparable; they are one and the same
thing. On these facts, we hold that (1) the specification
evidence serves to rebut the examiner's prima facie case of
obviousness; and (2) the claimed composition, considered as a
whole, would not have been obvious from the cited prior art.
The examiner attempts to "explain away" the data in
applicant's specification, arguing that
glycerol has a structure and chemical properties
differing substantially from glucose, and would not
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have been expected to be degraded like carbohydrate
by the high temperature of steam sterilization to
form acid . . . Glycerol not being degraded to form
an acid would have been expected to result in a pH
stable medium. [Examiner's Answer, page 15].
In our judgment, however, the examiner's argument is not based
on adequate evidence or sound scientific reasoning. Rather,
we believe that the argument is derived from information
provided by applicant in the instant specification, i.e., the
examiner's argument is based on the impermissible use of
hindsight. The examiner's position to the contrary,
notwithstanding, we hold that the objective evidence in
applicant's specification, pages 5 through 8, shows that the
claimed culture medium provides a significant improvement in
the art which would not have been expected at the time the
invention was made by a person having ordinary skill in the
art.
The rejection of claim 19 under 35 U.S.C. § 103 is
reversed.
SECTION 112
Claims 18 through 22 stand rejected under 35 U.S.C.
§ 112, second paragraph. According to the examiner, the
claims do not particularly point out and distinctly claim the
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subject matter which applicant "regards" as his invention
because the first and second sterilizations recited in claim
18, the repeated subsequent heat sterilizations recited in
claim 19, and the first and second sterilizations recited in
claims 20 through 22 are not limited to steam sterilizations.
A similar rejection was affirmed by another merits panel of
the Board in parent application Serial No. 07/067,001,
apparently on the basis of a statement in the previous Appeal
Brief that applicant intended to cover only steam
sterilization. See Appeal No. 91-2989, mailed January 14,
1992, page 8.
In this appeal, however, applicant makes clear that
the Board's . . . interpretation of appellant's
arguments in the parent case notwithstanding,
appellant has never asserted that steam
sterilization was the only type of sterilization
useful in the invention. [Appeal Brief, page 9, last
paragraph, emphasis added].
Suffice it to say, we find no evidence in this record
supporting a conclusion that claims 18 through 22 do not
particularly point out and distinctly claim the subject matter
which applicant regards as his invention. Applicant's present
position, that his contribution goes beyond steam
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sterilization, is amply supported by a consideration of the
instant specification in its entirety.
The rejection of claims 18 through 22 under 35 U.S.C.
§ 112, second paragraph, is reversed.
Claims 20 through 22 stand rejected under 35 U.S.C.
§ 112, first paragraph, as based on an original specification
which does not provide adequate written descriptive support
for the invention now claimed. According to the examiner, the
original specification does not adequately support a first
sterilization by filtration as recited in these claims.
Furthermore, claims 18 through 22 stand rejected under
35 U.S.C. § 112, first paragraph, as based on a non-enabling
disclosure. According to the examiner, applicant's disclosure
enables only steam sterilization. Therefore, to obviate this
rejection, the examiner would require that claim 18 be limited
to first and second steam sterilizations; that claim 19 be
limited to repeated subsequent steam sterilizations; and that
claims 20 through 22 be limited to first and second steam
sterilizations.
With respect to these rejections, we agree with the
reasoning succinctly stated by applicant in the Appeal Brief,
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pages 4 through 9, sections (6)(A) and (6)(B). For the
reasons set forth by applicant, the rejections under 35 U.S.C.
§ 112, first paragraph, are reversed.
CONCLUSION
We do not sustain the examiner's rejections under
35 U.S.C. § 103, 35 U.S.C. § 112, second paragraph, or
35 U.S.C. § 112, first paragraph.
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
MARY F. DOWNEY ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
WILLIAM F. SMITH )
Administrative Patent Judge )
Appeal No. 94-2901
Application No. 07/837,666
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