Ex parte Licht

Board of Patent Appeals and Interferences

Jan 22, 1999

07650453 (B.P.A.I. Jan. 22, 1999)

Application for patent filed February 4, 1991. 1
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for publication in a law journal and (2) is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LOUIS A. LICHT
____________
Appeal No. 95-0972
Application No. 07/650,4531
____________
ON BRIEF
____________
Before STONER, Chief Administrative Patent Judge,
WILLIAM F. SMITH and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 19 and 22 through 29, which are
all of the claims pending in this application.
Appeal No. 95-0972
Application No. 07/650,453
We AFFIRM-IN-PART, VACATE-IN-PART, and enter a new
rejection pursuant to 37 CFR § 1.196(b).
Appeal No. 95-0972 Page 3
Application No. 07/650,453
The examiner noted one error in claim 1 on page 2 of the2
answer.
BACKGROUND
The appellant's invention relates to a method of using
tree crops as pollutant control. A substantially correct copy
of the claims under appeal are reproduced in the appendix to
the appellant's brief.2
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
1988 Abstract of "Nitrogen Fixing Research Reports"
Organic Gardening, "Taking Hardwood Cuttings," pp. 26-27,
November 1989
Successful Farming, "Dollars from Filter Strips," pp. 36-37,
February 1992
Claims 1 through 19 and 22 through 29 stand rejected
under
35 U.S.C. § 102(b) based upon a public use or sale of the
invention.

Appeal No. 95-0972 Page 4
Application No. 07/650,453
Claims 1 through 19 and 22 through 29 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Successful
Farming, "Dollars from Filter Strips," in view of Organic
Gardening, "Taking Hardwood Cuttings," and the Abstract of
"Nitrogen Fixing Research Reports."
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 21, mailed March 21, 1994), the supplemental examiner's
answer (Paper No. 24, mailed June 9, 1994) and the second
supplemental examiner's answer (Paper No. 26, mailed August
10, 1994) for the examiner's complete reasoning in support of
the rejections, and to the appellant's brief (Paper No. 20,
filed January 24, 1994), reply brief and declarations (Paper
Nos. 22 and 23, filed May 20, 1994) and response to
supplemental answer (Paper No. 25, filed June 24, 1994) for
the appellant's arguments thereagainst.
OPINION
Appeal No. 95-0972 Page 5
Application No. 07/650,453
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Before addressing the examiner's rejections of
independent claim 1, it is an essential prerequisite that the
claimed subject matter be fully understood. Analysis of
whether a claim is patentable under 35 U.S.C. §§ 102 and 103
begins with a determination of the scope of the claim. Claim
interpretation must begin with the language of the claim
itself. See Smithkline Diagnostics, Inc. v. Helena
Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472
(Fed. Cir. 1988). Accordingly, we will initially direct our
attention to claim 1 to derive an understanding of the scope
and content thereof.
Before turning to the proper construction of claim 1, it
is important to review some basic principles of claim
Appeal No. 95-0972 Page 6
Application No. 07/650,453
construction. First, and most important, the language of the
claim defines the scope of the protected invention. Yale Lock
Mfg. Co. v. Greenleaf, 117 U.S. 554, 559 (1886) ("The scope of
letters patent must be limited to the invention covered by the
claim, and while the claim may be illustrated it cannot be
enlarged by language used in other parts of the
specification."); Autogiro Co. of Am. v. United States, 384
F.2d 391, 396, 155 USPQ 697, 701 (Ct. Cl. 1967) ("Courts can
neither broaden nor narrow the claims to give the patentee
something different than what he has set forth [in the
claim]."). See also Continental Paper Bag Co. v. Eastern
Paper Bag Co., 210 U.S. 405, 419 (1908); Cimiotti Unhairing
Co. v. American Fur Ref. Co., 198 U.S. 399, 410 (1905).
Accordingly, "resort must be had in the first instance to the
words of the claim" and words "will be given their ordinary
and accustomed meaning, unless it appears that the inventor
used them differently." Envirotech Corp. v. Al George, Inc.,
730 F.2d 753, 759, 221 USPQ 473, 477 (Fed. Cir. 1984).
Second, it is equally "fundamental that claims are to be
construed in the light of the specification and both are to be
Appeal No. 95-0972 Page 7
Application No. 07/650,453
read with a view to ascertaining the invention." United
States v. Adams, 383 U.S. 39, 49, 148 USPQ 479, 482 (1966).
Furthermore, the general claim construction principle
that limitations found only in the specification of a patent
or patent application should not be imported or read into a
claim must be followed. See In re Priest, 582 F.2d 33, 37,
199 USPQ 11, 15 (CCPA 1978). One must be careful not to
confuse impermissible imputing of limitations from the
specification into a claim with the proper reference to the
specification to determine the meaning of a particular word or
phrase recited in a claim. See E.I. Du Pont de Nemours & Co.
v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7 USPQ2d 1129,
1131 (Fed. Cir.), cert. denied, 488 U.S. 986 (1988).
Claim 1 recites:
A method of removing pollutants from near-surface
ground water comprising:
planting perennial tree stems having an upper and
lower end, and having preformed root initials, at a depth
so that at least two buds at the upper end of the stem
are above the ground and the lower end of the stem is
located to provide nutrient, pollutant and water uptake
Appeal No. 95-0972 Page 8
Application No. 07/650,453
interaction with the near-surface ground water supply and
nutrients and pollutants contained therein.
Thus, we must understand the meaning of the phrase "the
lower end of the stem is located to provide . . . water
uptake interaction with the near-surface ground water supply"
if we are to understand the scope of claim 1.
In reviewing the specification to ascertain the meaning
of the above-noted phrase we find that the appellant has
disclosed the following: (1) the trees are planted deep into
the soil where the near-surface ground water is located,
preferably planted so that the buried end of the stem cutting
is greater than 18 inches below the soil surface, and that
depths of 5 feet deep and greater have been used to place
roots in the near-surface ground water (specification, p. 6);
(2) the root is purposely placed to the desired soil depth
near the ground water table (specification, p. 7); (3) the
cutting must be planted at least adjacent the ground water,
and it is preferred that it be planted so that it is actually
Appeal No. 95-0972 Page 9
Application No. 07/650,453
At a planting location, the depth of the actual ground3
water supply at that location may widely vary due to rainfall
(see page 21 of the specification) but the normal ground water
in the water table, or even below it (specification, p. 9);
and (4) it is possible to plant the cutting more shallowly so
that it does not actually intersect the water table when first
planted (specification, p. 9).
From our review of the appellant's specification, we find
ourselves unable to define the phrase "the lower end of the
stem is located to provide . . . water uptake interaction
with the near-surface ground water supply" with a reasonable
degree of precision and particularity such that the metes and
bounds of claim 1 would be understood. In that regard, we are
unable to determine if this limitation requires (1) the lower
end of the stem as originally planted must be located to
interact with the ground water supply near the surface to
provide water uptake to the tree stem, (2) the lower end of
the stem as originally planted must be located where the
ground water supply near the surface is normally located to3
Appeal No. 95-0972 Page 10
Application No. 07/650,453
depth at that location will be fairly constant.
The appellant has used both phrases throughout the4
specification.
provide water uptake to the tree stem, or (3) the lower end of
the stem as originally planted must be located so that in the
future it will interact with the ground water supply near the
surface to provide water uptake to the tree stem.
In addition, we are unable to determine the meaning of
"ground water supply." It is not clear to us if the appellant
is using the phrase as synonymous with "groundwater table " or4
to include both the groundwater table and water in the ground
(e.g., rainfall which has been absorbed by the ground prior to
it entering the groundwater table).
Lastly, we are unable to determine the meaning of "near-
surface." That is, how close to the surface does the ground
water supply need to be to be considered near surface. Thus,
the term "near-surface" is a term of degree. When a word of
degree is used, such as the term "near-surface" in claim 1, it
Appeal No. 95-0972 Page 11
Application No. 07/650,453
is necessary to determine whether the specification provides
some standard for measuring that degree. See Seattle Box
Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d
818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984). We have
reviewed the appellant's disclosure to help us determine the
meaning of the above-noted terminology from claim 1. However,
the disclosure does not provide explicit guidelines defining
the terminology "near-surface" (claim 1). Furthermore, it is
our view that there are no guidelines that would be implicit
to one skilled in the art defining the term "near-surface"
that would enable one skilled in the art to ascertain what is
meant by thereby. For example, one cannot ascertain if ten
feet below ground is "near-surface." Absent such guidelines,
we are of the opinion that a skilled person would not be able
to determine the metes and bounds of the claimed invention
with the precision required by the second paragraph of 35
U.S.C. § 112. See In re Hammack, 427 F.2d 1378, 1382, 166
USPQ 204, 208 (CCPA 1970).
Appeal No. 95-0972 Page 12
Application No. 07/650,453
For the reasons set forth above, the appellant has failed
to particularly point out and distinctly claim the invention
as required by the second paragraph of 35 U.S.C. § 112.
NEW GROUND OF REJECTION
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claims 1 through 19, 23 and 25 are rejected under 35
U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the
invention, for the reasons explained above.
As set forth previously, our review of the specification
leads us to conclude that one of ordinary skill in the art
would not be able to understand the metes and bounds of the
phrase "the lower end of the stem is located to provide . . .
water uptake interaction with the near-surface ground water
supply" in independent claim 1.
Appeal No. 95-0972 Page 13
Application No. 07/650,453
THE OBVIOUSNESS REJECTION
Claims 1 through 19, 23 and 25
Considering now the rejections of claims 1 through 19, 23
and 25 under 35 U.S.C. § 103, we have carefully considered the
subject matter defined by these claims. However, for reasons
stated supra in our new rejection under the second paragraph
of Section 112 entered under the provisions of 37 CFR
1.196(b), no reasonably definite meaning can be ascribed to
certain language appearing in the claims. As the court in In
re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970) stated:
All words in a claim must be considered in judging the
patentability of that claim against the prior art. If no
reasonably definite meaning can be ascribed to certain
terms in the claim, the subject matter does not become
obvious --the claim becomes indefinite.
In comparing the claimed subject matter with the applied
prior art, it is apparent to us that considerable speculations
and assumptions are necessary in order to determine what in
fact is being claimed. Since a rejection based on prior art
cannot be based on speculations and assumptions, see In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962), we
are constrained to reverse, pro forma, the examiner's
Appeal No. 95-0972 Page 14
Application No. 07/650,453
rejections of claims 1 through 19, 23 and 25 under 35 U.S.C. §
103. We hasten to add that this is a procedural reversal
rather than one based upon the merits of the section 103
rejection.
Claims 22 and 24
We sustain the rejection of claims 22 and 24 under 35
U.S.C. § 103.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Moreover, in
evaluating such references it is proper to take into account
not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be
expected to draw therefrom. In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
Appeal No. 95-0972 Page 15
Application No. 07/650,453
Successful Farming, "Dollars from Filter Strips," was
relied upon by the examiner for teaching that in 1988 it was
known to plant filter strips of trees along a river bed to
remove pollutants as shown in Figure 5A of the application
(answer, p. 7).
The appellant's argue (brief, pp. 3-6) that Successful
Farming, "Dollars from Filter Strips," is not available as
prior art since it was published after the appellant's filing
date. The appellant states (brief, p. 5) that Figure 5 of the
application discloses the traditional type of "filter strip"
used in the prior art where perennials (i.e., trees) are
planted that do not have complex or deep root systems.
In view of this admission by the appellant, we have
determined that it is appropriate to rely on Successful
Farming, "Dollars from Filter Strips," as teaching that it was
known prior to the appellant's invention to plant filter
strips of trees along a river bed to remove pollutants as
shown in the prior art portion of Figure 5 of the application.
Appeal No. 95-0972 Page 16
Application No. 07/650,453
After the scope and content of the prior art are5
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Organic Gardening, "Taking Hardwood Cuttings," discloses
a method of planting hardwood cuttings. The method includes
planting tree stems (7 to 12 inches long) selected from
Salicaceae family (e.g., poplar or willow) and having upper
and lower ends and preformed root initials, at a depth so that
at least two buds at the upper end of the stem are above
ground and the lower end is located under ground to provide
nutrient and water uptake.
Based on our analysis and review of Organic Gardening,
"Taking Hardwood Cuttings" and claim 22 , it is our opinion5
that the only difference is the limitation that the lower end
of the stem is located to provide pollutant uptake interaction
with water which contains undesirable contaminants.
Appeal No. 95-0972 Page 17
Application No. 07/650,453
Thus, we regard the examiner's application of the6
teachings of the Abstract of "Nitrogen Fixing Research
Reports" to be mere surplusage. The examiner relied on
Abstract of "Nitrogen Fixing Research Reports" for teaching
planting stems 1.5-2.0 meters long (answer, p. 8). However,
this feature is not recited in claims 22 and 24.
In applying the above-noted test for obviousness, we
reach the conclusion that it would have been obvious to one of
ordinary skill in the art at the time the invention was made
to plant poplar or willow tree stem cuttings as taught by
Organic Gardening, "Taking Hardwood Cuttings" in an area along
a river bed so that the trees act as filter strips to remove
pollutants as suggested by the prior art shown in Figure 5 of
the application.6
In addition to the above-noted argument regarding the
application of Successful Farming, "Dollars from Filter
Strips," as prior art, the appellant argues (brief, p. 9) that
the limitation of claim 22 of "planting tree stems from the
Salicaceae family located to provide nutrient and contaminant
uptake interaction" is not suggested by the applied prior art.
We do not agree. As set forth above, Organic Gardening,
Appeal No. 95-0972 Page 18
Application No. 07/650,453
"Taking Hardwood Cuttings" teaches planting tree stems from
the Salicaceae family ( e.g., poplar and willow) located to
provide nutrient uptake interaction with water. In addition,
the prior art "filter strips" teaches planting trees in an
area along a river bed so that the trees provide nutrient and
contaminant uptake interaction with water. It is our
determination that the combined teachings of the applied prior
art would have suggested planting tree stems from the
Salicaceae family located to provide nutrient and contaminant
uptake interaction with water.
For the reasons set forth above, the decision of the
examiner to reject claim 22 under 35 U.S.C. § 103 is affirmed.
Appeal No. 95-0972 Page 19
Application No. 07/650,453
See page 3 of the appellant's brief.7
The appellant has grouped claims 22 and 24 as standing or
falling together. Thereby, in accordance with 37 CFR 7
§ 1.192(c)(7), claim 24 falls with claim 22. Thus, it follows
that the decision of the examiner to rejection claim 24 under
35 U.S.C. § 103 is also affirmed.
Claims 26 through 29
We will not sustain the rejection of claims 26 through 29
under 35 U.S.C. § 103.
Claim 26 recites:
A method of reducing leachate from contaminated
soils or landfills, said method comprising:
planting perennial tree stems having an upper and
lower end and preformed root initials at a depth such
that at least two buds at the upper end of the stem
are above the ground and at least two feet of the
lower end is buried; and
allowing the stems to develop roots to remove water
from the soil, thereby preventing further leakage of
water into the contaminated material and reducing
leachate creation.
Appeal No. 95-0972 Page 20
Application No. 07/650,453
In addition to the above-noted argument regarding the
application of Successful Farming, "Dollars from Filter
Strips," as prior art, the appellant argues (brief, pp. 6 and
9) that the planting depth limitation of claim 26 (i.e., the
lower ends of the tree stems are buried at a depth of at least
two feet) is not suggested by the applied prior art. We
agree. In that regard, we note that none of the applied prior
art teaches planting the lower end of a tree stem at least two
feet beneath the surface. Successful Farming, "Dollars from
Filter Strips," does not teach any planting depth. Organic
Gardening, "Taking Hardwood Cuttings," teaches a planting
depth less than 12 inches. Abstract of "Nitrogen Fixing
Research Reports" teaches a maximum planting depth of 30 cm
(i.e., less than 12 inches). It appears, therefore, that the
examiner's conclusion that the claimed method of claim 26
would have been obvious was based upon hindsight gleaned from
the appellant's disclosure, rather than from the teachings of
the applied prior art.
Appeal No. 95-0972 Page 21
Application No. 07/650,453
For the reasons set forth above, the decision of the
examiner to rejection claim 26, and claims 27 through 29
dependent thereon, under 35 U.S.C. § 103 is reversed.
Appeal No. 95-0972 Page 22
Application No. 07/650,453
THE PUBLIC USE OR SALE REJECTION
We vacate the rejection of claims 1 through 19 and 22
through 29 under 35 U.S.C. § 102(b) based upon a public use or
sale of the invention.
After giving careful consideration to the respective
positions articulated by the appellant and the examiner on
this issue, it is unclear to us exactly what facts the
examiner is relying upon in making this rejection. In fact,
it is unclear to us exactly what "use" the examiner believes
to have been a "public use" under 35 U.S.C. § 102(b) barring
the claimed subject matter.
The examiner appears to be continuing to rely upon
Successful Farming, "Dollars from Filter Strips," and the
meeting between Dr. Richard C. Schultz and the inventor in
November 1988 as somehow establishing a "public use" bar.
However, any use described in Successful Farming, "Dollars
from Filter Strips," is not a bar to the claimed subject
matter since the Risdal farm use described thereon occurred
after the appellant's filing date as established by the reply
Appeal No. 95-0972 Page 23
Application No. 07/650,453
brief and declarations (Paper Nos. 22 and 23) filed on May 20,
1994. In addition, the meeting between Dr. Richard C. Schultz
and the inventor in November 1988 cannot by itself establish a
"public use" bar. Mere knowledge of the invention by the
public does not warrant rejection under
35 U.S.C. § 102(b) since 35 U.S.C. § 102(b) bars public use or
sale, not public knowledge. T.P. Lab. v. Professional
Positions, Inc., 724 F.2d 965, 970-71, 220 USPQ 577, 581 (Fed.
Cir. 1984).
The examiner may have been relying on the use at Amana
Colonies described in the specification (pp. 16-26) and the
meeting between Dr. Richard C. Schultz and the inventor in
November 1988 as establishing the use at Amana Colonies as
being "public." However, if this was the rejection that was
intended by the examiner, it is not the rejection of record.
We note that as an aid to resolving a public use issue,
the examiner may require an applicant to answer specific
questions posed by the examiner and to explain or supplement
any evidence of record. 35 U.S.C. § 132, 37 CFR § 1.104(b),
Appeal No. 95-0972 Page 24
Application No. 07/650,453
MPEP §§ 2133.03(a) and 2133.03(e) discuss "public use"8
issues.
and Manual of Patent Examining Procedure (MPEP) § 706.02(c).
Accordingly, in any further prosecution, the examiner should
consider whether to require the appellant to answer specific
questions posed by the examiner and to explain or supplement
any evidence of record.8
CONCLUSION
To summarize, the decision of the examiner to reject
claims 22 and 24 under 35 U.S.C. § 103 is affirmed; the
decision of the examiner to reject claims 1 through 19, 23 and
25 through 29 under 35 U.S.C. § 103 is reversed; the decision
of the examiner to reject claims 1 through 19 and 22 through
29 under 35 U.S.C.
§ 102(b) is vacated; and a new rejection of claims 1 through
19, 23 and 25 under 35 U.S.C. § 112, second paragraph, has
been added pursuant to provisions of 37 CFR § 1.196(b).
Appeal No. 95-0972 Page 25
Application No. 07/650,453
In addition to affirming the examiner's rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53131, 53197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. Office 63, 122 (Oct. 21,
1997)). 37 CFR § 1.196(b) provides, "A new ground of
rejection shall not be considered final for purposes of
judicial review."

Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
Appeal No. 95-0972 Page 26
Application No. 07/650,453
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for rehearing thereof.
Appeal No. 95-0972 Page 27
Application No. 07/650,453
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; VACATED-IN-PART; 37 CFR § 1.196(b)
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
WILLIAM F. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JVN/gjh
Appeal No. 95-0972 Page 28
Application No. 07/650,453
ZARLEY, MCKEE, THOMTE,
VOORHESS & SEASE
801 GRAND, SUITE 3200
DES MOINES, IA 50309-2721
APPEAL NO. 95-0972 - JUDGE NASE
APPLICATION NO. 07/650,453
APJ NASE
APJ WILLIAM F. SMITH
CAPJ STONER
DECISION: AFFIRMED-IN-PART;
VACATED-IN-PART;
37 CFR § 1.196(b)
Prepared By: Gloria Henderson
DRAFT TYPED: 19 Jan 99
FINAL TYPED: