Ex parte Lipsey

Board of Patent Appeals and Interferences

Mar 31, 1999

07925615 (B.P.A.I. Mar. 31, 1999)

Application for patent filed August 6, 1992.1
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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journal and (2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte WILLIAM T. LIPSEY
________________
Appeal No. 96-1389
Application No. 07/925,6151
________________
ON BRIEF
________________
Before MEISTER, ABRAMS and STAAB, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 2, 4 to 6 and 8. Claims 10 and 11, the
only other claims remaining in the application, have been
Appeal No. 96-1389
Application No. 07/925,615
The answer also included a new rejection of the appealed2
claims under 35 U.S.C. § 102(b) based upon a public use and/or
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withdrawn from further consideration under 37 CFR § 1.142(b)
as not being readable on the elected invention. An amendment
filed subsequent to the final rejection on March 21, 1994
(Paper No. 9) has been entered. See the advisory letter
mailed April 11, 1994 (Paper No. 11).
Appellant’s invention pertains to a compost pile building
apparatus. Details of the invention can be readily understood
from a reading of the appealed claims, a copy of which is
found in an appendix to appellant’s brief.
The references of record relied upon by the examiner in
support of the rejections are:
Piez et al. (Piez) 696,266 Mar. 25, 1902
Plugge et al. (Plugge) 3,145,855 Aug. 25,
1964
Pinckard 4,164,405 Aug. 14,
1979
Cottrell et al. (Cottrell) 4,253,405 Mar. 3,
1981
Shelef 4,288,241 Sep. 8,
1981
Malmström et al (Malmström) 4,445,814 May 1,
1984
The following rejections under 35 U.S.C. § 103 are before
us for review:2
Appeal No. 96-1389
Application No. 07/925,615
sale of the invention more than one year prior to the
effective filing date of the application. This rejection was
withdrawn in view of appellant’s response thereto in the reply
brief. See the supplemental examiner’s answer mailed March
21, 1995 (Paper No. 20).
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(1) claims 1 and 2, unpatentable over Pinckard in view of
Shelef, Malmström, Plugge and Cottrell; and
(2) claims 4 to 6 and 8, unpatentable over Pinckard in
view of Shelef, Malmström, Plugge and Cottrell, as applied in
the rejection of claims 1 and 2, and further in view of Piez.
Turning to the standing § 103 rejection of claims 1 and
2, the examiner contends that Pinckard discloses that it is
conventional in the art to compost cotton gin trash by
moistening the trash with water while building a pile of the
material to be composted. The examiner acknowledges that
Pinckard does not disclose, inter alia, (1) a porous support
surface for supporting the compost pile, (2) a support post
extending upwardly from substantially the center of the
support surface, (3) conveyor means for conveying cotton gin
trash along a path above the support surface, (4) said
conveyor having a plurality of outlets, (5) a cyclone attached
to the support post for separating cotton gin trash from a
Appeal No. 96-1389
Application No. 07/925,615
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stream of air coming from a cotton gin and discharging the
separated trash into the inlet of the conveyor means, and (6)
fluid means for adding a fluid to the cotton gin trash as the
cotton gin trash is received in the inlet of the conveyor
means.
As to (1), the examiner cites Shelef as disclosing that
it is conventional in the art to compost material in piles
wherein the piled compost material is provided on a porous
support surface. The examiner contends that it would have
been obvious to one of ordinary skill in the art in view of
Shelef to compost the material of Pinckard on a porous support
surface “for the known and expected control of the composting
pile which is provided by the porous support surface” (answer,
page 4). Concerning (2) and (3), the examiner cites Malmström
as teaching a screw auger device for piling material which
includes a conveyor means 15 that is supported in a horizontal
position above a surface by a support post. The examiner
contends that it would have been obvious to employ a device as
disclosed by Malmström “for the known and expected result of
making piles of materials as required by the primary reference
of Shelef [Pinckard?]” (answer, pages 4-5). Concerning (4),
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Application No. 07/925,615
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Plugge is relied upon by the examiner to teach a screw auger
conveyor means which includes an auger tube having a plurality
of spaced outlet openings 100 for evenly distributing material
over the length of the conveyor means. Based on Plugge, the
examiner contends that it would have been obvious to employ a
conveyor device having a plurality of outlet openings in the
modified primary reference “for the known and expected result
of employing an alternative means recognized in the art to
achieve the same result, the even distribution of material
throughout and within a space of predetermined dimensions”
(answer, page 6). With respect to (5), Cottrell is cited to
teach that it is conventional in the art to convey cotton gin
trash from a cotton gin by means of a forced air stream and
then use cyclones to separate the trash from the forced air
stream for further processing. Based on this teaching, the
examiner contends that it would have been obvious to collect
and convey cotton gin trash to the compost pile of the
modified primary reference in the manner utilized by Cottrell.
No reference is cited for (6). Instead, the examiner contends
that it would have been obvious “to wet the solid material of
the reference of Shelef [Pinckard?] with water which is
Appeal No. 96-1389
Application No. 07/925,615
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introduced at and/or prior to the introduction of the material
into the conveyor means for the known and expected result of
providing the required mixing of the material prior to forming
the pile” (answer, page 5). In this regard, the examiner
contends that “spraying devices for adding a liquid to a solid
are notoriously well known in the art” (answer, page 5).
We will not sustain this rejection.
Our court of review has repeatedly cautioned against
employing hindsight by using the applicant’s disclosure as a
blueprint to reconstruct the claimed invention out of isolated
teachings of the prior art. See, e.g., Grain Processing Corp.
v. American Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d
1788, 1792 (Fed. Cir. 1988). That court has also cautioned
against focusing on the obviousness of the differences between
the claimed invention and the prior art rather than on the
obviousness of the claimed invention as a whole as § 103
requires. See, e.g., Hybritech Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1383, 231 USPQ 81, 93 (Fed. Cir. 1986),
cert. denied, 480 USPQ 947 (1987).
Also appropriate is our reviewing court’s words in In re
Appeal No. 96-1389
Application No. 07/925,615
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Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992), wherein the court stated:
It is impermissible to use the claimed invention as
an instruction manual or “template” to piece
together the teachings of the prior art so that the
claimed invention is rendered obvious. This court
has previously stated that “[o]ne cannot use
hindsight reconstruction to pick and choose among
isolated disclosures in the prior art to deprecate
the claimed invention” (citations omitted).
We think that is precisely what has occurred here. There
is simply no cogent reason for combining the reference
teaching in the manner proposed by the examiner other than
through the use of impermissible hindsight knowledge gleaned
from first reading appellant’s disclosure. Under such
circumstances, the § 103 of claims 1 and 2 cannot be
sustained.
The Piez reference applied in the rejection of claims 4
to 6 and 8 has been carefully considered but does not make up
for the deficiencies of Pinckard, Shelef, Malmström, Plugge
and Cottrell. Accordingly, the rejection of claims 4 to 6 and
8 also cannot be sustained.
In that a prima facie case of obviousness has not been
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Application No. 07/925,615
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made out by the examiner, it is unnecessary for us to consider
appellant’s evidence of nonobviousness, i.e., the affidavits
of William T. Lipsey submitted March 21, 1994 and April 4,
1994.
The decision of the examiner is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Walker, McKenzie & Walker
6363 Poplar Ave.
Suite 434
Memphis, TN 38119
Appeal No. 96-1389
Application No. 07/925,615
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ljs/ki