Ex Parte Miller

Board of Patent Appeals and Interferences

May 30, 2002

08265267 (B.P.A.I. May. 30, 2002)

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for publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GERALD W. MILLER
____________

Appeal No. 1999-0989
Application No. 08/265,267
____________

ON BRIEF
_____________
Before PAK, WALTZ, and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner
refusing to allow claims 1 through 12, 21 through 24 and 26 through 29, which are all
the claims pending in this application.
THE INVENTION
The invention is directed to a method for the removal of organic contaminants in
fluid form from a contaminated liquid. The fluid comprising the organic contaminants is
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brought into contact with a blend of an elastomeric material and a thermoplastic polymer
in specific proportions. The polymeric blend is present in discrete non-clumping
mechanically stable geometric shapes. Additional limitations are disclosed in the following
illustrative claim.
THE CLAIM
Claim 1 is illustrative of appellant’s invention and is reproduced below:
1. A method of removing organic contaminants from contaminated liquid,
gas, soil in fluid form, or mixtures thereof, comprising the steps of:
(a) producing discrete non-clumping mechanically stable geometric shapes of
a blend of elastomeric material with about 5-45% by weight thermoplastic polymer;
(b) providing the shapes in a loose form or packing; and
(c) bringing a fluid containing organic contaminants into contact with the
shapes in loose form or packing so that the shapes absorb organic contaminants
from the fluid.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references:
Winkler 3,929,631 Dec. 30, 1975
Biron 4,061,573 Dec. 06,1977
Sugimori et al. (Sugimori) 4,801,386 Jan. 31, 1989
Thirumalachar et al. (Thirumalachar) 4,929,341 May 29, 1990
Gabrick 5,104,548 Apr. 14, 1992
Nakano et al. (Nakano) 53-61165 Jun. 01, 1978
(published Japanese Patent Application) (referred to by the examiner as Japanese
Abstract No. 135702).
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THE REJECTIONS
Claims 1 and 29 stand rejected under 35 U.S.C. § 102(b) as being clearly
anticipated by Gabrick.
Claims 1, 24, 27, and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gabrick.
Claims 2, 5, 9, 12, and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gabrick in view of Winkler.
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Gabrick and Winkler in view of Sugimori.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Nakano in view of Gabrick.
Claims 7, 8, and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Biron in view of Gabrick.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Thirumalachar in view of Gabrick and Biron.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Nakano in view of Gabrick, Winkler and Sugimori.
Claims 23 and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
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over Biron in view of Gabrick and further in view of Winkler.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Thirumalachar in view of Gabrick and Biron and further in view of Winkler.
OPINION
We have carefully considered all of the arguments advanced by the appellant and the
examiner, and agree with the appellant that the rejections of claims 2 through 5, 8 through
10, 12, 21 through 24, 26, 27 and 28 are not well founded. Accordingly, we reverse
these rejections. We agree with the examiner that the rejection of claims 1, 6, 7, 11, and
29 are well founded. Accordingly, we affirm these rejections.
The Rejection under Section 102(b)
In order for a claimed invention to be anticipated under 35 U.S.C. § 102(b), all of
the elements of the claim must be found in one reference. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir.
1991). Gabrick is directed to a method for controlling and recovering oil spills from a
body of water. See column 1, lines 13-15. To that end Gabrick discloses that it is an
object of the invention to absorb oil from an oil slick and to convert an oil slick to a dry
agglomerated powder. See column 2, lines 6-14.
We find that Gabrick discloses that oil is absorbed by the presence of an elastomeric
composition comprising a block copolymer of styrene and an ethylene elastomer,
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particularly ethylene butylene. See column 2, lines 22-35. We find that the elastomer is
granular. See column 2, line 36. We find that Gabrick adds to the elastomeric
composition an “oleochemical synthetic wax.” See column 2, line 37. We find that,
“[t]he synthetic waxes are long chain polymers, principally of ethylene block polymers
which are available in solid particulate or powdered form.” See column 2, lines 40-42.
We further find that even after oil is adsorbed, the compositions form a “dry solid material
which has a non-tacky and non-oily surface.” Based upon these findings, we conclude that
the composition of Gabrick is in the form of a “discrete non-clumping mechanically stable
geometric shapes,” as required by the claimed subject matter in as much as the grains and
particles have geometric shapes. See column 2, lines 50-51.
We further find that, “said oleochemical synthetic wax is a linear chain ethylene
polymer which has a density less than water.” See claim 2 of Gabrick. Based upon the
above findings, we necessarily conclude that ethylene polymer is a thermoplastic polymer
as required by the claimed subject matter. Our conclusion is further supported by the
specification wherein the thermoplastic polymers of the claimed subject matter include
polyethylene. See specification, page 6, lines 27-29. See also Example 1, wherein a
specific polyethylene is utilized which has a density of 0.952 g/cc and accordingly, falls
clearly within the scope of claim 2 of Gabrick in that it has a density less than that of
water. Furthermore, we find that the elastomeric polymer is present in a proportion of 99
to 67 weight percent. We further find that the oleochemical synthetic wax is present in an
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amount of 1 to 33 weight percent. See column 3, lines 53-58. We further find that
Example 2 of Gabrick discloses particular proportions of 15 parts by weight of Kemester
oleochemical synthetic wax and 150 parts by weight of granular elastomeric gum rubber.
Accordingly, the proportions disclosed by Gabrick fall within the scope of the claimed
subject matter.
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We further find that water containing crude oil was contacted with the composition
of the claimed subject matter. See Example 2. Based upon the above findings and
analysis, we conclude that the teachings of Gabrick are sufficient to sustain the anticipation
rejection of claims 1 and 29.
In rebuttal to the anticipation rejection over Gabrick, appellant has submitted a
KEMESTER® product sheet on July 2, 1996. We find however, that the product sheet
submitted is directed to methyl esters manufactured by Humko Chemical. The Gabrick
reference, upon which the rejection is based, specifically refers to a product having the
same Trade name but produced by Witco Chemical Corp. The evidence submitted of
record fails to show the requisite nexus between the product of Humko and Witco
Chemical Corp. Moreover, even if they were shown to be the same products produced by
Witco, we cannot ignore the express teachings of Gabrick both in the specification and
claims directed to ethylene polymers.
Based upon the above reasons and those set forth in the Answer, we have
determined that the examiner has established a prima facie case of anticipation.
The Rejection of Claims 1, 24, 27 and 29 over Gabrick
We shall also sustain the rejection of claims 1 and 29 as unpatentable over Gabrick.
It is well settled that the ultimate obviousness is lack of novelty. The claims cannot have
been anticipated and not have been obvious. In re Fracalossi, 681 F.2d 792, 794, 215
USPQ 569, 571 (CCPA 1982).
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As to claims 24 and 27, we conclude that the disclosure of “granular elastomeric
material” and the synthetic wax available in “solid particulate form,” in and of itself is
insufficient to meet the requirement of claims 24 and 27. The examiner has not met the
burden of showing the size or shape of the entire composition. Furthermore, the examiner
has not shown that either the size or shape is a result effective variable. Accordingly, we
do not sustain the rejection of claims 24 and 27.
The Rejection of Claims 2, 5, 9, 12, and 21 over Gabrick in view of Winkler
The examiner relies upon Winkler for its teaching of “removing oil from a
contaminated medium with a foamed polystyrene-butadiene oil adsorbent.” See Answer,
page 4. The examiner concludes that, “it would have been obvious to one of ordinary skill
in the art at the time the invention was made to substitute the foamed polystyrene-
butadiene of Winkler for the elastomeric copolymer of the primary reference.” Id. We
disagree.
We find that Winkler is directed to a composition for the recovery of oil from an
aqueous surface. See Abstract and column 1, lines 6-9. We find that the compositions
utilized comprise particulate expanded polystyrene and polystyrene-butadiene which is
understood to be a copolymer of styrene and butadiene. We further find that in addition
or instead of butadiene, ethylene, propylene, and butylene can be copolymerized with
styrene. See column 2, lines 5-7. Moreover, the appellant admits on the record that the
copolymers of Winkler are elastomeric. See Brief, page 11. The examiner relies upon this
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finding to conclude that the substitution of the elastomer of Winkler for that of Gabrick
would have been obvious. Gabrick, however, discloses a specific elastomer directed to a
block copolymer of styrene, and an ethylene elastomer, particularly ethylene butylene. See
Gabrick, column 2, lines 25-27. In contrast Winkler states that “[i]nstead and in addition
to butadiene, ethylene, propylene and butylene can be copolymerized with styrene.” See
column 2, lines 5-7. We conclude that there is no disclosure therein for the preparation of
a block copolymer. Nor is there a disclosure of the particular block copolymers disclosed
by Gabrick. Hence, there is no reason to substitute the polystyrene-butadiene resin of
Winkler for the particular elastomers disclosed by Gabrick. Accordingly, there is no reason
to combine the disclosure of Gabrick with Winkler.
Based upon these findings and analysis, the rejection of claims 2, 5, 9, 12, and 21
over Gabrick in view of Winkler is reversed.
The Rejection of Claims 3 and 4 over Gabrick and Winkler in view of Sugimori
Claims 3 and 4 depend on claim 2. We concluded supra that Winkler was not
combinable with Gabrick. Sugimori is not directed to elastomeric material and accordingly,
does not overcome the deficiencies of Winkler. Accordingly, we reverse the rejection of
claims 3 and 4.
The Rejection of Claim 6 over Nakano in view of Gabrick
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1All references to the Nakano Patent are directed to an English language translation thereof provided
to the USPTO in June 2001.
Nakano is directed to a method of treating oil containing wastewater.1 We find that
the wastewater is passed through a contact phase containing an oxidative substance and is
subsequently contacted with a treatment material comprising organic polymers. See page
3. The oxidative substance includes ozone. See page 4. We further find that the contact
with an oxidative substance eases the adsorptive removal of emulsified oil in the presence of
organic polymers. Id. Accordingly, it would have been obvious to pretreat an oil
contaminated fluid with ozone prior to its treatment with the composition of Gabrick for
the express purpose of easing the removal of oil contaminants. The rejection of claim 6 is
accordingly, sustained.
The Rejection of Claims 7, 8, and 11 over Biron in view of Gabrick
With respect to the rejection of claims 7 and 11, we find that Gabrick in and of
itself discloses the utilization of a glass vessel containing an indicated amount of solid
absorbent. See Examples 1 through 9. We conclude that the placement of the absorbent
in a glass vessel provides the requisite column of geometric shapes in as much as at least
some of the absorbent will be present atop each other in a vertical configuration through
which the contaminated fluid would pass.
With respect to claim 11, we find that Example 1 of Gabrick reports an observation
that, “[t]he seawater after separation of the solid absorbent was clear and exhibited no
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residue of the crude oil.” Furthermore in Example 2, of Gabrick, it is stated that, the
surface of the water after removal of the solid absorbent appeared to be cleaner than that
observed in Example 1. In contrast, the proportions of contaminants to be removed in the
claimed subject matter require the removal of, “at least about 90% of the organic
contaminants.” We conclude that the proportion set forth in the claimed subject matter
can readily be obtained by one of ordinary skill in the art, particularly in view of the
teachings of Gabrick supra and as such are result effective variables. It is well settled that
discovery of an optimum value of a result effective variable in a known process is ordinarily
within the skill of the art. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980); In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8-9 (CCPA 1977);
and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Accordingly,
we conclude that the requisite amounts of organic contaminants have been removed by
Gabrick as required by the subject matter of claim 11.
Moreover, we do not consider the rejections over Gabrick alone in the absence of
the reference to Biron to constitute a "new ground" of rejection. The issue, in this respect,
is whether the appellant has had a fair opportunity to react to the thrust of the rejection.
In re Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425, 426-27 (CCPA 1976).
As to claim 8 however, there is no teaching or suggestion of replacing the geometric
shapes in the column once saturated with organic contaminants. Accordingly, we do not
sustain the rejection over claim 8.
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The Rejection of Claim 10 over Thirumalachar in view of Gabrick and Biron
As stated by the examiner, “Thirumalachar et al[.] discloses flooding soil with water
in order to extract oil therefrom, and subsequently separating oil from the resultant
mixture.” See Answer, page 6. We further find that the presence of a lipophilic solvent is
required by Thirumalachar. See Abstract, column 4, lines 15-32. Gabrick however, the
only reference directed to the composition of the claimed subject matter, is directed to the
separation of oil from water in the absence of soil, and in the absence of a lipophilic
solvent. In addition, the thrust of Thirumalachar is to produce oil from oil bearing soil,
wherein the oil is not a contaminant. We see no reason to combine the references to
Thirumalachar and Gabrick, wherein each is directed to a different process. Accordingly,
we do not sustain the rejection of claim 10.
The Rejections of Claims 22, 23, 26, and 28
As to the balance of the rejections, each of the claims in this group is directly or
ultimately dependent upon claim 2, which rejection we did not sustain. Furthermore,
none of the additional references relied upon by the examiner in three separate rejections
over one or more of the aforesaid claims, i.e., Nakano, Sugimori, Biron, or Thirumalachar,
eliminates the deficiencies of the rejection of claim 2 over Gabrick in view of Winkler.
Accordingly, we do not sustain any of the above rejections.
DECISION
The rejection of claims 1 and 29 under 35 U.S.C. § 102(b) as being clearly
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anticipated by Gabrick is affirmed.
The rejection of claims 1 and 29 under 35 U.S.C. § 103(a) as being unpatentable
over Gabrick is affirmed.
The rejection of claim 6 under 35 U.S.C. § 103(a) as being unpatentable over
Nakano in view of Gabrick is affirmed.
The rejection of claims 24 and 27 under 35 U.S.C. § 103(a) as being unpatentable
over Gabrick is reversed.
The rejection of claims 2, 5, 9, 12, and 21 under 35 U.S.C. § 103(a) as being
unpatentable over Gabrick in view of Winkler is reversed.
The rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as being unpatentable
over Gabrick and Winkler in view of Sugimori is reversed.
The rejection of claims 7 and 11 under 35 U.S.C. § 103(a) as being unpatentable
over Biron in view of Gabrick is affirmed.
The rejection of claim 8 under 35 U.S.C. § 103(a) as being unpatentable over
Biron in view of Gabrick is reversed.
The rejection of claim 10 under 35 U.S.C. § 103(a) as being unpatentable over
Thirumalachar in view of Gabrick and Biron is reversed.
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The rejection of claim 22 under 35 U.S.C. § 103(a) as being unpatentable over
Nakano in view of Gabrick, Winkler, and Sugimori is reversed.
The rejection of claims 23 and 26 under 35 U.S.C. § 103(a) as being unpatentable
over Biron in view of Gabrick and further in view of Winkler is reversed.
The rejection of claim 28 under 35 U.S.C. § 103(a) as being unpatentable over
Thirumalachar in view of Gabrick and Biron and further in view of Winkler is reversed.
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The decision of the examiner is affirmed-in-part.
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
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
PL:hh
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