Ex Parte Moffett

Board of Patent Appeals and Interferences

Jul 30, 2003

09898437 (B.P.A.I. Jul. 30, 2003)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte ROBERT H. MOFFETT

Appeal No. 2003-0746
Application No. 09/898,437

ON BRIEF

Before KIMLIN, OWENS AND KRATZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of our decision of May 14,
2003, wherein we affirmed the examiner’s rejections of all of the
appealed claims under 35 U.S.C. § 103.
We have thoroughly reviewed each of appellant’s arguments
set forth in their request. However, we find that our decision
is free of factual and legal error, and we remain of the opinion
that the claimed subject matter would have been obvious to one of
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Application No. 09/898,437
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ordinary skill in the art within the meaning of § 103 in view of
the prior art cited by the examiner.
Appellant submits that we misconstrued the appealed claims
in finding that they do not specify that the inorganic colloid
and organic polymer perform a precipitation function. To support
this argument, appellant notes that claim 1 calls for adding
one or more metal ions, an anionic inorganic colloid and
inorganic polymer to produce a flocculated mass. Appellant
concludes that “[c]ontrary to the Board’s reasoning, both claims
require the limitation of producing flocculated mass by addition
of at least one polymer flocculants [sic, flocculant] to perform
a precipitation function” (page 2 of request, 2nd paragraph).
However, by appellant’s own admission, we did not misconstrue the
claims in finding that the claims do not specify that the
inorganic colloid and organic polymer perform a precipitation
function. Manifestly, Allgulin, like appellant, employs
flocculants to produce a flocculated mass.
We also adhere to our opinion that Chung is analogous
art. It is our view that “one of ordinary skill in the art would
have understood that the treatment process of Allgulin
encompasses aqueous streams of the type disclosed by Chung” [page
6 of decision, 1st paragraph). Moreover, as noted at page 5 our
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Application No. 09/898,437
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decision, appellant’s specification attaches no criticality to
the choice of flocculating materials. Chung evidences that the
claimed materials were known in the art as flocculating agents.
Appellant also submits that we overlooked the claims in
concluding that the claims do not preclude the addition of
aluminum-containing chemicals. According to appellant, the
recitation of the Markush group effectively confines the metal
ions to zinc and manganese ions. However, the “comprising”
language of the claims “opens” the claims to the addition of
compounds in addition to the recited zinc and manganese ions. As
for appellant’s statement that “claims are interpreted from the
specification and prosecution estoppel applies” (page 3 of
request, penultimate paragraph), it is well settled that
limitations from the specification are not to be read into the
claims. In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir.),
cert. denied, 474 U.S. 828 (1985).
Appellant also contends that “[c]ontrary to the Board’s
statement, Chung does not disclose bentonite and a
polyacrylamide” (page 4 of request, 2nd paragraph). We addressed
this argument at the sentence bridging pages 6 and 7 of the
decision. We recognized that Chung does not expressly disclose a
Appeal No. 2003-0746
Application No. 09/898,437
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combination of bentonite and polyacrylamide, but we explained
that it is a matter of prima facie obviousness for one of
ordinary skill in the art to combine two or more materials when
each is taught by the prior art to be useful for the same
purpose, citing In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ
1069, 1072 (CCPA 1980). Appellant’s statement that it is “not
obvious to combine two or more materials when each is taught to
be alternatively used,” has no legal support (page 5 of request,
3rd paragraph). Indeed, motivation arises to use a combination
of alternative materials when a sufficient amount of the
materials is not available. Appellant’s arguments concerning
unexpected results have been adequately addressed in the
decision.
Regarding appellant’s argument that the process steps of
Allgulin and Chung that are not recited in the appealed claims
would materially affect the basis process of removing phosphorus
from an aqueous stream, the arguments presented at page 6 of the
request lack the requisite factual, evidentiary support.
Appellant repeats the erroneous statement that “appellant’s
claims are directed to using polymer(s) to produce, not to
remove, a precipitate” (page 6 of request, penultimate
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paragraph). As emphasized at the beginning appellant’s
request, the appealed claims call for producing a flocculated
mass, not to produce a precipitate.
In conclusion, appellant’s request is granted to the extent
we have reconsidered our decision, but is denied with respect to
making any change therein.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Denied
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
ECK:dpv
Appeal No. 2003-0746
Application No. 09/898,437
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