Ex parte Morizane

Board of Patent Appeals and Interferences

Oct 30, 2001

08815682 (B.P.A.I. Oct. 30, 2001)

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publication and is not binding precedent of the Board.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. 33

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TOSHINORI MORIZANE
_____________
Appeal No. 1999-0461
Application 08/815,682
______________
HEARD: October 11, 2001
_______________
Before PAK, WARREN, and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 4-6, which are all of the claims remaining in the
application.
THE INVENTION
The appellant’s claimed invention is directed toward a
method for forming metal oxide micro-spherules. Claim 4 is
illustrative:
Appeal No. 1999-0461
Application No. 08/815,682
2
4. A method for producing metal oxide
micro-spherules, which comprises: subjecting a
hydrolyzable organic metal compound to hydrolysis in
a reaction solution consisting of water, an organic
solvent, halogen ions as a catalyst and boron ions,
while maintaining pH value of said reaction solution
in a range of from 8 to 10, followed by dehydration
and condensation to obtain micro-spherules;
thereafter rinsing said micro-spherules with water
for separation of said micro-spherules from the
reaction solution; and maintaining said
micro-spherules at a temperature of 200ºC or below.
REFERENCE RELIED UPON BY THE EXAMINER
Kondo et al. (Kondo) 5,160,358 Nov. 03,
1992
THE REJECTIONS
Claims 4-6 stand rejected as follows: under 35 U.S.C.
§ 101, as being inoperable, and under 35 U.S.C. § 112,
enablement and written description requirements.
OPINION
We reverse the aforementioned rejections.
Rejections under 35 U.S.C. § 101 and
35 U.S.C. § 112, enablement requirement
Before utility, which is a question of fact, is
determined, the claims must be interpreted as a matter of law
to define the invention to be tested for utility. See
Appeal No. 1999-0461
Application No. 08/815,682
The metal oxide micro-spherules are disclosed as being useful in1
coatings for materials such as metals, pressurized cooking utensils, paper and
film (specification, page 1).
3
Raytheon Co. v. Roper Corp., 724 F.2d 951, 956, 220 USPQ 592,
596 (Fed. Cir. 1983), cert denied, 469 U.S. 835 (1984).
The claimed invention is a method for making metal oxide
micro-spherules by subjecting a hydrolyzable organic metal
compound to hydrolysis in a recited reaction solution while
maintaining the reaction solution pH at 8-10 followed by
dehydration and condensation to obtain micro-spherules,
rinsing the micro-spherules with water to separate the micro-
spherules from the reaction solution, and maintaining the
micro-spherules at a temperature of 200ºC or below. 1
The examiner argues that the appellant’s claims, when
read in light of the specification, are limited to a method
for making metal oxide glass micro-spherules by vitrifying a
reaction product at 200ºC or below (answer, pages 3-4 and 6).
It reasonably appears that “metal oxide micro-spherules” in
the appellant’s claims and “metal oxide glass micro-spherules”
in the appellant’s specification have the same meaning. Each
term refers to the micro-spherules formed by the appellant’s
Appeal No. 1999-0461
Application No. 08/815,682
“Vitrification” is “[t]he conversion of a material into a glass or2
glasslike substance, of increased hardness and brittleness.” Hackh’s Chemical
Dictionary 716 (Julius Grant ed., McGraw-Hill 4 ed. 1969). The examinerth
provides no evidence that the appellant’s metal oxide micro-spherules are not
glasslike or of increased hardness and brittleness.
4
method. Similarly, “maintaining ... at a temperature”
reasonably appears to be the same as “vitrifying ... at a
temperature”, both meaning holding the metal oxide micro-
spherules at a particular temperature.
Regarding utility, a predecessor of our appellate
reviewing court stated in In re Langer, 503 F.2d 1380, 1391,
183 USPQ 288, 297 (CCPA 1974):
[A] specification which contains a disclosure of
utility which corresponds in scope to the subject
matter sought to be patented must be taken as
sufficient to satisfy the utility requirement of
§ 101 for the entire claimed subject matter unless
there is reason for one skilled in the art to
question the objective truth of the statement of
utility or its scope.
The examiner argues that the appellant’s claimed method
cannot work because glass cannot be vitrified at temperatures
as low as 200ºC or below (answer, page 4). In support of2
this argument the examiner relies upon Kondo, which discloses
making a porous silica gel plate by a sol-gel method and then
calcining the plate at a temperature of as least 900ºC to
Appeal No. 1999-0461
Application No. 08/815,682
5
render it nonporous and suitable for use as a base for a
planar optical waveguide (col. 3, line 67 - col. 4, line 11;
col. 8, lines 49-59).
The appellant, however, distinguishes the claimed method
over the sol-gel method which, the appellant states, requires
heat treatment at 1,100ºC or higher (specification, page 2).
The appellant states that the appellant’s method permits metal
oxide micro-spherules to be produced at 200ºC or below
(specification, pages 3 and 18), and provides an example
wherein metal oxide micro-spherules are produced at 25ºC
(specification, pages 16-18). The examiner has provided no
evidence that if the appellant’s claimed method rather than
Kondo’s sol-gel method is used, metal oxide micro-spherules
cannot be formed at a temperature of 200ºC or below.
Consequently, we are not persuaded by the examiner’s argument
that the appellant’s claimed method lacks utility.
In the rejection under 35 U.S.C. § 112, first paragraph,
enable requirement, the examiner relies upon the same
rationale used in the rejection under 35 U.S.C. § 101 (answer,
Appeal No. 1999-0461
Application No. 08/815,682
Absence of utility can be the basis of a rejection under both 353
U.S.C. § 101 and 35 U.S.C. § 112, first paragraph, see In re Brana, 51 F.3d
1560, 1564 n. 12, 34 USPQ2d 1436, 1439 n.12 (Fed. Cir. 1995); In re Jolles,
628 F.2d 1322, 1326 n.10, 206 USPQ 885, 889 n.11 (CCPA 1980); In re Fouche,
439 F.2d 1237, 1243, 169 USPQ 429, 434 (CCPA 1971).
6
page 5). We are not convinced by the examiner’s argument for3
the reasons set forth above regarding that rejection.
For the above reasons we conclude that the examiner has
not carried the burden of establishing a prima facie case of
lack of
utility or of nonenablement. Accordingly, we reverse the
rejections under 35 U.S.C. §§ 101 and 112, first paragraph,
enablement requirement.
Rejection under 35 U.S.C. § 112,
written description requirement
A specification complies with the 35 U.S.C. § 112, first
paragraph, written description requirement if it conveys with
reasonable clarity to those skilled in the art that, as of the
filing date sought, the inventor was in possession of the
invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); In re Kaslow,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983); In
Appeal No. 1999-0461
Application No. 08/815,682
7
re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA
1978); In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96
(CCPA 1976).
The examiner argues that the specification does not
provide adequate written descriptive support for the term
“maintaining” in claim 1 (answer, page 5).
As stated above regarding the rejection under 35 U.S.C.
§ 101, the maintaining at 200ºC or below in claim 1 reasonably
appears to be the vitrifying at 200ºC or below described in
the specification (page 3). This maintaining or vitrifying
necessarily must last for some time period. Hence, the
specification would have conveyed with reasonable clarity to
those skilled in the art that the appellant was in possession
of a method in which metal oxide micro-spherules are
maintained at 200ºC or below. Accordingly, we reverse the
rejection under 35 U.S.C. § 112, first paragraph, written
description requirement.
DECISION
The rejections of claims 4-6 under 35 U.S.C. § 101 and
under 35 U.S.C. § 112, enablement and written description
Appeal No. 1999-0461
Application No. 08/815,682
8
requirements, are reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
tjo/vsh
Appeal No. 1999-0461
Application No. 08/815,682
9
ARMSTRONG, WESTERMAN, HATTORI,
MCLELAND AND NAUGHTON
1725 K STREET, NW
SUITE 1000
WASHINGTON, DC 20006