Ex parte Nickens et al.

Board of Patent Appeals and Interferences

Oct 17, 2000

08190929 (B.P.A.I. Oct. 17, 2000)

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for publication and is not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAN A. NICKENS and CHARLES C. MATTERN
____________
Appeal No. 1998-3402
Application No. 08/190,929
____________
ON BRIEF
____________
Before CALVERT, NASE, and JENNIFER D. BAHR, 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 to 15, 18 and 19. Claims 16 and 17, the
only other claims pending in this application, have been
withdrawn from consideration under 37 CFR § 1.142(b) as being
drawn to a nonelected invention.
Appeal No. 1998-3402 Page 2
Application No. 08/190,929
We REVERSE.
BACKGROUND
The appellants' invention relates to a waste treatment
system. A copy of the claims under appeal is set forth in the
appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Brooks 3,719,028 Mar. 6,
1973
De Gregorio 3,926,135 Dec. 16,
1975
Gablin et al. 4,168,243 Sep. 18,
1979
(Gablin)
Nguyen 4,255,168 Mar. 10,
1981
Hay et al. 4,875,420 Oct. 24,
1989
(Hay)
Mattern 5,383,499 Jan. 24,
1995
(filed May 4, 1992)
Earth Resources Corporation, Statement of Qualifications and
Experience Compressed Gas Management Services, pp. 1-44
Appeal No. 1998-3402 Page 3
Application No. 08/190,929
Claims 4 and 5 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellants regard as the invention.
Claims 1 to 5, 9, 13 to 15, 18 and 19 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Hay or Brooks
in view of Mattern, Gablin and De Gregorio.
Claims 6 to 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hay or Brooks in view of Mattern,
Gablin and De Gregorio as applied to claim 1 above, and
further in view of Nguyen.
Claims 10 to 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hay or Brooks in view of Mattern,
Gablin and De Gregorio as applied to claim 1 above, and
further in view of Earth Resources Corporation.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
Appeal No. 1998-3402 Page 4
Application No. 08/190,929
rejections, we make reference to the answer (Paper No. 26,
mailed February 19, 1998) for the examiner's complete
reasoning in support of the rejections, and to the brief
(Paper No. 25, filed December 15, 1997) and reply brief (Paper
No. 27, filed April 20, 1998) for the appellants' arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness rejection
We will not sustain the rejection of claims 4 and 5 under
35 U.S.C. § 112, second paragraph.
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the
Appeal No. 1998-3402 Page 5
Application No. 08/190,929
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
The examiner rejected claims 4 and 5 as being indefinite
since there was no structural difference between the two
claims (answer, p. 4). We do not agree for the following two
reasons.
First, we agree with the appellants' position set forth
in the brief (pp. 5-6) and the reply brief (p. 1) that claims
4 and 5 are structurally different. In that regard, the
"adapted to" language used in each of claims 4 and 5 is a
structural limitation, not merely a description of how the
chamber is used. See In re Venezia, 530 F.2d at 958-59, 189
USPQ at 151-52.
Second, even if the examiner would have been correct that
claims 4 and 5 were redundant (i.e., no structural
difference), we fail to find any basis for a rejection under
the second paragraph of 35 U.S.C. § 112 since each claim
Appeal No. 1998-3402 Page 6
Application No. 08/190,929
It appears to us that a redundant claim can be objected1
to by the examiner as failing to comply with the requirement
of
37 CFR § 1.75(b) that claims differ from each other. See MPEP
§ 706.03(k) (Seventh Edition, Rev. 1, Feb. 2000).
defines the metes and bounds thereof with a reasonable degree
of precision and particularity.1
For the reasons set forth above, the decision of the
examiner to reject claims 4 and 5 under 35 U.S.C. § 112,
second paragraph, is reversed.
Appeal No. 1998-3402 Page 7
Application No. 08/190,929
The obviousness rejections
We will not sustain the rejection of claims 1 to 15, 18
and 19 under 35 U.S.C. § 103.
Upon evaluation of all the evidence before us, it is our
conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. In rejecting claims
under
35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). A prima facie case of obviousness is established by
presenting evidence that would have led one of ordinary skill
in the art to combine the relevant teachings of the references
to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
Obviousness is tested by "what the combined teachings of
the references would have suggested to those of ordinary skill
Appeal No. 1998-3402 Page 8
Application No. 08/190,929
in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). But it "cannot be established by combining
the teachings of the prior art to produce the claimed
invention, absent some teaching or suggestion supporting the
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And
"teachings of references can be combined only if there is some
suggestion or incentive to do so." Id. Here, it is clear to
us that the prior art contains none. In fact, the advantages
of utilizing a distribution manifold connected to a plurality
of waste treatment units and a waste source as recited in the
claims under appeal are not appreciated by the prior art
applied by the examiner.
Instead, it is quite apparent to us that the examiner
relied on hindsight in reaching his obviousness determination.
However, our reviewing court has said, "To imbue one of
ordinary skill in the art with knowledge of the invention in
suit, when no prior art reference or references of record
convey or suggest that knowledge, is to fall victim to the
insidious effect of a hindsight syndrome wherein that which
Appeal No. 1998-3402 Page 9
Application No. 08/190,929
only the inventor taught is used against its teacher." W. L.
Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984). It is essential that "the decisionmaker forget what
he or she has been taught at trial about the claimed invention
and cast the mind back to the time the invention was made . .
. to occupy the mind of one skilled in the art who is
presented only with the references, and who is normally guided
by the then-accepted wisdom in the art." Id. Since the
claimed subject matter as recited in the claims under appeal
is not taught or suggested by the applied prior art, the
decision of the examiner to reject claims 1 to 15, 18 and 19
under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 4 and 5 under 35 U.S.C. § 112, second paragraph, is
Appeal No. 1998-3402 Page 10
Application No. 08/190,929
reversed and the decision of the examiner to reject claims 1
to 15, 18 and 19 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1998-3402 Page 11
Application No. 08/190,929
JAMES G. GATTO, ESQ.
HUNTON AND WILLIAMS
1900 K STREET, N.W.
WASHINGTON, DC 20006-1109
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Application No. 08/190,929
JVN/dl