Ex parte Pedersen

Board of Patent Appeals and Interferences

May 15, 2000

08209194 (B.P.A.I. May. 15, 2000)

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for publication in a law journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANCIS L. RICHTER, JAMES WILSON and
DANIEL E. PEDERSEN
____________
Appeal No. 1996-2873
Application No. 08/209,194
____________
HEARD: May 1, 2000
____________
Before GARRIS, PAK, and KRATZ, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
refusal to allow claims 50 through 65 and 67 through 80 which
are all of the claims pending in the application. Claim 66
was canceled subsequent to the final Office action dated June
26, 1995, Paper No. 9.
Appeal No. 1996-2873
Application No. 08/209,194
2
Claim 50 is representative of the subject matter on
appeal and reads as follows:
50. An aqueous soluble drain sanitizing article for
dispensing a chemical sanitizing agent for sanitizing running
and standing drainage, said drain sanitizing article
comprising an aqueous soluble sanitazing bar, said bar
comprising (a) an effective amount of an antimicrobial
sanitizer, and (b) an effective amount of hardener, said
sanitizing bar having an interior wall, said interior wall
defining an opening in said drain sanitizing article wherein
when said drain sanitizing article is placed into a drain,
said drain sanitizing article allows for the passage of
drainage over the article and through said drain sanitizing
article opening into the drain.
As evidence of obviousness, the examiner relies on the
following prior art:
Mortimer et al. (Mortimer) 656,992 Aug. 28,
1900
Rising 1,083,561 Jan. 6,
1914
Watanabe et al. (Watanabe) 4,218,432 Aug. 19,
1980
Kramer et al. (Kramer) 4,847,089 Jul. 11,
1989
Globus 4,954,316 Sep. 4,
1990
Wiedrich et al. (Wiedrich) 5,106,559 Apr. 21,
1992
Bull 5,310,549 May
10, 1994
(filed Aug. 31, 1989)
Claims 50 through 65 stand rejected under 35 U.S.C. §
112, second paragraph, as being indefinite for failing to
Appeal No. 1996-2873
Application No. 08/209,194
The examiner has not repeated in the Answer the rejection1
of claims 50, 51 and 66 under 35 U.S.C. § 102(b) set forth in
the final Office action. Accordingly, this § 102(b) rejection
is presumed to have been withdrawn. Ex parte Emm, 118 USPQ
180 (Bd. App. 1957)
3
particularly point out and distinctly claim the subject matter
which applicants regard as their invention. Claims 50 through
60 and 67 stand rejected under 35 U.S.C. § 112, first
paragraph, as lacking an enabling disclosure for the subject
matter presently claimed. Claims 50 through 65 and 67 through
80 stand rejected under 35 U.S.C. § 103 as unpatentable over
the combined disclosures of Mortimer, Rising, Watanabe,
Kramer, Wiedrich, Bull and Globus.
We reverse each of the foregoing rejections.1
We reverse the examiner’s decision rejecting claims 50
through 65 under 35 U.S.C. § 112, second paragraph, for those
reasons expressed at pages 10 through 13 of the Brief.
We also reverse the examiner’s decision rejecting claims
50 through 60 and 67 under 35 U.S.C. § 112, first paragraph,
for those reasons expressed at pages 8 and 9 of the Brief. We
only add that our reviewing court has held that
it is not necessary that a patent applicant test
all the embodiments of his invention, In re
Appeal No. 1996-2873
Application No. 08/209,194
Amgen Inc. v. Chugai Pharms. Co., 927 F.2d 1200, 1213,2
18 USPQ2d 1016, 1027 (Fed. Cir. 1991).
4
Angstadt, 537 F.2d 498, 502, 190 USPQ 214, 218
(CCPA 1976); what is necessary is that he
provide a disclosure sufficient to enable one
skilled in the art to carry out the invention
commensurate with the scope of his claims.2
The examiner, however, has not demonstrated that the
specification disclosure (including the working examples
therein) referred by appellants at pages 8 and 9 of the Brief
would not enable one of ordinary skill in the art to make and
use the claimed aqueous soluble drain sanitizing article
having an “effective amount of hardener”. In re Wands, 858
F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988); In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA
1982).
Further, we reverse the examiner’s decision rejecting
claims 50 through 65 and 67 through 80 under 35 U.S.C. § 103
as unpatentable over the combined disclosures of Mortimer,
Rising, Watanabe, Kramer, Wiedrich, Bull and Globus for
essentially those reasons expressed at pages 16 through 19 of
the Brief. We add the following primarily for emphasis.
Appeal No. 1996-2873
Application No. 08/209,194
5
According to page 8, lines 17-22, of the specification,
the claimed shape of an aqueous soluble drain sanitizing
article is not only useful for accommodating the funneling
nature of drains, but also useful for providing “maximum
contact between the chemical sanitizer ... and drain run-
off...” Notwithstanding silence regarding the claimed shape
of an aqueous soluble drain sanitizing article in the
references relied upon by the examiner, the examiner states
(Answer, page 5) that
since the donut shape of the instant invention is
one of general knowledged [sic], and since the
primary reference [Mortimer] permits [the use] of
any shape,...it would be obvious to attain the shape
of the instant invention, since any shape would
include the known donut shape.
However, the fatal flaw in the examiner’s statement is that
there is no suggestion or motivation to shape the aqueous
soluble drain sanitizing article of the type described in
Mortimer into the so-called “donut shape”. The examiner
simply has not proffered any evidence that it is desirable to
use the “donut shape” in the sanitizing art. Nor has the
examiner demonstrated that the “donut shape” is known to be
used in the sanitizing art. On this record, for the reasons
Appeal No. 1996-2873
Application No. 08/209,194
6
indicated supra, we are constrained to reverse the examiner’s
decision rejecting all of the appealed claims under 35 U.S.C.
§ 103 over the applied prior art.
In view of the foregoing, the decision of the examiner is
reversed.
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Appeal No. 1996-2873
Application No. 08/209,194
7
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
lp
Appeal No. 1996-2873
Application No. 08/209,194
8
JOHN J. GRESENS
MERCHANT, GOULD, SMITH, EDELL,
WELTER & SCHMIDT
3100 NORTHWEST CENTER
MINNEAPOLIS, MN 55402
Leticia
Appeal No. 1996-2873
Application No. 08/209,194
APJ PAK
APJ KRATZ
APJ GARRIS
DECISION: REVESED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: April 24, 2001
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT