Ex Parte Perriello

Board of Patent Appeals and Interferences

Dec 31, 2009

10144079 (B.P.A.I. Dec. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FELIX ANTHONY PERRIELLO
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Appeal 2009-004930
Application 10/144,079
Technology Center 1700
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Decided: December 31, 2009
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Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1-11, 23-30, 66-73, 75-77, 79, and 80 in
the Office Action mailed August 31, 2007. 35 U.S.C. §§ 6 and 134(a)
(2002); 37 C.F.R. § 41.31(a) (2008).
We affirm the decision of the Primary Examiner.
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Claims 1 and 79 illustrate Appellant’s invention of a process for
producing microbiologically accelerated humus and a microbiologically
accelerated humus product, respectively, and are representative of the claims
on appeal:
1. A process for producing microbiologically accelerated humus
comprising:
introducing an alkane and an oxygen-containing gas into organic
matter contained in a vessel to produce the microbiologically accelerated
humus, wherein the organic matter consists essentially of compost material,
plant material and/or cellulosic material, and
recovering the microbiologically accelerated humus.
79. A microbiologically accelerated humus comprising alkane-treated
dewatered organic matter.
The Examiner relies upon the evidence in these references (Ans. 2):
Leavitt 3,474,001 Oct. 21, 1969
Knowlton 4,385,121 May 24, 1983
Northrop 5,755,852 May 26, 1998
Appellant’s request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1-11, 23-30, 66-73,
75-77, 79, and 80 over Northrop in view of Leavitt and further in view of
Knowlton. Br. 3; Ans. 3.
Appellant argues all of the claims as a group and separately further
argues claim 79. Br., e.g., 3 and 5. Thus, we decide this appeal based on
claims 1 and 79. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Opinion
We considered the totality of the record in light of Appellant’s
arguments with respect to claims 1 and 79 and the ground of rejection
advanced on Appeal. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
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2006) (“‘On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.’”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)); In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is
submitted by the applicant in response, patentability is determined on the
totality of the record, by a preponderance of evidence with due consideration
to persuasiveness of argument.”) (citing, inter alia, In re Spada, 911 F.2d
705, 707 n.3 (Fed. Cir. 1990)).
We are of the opinion Appellant’s arguments do not establish that the
evidence in the totality of the record weighs in favor of the nonobviousness
of the claimed process for producing microbiologically accelerated humus
encompassed by claim 1 and the claimed microbiologically accelerated
humus product encompassed by claim 79. In this respect, we are in
agreement with the Examiner’s analysis of the evidence in the references
and the legal conclusions stated in the Answer, to which we add the
following for emphasis with respect to Appellant’s arguments.
Process Claim 1
Appellant submits that one of ordinary skill in the art of treating
animal waste would not combine Northrop’s process for treating such waste
with Knowlton’s process of disposing of hydrocarbon waste. Br. 4. We
disagree. As the Examiner correctly points out, Northrop discloses a process
which converts animal excrement waste to humus using microorganisms and
Knowlton teaches that aliphatic hydrocarbons introduced into the soil will be
oxidized to humus by soil microorganism. Ans. 3-4 and 7-8. Thus, we
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agree with the Examiner that one of ordinary skill in this art would have
combined the teachings of Northrop, Leavitt, and Knowlton, and thence
would have been led to add an alkane to the animal excrement waste in
Northrop’s process in the reasonable expectation of producing humus with
Northrop’s microorganisms. See, e.g., KSR Int'l. Co. v. Teleflex Inc., 550
U.S. 398, 415-16 (2007) (“The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.”); Kahn, 441 F.3d at 985-88; In re Sovish, 769 F.2d 738,
742-43 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary
skill in the art); In re Keller, 642 F.2d 413, 425 (CCPA 1981) ((“The test for
obviousness is . . . what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”); see also Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) (“the expectation of
success need only be reasonable, not absolute”); In re O’Farrell, 853 F.2d
894, 903-04 (Fed. Cir. 1988) (“For obviousness under
§ 103, all that is required is a reasonable expectation of success.”).
We further cannot subscribe to Appellant’s position that claim 1
excludes Northrop’s animal waste from the claimed process because the
language “the organic matter consists essentially of compost material, plant
material and/or cellulosic material” in claim 1 “restricts the claims to the
recited compost, plant and cellulosic materials, as well as any additional
materials that would not affect the basic and novel characteristics of the
recited invention.” Br. 4. Appellant argues that any plant or cellulosic
material fed to an animal “is substantially changed once it is digested by an
animal,” and thus, “animal wasted excrement includes additional ingredients
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that would affect the basic and novel characteristics of the presently claimed
materials, and is excluded from the claimed invention.” Br. 4. Appellant
further points out that Leavitt and Knowlton do not teach or suggest treating
the organic matter specified in claim 1. Br. 4-5. The Examiner contends
Appellant has not shown that other ingredients in animal waste affects the
basic and novel characteristics of the claimed process. Ans. 9-10.
We agree with the Examiner. The claim term “consisting essentially
of” is used in claim construction to indicate, for example, that “the invention
necessarily includes the listed ingredients and is open to unlisted ingredients
that do not materially affect the basic and novel properties of the invention.”
PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998).
Thus, the interpretation of this term in this instance requires a determination
of whether the animal excrement waste used by Northrop would materially
affect the basic and novel characteristics of the claimed process. See In re
Herz, 537 F.2d 549, 551-52 (CCPA 1976) (explaining Ex parte Davis, 80
USPQ 448 (Pat. Off. Bd. App. 1948)). In arriving at this determination, the
written description in Appellant’s Specification must be considered. Herz,
537 F.2d at 551-52 (“[I]t is necessary and proper to determine whether [the]
specification reasonably supports a construction” that would exclude or
include particular ingredients.); see also PPG Indus., 156 F.3d at 1354-57
(Patentees “could have defined the scope of the phrase ‘consisting
essentially of’ for purposes of its patent by making clear in its specification
what it regarded as constituting a material change in the basic and novel
characteristics of the invention. The question for our decision is whether
PPG did so.”).
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We find no disclosure in the Specification which defines the term
“consists essentially of” in claim 1 with respect to “organic matter.” Indeed,
Appellant broadly discloses that “organic matter can comprise numerous
compounds” such as, among other things, “livestock . . . waste products” as
well as straw, grain, peanut hulls. Spec. 5:11 to 6:12.
Thus, on this record, we interpret the subject language of claim 1 to
open the claim to include any process in which the “organic matter” includes
at least some amount of compost material, plant material and/or cellulosic
material and can further include any additional material that can be treated
with microorganisms to yield humus.
Accordingly, the subject claim language of claim 1 does not exclude
the animal excrement waste treated by Northrop’s process as Appellant
contends. Indeed, we find Northrop discloses that the animal excrement
waste is from an “animal confining barn, penning area or the like.” Thus, the
animal excrement waste includes materials from the “animal feed supply”
and “bedding” which are not ingested by the animal but are placed on or fall
to the floor of the animal confining barn and penning areas. The feed
supply and bedding material are thus mixed with animal excrement waste,
forming the “organic matter” treated by Northrop’s process. Northup, e.g.,
col. 2., ll. 61-63, col. 5, ll. 41-53, col. 7, ll. 10-11, col. 8, ll. 1-6, and col. 10,
l. 60 to col. 11, l. 5. In this respect, we notice that one of ordinary skill in
this art would have recognized that common animal “bedding” material,
such as straw and peanut hulls, as well as common “animal feed supply”
material, such as grain, are “plant material and/or cellulosic material.”
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Product Claim 79
Appellant submits that none of the applied references teaches or
suggests the claimed “microbiologically accelerated humus comprising
alkane-treated dewatered organic matter” because the references do not teach
or suggest the process steps of using an alkane and dewatering the material
to obtain microbiologically accelerated humus as specified in the claim
language. Br. 5. We disagree.
We interpret claim 79, couched in product-by-process format, as
encompassing any humus product which is identical or substantially
identical to the humus product characterized as comprising at least any
“organic matter” which has been processed by at least the steps of “alkane-
treated” and “dewatered” specified in the claim. See, e.g., In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985), and cases cited therein (“even though
product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself”). On this
record, as the Examiner explains, the modification of Northrop’s process of
converting animal excrement waste with microorganisms to humus and then
drying the humus, by including an alkane with the animal excrement waste,
as suggested by Leavitt and Knowlton, would have reasonably been
expected by one of ordinary skill in this art to result in a humus product.
Ans. 3-5 and 10. We agree with the Examiner that such a humus product
reasonably appears to fall within claim 79. See, e.g., Spada, 911 F.2d at
708-09 (“The Board held that the compositions claimed by Spada “appear to
be identical” to those described by Smith. While Spada criticizes the usage
of the word “appear,” we think that it was reasonable for the PTO to infer
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that the polymerization by both Smith and Spada of identical monomers,
employing the same or similar polymerization techniques, would produce
polymers having the identical composition.”); see also, e.g., KSR, 550 U.S.
at 415-16; Pfizer, 480 F.3d at 1364; Kahn, 441 F.3d at 985-88; O’Farrell,
853 F.2d at 903-04; Sovish, 769 F.2d at 742-43; Keller, 642 F.2d at 425.
Thus, the burden has shifted to Appellant to patentably distinguish the
claimed humus products over the combined teachings of the references. On
this record, Appellant has not carried this burden. See, e.g., Spada,
911 F.2d at 708 (“[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”); In re Best, 562 F.2d 1252, 1254-56
(CCPA 1977) (When “the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”).
Conclusion
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Northrop, Leavitt, and Knowlton with Appellant’s
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1-11, 23-30, 66-73,
75-77, 79, and 80 would have been obvious as a matter of law under
35 U.S.C. § 103(a).
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The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

kmm

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