Ex parte PIAZZA et al.

Board of Patent Appeals and Interferences

Apr 27, 1998

07855805 (B.P.A.I. Apr. 27, 1998)

Application for patent filed March 23, 1992.1
- 1 -
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(2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GEORGE J. PIAZZA and MICHAEL J. HAAS
____________
Appeal No. 95-5155
Application 07/855,8051
____________
ON BRIEF
____________
Before WILLIAM F. SMITH, Administrative Patent Judge,
McKELVEY, Senior Administrative Patent Judge, and GRON,
Administrative Patent Judge.
GRON, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
This is an appeal from an examiner’s final rejection of
Claims 1-8, all claims pending in this application. Claims 1-
Appeal No. 95-5155
Application 07/855,805
- 2 -
8 stand rejected under 35 U.S.C. § 103 as unpatentable in view
of the combined teachings of Lee et al. (Lee), “Oat (Avena
sativa) Caryopses as a Natural Lipase Bioreactor,” JAOCS, Vol.
67, no. 11, pp. 761-765 (November 1990), and Balsam, U.S.
3,713,980, patented January 30, 1973.
On consideration of the record, including the Brief on
Appeal, Examiner’s Answer, the applied prior art, and Hammond
et al. (Hammond), U.S. 5,089,403, patented February 18, 1992,
the latter to aid our understanding of Lee’s teaching and its
relationship to the subject matter of the claims on appeal,
it is
ORDERED that the examiner’s decision rejecting
Claims 1-8 is reversed.
Balsam neither (1) falls within the same field of
endeavor as the subject matter claimed, nor (2) is reasonably
pertinent to the particular problem with which applicants are
concerned. Applicants’ invention is directed to a rapid
process for hydrolyzing oleaginous materials into fatty acids
and glycerol using lipase, in this case immobilized lipase in
the form of comminuted lipase-containing seeds. Balsam is
concerned with extracting therapeutic peruvoside from the
Appeal No. 95-5155
Application 07/855,805
- 3 -
fruit or seeds of Apocynacea Thevetia peruviana (Balsam,
Abstract). We find Balsam’s teaching non-analogous to the
invention here claimed. In re Wood, 599 F.2d 1032, 1036, 202
USPQ 171, 174 (CCPA 1979).
Moreover, even assuming Balsam is analogous prior art, we
are at a loss to understand how Balsam’s teaching to comminute
and ferment Apocynacea Thevetia peruviana seeds to facilitate
extraction of therapeutic peruvoside would have led persons
having ordinary skill in the art to do what Lee indicates
(page 761, abstract) and its counterpart Hammond expressly
states (col. 3, l. 44-50) should not be done, i.e., comminute
lipase-containing seeds used to hydrolyze oleaginous
materials.
REVERSED
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
)
FRED E. McKELVEY ) BOARD OF PATENT
Senior Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Appeal No. 95-5155
Application 07/855,805
- 4 -
TEDDY S. GRON )
Administrative Patent Judge )
Appeal No. 95-5155
Application 07/855,805
- 5 -
Joseph A. Lipovsky, Patent Advisor
USDA-ARS-OTT-National Center for
Agricultural Utilization Research
1815 N. University Street
Peoria, Illinois 61604