Ex parte Ray

Board of Patent Appeals and Interferences

Oct 28, 1999

08364541 (B.P.A.I. Oct. 28, 1999)

Application for patent filed December 27, 1994. 1
According to appellant, this application is a continuation of
Application No. 08/018,014, filed February 16, 1993.
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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journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte SAM W. RAY
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Appeal No. 1997-0820
Application No. 08/364,5411
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ON BRIEF
________________
Before KIMLIN, PAK and WALTZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-5
and 10-13. Claims 6-9, the other claims remaining in the
Appeal No. 1997-0820
Application No. 08/364,541
The pages of the principal and reply briefs have not2
been numbered by appellant.
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present application, stand withdrawn from consideration.
Claim 1 is illustrative:
1. A method of densifying expanded thermoplastic
material without injecting external heat comprising the steps
of:
(a) confining particles of expanded thermoplastic
material in a container; and
(b) reducing the volume of said container and
simultaneously uniformly agitating said particles until
substantially all said particles form a single substantially
unitary mass of softened material within said container.
The examiner has not cited prior art in his rejection of
the appealed claims.
According to appellant, the present invention relates to
"densifying and reusing expanded or foamed thermoplastic
wastes and the like and reforming them into usable end
products without externally-injected heat" (page 5 of
principal brief). Appellant's specification relates that2
"[b]y simultaneously agitating and compressing the material,
the energy produced by frictional forces is contained within
the mass of material itself, thus producing a liquid mass with
minimum consumption of energy" (page 2).
Appeal No. 1997-0820
Application No. 08/364,541
The examiner has withdrawn the rejection under3
35 U.S.C. § 112, second paragraph (see page 2 of Answer).
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Appealed claims 1-5 and 10-13 stand rejected under
35 U.S.C. § 112, first paragraph.3
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner's
rejection.
It is the examiner's position that the claim language
"without injecting external heat" lacks descriptive support in
the original specification. However, while the examiner is
correct that the criticized claim language is not described in
ipsis verbis in the original specification, such is not
required by § 112, first paragraph. In re Herschler, 591 F.2d
693, 701, 200 USPQ 711, 717 (CCPA 1979); In re Smith, 481 F.2d
910, 914, 178 USPQ 620, 624 (CCPA 1973). The proper inquiry
is whether the original specification reasonably conveys to
one of ordinary skill in the art that the inventor had in his
or her possession, as of the filing date of the application,
the later added limitation. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563,
Appeal No. 1997-0820
Application No. 08/364,541
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19 USPQ2d 1111, 1116 (Fed. Cir. 1991). To make this
evaluation it must be determined whether the concept embodied
by the new language is present in the original specification.
In re Anderson, 471 F.2d 1237, 1244, 176 USPQ 331, 336 (CCPA
1973).
Based on the facts of the present case, our reading of
the original specification brings us into agreement with
appellant that the original specification, considered in its
entirety as a whole, reasonably conveys to one of ordinary
skill in the art the concept that the method of densifying
expanded thermoplastic material is performed by agitating
confined particles of thermoplastic material without the
injection of external heat. In our view, the original
specification conveys that the whole point of the present
invention is to avoid the costly prior art process of
utilizing external heat which consumes tremendous amounts of
energy and is, therefore, not commercially viable (page 2 of
specification, lines 17-22).
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
Appeal No. 1997-0820
Application No. 08/364,541
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EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
ECK:clm
Appeal No. 1997-0820
Application No. 08/364,541
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Jack A. Kanz
502 So. Cottonwood Dr.
Richardson, TX 75080