Ex parte Reichenecker

Board of Patent Appeals and Interferences

Jun 16, 1999

08128279 (B.P.A.I. Jun. 16, 1999)

Application for patent filed September 29, 1993. 1
According to appellants, the application is a continuation of
Application No. 07/615,170, filed November 19, 1990.
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journal and (2) is not binding precedent of the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. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HANS REICHENECKER
____________
Appeal No. 96-0114
Application No. 08/128,2791
____________
HEARD: June 8, 1999
____________
Before KIMLIN, PAK, and KRATZ, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0114
Application No. 08/128,279
2
This is a decision on an appeal from the examiner’s final
rejection of claims 12 and 15 through 17. Claims 1 through 11
stand withdrawn from consideration by the examiner as being
directed to a nonelected invention under 37 CFR § 1.142(b).
Claim 12 is representative of the subject matter on
appeal and reads as follows:
12. Starch cushioning particles formed by: feeding
starch granules into a drum; adding a nucleating agent having
a particle size of approximately 40µ in a quantity of from 0.1
to 0.2% of the weight of the starch granules; drum-coating the
starch granules with the nucleating agent in the drum such
that the nucleating agent is finely distributed onto the
surfaces of the starch granules; feeding the drum-coated
starch granules to an extruder and converting the drum-coated
starch granules into a viscous-liquid state; applying heat to
the extruder to generate in the viscous-liquid starch bubble
nuclei from the decomposition of the nucleating agent; gassing
the viscous-liquid starch with a propellant gas such that the
starch and nucleating agent mixture is supersaturated with the
propellant gas to generate a composition of molten starch foam
by expanding the bubble nuclei; cutting the starch foam upon
leaving the extruder; and providing for expansion of the
starch foam to form the starch particles.
The examiner has relied upon the following reference in
support of his rejection:
Osipow et al. (Osipow) 4,328,319 May 4,
1982
Claims 12 and 15 through 17 stand rejected under 35
U.S.C.
Appeal No. 96-0114
Application No. 08/128,279
In the Answer, the examiner inadvertently did not2
repeat the rejection of claims 12 and 15 through 17 under 35
U.S.C.
§ 112, first paragraph. However, as is apparent from page 2
of the final Office action and appellant’s Brief, claims 12
and 15 through 17 stand rejected under 35 U.S.C. § 112, first
paragraph, "for the reasons set forth in the objection to the
specification."
3
§ 112, first paragraph, as the specification fails to provide
an enabling disclosure for the claimed invention.2
We reverse.
According to In re Vaeck, 947 F.2d 488, 496 n.23, 20
USPQ2d 1438, 1444-1445, n.23 (Fed. Cir. 1991):
The first paragraph of 112 requires nothing
more than objective enablement. In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367,
369 (CCPA 1971). How such a teaching is
set forth, either by the use of
illustrative examples or by broad
terminology, is irrelevant. Id.
Where, as here, appellant’s specification contains a
description of the manner of making and using the invention
corresponding in scope with those of the claims, compliance
with the enablement requirement of the first paragraph of
Section 112 is presumed. Marzocchi, 439 F.2d at 223-224, 169
USPQ at 369-370. It is the examiner’s burden to present
adequate evidence for doubting the objective truth of
Appeal No. 96-0114
Application No. 08/128,279
4
appellant’s statements in the specification. Id. Mere
conclusory remarks by the examiner regarding a propellant gas
are not sufficient to satisfy his or her burden. Note that
there is nothing inconsistent about feeding a propellant gas
("a liquefied gas with a vapor pressure greater than
atmospheric pressure at 105 deg. F") under adequate pressure
to permit its introduction into an extruder containing a
viscous liquid starch composition and causing the conversion
of a propellant gas (liquid form) to a gaseous form in an
extruder due to temperature and pressure conditions therein.
See Brief, page 7. The very reference the examiner relied
upon to justify his
§ 112 rejection also supports appellant’s conclusion that one
of ordinary skill in the art would know how to select
"suitable propellants" for making cushioning particles without
undue experimentation. The examiner’s doubt as to why the
specification is inadequate is simply unsupported by any
evidence. Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
Accordingly, we reverse the examiner’s decision rejecting
Appeal No. 96-0114
Application No. 08/128,279
5
claims 12 and 15 through 17 under 35 U.S.C. § 112, first
paragraph.
As a final point, we note appellant’s statement regarding
the criticality of distributing a nucleating agent uniformly
and finely "onto the surfaces of the starch granules". See
Brief, page 6, together with specification, page 9.
Upon return of this application, the examiner should
determine whether failure to recite a critical feature, i.e.,
uniform distribution of a nucleating agent, in the appealed
claims violates the enablement requirement of the first
paragraph of Section 112. See In Mayhew, 527 F.2d 1229, 188
USPQ 356 (CCPA 1976).
No time period any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).
Appeal No. 96-0114
Application No. 08/128,279
6
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
CKP:lp
Appeal No. 96-0114
Application No. 08/128,279
7
FELIX J. D'AMBROSIO
P.O. BOX 2266 EADS STATION
ARLINGTON, VA 22202
Leticia
Appeal No. 96-0114
Application No. 08/128,279
APJ PAK
APJ KIMLIN
APJ KRATZ
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): _____
Prepared: January 31, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT