Ex parte Romell

Board of Patent Appeals and Interferences

Jan 31, 2000

08140142 (B.P.A.I. Jan. 31, 2000)

Application for patent filed November 3, 1993. 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not written for publication in a law journal and (2) is not binding
precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAG ROMELL
____________
Appeal No. 1996-2802
Application No. 08/140,1421
____________
ON BRIEF
____________
Before ABRAMS, NASE, and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1, 3-18 and 20-22. At that point in
the prosecution, claims 2 and 19 had been canceled. Claim 12
Appeal No. 1996-2802 Page 2
Application No. 08/140,142
subsequently was canceled in an amendment after the final
rejection, leaving before us on appeal claims 1, 3-11, 13-18
and 20-22. No claims have been allowed.
The appellant's invention is directed to a method of
making compressed wood fuel pellets (claims 1, 3-11 and 13), a
machine for making compressed wood fuel pellets (claims 14-17),
and a compressed fuel pellet (claims 18 and 20-22). The claims
on appeal have been reproduced in an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
McCan 959,870 May 31,
1910
Pfleumer 1,542,576 Jun. 16, 1925
Heritage 2,666,463 Jan. 19,
1954
Matthews 2,876,811 Mar. 10,
1959
Gibbons 3,084,620 Apr. 9,
1963
Turner 3,132,674 May 12,
1964
Bonlie 3,527,580 Sep. 8,
1970
THE REJECTIONS
Appeal No. 1996-2802 Page 3
Application No. 08/140,142
The following rejections stand under 35 U.S.C. § 103:
(1) Claims 1, 3-11, 13, 18, 20 and 21 on the basis of
Matthews combined with McCan in view of Turner, Pfleumer and
Heritage.
(2) Claims 14-17 and 22 on the basis of Matthews combined
with McCan in view of Gibbons, Bonlie and Pfleumer.
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
appellant regarding the rejections, we make reference to the
Examiner’s Answer (Paper No. 17) and the Appellant’s Brief
(Paper No. 16).
OPINION
The initial burden of establishing a basis for denying
patentability to a claimed invention rests upon the examiner.
See In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-
88 (Fed. Cir. 1984). The test for obviousness is what the
combined teachings of the prior art would have suggested to one
of ordinary skill in the art. See, for example, In re Keller,
Appeal No. 1996-2802 Page 4
Application No. 08/140,142
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In
establishing a prima facie case of obviousness, it is incumbent
upon the examiner to provide a reason why one of ordinary skill
in the art would have been led to modify a prior art reference
or to combine reference teachings to arrive at the claimed
invention. See Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat.
App. & Int. 1985). To this end, the requisite motivation must
stem from some teaching, suggestion or inference in the prior
art as a whole or from the knowledge generally available to one
of ordinary skill in the art and not from the appellant's
disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988).
As manifested in independent claim 1, the inventive
method is directed to making compressed fuel pellets and
comprises the steps of severing a wafer off an elongate piece
of wood against the grain, splitting out a portion of the wafer
along the grain while maintaining the portion within the wafer,
confining the portion in a direction generally perpendicular to
the grain, and compressing the confined portion along the
Appeal No. 1996-2802 Page 5
Application No. 08/140,142
grain. The examiner has rejected this claim as being
unpatentable over the combined teachings of five references.
The primary reference is Matthews, which discloses a machine
for manufacturing wafers for use in constructing molded wood
fiber board. Matthews teaches forming these wafers from the
edge of a length of an elongate piece of wood by a series of
lateral first cuts against the grain of the wood followed by a
lengthwise cut along the grain. While this aspect of the
Matthews invention can be read on the first (severing) step of
claim 1, the reference does not disclose or teach any of the
other three steps of the claimed method. In addition, Matthews
is not directed to a method for making compressed wood fuel
pellets and does not suggest that the pellets produced by the
disclosed method would be usable for any purpose other than the
manufacture of molded wood fiber board.
McCan is directed to the manufacture of fuel briquets
“from wood shavings and other loose combustible woody refuse”
(page 1, lines 8-10), and teaches placing this material in a
tubular mold and compressing it by means of a plunger until the
finished product is formed (page 1, line 54 et seq.). No
further details of combining and compressing the material are
Appeal No. 1996-2802 Page 6
Application No. 08/140,142
provided. The material contemplated for use in the McCan
method does not include wood wafers. Therefore, while the
above-noted teaching might be considered to be broadly
applicable to the compressing step of the appellant’s claim 1,
the reference clearly has no relevance to the remaining steps
recited in the claim.
Turner discloses a method for preparing wooden shafts for
bending into shovel handles or the like, which includes the
step of axially compressing an elongated shaft that previously
has been softened by heat treatment. Although not explicitly
established in the reference, it would appear that the axial
compression is applied along the grain of the wood. However,
while Turner confines and compresses the wood in the manner
recited in the third and fourth steps of claim 1, from our
perspective any relevance to the method recited in the claims
can be established only by taking this Turner teaching out of
context.
Pfleumer is directed to the making of solid wood items
such as buttons, and Heritage to a densified wooden
construction sheet. Both are cited for their teachings of
compressing wood to particular levels so that the resultant
Appeal No. 1996-2802 Page 7
Application No. 08/140,142
product does not expand after it is finished. Be that as it
may, it is our view that neither of these references provides
a teaching that can be read upon, or is relevant to, any of the
steps in claim 1.
The examiner’s rationale for combining the references
(Answer, page 4) lacks any cogent explanation of why one of
ordinary skill in the art would have been motivated to modify
the Matthews method for making wafers for use in pressed
construction board or, for that matter, the McCan method for
making wooden fuel pellets of wood shavings, into the method
recited in the appellant’s claim 1. It is axiomatic that the
mere fact that the prior art structure could be modified does
not make such a modification obvious unless the prior art
suggests the desirability of doing so. See In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). From our
perspective, the examiner has assembled a collection of
isolated teachings that can be combined in the manner proposed
only by virtue of the hindsight acquired by one who first
viewed the appellant’s disclosure. As our reviewing court
Appeal No. 1996-2802 Page 8
Application No. 08/140,142
advised in In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992):
It is impermissible to use the claimed
invention as an instruction manual or
"template" to piece together the teachings
of the prior art so that the claimed
invention is rendered obvious. This court
has previously stated that "[o]ne cannot use
hindsight reconstruction to pick and choose
among isolated disclosures in the prior art
to deprecate the claimed invention"
(citations omitted).
Moreover, even considering the teachings of the five references
together in the most favorable light, it is our opinion that
they fail to suggest the particular relationship between the
orientation of the grain of the wood and the operations
performed in the steps of the claim, which is an important
aspect of the appellant’s invention.
The five references cited against claim 1 fail to
establish a prima facie case of obviousness with regard to the
subject matter recited in the claim. Therefore, we will not
sustain the rejection of independent claim 1 or, it follows, of
dependent claims 3-11 and 13.
The examiner has not even mentioned independent claim 18
in the explanation of the rejection found in the Answer, much
Appeal No. 1996-2802 Page 9
Application No. 08/140,142
less explained why a compressed wood fuel pellet having the
characteristics required by this claim would have been obvious
in view of the teachings of the five references discussed
above. Our own analysis has convinced us that the combined
teachings of the references fail to establish a prima facie
case of obviousness with regard to the wood pellet defined in
claim 18. We therefore find ourselves in agreement with the
appellant that the rejection of independent claim 18 and
dependent claims 20 and 21 should not be sustained.
For essentially the same reasons as were explained above
with regard to claim 1, we also will not sustain the rejection
of independent claim 14 and dependent claims 15-17 and 22,
which stand rejected on the basis of the combined teachings of
Matthews, McCan, Gibbons, Bonlie and Pfleumer.
Claim 14 is directed to a machine for making compressed
wood fuel pellets which comprises the elements necessary to
perform all of the steps set forth in claim 1. These include a
splitting edge for splitting a portion out of a wood wafer, a
cage surface rearwardly of the splitting edge for confining the
split portion in a direction generally perpendicular to the
grain, and a compression hammer and opposed anvil to compress
Appeal No. 1996-2802 Page 10
Application No. 08/140,142
the split portion along the grain. The teachings of Matthews,
McCan and Pfleumer have been described above. Gibbons is
directed to a crop wafering machine in which chopped fibers are
compressed into feed pellets for livestock by a screw acting in
concert with the friction encountered by the fibers as they are
being pushed through a cylindrical tube. Bonlie discloses a
rotary press comprising a pair of pocketed wheels for
compressing granulated charcoal into fuel pellets. The
reasoning of the examiner is expressed as “[h]aving the prior
art before him it would have been obvious to the artisan to
combine . . .” the references into a machine that meets the
terms of the claim. What has not been provided is a concise
explanation of the reasons why one of ordinary skill in the art
would have been motivated to modify the Matthews device by the
teachings in each of the other references so as to arrive at
the invention recited in claim 14. As with the rejection of
claim 1, it is our view that the only suggestion to combine the
references in the manner intended by the examiner resides in
hindsight, and therefore a prima facie case of obviousness has
not been established.
Appeal No. 1996-2802 Page 11
Application No. 08/140,142
SUMMARY
Neither of the rejections is sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
NEA/jlb
Appeal No. 1996-2802 Page 12
Application No. 08/140,142
GEORGE M. COOPER
JONES, TULLAR & COOPER
P.O. BOX 2266 EADS STATION
ARLINGTON , VA 22202