Ex Parte Schmidt

Board of Patent Appeals and Interferences

Dec 18, 2006

09385405 (B.P.A.I. Dec. 18, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM J. SCHMIDT
____________

Appeal 2005-2193
Application 09/385,405
Technology Center 1700
____________

Decided: December 18, 2006
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Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
On August 30, 2006, Appellant filed a Request for Rehearing of the
Decision of July 13, 2006. In that Decision, the panel sustained the
rejections under 35 U.S.C. § 102(b) and under 35 U.S.C. § 103(a) based, in
major part, upon Schmidt, Appellant’s prior patent. Appellant states that the
following points were misapprehended or overlooked in the Decision:
1. The Schmidt reference treats the same or substantially the same
starting materials as Appellant (Decision 4).
Appeal 2005-2193
Application 09/385,405

2. The process of Schmidt treats “first components” as claimed
(Decision 4).
3. The two-step filtration process including use of a tangential flow filter
described in the Schmidt Declaration is not commensurate-in-scope
with the subject matter sought to be patented by claim 71 (Decision
7).
As explained below, Appellant has not persuaded us of any reversible
error in our Decision.
Appellant focuses on claim 71, the claim we selected to represent the
issues on appeal for the rejections over Schmidt. As pointed out by
Appellant, claim 71 is directed to a method of treating a waste material
containing gelatin (Request 3). The process involves phase separation
wherein some components are present in one layer and other components
tend to migrate to the other layer. The layer containing gelatin and a “first
component” is treated to remove the “first component.” According to the
Specification, the layer containing gelatin is an aqueous layer. Claim 71
designates this layer the “solvent based layer.” According to claim 71, the
“first component” is one “which can not effectively be separated from the
first liquid into a non-solvent based layer.”
The true issue underlying Appellant’s first two points of contention
listed above is one of claim interpretation: Does “first component” as
claimed encompass the trace contaminants Schmidt discloses as present in
the aqueous layer?
The Decision states that “[a]ny component that remains in the lower
aqueous layer (solvent layer) after separation facilitated by sight glass is a
‘first component’ as claimed.” (Decision 5). In other words, the trace
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Application 09/385,405

contaminants of Schmidt are “first components” within the meaning of claim
71. During examination, "claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004). In the
present case, it is reasonable to read “first component” as including the trace
contaminants Schmidt describes as present in the aqueous layer. Appellant’s
Specification provides no definition or express disclaimer excluding such
trace contaminants. Absent claim language carrying a narrow meaning, we
only limit the claim based on the specification when those sources expressly
disclaim the broader definition. In re Bigio, 381 F.3d 1320, 1324-25,
72 USPQ2d 1209, 1210-11 (Fed. Cir. 2004). We also note that it is
reasonable to interpret claim 71 more narrowly than claim 72, a claim
dependent on claim 71. “[T]he presence of a dependent claim that adds a
particular limitation gives rise to a presumption that the limitation
in question is not present in the independent claim.” Phillips v. AWH Corp.,
415 F.3d 1303, 1315, 75 USPQ2d 1321, 1327 (Fed. Cir. 2005)(en banc).
While Appellant would have us limit “first components” as recited in claim
71 to those having an affinity for the solvent based layer (Request 3), this
affinity limitation is contained in claim 72 and, therefore, it is reasonable to
conclude that claim 71 is not so limited. (See also Decision 5.)
Appellant has not persuaded us of a reversible error in the conclusion
articulated in the Decision that Schmidt describes treating “first
components” as claimed. Moreover, we are not persuaded that the starting
materials of Schmidt are different from those treated in the claimed process.
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Application 09/385,405

Schmidt treats waste resulting from the same industrial encapsulation
processes as Appellant (Compare Schmidt, col. 1, ll. 11-22 to Specification
1:17 to 2:5) containing the same types of contaminants (Compare Schmidt,
col. 1, ll. 41-47 and col. 3, ll. 13-25 to Specification 2:19 to 3:3 and 7:1-12).
Appellant further argues that the Schmidt Declaration shows that the
Schmidt waste gelatin stream did not contain a “first component” as claimed
(Request 10). But, Appellant’s argument is circular in nature and
unpersuasive. According to Appellant, because the cartridge filter used in
the test did not remove the vitamin E acetate therein, the Schmidt waste
stream does not contain a first component (Request 10-11). Claim 71 is not
limited to vitamin E acetate, it encompasses “first components” including
the trace contaminants disclosed by Schmidt as effectively removed by hot
filtration (Schmidt, col. 4, ll. 22-31).
Appellant also argues that the two-step filtration process of the
Schmidt Declaration is commensurate-in-scope with the subject matter of
claim 71 (Request 11). But, again, Appellant’s argument is dependent on an
improperly narrow reading of “first component.” The “first component”
claimed is not limited to vitamin E acetate, the tested compound, but instead
encompasses the trace contaminants of Schmidt. Moreover, the treatment of
step (c) recited in claim 71 is not limited to the two-step filtration process set
forth in the Schmidt Declaration but instead is met by the hot filtration step
of Schmidt.
With regard to the rejection of claims 74 and 82 over Schmidt in view
of Dutre, we note that in accordance with Appellant’s statement that the
claims stand or fall together (Br. 10), we selected claim 74 to represent the
issues on appeal with regard to the rejection over Schmidt in view of Dutre.
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Appellant’s arguments directed to claim 82 are untimely and will not be
considered. Appellant further argues that there is no motivation for one of
ordinary skill in the art to use a tangential flow filter in the process of
Schmidt. This is because, according to Appellant, no first component is
present in the waste stream of Schmidt. This argument fails for the reasons
stated above. Again, this argument is based upon an overly narrow
interpretation of “first component” in claim 71. Claim 74 does not further
limit “first component.”
The subject Request has been granted to the extent that the Decision
has been reconsidered, but is denied with respect to making any changes
therein.
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).
DENIED

clj

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