Ex parte SCULLY

Board of Patent Appeals and Interferences

Oct 29, 1998

08084388 (B.P.A.I. Oct. 29, 1998)

Application for patent filed June 29, 1993.1
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(2) is not binding precedent of the Board.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 DANIEL F. SCULLY, JR.
_____________
Appeal No. 95-3765
Application 08/084,3881
______________
ON BRIEF
_______________
Before GARRIS, WARREN, and WALTZ, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 through 28, which are
Appeal No. 95-3765
Application No. 08/084,388
2
the only claims remaining in this application.
Appeal No. 95-3765
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According to appellant, the invention is a metal soap
pellet which has a metal soap and a binder, with the binder
having at least two components that will react under heat
and/or pressure to form additional metal soap (brief, pages 1
and 2). Claim 1 is illustrative of the subject matter on
appeal and is reproduced below:
1. A metal soap pellet comprising (a) a metal soap and (b) a
binder comprising a plurality of components which are capable
of reacting together under heat and/or pressure to form a
metal soap.
The examiner relies upon the following references as
evidence of obviousness:
Rieber et al. (Rieber) 4,235,794 Nov. 25, 1980
Hirsch et al. (Hirsch) 4,927,548 May 22, 1990
Dunski 5,028,486 Jul. 2, 1991
Claims 1 through 28 stand finally rejected under 35
U.S.C. § 103 as unpatentable over Rieber or Dunski or,
alternatively, over Dunski and Hirsch (answer, page 3). We
reverse all the stated rejections for reasons which follow.
OPINION
A. The Rejections over Rieber or Dunski
The metal soap pellet of appealed claim 1 requires (a) a
metal soap and (b) a binder with a plurality of components
Appeal No. 95-3765
Application No. 08/084,388
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which are capable of reacting together under heat and/or
pressure to form additional metal soap, e.g., a metal
carbonate/oxide/ hydroxide and a monocarboxylic acid
(see appealed claim 1 and the specification, page 3, lines 1-
6, and page 4, lines 18-24).
The examiner states that Rieber teaches the preparation
of metal soap granules by mixing metal
oxide/hydroxide/carbonate with carboxylic fatty acids where
the metal components are used in excess (answer, page 4,
citing column 3, lines 18-22, of Rieber). The examiner has
determined that the difference between the “invention” of
claim 1 and any of the cited references “is essentially nil”
(Id.). The examiner then concludes that it would have been
obvious “to follow the teachings of Dunski or Rieber and use
metal oxides, hydroxides, carbonates or monocarboxylic acids
as the binder materials for metal soaps to form the granules
or pellets.” (answer, page 5).
We find that there is no factual basis to support the
examiner’s conclusion. Appealed claim 1, as noted above,
requires a binder with a plurality of components while Rieber
only discloses or teaches one component being used in excess
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Application No. 08/084,388
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to that required to form the metal soap (see column 3, lines
18-22). Furthermore, this teaching in Rieber of increasing
the speed of the saponification reaction by employing an
excess of the metal oxide/hydroxide/carbonate does not teach
the use of this metal as a binder. Rieber specifically
teaches that his invention is accomplished “without the use of
binding agents” (column 2, lines 30-35). The excess metal
oxide/hydroxide/carbonate is used to react with previously
unreacted fatty acid to drive the reaction to completion and
thus does not appear in the final granulate (see Example 18 in
column 8). Finally, the examiner fails to establish that the
granulate of Rieber is equivalent to the metal soap pellet
required by the subject matter on appeal. Therefore the
requirements of appealed claim 1 are not shown or suggested by
Rieber.
Our reviewing court has stated “[w]here the legal
conclusion [of obviousness] is not supported by facts it
cannot stand.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). For
the foregoing reasons, the rejection of claims 1 through 28
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Application No. 08/084,388
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under 35 U.S.C. § 103 as unpatentable over Rieber is reversed.
The examiner states that Dunski teaches the preparation
of metal soap pellets by blending metal soap powder with a
binder material such as fatty acids (answer, page 4, citing
column 3, lines 18 and 28-30). The examiner notes that Dunski
“clearly identifies fatty acids (monocarboxylic) acids [sic]
as an effective binder with the pre-formed metal soaps.”
(Id.). However, the examiner fails to explain how the subject
matter of appealed claim 1, including a binder with a
plurality of components, would have been obvious in view of
the disclosure in Dunski of a one component binder for a metal
soap. The examiner argues that “the references teach several
alternative choices of the binder, so it would have been
obvious to use a plurality of the components as the binder
composition.” (answer, page 5). Even assuming the correctness
of the examiner’s statement, this rejection is over Dunski
alone and only one binder component is taught in Dunski.
For the foregoing reasons, the rejection of claims 1
through 28 under 35 U.S.C. § 103 as unpatentable over Dunski
is reversed.
B. The Rejection over Dunski and Hirsch
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Application No. 08/084,388
Although this statement by the examiner is not contested2
by appellant, Hirsch specifically teaches the use of
stoichiometric amounts of each reactant (column 2, lines 2-4).
The examiner’s calculations for Example 11 (answer, page 4)
apparently do not take into consideration the particular range
of formulas possible in Formula (I) (column 1, lines 7-10).
However, this statement by the examiner does not affect our
decision.
7
The requirements of appealed claim 1 and the examiner’s
analysis of Dunski have been discussed above. The examiner
states that Hirsch teaches the preparation of metal soaps by
reacting an excess of metal oxide with powdered fatty acids,
with the basis for this teaching of an excess of the metal
oxide being found in the examples (answer, page 4). Since
Dunski teaches that the fatty acid binder in the pellet may be
unreacted fatty acid from the saponification reaction (see
Example 5), and the examiner states that Hirsch teaches the
use of excess metal component in the saponification reaction,2
the examiner apparently concludes that use of both the fatty
acid and the metal oxide as binders would have been obvious to
the artisan (answer, page 5).
The examiner must show reasons why one of ordinary skill
in the art, confronted with the same problems as appellant and
with no knowledge of the claimed invention, would select the
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Application No. 08/084,388
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elements from the cited prior art references for combination
in the manner claimed. See In re Rouffet, 149 F.3d 1350,
1358-59, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Warner, 379
F.2d at 1016, 154 USPQ at 177 ("[w]here the invention sought
to be patented resides in a combination of old elements, the
proper inquiry is whether bringing them together was
obvious.") There are "three possible sources for a motivation
to combine references: the nature of the problem to be solved,
the teachings of the prior art, and the knowledge of persons
of ordinary skill in the art." See Rouffet, supra.
The examiner has failed to explain why one of ordinary
skill in the art would have added metal oxide to the fatty
acid binder of Dunski. Dunski employs the fatty acid as a
binder and does not disclose or teach that any further
reaction is desired. There is no disclosure or suggestion in
the cited prior art that metal oxides could be used as a
binder with metal soap pellets. The nature of the problem to
be solved by appellant (specification, page 3, lines 1-6) is
not addressed by the cited prior art. The examiner does not
refer to any knowledge of persons of ordinary skill in the art
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that would have suggested the combination of references.
Accordingly, the examiner has failed to show any motivation or
suggestion to combine the Dunski and Hirsch references.
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For the foregoing reasons, the rejection of claims 1
through 28 under 35 U.S.C. § 103 as unpatentable over Dunski
and Hirsch is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
svt
Appeal No. 95-3765
Application No. 08/084,388
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Patent Department
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16305 Swingley Ridge Drive
Chesterfield, MD 63017