Ex parte Spencer

Board of Patent Appeals and Interferences

Aug 24, 2000

08378091 (B.P.A.I. Aug. 24, 2000)

Appeal No. 97-1727
Application No. 08/378,091
The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.
Paper No. 42
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte Kevin C. Spencer
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Appeal No. 97-1727
Application No. 08/378,091
____________
HEARD
August 15, 2000
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Before Garris, Owens, and Lieberman, Administrative Patent Judges.
Lieberman, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 89
through 104, and 106 through 112, as amended subsequent to the final rejection,
which are all of the claims pending in this application.

BACKGROUND
The invention is directed to a method for enhancing pectinase activity by injecting
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an inert gas selected from the group consisting of argon, neon, krypton, xenon or a
mixture thereof into fruit or fruit juice. At least 50% of full gas saturation of the
fruit or fruit juice is maintained during the enzymatic process. It is required that a
temperature of 10 to 30 C and a pressure of less than 10 atmospheres be maintainedo
during the enzymatic process
THE CLAIMS
Claims 112 is illustrative of appellants’ invention and is reproduced below.
112. A method for enhancing pectinase activity in an enzymatic process using at least
one enzyme having pectinase activity, which comprises:
a) injecting a gas into a fruit juice containing at least one enzyme having
pectinase activity, the gas consisting essentially of argon, neon krypton, xenon or a
mixture thereof;
b) saturating the fruit or fruit juice with the gas to an extent of at least 50%
of full saturation of said fruit or fruit juice with said gas; and
c) maintaining the saturation substantially throughout the fruit or fruit juice,
and during said enzymatic process at a temperature of from 10 to 30°C and at a
pressure of less than 10 atm.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references.
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Bagdigian 2,569,217 Sept. 25, 1951
Seebeck et al. (Seebeck) 4,329,433 May 11, 1982
Powrie et al. (Powrie) 4,895,729 Jan. 23, 1990
Fath et al. (Fath) 5,128,160 Jul. 07, 1992
G. F. Doebbler et al., (Doebbler) “Inert Gas Interactions and Effects on Enzymatically
Active Proteins,” 26 Federation Proceedings, p.650, no.2, (Mar.-Apr. 1967).
THE REJECTIONS
Claims 89 through 104 and 106 through 112 stand rejected under 35
U.S.C.
§ 112, first paragraph, as the specification as originally filed does not provide
support for the invention as now claimed.
Claims 89 through 104 and 106 through 112 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point out
and distinctly claim the subject matter which applicant regards as the invention.
Claims 89 through 104 and 106 through 112 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Fath, and Powrie in view of Bagdigian, Doebbler and
Seebeck.
OPINION
We have carefully considered all of the arguments advanced by appellants and
the examiner and agree with appellants that the aforementioned rejections under 35
U.S.C.
§ 112 and 35 U.S.C. § 103 are not well founded. Accordingly, we do not sustain
these rejections.
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The Rejections under Section 112
Any analysis of the claims for compliance with 35 U.S.C. § 112 should start with
the second paragraph, then proceed with the first paragraph. In re Angstadt, 537
F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976); In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238, (CCPA 1971).
“The legal standard for definiteness under the second paragraph of 35 U.S.C.
§ 112 is whether a claim reasonably apprises those of ordinary skill in the art of its
scope.” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed.
Cir. 1994). The inquiry is to determine whether the claim sets out and circumscribes
a particular area with a reasonable degree of precision and particularity. The
definiteness of the language employed in a claim must be analyzed not in a vacuum, but
in light of the teachings of the particular application. In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
Accordingly, it is incumbent upon the examiner, in the first instance, to
demonstrate that one of ordinary skill in the art would not understand the scope of
the claim when the claim language is read in light of the specification and the state of
the prior art. In the present case, the examiner has not satisfied this burden. It is the
examiner’s position that the phrase, “maintaining the saturation substantially
throughout” is indefinite as use of this phrase does not clearly set forth the limits
of the claims. See Answer, page 4. While the examiner noted in the Answer that
appellant’s principal Brief did not advance an argument against the section 112
rejections, Answer, page 7, appellant has responded by submitting an argument at
pages 1 and 2 of the Reply Brief. It is appellants’ position that support for the
criticized language can be found at pages 16 and 17 of the present specification.
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Our review of appellants’ specification, particularly the description on page 16, line
6 through page 17, line 16 brings us into agreement with the appellant that the
claimed language, “maintaining the saturation substantially throughout” is described in
such a manner that the specification provides a reasonable standard for understanding
the metes and bounds of the term, supra when the claim is read in light of the
specification. Seattle Box Co. v. Industrial Crating & Packing, Inc, 731 F.2d
818, 826, 221 USPQ 568, 573-574 (Fed. Cir. 1983). Accordingly, we reverse
the rejection of the examiner.
We turn next to the examiner’s rejection under the first paragraph of 35
U.S.C.
§ 112 on the grounds of lack of enablement. In a rejection under the first
paragraph of 35 U.S.C. § 112, paragraph one, it is sufficient if the originally filed
disclosure would have conveyed to one of ordinary skill in the art that an appellant
had possession of the concept of what is claimed. In re Anderson, 471 F.2d 1237,
1240-41, 176 USPQ 331, 333 (CCPA 1973). There is no requirement that the
language of the claimed subject matter be present in the specification in ipsissima
verba. It is the examiner’s position that appellants do not teach “substantially.” We
disagree.
The examiner’s rejection does not go beyond that stated supra. However we
previously determined that the specification, page 16, line 6 to page 17, line 16,
uses the term, “substantially” and provides an adequate explanation such that one of
ordinary skill in the art would understand the scope of the term when read in light of
the specification.
Based upon the above consideration, we conclude that appellants in their
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originally filed disclosure had possession of the concepts set forth in the claimed
subject matter. Accordingly, we reverse the rejection of the examiner.
The Rejection under 35 U.S.C. § 103
“[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability,” whether on the
grounds of anticipation or obviousness. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
On the record before us, the examiner relies upon a combination of five
references to reject the claimed subject matter and establish a prima facie case of
obviousness. The basic premise of the examiner’s rejection is that it would have been
obvious to one of ordinary skill in the art to saturate the food system with gas as
taught by Bagdigian, use any inert gas as taught by Doebbler, and inject the gas as
taught by Seebeck in the process of Fath or Powrie because the saturation of enzyme
containing systems with all inert gas containing mixtures is conventional in the food art.
See Answer, page 6. We disagree. We find that Bagdigian is directed to certain types
of foods such as coffee, popcorn, potato chips, peanut butter, and foods which have
a tendency to deteriorate in packages. See column 1, lines 22-25 and column 2, lines
20-23. There is no mention in Bagdigian of either fruits or fruit juices. Nor can we
conclude that packaging food in a “chamber saturated with the desired gas,” column
1, lines 40-41, would necessarily result in meeting the requirement of the claimed
subject matter that the fruit and fruit juice be saturated “substantially throughout.”
Accordingly, we determine that there is no suggestion or teaching in Bagdigian to
utilize inert gases in a chamber for the purpose of saturating fruit or fruit juice.
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As to Doebbler, there is no indication that inhibiting effects observed on five
specific enzymes studied, would apply to pectinase enzyme activity as required by the
claimed subject matter, particularly as the enzymes disclosed in Doebbler do not
include the claimed enzyme. Furthermore, the inert gases disclosed by Doebbler are
not limited to the claimed noble gases argon, neon, krypton and xenon, but include N O2
and SF . Based on the disclosure of Doebbler, there is no reason to select either6
the requisite enzyme or gas.
Accordingly, the examiner has not established a prima facie case of obviousness
and the examiner's rejection of claims 89 through 104 and 106 through 112 as
unpatentable over Fath, and Powrie in view of Bagdigian, Doebbler and Seebeck are not
sustained.
The examiner must show reasons that the skilled artisan confronted with the same
problems as the inventor and with no knowledge of the claimed invention, would select
the elements from the cited prior art references for combination in the manner
claimed. We determine on the record before us that there is no reason, suggestion,
or motivation to combine the references in the manner proposed by the examiner.
Accordingly, the examiner has not established a prima facie case of obviousness. In
re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998).
Since no prima facie case of obviousness has been established, we need not
address the experimental results relied upon by appellants. See Brief, page 8. In
re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).

DECISION
Page 8Appeal No. 97-1727Application No. 08/378,091
The rejection of claims 89 through 104 and 106 through 112 under 35
U.S.C.
§ 112, first paragraph, as the specification as originally filed does not provide
support for the invention as now claimed is reversed. .
The rejection of claims 89 through 104 and 106 through 112 under 35
U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention is
reversed.
The rejection of claims 89 through 104 and 106 through 112 under 35
U.S.C.
§ 103 as being unpatentable over Fath, and Powrie in view of Bagdigian, Doebbler and
Seebeck is reversed.
The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
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TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
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