Ex parte Spencer

Board of Patent Appeals and Interferences

May 23, 2000

08232460 (B.P.A.I. May. 23, 2000)

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(2) is not binding precedent of the Board.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. 42
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KEVIN C. SPENCER
_____________
Appeal No. 1997-3886
Application 08/232,460
______________
HEARD: MAY 3, 2000
_______________
Before KIMLIN, 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 74 through 85, which are
all of the claims remaining in this application.
According to appellant, the invention is directed to the
preservation of vegetables using certain noble gas mixtures
Appeal No. 1997-3886
Application No. 08/232,460
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(Brief, page 2). Appellant states that the claims stand or
fall “independently” of each other (Brief, page 3). However,
appellant has presented separate arguments for patentability
that merely recite the limitations of each dependent claim
with the recitation that “[t]his aspect of the present
invention is neither disclosed nor suggested by any of the
cited references.” (Brief, pages 9-11). Appellant has not
presented specific, substantive arguments for the separate
patentability of each claim. See 37 CFR § 1.192(c)(7)(1995);
In re Herbert, 461 F.2d 1390, 1391, 174 USPQ 259, 260 (CCPA
1972). Accordingly, pursuant to the provisions of 37 CFR §
1.192(c)(7)(1995), we select claim 74 from the grouping of
claims and decide this appeal as to the grounds of rejection
on the basis of this claim alone. Illustrative claim 74 is
reproduced below:
74. A process for the preservation of vegetables,
which comprises subjecting said vegetables to a
gaseous atmosphere consisting essentially of
about 80% to 99% volume of gaseous argon and
about 1% to 20% volume of a second gas selected
from the group consisting of krypton, xenon,
neon and mixtures thereof, based upon the total
volume of the gaseous atmosphere.
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Application No. 08/232,460
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Appeal No. 1997-3886
Application No. 08/232,460
1We cite from and rely upon a full English translation of
this document now of record. A copy of this translation is
attached to this decision.
2The final rejection of claims 75-77 and 81 under the
second paragraph of 35 U.S.C. § 112 has been withdrawn
(Answer, page 3).
4
The examiner has relied upon the following references as
evidence of obviousness:
Segall 3,677,024 Jul. 18,
1972
Myers 4,515,266 May 7,
1985
Powrie et al. (Powrie) 4,895,729 Jan. 23,
1990
Fath et al. (Fath) 5,128,160 Jul. 7,
1992
(filed Jul. 16,
1990)
Rey (French ‘669) 1,339,669 Sep. 2,
1963
(Published French Patent Document)1
Claims 74-85 stand rejected under 35 U.S.C. § 103 as
unpatentable “over either one of (A)French Patent No.
1,339,669 ('French') or Segall taken together with either one
of Myers or Powrie or (B)Myers or Powrie taken alone.”
(Answer, page 4). Claims 74-81 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Fath (id.).2 We affirm all of the
examiner’s rejections for reasons which follow.
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Application No. 08/232,460
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Appeal No. 1997-3886
Application No. 08/232,460
3It is not contested that “rare gases” are the same as
“noble gases” and include helium (He), neon (Ne), argon (Ar),
krypton (Kr) and xeon (Xe). See Hackh’s Chemical Dictionary,
p. 722 (3rd ed., The Blakiston Co., Inc., 1953), a copy of
which is attached to this decision.
6
OPINION
A. The Rejection in view of French ‘669, Segall, Myers and
Powrie
The process recited in claim 74 on appeal comprises
subjecting vegetables to a gaseous atmosphere consisting
essentially of about 80 to 99% volume of gaseous argon and
about 1 to 20% volume of krypton, xenon, neon or mixtures
thereof.
The examiner finds that French ‘669 discloses stabilizing
biological products by injecting rare gases3 including argon,
xenon, krypton and neon into the biological products in a
closed container (Office action dated July 9, 1996, Paper No.
28, page 4). The examiner also finds that Segall teaches the
preservation of vegetables by contacting this food with argon
and other noble gases (id., paragraph bridging pages 4-5).
The examiner further finds that Powrie discloses preservation
of produce such as vegetables by packaging vegetables with
noble gases in conjunction with oxygen as a carrier gas while
Appeal No. 1997-3886
Application No. 08/232,460
4It is axiomatic that admitted prior art in an appellant’s
specification may be used in determining the patentability of
a claimed invention. In re Nomiya, 509 F.2d 566, 570-571, 184
USPQ 607, 611-12 (CCPA 1975).
7
Myers discloses the preservation of flavor and color by
inhibiting bacterial growth in produce by using noble gases
with a carrier gas (id. at page 5). Finally, the examiner
notes that appellant admits that it was well known to preserve
fruits and vegetables with argon (id., citing pages 5-11 of
the specification).4 The examiner concludes that it would
have been obvious to one of ordinary skill in the art to have
treated vegetables with an inert gas such as argon or mixtures
of argon with another noble gas (id. at pages 5-6).
Appellant argues that none of the references cited,
either alone or in combination with each other or with any
admissions made in the specification, would have rendered the
present invention obvious (Brief, page 4). Appellant argues
that none of the references discloses or suggests the binary
mixture of noble gases as required by the claims on appeal
(Brief, pages 3 and 5; Reply Brief, page 1). Appellant’s
argument is not persuasive as the cited prior art, as a whole,
reasonably would have suggested the preservation of vegetables
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by use of 100% argon or mixtures of argon and equivalent other
noble gases.
Appellant has not contested the examiner’s use of the
admitted prior art in the specification to establish that it
was well known in the prior art to preserve vegetables with an
argon atmosphere, i.e., 100% argon (see the Brief, page 4, and
the Office action dated July 9, 1996, Paper No. 28). The
process of claim 74 on appeal includes subjecting vegetables
to an atmosphere of “about 99% volume of gaseous argon.” Thus
the prior art discloses a specific embodiment that is so
similar to the claimed embodiment that prima facie one of
ordinary skill in the art would have expected them to possess
similar properties. See Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
The binary mixture of noble gases recited in claim 74 on
appeal would also have been suggested by the teachings of the
cited prior art to use noble gases in preservation of
foodstuffs such as vegetables. For instance, French ‘669
teaches the use of a rare gas, preferably argon, as a
protective atmosphere superior to nitrogen (page 3). This
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reference also teaches that “other rare gases such as helium,
neon, krypton, and xenon are also suitable.” (page 4). Segall
teaches that helium is particularly useful as a preservation
atmosphere but other noble gases may be used (column 2, lines
18-23). Myers teaches the use of nitrogen, argon, helium or
carbon dioxide as a preservative gas (column 2, lines 29-30).
Powrie teaches gas flushing with nitrogen, argon, helium and
hydrogen to preserve fruit (column 10, lines 7-10).
Accordingly, it would have been well within the ordinary skill
in the art to combine two well known preservative gases, each
of which is taught by the prior art to be useful for the same
purpose, to form a mixture to be used for the very same
purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069,
1072 (CCPA 1980). The amounts of each gaseous component would
have been well within the ordinary skill of the art. See In
re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed.
Cir. 1990).
Appellant argues that French ‘669 is directed to treating
“biological products” and not vegetables (Brief, page 4).
This argument is not persuasive since “biological products” is
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generic to foodstuffs including vegetables and appellant
admits in the specification that argon has been used in the
preservation of vegetables. Appellant argues that Segall
relies upon ultrahyperbaric pressures (Brief, page 4) but, as
noted by the examiner on page 4 of the Answer, the claimed
process does not recite any pressure limitations. Appellant
submits that Powrie is directed to the preservation of fruit
and the examiner has not supported his position that fruit and
vegetables are considered indistinguishable for purposes of
preservation in this art (Brief, pages 5-7). However, this
argument is not well taken since the examiner has submitted
evidence to support his position, namely the citation of Fath
to show the equivalent treatment of fruits and vegetables in
this art (Answer, page 6).
For the foregoing reasons, we determine that the examiner
has established a prima facie case of obviousness in view of
the reference evidence.
B. The Rejection over Fath
The examiner finds that Fath discloses preservation of
vegetables by treating them with an atmosphere of argon,
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oxygen as a carrier, with any remainder being a rare gas
(Office action dated July 9, 1996, Paper No. 28, page 8).
Appellant argues that Fath is only directed to the use of
nitrogen or argon or a mixture of the two with from 0 to 50%
of oxygen (Brief, page 6). Appellant’s argument is not
persuasive since Fath clearly teaches (column 2, lines 24-31)
[S]aid atmosphere at least initially
contains from 10 to 100%, typically
at the industrial level from 50 to
80% nitrogen monoxide or argon, or
a mixture of the two, from 2 to 20%
and typically from 15 to 20% oxygen
and the remainder if any being composed
of an inert gas in the sense of this
invention, i.e. nitrogen, carbon
dioxide or another rare gas or
mixtures thereof.
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Although Fath does not exemplify argon or rare gas
mixtures, we agree with the examiner that the combination of
argon and another rare gas would have been suggested by the
rather limited disclosure of Fath. Examples in a reference
are only exemplary of the broader disclosure, all of which is
available for what it clearly teaches or suggests to one of
ordinary skill in the art. In re Widmer, 353 F.2d 752, 757,
147 USPQ 518, 523 (CCPA 1965). Accordingly, we determine that
the examiner has established a prima facie case of obviousness
in view of this reference evidence.
C. Evidence of Unexpected Results
Appellant has submitted evidence of unobvious results in
the form of a Declaration under 37 CFR § 1.132 by Kevin C.
Spencer dated Dec. 11, 1995, Paper No. 25 (hereafter the
Declaration, see the Brief, pages 6-9, and the Reply Brief,
pages 1-2).
Although the Declaration contains a great amount of data,
there is only one comparative point with the closest prior art
(i.e., Fath). Fath discloses that nitrogen monoxide or argon
is the main component in a preservative atmosphere for
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vegetables (see column 2, lines 21-31; column 3, lines 4-12).
The results presented in the Declaration fail to show that
argon is unexpectedly superior to nitrogen monoxide in the
preservation of vegetables. See Table 1 of the Declaration,
where nitrogen monoxide (N2O) yields similar results to argon
for preservation of three vegetables, with both gases
containing carrier oxygen at 8:2 ratios. Declarations under
37 CFR § 1.132 must compare the claimed subject matter with
the closest prior art to be effective. In re Burckel, 592
F.2d 1175, 1179, 201 USPQ 67,
71 (CCPA 1979). Any comparisons in such a Declaration must
show differences to an appreciable degree such that the
difference was actually unexpected. In re Merck & Co., Inc.,
800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986).
Furthermore, any such comparative evidence must be
commensurate in scope or permit conclusions with respect to
the scope of the claimed subject matter. In re Boesch, 617
F.2d 272, 277, 205 USPQ 215, 220 (CCPA 1980); In re Payne, 606
F.2d 303, 315-16, 203 USPQ 245, 256 (CCPA 1979). The claimed
subject matter includes preservation of vegetables by
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treatment with an atmosphere of “about . . . 99% volume” argon
and “about 1%
. . . volume” of krypton, xenon or neon (see claim 74 on
appeal). Although argon and nitrogen are compared many times
in the Declaration (presumably at or near 100% volume; see
Tables 1, 3, 18 and 19), there are no comparative data
representing the claimed subject matter as noted above, i.e.,
99% argon and
1% of any of the three noble gases. Accordingly, the
comparative evidence is not commensurate in scope with the
claimed subject matter. Appellant/declarant has not presented
any convincing technical reasoning or argument that the data
submitted would permit conclusions or be predictive of
unexpected results for the entire scope of the claimed subject
matter.
D. Other Issues
In the event of further or continuing prosecution of this
application before the examiner, the examiner should
reconsider the patentability of claims 82-85 in view of Fath.
These claims were not included in the rejection on appeal
involving Fath but appear to include subject matter which is
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disclosed or suggested at column 3 of Fath. The examiner and
applicant should also consider the patentability of the
claimed subject matter in view of Schreiner, U.S. Patent
3,183,171, described on pages 14-15 of the specification.
Schreiner discloses the use of mixtures of two or more inert
gases, including noble gases, for the preservation of foods by
inhibiting the growth of undesirable fungi (see column 1,
lines 52-54; line 71-column 2, line 4; and column 3, lines 30-
35).
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The examiner should also note the inconsistency in the
scope of independent claim 74 and dependent claim 75 by use of
the transitional terms “consisting essentially of” and
“comprising,” respectively. See 35 U.S.C. § 112, second and
fourth paragraphs.
E. Conclusions
For the foregoing reasons, we determine that the examiner
has presented a prima facie case of obviousness in view of the
reference evidence. Based on the totality of the record,
including appellant’s arguments and evidence, we determine
that the preponderance of evidence weighs in favor of
obviousness within the meaning of 35 U.S.C. § 103.
Accordingly, the rejections of the examiner are affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
TAW:hh
Appeal No. 1997-3886
Application No. 08/232,460
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Norman F. Oblon
Oblon, Spivak, McClelland,
Maier & Neustadt
1755 Jefferson Davis Hwy.
Arlington, VA 22202