Ex parte SU

Board of Patent Appeals and Interferences

Oct 25, 2001

08467552 (B.P.A.I. Oct. 25, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of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
__________
Ex parte NAN-YAO SU
__________
Appeal No. 1998-2893
Application 08/467,552
___________
HEARED: July 10, 2001
___________
Before CALVERT, FRANKFORT, and BAHR, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
REQUEST FOR REHEARING
Appellant has filed a request for rehearing of our
decision of July 25, 2001 (Paper No. 40), in which we reversed
the rejection of claims 1, 2, 5 to 9, 12 to 17, 19 to 23 and
25 to 28 under 35 U.S.C. § 103(a), and entered a new ground of
rejection, pursuant to 37 CFR 1.196(b), of said claims under
35 U.S.C. § 102(b).
Appeal No. 1998-2893
Application 08/467,552
2
In the request, appellant points out that on September 1,
1999, he filed a paper (Paper No. 27) withdrawing the appeal
as to claims 1, 2, 5 to 7, 16, 17 and 19 to 21. This paper
was inadvertently overlooked when our decision was rendered.
Accordingly, the decision is vacated with regard to claims 1,
2, 5 to 7, 16, 17 and 19 to 21, which will be treated as
provided in MPEP § 1215.03.
As to the remaining claims 8, 9, 12 to 15, 22, 23 and 25
to 28, the reversal of the rejection under § 103(a) and the
new ground of rejection pursuant to 37 CFR 1.196(b) remain
extant.
With regard to the new ground, appellant contends in
essence that claims 8, 9, 12 to 15, 22, 23 and 25 to 28 are
not anticipated by Takenaka, the reference applied under §
102(b), because, in addition to the toxin delivery housing
disclosed by Takenaka, independent claims 8 and 22 both
require a casing for defining a cavity in the ground. We
agree. Since Takenaka does not disclose a casing as claimed,
it cannot anticipate. Kloster Speedsteel AB v. Crucible Inc.,
793 F.2d 1565, 1571, 230 USPQ 81, 84 (Fed. Cir. 1986)
Appeal No. 1998-2893
Application 08/467,552
3
(“absence from the reference of any claimed element negates
anticipation”). The rejection is therefore withdrawn.
In summary, the request is granted to the extent that:
(1) the decision (Paper No. 40) is vacated insofar as it
included any consideration of claims 1, 2, 5 to 7, 16, 17 and
19 to 21, the appeal as to those claims having been withdrawn;
(2) the examiner’s decision to reject claims 8, 9, 12 to 15,
22, 23 and 25 to 28 under 35 U.S.C. § 103(a) remains reversed;
(3) the rejection under 35 U.S.C. § 102(b) pursuant to 37 CFR
1.196(b) is withdrawn.
GRANTED

IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
Appeal No. 1998-2893
Application 08/467,552
4
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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