Ex parte Succi et al.

Board of Patent Appeals and Interferences

Sep 27, 2001

08690016 (B.P.A.I. Sep. 27, 2001)

Claims 41 and 58 were also finally rejected. However,1
those claims were canceled in an Amendment under 37 CFR §
1.116(a). Paper No. 22. That amendment was entered by the
examiner. See Paper No. 23 (“Upon the filing of an appeal,
the proposed amendment will be entered.”). Therefore, the
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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today was not written for publication and is not
binding precedent of the Board.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. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MARCO SUCCI and CAROLINA SOLCIA
________________
Appeal No. 1998-2002
Application 08/690,016
________________
ON BRIEF
________________
Before GARRIS, HANLON and TIMM, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134
from the final rejection of claims 33-40 and 42-57, all of the
claims pending in the application. The claims on appeal are1
Appeal No. 1998-2002
Application 08/690,016
patentability of claims 41 and 58 is not an issue in this
appeal.
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directed
to an apparatus for removing gaseous impurities from a
hydrogen gas stream. Claim 33 is illustrative and reads as
follows:
33. An apparatus for the removal of gaseous impurities
from an impure hydrogen gas stream contaminated with carbon
monoxide, and with one or more additional impurities selected
from the group consisting of carbon dioxide, oxygen, nitrogen,
water, methane, and mixtures thereof, to produce thereby a
purified gas stream; said apparatus comprising:
A. a first reaction zone containing elemental nickel
and nickel-carbonyl supported on a carrier selected from the
group consisting of silicate, titanium silicate and silica;
B. means for maintaining said first reaction zone under
nickel-carbonyl forming conditions to convert thereby
substantially all the carbon monoxide to nickel carbonyl,
thereby producing an effluent stream from the first reaction
zone which effluent stream is a partially purified hydrogen
gas stream;
C. a second reaction zone containing Ti Ni;2
D. means for conveying the partially purified hydrogen
gas stream from the first reaction zone to the second reaction
zone; and
E. means for maintaining the second reaction zone under
methane reacting conditions to produce a purified hydrogen gas
stream.
Appeal No. 1998-2002
Application 08/690,016
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The references relied upon by the examiner are:
Tanaka et al. 4,075,312 Feb. 21, 1978
Reilly et al. (Reilly) 4,769,225 Sept. 6, 1988
Tamhankar 0 240 270 Oct. 7,
1987
(European Patent Document)
The following rejections are at issue in this appeal:
(1) Claims 33-40 and 42-57 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
(2) Claims 42-49 are rejected under 35 U.S.C. § 103 as
being unpatentable over Reilly in view of Tanaka.
(3) Claims 33-40 and 50-57 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Reilly in view of Tanaka and
further in view of EP ‘270.
(4) Claims 33-40 and 42-57 are rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-34 of U.S.
Patent No. 5,492,682.
The rejections
A. Double patenting rejection
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Application 08/690,016
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According to the examiner, the obviousness-type double
patenting rejection is based on the following (Answer, p. 4):
The instant claims [(claims 33-40 and 42-57)] are
broader than the claims recited in Patent 5,492,682,
since they merely recite the corresponding “means”
for carrying out the process recited in the claims
of Patent 5,492,682.
Manifestly, claims 33-40 and 42-57 recite structural
limitations in “means-plus-function” format which do not
appear in the process claims of U.S. Patent No. 5,492,682.
Therefore, it is unclear how the various “means” recited in
claims 33-40 and 42-57 render those claims “broader” than the
process claims of U.S. Patent No. 5,492,682.
Furthermore, the examiner has failed to interpret claims
33-40 and 42-57 in accordance with 35 U.S.C. § 112, sixth
paragraph, and explain why the apparatus defined by claims 33-
40 and 42-57 would have been obvious in view of the process
claimed in U.S. Patent No. 5,492,682 which does not recite the
claimed “means.” See Reply brief. Therefore, for the sole
reason that the examiner failed to set forth a prima facie
case of unpatentability, the rejection of claims 33-40 and 42-
57 under the judicially created doctrine of obviousness-type
double patenting is reversed.
Appeal No. 1998-2002
Application 08/690,016
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The dissent points out that appellants did not respond to
the obviousness-type double patenting rejection in the brief
but rather responded to the rejection for the first time in
the reply brief. The dissent would remand this application to
the examiner for the purpose of supplementing the record with
a response to the arguments presented in the reply brief.
Although the majority does not condone the fact that
appellants responded to the rejection for the first time in
the reply brief, the majority disagrees that a remand is
proper in this case.
First, the examiner bears the initial burden of
presenting a prima facie case of unpatentability regardless of
any arguments advanced by appellant. See In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) (the
examiner bears the initial burden of presenting a prima facie
case of unpatentability). Second, the very fact that the
examiner entered the reply brief appears to suggest that no
response was deemed necessary. See MPEP § 1208.03 (7th ed.,
July 1998) ("The acknowledgment of receipt and entry of a
reply brief under 37 CFR 1.193(b)(1) is an indication by the
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Application 08/690,016
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examiner that no further response by the examiner is deemed
necessary."). According to MPEP § 1208.03 (7th ed., July
1998), if a response is deemed necessary, the examiner is to
reopen prosecution. Finally, unlike the dissent, the majority
is of the opinion that a remand would not cure the
deficiencies of the examiner’s rejection. Therefore, a
reversal of the obviousness-type double patenting rejection is
considered proper at this time.
B. Rejection under 35 U.S.C. § 112, second paragraph
Claims 33-40 and 42-57 are rejected under 35 U.S.C. §
112, second paragraph, for improperly reciting a method
limitation. According to the examiner (Answer, pp. 4-5):
The recitation of “nickel-carbonyl supported on a
carrier” is tantamount to a method limitation in an
apparatus claim, in that nickel-carbonyl would not
be formed until and unless the impure hydrogen gas
stream contaminated with carbon monoxide is
contacted with the elemental nickel in the first
reaction zone. It is well-settled that method
limitations are improper in apparatus claims. In re
Peters, 1923 C.D. 291.
As pointed out by appellants, In re Peters, 1923 C.D.
291, involved a rejection under 35 U.S.C. § 102, not 35 U.S.C.
§ 112,
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Application 08/690,016
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second paragraph. See Brief, p. 3. Nevertheless, in contrast
to Peters, appellants explain (Brief, p. 4):
Appellants are claiming a structure which is formed
when their apparatus is in use and some of the
elemental nickel in the first reaction zone reacts
with an impure gas stream and forms nickel carbonyl.
In other words, Appellants are claiming the actual
structure of their apparatus as it is used during
the purification of gases. The Peters case stands
for the proposition that a structure which is shown
in the prior art is not rendered patentable by the
recitation of process features specifying the manner
in which the structure is used. Accordingly, the
Peters case does not compel the conclusion that
claims defining a structure which is formed when an
apparatus is in use, such as the claims in the
subject application, are inherently indefinite.
Consistent with appellants’ arguments and the
specification, one of ordinary skill in the art would have
understood claims 33-40 and 42-57 to be directed to an
apparatus wherein a reaction between some amount of nickel and
carbon monoxide has already occurred in a first reaction zone
to form some amount of nickel carbonyl. See Miles Labs., Inc.
v. Shandon Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed.
Cir. 1993), cert. denied, 510 U.S. 1100 (1994) (the test for
definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the
specification). This interpretation appears to render the
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Application 08/690,016
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issues raised in the rejection under 35 U.S.C.
§ 112, second paragraph, moot. See Answer, pp. 7-9 (“nickel
carbonyl would not be formed until and unless the impure
hydrogen gas stream contaminated with carbon monoxide is
contacted with the elemental nickel in the first reaction
zone”).
For the reasons set forth above, the rejection of claims
33-40 and 42-57 under 35 U.S.C. § 112, second paragraph, is
reversed.
C. Rejections under 35 U.S.C. § 103
The rejections under 35 U.S.C. § 103 are based on (1) a
combination of Reilly and Tanaka and (2) a combination of
Reilly, Tanaka and EP ‘270. Reilly, Tanaka and EP ‘270 are
directed to processes which absorb hydrogen for different
purposes. According to the examiner, Reilly suggests that any
transition metal is suitable for absorbing hydrogen, and
Tanaka discloses that alloys of titanium and nickel are useful
for absorbing hydrogen. Furthermore, EP ‘270 discloses that
elemental nickel is useful for purifying an inert gas, such as
nitrogen or argon. See Answer, pp. 5-7. However, as pointed
out by appellants, neither Reilly, Tanaka nor EP ‘270 disclose
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Application 08/690,016
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“a first reaction zone containing elemental nickel and nickel-
carbonyl” as claimed. The examiner appears to recognize as
much. See Answer, pp. 5-7.
Therefore, the rejection of claims 33-40 and 42-57 under 35
U.S.C. § 103 is reversed.
REVERSED
ADRIENE LEPIANE HANLON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CATHERINE TIMM )
Administrative Patent Judge )
Appeal No. 1998-2002
Application 08/690,016
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GARRIS, Administrative Patent Judge, Concurring-in-part,
Dissenting-in-part
I concur with the majority’s reversal of the examiner’s
section 112 and section 103 rejections, but dissent with
respect to the majority’s reversal of the examiner’s
obviousness-type double patenting rejection. The reversal of
this last mentioned rejection is inappropriate for a number of
reasons.
The majority’s reasons for reversing the double patenting
rejection amount to little more than an unacknowledged
reiteration of arguments advanced by the appellants in their
Reply Brief. These are the first and only arguments presented
by the appellants in opposition to the double patenting
rejection in the record of this application file. Although
the examiner has consistently made this rejection since the
first office action, no arguments thereagainst were made by
the appellants in the amendment filed April 14, 1997
responding to the first office action or in the amendment
filed August 8, 1997 responding the final office action or in
the Brief filed February 12, 1998 in pursuit of this appeal.
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Application 08/690,016
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Thus, it is only in the Reply Brief that the appellants have
ever offered any reasons for contesting the rejection under
consideration. Significantly, the examiner has not provided
the application file record with a rebuttal to the
aforementioned arguments but instead has simply entered the
Reply Brief without comment regarding these arguments.
Under these circumstances, it is clear that the record of
this appeal is not in condition for an informed and meaningful
appellate review concerning the double patenting issue raised
by the examiner. In practical effect, a majority’s decision
to reverse the double patenting rejection is based on an
appeal record which contains a Brief but no Answer.
Manifestly, this application should be remanded to the
examiner so that he can provide the record with a response to
the double patenting arguments made for the first and only
time in the Reply Brief. For unknown reasons, the majority
has unwisely chosen to resolve the double patenting issue
raised by the examiner based on the inchoate record of this
appeal.
Compounding this lack of wisdom is the majority’s
decision to reverse the examiner’s obviousness-type double
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Application 08/690,016
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patenting rejection. Nothing in the appellants’ Reply Brief
or the majority’s reiteration thereof vitiates the merit in
the examiner’s point that the appealed claims merely recite
the corresponding apparatus or “means” for carrying out the
process recited in the claims of Patent No. 5,492,682. The
process claimed in this patent can be practiced only by way of
suitable apparatus, namely, apparatus of the type defined by
the claims here on appeal. By contending that the claimed
process of the patent would not have rendered the here claimed
apparatus obvious to an artisan with ordinary skill, the
majority and the appellants implicitly cast a degree of doubt
on whether the artisan would be able to practice the process
defined by the patent claims.
The very general arguments presented in the Reply Brief
and reiterated in the majority opinion do not support a
conclusion of nonobviousness with respect to the here claimed
apparatus and do not justify doubting enablement with respect
to the process claims of the patent. On the other hand, the
legal presumption that an artisan processes skill rather than
stupidity (In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774
(Fed. Cir. 1985)) supports a conclusion that the claimed
Appeal No. 1998-2002
Application 08/690,016
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process of the patent would have suggested an apparatus having
the reaction zones, conduits and valves necessary for
practicing this process in accordance with the argued claims
on appeal. Thus, the inchoate record of this appeal, on
balance, weighs most heavily in favor of a conclusion of
obviousness rather than nonobviousness.
In summary, the majority should have remanded this
application to the examiner prior to deciding the double
patenting issue advanced on this appeal, or having failed to
take such action, should have affirmed the examiner’s
obviousness-type double patenting rejection.
BRADLEY R. GARRIS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
Appeal No. 1998-2002
Application 08/690,016
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Appeal No. 1998-2002
Application 08/690,016
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Paul L. Hickman
Hickman, Stephens and Coleman
P. O. Box 52037
Palo Alto, CA 94303-0746