Ex parte TOLPA et al.

Board of Patent Appeals and Interferences

Aug 25, 1997

07849490 (B.P.A.I. Aug. 25, 1997)

Application for patent filed March 11, 1992.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte STANSLAW TOLPA, TADEUSZ GERSZ,
STANISLAWA RITTER, RYSZARD KUKLA,
MALGORZATA SKRYSZEWSKA
and STANISLAW TOMKOW
_____________
Appeal No. 94-3436
Application 07/849,4901
______________
ON BRIEF
_______________
Before RONALD H. SMITH, METZ and PAK, Administrative Patent
Judges.
RONALD H. SMITH, Administrative Patent Judge.
Appeal No. 94-3436
Application 07/849,490
2
This is an appeal from the final rejection of claims 1-6,
15-19 and 30-34. Claim 21 has been cancelled, and all other
claims have been withdrawn pursuant to a restriction requirement.
The subject matter of the appealed claims relates to a water
soluble peat-derived bioactive product. Claim 1, the only
independent appealed claim, reads as follows:
1. A water soluble peat-derived bioactive product
containing not more than 70% by weight sodium chloride, based on
dry mass.
The reference relied upon by the examiner is:
Belkevich et al. (Belkevich) 4,272,527 June 9, 1981
Our decision is based on a review of the record including
Appellants' appeal brief, the examiner's answer, the reply brief,
the two supplemental examiner's answers, the supplemental reply
brief, the specification and the declaration of Dr. Kukla. The
review of the record indicates that the only remaining rejection
of the claims is based on the Belkevich reference under 35 U.S.C.
§ 102 or 103. We will not sustain this rejection.
The claims are directed to a water soluble peat-derived
product. Belkevich discloses an ethanol extraction of peat wax
resin, which is disclosed by Belkevich at column 1, lines 20-23
to contain sterols and estrogenic compounds. The sterols and
estrogenic compounds are the only disclosed ingredients of the
Appeal No. 94-3436
Application 07/849,490
3
ethanol extract taught by Belkevich. The sterol and estrogen
compounds in Belkevich's extract are not water soluble as pointed
out in paragraph 3 of the Kukla declaration. Plainly, Belkevich
does not describe, in the sense of 35 U.S.C. § 102, or suggest to
the person of ordinary skill in the art a water soluble peat-
derived bioactive product.
The examiner's rejection as it is founded on 35 U.S.C. § 103
is apparently based on speculation that the Belkevich extract
could "conceivably contain water soluble components in addition
to the [disclosed] water insoluble components." However, silence
in a reference is hardly a proper substitute for an adequate
disclosure of facts from which a conclusion of obviousness may
justifiably follow. In re Burt, 356 F.2d 115, 121, 148 USPQ 548,
553 (CCPA 1966).
The decision of the examiner is reversed.
REVERSED
)
RONALD H. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ANDREW H. METZ )
Administrative Patent Judge ) APPEALS AND
Appeal No. 94-3436
Application 07/849,490
4
)
) INTERFERENCES
)
CHUNG K. PAK )
Administrative Patent Judge )
Beveridge, DeGrandi, Weilacher & Young
1850 M Street, N.W., Suite 800
Washington, D.C. 20036