Ex parte VAN REES

Board of Patent Appeals and Interferences

Mar 29, 2000

08069434 (B.P.A.I. Mar. 29, 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in a law journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte NORMAN A. VAN REES
__________
Appeal No. 1996-1040
Application 08/069,434
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ON BRIEF
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Before WINTERS, ROBINSON, and LORIN, Administrative Patent Judges.
ROBINSON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims
1-14, which are all of the claims pending in this application.
Claim 1 is illustrative of the subject matter on appeal and reads as follows:
1. A biodegradable insect repellant that breaks down in the presence of water to
minimize solid waste, the insect repellant comprising:
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Application 08/069,434
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a water soluble substrate substantially comprising a substantially dry, rigid, open-celled
foam consisting essentially of vegetable starch; and
cedar oil carried in the substrate.
The reference relied upon by the examiner is:
Eden et al. (Eden) 4,812,445 March 14, 1989
GROUNDS OF REJECTION
Claim 14 stands rejected under 35 U.S.C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the invention.
Claims 6-8 stand rejected under 35 U.S.C. § 103. The examiner cites no prior art
in support of this rejection.
Claims 1-14 stand rejected under 35 U.S.C. § 103. As evidence of obviousness,
the examiner relies on Eden.
We reverse.
BACKGROUND
The invention is described at page 1 of the specification as relating to a moth and
insect repellant product, for protecting clothing, which includes a foamed vegetable starch
and cedar oil. The insect repellant of the invention is described as being biodegradable,
environmentally safe and dissolvable in water, resulting in minimal solid waste.
DISCUSSION
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Application 08/069,434
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The rejection under 35 U.S.C. § 112, second paragraph
The examiner has rejected claim 14 based on the presence, therein, of the term
"providing" which the examiner urges renders the claim indefinite because it does not
clearly set forth the metes and bounds of the claim. We have considered the arguments of
both the examiner and appellant relating to this rejection and find that we are in agreement
with the appellant that the rejection is improper. We reverse the rejection under 35 U.S.C.
§ 112, second paragraph, and adopt appellant's reasoning at pages 8-9 of the Appeal
Brief as our own.
The rejections under 35 U.S.C. § 103
Claims 6-8:
In rejecting claims 6-8 under 35 U.S.C. § 103, the examiner states (Answer, page
3):
The process merely recites the mixing of foamed vegetable starch and
cedar oil. There (sic, The) mere mixing of ingredients, broadly stated,
cannot form the basis of a patentable process nor can patentability be
predicated on a recitation of a result.
We have carefully considered the arguments of both the examiner and appellant
relating to this rejection and are persuaded that the examiner has failed to establish a
prima facie case of obviousness within the meaning of 35 U.S.C. § 103. We reverse this
rejection and adopt appellant's reasoning as set forth at page 11 of the Appeal Brief as
our own, adding only the following for emphasis.
On this record, the examiner has failed to consider the claimed subject matter as a
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Application 08/069,434
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whole (35 U.S.C. § 103). The claimed subject matter is "not broadly stated" as urged by
the examiner, but is directed to a method of making an insect repellant by combining a
water soluble substrate made of a substantially dry, rigid, open-celled foam consisting
essentially of vegetable starch with cedar oil. In failing to take into consideration these
claim limitations in rejecting the claims under 35 U.S.C. § 103, the examiner committed
reversible error. Therefore, this rejection under 35 U.S.C. § 103 is reversed.
Claims 1-14:
In rejecting claims 1-14 under 35 U.S.C. § 103, the examiner cites Eden as
disclosing (Answer, page 4):
the encapsulation of insect repellants in a starch matrix, see the Abstract and
col. 2, lines 1-19. In col. 3, lines 1-40 [or] this reference discloses that the
starch product can be subjected to drying prior to use. Moreover, though the
reference starch is described as a matrix, the product is capable of
releasing is (sic, its) encapsulated material, also see claim 2.
However, the examiner acknowledges that while Eden (Answer, page 4):
does not explicitly disclose the present claims, the disclosure would suggest
the present invention of utilizing a dry starch to absorb an insect repellant for
release of same in a desired locus.
It is the initial burden of the patent examiner to establish that claims presented in an
application for patent are unpatentable. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d
1443, 1445 (Fed. Cir. 1992). We have carefully considered the evidence and discussion
in support of the rejection presented by the examiner. However, a fair evaluation of the
reference and consideration of the claimed subject matter as a whole, dictates a
conclusion that the examiner has failed to provide the factual basis which would reasonably
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Application 08/069,434
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support a prima facie case of unpatentability of the subject matter of claims 1-14.
All of the claims require the presence or use of cedar oil which is indicated to be the
insect repelling component. The examiner has offered no evidence which would
reasonably establish that cedar oil was known to be an insect repellant at the time of the
invention. Additionally, the examiner has failed to demonstrate that the vegetable starch
matrix described for use in encapsulation by Eden, reasonably corresponds to the
"substantially dry, rigid, open-celled foam consisting essentially of vegetable starch" as
required by the claims on appeal. Appellant specifically argued that the claimed invention
(Brief, page 12):
does not entail the formation of a starch matrix which is intended to serve as
an encapsulation agent. Further, Applicant's invention employs a foamed
vegetable starch.
The examiner does not respond to this argument (Answer, page 5). That the matrix
material of Eden may be capable of absorbing oil and releasing it, is insufficient, standing
alone, to establish that it reasonably corresponds to the foamed vegetable starch of the
claims.
Where, as here, the examiner fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir.1988). Therefore, the rejection of claims 1-14 under 35 U.S.C. § 103 is
reversed.
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CONCLUSION
The examiner's rejection of claim 14 under 35 U.S.C. § 112, second paragraph, is
reversed.
The examiner's rejections of claims 1 - 14 under 35 U.S.C. § 103 are reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
DOUGLAS W. ROBINSON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
HUBERT C. LORIN )
Administrative Patent Judge )
Armstrong, Teasdale, Schlafly & Davis
One Metropolitan Square
St. Louis, MO 63102-2740
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Application 08/069,434
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