Ex Parte Yamamoto et alDownload PDFPatent Trial and Appeal BoardDec 18, 201311814689 (P.T.A.B. Dec. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JUN YAMAMOTO, YASUKI TSUTSUMI, and HIROYUKI YAMADA __________ Appeal 2012-002058 Application 11/814,689 Technology Center 3600 __________ Before DONALD E. ADAMS, LORA M. GREEN, and ULRIKE W. JENKS, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal1 under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The Real Party in Interest is Kao Corporation (App. Br. 1). Appeal 2012-002058 Application 11/814,689 2 STATEMENT OF THE CASE Claim 1 is representative of the claims on appeal, and reads as follows: 1. A pet excreta treating material comprising a ground material of plant origin as a main component and having the following properties: (1) a higher water absorbency in a third measurement than in a first measurement, (2) a water absorbency of 3% to 30% by weight in the third measurement, and (3) a specific gravity of 0.8 to 1.2 as measured before the first measurement of water absorbency, wherein properties (1) and (2) have been measured as follows: the pet excreta treating material having been dried in a thermostat at 40°C for 2 hours is immersed in 25°C water for 3 seconds, and the resulting weight increase as represented by the following equation is taken as a water absorbency (%); the second and following measurements are carried out by drying the excreta treating material immediately after the preceding measurement in a thermostat at 40°C for 2 hours, immersing the dried material in 25°C water for 3 seconds, and calculating the water absorbency (%) in the same manner as in the first measurement; wherein the water absorbency (%)=[(weight of excreta treating material after immersion—weight of excreta treating material before immersion)/(weight of excreta treating material before immersion)] x 100. The following grounds of rejection are before us for review: I. Claims 1-3 and 13 stand rejected under 35 U.S.C. § 101 because the invention is drawn to non-statutory subject matter (Ans. 4). Appeal 2012-002058 Application 11/814,689 3 II. Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as being rendered obvious by Otsuji2 (Ans. 6). ANALYSIS-STATUTORY SUBJECT MATTER Claims 1-3 and 13 stand rejected as being drawn to non-statutory subject matter (Ans. 4). According to the Examiner, the claims “encompass a substance consisting solely of ground material of plant origin” (id.). That is, as the claims do not require “any other material besides ‘a ground material of plant origin, . . . the claimed subject matter includes naturally occurring material as the only component” (id. at 5). Appellants argue that the properties recited by claim 1 “are not inherent in the ground material of plant origin per se, but are obtained by treatment thereof” (App. Br. 6). Specifically, Appellants assert that comparative examples 4-6 in the Specification demonstrate that the claimed specific gravity is not an inherent property of the ground material of plant origin (id.). Appellants argue that the Examiner has not demonstrated that a naturally occurring plant material has the properties required by claim 1, and thus has not met the burden of establishing a prima facie case of unpatentability (id. at 7). The Examiner responds that the Specification teaches that a wide variety of materials of plant origin may be used to produce the material, and thus the “‘ground material of plant origin’ encompasses countless plant species” (Ans. 16-17 (citing Spec. ¶ 21)). The Examiner states that while Appellants picked a plant that required heat treatment to demonstrate the 2 Otsuji JP 2002-84909, March 26, 2002. Appeal 2012-002058 Application 11/814,689 4 claimed properties, Appellants have “not demonstrated that other species of plants possess the claimed properties without undergoing heat treatment” (Ans. 17). The burden of demonstrating unpatentability is on the Examiner. The only evidence relied upon by the Examiner to demonstrate that the claims are drawn to a product of nature is the Specification, which teaches: The material of plant origin that can be used to produce the excreta treating material of the invention may be either a herbaceous or woody plant origin. Examples of a ground material of such plant origin include ground woody plants (wood and bark), seed oil cake, ground hull of cereal grains, and ground herbaceous plants. Ground chips of woody plants, particularly softwood such as cedar, pine, and cypress are preferred for their moldability and deodorizing performance. The size of the chips (ground material) is preferably about 0.01 to 5 mm, more preferably about 0.05 to 2 mm, in view of moldability. (Spec. ¶ 21.) That portion of the Specification does not teach, nor does the Examiner point to any additional teaching in the Specification, that plant materials, without further processing, would have the properties required by independent claims 1 and 13. The Examiner has, therefore, not established by a preponderance of the evidence that material of plant origin, without further processing, would have the claimed properties, and the rejection is reversed. Appeal 2012-002058 Application 11/814,689 5 ANALYSIS-OBVIOUSNESS Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as being rendered obvious by Otsuji (Ans. 6). The Examiner finds that “Otsuji teaches a pet excreta treating material comprising a ground material of plant origin as a main component” (id.). The Examiner notes that Otsuji does not teach that the material has properties (1) and (2) as required by claim 1, but concludes that it would have been a predictable variation of the material of Otsuji (id. at 6-7). Appellants assert that the process used to produce the claimed pet excreta material determines whether the material will have properties (1) to (3) as required by claim 1 (App. Br. 11). Appellants point to the Examples in the Specification to demonstrate that the material having the properties required by the claim is obtained by heat treatment after molding (id. at 11- 12). We conclude that Appellants have the better position. The Examiner only provides the conclusory statement that the claimed material would have been a predictable variation of the material of Otsuji, but provides no evidence or scientific reasoning as to why the ordinary artisan would have produced a material having the properties required by claim 1. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (noting that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (Emphasis added.) Appeal 2012-002058 Application 11/814,689 6 We also reverse the rejection as to independent claims 12 and 13, as they require the same properties as claim 1. SUMMARY The rejections on appeal are reversed. REVERSED cdc Copy with citationCopy as parenthetical citation