PAREv.MENGAL et al.

Board of Patent Appeals and Interferences

Aug 21, 2003

09102788 (B.P.A.I. Aug. 21, 2003)

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 57
Filed by: Interference Trial Section Merits Panel
Mail Stop Interference
Board of Patent Appeals and Interferences Filed:
P.O. Box 1450 21 August 2003
Alexandria, VA 22313-1450
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
MAILED
J. R. JOCELYN PARt,
Junior Party, AUG 2
1 2003
PAT& T.M OFFICE (Patent 5,884,417), BOARD OF PATENT APPEALS NDINTERFERENCES
V.
A m,
PHILIPPE MENGAL and BERNARD MOMPON,
Senior Party,
(Application 09/102,788).
Patent Interference No. 104,692
Before: SCHAFER, LEE, and SPIEGEL, Administrative Patent Judpcs.
SCHAFER, Administrative Patent Judge.
DECISION ON PRELIMINARY MOTIONS,
FINAL JUDGMENT AND ORDER
1. The Interference
A. Background
This interference is between Patent 5,884,417 issued to Pard and Application 09/102,788
filed by Mengal. A schedule was set for filing preliminary statements, preliminary motions,
oppositions and replies. Paper 20. The schedule included times for cross-examining witnesses.
Each party has filed preliminary motions. No hearing on motions was requested.
Pard has filed apreliminary motion assertingthat Mengal's involvedclaims are unpatentable.
Paper 40. We deny this motion. Par6 has also filed three motions requesting the benefit of the filing
dates of two earlier U.S. applications and an earlier Canadian application. Papers 4143. We deny
these motions also.
The parties have also filed preliminary statements. Pard's preliminary statement relies upon
the benefit dates of the earlier U.S. and Canadian applications. Paper 32. Par6 does not otherwise
allege a date of invention earlier than the date accorded to Mengal. Since we have denied Pard's
motions for benefit, it is appropriate to award judgment on priority against Pard. In view of the
award of priority against Pard, it is unnecessary to decide Mengal's preliminary motions.
B. Findings of Fact'
1. The Parties
F 1. Par6 is involved based upon Patent 5,884,417.
F 2. Patent 5, 884,417 issued to J. R. Jocelyn Par6 (Par6) based upon Application 08/927,581,
filed I I September 1997.
F 3. The real party in interest of the Par6 patent is said to be Her Majesty the Queen, in Right of
Canada, as represented by the Minister of Environment. Paper 4.
F 4. Mengal is involved based upon Application 09/102,788, filed 23 June 1998 in the names of
Philippe Mengal and Bernard Mompon.
F 5. The real party in interest of the Mengal application is said to be Archimex, a corporation of
France located in Vannes Cedex, France. Paper 9.
The findings herein are supported by a preponderance of the evidence. Additional findings may be
made in the Analysis portions of this opinion.
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F6. The Notice Declaring Interference accorded Par& the benefit ofApplication 08/653,553, filed
24 May 1996. Paper 1.
F 7. Mengal was accorded the benefit of Application 08/553,621, filed 28 November 1995.
Paper 1.
F 8. In view of the earlier effective filing date, Mengal is the senior party.
F9. The sole Count of this interference is the disjunction of Par6's Claims I and 10 and Mengal's
Claims 1, 14, 20 and 29:
Count 1
Claim I or Claim 10 of the Par6 Patent 5,8 84,417 or
Claim I or Claim 14 or Claim 20 or Claim 29 of Mengal Application
09/102,788.
Paper 1, p. 5.
F 10. The claims of the parties which correspond to Count I are:
Par6: 1-15
Mengal: 1-5, 8, 9,11, 14-21, 23-32
Paper 1, p. 5.
Fll. The claims of the parties which do n-ot correspond to Count 1, and therefore are not involved
in the interference, are:
Parý: None
Mengal: None
Paper 1, p. 5.
2. The Subject Matter of the Interference
F 12. The common inventive subject matter of the parties relates to methods and corresponding
apparatus for microwave extraction of a desired product from biological materials.
F 13. The biological material is subject to microwave energy to heat and volatilize the desired
natural product.
F 14. During microwave irradiation, the biological material is subject to cyclically and
intermittently reduced pressure.
F 15. The volatilizable component is then separated to obtain the desired natural product.
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F 16. ParC s claims I and 10 are representative of the parties' subject matter as claimed by Pare
(paragraphing added):
I . In a method for the microwave extraction
of at least one natural product
from a biological material,
said method consisting in:
placing said biological material in an enclosure
without any solvent,
making said biological material present in said enclosure undergo
microwave irradiation
in order to prompt the evaporation of at least a part of
the water contained in said biological
material,
so as to enable the release of at least a part of said natural
product,
separating the residual biological material from the extracted natural
product,
the improvement wherein said method includes the steps of
cyclically intermittently applying reduced pressure
within said enclosure
during said step for the application of microwaves,
heating said enclosure
during at least the essential part of said step for the
application of microwaves,
the combination of said steps for the application of the microwaves,
the application of reduced pressure within the enclosure and
the heating of the enclosure permitting the volatilization of
said natural product from said biological material.
10. A method of microwave extraction
of at least a natural product
from a biological material containing volatilizable components,
comprising
providing a matrix of biological material
having volatilizable components dispersed therein,
treating said matrix with microwave energy
to effect volatilization of at least one of the volatilizable
components from the biological material,
cyclically intermittently applying reduced pressure during the
microwave treatment, and
separating at least one volatilized component
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to obtain at least one natural product from the biological
material.
Paper 6, attachment p. 1-2.
F 17. Mengal's Claim 20 is representative of the parties' invention as claimed by Mengal
(paragraphing added):
20. A method of separating a natural product from a biological material,
the method comprising:
placing the biological material in an enclosure,
the biological material containing water,
the enclosure essentially free of liquid water other than the
water contained in the biological material, and
the enclosure free of organic solvent;
releasing at least part of the natural product from the biological
material
by applying microwave radiation to the biological material,
the microwave radiation effective to
evaporate at least part of the water contained
in the biological material to form
water vapor and
the microwave radiation effective to split the
cellular structure of the biological
material;
intermittently applying reduced pressure within the enclosure
during the application of microwave radiation
to further split the cellular structure of the biological
material induced by application of the
microwave radiation;
hydrodistilling the natural product
by conveying
the natural product and
the water vapor coming from the biological material
as an azeotropic mixture; and
separating the natural product from the azeotropic mixture.
Paper 7, pp. 5-6.
3. Pari's Preliminary Statement
F 18. Par6's preliminary statement relies solely on the filing dates of three earlier applications for
priority - U.S. Applications 08/327,638 and 08/012,475; and a Canadian Application which
is said to have become Canada Patent 2,060,93 1. Paper 32.
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11. Pari's Preliminary Motions
A. Pari's Motion Asserting the Unpatentability of Mengal's Claims
1. Findings of Fact
F 19. Par6 asserts that Mengal's involved claims are unpatentable under 35 U.S.C. § 10 I(a) over
the combination of either of U.S. Patent 5,519,947 (P. Ex.2 2001) or U.S. Patent 5377.426
(P. Ex. 2002) combined with a publication by Gartzler et al. (P. Ex. 200 1) and U.S. Patent
4,882.851 to Wennerstrum (P. Ex. 2004). Paper 40.
F 20. U.S. Patents 5,519,947 and 5,377,426 each issued in the name of J. R. Jocelyn Pard, the
junior party.
a. Mengal's Claimed Subject Matter
F 21. All of Mengal's involved claims require placing a biological material into a container and
subjecting the material to microwaves in order to extract a natural product. Paper 7, pp. 2-9.
F 22. The microwaves are said to cause the evaporation of water in the biological material
resulting in the hydrodistillation of the desired product. E.g., Paper 7, Claim 20, pp. 5-6.
F 23. Mengal's claims also include either or both of two limitations relevant to Pard's motion: 1)
the intermittent application of vacuum or reduced pressure (Mengal Claims 1-5,8,9, 11, and
14-21, 23-30 and 32) and 2) the recovery of the natural product and water in the form of an
azeotropic mixture and that the separation of the natural product from the azeotrope (Mengal
Claims 20, 21, and 23-32). Paper 7, pp. 2-9.
F 24. Mengal's Claim 20 is representative in having both limitations and is reproduced in ý F 15,
above.
b. The Cited Prior Art
1) U.S. Patent 5,377,426 (Pari 426)
F25. Par6 426 relates to microwave assisted generation of volatile components from a variety of
materials. P. Ex. 2002, col. 1, 11. 7-9.
2 "P. Ex." means Part Exhibit.
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F 26. Par& 426 says that there is a need for a method of enhancing the volatility of the volatilizable
substances and for selectively separating the volatile component. P. Ex. 2002, col. 3). 11. 34
47.
F 27. Par& 426 addresses the volatility problem by subjecting the substance to microwave radiation
to enhance the volatility of the desired substance. P. Ex. 2002, col. 2, 11. 13-23.
F 28. Par6 426 describes a process in which a material containing the volatile component is placed
in a container which is then sealed with a selective semipermeable membrane, microwaves
are applied to effect volatilization and the desired volatile components are separated by
passing them through a semi-permeable membrane. P. Ex. 2002, col. 3,11. 43-58.
F 29. The volatilization procedure is said to be preferably performed in a sealed container. P. Ex.
2002, col. 2,11. 23-27.
F 30. Par6 426 says the semipermeable membrane separates the volatile components from the
contents of the container. P. Ex. 2002, col. 6,11. 21-23.
F 31. Par6 426 also describes the use of a sorbent to absorb and separate the volatile components
released by the application of microwaves. P. Ex. 2002, col. 4,11. 37-40.
F 32. The particular sorbent is said to be dependent upon the particular volatile material of interest.
P. Ex. 2002, col. 8,11. 25-M
F 3' ). Par6 426 notes that using the microwave techniques of the invention, volatile components
for a variety of uses may be generated more easily with greater efficiency while allowing for
less error and contamination. P. Ex. 2002, col. 2,11. 13-22.
F 14. Example 2 of Par6 426 states, in relevant part:
Fresh sage, of 80% moisture content, obtained from Saint-Jean-sur-Richelieu,
Quebec, Canada, was chopped coarsely into pieces and subjected to
conventional purge and trap analysis as well as to conventional headspace
analysis. A portion of the same material was inserted into a container. The
container was sealed by a cover through which an orifice had been made. A
commercially available sorbent, in an appropriate container, was fitted from
the inside of the container to the orifice thus creating an hermetic seal. The
container and its contents were then treated by exposure to microwave
radiation for 90 seconds so as to severely disrupt the equilibrium that existed
between the solid plant material and the gases around it. The sorbent was then
eluted and the eluate analyzed by gas chromatography. The results of the
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analysis evidenced the presence of volatile terpenoids as well as less volatile
ones.
It will be evident to those skilled in the art that the choice of sorbent is
dependent upon the nature of the volatiles of interest (in the present example,
a silica sorbent was appropriate). Direct injection of the volatiles without the
use of any trap of any kind (cold or sorbent) is possible by the use of this
invention because ofthe short sampling duration and because of the relatively
small volume of sampling necessary. Purge and trap would not allow such a
direct injection without a cold trap of kind, or of a sorbent. The use of this
invention, in this particular example, showed that a purge and trap analysis
can be performed more rapidly, with less operations (hence reduced risks of
sample loss or sample degradation), at a much reduced cost and with less
energy than conventional technology. Again, the use of this invention
requires less intricate equipment occupying a much reduced space and
obtainable at a much reduced capital cost.
P. Ex. 2002, col. 7,1. 66 - col. 8,1. 42.
F 35. Park 426 does not expressly describe intermittently applying vacuum or reduced pressure
during the exposure to microwaves.
F 36. Park 426 does not expressly describe hydrodistilling the natural product by conveying the
natural product and water as an azeotropic mixture and separating the natural product from
the azeotrope.
2) U.S. Patent 5,519,947 (Park 947)
F 3T Park 947 issued from an application said to be a continuation-in-part of the application that
issued as Park 426. P. Ex. 2001, col. 1, 11. 5-6..
F 38. Park 947 relates to microwave assisted generation of volatile components from a variety of
materials. P. Ex. 2001, col. 1, 11. 10-12.
F 39. Par6 947 says that there is a need for a method of enhancing the volatility of the volatilizable
substances and for selectively separating the volatile component. P. Ex. 200 1, col. 2,11. 1-15.
F 40. Park 947 notes that using the microwave techniques of the invention, volatile components
for a variety of uses may be generated more easily with greater efficiency while allowing for
less error and contamination. P. Ex. 200 1, col. 2, 11. 17-20.
F 41. Park 947 says the volatilization procedure is preferably performed in a sealed container. P.
Ex. 2001, col. 2,11. 25-29.
-8-
F 42. Par6 947 describes a process in which a material containing the volatile component is placed
in a container which is then sealed with a selective semipermeable membrane, microwaves
are applied to effect volatilization and the desired volatile components separated by passing
them through a semi-permeable membrane. P. Ex. 2001, col. 3 ), 11. 36-50.
F41. Par6 947 describes the use of asemipermeable membrane to separate the volatile components
from the contents of the container. P. Ex. 2001, col. 6.11. 21-23.
F 44. Par6 947 also describes the use of a sorbent to absorb and separate the volatile components
released by the application of microwaves. P. Ex. 2001, col. 4,11. 62-64; col. 8,11. 4-11.
F 45. The particular sorbent is said to be dependent upon the particular volatile material of interest.
P. Ex. 2001, col. 8,11. 22-25.
F 46. Par6 947 also describes placing samples into sealed headspace vials and applying microwave
energy. E.g., P. Ex. 2001, col. 7,11. 31-51; col. 8,11. 41-63.
F 47. Par6 947 says that the microwave power applied to a sample in a closed container "was kept
low to minimize the over pressurizing of the headspace vials and the potential for losses due
to leaks or the potential for explosion." P. Ex. 2001, col. 10, 11. 7-9; col. 12,11. 12-14.
F 48. Example 2 of Pard 947 is identical to Example 2 of Pard 426 reproduced above.
F 49. Par6 947 does not expressly describe intermittently applying vacuum or reduced pressure
during the exposure to microwaves.
F 50. Pard 947 does not expressly describe hydrodistilling the natural product by conveying the
natural product and water as an azeotropic mixture and separating the natural product from
the azeotrope.
3) The Ganzier Publication (Ganzler)
F 51. The Ganzler publication relates to a method of preparing samples for chromatography
employing microwave radiation. P. Ex. 2003, p. 299, Summary.
F 52. According to the publication, the samples to be studied are ground and mixed with an
appropriate solvent. P. Ex. 2003, p. 299, Summary.
F 53. The mixture was said to be placed in sealed vials and repeatedly subject to irradiation for
thirty seconds without allowing the mixture to boil and cooling to room temperature. P.Ex.
2003,p.301.
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F 54. The microwaved mixture was then centriftiged to separate the liquids and solids. P. Ex.
2003, p. 299, Summary.
F 55. The liquid was injected into a chromatographic column and the results compared with the
results of conventional (non-microwave) techniques. P. Ex. 2003, pp. 301-3305.
F 56. The authors conclude that microwave assisted extraction was more effective than the
conventional methods and resulted in savings of time an energy. P. Ex. 2002, p. 305.
F 57. Ganzler does not expressly disclose intermittently applying reduced pressure.
4) The Wennerstrum Patent (Wennerstrum)
F 58. The Wennerstrurn Patent relates to a method and apparatus for the batch drying using a
microwave vacuum system. P. Ex. 2004, col. 1, 11. 7-13.
F 59. Wermerstrurn teaches a method including the steps of placing the product to be dried in a
container, placing the container and product into a chamber, pulling a vacuum in the chamber
and applying microwaves to the product until drying is completed. P. Ex. 2004, col. 13,
11. 11-38.
F 60. The vacuum in the chamber is said to be maintained at a constant reduced pressure using a
dual.valve or a diaphragm system. P. Ex. 2004i col. 7,11. 42-68.
F 61. The valves are operated so as to consistently maintain the desired level of vacuum in the
chamber. P. Ex. 2004, col. 7,11. 42-68.
F 62. Wennerstrurn does not expressly disclose intermittent application of reduced pressure.
C. Pari's Position on Intermittent Application of Reduced Pressure
F 63. Pard argues that intermittently applying reduced pressure or vacuum is inherent in the
teachings of Example 2 of the Par6 patents and is also inherent in the Ganzler and
Wermerstrum disclosures. Paper 40, p. 9.
F 64. Pard asserts that both Pard patents and Ganzler employ "conventional microwave ovens" to
provide microwaves. Paper 40, p. 20-2 1.
F 65. Par6 asserts that it is well known that conventional microwave ovens supply microwaves in
pulses, i.e. in repeated on-cycles and off-cycles. Paper 40, p. 20.
F 66. Par6 argues that the Par6 patents and Ganzler teach treating samples in sealed containers with
alternating periods of microwave exposure and non-exposure. Paper 40, pp. 20-21.
_10-
F 67. The alternating periods of exposure and non-exposure are argued to result in alternating
periods of heating and cooling. Paper 40, pp. 20-21.
F 68. Par6 then asserts that the "ideal gas equation" predicts that the pressure in the containers
described in the Pard patents and Ganzler will increase due to the heating and decrease
during cooling when the heat is removed. Paper 40, p. 20.
F 69. The ideal gas equation may be represented by the formula
PV--nRT
where P represents gas pressure, V represents the volume of the gas, n represents the amount
-the number of moles- of gas, R is the universal gas constant and T is the absolute
temperature of the gas.
F 70. The ideal gas equation predicts that for ideal gas systems that if the volume and the amount
of an ideal gas is held constant -as would be the case in a sealed container- the pressure of
the ideal gas will increase proportionally to an increase in temperature of the gas.
F71. With respect to the Par6 patents, Pard specifically argues:
Both Par6'426 or Parý'947 employ conventional microwave ovens to supply
microwave energy to release volatiles in fresh sage in a closed container
(Example 2). As is well known in the art, conventional microwave ovens
supply microwave energy in pulses (i.e., effectivity an on-off cycle that is
repeated throughout the treatment period). During the "on-cycle" of the
microwave energy, the temperatures of both the contents in the container and
the container itself will rise. During the "off-cycle," the temperatures will, of
course, fall since no heating energy will be supplied to the container or its
contents. One of ordinary skill in the art, using the well known ideal gas
equation (Whitten et al.), namely
PV = nRT,
will know that as the temperature of the contents and container are increased
during the "on cycle," the pressure must increase since the volume and
number of moles remain essentially constant. Likewise, one of ordinary skill
in the art will know that as the temperature of the contents and the container
fall during the "off-cycle," the pressure must also fall. Thus, the contents and
the container are exposed to intermittently applied reduced pressure within
the enclosure during the application of microwave energy.
Paper 40, p. 20,
MEMNON
F 72. Par6 also relies on the Ganzler publication's description of repeated cycles of microwave
heating of sealed containers followed by cooling to room temperature as inherently
describing the intermitted application of reduced pressure. Paper 40, p. 2 1.
F 73. According to Pard, "[o]ne having ordinary skill in the art, again applying the ideal gas
equation, would realize that pressure will be cycled up and down during this operation,
thereby supplying the intermittently applied reduced pressure." Paper 40, p. 2 1.
F 74. Pard asserts that the Wermerstrum patent also inherently discloses intermittent application
of reduced pressure. Paper 40, pp. 20-2 1.
F 75. Par6 argues that Wennerstrurn teaches maintaining a constant vacuum pressure in a
microwave drying process by opening and closing a small valve connected to a vacuum.
Paper 40, pp. 20-2 1.
F 76. According to Par6, the opening and closing of the valve results in the application of
intermittent reduced pressure, Paper 40, pp. 20-2 1.
d. Inherency of the Intermittent Application of Reduced Pressure
1) The Pari Patents
F 77. Example 2 of Pari 426 and of Par6 947 does not expressly describe "intermittently applying
a vacuum to the biological material" or "intermittently applying reduced pressure."
F 78. The remaining portions of Pard 426 or 947 do not expressly describe "intermittently applying
a vacuum" or "intermittently applying reduced pressure."
F 79. Neither Par6 426 nor Par 947 mention the use of vacuum or reduced pressure generally in
the specification or specifically in relation to separating volatile components.
F 80. Neither Example 2 of Pard 426 nor Example 2 of Pard 947 expressly describe the source of
the microwaves.
F 81. Neither Example 2 of Pard 426 nor Example 2 of Pard 947 expressly describe the use of a
microwave oven.
F 82. Pard 426 does not include the phrase "microwave oven."
F 81 Par6 426 refers only to a "microwave applicator" as the source of microwave energy. P. Ex.
2002, col. 2,11. 13-22; col. 3,1. 66 - col. 4,1. 33.
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F 84. Par6 947 refers to a "microwave oven" and "microwave applicator" as sources of microwave
energy. P. Ex. 200 1, Example 5, col. I Oý 11. 4-6 and the second Example 4; col. 12.11. 10-12.
F 85. Neither Par6 426 nor Par6 947 include the phrase "conventional microwave oven."
F 86. Pard has not presented any evidence explaining how a person having ordinary skill in the
microwave extraction art would understand the disclosures of the Par6 patents.
F 87. Pard has not presented any evidence explaining the meaning a person having ordinary skill
in the microwave extraction art would give to "microwave applicator" as that phrase is used
in Pard 426.
F 88. Pard has not presented any evidence explaining the meaning a person having ordinary skill
in the microwave extraction art would give to "microwave applicator" and "microwave
oven" as those phrases are used in Par6 947.
F 89. Par6 has not presented any evidence showing the meaning of a "conventional microwave
oven" to a person having ordinary skill in the microwave extraction art.
F 90. Neither Par6 426 nor Par6 947 have been shown to inherently disclose the use of a
conventional microwave oven.
F 91. Neither Par6 426 nor Pard 947 have been shown to inherently describe applying microwaves
in pulses.
F 92. Pard has not provide evidence showing that the ideal gas equation is applicable to predict the
behavior of systems including non-gaseous phases.
F 91. Par6 has not provided evidence showing the ideal gas equation is applicable to systems
including a change of state from solid or liquid to gas.
F 94. Pard has not provided evidence that the ideal gas equation is applicable to predict the
behavior of the mixture of gases in the sealed-containers described by the Par6 patents.
F 95. Neither Pard 426 nor Pard 947 has been shown to inherently describe the intermittent
application of reduced pressure during microwave treatment.
2) The Ganzler Publication
F 96. The Ganzler publication does not expressly describe "intermittently applying a vacuum to
the biological material" or "intermittently applying reduced pressure."
13 -
F 97. The Ganzler publication does not mention the use of a vacuum or reduced pressure in
preparing chromatography samples.
F 98. Par6 has not provided any evidence explaining the content of the Ganzler publication from
the perspective of a person having ordinary skill in the microwave extraction art.
F 99. Par6 has not provided any evidence showing the ideal gas equation applies to the complex
closed system described by Ganzler.
F 100. The Ganzler publication has not been shown to inherently describe applying vacuum or
reduced pressure during microwave treatment.
3) The Wennerstrum Patent
F 101. The Wennerstrum patent does not expressly describe "intermittently applying a vacuum to
the biological material" or "intermittently applying reduced pressure."
F 102. Par6 has not provided any testimony or other evidence explaining how the Wenner-strum
patent would be understood by a person having ordinary skill in the microwave extraction
art.
F 103. Par6 has not provided any evidence showing that one having ordinary skill in the art would
understand Wermerstrum's description of maintaining a "constant reduced pressure" to
necessarily describe "intermittently applying reduced pressure" or "intermittently applying
vacuum."
F 104. The Wennerstrurn patent has not been shown to inherently describe intermittently applying
reduced pressure or vacuum.
e. Conveying an Azeotropic Mixture and Separation from the
Mixture
F 105. With respect to the limitation requiring conveying an azeotropic mixture including the
natural product and separating the product from the azeotrope, Par6 argues:
One of ordinary skill in the art would realize that the formation of an
azeotropic mixture will depend on the inherent nature or ability of the
specific natural product released to form an azeotropic mixture with
water ....
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One of ordinary skill in the art would consider this as part of a standard
separation method for azeotropic mixtures; once the natural product is
collected, one of ordinary skill in the art would know of a number of
techniques to separate the product from the mixture, including azeotropic
mixtures.
Paper 40, p. 14, p. 18, p. 19.
F 106. Par6 has not identified any evidence relating to the use of azeotropic mixtures in microwave
extractions.
2. Analysis
Par6's preliminary motion alleges that all of Mengal's involved claims are unpatentable
under 35 U.S.C. § 103(a) over the teachings of either of two patents issued to Par6 -U.S. Patent
5,519,947 (947) and U.S. Patent 5,377,426 (426)-, in combination with the teachings of a
publication by Ganzler et al (Ganzler) and U.S. Patent 4,882,851 (Wennerstrum). Paper 40, p. 1.
We deny the motion.
Mengal's claims relate to methods and apparatus the for extracting products from biological
materials. Mengal's claims require placing the biological material into a container and subjecting
the materials to microwaves. The application ofmicrowaves is said to result in the hydro-distillation
of the desired product due to the evaporation of water present in the sample. The residual material
is then separated from the desired product. Mengal's claim 20 is representative:
20. A method of separating a natural product from a biological material,
the method comprising:
placing the biological material in an enclosure,
the biological material containing water,
the enclosure essentially free of liquid water other than the
water contained in the biological material, and
the enclosure free of organic solvent;
releasing at least part of the natural product from the biological
material
by applying microwave radiation to the biological material,
the microwave radiation effective to
evaporate at least part of the water contained
in the biological material to form
water vapor and
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the microwave radiation effective to split the
cellular structure of the biological
material;
intermittently applying reduced pressure within the enclosure
during the application of microwave radiation
to further split the cellular structure of the biological
material induced by application of the
microwave radiation;
hydrodistilling the natural product
by conveying
the natural product and
the water vapor coming from the biological material
as an azeotropic: mixture; and
separating the natural product from the azeotropic mixture.
At least two limitations present in Mengal's claims are not expressly taught by the Par6
patents. At least one of these limitations is present in each of Mengal's claims. The first requires
the intermittent application of reduced pressure (or vacuum) during the exposure to microwaves.
Mengal Claims 1-5, 8, 9, 11, 14-21, 23-30 and 32 include this limitation. The other limitation
specifies conveying the natural product and water volatilized by the application of microwaves as
an azeotropic mixture and separating the product form the azeotrope. This limitation is present in
Mengal Claims 20, 2 1, and 23-32.
a. Intermittent Application of Reduced Pressure
With respect to the intermittent application of vacuum or reduced pressure during the
application of microwaves, Par& argues that this limitation is inherent in Example 2 of both Par6
patents.
1) Inherency
Inherency is a question of fact. In re Schreibgr, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997); In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982). To
establish inherency, extrinsic evidence must make clear that the missing descriptive matter is
necessarily present in the disclosure and that it would be so recognized by persons of ordinary skill.
Continental Can Co. v. Monsanto Co., 948 F.2d 1264,1268-69,20 USPQ2d 1746,1749 (Fed. Cir.
1991). Proof of inherency requires evidence that the "necessary and only reasonable construction
to be given the disclosure by one skilled in the art is one which will lend clear support to ... [the]
-16-
positive limitation ...... Kennecott Co1p. v. Kyocera International, Inc. 835 F-2d 1419, 1423, 5
USPQ2d 1194,1198 (Fed. Cit. 1987) guoting Langer v. Kaufman 465 F.2d 915, 918,175 USPQ
172, 174 (CCPA 1972) guotin Binstead v. Littmann, 242 F.2d 766, 770, 113 USPQ 279, 282
(CCPA 1957). In Kennecott, 835 F.2d at 1423, 5 USPQ2d at 1198, the court noted:
The court has generally applied this standard of the "necessary and only
reasonable construction" as a basis for determining whether an application
could, on the basis of an inherent property, support a limitation in an
interference count. [Citations omitted.]
The "necessary and only" requirement precludes reliance on mere probabilities or possibilities. As
noted by the CCPA:
Inherency, however, may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient. [Citations omitted.] If, however, the
disclosure is sufficient to show that the natural result flowing from the
operation as taught would result in the performance of the questioned
function, it seems to be well settled that the disclosure should be regarded as
sufficient.
Inre0elrich,666F.2d578,581,212USPQ323,326(CCPA1981),qU "tin 11anspirgy.Kenungi,
102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939). Thus, it is not sufficient that a person
following the disclosure might obtain the result set forth; it must inevitably hgRRen. Dreyfus v.
Stemau, 357 F.2d 411,415,149 USPQ 63,66 (CCPA 1966) (emphasis added); Crome v. Morrogh,
239 F.2d 390, 392, 112 USPQ 49, 50 (CCPA 1956).
2) Inherency of the Intermittent Application of Reduced
Pressure
Par6 argues:
Both Par6'426 or Par6'947 employ conventional microwave ovens to supply
microwave energy to release volatiles in fresh sage in a closed container
(Example 2). As is well known in the art, conventional microwave ovens
supply microwave energy in pulses (i.e., effectivity an on-off cycle that is
repeated throughout the treatment period). During the "on-cycle" of the
microwave energy, the temperatures ofboth the contents in the container and
the container itself will rise. During the "off-cycle," the temperatures will, of
course, fall since no heating energy will be supplied to the container or its
contents. One of ordinary skill in the art, using the well known ideal gas
equation (Whitten et al.), namely
-17-
PV = nRT,
will know that as the temperature of the contents and container are increased
during the "on cycle," the pressure must increase since the volume and
number of moles remain essentially constant. Likewise, one of ordinary skill
in the art will know that as the temperature of the contents and the container
fall during the "off-cycle," the pressure must also fall. Tbus, the contents and
the container are exposed to intermittently applied reduced pressure within
the enclosure during the application of microwave energy.
Paper 40, p. 20.
With respect to the Par6 patents, Pard's inherency argument employs the following logic:
(1) a person having ordinary skill in the art would recognize that the "microwave oven" and the
"microwave applicator" mentioned respectively in Applications 08/327,638 and 08/012,475 is a
"conventional microwave oven"; (2) conventional microwave ovens supply microwave energy in
pulses, i.e., in on- and off-cycles during treatment; (3) the pulses will result in heating of the sample
and the surrounding gas during the on-cycle and the sample and the surrounding gas will cool during
the off-cycle; (4) the ideal gas equation predicts that during the on-cycle the gas pressure will rise
due to the heating and during the off-cycle the pressure will fall as the gas cools; (5) therefore, the
contents of the container are exposed to intermittently applied reduced pressure during the
application of microwave energy. Paper 41, pp. 4-5.
PaWs argument fails for a number of reasons.
First, Pard has not established that aperson having ordinary skill in the art would necessarily
understand "microwave oven" or "microwave applicator" as used in the Par6 patents to be a
"conventional microwave oven." Par6 has not provided any evidence explaining how a person
having ordinary skill in the microwave extraction art would understand the teachings of the Par6
patents. More particularly Par6 has not directed us to evidence showing that a person having
ordinary skill in the art would understand " microwave applicator" and "microwave oven" as used
in the Par6 patents to describe a "conventional microwave oven." Par6's motion merely makes the
unsupported argument that the Par6 patents teach the use of a "conventional microwave oven."
Argument of counsel cannot take the place of evidence in the record. Estee Lauder v. L'Oreal, S.A.,
129 F.3d 588, 595,44 USPQ2d 1610,1615 (Fed. Cir. 1997); Knorr v. Pearso 617F.2dl368,1373,
213 USPQ 196,200 (CCPA 1982); In re Lange , 503 F.2d 1380,1395,183 USPQ 288,299 (CCPA
1974).
Secondly, Par6 has not directed us to convincing evidence that a "Microwave oven," or
"microwave applicator" as used in the Par6 patents or even "a conventional microwave oven," would
necessarily be operated in a pulsed mode in carrying out the Par6 microwave extractions. In order
to prove inherency the alleged inherent feature must always and necessarily occur. ContinentaIC ,
948 F.2d at 1268-69, 20 USPQ2d at 1749. In order to establish inherent description of the use of
pulsed microwaves, Par6 must establish that the necessary and only reasonable construction of the
Par6 patents is to generate microwaves in pulses. Kennecott 835 F.2d at 1423, 5 USPQ2d at 1198.
Par6 cites U.S. Patents 4,149,057 and4,177,369 (P. Ex. 2007 and 2008), both issuedto Fritts.
The Fritts patents are purported to show that microwave ovens have the capability to operate in a
pulsed mode. Paper 40, pp. 6-8. Those patents appear to be directed to household-type appliances.
E.g., P. Ex. 2007, col. 1, 11. 27-32 and Fig. 1. Par6, however, has not directed us to any evidence
which shows that the microwave ovens described in the Fritts patents are the type one of ordinary
skill art in the microwave extraction art would use to perform the extractions taught in the Par6
patents. In any event, assuming, without deciding, that a person of ordinary skill in the microwave
extraction arts would employ the microwave ovens of the type described in the Fritts patents to carry
out the processes described in the Par6 patents, Par6 has not demonstrated that those microwave
ovens would necessarily be operated in a pulsed mode during the extraction process. While, the
Fritts patents teach that the microwave ovens disclosed therein are capable of operating in the pulsed
mode, they are also capable in operating in a full power mode. E.g. P. Ex 2007, col. 1, 11. 33-40.
Thus, it may be possible to operate the microwave ovens described in the Fritts patents in a pulsed
mode. However, the evidence does not show that a person having ordinary skill in the art would
necessarily use them in a pulsed mode.
Par6 also relies on a publication by Neas et al, (P. Ex. 2009) as supporting the argument that
the microwave oven or applicator disclosed in the Par6 patent would inherently provide microwaves
in pulses. Par& directs us (Paper 40, pp. 7-8) to the portion of the Neas publication which states:
_19-
In microwave systems used for sample preparation, the power output of the
magnetron is controlled by "cycling" the magnetron to obtain an average
power level.
P. Ex. 2009, p. 19.
The Neas publication is apparently Chapter 2 of a book titled "Introduction to Microwave
Sample Preparation - Theory and Practice," published by the American Chemical Society. Chapter
2 is titled "Microwave Heating - Theoretical Concepts and Equipment Design." P. Ex. 2009, p. 7.
The introduction of the paper states:
This chapter discusses the theoretical concepts of dielectric loss, ionic
conduction, dipole rotation and sample size as they relate to microwave
heating for acid dissolutions. The chapter includes the design of microwave
equipment and accessories to meet the heating reguirements for acid
dissolution. These microwave instruments protect the magnetron, prevent
corrosion, and provide for uniform heating.
P. Ex. 2009, p. 7 (emphasis added). Par& has not provided any evidence or any argument on why
one having ordinary skill in the art would understand the microwave oven or microwave applicator
as used in the Par6 patents to have the characteristics of a microwave heater particularly useful for
acid dissolutions. The Neas publication, alone or considered along with the Fritts patents, does not
establish that the microwave heaters in the Par& patents would necessarily be operated in a pulsed
or cycled mode. While it might be possible to use the microwave sources disclosed in Neas and the
Fritts patents, Par6 has not proved that it is necessarily so. Inherency may not be based on
probabilities or possibilities. Oelrich, 666 F.2d at 581, 212 USPQ at 326.
Even if the Par6 patents inherently disclosed treatment with microwave pulses, Par6 has not
established that those pulses would necessarily result in intermittently reduced pressure during the
exposure to microwaves. Par6 has not directed us to evidence showing that the ideal gas equation
predicts the behavior of the complex systems described, for example, in the Pard Example 2.
Example 2 describes putting fresh sage into a sealed container system including a sorbent. The
contents of the container were exposed to microwaves for 90 seconds to volatilize terpenoids present
in the sage. The terpenoids were absorbed by the sorbent. P. Ex. 2002, col. 7,1. 66 - col. 8,1. 42.
Thus, Pard Example 2 describes a container including both gases and solids and in which gas (the
Volatiles terpenoids) are both added to the mixture by volatilization and deleted from the mixture
-20-
through the selective semi-permeable membrane. Pare' has not presented evidence or argument
showing that the ideal gas equation may be relied upon to adequately predict the behavior of such
a system.
Par& also relies on Wennerstrum and Ganzler to suggest or teach the application of reduced
pressure during the application of microwaves.
With respect to Ganzler, Par6 does not argue that Ganzler expressly teaches the use of
reduced pressure while microwaves are being applied. Rather, it is asserted that the references
inherently disclose using reduced pressure. The argument supporting inherency is the same as relied
upon with respect to the Par6 patents -that Ganzler's description of repeated application of
microwaves to a material in a closed container and the ideal gas equation indicate the intermittent
application of reduced pressure. Our reasoning as to why the Par6 patents do not inherently descr ibe
the use of reduced pressure during the application of microwaves applies with equal force to the
Ganzler publication. Ganzler teaches a microwave extraction process in which samples ofbiological
materials are ground, suspended in a solvent, sealed in screw-cap vials, and subject to repeated
cycles of thirty seconds of microwave radiation and cooling to room temperature. The suspension
was not allowed to boil during irradiation. The suspensions were then centrifuged and the liquid
portion analyzed. As with the Par6 patents, Par6 has not presented arguments or evidence showing
the ideal gas equation is suitable to predict the behavior of the gases in a complex system including
gas, liquid and solvent described by Ganzler.
Par6 also relies on Wennerstrurn as teaching the intermittent application of reduced pressure
limitation. Wennerstrum relates to processes and apparatus for microwave vacuum drying. The
patent teaches a method including the steps of placing the product to be dried in a container, placing
the container and product into a chamber, pulling a vacuum in the chamber and applying microwaves
to the product until drying is completed. P. Ex. 2004, col. 13,11. 11-38. The vacuum in the chamber
is maintained at a constant reduced pressure using a dual valve or a diaphragm system. The valves
are operated so as to consistently maintain the desired vacuum in the chamber. P. Ex. 2004, col. 7,
11. 42-68. Par6 argues that the step of intermittently applying reduced pressure within the enclosure
is inherently taught by Wennerstrum. Referring specifically of Column 7, lines 42-63 of
Wennerstrurn Par& specifically argues that
21-
MENNEN
[Wennerstrurn] preferably operates at a constant pressure during microwave
irradiation by operating the vacuum pump 40 continuously and opening and
closing the small valve 98 as necessary throughout the drying operation[.
Wennerstrurn] must continuously apply additional vacuum to maintain
constant pressure as temperature rises due to microwave energy (based on
ideal gas equation); thus, applying reduced pressure to compensate for
increases in pressure due to temperature increases ....
Paper 40, p. 14 (emphasis added).
We fail to see how the teaching of maintaining a constant reduced pressure in
Wennerstrum's chamber necessarily describes the intermittent application of reduced pressure as
required by Mengal's involved claims. Wennerstrum's goal is to keep the pressure constant. Par6
has not directed us to any evidence relating to how a person having ordinary skill in the microwave
extraction art would understand the Wennerstrum. patent. Par6 has not provided any evidence which
supports finding that a person having ordinary skill in the art would understand Wennerstrum to
teach the intermittent application of reduced pressure. Again all we are offered is attorney argument.
The intermittent application of reduced pressure has not been proved to be inherently disclosed in
Wennerstrum.
I b. Obviousness of Intermittent Application of Reduced Pressure
Par6 asserts that Mengal's involved claims are obvious over the combination of each of the
Pari patents with Ganzler and Wennerstrum. Assuming that Ganzler and Wennerstrurn inherently
teach intermittently applying reduced pressure, Par6 has not explained why the person of ordinary
skill in the art would have recognized and appreciated this step. The fact that a feature may be
inherent does not mean it would have been obvious. Inherency and obviousness are distinct
concepts. Kloster Speedsteel A.B v. Crucible Inc., 793 F.2d 1565,1576,230 USPQ 81, 88 (Fed. Cir.
1986); W. L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1555, 220 USPQ 303, 314
(Fed. Cir. 1983) (citing In re Spormann 363 F.2d 444, 448, 150 USPQ 449, 452 (1966)), cert.
105 S. Ct. 172 (1984). Thatwhichmaybe inherent is not necessarily known. Spormann 363
F.2d at 448, 150 USPQ at 452. Obviousness cannot be predicated on what is unknown. Spormann
id. Par6 has not directed us to any evidence establishing that a person having ordinary skill in the
art would have known that Ganzler and Wennerstrum intermittently apply reduced pressure during
the exposure to microwaves.
-22-
Additionally, assuming Ganzler and Wennerstrum evidence that it was known to
intermittently apply reduced pressure during the microwave treatment, Par6 has not explained the
motivation for combining the teachings of Ganzler and Wennerstrum with the teachings of the Par6
patents. ."Obviousness cannot be established by combining the teachings of the prior art to produce
the claimed invention, absent some teaching, suggestion or incentive supporting the combination."
In re Ngpig, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995); In re Bon 910 F.2d 83 1,
834, 15 USPQ2d 1566, 1568 (Fed. Cir. 1990) (guoting Carella v. Starlight Archery and Pro Line
Co., 804 F.2d 135, 140, 231 USPQ 644, 647 (Fed. Cir. 1986)). %ile Par& argues that "these
references teach that such procedures result in significantly improved process for release of
volatiles" (Paper 40 p. 21), our reading of the references indicates that the specified benefits
(Ganzler, p. 305, 1` full 1; Par6 426, col. 8,11. 34-42; Pare' 947, col. 8,11. 32-38) are taught to be
attributable to the use of microwaves not to the use of intermittently applied reduced pressure. Par6
has failed to direct us to evidence of sufficient character and weight to establish motivation to
modify the process and apparatus described in the Par6 patents. "The absence of such a suggestion
to combine is dispositive in an obviousness determination." Gambro Lundia AB v. Baxt
Healthcare Corp., 110 F.3d 1573, 1579, 42 USPQ2d 1378, 1383 (Fed. Cir. 1997); SmithKline
Diaimostics, Inc. v. Helena Lab. CoW., 859 F.2d 878, 886-87, 8 USPQ2d 1468, 1475 (Fed. Cir.
1988).
C. Obviousness of Using an Azeotropic Mixture
Par6 claims 20, 21 and 23-32 include an additional difference not disclosed by the Par6
patents: "conveying the natural product and the water vapor coming from the biological material
as an azeotropic mixture; and separating the natural product from the azeotropic mixture." Par& has
not directed us to any evidence relating to this limitation. Par6 argues:
One of ordinary skill in the art would realize that the formation of an
azeotropic mixture will depend on the inherent nature or ability of the
specific natural product released to form an azectropic mixture with
water ....
One of ordinary skill in the art would consider this as part of a standard
separation method for azeotropic mixtures; once the natural product is
collected, one of ordinary skill in the art would know of a number of
-23-
techniques to separate the product from the mixture, including azeotropic
mixtures.
Paper 40, p. 14, p. 18, p. 19. Par& has not provided any evidence supporting these assertions. Par6's
attorney argument can not take the place of evidence lacking in the record. Estee Laud 129 F.3d
at 595, 44 USPQ2d at 1615. The burden of proof is on the moving party. 37 CFR § 1.637(a).
Additionally, Par6 has not proved or explained the motivation to modify the teachings of the
Par6 patents by incorporating the use of an azeotropic mixture as part of the extraction technique
taught by the Par6 patents. The absence of motivation is dispositive of the obviousness question.
GambroLundi ll0F.3datl579,42USPQ2datl383.
d. Obviousness of the Subject Matter of Mengal's Involved Claims
PaWs Preliminary Motion UnderRule 633(a) (Paper40) fails to make out aprima facie case
of unpatentability of Mengal's involved claims. The motion is therefore denied. Since Par6 failed
to make out a prima facie case for relief, it was unnecessary for us to consider Mengal's opposition
(Paper 45) or PaWs Reply (Paper 49).
B. ParVs Preliminary Motions for Benefit
I . Findings of Fact
F 107. Par6 filed three preliminary motions seeking the benefit of the filing dates of the three earlier
applications Papers 41-43.
F 108. Par6's motions for benefit assert, respectively, that U.S. Applications 08/327,638 and
08/012,475 and the earlier Canadian application constitute constructive reductions to practice
of the subject matter of PaWs Claims I and 10, which are alternatives of the count. Paper
43, pp. 2-4; Paper 42, pp. 2-4; Paper 4 1, pp. 2-6.
8. The Proposed Benefit Applications
F 109. Application 08/653,553, forwhichPar6was accorded benefit, is said to be a continuation-in
part of Application 08/327,638, filed 24 October 1994.
F 110. Application 08/327,638, is saidto be a continuation-in-part of Application 08/012,475, filed
2 February 1993.
F 111. Application 08/327,638 became the Par6 947 patent.
F 112. Application 08/012,475 became the Par6 426 patent.
-24-
F 113. The written descriptions of Park 947 and Park 426 appear to be essentially identical to the
written descriptions of Applications 08/327,638 and 08/012,475.
F 114. The Canadian application is said to have been filed 10 February 1992 .3
b. Park's Arguments for Benefit
F 115. Park's Claims I and 10 each include a limitation requiring the cyclical and intennittent use
of reduced pressure "during the step for the application of microwaves" and "during the
microwave treatment," respectively. Paper 6, attachment pp. 1 and 2 (emphasis added).
F 116. None of the proposed benefit applications expressly disclose these limitations.
F 117. Par6 asserts that these limitations are inherent in the disclosures of the Park benefit
applications. Paper 43, pp. 3 and 4; Paper 42, pp. 3 and 4; Paper 41, pp. 3 and 4.
F 118. In particular, Park argues that the limitation "cyclically intermittently applying reduced
pressure in the enclosure during the step for the application of microwaves" (Park Claim 1)
and "cyclically intermittently applying reduced pressure during the microwave treatment"
(Park Claim 10) are inherently disclosed in each of the proposed benefit applications. Paper
43, pp. 3 and 4; Paper 42, pp. 3 and 4; Paper 41, pp. 3 and 4.
F 119. Park's arguments for inherency are essentially the same as made with respect to Pard's
preliminary motion alleging Mengal's claims are unpatentable.
F 120. The findings, above, relating to the Park patents and the alleged inherent disclosure of
intermittent reduced pressure are also applicable to PaWs motions for benefit. See T$ F 77
F 95, above.
F 121. In particular, Park argues that one having ordinary skill in the microwave extraction art
would recognize that the Par6 applications to use a conventional microwave oven; that a
conventional microwave oven applies microwaves in pulses; and that the ideal gas equation
3 Par6 has submitted a document said to be a copy of the Canadian application. P. Ex. 2010. This
document has not been authenticated and is not admissible into evidence. 37 CFR 1.671; Fed R. Evid. 901. The
document is not self authenticating. Fed. K Evid. 902. Nor is the document identical in content to Canadian Patent
2,060,913 (document available through the Canadian Intellectual Property Office at
http://patentsl.ic.gc.ca/details9patent-number--206093I&Ianguage=EN). For the reasons stated below, PaWs
preliminary motion for benefit of the Canadian application (Paper 41) is denied for failure of proof It is noted,
however, that the content of P.Ex 2010 appears to be substantially identical to U.S. Application 08/012,475. Thusthe
comments we make herein with respect to Application 08/012,475 would also apply to the P.Ex. 2010.
-25-
predicts that the pressure in the sealed containers described in the applications would rise and
fall with the microwave pulses resulting in the cyclical and intermittent application of
reduced pressure. Paper 41, pp. 4-5.
F 122. Each benefit motion identically refers to Example 2 of each application for inherent support
for the cyclical and intermittent application of reduced pressure as follows:
Inherently disclosed in Example 2 - conventional microwave ovens supply
microwave energy in pulses such that temperature rises during application of
microwave energy and then falls during absence ofmicrowave energy; based
on ideal gas law, pressure must rise and fall with changes in temperature ....
Paper 43, pp. 3 and 4; Paper 42, pp. 3 and 4; Paper 41, pp. 3 and 4.
F 123. Example 2 in each application appear to be identical and a duplicate of Example 2 in the Par6
patents reproduced in T F35, above.
F 124. Par6 Example 2 does not inherently disclose the use of vacuum or reduced pressure as part
of the extraction process. See 11 F 77 - F 95, above.
F 125. Each motion also relies on at least one additional portion of the potential benefit applications
in asserting inherency of intermittently applying reduced pressure. Paper 43, pp. 3 and 4;
Paper 42, pp. 3 and 4; Paper 41, pp. 3 and 4.
F 126. Using language that is identical except for identification of the specific column or page, each
motion argues that the applications disclose a process requiring multiple applications of
microwaves and that the ideal gas law predicts a rise and fall in temperature and pressure in
the treatment container:
[citation deleted4]- matrix samples are subjected to two microwave treatments
(first and second "exposure steps") within a closed container; during period
between microwave treatment, temperature will drop and, based on ideal gas
law, pressure must also drop ....
Paper 43, pp. 3 and 4; Paper 42, pp. 3 and 4; Paper 41, pp. 3 and 4.
F 127. PaWs Third Preliminary Motion under 37 C FR § 1.633(f) (Paper 43) relies on a additional
disclosure which is apparently only present in U.S. Application 08/327,638:
4 Ile motions cite to the Par6 patents rather than to the Par6 applications. Paper 43 refers to col. 3, line
57, through col. 4, line 7 of Pari 947. Paper 42 refers to col. 4, line 66, through col. 5, line 19 of Par6 426. Paper 41
refers to page 3, lines 7-20 of P.Ex. 2010.
-26-
Examples 5 and 6 (mislabeled as Example 4 at col. 11, line 58) - provides
cycles of microwave irradiation and spinning (15 see irradiation, 5 see
spinning, 15 see irradiation, 5 see spinning) (col. 10, lines 13-20; col. 12,
lines 19-25); during spinning periods (i.e., no irradiation), temperature will
drop and, based on ideal gas law, pressure must also drop.
Paper 43, pp. 3 and 4.
F 128. Par6 has not provided any evidence explaining the content of the Par6 applications from the
perspective of a person having ordinary skill in the microwave extraction art.
F 129. Par6 has not provided any evidence showing that the ideal gas equation may be relied upon
to predict the behavior of the gases subject to multiple exposure to microwaves described in
the Par6 applications.
F 130. The Par6 applications have not been shown to inherently describe applying vacuum or
reduced pressure during microwave treatment.
F 131. Par6 has not proved that U.S. Applications 08/327,638 and 08/012,475 inherently describe
a process which includes cyclically and intermittently applying reduced pressure during the
microwave treatment.
F 132. Par6's involved application is not entitled to the benefit of the filing dates of U.S.
Applications 08/327,638 and 08/012,475.
2. Analysis
Par6moves for the benefit of the filing date ofU.S. Applications 08/327,638 and08/012,475
and of a Canadian application. Papers 41-43. We deny Par6's preliminary motions.
None of the proposed benefit applications expressly disclose the cyclical and intermittent
application of reduced pressure. Par6 asserts that the limitation "cyclically intermittently applying
reduced pressure within said enclosure during said step for the application of microwaves" in Par6
Claim I and the limitation "cyclically intermittently applying reduced pressure during the microwave
treatment" in Par6 Claim 10 are inherently described in the disclosures of the potential benefit
applications.
a. The Benefit of the Filing Date of the Canadian application
Par6's preliminary motion for benefit of the filing date of the Canadian application (Paper
43) relies on P. Ex. 2010 which purports to be a copy of a Canadian application. However, the
-27-
document has not been authenticated and is therefore inadmissible. See Note 3, above. The
inadmissibility of the P. Ex. 2010 leaves Park without any evidence supporting entitlement to the
filing date of the Canadian application, The moving party bears the burden of proof 37 CFR
§ 1.637(a). Park preliminary motion for the benefit of the Canadian application is denied.
b. The Benefit of the Filing Date of Park's U.S. Applications
1) Benefit for the Purposes of Priority in an Interference
In order to be entitled to the benefit of the filing date of an earlier application, the earlier
application must be a constructive reduction to practice of the subject matter of the count. 37CFR
§ 1.637(f)(3). The desired benefit application must describe the subject matter of the count and
provide an enabling disclosure of it. Hyatt v. Boone, 146F.3d 1348,1352, 47USPQ2dll28,1130
(Fed. Cir. 1998); Fiers v. Revel, 984 F.2d 1164, 1170, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993).
However, these requirements need to be met only with respect to a single embodiment within the
scope of the count. Weil v. Fritz, 572 F.2d 856, 865-66 n.16, 196 USPQ 600, 608 n.16 (CCPA
1978); Hunt v. Trgpi2schuh, 523 F.2d 1386,1389,187USPQ 426,429 (CCPA 1975). Asnotedin
Hunt, 523 F.2d at 1389, 187 USPQ at 429, a constructive reduction to practice requires that "§ 112,
first paragraph requirements need only be met for an embodiment within the count" 523 F.2d at
13899 187 USPQ at 429 (emphasis added). See also, Utter v. Hirag 845F.2d993,998, 6USPQ2d
1709, 1714 (Fed. Cir. 1988) (benefit of the filing date of an earlier application properly accorded
where the earlier application described a species encompassed by the generic count) and Weil, 572
F.2d at 865 n. 16, 196 USPQ at 608 n. 16 (as Hunt explains, "the § 112, first paragraph requirements
need only be met for an embodiment within the count").
2) The Benefit of Park's U.S. Applications
The count is the disjunction of Park Claims I and 10 and Mengal's Claims 1, 14, 20 and 29,
Thus, to prove a constructive reduction to practice, Park must show that each earlier application
describes an embodiment within the scope of at least one of these claims. Park limits the argument
to the count alternatives of Park Claims I and 10. Accordingly, we limit our discussion to those
claims.
Par6 does not argue that an embodiment within the count is expressly disclosed by each
benefit application. Rather, it is asserted that certain of the limitations of Claims I and 10 are
-28-
inherently described in the proposed benefit applications. PaWs arguments on inherency essentially
parallel those made in PaWs motion forjudgment against Mengal's claims. Par6's motion fails to
set out a prima facie case for substantially the same reasons.
With respect of Example 2 of the Par6 application, Par6 employs the following logic: (1) a
person having ordinary skill in the art would recognize that the "microwave oven" and the
.,microwave applicator" mentioned inApplications 08/327,638 and 08/012,475 was a "conventional
microwave oven"; (2) conventional microwave ovens supply microwave energy in pulses, i.e., in
on- and off-cycles during treatment; (3) the pulses will result in heating of the sample and the
surrounding gas during the on-cycle and the sample and the surrounding gas will cool during the off
cycle; (4) the ideal gas law predicts that during the on-cycle the gas pressure will rise due to the
heating and during the off-cycle the pressure will fall as the gas cools; (5) therefore, the contents of
the container are exposed to cyclically and intermittently applied reduced pressure during the
application of microwave energy. Paper 41, pp. 4-5.
As with the Par6 patents, Par6 has not provided any evidence on how a person having
ordinary skill in the microwave extraction art would understand the Par6 applications. Thus, Par6
has not established that a person having ordinary skill in the art would necessarily understand
"microwave oven" or "microwave applicator" to be a "conventional microwave oven." Par6 has also
not established that "a conventional microwave oven," a "Microwave oven," or a "Microwave
applicator" would necessarily operate in a pulsed mode. Even if the potential benefit applications
inherently disclosed treatment with microwave pulses, Par6 has not established that those pulses
would necessarily result in cyclically intermittently reduced pressure during the exposure to
microwaves as required by PaWs Claims 1 and 10 because Par6 has not established that the ideal
gas equation predicts the behavior of gases in the systems and conditions described in the Par6
applications.
With respect to the other portions of the Par6 applications disclosing the repeated microwave
treatments, this argument also depends on the applicability of the ideal gas equation. Par6 has not
demonstrated that the equation may be used to describe the behavior of the systems of the type
described in the applications. Thus, both applications include the description of a system in which
a solid or liquid matrix including volatilizable material is placed in a container sealed with a
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selective permeable membrane that allows the selective passage at least one of the volatilizable
materials. P. Ex. 2001, col. 3, 11. 57-67; P. Ex. 2002, col. 3, 11. 50-53. Par6 has not presented
evidence that the ideal gas equation is applicable to a system which includes solid and liquid phases
in addition to a mixture of gases and in which gas is both generated and removed from the system.
The same is true for the additional disclosure only present in Application 08/327,638. P. Ex. 2001,
col. 11, 1. 59 - col. 12,1. 30. The systems there disclosed include both solid (soil), liquid (methanol)
and multiple gases as well as changes in state due to the application of microwaves. Par6 has failed
to prove that the ideal gas equation describes the behavior of such a system. Thus, Par6 has failed
to prove that the processes described in the Par6 applications necessarily will result in the cyclical
and intermittent application of reduced pressure during the microwave treatment.
PaWs preliminary motions for benefit (Paper 41-43) fail to make out a prima facie case of
entitlement for benefit and are, therefore denied. Since PaWs benefit motions did not make out a
prima facie case, it was unnecessary to and we have not, considered Mengal's oppositions or PaWs
replies to the oppositions.
FINAL JUDGMENT
Par& is thejunior party in this interference. PaWs preliminary statement relies for priority
on the benefit of the filing dates of Applications 08/327,638 and 08/012,475 and the Canadian
Application. Par6's motions for benefit of those applications were denied. Thus, Par6 can not
prevail on priority and it is appropriate to enterjudginent on priority at this time. Since all of PaWs
involved claims are unpatentable under 35 U.S.C. § 102(g), it is unnecessary to consider Mengal's
preliminary motions.
ORDER
It is
ORDERED that judgment on priority as to Count 1, the only count in this interference, is
awarded against junior party J. R. JOCELYN Par6;
FURTHER ORDERED thatjunior party, J. R. JOCELYN Par6, is not entitled to a patent
containing Claims 1-15 of Patent 5,884,417 which correspond to Count 1;
FURTHER ORDERED that if there is a settlement agreement and it has not already been
filed, attention is directed to 35 U.S.C. § 135(c) and 37 CFR § 1.661; and
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FURTHER ORDERED that a copy ofthis decisionbe given appropriate papernumbers and
entered into the file records of Patent 5,884,417 and Application 09/102,788.
RICHARD E. SCHAFER
Administrative Patent Judie
BOARD OF PATENT
ýON LEE ) APPEALS AND
VA mistrative Patent Judge ) INTERFERENCES
4
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CAROL A. SPIWELc/
Administrative Patent Judge
cc (via FedEx):
Attorney for PARL Attorney for MENGAL:
Kenneth H. Samples, Esq. Phillip F. Fox, Esq.
Richard A. Kaba, Esq. THE KINNEY & LANGE
FITCH EVEN TABIN & BUILDING
FLANNERY 312 South Third Street
120 South LaSalle St., Suite 1600 Minneapolis, MN 55415-1659
Chicago, IL 60603
Fax: 612-339-6580
Fax: 312-577-7007
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