Ex parte AIBE

Board of Patent Appeals and Interferences

Feb 10, 1998

08093664 (B.P.A.I. Feb. 10, 1998)

Application for patent filed July 20, 1993. According to1
the appellant, the application is a continuation of Application
No. 07/793,107, filed November 15, 1991, now abandoned.
Claim 26 was amended subsequent to the final rejection.2
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journal and (2) is not binding precedent of the Board.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. 51
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TOSHIO AIBE
____________
Appeal No. 96-3841
Application No. 08/093,6641
____________
HEARD: February 5, 1998
____________
Before CALVERT, ABRAMS, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 5 to 9, 13, 16, 17, 23, 25 and 26. 2
Claims 3, 4, 18 to 22, 24, 27 and 28 have been withdrawn from
consideration under 37 CFR § 1.142(b) as being drawn to a
nonelected invention. Claims 10 to 12, 14 and 15 have been
canceled.
Appeal No. 96-3841
Application No. 08/093,664
We REVERSE.
Appeal No. 96-3841 Page 3
Application No. 08/093,664
Our understanding of this foreign language document is3
based upon the translation dated April 1993 supplied by the PTO
during prosecution of this application.
BACKGROUND
The appellant's invention relates to a deodorizing apparatus
and toilet. An understanding of the invention can be derived
from a reading of exemplary claims 1 and 23, which appear in the
appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Mizutani 52-63882 May 26, 19773
(Japan)
Aibe et al. (Aibe) 2,088,719 June 16, 1982
(United Kingdom)
Sadao et al. (Sadao) 0,331,192 Sept. 6, 1989
(European Patent Application)
Masuda 1-268929 Oct. 26, 1989
(Japan)
Claims 1, 2, 5 to 9, 13, 16, 23, 25 and 26 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Sadao in view of
Mizutani and Aibe.
Appeal No. 96-3841 Page 4
Application No. 08/093,664
Claim 17 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Sadao in view of Mizutani, Aibe and Masuda.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the § 103 rejections, we
make reference to the examiner's answer (Paper No. 36, mailed May
5, 1995) and the supplemental examiner's answer (Paper No. 42,
mailed May 16, 1996) for the examiner's complete reasoning in
support of the rejections, and to the appellant's brief (Paper
No. 34, filed March 20, 1995), reply brief (Paper No. 37, filed
July 5, 1995) and supplemental reply brief (Paper No. 43, filed
July 16, 1996) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 96-3841 Page 5
Application No. 08/093,664
Before addressing the examiner's rejections based upon prior
art, it is an essential prerequisite that the claimed subject
matter be fully understood. Analysis of whether a claim is
patentable over the prior art under 35 U.S.C. §§ 102 and 103
begins with a determination of the scope of the claim. The
properly interpreted claim must then be compared with the prior
art. Claim interpretation must begin with the language of the
claim itself. Smithkline Diagnostics, Inc. v. Helena Labs.
Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988).
Accordingly, we will initially direct our attention to each of
the independent claims on appeal (i.e., claims 1, 23 and 26).
These claims each recite that the deodorizing apparatus includes,
inter alia, an active carbon honeycomb and a phosphoric acid-
supporting active carbon honeycomb disposed in that order in a
gas duct in the direction from the suction port to the exhaust
port.
An issue presented by this recitation in each of the
independent claims on appeal is can "the active carbon honeycomb"
which precedes "the phosphoric acid-supporting active carbon
honeycomb" be a chemical-supporting active carbon honeycomb?
More specifically, would this recitation be interpreted as
Appeal No. 96-3841 Page 6
Application No. 08/093,664
reading on two phosphoric acid-supporting active carbon
honeycombs in series between the suction port and the exhaust
port of a deodorizing apparatus?
In proceedings before the PTO, claims in an application are
to be given their broadest reasonable interpretation consistent
with the specification, and claim language should be read in
light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218
USPQ 385, 388 (Fed. Cir. 1983). Our review of the appellant's
specification (especially pages 5-7 and 29-33 and particularly
page 33, lines 11-14) reveal that the appellant used "active
carbon honeycomb" to distinguish it from "chemical-supporting
active carbon honeycomb." In accordance with the above-
identified principle, we interpret claims 1, 23 and 26 as setting
forth that a nonchemical-supporting active carbon honeycomb and a
phosphoric acid-supporting active carbon honeycomb are disposed
in that order in a gas duct in the direction from the suction
port to the exhaust port of the deodorizing apparatus.
Appeal No. 96-3841 Page 7
Application No. 08/093,664
In rejecting claims under 35 U.S.C. § 103, the examiner4
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness
is established by presenting evidence that the reference
teachings would appear to be sufficient for one of ordinary skill
in the relevant art having the references before him to make the
proposed combination or other modification. See In re Lintner, 9
F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
With respect to the appealed claims, we agree with the
examiner that it would have been prima facie obvious in view of4
the combined teachings of the applied prior art to modify Sadao's
toilet deodorizing apparatus to arrive at the claimed invention.
Having arrived at the conclusion that the teachings of the
applied prior art are sufficient to establish a prima facie case
of obviousness, we recognize that the evidence of nonobviousness
submitted by the appellant must be considered en route to a
determination of obviousness/nonobviousness under 35 U.S.C.
§ 103. See Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 218
USPQ 871 (Fed. Cir. 1983). Accordingly, we consider anew the
issue of obviousness under 35 U.S.C. § 103, carefully evaluating
therewith the objective evidence of nonobviousness supplied by
the appellant. See In re Oetiker, 977 F.2d 1443, 1445-46, 24
USPQ2d 1443, 1444-45 (Fed. Cir. 1992); In re Piasecki, 745 F.2d
1468, 223 USPQ 785 (Fed. Cir. 1984).
Appeal No. 96-3841 Page 8
Application No. 08/093,664
Declarations filed September 19, 1994 and July 5, 1995.5
Apparatus E was a deodorizing apparatus wherein the active6
carbon honeycomb preceded the phosphoric acid-supporting active
carbon honeycomb.
In this case the appellant has submitted evidence in the
form of two declarations from the appellant to establish5
unexpected results.
It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory
statements in the specification does not suffice. In re De
Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
Furthermore, as stated in De Blauwe, 736 F.2d at 706 n. 8, 222
USPQ at 197 n. 8, "A proper showing of unexpected results will
rebut a prima facie case of obviousness. In re Fenn, 639 F.2d
762, 208 USPQ 470 (CCPA 1981); In re Murch, 464 F.2d 1051, 175
USPQ 89 (CCPA 1972)."
The two declarations, taken together, set forth factual
evidence as set forth in Table 1 of the declaration filed on
September 19, 1994. The factual evidence establishes that
Apparatus E provided a 100% elimination rate for H S, CH SH and6 2 3
Appeal No. 96-3841 Page 9
Application No. 08/093,664
Apparatus F was a deodorizing apparatus wherein the7
phosphoric acid-supporting active carbon honeycomb preceded the
active carbon honeycomb.
We note that Mizutani specifically teaches that the order8
of his acid-treated, alkali-treated, and untreated active carbon
elements is arbitrary.
NH , while Apparatus F provided a 100% elimination rate for NH3 37
but well less than a 100% elimination rate for H S and CH SH. 2 3
The declarant concluded from the factual evidence that the
present invention produces unexpected results.8
When the appellant demonstrates substantially improved
results, as the appellant did here, and states that the results
were unexpected, this suffices to establish unexpected results in
the absence of evidence to the contrary. See In re Soni, 54 F.3d
746, 751, 34 USPQ2d 1684, 1688 (Fed. Cir. 1995). The examiner
has not provided any persuasive basis to question the comparative
data and assertion that the demonstrated results were unexpected.
Thus, we are persuaded that the examiner's determination that the
evidence contained in the two declarations was insufficient to
rebut the examiner's prima facie case of obviousness was
erroneous.
Appeal No. 96-3841 Page 10
Application No. 08/093,664
CONCLUSION
To summarize, the decision of the examiner to reject claims
1, 2, 5 to 9, 13, 16, 17, 23, 25 and 26 under 35 U.S.C. § 103 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 96-3841 Page 11
Application No. 08/093,664
FOLEY & LARDNER
3000 K STREET N.W.
SUITE 500
WASHINGTON, DC 20007-5109
APPEAL NO. 96-3841 - JUDGE NASE
APPLICATION NO. 08/093,664
APJ NASE
APJ CALVERT
APJ ABRAMS
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 06 Feb 98
FINAL TYPED:
HEARD: 05 Feb 98
3 MAN CONF.