Ex parte Gross

Board of Patent Appeals and Interferences

Apr 15, 1998

08164112 (B.P.A.I. Apr. 15, 1998)

Application for patent filed December 7, 1993. 1
According to appellant, this application is a continuation-in-
part of Application 07/858,477 filed March 27, 1992, now
abandoned.
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not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES R. GROSS
__________
Appeal No. 97-2554
Application No. 08/164,1121
__________
ON BRIEF
__________
Before CALVERT, MEISTER and McQUADE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-2554
Application No. 08/164,112
Claim 20, also finally rejected, was cancelled by the2
amendment filed on February 12, 1996 (Paper No. 19). This
amendment also amended claim 1, thereby overcoming a rejection
of claim 1 under 35 U.S.C. § 112, first paragraph, “with
respect to the % by wt of hydrogel material” (Advisory Action,
March 5, 1996 (Paper No. 20)).
2
This is an appeal from the final rejection of claims 1, 3
to 7 and 10 to 16. The other claims remaining in the2
application, claims 21 to 37, stand withdrawn from
consideration under 37 CFR 1.142(b) as being directed to a
nonelected invention.
Claim 1, the only independent claim on appeal, reads:
1. A method for reducing malodor associated with a
disposable absorbent product intended for the absorption of
body fluid, said method comprising the step of:
applying to said absorbent product comprising an
absorbent structure exhibiting a weight and comprising from
about 30 to 100 weight percent, based on total weight of the
absorbent structure, of a hydrogel-forming polymeric material,
prior to use of the absorbent product, a surface-active agent
having a hydrophilic/lipophilic balance (HLB) of less than
about 12 in an amount effective to reduce urine odor wherein
said surface-active agent is applied to the absorbent product
in an amount of from about 0.005 to about 25 weight percent
based on total weight of the hydrogel-forming polymeric
material.
Claims 1, 3 to 7 and 10 to 16 stand finally rejected
under 35 U.S.C. § 112, first paragraph, as being based on a
specification which fails to enable the breadth of the claims.
Appeal No. 97-2554
Application No. 08/164,112
3
Background
Appellant’s invention concerns the reduction in the
malodors in disposable absorbent products, in particular, the
odor of urine in disposable products such as diapers which
have an absorbent structure which includes a so-called
“superabsorbent” (page 4, line 10 et seq.). According to the
disclosure, such reduction is achieved by applying to the
absorbent material, prior to use, “an effective amount of a
surface-active agent having a hydrophilic/lipophilic balance
(HLB) of less than about 12” (page 6, lines 36 to 37).
However (page 7, lines 28 to 37):
Not all of the surface-active agents having an HLB
of less than 12 are able to reduce the odor of
urine. Applicant has devised a simple test to
determine whether or not a given surface-active
agent, having an HLB of less than 12, is capable of
reducing the odor of urine. The test method for
determining whether or not a surface-active agent is
able to reduce the odor of urine (Surface-Active
Agent Effectiveness Test) is set forth in connection
with the examples which follow. If a surface-active
agent has an HLB of less than 12 and is capable of
reducing the odor of urine, it is believed suitable
for use in the present invention.
On page 9, appellant lists as “suitable for use in the
present invention (as determined by the Surface-Active Agent
Effectiveness Test set forth below)” the surfactants Tween 81,
Appeal No. 97-2554
Application No. 08/164,112
4
Span 80, and Tergitol 15-S-5. Surfactants named as “proven to
be unsuitable for use in the present invention in that they
are not able to reduce the odor of urine as determined by the
Surface-Active Agent Effectiveness Test” are Lexemul 530,
Igepal CO-210 and CO-430, and Unithox 450.
On pages 12 and 13, appellant discloses his Surface-
Active Agent Effectiveness Test. A solution in ethanol of the
surface-active agent to be tested is sprayed on absorbent
material; then (page 12, line 33 to page 13, line 3):
1.5 grams of the coated, particulate water-
swellable, generally water-insoluble absorbent
material is placed in a watch glass. Four drops
(about 0.2 milliliters) of reconstituted urine
(UriChem®) is applied to the coated absorbent
material. 1.5 grams of the particulate, water-
swellable, generally water-insoluble, hydrogel-
forming polymeric absorbent material having no
surface-active agent coated thereon is placed in a
watch glass and serves as a control sample. Four
drops of reconstituted urine (UriChem®) is applied
to the absorbent material (control). The two
samples are then subjected to the Odor Perception
Test described above.
The Odor Perception Test is described as follows (page 12,
lines 6 to 12):
Odor perception is, by its nature, a very subjective
determination. According to the procedure, a small
group of up to four samples are [sic] reviewed at
one time. The samples to be tested are provided to
Appeal No. 97-2554
Application No. 08/164,112
5
a panel of two odor specialists who independently
rank the urine-wet odor of the samples on a scale of
1 (least) to 10 (most) for malodor and intensity.
Samples yielding an odor ranking below about 3.0
possess an odor which would hardly be noticed by the
general public.
As a result of these tests (page 13, lines 3 to 7):
If the surface-active agent coated test sample
receives a lower average ranking for malodor and
intensity than the non-surface-active agent coated
test sample (control), the surface-active agent
being tested is considered effective to reduce the
odor of urine.
Appeal No. 97-2554
Application No. 08/164,112
These sections have since been deleted, and appear to3
be replaced by M.P.E.P. § 2164.08.
6
The results of tests on various surfactants are given in
Examples 1 to 3 on pages 13 to 17.
The Rejection
The rejection is based upon the examiner’s objection to
the specification (answer, page 3):
as failing to enable the breadth of the claims, that
is the use of certain surfactants within the claimed
HLB range would render the device inoperative. Not
all surfactants with an HLB less than 12 will be
effective to reduce urine odor. See M.P.E.P. §§
706.03(n) and 706.03(z) .[3]
According to the examiner (answer, pages 4 and 5; original
emphasis):
Applicant argues that the claims exclude those
surfactants that do not reduce urine odor but that
do have an HLB less than 12. See applicant’s brief
on page 3, lines 9-16. The examiner does not agree
with applicant’s arguments. In reference to claim
1, the claim requires a surfactant with an HLB less
than 12 in an amount effective to reduce urine odor.
The claim does not exclude those surfactants with an
HLB less than 12 that do not reduce urine odor. In
other words, applicant has claimed a surfactant with
an HLB less than 12 and has also claimed that it is
present in an amount effective to reduce urine odor.
This is not what applicant has disclosed in the
specification. What happens when the surfactant
used does not reduce urine odor? It will not matter
how much of the surfactant is present because it
Appeal No. 97-2554
Application No. 08/164,112
7
will not reduce urine odor. The examiner takes the
position that claim 1 as presently pending claims
surfactants that will work and surfactant that will
not work. The scope of the claims are [sic] not
enabled by the specification.
Discussion
In In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971),
the claims were rejected under 35 U.S.C. § 112, both under the
first paragraph, as being of a scope not supported by an
adequate enabling disclosure, and under the second paragraph
as indefinite. The Court held that the determination of
compliance with the second paragraph of § 112 must be made
first “in order to determine exactly what subject matter [the
claims] encompass” (439 F.2d at 1235, 169 USPQ at 238):
This first inquiry therefore is merely to
determine whether the claims do, in fact, set out
and circumscribe a particular area with a reasonable
degree of precision and particularity. It is here
where the definiteness of the language employed must
be analyzed - not in a vacuum, but always in light
of the teachings of the prior art and of the
particular application disclosure as it would be
interpreted by one possessing the ordinary level of
skill in the pertinent art.2
______________
It is important here to understand that under this2
analysis claims which on first reading - in a vacuum, if you will
- appear indefinite may upon a reading of the specification
disclosure or prior art teachings become quite definite. It may
Appeal No. 97-2554
Application No. 08/164,112
8
be less obvious that this rule also applies in the reverse, making
an otherwise definite claim take on an unreasonable degree of
uncertainty. See In re Cohn, 58 CCPA [996], [438] F.2d [989], 169
USPQ 95 (1971), In re Hammack, 57 CCPA 1225, 427 F.2d 1378, 166
USPQ 204 (1970).
The language of interest in the present case is the
recitation in claim 1 of “applying ... a surface-active agent
having a hydrophilic/lipophilic balance (HLB) of less than
about 12 in an amount effective to reduce urine odor.”
Appellant asserts that his claims “recite the use of a
surface-active agent that is effective in reducing the odor of
urine.” However, we agree with the examiner that they are not
so limited, as is evident from the above-quoted portion of
claim 1.
Nevertheless, assuming that the claims are limited to the
use of a surface-active agent, having an HLB less than about
12, that is “effective to reduce urine odor,” the claims must
still be read in light of the disclosure in order to analyze
the definiteness of their language. In re Moore, supra. In
determining whether a particular surfactant is “effective to
reduce urine odor,” one finds on page 13, lines 3 to 7, the
criterion quoted above, i.e., a surface-active agent “is
considered effective to reduce the odor of urine” if the test
Appeal No. 97-2554
Application No. 08/164,112
We do not reach the question of the adequacy of the4
Surface-Active Agent Effectiveness Test, referred to on page 5
of the examiner’s answer. Our discussion here is based on the
Test results reported in appellant’s Examples.
9
sample (in appellant’s Surface-Active Agent Effectiveness
Test) “receives a lower average ranking for malodor and
intensity than the non-surface-active agent coated sample
(control).” This seemingly straightforward definition is,4
however, inconsistent with other portions of appellant’s
disclosure. For example, looking at Table 1 (page 14), we see
that Unithox 450 (Sample 4C) has an Odor Ranking lower than
the control (Sample 4A), and therefore would appear to meet
the definition of a surface-active agent effective to reduce
the odor of urine. Nevertheless, on page 9, lines 14 to 24,
appellant lists Unithox 450 as a surfactant which is “not able
to reduce the odor of urine.” This would seem to indicate
that some other test has been applied to determine odor-
reducing ability. Similarly, we note that in Table 1 Igepal
CO-210 (Sample 3B) and CO-430 (Sample 3D) have Odor Rankings
of 5.0 and 4.8, respectively, which are lower than any of the
Appeal No. 97-2554
Application No. 08/164,112
We realize on page 14, lines 3 to 5, appellant states5
that “[A]s discussed above” (a discussion which we cannot
find) “comparison between groupings of samples is not
appropriate, as a control sample was not present in each of
the groupings.” Notwithstanding the lack of a control sample
for Samples 3A to 3D, however, appellant still discloses that
Span 80 (Sample 3A) is suitable, and that the other three
samples are not.
10
controls except Sample 4A, but are still listed on page 9 as
“not able to reduce the odor of urine.”5
Appeal No. 97-2554
Application No. 08/164,112
11
The purpose of the second paragraph of § 112 is:
to provide those who would endeavor, in future
enterprise, to approach the area circumscribed by
the claims of a patent, with the adequate notice
demanded by due process of law, so that they may
more readily and accurately determine the boundaries
of protection involved and evaluate the possibility
of infringement and dominance.
In re Hammack, 427 F.2d at 1382, 166 USPQ at 208. The present
claims do not fulfill this purpose. Even assuming that they
should be read as being drawn to the application of surface-
active agents having an HLB less than about 12 which are
effective to reduce urine odor, the discrepancies and
inconsistencies in the specification, as discussed above, are
such that one of ordinary skill could not determine whether or
not the use of a particular surfactant would fall within the
scope of claim 1. As stated in In re Cohn, 438 F.2d at 993,
169 USPQ at 98, “[N]o claim may be read apart from and
independent of the supporting disclosure on which it is
based.” If one of ordinary skill contemplated the use of
Unithox 450, for example, in the claimed method, it could not
be determined whether it would fall within the scope of the
claims because on the one hand it would meet the test set
forth on page 13, lines 3 to 7, as being “effective to reduce
Appeal No. 97-2554
Application No. 08/164,112
12
the odor of urine,” but on the other hand, evidently would not
meet some other (undisclosed) test, since it is disclosed on
page 9, lines 14 to 24, as “not able to reduce the odor of
urine.”
Accordingly, pursuant to 37 CFR § 1.196(b), claims 1, 3
to 7 and 10 to 16 are rejected as failing to comply with the
second paragraph of 35 U.S.C. § 112.
In view of the foregoing, since the subject matter
defined by the claims is not clear and definite, the analysis
as to whether their scope is enabled cannot be made. In re
Moore, supra. The rejection under the first paragraph of §
112 is therefore reversed, pro forma. Cf. In re Steele, 305
F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). This is not to
say, however, that if the rejection under the second paragraph
of § 112 were overcome the rejection under the first paragraph
would necessarily be inapplicable.
Conclusion
The examiner’s decision to reject claims 1, 3 to 7 and 10
to 16 is reversed, and said claims are rejected pursuant to 37
CFR
§ 1.196(b).
Appeal No. 97-2554
Application No. 08/164,112
13
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 97-2554
Application No. 08/164,112
14
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED, 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
Appeal No. 97-2554
Application No. 08/164,112
15
Kimberly-Clark Corporation
Patent Department, Docket Office
401 North Lake Street
Neenah, WI 54956