Ex parte Hengl

Board of Patent Appeals and Interferences

Sep 24, 1998

08436255 (B.P.A.I. Sep. 24, 1998)

Application for patent filed May 15, 1995. According to1
appellant, this application is the national stage application of
PCT/FR93/01107, filed November 13, 1993.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PATRICK HENGL
__________
Appeal No. 97-4406
Application No. 08/436,2551
__________
ON BRIEF
__________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS and
NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1, 2, 14, 15 and 26. Claims 5 and 16-25 have
been withdrawn from consideration as being directed to a non-
elected species (Paper No. 7). Claims 3, 4, 6-13 and 27-29 have
Appeal No. 97-4406
Application No. 08/436,255
2
been indicated as containing allowable subject matter and stand
objected to as depending from a rejected claim (Paper No. 7).
The appellant's invention is directed to a device for the
recovery and storage of waste. The subject matter before us on
appeal is illustrated by reference to claim 1, which has been
reproduced in an appendix to the Brief.
THE REJECTION
Claims 1, 2, 14, 15 and 26 stand rejected under 35 U.S.C.
§ 112, first paragraph, as being based upon a specification that
fails to enable one of ordinary skill in the art the make and use
the invention.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
The appellant’s invention relates to an apparatus for the
recovery and storage of waste in situations like water closets
and hospital waste. As we understand the invention from the
original disclosure, at least one sheath arranged around a waste-
receiving receptacle is fed therethrough in an invaginating
Appeal No. 97-4406
Application No. 08/436,255
3
manner past an obstruction for changing direction which functions
to close the sheath downstream of the collected waste. The
sheath then is carried away to a storage zone.
The examiner’s position is that while the specification is
enabling for a device in which waste is contained “within both
plastic (liquid impermeable) and textile (liquid permeable)
sheaths,” it is not enabling for “only containing waste within a
liquid permeable sheath,” which the examiner believes is the only
type of sheath that can meet the claim requirement of being
radially expandable (Answer, pages 3-4). As the appellant has
pointed out, the purpose of the enablement requirement is to
insure that one of ordinary skill in the art can make and use the
invention described in the claims without undue experimentation.
In the present case, the appellant has, through twenty-one pages
of specification, explained in detail the structure and operation
of the invention, including the characteristics of the sheaths.
The appellant has provided a thorough discussion of this
rejection on pages 3-6 of the Brief, in which he asserts that the
information provided in the specification, taken with the skill
that must be accorded to the artisan, is sufficient to allow one
of ordinary skill in the art to make and use the invention
recited in claim 1 without undue experimentation. We agree, for
Appeal No. 97-4406
Application No. 08/436,255
4
the reasons set forth therein, and we therefore will not sustain
the rejection.
The decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH, )
Senior )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge)
Appeal No. 97-4406
Application No. 08/436,255
5
Harold H. Dutton, Jr.
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