Ex parte LAROSE

Board of Patent Appeals and Interferences

May 27, 1998

07952684 (B.P.A.I. May. 27, 1998)

Application for patent filed September 29, 1992. According 1
to applicants, this application is a continuation of Application
07/721,296, filed June 26, 1991, now abandoned.
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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(2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RENE N. LAROSE and JOSEPH A. SCHULTZ
____________
Appeal No. 95-1528
Application 07/952,6841
____________
ON BRIEF
____________
Before SOFOCLEOUS, GRON, and ELLIS, Administrative Patent Judges.
GRON, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
This is an appeal from an examiner’s final rejection of
Claims 39-57, all claims pending in this application. All claims
stand finally rejected under 35 U.S.C. § 103 as unpatentable in
Appeal No. 95-1528
Application 07/952,684
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view of the combined teachings of Frankel et al. (Frankel), U.S.
4,674,490, patented June 23, 1987, and Sheldon et al. (Sheldon),
U.S. 4,932,359, patented June 12, 1990. Claim 39 adequately
represents the subject matter of the claims on appeal and reads:
39. A method of reducing microorganism contamination of
the environment of newly hatched poultry which comprises:
providing a microaerosol apparatus for producing a
microaerosol spray;
providing a disinfectant;
dispensing the disinfectant with the microaerosol apparatus
in a substantially closed chamber in which newly hatched
poultry are disposed substantially continuously from the
time of initial pipping until essentially all the poultry
have exited from their respective eggs.
The examiner’s holding of unpatentability under 35 U.S.C.
§ 103 in view of the combined teachings of Frankel and Sheldon
appears to be supported primarily by the examiner’s finding that
Sheldon itself reasonably suggests a process for disinfecting
poultry which comprises dispensing disinfectant “in a
substantially closed chamber in which newly hatched poultry are
disposed” (Claim 39). The examiner states (Examiner’s Answer
(Ans.), p. 5, lines 1-10):
Sheldon et al recognize that “hydrogen peroxide treatment
is believed to increase the quality of chicks hatched and
to reduce the number of chick deaths occurring within a
few days after hatching” (See col. 4, lines 15-18). In
recognition of the benefits of hydrogen peroxide treatment
and that such treatment is safe to eggs and chicks, it
would have been obvious to one of ordinary skill in the
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art to continuously dispense disinfectant on newly hatched
poultry after removal from the microaerosol apparatus to
improve the quality of the foul and to reduce the number
of deaths of chicks a few days after hatching.
The examiner was not persuaded by appellants’ contention that
Sheldon teaches away from the claimed invention (Ans., pp. 6-7,
bridging para.):
. . . Sheldon et al do not expressly teach away
from fogging or spraying after the actual time of pipping
and hatching. In fact, Sheldon et al expressly teach the
application of disinfectant to the eggs “within the hatcher
until the actual time of pipping and hatching” (See col. 3,
lines 45-48) and one of ordinary skill would expect that
“hatching” means that the chick has broken out the shell.
The examiner expressly states that Frankel is relied upon “solely
for the use of the microaerosol apparatus for dispensing fluid in
micro-droplet sizes” (Ans., pp. 7-8, bridging sentence). The
examiner points again to Sheldon’s teaching (Ans., p. 8, last
four lines). Ultimately, the examiner finds that the Sheldon’s
method of treating eggs with disinfectant “until the actual time
of pipping and hatching” (See col. 3, lines 45-48) extends until
the actual time the chick has emerged from the shell (Ans., pp.
10-11, bridging para.):
. . . Sheldon et al do teach the application of fluid
to hatched eggs. It is the Examiner’s position that
the term “hatched” suggests that the shell has broken
and the chick has emerged from the shell. In view of
the meaning of the word, “hatched”, the Examiner equates
the hatched egg to the chick such that Sheldon et al
teach the exposure of fluid to eggs and chicks.
Appeal No. 95-1528
Application 07/952,684
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We hold that the examiner clearly erred in finding that Sheldon
describes or reasonably suggests a process for disinfecting
poultry which comprises dispensing disinfectant “in a
substantially closed chamber in which newly hatched poultry are
disposed.” Not being able to determine how much the examiner’s
erroneous finding influenced the conclusion of unpatentability
under 35 U.S.C. § 103 in view of the combined teachings of
Frankel and Sheldon, we are constrained to reverse the examiner’s
decision and remand the case for further consideration in light
of our decision and remarks.
Sheldon states (col. 1, l. 67, to col. 2, l. 2; emphasis
added):
The present invention comprises exposing hatchery
eggs to a solution of hydrogen peroxide prior to actual
hatching in order to disinfect and to significantly
increase the hatchability of the eggs treated.
We read Sheldon’s statement at col. 3, l. 45-48, in conjunction
with his other statements at col. 2, l. 26-41; col. 2, l. 65-68;
and col. 3, l. 10-32. Moreover, at col. 4, l. 23-26, Sheldon
states:
Finally, and very importantly, the exposure of
hatchery eggs to hydrogen peroxide prior to hatching
has quite unexpectedly been found to significantly
increase the hatchability of the eggs treated.
Most instructive of what Sheldon’s teaching would have meant to a
person having ordinary skill in the art, however, is Sheldon’s
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own understanding of the mechanism responsible for the
enhancement of hatchability by hydrogen peroxide. Sheldon
theorizes that “a chemical alteration of the proteinaceous outer
cuticle of the egg which functions to regulate respiratory
activity and water loss across the shell and shell membranes and
which acts as a barrier preventing microbial invasion into the
egg” (Sheldon, col. 4, l. 57-65). Sheldon also suspects
“generation of elevated oxygen levels within the shell due to the
diffusion of hydrogen peroxide across the shell and shell
membranes and its ultimate decomposition to oxygen” (Sheldon,
col. 4, l. 67, to col. 5, l. 3). The mechanisms Sheldon proposes
are wholly inconsistent with the examiner’s findings.
Accordingly, we reverse the examiner’s conclusion of the
unpatentability of Claims 39-57 under 35 U.S.C. § 103 because it
is based on clearly erroneous findings with regard to Sheldon’s
teaching.
Other Issues
We are obliged to remand this case to the examiner
for (1) claim interpretation, (2) additional prior art findings,
and (3) consideration of new grounds of rejection consistent with
our decision on the appealed rejection. We especially recommend
consideration of the following matters.
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A. The methods appellants claim comprise the steps of
“providing a disinfectant” and “dispensing the disinfectant with
the microaerosol apparatus” (Claims 39, 46, and 57). Both the
examiner and appellants appear to have presumed throughout the
prosecution of the subject matter on appeal that a method which
provides and dispenses “vaccine droplets,” as does the method
Frankel describes, does not describe a method which provides and
dispenses “disinfectant” in accordance with the claimed method.
We recommend that the examiner and appellants reconsider their
interpretation of the scope of the term “disinfectant” in
appellants’ claims in light of the following definition of the
term “disinfectant” in the specification (p. 6, first full
para.):
In some forms of the invention the disinfectant
administered is hydrogen peroxide or glutaraldehyde
or any other disinfectant which is (1) an effective
antimicrobial agent, (2) minimizes the degree of
physical damage to the avian respiratory tissue,
(3) improves upon or does not decrease the percentage
of chicks that survive the hatching process, (4) does
not result in poor post hatch performance, and (5) is
safe for people to work in the presence of the material.
If when giving the “disinfectant” of appellants’ claims its
broadest reasonable interpretation which is consistent with the
description of the invention in the specification, the examiner
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holds that the term “disinfectant” encompasses vaccine droplets,
the examiner should consider whether Frankel itself describes the
method appellants claim.
B. Calcaterra et al. (Calcaterra), U.S. 4,717,544,
patented January 5, 1988 (of record), teaches that “gas phase
disinfectants are known, including sulfur dioxide, glyoxal,
iodine, chlorine, malondialdehyde, glutaraldehyde, methylene
chloride, formaldehyde, and ammonia” (Calcaterra, col. 1,
l. 30-33). Therefore, the examiner should consider whether the
combined teachings of Sheldon and Kaitz, U.S. 2,993,832, patented
July 25, 1961 (of record), would have led persons having ordinary
skill in the art to treat incubating eggs and/or new-born chicks
with disinfectant. Kaitz, teaches (Kaitz, col. 1, l. 8-16;
emphasis added):
One of the recognized methods of combating poultry
diseases . . . involves treatment of incubating eggs
or new-born chicks with formaldehyde gas. The gas is
ordinarily generated by chemical reaction . . . in a
chamber containing incubating eggs or new-born chicks.
We note the examiner’s citation of Kaitz and his references
to Kaitz’ teaching of the use of “thermal energy along with a
disinfectant to maintain an environment conducive to the
hatchability of eggs through the effective control of poultry
diseases” in the Examiner’s Answer (Ans., pp. 5-6, bridging
para., and p. 8, first full para.). However, the examiner did
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not include Kaitz in the statement of the rejection or cite or
consider Kaitz’ teaching to treat either incubating eggs or new-
born chicks with a disinfectant in a chamber containing either
incubating eggs or new-born chicks. While we might ad hoc
consider Kaitz’ teaching in its entirety and combine them with
the teachings of Frankel and Sheldon and/or broadly consider the
meaning of the term “disinfectant” in appellants’ claims for the
first time in light of the specification and reconsider Frankel’s
teaching in that new light with or without entering a new ground
of rejection, we are constrained to simply reverse the appealed
rejection and remand the case to the examiner for further
prosecution in line with this decision and our remarks. To
reverse and remand is, in our view, the action which best
respects the court’s admonition in In re Hoch, 428 F.2d 1341,
1342 n. 3, 166 USPQ 406, 407 n. 3 (CCPA 1970) of the practice of
relying on prior art not included in the statement of the
rejection on review and our authority under 35 U.S.C. § 134.
Appeal No. 95-1528
Application 07/952,684
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Accordingly, we reverse the examiner’s rejection of
Claims 39-57 under 35 U.S.C. § 103 and remand the case to the
examiner for special action consistent with our decision and
remarks.
This application, by virtue of its "special" status,
requires an immediate action. Manual of Patent Examining
Procedures § 708.01(d)(6th ed., rev. 3, July 1997). It is
important that the Board be informed promptly of any action
affecting the appeal in this case.
REVERSED; REMANDED
Michael Sofocleous )
Administrative Patent Judge )
)
)
)
Teddy S. Gron ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Joan Ellis )
Administrative Patent Judge )
Appeal No. 95-1528
Application 07/952,684
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Robert S. Smith
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