Ex parte MAYEUX et al.

Board of Patent Appeals and Interferences

Jun 16, 1998

08082907 (B.P.A.I. Jun. 16, 1998)

Application for patent filed June 29, 1993. According1
to appellants, this application is a continuation of Application
07/816,552, filed January 6, 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(2) is not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HERMAN J. MAYEUX,
and EARL C. RUBY
__________
Appeal No. 95-0922
Application 08/082,9071
__________
HEARD: Jun. 8, 1998
__________
Before KIMLIN, GARRIS, and OWENS, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the refusal of the
examiner to allow claims 1 through 7 as amended subsequent to the
Appeal No. 95-0922
Application No. 08/082,907
2
final rejection. These are all of the claims remaining in the
application.
The subject matter on appeal relates to an almond shell
additive for well working fluids consisting essentially of
certain particle size fractions of ground almond shells. This
appealed subject matter is adequately illustrated by independent
claim 1 which reads as follows:
1. An almond shell additive for well working fluids, said
additive consisting essentially of ground almond shells
consisting essentially of
an intermediate particle fraction having a substantially
even particle size distribution between particle sizes of 100
microns and 2000 microns,
a large particle fraction comprising at most about 5 percent
by weight of said additive and having a particle size greater
than 2000 microns, and
a small particle fraction comprising at least 3 percent and
at most 20 percent by weight based on said additive and having a
particle size less than 100 microns.
The reference set forth below is relied upon by the examiner
in the rejections before us:
Borchardt 2,799,647 July 16, 1957
Claims 1 through 7 are rejected under the second paragraph
of 35 U.S.C. § 112 for failing to particularly point out and
distinctly claim the subject matter which the appellants regard
as their invention. According to the examiner, claim 1 is
Appeal No. 95-0922
Application No. 08/082,907
3
rendered indefinite by the recitation "substantially even...
distribution". More specifically, the examiner believes that
"[t]he metes and bounds of even-ness have not been set forth so
as to establish which distributions are embraced and which are
not" (answer, page 2).
Claims 1 through 3, 6 and 7 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Borchardt. This rejection is
premised upon the examiner's belief that "[t]he specific particle
size distribution as claimed herein would be inherent in the
Borchardt material" (answer, page 2).
Finally, claims 4 and 5 are rejected under 35 U.S.C. § 103
as being unpatentable over Borchardt based upon the examiner's
conclusion that "[i]t would have been obvious to the person
having ordinary skill in the art to have used the Borchardt
ground almond shells in an oil based drilling fluid because doing
so is in clear response to the express suggestion by the
patentee" (answer, page 2).
OPINION
We cannot sustain any of the above noted rejections.
Concerning the section 112, second paragraph, rejection, the
appellants are correct in stating that example 1 of their
specification describes a milling operation whereby, "[a]s shown
Appeal No. 95-0922
Application No. 08/082,907
4
in Figure 1, a substantially even particle size distribution is
achieved for the crushed material for the intermediate particle
fraction; i.e. material retained on the U.S. mesh numbers 12
(1680 microns), 16 (1190 microns), 20 (841 microns), 30 (595
microns), 40 (420 microns), 60 (250 microns), 100 (149 microns)
and 140 (105 microns)" (specification, page 40). Thus, when
reading the claim language and specifically the language
"substantially even... distribution" in light of the
specification disclosure, we are confident that the metes and
bounds of protection circumscribed by the appealed claims would
be reasonably precise and particular to one with ordinary skill
in the art. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971).
It follows that we cannot sustain the examiner's rejection
of claims 1 through 7 under the second paragraph of 35 U.S.C.
§ 112.
As for the section 102(b) rejection, we cannot agree with
the examiner's aforequoted position that "[t]he specific particle
size distribution as claimed herein would be inherent in the
Borchardt material". It is apparent that patentee's disclosure
at lines 28 through 42 in column 3 of size ranges and quantities
for his almond flakes, fibers and granules simply do not
Appeal No. 95-0922
Application No. 08/082,907
5
correspond to the sizes and quantities of the here claimed
intermediate, large and small particle fractions. While certain
of patentee's size ranges may overlap slightly with certain of
the here claimed size ranges, no basis exists for concluding that
his material contains the percentages of large and small particle
size fractions defined by appealed claim 1. In fact, such a
conclusion is contrary to Borchardt's disclosure that his
material contains substantial amounts or quantities of the flake,
fiber and granule fractions (again see lines 28 through 42 in
column 3).
In light of the foregoing, it is clear to us that the
examiner's inherency position is unjustified and accordingly that
his consequent rejection under 35 U.S.C. § 102(b) of claims 1
through 3, 6 and 7 as being anticipated by Borchardt cannot be
sustained.
The above noted section 103 rejection of claims 4 and 5 also
cannot be sustained because it is ultimately premised upon the
examiner's unacceptable inherency position discussed above.
Appeal No. 95-0922
Application No. 08/082,907
6
CONCLUSION
The decision of the examiner is reversed.
REVERSED
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Terry J. Owens )
Administrative Patent Judge )
Appeal No. 95-0922
Application No. 08/082,907
7
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