Ex parte VAN REES

Board of Patent Appeals and Interferences

May 26, 1998

08058092 (B.P.A.I. May. 26, 1998)

Application for patent filed May 6, 1993. According to1
appellant, the application is a continuation-in-part of
Application 07/882,272, filed May 13, 1992, 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journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte NORMAN A. VAN REES
________________
Appeal No. 95-0954
Application 08/058,0921
________________
HEARD: MAY 5, 1998
________________
Before GARRIS, WARREN and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-16, which are all of the claims in the application.
Appeal No. 95-0954
Application 08/058,092
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THE INVENTION
Appellant claims a biodegradable air freshener and odor
neutralizer which breaks down in the presence of water and is
comprised of a substantially dry, rigid, open-celled foam
vegetable starch substrate which carries a liquid fragrance.
Appellant also claims methods for making the air freshener and
using it to freshening air. Claims 1, 7 and 16 are
illustrative and read as follows:
1. A biodegradable air freshener and odor neutralizer
that breaks down in the presence of water to minimize solid
waste, the air freshener comprising:
a water soluble substrate substantially comprising a
substantially dry, rigid, open-celled foam consisting
essentially of vegetable starch; and
a liquid fragrance carried in the substrate.
7. A method of making an air freshener comprising the
steps of:
providing a water soluble substrate made of a
substantially dry, rigid, open-celled foam consisting
essentially of vegetable starch; and

introducing liquid fragrance to be absorbed into the
substrate.
16. A method of freshening the air comprising the steps
of:
Appeal No. 95-0954
Application 08/058,092
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providing a substrate made of a substantially dry, rigid,
open-celled foam consisting essentially of vegetable starch,
infused with a volatile fragrance wherein the fragrance
volatizes
from the substrate to freshen the surrounding air; and
dissolving the substrate in water when the fragrance has
substantially volatilized.
THE REFERENCES
Palinczar et al. (Palinczar) 4,339,550 Jul. 13, 1982
Eden et al. (Eden) 4,812,445 Mar. 14, 1989
Whistler 4,985,082 Jan. 15, 1991
THE REJECTIONS
Claims 1-16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Whistler or Eden, in view of Palinczar.
Claim 16 also stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
appellant regards as the invention.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and conclude that
appellant’s claimed invention would have been obvious to one
of ordinary skill in the art at the time of appellant’s
invention over the prior art. Accordingly, the aforementioned
Appeal No. 95-0954
Application 08/058,092
It is axiomatic that our consideration of the prior art2
must, of necessity, include consideration of the admitted
state of the art. See In re Hedges, 783 F.2d 1038, 1039-40,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Davis, 305 F.2d 501,
503, 134 USPQ 256, 258 (CCPA 1962).
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rejection under 35 U.S.C. § 103 will be affirmed. Because our
reasoning differs substantially from that of the examiner, we
will denominate the
affirmance as involving a new ground of rejection under 37 CFR
§ 1.196(b). We agree with appellant that the rejection under
35 U.S.C. § 112, second paragraph is not well founded. This
rejection therefore will be reversed.
Rejection under 35 U.S.C. § 103
Appellant acknowledges that it was known in the art to
infuse fragrances into a polystyrene foam carrier, and that
such a carrier was known to be undesirable because it is
substantially non-biodegradable and will not decompose, and
therefore will become a permanent part of a landfill
(specification, page 1, lines 21-32). Given this problem,2
those of ordinary skill in the art would have been motivated
Appeal No. 95-0954
Application 08/058,092
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to use their skill to solve the problem. As stated in In re
Nomiya, 509 F.2d 566, 572, 184 USPQ 607, 613 (CCPA 1975):
The significance of evidence that a problem was
known in the prior art is, of course, that knowledge
of a problem provides a reason or motivation for
workers in the art to apply their skill to its
solution.
Such a solution clearly would have been to use a water soluble
and biodegradable carrier which has the characteristics of
polystyrene. Appellant acknowledges that ECO-FOAM, which is a
substantially dry, rigid, open-celled foam composed of over
95% corn starch and which generally resembles polystyrene, was
known in the art (specification, page 3, lines 13-26).
Appellant states that due to the high starch content of ECO-
FOAM, it is easily decomposed in water (see id.). Because a
water soluble, biodegradable foam which resembles polystyrene
was known in the art, one of ordinary skill in the art would
have been motivated to use it as a fragrance carrier to solve
the problem of polystyrene not being water soluble and
biodegradable.
Whistler discloses, as a carrier for liquid fragrances,
amylase-treated starch granules which have numerous pores
Appeal No. 95-0954
Application 08/058,092
A discussion of Eden and Palinczar is not necessary to3
our decision.
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leading from the granule surface to the granule interior such
that the granules have a sponge-like appearance on microscopic
examination (col. 1, lines 35-43; col. 3, lines 17-31).
Whistler teaches that the granules can be made from a wide
variety of vegetable starches including corn starch, can have
a wide range of pore sizes, can be used in powder form, and
can store liquids which are released to the surrounding medium
by diffusion at a slow rate (col. 2, lines 17-24; col. 3,
lines 17-31 and 43-58). 3
Given these teachings by Whistler, one of ordinary skill
in the art would have had a reasonable expectation that the
known ECO-FOAM porous vegetable starch likewise would be
suitable as a carrier for liquid fragrances. Thus, since one
of ordinary skill in the art would have had both a motivation
to use ECO-FOAM as a water soluble and biodegradable
substitute for polystyrene as a carrier for liquid fragrances
and a reasonable expectation of success in doing so, use of
ECO-FOAM as such a carrier would have been prima facie obvious
Appeal No. 95-0954
Application 08/058,092
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to one of ordinary skill in the art. See In re Vaeck, 947
F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re
O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir.
1988); In re Longi, 759 F.2d 887, 892-93, 225 USPQ 645, 648
(Fed. Cir. 1985).
Appellant argues that Whistler’s granular starch is
hydrolyzed and crosslinked (brief, page 6). Whistler teaches
that granule firmness and structural integrity in a water
dispersion can be obtained by controlling the degree of starch
hydrolysis (col. 2, lines 23-25). Greater structural
integrity can be obtained, Whistler teaches, by treating the
microporous granules with a bifunctional starch-reactive
crosslinking agent
(col. 2, lines 27-43). Whistler teaches that the granules
become more resistant to mechanical damage and to swelling and
dissolution as the degree of crosslinking increases (col. 2,
lines 43-45). Whistler does not, however, teach that any such
hydrolysis or crosslinking is needed for the granules to
Appeal No. 95-0954
Application 08/058,092
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absorb a fragrance. Instead, Whistler teaches that the
capacity of the granules to absorb functional substances is
dependent upon the compatibility of the surfaces of the starch
matrix with the absorbate, and discloses materials which are
effective for use in treating the starch matrix surfaces to
increase that compatibility (col. 2, line 49 - col. 3, line
13). Thus, in view of this teaching, one of ordinary skill in
the art would have had a reasonable expectation that ECO-FOAM
starch, with treatment of its surfaces if needed, would be
capable of absorbing fragrances which are compatible with the
ECO-FOAM surfaces.
With respect to the last step in claim 16, which recites
that the foam vegetable starch substrate is dissolved in water
when the fragrance has substantially volatilized, appellant
argues that there is no teaching or suggestion of this method
of disposal (brief, page 10). We are not persuaded by this
argument for the following reason. As acknowledged by
appellant, a known problem in the art was that polystyrene
foam fragrance carriers would not decompose in landfills
(specification, page 1, lines 21-32). For the above reasons,
Appeal No. 95-0954
Application 08/058,092
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it would have been prima facie obvious to one of ordinary
skill in the art to use a carrier which is similar to
polystyrene in structure, such as ECO-FOAM, but is water
soluble and biodegradable, so that the carrier will dissolve
in water and biodegrade in a landfill.
Appellant’s separate arguments (brief, pages 9-10)
directed toward, as groups, claims 1-6, claims 7-9, claims 10-
15, and claim 16 are addressed in the above discussion.
For the above reasons, we conclude, based on the
preponderance of the evidence and argument in the record, that
appellant’s claimed invention would have been obvious to one
of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103. Because this conclusion is based on rationale which is
substantially different than that advanced by the examiner, we
denominate this affirmance as involving a new ground of
rejection under 37 CFR § 1.196(b).
Rejection under 35 U.S.C. § 112, second paragraph
The examiner argues that appellant’s claim 16 is vague
and indefinite because it is not clear how the last step in
Appeal No. 95-0954
Application 08/058,092
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that claim, i.e., “dissolving the substrate in water when the
fragrance has substantially volatilized” limits the method of
freshening air (answer, page 3). In the examiner’s view, the
freshening of the air is complete prior to the final step of
dissolving the substrate, and the final step is directed
toward a method of disposing of the substrate and is not
pertinent to freshening air (answer, page 6).
The test for whether a claim directed toward freshening
air complies with 35 U.S.C. § 112, second paragraph, is not
whether every step in the claim improves the freshness of the
air but, rather, whether the claim language is as precise as
the subject matter permits and if, when read in light of the
specification, the claim reasonably apprises those skilled in
the art both of the utilization and scope of the invention.
See Shatterproof Glass v. Libby-Owens Ford Co., 758 F.2d 613,
624, 225 USPQ 634, 641 (Fed. Cir. 1985). The examiner has set
forth no convincing reason as to why the language of
appellant’s claim 16 is not as precise as the subject matter
permits and, when read in light of the specification, does not
reasonably indicate to those of ordinary skill in the art the
Appeal No. 95-0954
Application 08/058,092
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scope and utilization of the invention. Accordingly, we do
not sustain the rejection of claim 16 under 35 U.S.C. § 112,
second paragraph.
DECISION
The rejection of claims 1-16 under 35 U.S.C. § 103 as
being unpatentable over Whistler or Eden, in view of Palinczar
is affirmed. We denominate this affirmance as involving a new
ground of rejection under 37 CFR § 1.196(b). The rejection of
claim 16 under 35 U.S.C. § 112, second paragraph, is reversed.
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
Appeal No. 95-0954
Application 08/058,092
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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. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
37 CFR § 1.196(b)
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Appeal No. 95-0954
Application 08/058,092
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TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-0954
Application 08/058,092
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Armstrong, Teasdale, Schlafly & Davis
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