Ex parte Wyman

Board of Patent Appeals and Interferences

Feb 10, 1998

07672286 (B.P.A.I. Feb. 10, 1998)

Application for patent filed March 20, 1991.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CHARLES E. WYMAN
__________
Appeal No. 94-2999
Application 07/672,2861
__________
ON BRIEF
__________
Before JOHN D. SMITH, 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 8 through 28 which are all of the claims
remaining in the application.
The subject matter on appeal relates to a method of
sterilizing a fermentation vessel and to a process for producing
Appeal No. 94-2999
Application 07/672,286
2
alcohol which includes a step of sterilizing a fermentation
vessel. The aforementioned sterilization is effected via an
alcohol in aqueous solution obtained from a distillation or
purification facility associated with the method/process. This
appealed subject matter is adequately illustrated by independent
claims 8 and 25, a copy of which taken from the appellant’s brief
is appended to this decision.
The references relied upon by the examiner as evidence of
obviousness are:
Heden 3,997,400 Dec. 14, 1976
Feldman et al. (Feldman) 4,431,838 Feb. 14, 1984
Tegtmeier 4,845,033 Jul. 4, 1989
Harandi et al. (Harandi) 5,167,937 Dec. 1, 1992
Claims 8 through 28 are rejected under the first paragraph
of 35 U.S.C. § 112 for failing to comply with the written
description requirement set forth in this paragraph. It is the
examiner’s basic position that the appealed claims are rendered
in violation of the written description requirement by virtue of
the claim term “only” because “[t]he specification does not
specifically set forth that alcohol should be the “only”
sterilant used and that no other sterilant can be used” (answer,
page 2).
Claims 8 through 28 are also rejected under 35 U.S.C. § 103
as being obvious over Tegtmeier in view of Heden and either
Appeal No. 94-2999
Application 07/672,286
3
Harandi or Feldman. According to the examiner, “[i]t would have
been obvious and within the purview of a routineer in the art to
sterilize the fermentation vessel of the primary reference
[Tegtmeier] with alcohol as the secondary reference [Heden]
teaches that alcohol is a known sterilant for fermentation
vessels” and that “[i]t would have been obvious to a routineer in
the art that the alcohol produced in the fermentation process
could have been used as the source of alcohol for the
sterilization” and that “[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made to
return the alcohol used to sterilize the reactor set forth above
to the distillation tower as such is known in the art as shown by
Harandi ... and Feldman ... to save on waste of the particular
stream and that this alcohol could then be returned to the
product stream for further processing as the chemical makeup of
the streams would be the same as the stream coming from the
fermentation step, only higher in alcohol concentration” (final
Office action, pages 3-4).
We will not sustain either of these rejections.
We fully share the appellant’s view that the § 112, first
paragraph, rejection of the appealed claims is improper for the
reasons fully detailed on pages 5 through 12 of the reply brief.
Appeal No. 94-2999
Application 07/672,286
4
The contrary opinion expressed by the examiner in his answers is
simply unpersuasive. As a consequence, we cannot sustain the
examiner’s § 112, first paragraph, rejection of claims 8 through
28.
We also cannot sustain the § 103 rejection advanced by the
examiner on this appeal. From our perspective, the examiner has
committed both factual as well as legal errors in his aforequoted
conclusion that “[i]t would have been obvious to a routineer in
the art that the alcohol produced in the fermentation process
could have been used as the source of alcohol for the
sterilization”. By long established legal principle, it was
improper for the examiner to have reached an obviousness
conclusion on the grounds that “the alcohol produced in the
fermentation process could have been used as the source of
alcohol for the sterilization”. See In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984) (mere fact that prior
art could be modified does not make modification obvious unless
prior art suggested desirability of modification). Moreover, the
examiner’s obviousness conclusion is predicated on factual error
in the sense that none of the applied references teaches that
“the alcohol produced in the fermentation process [is an
acceptable] ... source of alcohol for the sterilization.”
Appeal No. 94-2999
Application 07/672,286
5
In this latter regard, we emphasize that only the appellant
has taught in his specification disclosure that “the alcohol
produced in the fermentation process [is an acceptable] ...
source of alcohol for the sterilization” of the fermentation
vessel. It is well settled that “[t]o imbue of one of ordinary
skill in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest
that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught is
used against its teacher.” W.L. Gore v. Garlock, 721 F.2d 1540,
1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983). In light of the
deficiencies of the applied prior art, the examiner’s conclusion
that the here claimed subject matter would have been obvious
could only have resulted from “the insidious effect of a
hindsight syndrome.” It follows that we also cannot sustain the
§ 103 rejection of claims 8 through 28 as being obvious over
Tegtmeier in view of Heden and either Harandi or Feldman.
Appeal No. 94-2999
Application 07/672,286
6
The decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge)
Appeal No. 94-2999
Application 07/672,286
7
Richard E. Consent
Asst. General Counsel for Pats., GC-42
(FORSTL) MS/6F-067, U.S. DOE
1000 Independence Avenue, S.W.
Washington, DC 20585
Appeal No. 94-2999
Application 07/672,286
8
APPENDIX
8. A method of sterilizing a fermentation vessel used in a
batch fermentation process that includes an associated alcohol
distillation or purification facility for purifying alcohol
produced in the fermentation vessel to a higher alcohol
concentration, wherein said fermentation vessel is intermittently
emptied of fermented product, including alcohol, and cleaned,
comprising the steps of:
withdrawing a sterilizing alcohol in aqueous solution from
the distillation or purification facility with a sufficient
concentration of alcohol to kill undesirable microorganisms;
sterilizing said emptied and cleaned fermentation vessel by
introducing only said sterilizing alcohol in aqueous solution
into the fermentation vessel;
withdrawing said sterilizing alcohol in aqueous solution
from the fermentation vessel following the sterilization of said
fermentation vessel and returning the sterilizing alcohol in
aqueous solution to said distillation or purification facility.
25. A process for producing alcohol, comprising the steps
of:
placing a batch of fermentable feedstock or substrate in a
fermentation vessel with water and alcohol producing fungi;
allowing the fungi to ferment the feedstock or substrate to
produce a mixture having a liquid fraction comprising alcohol and
water and a solid fraction comprising residual solid by-products
of the fermentation process;
removing the liquid and solid fractions from the
fermentation vessel;
separating the solid fraction from the liquid fraction;
Appeal No. 94-2999
Application 07/672,286
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purifying the alcohol in the liquid fraction to a higher
purity alcohol/water mixture having a higher alcohol
concentration than was produced by the fermentation step;
withdrawing a portion of the higher purity alcohol/water
mixture; and
spraying only said withdrawn portion of the higher purity
alcohol/water mixture into the fermentation vessel in vapor form
to sterilize the fermentation vessel.