Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE DON F. SACEMAN
Appeal No. 92-0725
February 24, 1993
Application for Patent filed August 18, 1988, Serial No. 07/233,386, which is a Continuation-in-Part of Serial No. 07.185,588, filed April 22, 1988, now Patent No. 4,975,251, issued December 4, 1990, which is a Continuation-in-Part of Serial No. 07/211,794, filed June 27, 1988 (ABN). Air-Permeable Plant Potting Medium Used in Airflow Purification.
Charles A. McClure for appellant
Primary Examiner--Howard J. Locker
Winters and W. Smith
This appeal is from the examiner's decision refusing to allow claims 1 through 5, 12 through 14 and 17 through 20, which are all of the claims remaining in the application.
Claims 1, 12, 17, 18, 19 and 20 are representative:
1. Air-permeable potting medium for green plants, comprising a first layer including
charcoal and mineral carbon in major amount, and potting soil in minor amount,
useful in purification of ambient air passed therethrough.
12. Air-permeable potting medium for green plants, comprising a mixture including, by volume,
about 1/10 potting soil, and
the rest preponderantly chunky wood charcoal and pebbly mineral carbon.
17. In formulating a potting medium for forced airflow therethrough, the steps of first mixing together about 30 parts mineral carbon, about 20 parts hardwood charcoal, about 10 parts potting soil, and about 10 parts sphagnum peat moss, plus enough water to raise the moisture content thereof to about 9/10 of saturation, and then allowing such mixture to cure anaerobically.
18. Potting medium formulation method according to claim 17, including subsequently mixing therewith about 30 parts of wood charcoal.
19. Air-permeable potting medium formulated according to claim 18.
20. Air-treatment method comprising passing ambient room air through the potting medium of claim 12 and over the roots of a green plant rooted therein.
The references relied on by the examiner are:
Larson 3,198,620 Aug. 3, 1965
Sterrett 4,067,716 Jan. 10, 1978
The issue presented for review is whether the examiner correctly rejected claims 1 through 5, 12 through 14 and 17 through 20 under 35 USC 103 as unpatentable over Sterrett or Larson.
We shall sustain the examiner's § 103 rejection of claims 1 through 5 and 12 through 14, based on Sterrett or Larson. We do not, however, sustain the rejection of claims 17 through 20 based on those references. With respect to all of the appealed claims, we enter new grounds of rejection under the provisions of 37 CFR 1.196(b). We begin with the new grounds of rejection.
*2 Claims 1 through 5, 12 through 14 and 17 through 20 are rejected under 35 USC 112, second paragraph, as indefinite in view of the claim recitation "mineral carbon".
We are mindful that a patent applicant may, within reason, be his own lexicographer and set forth the meaning of a term in the specification or claims. In this case, however, appellant does not define the term "mineral carbon" in the specification or the claims. Having reviewed the specification in its entirety, we find that:
(1) One example of "pebbly mineral carbon" is Finny Filter Carbon from Finny Products, Cincinnati, OH (page 4);
(2) "Non-mineral" carbonaceous material, such as wood charcoal, is said to differ from "mineral carbon" (page 4);
(3) Carbonaceous material includes both wood charcoal and mineral carbon, although their sizes may vary "as wood charcoal often is, at least in part, somewhat larger ("chunky") or smaller ("granular") than mineral carbon" (page 6); and
(4) Figure 3 illustrates irregular chunky pieces 18A of preferably carbonaceous material (such as hardwood charcoal), and somewhat smaller irregular pebbly pieces 18B of preferably carbonaceous material (such as mineral carbon) (page 3).
Taking into account those portions of appellant's specification, we find that the term "mineral carbon" is not defined with a reasonable degree of precision and particularity. Nor do appellant's claims, which recite that term, set out and circumscribe a particular area with a reasonable degree of precision and particularity. See In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971).
The situation is aggravated in view of dictionary definitions of mineral carbon as "graphite"; and natural graphite as "the mineral form of graphitic carbon"; and mineral charcoal as "fusain". See Hackh's Chemical Dictionary, Fourth Edition, page 431 and the Kirk-Othmer Encyclopedia of Chemical Technology, Third Edition, Vol. 4, page 689, and the McGraw-Hill Dictionary of Scientific and Technical Terms, Second Edition, page 1030, copies enclosed with this opinion. On this record, it is unclear whether appellant's expression "mineral carbon" is intended to cover graphite or natural graphite or fusain. For these reasons, we hold that the term "mineral carbon" and all of the claims on appeal are indefinite.
In so holding, we point out that the term "mineral carbon" is a salient feature in the claims, i.e., an essential claim limitation relied on by appellant in distinguishing over the prior art which has been cited by the examiner. In our view, therefore, it is particularly important that the meaning of this term be reasonably precise and definite.
Claims 1 through 5, 12 through 14 and 17 through 20 are rejected under 35 USC 112, first paragraph, as based on a non-enabling disclosure in view of the claim recitation "mineral carbon". Where, as here, the specification does not convey with a reasonable degree of precision and particularity what appellant means by the term "mineral carbon", a fortiori, the specification does not enable a person having ordinary skill in the art how to practice the claimed invention which requires the use of that material. In our deliberations on this issue, we have considered In re Metcalfe, 410 F.2d 1378, 161 USPQ 789 (CCPA 1969), where the court reversed a rejection for insufficiency of disclosure involving, inter alia, the identification of a specific resin in the specification by way of trademark. As stated by the court in Metcalfe, each case of this type must be decided by a rule of reason applied to the facts of the case. We think it clear from our discussion above with respect to the issue under 35 USC 112, second paragraph, that appellant's specification discloses far less information concerning "mineral carbon" compared with the amount of information disclosed by Metcalfe in his specification concerning the resins which were at issue there. See the factors militating in Metcalfe's favor and outlined by the court in Metcalfe, 161 USPQ at 792-93. In contrast, the paucity of information disclosed in this specification weighs against appellant with respect to the issue of enablement under 35 USC 112, first paragraph.
*3 As we previously held, all the appealed claims are indefinite under 35 USC 112, second paragraph, in view of the claim limitation "mineral carbon". In our view, this situation involving one indefinite claim limitation is distinguishable from the situation presented in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962) where the court stated that both the examiner and Board engaged in considerable speculation as to the meaning of terms employed in the claims and made a number of assumptions respecting the scope of the claims. Here, we find that the single term "mineral carbon" is indefinite. Unlike Steele, that finding does not compel a conclusion that the examiner's rejection under 35 USC 103 be reversed as based on unsupported speculative assumptions. We proceed to a consideration of the examiner's § 103 rejection on the merits.
In the method of claims 17 and 18, appellant recites admixing specified proportions of specified components including, inter alia "enough water to raise the moisture content thereof to about 9/10% of saturation, and then allowing such mixture to cure anaerobically". We have carefully reviewed the Sterrett and Larson references in their entireties, but find that those references constitute insufficient evidence to support a conclusion of obviousness of claims containing that limitation. As stated by the court in In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967), the legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand. By the same token, and for the same reason, we do not sustain the rejection of claim 19 drawn to an "[a]ir-permeable potting medium formulated according to claim 18". Nor are the references sufficient to support a conclusion of obviousness of claim 20 drawn to an "[a]ir-treatment method comprising passing ambient room air through the potting medium of claim 12 and over the roots of a green plant rooted therein". Again, we have carefully reviewed the prior art references but find that these references bear little relationship to the air-treatment method specified in claim 20, reciting the positive step of "passing ambient room air through the potting medium of claim 12 and over the roots of a green plant rooted therein". The examiner's § 103 rejection of claims 17 through 20 is reversed.
Considering now claims 1 through 5 and 12 through 14, we note that appellant groups these claims together in Section V of his Brief entitled "Grouping of Claims". Furthermore, in Section VI entitled "Argument", appellant does not present specific reasons why he considers any claim or claims within this group to be separately patentable. See 37 CFR 1.192(c)(5) and (c)(6). Accordingly, for the purposes of this appeal, we shall treat claims 2 through 5 and 12 through 14 as standing or falling together with claim 1.
*4 Claim 1 defines an air-permeable potting medium which includes: (1) Charcoal and mineral carbon in major amount; and (2) Potting soil in minor amount. As recited, the potting medium is to be used "for green plants" and "in purification of ambient air passed therethrough". Those references to intended use, however, are not limitations in the claims. We also note that claim 1 does not contain any limitation with respect to the amount of "mineral carbon". The combination of charcoal and mineral carbon is present "in major amount" but, within that combination of materials, the claim does not place a lower limit on the amount of "mineral carbon". Claim 1, therefore, embraces a potting medium which contains (1) charcoal in major amount and trace amounts or very small amounts of mineral carbon, and (2) potting soil in minor amount.
We agree with the examiner's finding that Sterrett discloses a composition containing partially combusted bark particles and potting soil. A preferred mix of materials contains the combusted bark in amounts up to about 60% by volume, i.e., in this instance the potting soil is present "in minor amount". On the facts of this case, we agree with the examiner that the composition disclosed by Sterrett reasonably appears to be the same or substantially the same as the potting medium defined in claim 1. Again, we note that "mineral carbon" in claim 1 may be present in trace amounts or very small amounts. We also note Sterrett's disclosure that the partially combusted bark particles have a residual btu value which has led to their previous use in charcoal briquettes. See column 2, lines 67 and 68 of the reference and compare appellant's recitation of "charcoal" in claim 1. We further note, in this regard, the indication in appellant's specification that charcoal and mineral carbon are both carbonaceous materials, although perhaps differing in size. We find no limitation in claim 1 on appeal which serves to patentably distinguish over the subject matter disclosed by Sterrett.
For essentially the same reasons, we agree with the examiner's finding that claim 1 does not patentably distinguish over the combination of synthetic top soil and particulate carbonaceous materials disclosed by Larson. The examiner's § 103 rejection of claim 1 as unpatentable over Sterrett or Larson is affirmed. As previously indicated, claims 2 through 5 and 12 through 14 fall together with claim 1.
In conclusion, we sustain the examiner's rejection of claims 1 through 5 and 12 through 14 under 35 USC 103 as unpatentable over Sterrett or Larson. We do not, however, sustain the examiner's § 103 rejection of claims 17 through 20 over either reference. We enter new grounds of rejection of all the appealed claims under 35 USC 112, first and second paragraphs.
Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within ONE MONTH from the date hereof (37 CFR 1.197).
*5 With respect to the new rejection[s] under 37 CFR 1.196(b), should appellant elect the alternate option under that rule to prosecute further before the Primary Examiner by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire TWO MONTHS from the date of this decision. In the event appellant elects this alternate option, in order to preserve the right to seek review under 35 U.S.C. 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to us for final action on the affirmed rejection, including any timely request for reconsideration thereof.
The examiner's decision is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
AFFIRMED-IN-PART 37 CFR 1.196(b)
BOARD OF PATENT APPEALS AND INTERFERENCES
Sherman D. Winters
William F. Smith
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