Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE ROBERT E. PARKS AND ROBERT L. MARIETTA
Appeal No. 93-2740
September 2, 1993
HEARD: July 15, 1993
Application filed May 31, 1991, Serial No. 708,810, which is a continuation of Serial No. 340,540, filed April 18, 1989, abandoned, for the reissue of Patent No. 4,018,562, granted April 19, 1977, based on application Serial No. 625,510, filed October 24, 1975. Chemiluminescent Nitrogen Detection Apparatus and Method.
Primary Examiner--Jill Johnston
Before Calvert
Vice Chairman
Examiners-in-Chief
Steiner
Examiner-in-Chief
This is an appeal from the final rejection of claims 1 through 10, 20 through 22 and 55 through 106, all the claims in this application for reissue of Patent No. 4,018,562 (the '562 patent).
THE INVENTION
The claimed invention is a method for determining the nitrogen content of a sample comprising manipulative steps which include decomposing the sample in an oxygen/inert gas atmosphere at an elevated temperature to obtain nitric oxide and causing the generated nitric acid to undergo a chemiluminescent reaction with ozone.
Claims 1, 81 and 94 are illustrative and read as follows:
1. The method for determining the total chemically combined nitrogen content of a sample comprising the steps:
a. decomposing said sample in one step in the presence of an oxygen-rich atmosphere of oxygen and an inert gas and at a temperature sufficiently above 700<<degrees>> C. that substantially all of the chemically bound nitrogen is recovered as nitric oxide (NO), such decomposition being conducted in the absence of a catalyst,
b. causing the nitric oxide produced by such decomposition to undergo a chemiluminescent reaction with ozone, and
c. determining the magnitude of the chemiluminescent reaction to indicate the quantity of chemically combined nitrogen in said sample.
81. A method for determining the total chemically combined nitrogen content of a sample, said method comprising the steps of:
(a) decomposing said sample in one step, said decomposing step consisting essentially of decomposing said sample in the presence of an oxygen-rich atmosphere of oxygen and an inert gas and at a temperature sufficiently above 700<<degrees>> C that substantially all of the chemically bound nitrogen is recovered as nitric acid (NO);
(b) causing the nitric oxide produced by such decomposition to undergo a chemiluminescent reaction with ozone; and
(c) determining the magnitude of the chemiluminescent reaction to indicate the quantity of chemically combined nitrogen in said sample.
94. A method for determining the total chemically combined nitrogen content of a sample, said method comprising the steps of:
(a) decomposing said sample in one step in the presence of an oxygen-rich atmosphere of oxygen and an inert gas and at a temperature sufficiently above 700<<degrees>> C that substantially all of the chemically bound nitrogen is recovered as nitric oxide (NO) according to the formula:
R - N + O@2??CO@2 + H@2O + NO
*2 (b) causing the nitric oxide produced by such decomposition to undergo a chemiluminescent reaction with ozone; and
(c) determining the magnitude of the chemiluminescent reaction to indicate the quantity of chemically combined nitrogen in said sample.
THE REJECTIONS
Claims 1 through 10, 20 through 22 and 55 through 80 stand rejected under the first paragraph of 35 U.S.C. 112 for lack of adequate descriptive support. Claims 81 through 106 stand rejected under 35 U.S.C. 251 in that they are broader than the originally patented claims. [FN1] In addition, all the appealed claims stand rejected under 35 U.S.C. 251 for lack of the requisite "error."
The rejection under the first paragraph of 35 U.S.C. 112, the rejection of claims 94 through 106 under 35 U.S.C. 251 as broader than the original claims, and the rejection of all the appealed claims under 35 U.S.C. 251 for lack of the requisite "error" are reversed; the rejection of claims 81 through 93 under 35 U.S.C. 251 as broader than the original claims is affirmed.
OPINION
The Rejection of Claims 1 through 10, 20 through 22 and 55 through 80 under the first paragraph of 35 U.S.C. 112.
The initial burden of establishing a prima facie basis to deny patentability to a claimed invention on any ground is always upon the examiner. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed.Cir.1992). In rejecting a claim under the first paragraph of 35 U.S.C. 112 for lack of adequate descriptive support, it is incumbent upon the examiner to establish that the originally-filed disclosure would not have reasonably conveyed to one having ordinary skill in the art that an appellant had possession of the now claimed subject matter. Wang Laboratories, Inc. v. Toshiba Corp., 993 F.2d 858, 26 USPQ2d 1767 (Fed.Cir.1993). Adequate description under the first paragraph of 35 U.S.C. 112 does not require literal support for the claimed invention. In re Herschler, 591 F.2d 693, 200 USPQ 711 (CCPA1979); In re Edwards, 568 F.2d 1349, 196 USPQ 465 (CCPA1978); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA1976). Rather, it is sufficient if the originally-filed disclosure would have conveyed to one having ordinary skill in the art that an appellant had possession of the concept of what is claimed. In re Anderson, 471 F.2d 1237, 176 USPQ 331 (CCPA1973).
*3 The examiner contends that the rejected claims lack adequate descriptive support because there is "no literal basis for the" [FN2] claim limitation "in the absence of a catalyst." Clearly, the observation of a lack of literal support does not, in and of itself, establish a prima facie case for lack of adequate descriptive support under the first paragraph of 35 U.S.C. 112. In re Herschler, supra; In re Edwards, supra; In re Wertheim, supra.
The examiner notes that in Parks v. Fine, 773 F.2d 1577, 227 USPQ 432 (Fed.Cir.1985), involving the claimed subject matter, the limitation "in the absence of a catalyst" was considered material. Suffice it to say, no issue under the first paragraph of 35 U.S.C. 112 for lack of adequate descriptive support for the limitation "in the absence of a catalyst" was before the court.
We are not unmindful of the decision in Ex parte Grasselli, 231 USPQ 393 (Bd.App.1983) aff'd mem., 738 F.2d 453 (Fed.Cir.1984), which involved claims to a process for the ammoxidation of propane or isobutane employing a catalyst "free of uranium and the combination of vanadium and phosphorus." Under the particular facts in that case, it was held that the negative limitation introduced new concepts in violation of the description requirement of the first paragraph of 35 U.S.C. 112, citing In re Anderson, supra. In the situation before us, [FN3] it cannot be said that the originally-filed disclosure would not have conveyed to one having ordinary skill in the art that appellants had possession of the concept of conducting the decomposition step generating nitric acid in the absence of a catalyst. See, for example, column 5 of the '562 patent, first paragraph, wherein FIG. 4 is discussed. Pyrolysis temperatures of between 600<<degrees>> C and 700<<degrees>> C, and above 700<<degrees>> C were employed to achieve conversion of chemically bound nitrogen to nitric oxide. Smooth conversion was obtained above 700<<degrees>> C, while the optimum conversion was found to occur above 900<<degrees>> C. Throughout the discussion which would seem to cry out for a catalyst if one were used, no mention is made of a catalyst. [FN4]
Moreover, according to two declarations by Wentworth, a professor of chemistry at the University of Houston, whose expertise in this particular art has not been challenged, one having ordinary skill in the art would have recognized that the reaction generating nitric oxide, according to the equation disclosed in the '562 patent, is conducted without a catalyst. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed.Cir.1991); In re Lemin, 364 F.2d 864, 150 USPQ 546 (CCPA1966). Thus, it cannot be said that the originally-filed disclosure would not have conveyed to one having ordinary skill in the art the concept of effecting decomposition at an elevated temperature in the absence of a catalyst. In re Anderson, supra.
*4 Accordingly, the examiner's rejection of claims 1 through 10, 20 through 22 and 55 through 80 under the first paragraph of 35 U.S.C. 112 for lack of adequate descriptive support is reversed.
The Rejection of Claims 81 through 106 under 35 U.S.C. 251 as Broader than
the Original Claims.
We initially observe that on page 6 of the Brief,
appellants agree that any claim in the reissue application that does not contain a limitation that means "in the absence of a catalyst" is broader than original claims 1-10 and hence unpatentable under 35 USC 251 (appellants' emphasis).
Claims 81 through 106 do not contain a negative limitation which expressly precludes the presence of a catalyst. However, appellants contend that claims 81 through 93 exclude the presence of a catalyst by virtue of the phrase "consisting essentially of" in characterizing the decomposition step, and that claims 94 through 106 exclude the presence of a catalyst by virtue of the recited equation for the decomposition reaction, which equation does not reflect the presence of a catalyst.
In our opinion, the phrase "consisting essentially of," as employed in claims 81 through 93, limits decomposition to a single step and, in that sense, is redundant since decomposition is performed "in one step." However, it is not apparent and appellants have not explained why the expression "consisting essentially of" excludes the presence of a catalyst during the recited decomposition step. [FN5] It would, therefore, appear that claims 81 through 93 are broader than original claims 1 through 10 and, hence, were properly rejected by the examiner under 35 U.S.C. 251. Accordingly, the examiner's rejection of claims 81 through 93 under 35 U.S.C. 251 is affirmed.
Claims 94 through 106 recite the decomposition reaction in a manner which, according to the Wentworth declarations, means that no catalyst was employed. In re Lemin, supra. Accordingly, claims 94 through 106 would not appear broader than original claims 1 through 10 and, hence, the examiner's rejection of claims 94 through 106 under 35 U.S.C. 251 is reversed.
The Rejection of the Appealed Claims Under 35 U.S.C. 251 for Lack of the
Requisite Error.
This rejection is reversed essentially for the reasons advocated by appellants on appeal. We emphasize that the practice of submitting claims as a hedge against the possible invalidity of original claims has been judicially sanctioned. See, for example, Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 11 USPQ2d 1750 (Fed.Cir.1989); In re Altenpohl, 500 F.2d 1151, 183 USPQ 38 (CCPA1974); In re Handel, 312 F.2d 943, 136 USPQ 460 (CCPA1963).
*5 In summary, the examiner's rejection of claims 81 through 93 is affirmed; the rejection of claims 1 through 10, 20 through 22, 55 through 80 and 94 through 106 is reversed.
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
BOARD OF PATENT APPEALS AND INTERFERENCES
Ian A. Calvert
Arthur J. Steiner
Henry W. Tarring II
FN1. The ultimate paragraph of 35 U.S.C. 251 reads as follows:
No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
FN2. See page 4 of the Answer, second full paragraph, line 4, and page 7 thereof, last two lines.
FN3. Whether the requirement for an adequate written description has been met is a question of fact and, hence, driven by the exigencies of each case. Wang Laboratories, Inc. v. Toshiba Corp., 993 F.2d 858, 26 USPQ2d 1767 (Fed.Cir.1993).
FN4. A "catalyst" normally functions to accelerate a particular reaction. See for example, Hawley, Condensed Chemical Dictionary, Tenth Edition, 1981, pp. 205 and 206, copies of which are enclosed for appellants' convenience and made of record.
FN5. Compare Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805, 812, note 6 (Fed.Cir.1986).
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