In Re Michael J. Mccarthy and Phillip v. Schillaci, 846 F.2d 77 (Fed. Cir. 1988)

DECISION

The decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences (board), denying reconsideration of the board's decision affirming the examiner's final rejection of claims 1 through 7 in Michael J. McCarthy and Phillip V. Schillaci's (collectively McCarthy's) application Serial No. 582,982 under 35 U.S.C. § 103, is affirmed.

OPINION

McCarthy's eight alleged distinctions fail to show error in the board's conclusion that the invention recited in the claims would have been obvious to one of ordinary skill in the art.¹  The examiner's rejection and the various decisions by the board²  were supported by the expected skill of one of ordinary skill in the art in light of the prior art.

For example, McCarthy's principal arguments, that the French reference does not operate at three temperatures (because it states its process is isothermal) and that the reference "avoids suggesting heating the solution," relate to the batch process claimed by the French reference. McCarthy has not shown that it would have been nonobvious to substitute a continuous process referred to in the French reference for the batch process claimed in that reference. Further, McCarthy's "temperature" argument ignores the French reference's disclosure that the ammonia and water vapor may be removed in an auxiliary evaporator, separate from the crystallizer.

It is irrelevant that neither the French nor the Perry reference specifically discloses the phase relationships of sodium persulfate, sodium sulphate, and water. In light of Perry's express suggestion for use of a phase diagram, we agree with the board that the amount of dilution would be ascertainable by routine experimentation.

In sum, the board correctly concluded that "the steps of [McCarthy's] claimed process merely comprise modifications of the batch (cyclic) process specifically disclosed by the French patent which would have been prima facie obvious to the skilled practioner practicing the process in a continuous manner as specifically suggested by this reference." That prima facie case has not been overcome by McCarthy's submissions, increased purity being at least prima facie an expected result of the addition of water to selectively crystallize only sodium sulfate decahydrate, a step noted in the Perry reference. Accordingly, we affirm on the basis of the board's opinion.