COMMISSIONER'S DECISION
Sulfurizing Lard Oil Product-by-process, composition per se: Claims to
product-by-process and to the composition per se were offered and accepted
during conflict, and no reason found now to disagree that they better define
the invention. Rejection reversed.
********************
This decision deals with the Applicant's request that the Commissioner of
Patents review the Examiner's Final Action on application 134,156 (Class 253-
86). The application was filed February 8, 1972, by Sun Research and Develop-
meat Company and is entitled PROCESS OF SULFURIZING LARD OIL AND OLEFIN AND
RESULTANT PRODUCT. The inventor is Alexander D. Recchuite. The Examiner in
charge issued a Final Action on November 19, 1982 refusing the application.
The application relates to a process and a composition which involves blending
from 90 to 50 and preferably from 88 to 70 parts by volume of triglyceride and
from 10 to 50 and preferably from 12 to 30 parts by volume of an olefin, adding
sulfur or sulfur monochloride, and then blowing the sulfurized blend with a gas
to remove hydrogen sulfide.
In the Final Action the Examiner rejected certain claims for indefiniteness, for
redundancy, and for lack of support by the disclosure. He said in that action,
la part, as follows:
The refusal of claims 41, 43-46, 47-51 and 52-57 is main-
tained. Claim 1-40(sic) are allowable.
Product claims in per-se and by-process form may not be
retained in the same application. Chapter 8.04.02 of M.O.-
P.O.P. outlines the requirements needed for a product not
governed by Section 41 of Patent Act. These include the de-
finition and the best form (structure), if known, under Sec-
tion 36 of the Patent Act. Claim 18 of the present applica-
tion defines a composition in terms of its specific consti-
tuente is per-se form as do claims 30, 39 and 40. Product-
by-process claims 42 and 52 to 57 either define the same
product and they are therefore redundant or represent
product claims of a different but indeterminate mixture and
of a different scope. The above by-process claims are inde-
finite. The presence of both types of claims makes it
impossible to determine what composition the applicant
regards as new and in which he claims an exclusive property
or priviledge.
Claim 47 to 51 and 43 to 46 are rejected for lack of support by the
disclosure and of being irrelevant to the subject matter of the
entire specification. There is no statement or disclosure in the
present specification or any experiment specifically teaching the
presence of a free fatty acid as being essential to the present in-
vention. There is nothing in the disclosure correlating a free fatty
acid with the utility of the process and composition.
Firstly, the existence of a free fatty acid in the lard oil is inci-
dental and undesirable as disclosed on page 3 last paragraph, for
solubility reasons. Secondly the present composition can be prepared
without free fatty acid components, as disclosed. The applicant
neither thought of a composition purposely containing free fatty acid
as essential ingredient nor explained the function of this ingre-
dient. The applicant simply never invented a composition as the one
described in claim 47 etc., which he introduced long after the filing
of this application. Finally the above claims contain subject matter
that is entirely different and not pertinent to the original specifi-
cation. The above claims must be deleted.
. . .
In presenting his case for allowance of the claims, Applicant argued,
in part, as follows:
. . .
The Examiner in the Official Action had suggested that product claims
in per se and by process form may not be retained in the same
application and has brought to attention certain claims which define
a composition in terms of specific constituents in per se form and
also claims which define the product-in-process dependent form. In
considering the product-by-process claim, claim 42, it is brought to
the attention of the Examiner that claim 42 was originally in the con-
flict and bore marginal designation C9. It was the Examiner who intro-
duced such form of claim and it is respectfully brought to the atten-
tion of the Patent Office that claim 18 as well as claims 30, 39 and 40
were on file at that time. It is Applicant's understanding that any
claim presented for conflict purposes should be an allowable claim to
the Applicant if successful in the conflict.
. . .
In view that both forms of claims have been introduced by the Patent
Office into the application via the conflict Applicant believes that
he should also be entitled to additional product-by-process form of
claims as represented by claims 52 to 57. Although the Examiner sug-
gests that the claims to the composition per se and product-by-
process form of claim define the same product and would be considered
redundant this has not been substantiated and as previously indicated
interpretations vary thus Applicant believes that both form of claims
are necessary to permit Applicant full coverage of the inventive con-
cept and to prevent domination by another party.
. . .
The Examiner in the Official Action had also rejected claims 47 to 51
and claims 43 to 46 as lacking support in the disclosure and as being
irrelevant to the subject matter of the entire specification. This
rejection by the Examiner is most strenously traversed. There is in
fact clear support for the fatty acid in Applicant's disclosure as
clearly outlined on pages 3 and 4 of the instant application. As in-
dicated on page 3 of the disclosure, the preferred commercial
material contains 2 to 5 percent free fatty acids however 12 to 20
percent content of free fatty acid in lard oils is also indicated as
being suitable. For the Examiner to suggest that the composition
purposely containing free fatty acid as essential ingredient was not
thought of as being an inventive concept has not been substantiated
and it is respectfully submitted that the presence of the free fatty
acid has been clearly taught as being incorporated in the composi-
tions employed.
. . .
Indeed, Applicant makes it clear that his preferred compositions are
made from lard oil containing 2 to 5% free fatty acids. It is clear-
ly erroneous to refuse as unsupported by the disclosure the very com-
position which Applicant has disclosed as being preferred.
. . .
The issues before the Board are whether or not Applicant is entitled to
retain claims to the product in per as form as well as in product-by-process
form, whether or not the claims are supported by the disclosure, and whether
the product-by-process claims are indefinite.
We note that claims 41 and 42 were drafted by the Office to better define
the invention during the conflict proceedings. Applicant has argued that
the Examiner in the Final Action has not substantiated that the composition
per se and the product-by-process claims are redundant, adding furthermore
that both forms of claims are necessary to provide Applicant with full
coverage of the inventive concept.
During conflict the Office suggested claims which were considered as better
defining the invention, and we find no reason to disagree with that point of
view now. We agree with Applicant that he should be entitled to such
claims, particularly since he placed on file what was considered during the
conflict the best form of claims to define his invention, and which distin-
guished his product from all others.
He should also point out that the Applicant has, more than once, drawn to
the Examiner's attention an issued Canadian patent which was copending with
this application in the Patent Office. Applicant has insisted that the
claims rejected by the Examiner should be allowed in re Fry v. Commissioner
of Patents. Since the relevance of the Canadian patent to this application
was not raised in the Final Action we will not deal with the matter here.
We simply note that Applicant has requested allowance of the application in
re Fry with all the claims now present.
We have reviewed the disclosure and we agree with Applicant that there is
support in the disclosure for the rejected claims, and that he is entitled
to claim what he has disclosed. We also find that the objection to the
claims for indefiniteness should not be sustained. The dependency of the
product on the process does not in our opinion make it indefinite.
We note that there has already been a lengthy prosecution, involving con-
flict proceedings resulting in a decision in Applicant's favor, followed by
this Final Action. We recommend that the refusal of the claims on all
counts in the Final Action be reversed, and that the application be returned
to the Examiner for action in accord with the conflict decision.
A. McDonough M.G. Brown S.D. Kot
Chairman Assistant Chairman Member
Patent Appeal Board
I concur in the findings and recommendation of the Patent Appeal Board.
Accordingly, I withdraw the Final Action and return the application for pro-
secution consistent with the recommendation.
J.H.A. Gari‚py
Commissioner of Patents
DATED AT HULL, QUEBEC
this 10th. day of August 1983.
Agent for Applicant
Ridout & Maybee
Site 2300, Richmond-Adelaide Centre,
101 Richmond St. W.
Toronto, Ont.