Appeal No. 94-3973
Application 08/029,754
with respect to appealed claims 8 and 9. We affirm the second ground of rejection.
Rather than reiterate the respective positions advanced by the examiner and appellants, we refer
to the examiner=s answer (Paper No. 12) and to appellants= brief (Paper No. 9) for a complete
exposition thereof.
Opinion
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the ground of rejection of method claims 8 and 9 on appeal under 35 U.S.C ' 103 over
Lundberg or Thaler. In determining the subject matter sought to be patented, and mindful that we must
give the broadest reasonable interpretation to the terms of the appealed claims consistent with
appellant's specification as it would be interpreted by one of ordinary skill in this art, we find that one of
ordinary skill in this art would have concluded from appellants= specification (e.g., pages 4, 5, 7 and 9)
that the term Ahydrocarbon oil@ appearing in appealed claim 8 is an Aoil used in oil-based drilling mud
compositions@ (specification, page 4). In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997); York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568,
1572-73, 40 USPQ2d 1619, 1622 (Fed. Cir. 1996), and cases cited therein (a claim term will be given
its ordinary meaning unless appellant discloses a novel use of that term); In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). supra (ADuring patent examination the pending
claims must be interpreted as broadly as their terms reasonably allow. When the applicant states the
meaning that the claim terms are intended to have, the claims are examined with that meaning, in order
to achieve a complete exploration of the applicant=s invention and its relation to the prior art.@).
We are of the opinion that the examiner has failed to make out a prima facie case of
obviousness because the non-reactive hydrocarbon solvents taught in both Lundberg (e.g., col. 4, lines
46-48, and Examples 1-3) and Thaler (col. 3, lines 50-51) are volatile hydrocarbon liquids and not
hydrocarbon oils as specified in appealed claim 8. We find no evidence or explanation on this record
why one of ordinary skill in this art would have considered conducting the sulfonation reaction as taught
in Lundberg and Thaler in hydrocarbon oils that are used in oil-based drilling muds or that such volatile
hydrocarbon solvents as hexane are used as oils in oil-based drilling mud compositions. Indeed, the
examiner=s position is based on his conclusion that the Areaction media are no different from media for
the end use of the product@ (answer, page 5). Thus, even if one of ordinary skill in this art modified the
process of Lundberg and of Thaler by omitting the recovery steps used to obtain the sulfonated or
neutralized sulfonated polymer per se as proposed by the examiner, it is not apparent on this record that
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