Appeal No. 1996-3112
Application 08/395,170
to use a fungus in an intermediate step between two refining steps as required by claim 1
on appeal. Any suggestion of energy savings which appears in Leatham appears to be
premised upon wood chips being treated with a fungus, not refined wood chips, again as
required by claim 1 on appeal.
Other Issues
1. Vaheri
This merits panel has been made aware of Vaheri. This reference describes what
appears to be the essence of appellant’s invention, i.e., the treatment of once refined wood
chips with enzymes such as laccase can reduce the power consumption of subsequent
refining steps. However, Vaheri does not describe the details of the claims on appeal.
Upon return of the application, the examiner should review Vaheri and other relevant
prior art and determine whether the subject matter as a whole of any claim pending would
have been obvious to one of ordinary skill in the art.
2. Search
We note that it does not appear that the examiner used any of the available
electronic databases in performing his search. Upon return of the application, the
examiner should ensure that all appropriate search tools have been employed in
determining the patentability of the pending claims.
3. Formal matters
As a reminder to appellant and the examiner, we point to the examiner's comments
at the end of the examiner's answer concerning the confusion surrounding whether this
application is a continuation application or a continuation-in-part application.
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