Appeal No. 1997-3355
Application No. 08/375,456
of sugars, (b) without drying the particles, applying a powdered wax coating to the
emulsion-coated particles, (c) tumbling the particles to polish the wax coating, and
(d) drying the polished particles.
The Biddle process includes (a) applying an emulsion, (b) drying the applied
emulsion, (c) imprinting indicia, (d) drying the indicia, (e) applying a protective
transparent outer coating of a suitable material, and (f) polishing the protective
transparent outer coating. See column 2, lines 29-38 of Biddle.
The examiner asserts that steps (b), (c), and (d) of Biddle are extra steps, not
specifically included in appellant’s claim 1 (Answer, page 4). The examiner also
asserts, however, that the omission of a method step of a known process with the
corresponding omission of that step’s function is not patentable and cites In re
Brown and Kernan, 228, F.2d 247, 249, 108 USPQ 232, 234 (CCPA 1955), and
concludes that appellant’s claims 1 and 14 would have been obvious in view of
Biddle.
The function of the process steps in Biddle of (b) drying the applied
emulsion, (c) imprinting indicia, and (d) drying the indicia, are to obtain clearly
visible identifying markings, without the use of hazardous materials, in a simpler and
less time consuming way (column 2, lines 9-28). Also, the wax emulsion can serve
as a final color coat. Without these steps, the objects of Biddle’s invention would
not be obtained. Accordingly, these steps are critical aspects of Biddle’s process,
and there exists no reasonable basis for omitting them from Biddle’s process, and
the examiner has not pointed out such a basis. Hence, it would not have been
obvious to one of ordinary skill in the art to omit the critical steps of Biddle. Ex
parte Robert K. Schultz [complete cite].
Moreover, assuming, arguendo, that Biddle’s process could have been
altered as suggested by the examiner, Biddle does not teach or suggest the use of
a dry, powdered wax coating as required by appellants’ claim 1, as pointed
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