Appeal No. 1999-0647 Page 5
Application No. 08/683,411
In rejecting the claims on appeal, it is the examiner's position (final rejection, page 2, and
answer, page 3) that Hedges discloses a mulch consisting of "tree bark, wood chips, and mixtures
thereof" as claimed, but lacks a teaching that the mulch is impregnated with a "borate salt." However,
according to the examiner (Paper No. 4, page 2), it would have been obvious to one of ordinary skill in
the art at the time of appellant's invention to impregnate the Hedges mulch with a borate salt in order to
eliminate insects while providing safety to pets and human beings, in view of the recognition by Savoy
that borate salts are insecticidal while not being toxic to household pets or human beings.
We conclude that, even if Hedges and Savoy were combined as proposed by the examiner,
there is no teaching or suggestion in either Hedges or Savoy to impregnate "a mulch consisting of tree
bark, wood chips, and mixtures thereof," as used in the claims, with a borate salt to arrive at the
claimed invention. Given our interpretation of "a mulch consisting of tree bark, wood chips, and
mixtures thereof" as discussed above, it should be clear that we find untenable the examiner's position
that the mulch of plastic chips of Hedges is such a mulch. We are also not persuaded by the examiner's
suggestion (final rejection, page 3) that the use of a "natural mulch" impregnated with a borate salt
would have been obvious to one skilled in the art "since the disadvantages of natural mulch as pointed
out by Hedges clearly suggests that natural mulch had been used." While we agree with the examiner
that Hedges' discussion of the prior art mulches in column 1, lines 33-64, establishes that naturally
occurring cellulosic materials, such as wood chips, were known for use as mulch material at the time of
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