Appeal No. 2002-2243 Page 5
Application No. 09/768,321
in a colony remote from the mulch but insufficient to protect the mulch itself from termite
infestation.
Palmere teaches application of boron containing formulations to decorative bark
mulch “to protect it from infestation” (column 22, lines 14-16). While Palmere does
disclose applying either undiluted formulations, in which the boron containing
compound ranges from about 20% to about 50% by weight of the formulation (column
13, lines 44-48), or formulations diluted with water by as much as 100 times the weight
of the undiluted composition (column 16, lines 20-22), in which the boron containing
compound is on the order of about .55% by weight of the formulation, Palmere
repeatedly makes it quite clear that the objective of the treatment is to apply sufficient
amounts of the boron containing compound to the material to protect it from infestation
or to prevent or eradicate infestation from the material. Consequently, Palmere cannot
be considered to disclose the step of spraying the tree bark or wood chips to produce a
mulch ineffective in protecting the mulch from infestation by termites as required by
claim 21. We thus reach the conclusion that the subject matter of claim 21 is not
anticipated2 by Palmere. Accordingly, we shall not sustain the examiner’s rejection of
claim 21 or of claim 24, which depends from claim 21.
The obviousness rejection
2 Anticipation is established only when a single prior art reference discloses, expressly or under
the principles of inherency, each and every element of a claimed invention. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007