Appeal No. 2002-2243 Page 6
Application No. 09/768,321
Our discussion, supra, with respect to our interpretation of claim 21 applies
likewise to claim 23. In other words, we interpret claim 23, consistent with the
understanding of one of ordinary skill in the field of appellant’s invention, as requiring a
step of spraying the tree bark or wood chips with an aqueous solution of borate salt in a
concentration and an amount to produce a mulch ineffective in protecting the mulch
from infestation by termites and effective in killing termites in a colony remote from the
mulch. As pointed out above, Palmere is clear and unambiguous in teaching the
application of a boron containing compound to a material in an amount effective in
protecting the material from termite infestation. While Palmere does teach the use of
diluted formulations (1:100 dilutions) in which the concentration of boron containing
compound is “about 0.5 weight percent” of the formulation as called for in claim 23,
Palmere provides absolutely no teaching or suggestion to apply these formulations in
amounts ineffective to protect the material from termite infestation.
While the examiner’s general observation (answer, page 4) that one skilled in the
art would have found it obvious to employ routine experimentation in determining the
exact concentration of borate salt to suit his or her purpose may be correct, Palmere
does not teach or suggest the purpose of achieving the result called for in claim 23,
namely, producing a mulch ineffective in protecting the mulch from termite infestation.
The mere fact that the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the desirability of the modification.
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