In re Fout, Appeal No. 81-547.

Decision Date17 June 1982
Docket NumberAppeal No. 81-547.
PartiesIn re Gary W. FOUT, Abraham R. Mishkin, and Rathindra N. Roychoudhury.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

William H. Vogt, III, Morris N. Reinisch and Marcus J. Millet, White Plains, N. Y., for appellants.

Joseph F. Nakamura, Sol., and Gerald H. Bjorge, Associate Sol., Washington, D. C., for Patent and Trademark Office.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER, and NIES, Judges.

MILLER, Judge.

This is an appeal from the decision of the Patent and Trademark Office ("PTO") Board of Appeals ("board") holding claims 1-20 in appellants' application1 obvious under 35 U.S.C. § 103. We affirm.

BACKGROUND
The Invention

Appellants claim an improvement over the process of Pagliaro et al. ("Pagliaro") which was the subject of our decision in In re Pagliaro, 657 F.2d 1219, 210 USPQ 888 (CCPA 1981). The Pagliaro process is a method for producing a decaffeinated vegetable material such as coffee or tea. A fatty material is used to extract caffeine from the vegetable material. The caffeine-laden fatty material is separated from the vegetable material and may be regenerated by contacting it with water, which reduces its caffeine content. The resultant aqueous solution may then be treated to recover caffeine. The Pagliaro process, minus the regeneration step, is set forth in the preamble of appellants' Jepson-format claims. Appellants describe and claim their invention as an improvement over the Pagliaro process which comprises regenerating the fatty material by evaporative distillation instead of aqueous extraction. Claim 1 is representative:

In a process for producing a decaffeinated vegetable material suitable for consumption in beverage form wherein caffeine-containing vegetable material is extracted with a volume of recirculating liquid, water-immiscible edible fatty material in a decaffeination zone for a period of time sufficient to transfer caffeine from said vegetable material into said fatty material, and wherein the caffeine-laden fatty material resultant from extraction is separated from said vegetable material and is conveyed to a regeneration zone for removal of caffeine prior to recirculation to said decaffeination zone, the improvement which comprises subjecting the caffeine-laden fatty material in said zone to regenerative vaporization conditions such as to vaporize caffeine from said fatty material and further to vaporize from said fatty material any fatty material degradation products present therein. Emphasis added.

Dependent claims 2-6, 8-10, 12-14, 19, and 20 contain various limitations that specify fatty material, vegetable material, time, and temperature and that the caffeine be evaporated from a thin film of fatty material. Claims 7, 11, 15, and 16 specify that a carrier gas be passed over the fatty material to increase the rate of removal of caffeine. Claims 17 and 18 specify the moisture content of the coffee beans.

The References

Waterman et al. ("Waterman"), U. S. patent No. 2,129,596, teaches suspending solid material in vegetable oil, then subjecting the material to evaporative distillation. Evaporative distillation is accomplished by heating the oil-solid mixture in a vacuum. The mixture may be in the form of a film. The reference states: "Solid alkaloids usually regarded as non-volatile, such as caffeine may be recovered in pure form under the present invention, avoiding the usual more tedious physical and chemical processes. Fine ground tea or coffee is suspended in oil and transmitted through the still, the alkaloids distilling over and being condensed."

Barch, U. S. patent No. 2,817,588, teaches a decaffeination process in which caffeine is removed from a solvent by evaporating the solvent, which is then recirculated.

Bergell, U. S. patent No. 1,996,852, teaches the use of a carrier gas to enhance removal of vaporizable materials from liquids. Bergell also teaches that fatty acids can be removed from neutral oils by evaporative distillation.

Dunning et al. U. S. patent No. 2,779,724, also teaches the use of a carrier gas such as steam in thin film evaporative distillation.

Mitchell et al., U. S. patent No. 3,682,648, teaches controlling the moisture content of coffee beans which are to be extracted with an ester solvent.

The Rejection

The examiner maintained that because the preamble of the claims is in Jepson format, it sets forth "that which is known." Claims 1-6, 8-10, 12-14, 19, and 20 were rejected on the preamble in view of Barch and Waterman. Claims 7, 11, 15, and 16 were rejected on Barch and Waterman in view of Bergell or Dunning et al.; claim 17 was rejected on those four references in view of Mitchell et al.; and claim 18 was rejected on the references applied to claim 1 in view of Mitchell et al.

The Board's Decision

The board affirmed the examiner's rejections and adopted his reasoning as its own. As to whether the preamble portion of the claims was available as prior art, the board stated:

The essence of appellants' position appears to be that the process steps set forth in the preamble portion of claim 1 may not in any way be used as prior art against the presently claimed subject matter, since such steps were not patented or described in a printed publication in this or a foreign country, nor were they publicly known or practiced in this country, more than one year prior to the effective filing date of this application. Appellants' contentions are without merit.
It is well established that the use of Jepson format is, in effect, an admission by appellants that the process steps recited in the preamble are known in the art, leaving for consideration whether the recitation following the improvement clause imparts patentability to the claims. Moreover, appellants readily acknowledge that they did not invent the process of decaffeinating a vegetable material with an edible fatty material, which process is summarized in the preamble of claim 1, note page 2, last three lines of the Reply Brief. In view of the foregoing admission, the steps set forth in the preamble of claim 1 may be considered prior art for any purpose, including as evidence of obviousness under 35 USC 103. Appellants have conceded what is to be considered as prior art in determining the obviousness of their improvement.
Issues

The issues presented are: (1) whether the Pagliaro invention, set forth in the preamble, constitutes "prior art" under 35 U.S.C. § 103, and (2) if so, whether the subject matter claimed would have been obvious to a person of ordinary skill in the art at the time the invention was made in view of that prior art and the references of record.

OPINION
1. The Pagliaro Invention

The Solicitor contends that appellants' use of the Jepson format preamble in claim 1 constitutes an admission that the Pagliaro process described in the preamble is prior art to them. Appellants do not dispute that the Pagliaro process was prior to their invention and that they had knowledge of it before making their invention. That process is what was before us in the 1981 Pagliaro case, supra, and appellants specifically refer to the applications describing it in the application now before us. They then describe the presently claimed invention as "an improved means for regenerating used fatty material employed in the decaffeination of vegetable materials." That improved means is then stated to be "removing the caffeine by vaporization." In other words, they have invented an improvement on the last step of the Pagliaro process, the removal from the fatty material of the caffeine, and, coincidentally, any degradation products which may be present. Appellants' brief concedes:

The board's opinion stated (correctly, we emphasize), "appellants readily acknowledge that they did not invent the process of decaffeinating a vegetable material with an edible fatty material, which process is summarized in the preamble of claim 1."

What appellants argue is that the above concession is not an admission that said decaffeination process is "legally available as prior art against the claims," and that the PTO's position is in conflict with the decision of this court in In re Ehrreich, 590 F.2d 902, 200 USPQ 504 (CCPA 1979).2 Thus, the first issue is raised.

The way appellants state the issue is: "The preamble of appellants' own claims cannot properly be used as a reference against them." However, more is involved than the claim preamble. Claims must always be read in the light of the specification. Here, the specification makes plain what appellants did and did not invent, as we have noted above, and the claims, taken as a whole, are entirely consistent therewith. Appellants in their brief concede what they did not invent, leaving only the question of law — whether we can use the Pagliaro invention described in the preamble as "prior art" under section 103.

This court has recognized that section 102 is not the only source of section 103 prior art.3 Valid prior art may be created by the admissions of the parties. See In re Nomiya, 509 F.2d 566, 570-71, 184 USPQ 607, 611 (CCPA 1975); In re Hellsund, supra, 59 CCPA note 3 at 1387, 474 F.2d at 1311, 177 USPQ at 173; In re Bass, 59 CCPA 1342, 474 F.2d 1276, 177 USPQ 178 (1973); In re Garfinkel, 58 CCPA 883, 887, 437 F.2d 1000, 1004, 168 USPQ 659, 662 (1971); In re LoPresti, 52 CCPA 755, 333 F.2d 932, 142 USPQ 176 (1964); Turner, Admissions as Prior Art Under 35 USC 103, 52 J.Pat.Off.Soc'y 249 (1970). Nor is it disputed that certain art may be prior art to one inventive entity, but not to the public in general. See In re Nomiya, supra, 509 F.2d at 571 n.5, 184 USPQ at 611 n.4 (both footnotes are the same, despite the different numbering).

We hold that appellants' admission that the...

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