Ex Parte Endepols et alDownload PDFPatent Trial and Appeal BoardMar 19, 201310513525 (P.T.A.B. Mar. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte STEFAN ENDEPOLS and THOMAS BOCKER __________ Appeal 2011-006996 Application 10/513,525 Technology Center 1600 __________ Before ERIC GRIMES, FRANCISCO C. PRATS, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to water- based rodenticidal gel compositions. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-006996 Application 10/513,525 2 STATEMENT OF THE CASE Appellants’ invention “relates to water-based rodenticidal gels which do not cure, remain attractive to harmful rodents for long period, retain their viscosity and adhere permanently to surfaces” (Specification, Abstract). Claims 1-2 and 6-11 are on appeal. Claims 1, 6 and 9 are representative and read as follows: 1. A composition comprising (a) water as a dispersant; (b) thickener selected from the group of organic and inorganic macromolecules; (c) active compounds selected from the group of stomach poisons; (d) bait materials selected from coarse and fine cereal meals or flaked cereals, ground coconut, grated nuts, ground nuts, vegetable fats/oils, animal fats/oils, and proteins; (e) preservative(s); and (f) humectants from the group of polyols. 6. The composition according to Claim 1, wherein said composition has a viscosity range of 10,000 - 50,000 mPas. 9. A composition comprising (a) water as a dispersant; (b) thickener selected from the group of organic and inorganic macromolecules; (c) active compounds selected from the group of stomach poisons; (d) bait materials selected from the group of vegetable and animal foodstuffs and feeding stuffs; (e) preservative(s); and (f) humectants from the group of polyols; wherein said composition has a pH range of pH 3 to pH 7. The claims stand rejected as follows: Appeal 2011-006996 Application 10/513,525 3 I. Claims 1, 2, 7 and 8 under 35 U.S.C. § 103(a) over the combination of Marshall, 1 Morimoto, 2 Alexander, 3 and Emerson. 4 II. Claims 6 and 9-11 under 35 U.S.C. § 103(a) over the combination of Marshall, Morimoto, Alexander, Emerson and Grassman. 5 I. Issue The Examiner has rejected claims 1, 2, 7 and 8 under 35 U.S.C. § 103(a) over the combination of Marshall, Morimoto, Alexander, and Emerson. The Examiner finds that “Marshall fails to teach the bait material as being vegetable/animal oils/fats[,] ... fails to teach the humectant as being a polyol and fails to include an antioxidant such as ascorbic acid” (Ans. 4). For these missing elements, the Examiner relies on Morimoto, Alexander and Emerson. The Examiner concludes that “it would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of Marshall, Morimoto, Alexander and Emerson with a reasonable expectation for success in arriving at a composition” of claim 1 (id. at 5). Appellants contend that “the Examiner fails to set forth sufficient reasons as to why one of skill in the art would have selected the various materials taught in the references and then combined them as claimed” (App. Br. 9). 1 Marshall, WO 00/02447, published Jan. 20, 2000. 2 Morimoto et al., US 5,364,643, issued Nov. 15, 1994. 3 Alexander et al., US 5,135,744, issued Aug. 4, 1992. 4 Emerson, US 6,124,275, issued Sep. 26, 2000. 5 Grassman et al., US 5,017,620, issued May 21, 1991. Appeal 2011-006996 Application 10/513,525 4 The issue presented is: Does the evidence of record support the Examiner’s conclusion that the cited prior art renders claim 1 obvious? Findings of Fact The following findings of fact (“FF”) are supported by a preponderance of the evidence of record. FF1. Marshall discloses “a bait matrix which includes a gelling agent and a pesticide” (Marshall, Abstract). FF2. The composition in Marshall comprises: water; carrageenan and sodium alginate (thickener); sodium fluoroacetate (active agent); glydant plus (preservative); and glucose syrup (humectant 6 ) (Marshall 5, Table 1). FF3. Morimoto discloses that edible humectants include “glycerol, propylene glycol, corn syrup, dextrose, honey, fructose, high fructose corn syrup and mixtures thereof” (Morimoto, col. 2, ll. 45-48). “The humectant is selected to achieve a desired texture as well as achieve a desirable taste” (id. at col 2, ll. 48-49). FF4. Alexander discloses “palatable pesticidal compositions comprising an ethylene/vinyl acetate copolymer, a bioactive agent, a protein/carbohydrate/lipid source and optionally various other additives” (Alexander, col. 1, ll. 14-17.) FF5. The protein/carbohydrate/lipid source may include fish meal, powdered fish, crab or other crustacean meal, meat scraps, milk solids, blood meal, grain flour (wheat flour, corn flour, etc.), wheat middlings, wheat bran, soybean meal, 6 Marshall describes the purpose of the glucose syrup as “evaporation control” (Marshall 5, Table 1). “Humectants prevent drying out of [a] gel” (Spec. 9:14); Marshall’s glucose syrup is therefore a humectant. Appeal 2011-006996 Application 10/513,525 5 corn meal, corn gluten meal, sugar, molasses, algae meal, dried yeast, beans, rice, cottonseed and numerous animal and plant by-products well-known to one skilled in the art or mixtures thereof (id. at col. 10, ll. 28-36.) FF6. Emerson discloses an “insect/rodent fumigant” (Emerson, col. 11, l. 41). FF7. Emerson discloses that the “composition can include an antioxidant at a level sufficient to increase the product shelf life, inhibit decomposition of the active compound in the herbicidal composition, or improve the stability of the controlling effect when the composition is applied to hosts infested with the targeted pests” (id. at col. 8, ll. 31-36). FF8. “Suitable antioxidants, include ... vitamin E, ... α-tocopherol, and the like” (id. at col. 8, ll. 36-45). Principles of Law “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, a prima facie conclusion of obviousness may be supported by a showing that a combination of familiar elements according to known methods yields no more than predictable results. Id. at 401; citing United States v. Adams, 383 U.S. 39, 40 (1966). Furthermore, the Supreme Court has emphasized that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of Appeal 2011-006996 Application 10/513,525 6 ordinary skill in the art would employ.” Id. at 418. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Analysis We adopt the Examiner’s fact finding and rationale as our own. The evidence on this record supports the Examiner’s finding that the combination of references teaches all elements of the claims (FF1-FF7). The Examiner has presented a sound rationale as to why a person of ordinary skill in the art would have modified the bait compositions of Marshall with the teachings of Morimoto, Alexander, and Emerson to arrive at the claimed composition (see, e.g., Ans. 3-5 and 7-9), and thus has provided sufficient evidence to support a prima facie case of obviousness. Having done so, the burden shifted to Appellants to provide evidence that the claimed combination of known elements would do more than yield predictable results, KSR, 550 U.S. at 416, or that the compositions in the prior art did not possess the claimed properties. Appellants have not met this burden. As explained by the Examiner, Morimoto is relied upon to solely to demonstrate the fact that both glucose syrup and glycerol were known humectants (FF3) and support the rationale “that humectants useful in one composition (dried fruit) would have the same benefit in other types of compositions (bait formulations)” (Ans. 8). Appellants do not present any Appeal 2011-006996 Application 10/513,525 7 clear or specific rebuttal evidence sufficient to overcome the Examiner’s finding. Appellants further argue that a person of ordinary skill in the art would have no reason to modify the composition of Marshall with the teachings of Morimoto, Alexander and Emerson, so as to improve the properties thereof. We are not persuaded. In this case, the Examiner finds that the combination of references would have suggested the claimed composition (Ans. 4-5) and we find no specific evidence on record to suggest the contrary. For example, Appellants provide no specific evidence establishing that the references are not combinable in the manner set forth by the Examiner. Appellants merely allege that the references would not have been combined in this manner (see, e.g., App. Br. 11, 13-14, and 15-17). This is insufficient to rebut the prima face case of obviousness. The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants further contend that both Morimoto and Alexander are non-analogous art. We are not persuaded. The test for non-analogous art determines whether it is “reasonably pertinent to the particular problem with which the inventor was involved.” In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is reasonably pertinent if, even though it may be in a different field” of endeavor, it logically would have commended itself to an inventor’s attention in considering his problem “because of the matter with which it deals.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Both Morimoto and Alexander disclose edible compositions and provide lists of Appeal 2011-006996 Application 10/513,525 8 ingredients for use in edible compositions. While the edible compositions are formulated for different purposes, we nonetheless find both Morimoto and Alexander to be reasonably pertinent to the problem of formulating of edible bait compositions. With regard to claims 7 and 8, Appellants’ arguments address the individual teachings of the references rather than what is taught or suggested by the combination of references (See App. Br. 17). As discussed above, we find that the Examiner has provided a rational basis for the proposed modifications. The fact that neither Morimoto nor Alexander disclose gel formulations is not sufficient to establish that the references are not combinable with Marshall, which does disclose gel formulations. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (Each reference “must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.”). We are therefore not persuaded by Appellants’ arguments to the contrary. Conclusion of Law The preponderance of evidence on this record supports the Examiner’s finding that the combination of references renders claim 1 obvious. Claims 2, 7 and 8 fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). II. Issue The Examiner has rejected claims 6 and 9-11 under 35 U.S.C. § 103(a) over the combination of Marshall, Morimoto, Alexander, Emerson and Grassman. The Examiner finds that the above references “fail to teach the composition as having a viscosity between 10,000-50,000 mPas and a Appeal 2011-006996 Application 10/513,525 9 pH between 4-6” and that “Grassman cures these deficiencies” (Ans. 6). In reaching a conclusion of obviousness, the Examiner finds that One would have been motivated to adjust the viscosity of the composition []to a viscosity of about 10,000 mPas because in doing so would ensure that the composition was viscous enough that when applied to the environment, it would remain in place and not ooze away, thereby remaining in the environment where the unwanted pest would eat it and die. One would have been motivated to also adjust the pH of the composition to a value within the instantly disclosed range. This is because by hav[ing] a slightly acidic pH, the preservatives efficacy will be optimized as well as protect the active pesticide from breaking down. (Id.) Appellants contend that “the Examiner has not shown that [viscosity modifications] would be possible with the composition of Marshall, let alone with the composition of Marshall after the numerous modifications that would be necessary for it to have the other various claimed features” (App. Br. 19). Appellants further contend that “the Examiner fails to establish a link between the preservatives used in Grassman that benefit from a slightly acidic pH and those used in Marshall” (id. at 20). Appellants’ arguments related to the combination of Marshall, Morimoto, Alexander and Emerson are addressed in Section II above. Thus, the remaining issue with respect to this rejection is: Does the evidence of record support the Examiner’s finding that the cited prior art renders claims 6 and 9 obvious? Additional Findings of Fact FF9. Grassman discloses that “[t]he thickeners are used in an amount effective to provide a pesticide composition having a viscosity ranging Appeal 2011-006996 Application 10/513,525 10 between about 6,000 centipoise to about 18,000 centipoise at 20° C” (Grassman, col. 4, ll. 55-58). FF10. Grassman discloses that “[c]ontrol of the pH of the final product helps to optimize the effectiveness of the preservatives which tend to be most effective at a pH ranging from about 4.0 to about 4.5” (id. col. 6, ll. 23-26). Analysis The Examiner has presented a sound rationale as to why a person of ordinary skill in the art would have modified the bait composition suggested by the combination of Marshall, Morimoto, Alexander, and Emerson with the teachings of Grassman to arrive at the composition of claims 6 and 9 (Ans. 6). We find the Examiner’s fact finding and rationale sufficient to support a prima facie case of obviousness. Having done so, the burden shifted to Appellants to provide evidence that the claimed combination of known elements would do more than more than yield predictable results, KSR, 550 U.S. at 416, or that the compositions in the prior art did not possess the claimed properties. Appellants have not met this burden. Appellants provide no evidence to establish that the cited references are not combinable in the manner set forth by the Examiner. “Attorney’s argument in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). We adopt the Examiner’s fact finding and rationale as our own. Conclusion of Law The preponderance of evidence on this record supports the Examiner’s finding that the combination of references renders claims 6 and Appeal 2011-006996 Application 10/513,525 11 9 obvious. Claims 10 and 11 fall with claims 6 and 9. 37 C.F.R. § 41.37(c)(1)(vii). SUMMARY We affirm all rejections on appeal. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc Copy with citationCopy as parenthetical citation