Ex Parte Endepols et al

Patent Trial and Appeal Board

Mar 19, 2013

10513525 (P.T.A.B. Mar. 19, 2013)

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.

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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:
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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.
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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.
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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
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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
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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
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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
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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
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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
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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