Ex Parte Gunderman

Patent Trial and Appeal Board

Mar 6, 2019

13906082 (P.T.A.B. Mar. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/906,082 05/30/2013
52360 7590 03/07/2019
Patent Technologies, LLC
20 Office Park Way
Suite 122
Pittsford, NY 14534
FIRST NAMED INVENTOR
Robert Dale Gunderman JR.
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
RDG234 2062
EXAMINER
TOPOLSKI, MAGDALENA
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
03/07/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT DALE GUNDERMAN, JR.
Appeal2017-004637
Application 13/906,082
Technology Center 3600
Before JOHN C. KERINS, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Dale Gunderman, Jr. (Appellant) appeals under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject claims 12-17 and 21-23.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b). An oral
hearing was conducted on January 8, 2019, with Robert Dale Gunderman,
Jr., appearing on behalf of himself.
We AFFIRM-IN-PART and include a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
Appeal2017-004637
Application 13/906,082
THE INVENTION
Appellant's invention relates to a method for biological growth
enhancement of a seed. Independent claims 12 and 21 are illustrative of the
claimed invention and read as follows:
12. A method for biological growth enhancement of a seed
comprising the steps of:
hydro-priming the seed by soaking the seed in water;
exposing the hydro-primed seed to an electrostatic field with
little to no current flow within the electrostatic field;
removing the hydro-primed seed from the electrostatic field
before it germinates; and
providing the hydro-primed seed with conditions favorable for
germination and growth.
21. A method for biological growth enhancement of a selected
seed type comprising the steps of:
hydro-priming a seed of the selected seed type by soaking the
seed in water;
exposing the hydro-primed seed to an electrostatic field having a
field strength that is unique to the seed type where there is little
to no current flow within the electrostatic field;
removing the hydro-primed seed from the electrostatic field after
an electrostatic field exposure time has elapsed that is unique to
the seed type; and
providing the hydro-primed and electrostatically exposed seed
with conditions favorable for germination and growth.
2
Appeal2017-004637
Application 13/906,082
THE REJECTIONS
The Examiner has rejected:
(i) claims 21-23 under 35 U.S.C. § 102(a)(l) as being anticipated by
Yang; 1
(ii) claims 21 and 23 under 35 U.S.C. § 102(a)(l) as being anticipated
byWang; 2
(iii) claims 12-15 under 35 U.S.C. § 103 as being unpatentable over
Levengood (US 3,852,914, issued Dec. 10, 1974) (hereinafter Levengood
'914) in view of Levengood (US 5,740,627, issued Apr. 21, 1998)
(hereinafter Levengood '627); and
(iv) claims 16 and 17 under 35 U.S.C. § 103 as being unpatentable
over Levengood '914 in view of Levengood '627 and Hull (US 7,472,661,
issued Jan. 6, 2009).
ANALYSIS
Claims 21-23--Anticipation by Yang
Appellant maintains that Yang does not disclose a method in which
seeds are hydro-primed or soaked prior to being exposed to an electrostatic
field (ESP), nor does Yang recognize that various seed types have optimal
responses to different field strengths and exposure times. Appeal Br. 9-11.
1 Yang and Shen, "Effect of electrostatic field on seed germination and
seedling growth of Sorbus pohuashanesis," Journal of Forestry Research
(2011) 22(1 ); 27-34.
2 Wang et al., "The effect of high-voltage electrostatic field (HVEF) on aged
rice (Oryza sativa L.) seeds vigor and lipid peroxidation of seedlings,"
Journal of Electrostatics 67 (2009) 759-764.
3
Appeal2017-004637
Application 13/906,082
Taking first the order of soaking and exposure to ESP, although the
Examiner does point to certain portions of the Yang disclosure that state the
order in the same manner as is claimed, the Examiner also points to other
passages in support of the rejection that do not actually support the points
the Examiner attempts to make. Accordingly, below we provide our
analysis of the Yang disclosure.
Yang states, in the "Materials and methods" section, under the
subheading "Electrostatic field treatments," the following:
The pretreatment of seeds involved no soaking, soaking for 1
day[,] or soaking for two days. Then, the seeds were put between
each flat panel in the ESP dispersively.
Yang 28.
Table 1, presented just below this excerpt in the original article,
includes soaking and ESP data for specimens identified as Treatment
Numbers Tl-T12. Relative to the above-quoted excerpt, Treatments Tl-T4
correspond to the seeds "involv[ing] no soaking"; Treatments T5-T8
correspond to the seeds "soak[ ed] for 1 day"; and Treatments T9-T12
correspond to the seeds "soak[ ed] for two days." Id. The excerpt
unequivocally states that Treatments T5-T12 were soaked prior to ESP
treatment.
Yang then discloses a number of different test protocols3 run on the
these pretreated seeds, as well as, in some cases, on what Yang refers to as
"controlled seeds," which are seeds corresponding to Treatments Tl-T12 in
3 Test subheadings are: "The water absorbing ability of seed," "The
measurement of relative electroconductivity," "Germination tests and
pre germination treatments," "Sowing tests of the germinated seeds," and
"Physiological indexes tests of seedlings." Yang 28.
4
Appeal2017-004637
Application 13/906,082
terms of soaking, but having no exposure to ESP treatment. Following the
identification of the test protocols, several of which include additional
soaking of the seeds, Yang presents a discussion of the results, under similar
headings to the test protocols. 4 Yang 29--33. Table 2 provides the
numerical values obtained in the various tests. Id. at 29. The test results are
in columns headed by Y 1-Y 13, and it can be seen that results are presented
for Treatments Tl-T12 originally identified in Table 1. Table 2 also
includes results for Treatment Numbers ck1, ck2, and ck3, which appear to
correspond to what Yang refers to as "controlled seeds" (id. at 28), given
that Table 2 identifies these as having been soaked for zero, one, and two
days, respectively, and indicates that these seeds had no exposure to ESP in
a pretreatment.
With this understanding of the organization of the Yang article, it is
clear that seeds identified by Treatments T5-T12 meet the claim limitations
requiring first soaking or hydro-priming a seed, and then exposing the seed
to an electrostatic field. Accordingly, any arguments by Appellant along the
lines of "[t]here is no mention of soaking first and then treating with ESP,"
(see, e.g., Appeal Br 10) in Yang, are counter to the explicit disclosure in
Yang. Claim 21 further requires that the hydro-primed and electrostatically
exposed seed be provided with conditions favorable for germination and
growth. Although it does not appear that Appellant argues that Yang fails to
disclose this step, we note that the sections in Yang discussing test protocols
4 We note that any additional soaking is in addition to the soaking done prior
to ESP treatment in the pretreatment of seeds, and does not change the fact
that the pretreatment orders the soaking and ESP treatment in the same order
as claimed.
5
Appeal2017-004637
Application 13/906,082
for "Germination tests and pregermination treatments," and the attendant
results in the section headed "Effect of electrostatic field treatments on seed
germination," evidence that the claimed step is performed in Yang.
Appellant's further argument that Yang does not recognize that
various seed types have optimal responses to different field strengths and
exposure times is not commensurate in scope with claim 21. At issue is
claim language reciting growth enhancement of a "selected seed type,"
hydro-priming and exposing to ESP a "seed of the selected seed type,"
wherein the ESP field strength and exposure time are "unique to the seed
type." Appeal Br., Claims Appendix.
The Examiner takes the position that "only one seed type is required
by the claim." Ans. 4. Appellant responds that the expression "selected
seed type" conveys that there are more than one seed type, and if there is a
selected seed type, there must be non-selected seed types. Reply Br. 4.
Appellant further asserts that "[s]election implies that there are choices." Id.
We agree with the Examiner that claim 21 expressly recites a method
performed on a single seed. Appellant's position, though logical, does not
track the claim language. Further, even if claim 21 did require some sort of
selection, that is exactly what Yang does-in selecting "Downy Chinese
mountain ash (Sorbus pohuashanensis)" for conducting its test methods,
which for the germination tests, employ all of the claimed steps.
Further, with respect to the claim limitations requiring that the ESP
field strength and exposure times be "unique to the seed type," we first note
that claim 21 includes no language indicating what is required to be
considered "unique." Appellant argues that
6
Appeal2017-004637
Application 13/906,082
Yang does not disclose or suggest that there are field strengths
and exposure times that are unique to each seed type, but rather,
simply tests several field intensities and durations on one type
of dry seed as part of the experiments conducted on a single
seed type - Sorbus Pohuashanesis. Yang never discusses an
optimal or unique field strength specific to Sorbus
Pohuashanesis or makes the assertion that there are parameters
that are unique ( different) for various seed types.
Appeal Br. 10-11.
The Examiner counters that the experiments in Yang are performed
specifically to determine optimum field strengths and exposure times for the
seed type selected for study. Ans. 3. Yang discloses, as pointed out by the
Examiner (id.), that "[t]he treatment of shortest germination time occurred
when seeds were soaked for two days (X1) and then treated with 201 kV·m-1
(X2) ESP for 30 min (X3)." 5 Yang, p. 30, right-hand column, 11. 8-11. As
such, Appellant's argument that Yang never discusses an optimal field
strength or duration is contrary to the evidence.
Appellant's arguments do not apprise us that Yang fails to anticipate
claim 21. The rejection is thus sustained. Claims 22 and 23 fall with claim
21, in that no separate arguments for patentability of those claims were
presented. In view of the fact that our reasoning and analysis differs in some
aspects from that employed by the Examiner, we exercise our discretion to
designate the affirmance of the rejection as a New Ground of Rejection
under 37 C.P.R. § 4I.50(b).
5 The legend accompanying Table 2 in Yang confirms that parameter X1 is
seed soaking time in water, parameter X2 is ESP intensity or field strength,
and parameter X3 is ESP treatment time.
7
Appeal2017-004637
Application 13/906,082
Claims 21, 23--Anticipation by Wang
Essentially the same issues as discussed above with respect to the
Yang reference are in play in the anticipation rejection in view of Wang.
Wang discloses germination tests conducted on aged rice, stating that,
"[t]he aged rice seeds were soaked in sterile deionized water at 30Q C for 24
hand treated with HVEF," at five different field strengths and for two
different time periods. Wang, p. 760, left-hand column, 11. 45--47. The
Examiner takes the position that this passage establishes that, in order, the
seeds are soaked, and then exposed to ESP treatment. Appellant argues that
the passage does not expressly set this order.
Although we believe that it is reasonable to take the order expressed
as the order actually employed, a rejection based on anticipation may not be
established by probabilities or possibilities. See In re Brink, 419 F.2d 914,
91 7 ( CCP A 197 0) ("if a reference is ambiguous and can be interpreted so
that it may or may no [sic] constitute an anticipation of an appellant's
claims, an anticipation rejection under 35 U.S.C. § 102 based upon the
ambiguous reference is improper."). Because Wang does not expressly state
the order for seed soaking and ESP exposure, we do not sustain the rejection
of claims 21 and 23 as being anticipated by Wang.
Claims 12-15--0bviousness--Levengood '914 and Levengood '627
The Examiner finds that Levengood '914 discloses exposing seed to
an electric field, but does not disclose the use of an electrostatic field having
little to no current flow in the electrostatic field. Final Act. 5. The
8
Appeal2017-004637
Application 13/906,082
Examiner turns to Levengood '627, taking the position that it teaches
exposing seed to an electrostatic field, and concludes that it would have been
obvious to modify the Levengood '914 method to include use of an
electrostatic field, in order to improve growth rates, yield size, and quality of
seeds. Id. at 5---6. The Examiner cites to column 2, lines 43--48, and column
8, lines 40--45, and Figure 1 of Levengood '627 as support for the findings
directed to an electrostatic field. Id. at 5.
Appellant argues that Levengood '627 does not employ an
electrostatic field, but rather, "[k ]ey [ f]eatures of the MIR [ m ]ethod are: (1)
Sharp, well-organized, uniform electron avalanches (not corona discharge,
and not static electric fields)." Appeal Br. 15, quoting Levengood '627, col.
15, 11. 21-23. Appellant also maintains that the Examiner's reliance on the
depiction in Figure lB of Levengood '627 of periods of time when the
current is 0.05 microamps as teaching an electrostatic field with little or no
current flow within the electrostatic field, is erroneous. Appeal Br. 16.
Appellant has the better position. Notwithstanding that 0.05
microamps likely meets the characterization of "little to no current flow" set
forth in claim 15, the claim still requires that the exposure is to an
electrostatic field, which Levengood '627 expressly states is not being used.
Levengood '627, 15:23 ("not electrostatic fields"). According to Appellant,
"not only is a .05 microamp current indicative of movement of electric
charges (charges not at rest), but the waveforms depicted in Fig. lB illustrate
an electric field that changes with respect to time and is therefore not
electrostatic." Appeal Br. 16. This appears to be consistent with the
Levengood '627 indication that electrostatic fields are not involved.
9
Appeal2017-004637
Application 13/906,082
As such, the Examiner's rejection is not supported by rational
underpinnings. The rejection of claims 12-15 as being unpatentable over
Levengood '914 in view of Levengood '627 is not sustained.
Claims 16, 17--0bviousness--Levengood '914, Levengood '627, and Hull
The Examiner does not rely on Hull in any manner that would
overcome the deficiencies noted above with respect to the proposed
combination of Levengood '914 and Levengood '627. The rejection is not
sustained.
Claims 12-17--New Ground of Rejection--Anticipation by Yang
Independent claim 12 recites, as does independent claim 21, the order
of hydro-priming or soaking the seed, and then exposing the seed to an
electrostatic field. Appeal Br. 21 (Claims Appendix). Claim 12 is broader
than claim 21 in that there is no recitation of a selected seed, nor employing
an electrostatic field at a strength and exposure time unique to the selected
seed. Id. For the same reasons discussed above with respect to claims 21-
23 as being anticipated by Yang, claims 12-17 are newly rejected as also
being anticipated by Yang. This is a New Ground of Rejection pursuant to
our authority under 37 C.F .R. §41.50(b ).
DECISION
The rejection of claims 21-23 under 35 U.S.C. § 102(a)(l) as being
anticipated by Yang is AFFIRMED, and is designated as a New Ground of
Rejection under 37 C.F.R. § 4I.50(b).
10
Appeal2017-004637
Application 13/906,082
The rejection of claims 21 and 23 under 35 U.S.C. § 102(a)(l) as
being anticipated by Wang is REVERSED.
The rejection of claims 12-15 under 35 U.S.C. § 103 as being
unpatentable over Levengood '914 in view of Levengood '627 is
REVERSED.
Therejectionofclaims 16and 17under35U.S.C. § 103 as being
unpatentable over Levengood '914 in view of Levengood '627 and Hull is
REVERSED.
Claims 12-17 are rejected under 35 U.S.C. § 102(a)(l) as being
anticipated by Yang. This is a New Ground of Rejection under 37 C.F.R.
§ 4I.50(b).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b ). Section 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the examiner,
11
Appeal2017-004637
Application 13/906,082
overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart. 6
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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-IN-PART; 37 C.F.R. § 4I.50(b)
6 Should prosecution be reopened, the Examiner may wish to determine
whether the following document constitutes a printed publication having an
effective date making it available as prior art: Gui et al., "Improved
Germination of Pine Seeds by Electrostatic Field Treatment," accessible at
http://www.fao.org/docrep/ARTICLE/WFC/XII/0967-Bl.HTM, last
accessed via the Internet Archive Wayback Machine on March 6, 2019. The
article describes testing pine seeds from a dry lot, not hydro-primed prior to
ESP exposure, and pine seeds from a wet lot, which were soaked in cold
water for twenty-four hours prior to ESP exposure.
12