Ex Parte Knowles et al

Patent Trial and Appeal Board

Dec 8, 2016

13525500 (P.T.A.B. Dec. 8, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/525,500 06/18/2012 Norman Richard KNOWLES 03170018BA 1472
30743 7590 12/08/2016
WHITHAM, CURTIS & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
HIRT, ERIN E
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
12/08/2016 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 NORMAN RICHARD KNOWLES and
LISA O’REAR KNOWLES1
Appeal 2014-007763
Application 13/525,500
Technology Center 1600
Before DONALD E. ADAMS, JOHN G. NEW, and DAVID COTTA,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
appellants state the real party-in-interest is Washington State University of
Pullman, WA. App. Br. 2.
Appeal 2014-007763
Application 13/525,500
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 26-40, which stand rejected as
unpatentable under U.S.C. § 103(a) as being obvious over the combination
of Knowles et al. (US 2004/0053787 Al, Mar. 18, 2004) (“Knowles”), J. M.
Bradow and W. J. Connick, Jr., Volatile Seed Germination Inhibitors from
Plant Residues, 16 (3) J. Chem. Ecol. 645—666 (1990), Rein et al. (US
3,853,532, December 10, 1974) (“Rein”), Young (US 3,159,476, December
1, 1964) (“Young”), Olson (WO 2007/044200 A2, April 19, 2007)
(“Olson”), and Findley et al. (US 3,852,057, December 3, 1974) (“Findley”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CFAIMED INVENTION
Appellants’ invention is directed to compositions and methods for
inhibiting the sprouting of potato tubers. The compositions comprise C3 to
C14 aliphatic aldehydes and ketones, and/or C3 to C7 primary and
secondary aliphatic alcohols. Abstr.
REPRESENTATIVE CLAIM
Claim 26 is representative of the claims on appeal and recites:
26. A composition for inhibiting sprouting of potato tubers,
said composition comprising three or more of:
a) one or more C3 to C14 saturated aliphatic aldehydes;
b) one or more C3 to C14 saturated aliphatic ketones;
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Application 13/525,500
c) one or more C3 to C7 unsaturated aliphatic primary
alcohols; and
d) one or more C3 to C7 unsaturated aliphatic secondary
alcohols.
App. Br. 16.
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner’s findings and conclusion
that the appealed claims are obvious over the combined cited prior art
references. We address the arguments raised on appeal by Appellants
below.
A. Claims 36-40
Issue 1
Claim 36 recites: “A composition for inhibiting sprouting of potato
tubers, said composition comprising 3-decen-2-one and 2-decanone.” App.
Br. 17. Appellants argue the Examiner erred in finding the combined cited
prior art references teach or suggest ah of the limitations of the claims. Id. at
10.
Analysis
Appellants point out that the Examiner has acknowledged that
Knowles does not teach 3-decen-2-one and 2-decanone and assert that none
of the remaining references, Bradow, Reign, Young, Olson and Findley
teach 3-decen-2-one and 2-decanone as potato sprout inhibitors. App. Br.
10.
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Application 13/525,500
Appellants contend Knowles primarily teaches alpha, beta unsaturated
aliphatic aldehydes and ketones as potato tuber sprout inhibitors and point
out that that 2-decanone is not an alpha, beta unsaturated ketone. App. Br.
10—11. Furthermore, Appellants observe, 2-decanone is a saturated ketone
and not an alpha, beta aldehyde like trans-3-decenal. Id. at 11.
Appellants assert that they have discovered that the breakdown
products of alpha, beta unsaturated aldehydes and ketones, including trans-3-
nonen-2-one, include a saturated ketone, 2-nonanone, and an alcohol, 2-
nonanol are useful as sprout inhibitors. App. Br. 11 (citing Spec. 3—4, 13),
Appellants argue further that Rein is focused on sucker growth in
tobacco plants and not to the sprouting of potato tubers. App. Br. 11.
Appellants note that Rein also teaches a 12 carbon ketone, which is larger
than the 2-decanone required in claim 36, and that Rein does not teach
combining the 12 carbon ketone with anything like 3-decen-2-one. Id.
Furthermore, with respect to claims 38 and 39 of the present application,
Rein’s teaches a non-volatile solution and is not in any way directed to a
sprayable or mistable formula. Id.
Appellants contend Bradow teaches germination of seeds as opposed
to sprouting of potato tubers. App. Br. 11. (citing Bardow 648). Appellants
contend that Bardow also fails to teach or suggest the use of 2-decanone, or
the use of 2-decanone in combination with 3-decen-2-one. Id. at 12.
With respect to Young, Appellants argue the reference teaches only
two specific 8 carbon isooctyl alcohols for the inhibition of potato sprouting:
2-hydroxymethyl-4, 4-dimethyl pentene-1 and 2-hydroxymethyl-4,4-
dimethyl pentene-2. App. Br. 12. Appellants therefore argue Young neither
teaches or suggests the use of a) one or more C3 to Cl4 saturated aliphatic
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Application 13/525,500
aldehydes; or b) one or more C3 to C14 saturated aliphatic ketones (such as,
for example, 2-decanone, as is required in claim 36. Id. Appellants also
assert Young does not teach combining 2-decanone with 3-decen-2-one. Id.
Next, Appellants admit Olson teaches that mists, sprays and fogs are
known in the art. App. Br. 12. Nevertheless, Appellants maintain, Olson
does not teach the use of 2-decanone, either alone or in combination with 3-
decen-2-one, in a potato tuber sprouting inhibition fog. Id. Finally,
Appellants argue, Findley is related to controlling axillary shoots in tobacco
plants, not inhibiting sprouting of potato tubers. Id. Furthermore,
Appellants assert, Findley teaches the use of hydroxyethers, and not 2-
decanone or 3-decen-2-one. Id.
The Examiner responds that Appellants’ claimed composition recites
3-decen-2-one, an unsaturated ketone which is homologous to the trans-3-
nonen-2-one that is disclosed and taught by Knowles, which also teaches the
claimed medium and long-chain alcohols, including both saturated and
unsaturated carbon chains as well as secondary and primary alcohols. Ans.
3. The Examiner finds Knowles teaches that these alcohols are capable of
inhibiting sprouting, and include Appellants’ preferred trans-2-hepten-l-ol
and trans-2-hexen-l-ol. Id. The Examiner finds Knowles further teaches
that trans-2-decenal is an aldehyde useful for inhibiting sprouting in potato
tubers. Id. Finally, the Examiner finds Knowles also teaches trans-2-
decenal, and trans-3-nonen-2-one, which are closely structurally or
homologous to the instantly claimed decenal and trans-3-decen-2-one. Final
Act. 4.
The Examiner acknowledges that Knowles does not explicitly teach
decenal or 2-decanone, but finds that these deficiencies addressed by Rein,
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Bradow, and Young. Ans. 3. The Examiner finds Rein teaches both
saturated and unsaturated aliphatic unsaturated) monoketones (C4 to Cl 8)
are useful for inhibiting axillary growth in tobacco plants via spray
application. Id. at 3^4. The Examiner finds Rein further teaches that the
most preferred compounds are 2-ketones, specifically 2-decanone, 2-
undecanone, and 2-nonanone. Id. at 4.
With respect to Bradow, the Examiner finds the reference teaches that
aliphatic aldehydes, ketones, and alcohols are useful as seed germinating
inhibitors. Ans. 4. Specifically, the Examiner finds, Bradow teaches that
nonanal, which is homologous to the instantly preferred decanal, and the
unsaturated aldehyde (E)-2-hexenal (also disclosed by Knowles) are useful
for the inhibition of sprouting in seeds and plants. Id.
Finally, the Examiner finds Young teaches a composition for
inhibiting the sprouting of potato tubers comprising unsaturated C8
isooctenyl alcohol, which the Examiner finds corresponds to the instantly
claimed C7 primary and/or secondary alcohols. Final Act. 5.
We are not persuaded by Appellants’ arguments. Knowles teaches:
[Contacting a potato tuber with an amount of a chemical agent
that includes at least one aliphatic carbonyl compound selected
from the group consisting of a C3 to C14, a, P unsaturated
aliphatic aldehyde and a C4 to C14, a, P unsaturated aliphatic
ketone, wherein the amount of the chemical agent is effective to
inhibit potato tuber sprouting.
Knowles 126. Knowles also teaches: “Some aldehydes useful in the
practice of the present invention are defined by formula I, and some ketones
useful in the practice of the present invention are defined by formula II:
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5? C.....C —1C = K j
Knowles 127. The ketone of formula II is very similar to that of 3-decent-
one, differing only in that the double bond between the first and second C is
shifted to the second and third, and there are no other double bonds. See
also id. 132. Furthermore, Knowles also teaches trans-3-nonen-2-one,
which differs from 3-decen-2-one by only a single carbon. See Knowles
135.
Although Knowles does not explicitly teach 2-decanone, Rein
teaches: “[the] compositions of this invention contain at least one aliphatic
monoketone having at least 4 carbon atoms, more specifically 4 to about 18
carbon atoms and, still more specifically, 8 to 18 carbon atoms, as illustrated
by hexanone, decanone, undecanone, hexadecanone and octadecanone.”
Rein col. 3,11. 1—6 (emphasis added). Furthermore, 3-decen-2-one, as
recited in claim 36 is also falls within the genus of an aliphatic monoketone,
as taught by Rein.
Appellants object to the Examiners reliance on Rein, arguing that the
compositions of Rein are directed to controlling axillary growth (i.e., sucker
growth) on tobacco plants. See App. Br. 11; Rein Abstr. We are not
persuaded for two reasons. First, Appellants claims are directed to
compositions, rather than methods, and the intended use of a composition
claim is not limiting upon the claim. See In re Best, 562 F.2d 1252, 1255
(C.C.P.A. 1977) (when “the claimed and prior art products are identical or
substantially identical in structure or composition, or are produced by
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Application 13/525,500
identical or substantially identical processes, a prima facie case of either
anticipation or obviousness has been established.”); see also MPEP
§2112.01(1).
Second, even were we to find the intended use limiting upon the
claims, Knowles and Rein constitute analogous art: they are both directed to
the field of inhibiting the growth of new plant structures by the
administration of various chemicals including aliphatic monoketones and
aldehydes. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (art
references are analogous if they are both from the same field of endeavor as
the claimed invention).
Furthermore, the combination of Knowles and Rein also teach the use
of aliphatic ketones, aliphatic aldehydes, and primary and secondary
alcohols for the inhibition of the growth of new plant structures. See Rein
col. 3,11. 1—6, 16—20, Knowles 26, 27, and 39. We further agree with the
Examiner that the teachings of Bradow and Young further reinforce the
Examiner’s findings with respect to Knowles and Rein. See Bradow 652—
653; Young col. 1,11. 10-12, 56-67, col. 2,11. 1-14, 21-27,11. 28^12. We
consequently affirm the Examiner’s rejection of claims 36-40.
B. Claims 32—35
Independent claim 32 recites the same limitations as claim 26 recited
supra, with the explicit addition of decanal, a CIO saturated aldehyde.
Appellants rely upon substantially the same arguments presented with
respect to claims 36-40, viz., that the combined cited prior art references fail
to teach or suggest all of the limitations of the claims. App. Br. 13.
Specifically, Appellants argue that none of the cited prior art references
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teach or suggest decanal. Id. Appellants point out that decanal is a saturated
aldehyde, and is not homologous to the compound taught by Knowles or the
other references cited by the Examiner. Id. Appellants also repeat their
argument presented supra, that trans-2-decenal, as taught by Knowles, is an
a, P unsaturated aldehyde, and that 3-nonen-2-one, identified by the
Examiner, is an a, P unsaturated ketone, whereas the claims recited saturated
aldehydes and ketones. Id.
We are not persuaded. Although Knowles relies principally on
unsaturated aldehydes and ketones, the Examiner relies on Bradow as
teaching that “C2-C10 hydrocarbons, alcohols, aldehydes, ketones esters,
fiirans, and monoterpenes” are volatile emissions from plant residues that act
as inhibitors of plant germination. See Bradow Abstr., 652. Unsaturated
aldehydes, including nonanal, 3-methyl butanal, and (£)-2-hexanal, were
among the most potent inhibitors of plant germination. Id. The combined
teachings, then, of Knowles and Bradow would inform a person of ordinary
skill in the art that both saturated and unsaturated aldehydes, including a
saturated aldehyde that differs from decanal by only a single carbon
(nonanal) are effective inhibitors of the growth of new plant structures. We
consequently agree with the Examiner’s conclusion that Claims 32—35 are
prima facie obvious over the cited prior art references and we affirm the
Examiner’s rejection of the claims.
C. Claims 26-31
Appellants repeat their arguments presented supra, asserting that
Knowles teaches only unsaturated aldehydes and ketones used as inhibitors
of potato sprouting. App. Br. 14. As we have explained, we agree with the
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Examiner’s finding that the combination of the cited prior art references,
particularly Knowles, Rein, and Bradow, teach the use of aldehydes and
ketones, both saturated and unsaturated, as inhibitors of the growth of new
plant structures. We consequently affirm the Examiner’s rejection of claims
26-31.
DECISION
The Examiner’s rejection of claims 26-40 as unpatentable under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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