Ex Parte Mena Campos et al

Patent Trial and Appeal Board

Jun 22, 2016

12598084 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/598,084 04/13/2010
23869 7590
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
06/23/2016
FIRST NAMED INVENTOR
Jesus Mena Campos
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.
976-69 PCT/US/RCE 6158
EXAMINER
SMITH, JENNIFER A
ART UNIT PAPER NUMBER
1731
MAILDATE DELIVERY MODE
06/23/2016 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 JESUS MENA CAMPOS, EULOGIO PIMENTEL VAZQUEZ,
MARIETA MARIN BRUZOS, ARMANDO TOMAS HERNANDEZ
GARCIA, ILEANA SANCHEZ ORTIZ, YAMILKA RAMIREZ NUNEZ
SONIA GONZALEZ BLANCO, MARIANELA GARCIA SIVERIO, and
CARLOS GUILLERMO BORROTO NORDELO
Appeal2015-001543
Application 12/598,084
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 2, 3, and 5 through 18. We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Appellants' invention generally relates to their discovery that bacterial
strain Tsukamurella paurometabola C-924 acts as a microbial biofertilizer
for plants. Spec. 3, 11. 23-29. According to Appellants' Specification, C-
924 was previously known to be an effective biological alternative to
chemical pesticides for controlling nematodes, a plant parasite. Spec. 3,
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Application 12/598,084
11. 8-11. According to Appellants they discovered that C-924 also exerts
biostimulating effects in plants, which result when the bacterium is applied
to soil where plants are grown due to the bacterium's production of
ammonia, which interacts with organic matter and amino acids present in the
soil, facilitating the plants' acquisition of nitrogen. Spec. 4, 11. 8-12. In
addition, Appellants explain that C-924 solubilizes phosphorous, and in so
doing changes it from a form that plants cannot absorb, to a form that plants
can absorb, thus allowing plants to appropriate phosphorous from soil.
Spec. 4, 11. 12-14. Appellants' Specification indicates that C-924 thus
stimulates the growth of plants by facilitating their assimilation of nitrogen
and phosphorous from soil. Spec. 4, 11. 25-29.
Claims 7, 12, and 13 illustrate the subject matter on appeal and are
reproduced below:
7. A method to stimulate the growth of plants in need
thereof in soil or a natural or artificial substrate; said method
consisting of
contacting the soil, or a natural or artificial substrate with
an effective amount of biofertilizer agent that consists of a
culture of one strain of Tsukamurella paurometabola or a
metabolite derived from said.
12. A method of solubilizing phosphorous in soil in need
thereof, said method comprising administering to the soil a
biofertilizer agent comprising a culture of at least one
strain of Tsukamurella paurometabola in an amount effective to
solubilize said phosphorous.
13. A method of increasing an ammonia level in soil in need
thereof, said method comprising administering to the soil a
biofertilizer agent comprising a culture of at least one
strain of Tsukamurella paurometabola in an amount effective to
increase said ammonia level.
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Application 12/598,084
App. Br. 12-13 (Claims Appendix).
Appellants (see App. Br., generally) request review of the following
rejections from the Examiner's Final Office Action and Answer: 1
I. Claims 2, 3, 5, 6, and 11-18 under 35 U.S.C. § 103(a) as
unpatentable over Campos et al., 20(4) Biotecnologia Aplicada, 248-252,
(2003) ("the Campos Article"). 2
II. Claims 7 and 8 under 35 U.S.C. § 102(b) as anticipated by
Campos et al. (WO 96/04794, published February 22, 1996) ("the Campos
App li ca ti on").
III. Claims 7-10 under 35 U.S.C. § 103(a) as unpatentable over the
Campos Application.
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's rejection of claims 2, 3, 5, 6, and
11-18 under 35 U.S.C. § 103(a) as unpatentable over the Campos Article,
the Examiner's rejection of claims 7 and 8 under 35 U.S.C. § 102(b) as
1 The rejection of claims 7 and 8 under 35 U.S.C. § 102(b) is presented as a
new ground of rejection in the Answer. Ans. 8.
2 Appellants submitted the Campos Article, which is written in Spanish, to
the Patent Office on January 4, 2010, with an Information Disclosure
Statement. Appellants submitted an English language translation of the
Abstract of this article on February 11, 2013. The Examiner and Appellants
discuss the article extensively in the Final Rejection, Answer, and Appeal
Brief, and refer to various portions of the document, including Table 1 and
Figure 8. Final Act. 3-7; Ans. 2-6; App. Br. 6-9. We requested an English
language translation of the article, which was entered into the electronic file
on June 15, 2016.
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Application 12/598,084
anticipated by the Campos Application, and the Examiner's rejection of
claims 7-10 under 35 U.S.C. § 103(a) as unpatentable over the Campos
Application. We add the following for emphasis.
Re} ection I3
The Examiner finds that the Campos Article discloses administering
Corynebacterium Paurometabola C-924, a synonym of Tsukamurella
Paurometabola, to soil with biofertilizers as an additive for plants. Ans. 2,
4. The Examiner finds that the Campos Article discloses administering C-
924 at a concentration of 104 to 2.54 x 106 cfu/ml, which the Examiner finds
overlaps with the concentration of C-924 that Appellants' Specification
discloses to be effective for biofertilizer activity ( 106 to 109 cfu per ml of
suspension). Ans. 2, 4; Spec. 5, 11. 16-20. The Examiner finds that the
Campos Article discloses that C-924 decreased the degree of infection of the
nematode Meloidogyne incognita Chitwood, whiie increasing the production
of tomato plants. Id. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time of the invention that
solubilizing phosphorous in soil as recited in claim 12, and increasing the
ammonia level in soil as recited in claim 13, would have necessarily or
naturally followed Application of C-924 to soil in an amount disclosed in the
Campos Article. Ans. 3, 5.
3 Appellants argue claims 2, 3, 5, 6, and 11-18 together on the basis on
claims 12 and 13. See Appeal Brief, generally. Therefore, we select claims
12 and 13 as representative, and the remaining claims will stand or fall with
claims 12 and 13.
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Application 12/598,084
Appellants argue that the preamble of claim 12 should be accorded
patentable weight because the body of the claim refers to "the phosphorous"
and "the soil," which are recited in the preamble. App. Br. 7-8. Similarly,
Appellants argue that the preamble of claim 13 should also be accorded
patentable weight because the body of the claim refers to "the ammonia" and
"the soil," which are recited in the preamble. Id. Appellants point out that
the Campos Article only discloses the use of C-924 as a nematicidal agent,
and does not disclose the ability of C-924 to solubilize phosphorous in soil
in need thereof, or of the ability of C-924 to increase the ammonia level in
soil. App. Br. 7. Appellants argue, relying on the Rule 132 Declaration of
Jesus Mena Campos submitted to the Patent Office on February 21, 2014
("the Campos Declaration"), that soil that does not need a nematicidal agent
may still require an increase in solubilization of phosphorous or an increase
in the amount of ammonia, and conversely, soil that has a high level of
nematodes may aiready have a sufficient ievei of phosphorous or ammonia
to promote optimum growth. App. Br. 8-9; Campos Declaration i-f 10.
Appellants contend that the methods disclosed in the Campos Article would
therefore not necessarily and al ways satisfy the methods of Claims 12 and
13. App. Br. 8-9.
We find Appellants' arguments to be unpersuasive of reversible error
for at least the following reasons. With respect to claim 12, as discussed
above, the Campos Article discloses administering C-924 to soil at a
concentration that overlaps with the concentration described in Appellants'
Specification as effective for biofertilizer activity. Campos Article Table 1.
Campos' Table 1, for example, exemplifies actually using C-924 at a
concentration of 2.54 X 106 which is within the effective concentration for
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biofertilizer activity (106 to 109 cfu per ml of suspension disclosed at page 5,
lines 16-20, of the Specification. In addition, the Campos Article describes
experiments undertaken to investigate the interaction of C-924 with
biofertilizers, and indicates that the experiments yielded positive results.
Campos Abstract. This disclosure in the Campos Article of combining C-
924 with biofertilizers indicates or would have suggested using C-924 to
treat soil in need of a fertilizer or in need of a treatment for stimulating the
plant growth, in addition to treating soil in need of a nematocidal agent. As
discussed above, Appellants' Specification explains that when C-924 is
applied to soil where plants are grown, the C-924 solubilizes phosphorous,
and in so doing changes it from a form that plants cannot absorb to a form
that plants can absorb, thus allowing plants to obtain phosphorous from the
soil. Spec. 4, 11. 8-14. Accordingly, an additional advantage of solubilizing
phosphorous in soil in need thereof as recited in claim 12 would have
necessariiy or naturaiiy flowed from the suggestion in the Capos Article of
applying C-924, at a concentration such as that recited in claim 12, in
combination with biofertilizers, to soil containing plants that is infested with
nematodes and that is in need of a fertilizer or other nutrients for stimulating
the plant growth. In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011). ("This is
not a case where the Board relied on an unknown property of prior art for a
teaching. Rather, Maloney' s express teachings render the claimed controlled
release oxymorphone formulation obvious, and the claimed 'food effect'
adds nothing of patentable consequence."); MEHL/Biophile Int'! Corp. v.
Milgraum, 192 F.3d 1362, 1366 (Fed. Cir. 1999) ("Where, as here, the result
is a necessary consequence of what was deliberately intended, it is of no
import that the Article's authors did not appreciate the results."); Ex parte
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Obiaya, 227 USPQ 58, 60 (BPAI 1985) ("The fact that appellant has
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
difference would otherwise have been obvious."); see also In re Spada, 911
F.2d 705, 709 (Fed. Cir. 1990) (explaining that a chemical composition and
its properties are inseparable.).
With respect to claim 13, as discussed above, Appellants'
Specification explains that when C-924 is applied to soil where plants are
grown, it produces ammonia, which interacts with organic matter and amino
acids present in the soil, facilitating the plants' acquisition of nitrogen.
Spec. 4, 11. 8-14. Thus, Appellants' Specification indicates that when C-924
is administered to soil, it provides ammonia to the soil, thus increasing the
ammonia level in the soil. Accordingly, an additional advantage of
increasing the ammonia level in soil in need thereof as recited in claim 13
aiso wouid have necessariiy or naturaiiy flowed from the disclosure in the
Capos Article of applying C-924---at a concentration such as that recited in
claim 13, in combination with biofertilizers-to soil containing plants that is
infested with nematodes and is in need of a fertilizer or other nutrients for
stimulating the plant growth. See, e.g., In re Kao, supra; In re Spada, supra;
Ex parte Obiaya, supra.
Article
Appellants and the Declarant argue that soil infested with nematodes
may already have sufficient phosphorous and ammonia to promote optimum
growth such that Campos' C-924 would not be used for soil in need of
fertilizers or nutrients (App. Br. 8-9; Campos Declaration i-f 10), as
discussed above. However, the Campos Article teaches or suggests treating
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soil with a combination of C-924 and biofertilizers (Campos Article
Abstract), thus indicating or suggesting the use of Campos' C-924 for
treating soil in need of nutrients, including phosphorous and ammonia. On
this record, Appellants and the Declarant do not demonstrate that the
treatment of soil in need of fertilizer or nutrients with C-924 as suggested in
the Campos Article would not have resulted in solubilizing phosphorous in
the soil, and would not have increased an ammonia level in the soil, as
recited in claims 12 and 13. App. Br. 6-9; Campos Declaration i-fi-15-10. In
re Best, 562 F.2d 1252, 1255 (CCPA 1977). ("Where ... the claimed and
prior art products are identical or substantially identical ... , the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product."); see also In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he
Board is entitled to weigh the declarations and conclude that the lack of
factuai corroboration warrants discounting the opinions expressed in the
declarations."); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (The
Board has discretion to give more weight to one item of evidence over
another "unless no reasonable trier of fact could have done so").
Accordingly, Appellants do not identify reversible error in the
Examiner's rejection of claims 12, 3, 5, 6, and 11-18 under 35 U.S.C.
§ 103(a) as unpatentable over the Campos Article, and we therefore sustain
this rejection.
Rejection 114
4 Appellants argue claims 7 and 8 together on the basis on claim 7. See
Appeal Brief, generally. Therefore, claim 8 will stand or fall with claim 7.
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The Examiner finds that the Campos Application discloses a method
for controlling nematodes in agricultural plants that involves contacting soil
in which the plants are grown with Corynebacterium Paurometabola C-924,
which is a synonym of Tsukamurella Paurometabola. Ans. 8; Campos
Application 1, 11. 1-7. The Campos Application discloses applying C-924 to
soil in an appropriate carrier, such as a fertilizer. Campos claims 1 and 9.
The Examiner finds that the Campos Application discloses adding C-924 to
soil at a concentration of between 106 and 107 colony forming units per ml
of medium, which the Examiner finds overlaps with the concentration of C-
924 that Appellants' Specification discloses to be effective for biofertilizer
activity (106 to 109 cfu per ml of suspension). Ans. 6-7; Spec. 5, 11. 16-20;
Campos Application claim 3. The Examiner finds that the Campos
Application discloses that C-924 decreases the degree of nematode infection
in plants while increasing the production of banana and pumpkin plants.
Ans. 8. Thus, the Examiner finds that the Campos Appiication anticipates
that subject matter of claims 7 and 8.
Appellants argue that the Campos Application does not disclose the
use of C-924 to stimulate the growth of plants as recited in claim 7, and
contend that the portion of the Campos Application that the Examiner relies
on as supposedly disclosing that C-924 increases the production of banana
and pumpkin plants only discloses an assessment of damage to roots caused
by nematodes. Rep. Br. 4.
However, as discussed above, the Campos Application discloses
contacting soil in which plants are grown with C-924 in an appropriate
carrier, such as fertilizer, thus disclosing the use of C-924 to treat soil in
need of fertilizer, which includes plant nutrients such as phosphorous and
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nitrogen, in addition to treating soil in need of a nematocidal agent. Campos
Application claims 1 and 9. As discussed above, Appellants' Specification
explains that when C-924 is applied to soil where plants are grown, the C-
924 solubilizes phosphorous and produces nitrogen, and thus stimulates the
growth of plants by facilitating their assimilation of nitrogen and
phosphorous. Spec. 4, 11. 8-14, 25-29. Accordingly, an additional
advantage of stimulating the growth of plants in need thereof as recited in
claim 7 would have necessarily or naturally flowed from the teaching in the
Capos Application of applying C-924 in a fertilizer carrier at a concentration
such as that recited in claim 7, to soil in need of fertilizer and containing
plants infested with nematodes. Accordingly, Appellants' arguments are
unpersuasive of reversible error.
Appellants further argue that the Campos Application refers to
"tomato yield," whereas Appellants' Specification defines the growth of
piants in such a way as to be distinguishabie from the increased yieid
supposedly disclosed in the Campos Application. Rep. Br. 4--5. However,
Appellants appear to confuse the disclosures of the Campos Application and
the Campos Article. The Campos Application, which the Examiner relies on
in the instant rejection of claim 7, does not refer to tomatoes at all, and thus
doesn't refer to their yield or production. However, Table 8 of the Campos
Article does disclose data regarding tomatoes, which the Examiner relies on
in the rejection of claims 12 and 13 under§ 103(a) discussed above.
Appellants' arguments regarding the disclosures of the Campos Article are
therefore not relevant to the present rejection.
Accordingly, Appellants do not identify reversible error in the
Examiner's rejection of claims 7 and 8 under 35 U.S.C. § 102(b) as
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anticipated by the Campos Application, and we therefore sustain this
rejection.
Re} ection III
Because we sustain the rejection of claim 7 under 35 U.S.C. § 102(b)
as anticipated by the Campos Application as discussed above, and because
Appellants argue claims 7-10 together on the basis of claim 7, we also
sustain the rejection of claims 7-10 under 35 U.S.C. § 103(a) as
unpatentable over the Campos Application without further comment.
Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)
(citing In re Fracalossi, 681 F .2d 792 ( CCP A 1982)) (Anticipation is the
epitome of obviousness.).
ORDER
For the reasons set forth above and in the Answer, the decision of the
Examiner to reject claims 2, 3, 5, 6, and 11-18 under 35 U.S.C. § 103(a) as
unpatentable over the Campos Article is affirmed, the decision of the
Examiner to reject claims 7 and 8 under 35 U.S.C. § 102(b) as anticipated by
the Campos Application is affirmed, and the decision of the Examiner to
reject claims 7-10 under 35 U.S.C. § 103(a) as unpatentable over the
Campos Application is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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