Ex Parte Quaghebeur

Patent Trial and Appeal BoardSep 25, 2012

10966838 (P.T.A.B. Sep. 25, 2012)

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. 10/966,838 10/14/2004 Koen Quaghebeur GL7.P01 7348 21792 7590 09/25/2012 Ballew Law P.O. Box 428 Yakima, WA 98907 EXAMINER KARPINSKI, LUKE E ART UNIT PAPER NUMBER 1616 MAIL DATE DELIVERY MODE 09/25/2012 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 KOEN QUAGHEBEUR __________ Appeal 2011-010212 Application 10/966,838 Technology Center 1600 __________ Before DONALD E. ADAMS, LORA M. GREEN, and JEFFREY N. FREDMAN, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner‟s rejection of claims 1, 2, 4-12, 14, 17, 19-25, and 27. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2011-010212 Application 10/966,838 2 STATEMENT OF THE CASE Claim 1 is representative of the claims on appeal, and reads as follows: 1. A method for treating a plant to reduce a cracking of a fruit produced by the plant, which comprises the steps of: a) selecting the fruit from the group consisting of: a stone fruit, a pip fruit, or a berry fruit; b) applying the Tryptophan to the fruit of the plant more than two weeks after full bloom of the fruit, and less than four weeks prior to a harvesting of the fruit; and c) reducing the cracking of a skin of the fruit. The following grounds of rejection are before us for review: I. Claims 1, 2, 4-11, 17, 19-25, and 27 stand rejected under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Lovatt 1 and Young 2 (Ans. 5). II. Claims 4-6, 12, 14, and 24 stand rejected under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Lovatt, Young, and Devisetty 3 (Ans. 9). We affirm. ANALYSIS Rejection I The Examiner rejects claims 1, 2, 4-11, 17, 19-25, and 27 as being rendered obvious by the combination of Lovatt and Young (Ans. 5-8). As 1 Lovatt, US 6,169,057 B1, issued Jan. 2, 2001. 2 Young, US 4,682,999, issued Jul. 28, 1987. 3 Devisetty et al., US 6,984,609 B2, issued Jan. 10, 2006. Appeal 2011-010212 Application 10/966,838 3 we agree with the Examiner‟s findings and conclusions, we adopt them as our own. Appellant argues that neither Lovatt or Young “suggest a Tryptophan based method for reducing cracking in a fruit, as applied to the fruit after bloom and prior to harvest, be utilized, or be of any such benefit” (App. Br. 9). Appellant asserts that he “has . . . developed a new use for Tryptophan formulations” (id. at 10), and that “[n]ew uses have long been patentable as methods or processes” (id. at 9). Applicant asserts that at the time of invention, “no one skilled in orchard arts and practices would have reasonably expected Tryptophan to reduce fruit cracking, and would have instead expected an increase in fruit cracking from a post bloom Tryptophan application, due to skin pressures from larger fruit” (id. at 10). Appellant argues further, citing col. 8, l. 52 of Lovatt, that the “function, purpose and timing of the Lovatt spray is significantly and remarkably different” from the claimed method (id. at 12). Appellant also argues that Young was published more than ten years before Lovatt, “and yet Lovatt failed to teach or suggest the use of the claimed compound on a stonefruit, a pip fruit, or a berry fruit” (id.). Thus, Appellant asserts, the Examiner has relied upon impermissible hindsight in combining the references to arrive at the method of claim 1 (id. at 13). We agree with the Examiner‟s response to argument as set forth in the Answer (Ans. 14-18). We also make the following additional observation. We point Appellant‟s attention to In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990). The claim at issue in that case was a claim to a method of inhibiting fungi on fresh leafy and head vegetables by storing the vegetable Appeal 2011-010212 Application 10/966,838 4 in a specified, modified atmosphere. Id. at 1575-76. The Court found that even as though “Woodruff may have been the first to recognize the fungal- inhibiting benefit of the method,” the method was still not patentable. Id. at 1577-78. Specifically, the court found: It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable. While the processes encompassed by the claims are not entirely old, the rule is applicable here to the extent that the claims and the prior art overlap. Id. at 1578 (citations omitted). Appellant‟s primary argument appears to be that the combination of references does not teach using tryptophan to reduce cracking in fruit. But, as noted by the Examiner: the combination of art does teach application of the same compositions to the same plants in the same concentrations and within the same time frames as claimed. The effect of reduction in cracking would be an inherent result when practicing the methods taught by the combination of Lovatt and Young. (Ans. 14.) We therefore conclude that Woodruff applies as the art teaches a method that overlaps the claimed method, and thus Appellant is not entitled to a claim to a new benefit of, in this case, an obvious process. As to Appellant‟s argument that Young was published more than ten years before Lovatt, but that Lovatt failed to teach or suggest the use of the claimed compound on a stonefruit, a pip fruit, or a berry fruit, we note, as did the Examiner (Ans. 18), that Lovatt in fact teaches that exemplary plants may be from the genus Prunus, which encompasses cherries. Appeal 2011-010212 Application 10/966,838 5 We thus affirm the rejection of claim 1 under 35 U.S.C. 103(a) as being rendered obvious by the combination of Lovatt and Young. Claims 2 and 4-11 fall with that claim (App. Br. 7). As to claim 17, Appellant essentially reiterates the arguments made with respect to claim 1 (App. Br. 15-20), and those arguments are not found to be convincing for the reasons set forth with respect to claim 1. We thus affirm the rejection of claim 17 as being rendered obvious by the combination of Lovatt and Young. Claims 19-25 fall with claim 17 (App. Br. 15). As to claim 27, Appellant reiterates the arguments made with respect to claim 1, which are not found to be convincing for the reasons set forth above. Appellant argues further that “applying the compound to sweet cherries, renders an especially effective and unforeseen result in the reduction of cracking in the mature fruit” (App. Br. 21). Appellant, however, points to no evidence in the record to support that assertion, and attorney argument cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). We thus affirm the rejection of claim 27 as being rendered obvious by the combination of Lovatt and Young. Rejection II The Examiner rejects claims 4-6, 12, 14, and 24 as being rendered obvious by the combination of Lovatt, Young, and Devisetty (Ans. 9-13). As we agree with the Examiner‟s findings and conclusions, we adopt them as our own. Appeal 2011-010212 Application 10/966,838 6 As to claim 4, Appellant reiterates the arguments made with respect to claim 1 (App. Br. 22), which are not found to be convincing for the reasons set forth with respect to claim 1. Appellant also asserts that it was in error for the Examiner to find “that because „growth regulators can be applied a rate ranging from 0.02 to about 50/lbs per acre,‟ the Applicant‟s claimed application rates are obvious” (id.). According to Appellant, “[t]he efficacy of any agricultural compound, especially for heretofore unknown use and result can not be guessed or estimated, based purely on analogous compounds used for broadly defined effects, such as „growth regulation‟” (id.). Appellant‟s arguments are not convincing. As noted by the Examiner, “Lovatt clearly states that simple and routine experimentation may need to be performed to achieve the desired result and further go on to state that one of ordinary skill in the art is well aware of how to perform such optimization as well as to provide an example of how to perform said optimization” (Ans. 19; see also Lovatt). Moreover, Devisetty teaches that in general, growth regulators are applied at a rate of from 0.1 to about 5/lbs per acre (Devisetty, col. 8, ll. 58-62), which is encompassed by the broad range set forth in instant claim 4, which is 8.9 x 10 -5 lbs/acre to 8.9 x 10 5 lbs/acre. We thus affirm the rejection of claim 4 as being rendered obvious by the combination of Lovatt, Young, and Devisetty. Clams 5, 6, and 12 fall with claim 4 (App. Br. 22). As to claim 14, Appellant reiterates the arguments made with respect to claims 1 and 27, which are not found to be convincing for the reasons set forth above (id. at 23). Appeal 2011-010212 Application 10/966,838 7 Appellant argues further that the “anti-cracking results of the claimed method spray are not obvious, and without field trials and experimentation, the effect of an additional UV protectant could not be assured” (id.). Appellant‟s arguments are not convincing. As noted by the Examiner, “Lovatt teaches the addition of auxiliary agents to said growth-regulator formulations and Devisetty [ ] teach plant growth regulator formulations comprising UV agents” (Ans. 19). Thus, we agree with the Examiner that it would have been prima facie obvious to add a UV agent to the tryptophan composition used in the method of Lovatt (id. at 19-20). We thus affirm the rejection of claim 14 as being rendered obvious by the combination of Lovatt, Young, and Devisetty. Claim 24 falls with claim 14 (App. Br. 23). SUMMARY We affirm the rejection of claims 1, 2, 4-11, 17, 19-25, and 27 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Lovatt and Young; as well as the rejection of claims 4-6, 12, 14, and 24 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Lovatt, Young, and Devisetty. Appeal 2011-010212 Application 10/966,838 8 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 alw