Ex Parte Schrader

Patent Trial and Appeal BoardApr 4, 2013

11737405 (P.T.A.B. Apr. 4, 2013)

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. 11/737,405 04/19/2007 Lawrence E. Schrader 03170013CA 5556 30743 7590 04/04/2013 WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C. 11491 SUNSET HILLS ROAD SUITE 340 RESTON, VA 20190 EXAMINER HAYES, KRISTEN C ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 04/04/2013 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 LAWRENCE E. SCHRADER ____________ Appeal 2011-001650 Application 11/737,405 Technology Center 3600 ____________ Before JOHN C. KERINS, WILLIAM A. CAPP and JEREMY M. PLENZLER, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001650 Application 11/737,405 - 2 - STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 20-28. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s invention relates to a method for suppressing cracking and water loss in fruits and vegetables, particularly cherries. Spec. 1. Claim 20, reproduced below, is illustrative of the subject matter on appeal. 20. A method for suppressing cracking of cherry skins for cherries which are harvested or to be harvested where the cracking is due to water absorption by said cherries comprising: applying to cherries, after harvest or while said cherries are on a cherry tree prior to harvest, a wax emulsion in a sufficient quantity to suppress cracking of skins of said cherries due to water absorption in said cherries and suppressing cracking of cherry skins of said cherries due to water absorption in said cherries using said wax emulsion after said step of applying. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: The following rejections are before us for review: 1. Claims 20, 26 and 28 are rejected under 35 U.S.C. § 102(b), as being anticipated by Cushman. Miller Tisdale Dutton Cushman US 2,013,063 US 2,128,973 US 2,198,991 US 3,847,641 Sep. 3, 1935 Sep. 6, 1938 Apr. 30, 1940 Nov. 12, 1974 Appeal 2011-001650 Application 11/737,405 - 3 - 2. Claims 20-22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tisdale and Cushman. 3. Claims 20-22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Miller and Cushman. 4. Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Miller, Cushman and Tisdale. 5. Claim 25 is rejected is under 35 U.S.C. § 103(a) as being unpatentable over Cushman. 6. Claim 27 is rejected is under 35 U.S.C. § 103(a) as being unpatentable over Cushman and Dutton. OPINION Anticipation of Claims 20, 26 and 28 Cushman Appellant argues claims 20, 26 and 28 as a group. App. Br. 12-14. We select independent claim 20 as representative of the group. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Cushman discloses all of the limitations of claim 20. Ans. 4. In particular, the Examiner finds that Cushman discloses a method of applying a wax emulsion to a cherry tree that is inherently capable of suppressing cracks in the skins of cherries. Id. Appellant traverses the Examiner’s rejection by arguing that Cushman is directed to controlling transpiration in plants, not cracking of fruit skin. App. Br. 13. More particularly, Appellant argues that Cushman coats nursery stock, not cherries, and that Cushman is concerned with preventing transpiration, i.e., the exiting of water, from plant leaves. Id. Appellant distinguishes the instant invention by arguing that the claimed wax emulsion Appeal 2011-001650 Application 11/737,405 - 4 - coating prevents water from going into the cherry as opposed to preventing water from transpiring or exiting the leaves of a plant. Id. In response, the Examiner states that Cushman applies a wax emulsion to cherry trees and cherries. Ans. 7, citing Cushman, Col. 1, ll. 22 and 55. The Examiner states suppression of cracking of cherry skins would be inherent, since the wax would provide a barrier to protect the skin. Id. The Examiner’s factual finding that Cushman discloses the coating of cherry fruit, not just the plant leaves, is corroborated by additional disclosure in Column 3 of Cushman that the emulsions are applied about one week before harvest.1 The Column 3 disclosure effectively refutes Appellant’s contention that Cushman is limited to coating nursery stock before it produces fruit. Appellant does not otherwise effectively rebut the Examiner’s position that Cushman’s coating would inherently be effective in suppressing skin cracking in cherries. Where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). We sustain the Examiner’s rejection of claims 20, 26 and 28. 1 “Application of the novel emulsions of the present invention, particularly to drupaceous fruits shortly before harvest (usually about one week) can significantly increase the size of the fruit and result in improved yield per acre.” Cushman, Col. 3, ll. 29-34. Appeal 2011-001650 Application 11/737,405 - 5 - Unpatentability of Claims 20-22 over Tisdale and Cushman Appellant argues claims 20 and 22 together. App. Br. 14-15. We select independent claim 20 as the representative claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Tisdale discloses a method for applying a wax emulsion to prevent damage to fruit. Ans. 4-5. The Examiner acknowledges that Tisdale does not disclose cherries as the fruit. Ans. 5. The Examiner relies on Cushman as teaching applying a wax emulsion to cherries. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to substitute cherries for the fruit of Tisdale as suggested by Cushman. Id. The Examiner finds that suppressing cracking of cherry skins is inherent when the wax emulsion is applied. Id. Appellant traverses the Examiner’s rejection by arguing that Tisdale and Cushman describe the use of wax emulsions for a different purpose than prevention of skin cracking. App. Br. 14. Appellant argues that neither Tisdale nor Cushman deal with water absorption. Id. The Examiner responds by reiterating that the waxes of Tisdale and Cushman provide a seal that inherently prevents water from entering fruit as well explicitly preventing water from exiting the fruit. Ans. 7. We have already sustained the Examiner’s anticipation rejection of claim 20 over Cushman, supra. “A disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103 since anticipation is the epitome of obviousness. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). Also, we do not find persuasive Appellant’s argument that Tisdale and Cushman have a different purpose than the Appeal 2011-001650 Application 11/737,405 - 6 - claimed invention. It is not necessary for the prior art to serve the same purpose as that disclosed in Appellants’ Specification in order to support the conclusion that the claimed subject matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). “A reference may be read for all that it teaches, including uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-421 (2007). Appellant has not rebutted the Examiner’s determination that Tisdale and Cushman inherently possess the capability to suppress the cracking of cherry skins. Swinehart, supra. We sustain the Examiner’s rejection of claims 20 and 22 as unpatentable over Tisdale and Cushman. Appellant did not separately argue claim 21 and, therefore, we also sustain the rejection of claim 21 over Tisdale and Cushman. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Unpatentability of Claims 20-22 over Miller and Cushman The Examiner finds that Miller discloses a method comprising applying a wax emulsion to a plant. Ans. 5. The Examiner acknowledges that Miller does not disclose that the plant is a cherry tree. Id. The Examiner relies on Cushman as teaching the application of a wax emulsion to a cherry tree. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to substitute cherry trees for the plant of Miller depending on what fruit was desired to be protected, the suppression of skin cracking being inherent when the wax emulsion is applied. Id. Appellant’s main Brief fails to address the ground of rejection of claims 20-22 as unpatentable over Miller and Cushman. Appellant addresses this ground of rejection, for the first time, in the Reply Brief. Appeal 2011-001650 Application 11/737,405 - 7 - Reply Br. 3-4.2 However, inasmuch as we have already sustained the Examiner’s alternative ground of rejection of claims 20-22 over the combination of Tisdale and Cushman, we do not reach the Examiner’s rejection of claims 20-22 over Miller and Cushman. Unpatentability of Claims 23 and 24 over Miller, Cushman and Tisdale Appellant argues claims 23 and 24 together. App. Br. 15-16. We select independent claim 23 as the representative claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 23 depends from claim 20, which we have previously found is anticipated by Cushman and unpatentable over Tisdale and Cushman. Therefore, we focus herein on the dependent limitation of claim 23, namely: “wherein said wax emulsion comprises an osmoregulator.” Clms. App’x. The Examiner finds that Tisdale discloses a protective composition for fruits made of an emulsion comprising the fungicide borax, which contains boric acid. Ans. 6. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to use Tisdale’s boric acid with the predictable result of providing a safe, readily available fungicide for the emulsion. Id. Appellant traverses the Examiner’s rejection by arguing that Cushman and Miller are directed to coating plants, not fruit. App. Br. 15-16. Appellant also argues that Tisdale is concerned with water exit, not water entrance. Id. Appellant summarizes his argument by asserting that neither 2 This new argument is untimely. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative)(“Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.”) Appeal 2011-001650 Application 11/737,405 - 8 - Cushman, nor Miller, nor Tisdale show or describe suppressing cracking of cherry skins. App. Br. 16; Reply Br. 4. We reject Appellant’s argument that Cushman does not teach coating cherries for the reasons previously discussed above with respect to claim 20. Boric acid is a suitable osmoregulator. See Spec., p. 19, l. 8. Appellant does not dispute that Tisdale’s boric acid satisfies the claim limitation directed to an osmoregulator, neither does Appellant argue persuasively against the combinability of Tisdale with Cushman and Miller. We sustain the Examiner’s rejection of claims 23 and 24. Unpatentability of Claim 25 over Cushman Claim 25 depends from claim 20 and adds the limitation: “wherein said cherries are selected from the group consisting of Bing, Rainier, Sweetheart, Van, Lapins, Chelan, Tieton, and Liberty Bell.” App. Br., Clms. App’x. The Examiner acknowledges that, although Cushman discloses the method of claim 20, it does not disclose the type of cherries as being selected from the claimed group. Ans. 6. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to select the cherries from the claimed group, depending on which type of cherry was desired to be protected. Id. Appellant traverses the Examiner’s rejection of claim 25 by relying on essentially the same arguments that we have considered and found unpersuasive with respect to claim 20. App. Br. 16-17. Appellant otherwise offers no evidence or technical reasoning to demonstrate that application of the claimed wax emulsion to the particular varieties of cherries listed in Appeal 2011-001650 Application 11/737,405 - 9 - claim 25 would be patentably non-obvious vis-à-vis application to cherries generally. We sustain the Examiner’s rejection of claim 25. Unpatentability of Claim 27 over Cushman and Dutton Claim 27 depends from claim 20, which we have previously found is anticipated by Cushman. Therefore, we focus herein on the dependent limitation of claim 27, namely: “wherein said step of applying a wax emulsion is performed multiple times.” App. Br., Clms. App’x. The Examiner acknowledges that Cushman does not disclose the step of applying the emulsion multiple times. Ans. 6. The Examiner relies on Dutton as teaching a wax emulsion being applied to trees multiple times. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Cushman’s method so that the step of applying wax to cherries is performed multiple times. Id. The Examiner states that this would accomplish the predictable result of ensuring the wax emulsion provided full protection. Id. In traversing the Examiner’s rejection, the Appellant relies first on the same arguments that we have previously considered and rejected with respect to claim 20. App. Br. 17. Appellant next argues that Dutton does not teach protecting cherries. Id. Appellant does not dispute that Dutton discloses the technique of applying a wax emulsion multiple times. Appellant does not otherwise challenge the Examiner’s finding that Dutton could have been combined with Cushman to instruct someone of ordinary skill to apply Cushman’s coating multiple times. In view of our previous analysis that Cushman anticipates claim 20 and considering that Appellant has altogether failed to rebut the Examiner’s conclusion that it would have been obvious to apply Appeal 2011-001650 Application 11/737,405 - 10 - the teaching of Dutton so that Cushman’s emulsion could have been applied multiple times, we sustain the Examiner’s rejection of claim 27. DECISION The decision of the Examiner to reject claims 20-28 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)(iv). AFFIRMED hh