Ex parte Bieringer et al.

Board of Patent Appeals and Interferences

Mar 18, 1998

07759478 (B.P.A.I. Mar. 18, 1998)

Application for patent filed September 13, 1991.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HERMANN BIERINGER, ERWIN
HACKER, RUDOLF HEINRICH, HANS-PHILIPP
HUFF and JEAN KOCUR
_____________
Appeal No. 94-2612
Application 07/759,4781
______________
HEARD: March 4, 1998
_______________
Before KIMLIN, GARRIS and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 through 20, which are
all the claims in this application.
Appeal No. 94-2612
Application 07/759,478
2
According to appellants, the invention relates to
combinations of plant protection agents and surfactants
(brief, page 2). An election of species was required by the
examiner (see the Office action dated April 22, 1992, Paper
No. 3). Appellants elected the species combination of
fenoxaprop-ethyl herbicide and the alkyl polyglycol ether
sulfate surfactant with traverse (see the amendment dated June
22, 1992, page 5, Paper No. 5). The examiner repeated the
election requirement and deemed the appellants’ reasons for
traverse “non-persuasive” (page 2, Office action dated Sept.
10, 1992, Paper No. 6). As noted by the examiner (answer,
page 2), “the claims have been examined insofar as they read
on the elected species combination of fenoxaprop-ethyl and C -10
C alkyl polyglycol ether sulfate surfactants.” Appellants18
have not contested this statement and therefore we will limit
our review to the elected invention.
Appellants state that the claims should be considered in
two groups (brief, page 3) and set forth specific reasons
therefore for the group of claims 6-9 and 17-18 that contain
“consisting essentially of” language (brief, page 4). No
Appeal No. 94-2612
Application 07/759,478
3
reasons are set forth for the separate patentability of the
one group designated as claims 1-5, 10-16 and 19-20.
Therefore the claims stand or fall together. See In re
Nielson, 816 F.2d 1567, 1570, 2 USPQ2d 1525, 1526 (Fed. Cir.
1987); Ex parte Schier, 21 USPQ2d 1016, 1018 (Bd. Pat. App. &
Int. 1991); and 37 CFR § 1.192(c)(5)(1993). Claims 17 and 18
are illustrative of the subject matter on appeal and are
reproduced below:
17. A herbicidal agent which consists essentially
of
a) herbicides selected from the group consisting
of leaf-acting selective herbicides, and
b) surfactants selected from the group
consisting of the C -C -alkyl polyglycol ether sulfates and10 18
their physiologically acceptable salts, with the exception of
aqueous preparations of herbicides selected from the group
consisting of fenoxaprop-P-ethyl, isoproturon and diclofop-
methyl, which contain sodium C -C -alkyl diglycol ether12 14
sulfate in combination with a salt of tallow fatty amine
ethoxylate having 15 EO and C -C -perfluoroalkylphosphinic6 12
acids/-phosphonic acids, and water dispersible granules which
contain fenoxaprop-ethyl or fenoxaprop-P-ethyl and sodium C -12
C -alkyl diglycol ether sulfate, defoamers based on silicone,14
dispersants based on cresol/formaldehyde condensation products
and aluminum silicate.
18. The herbicidal agent as claimed in claim 17,
wherein the leaf-acting selective herbicide is fenoxaprop-
Appeal No. 94-2612
Application 07/759,478
In the event of further or continuing prosecution, the examiner should note2
that claims 1 and 15 fail to recite any active, positive process steps. See Ex parte
Erlich, 3 USPQ2d 1011, 1017 (Bd. Pat. App. & Int. 1986), and Ex parte Dunki, 153 USPQ
678, 679 (Bd. App. 1967).
Appealed claims 6 and 17 contain an exception clause to the possible3
combinations encompassed by the claim language but this is directed to excluding the
4
ethyl.
The following prior art reference has been relied upon by
the examiner as evidence of obviousness:
Röechling et al. (Röechling) 4,870,103 Sep. 26,
1989
Claims 1 through 20 stand rejected under 35 U.S.C. § 103
as unpatentable over Röechling. We affirm for reasons which2
follow.
OPINION
The herbicidal agent of appealed claim 17 “consists
essentially of” a leaf-acting herbicide (i.e., the elected
species, fenoxaprop-ethyl, see claim 18) and C -C -alkyl10 18
polyglycol ether sulfate surfactants.3
Appeal No. 94-2612
Application 07/759,478
combinations disclosed by European Patent Application No. 90,112,739.9 and German Patent
Application P 3,938,564.7 (see the specification, page 10). There is no argument or
evidence that the exception clause of claims 6 and 17 excludes the disclosed
combinations of Röechling.
It is noted that appellants’ particularly preferred surfactant is ®Genapol LRO4
(specification, page 9, lines 20-28), which is the same surfactant used in Examples 13
and 26 of Röechling (see column 2, lines 34-40, column 6, line 24, column 9, line 6, and
column 10, line 1).
5
The examiner asserts that Röechling discloses in Examples
13 and 26 the specific combination of herbicide and surfactant
as per appellants’ elected invention (answer, page 3). 4
Röechling does require another ingredient, i.e., a
phosphorylated emulsifier listed as emulsifier type I (column
1, lines 30-49, column 2, lines 34-40, and claim 1).
Appellants argue that “consisting essentially of” in the
claim excludes the third “active ingredient” of Röechling
while the examiner contends that the additional ingredient
does not distinguish Röechling from the claimed subject matter
(see the brief, pages 3 and 4, and the answer, pages 3-5).
It is well settled that the recital of “essentially”
along with “consisting of” renders the claim open only for the
inclusion of unspecified ingredients which do not materially
affect the basic and novel characteristics of the
Appeal No. 94-2612
Application 07/759,478
The term “consisting essentially of” is similarly applied to process claims. 5
See Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App. & Int. 1989).
6
composition. See In re Herz, 537 F.2d 549, 551-52, 190 USPQ5
461, 463 (CCPA 1976); Ex parte Boukidis, 154 USPQ 444 (Bd.
App. 1966); In re DeLajarte, 337 F.2d 870, 873-74, 143 USPQ
256, 258 (CCPA 1964); In re Janakirama-Rao, 317 F.2d 951, 954,
137 USPQ 893, 896 (CCPA 1963); and Ex parte Davis, 80 USPQ
448, 450 (Bd. App. 1948). To determine the ingredients
excluded by the language “consisting essentially of”, the
claim must be read in light of the specification. See In re
Herz, 537 F.2d at 551, 190 USPQ at 463, and In re Janakirama-
Rao, 317 F.2d at 954, 137 USPQ at 896. In this regard, we
emphasize that, from our perspective, it is an applicant’s
burden to establish that an ingredient included in a prior art
composition is excluded by “consisting essentially of”
language. See In re Herz, 537 F.2d at 551-52, 190 USPQ at
463, and Ex parte Hoffman, 12 USPQ2d at 1064.
The phrase “consisting essentially of” does not
necessarily limit the claims to exclude other things when the
specification clearly indicates that other constituents may be
Appeal No. 94-2612
Application 07/759,478
7
present as well. Ex parte Boukidis, 154 USPQ at 444. Here
appellants’ specification clearly indicates that customary
auxiliaries such as emulsifiers may be added to the claimed
combination of herbicide and surfactant. See the
specification, page 2, lines 3 and 4, page 13, lines 4-7, and
page 13, line 34-page 14, line 7. Therefore appellants’
argument that the additional emulsifier of Röechling is
excluded from the appealed claims is not well taken.
Additionally, there is no evidence in this record that
the additional emulsifier of Röechling would affect the basic
and novel characteristics of appellants’ claimed compositions.
Appellants’ and Röechling’s compositions both have herbicidal
activity, although the composition of Röechling may possess
additional stability properties (see column 1, lines 10 and
30-34).
We find no patentable difference between the composition
or herbicidal agent of appealed claim 17 and the composition
of Examples 13 and 26 of Röechling. When every limitation of
a claim identically appears in a single prior art reference,
Appeal No. 94-2612
Application 07/759,478
In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974). See also In6
re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982).
8
the claim is anticipated under 35 U.S.C. § 102. See In re
Bond, 910 F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir.
1990). The examiner has characterized the rejection under §
103 but, as noted by our reviewing court:6
However, this Court has sanctioned the
practice of nominally basing rejections on
§ 103 when, in fact, the actual ground of
rejection is that the claims are
anticipated by the prior art. See In re
Dailey, 479 F.2d 1398, 178 USPQ 293 (CCPA
1973). The justification for this
sanction is that lack of novelty in the
claimed subject matter, e.g., as evidenced
by a complete disclosure of the invention
in the prior art, is the “ultimate or
epitome of obviousness.” In re Kalm, 54
CCPA 1466, 1470, 378 F.2d 959, 962, 154
USPQ 10, 12 (1967)[footnote omitted].
Appellants argue that sufficient evidence has been
submitted to rebut any prima facie case of obviousness (brief,
pages 5-9). However, as discussed above, the subject matter
on appeal is described by Röechling within the meaning of 35
U.S.C. § 102(b). A proper rejection under § 102 cannot be
overcome by a showing of new and unexpected results. See In
Appeal No. 94-2612
Application 07/759,478
9
re Malagari, 499 F.2d 1297, 1302, 182 USPQ 549, 553 (CCPA
1974).
For the foregoing reasons, the rejection of claims 1
through 20 under 35 U.S.C. § 103 as unpatentable over
Röechling is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS WALTZ )
Administrative Patent Judge )
Appeal No. 94-2612
Application 07/759,478
10
CURTIS, MORRIS & SAFFORD
William F. Lawrence
530 Fifth Avenue
New York, New York 10036