Ex Parte BurkeDownload PDFBoard of Patent Appeals and InterferencesAug 30, 201111897291 (B.P.A.I. Aug. 30, 2011) Copy Citation 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. 11/897,291 08/30/2007 John J. Burke 0101.06 5701 25712 7590 08/30/2011 USDA-ARS-OFFICE OF TECHNOLOGY TRANSFER NATIONAL CTR FOR AGRICULTURAL UTILIZATION RESEARCH 1815 N. UNIVERSITY STREET PEORIA, IL 61604 EXAMINER BROWN, COURTNEY A ART UNIT PAPER NUMBER 1617 MAIL DATE DELIVERY MODE 08/30/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte JOHN J. BURKE __________ Appeal 2011-004164 Application 11/897,291 Technology Center 1600 __________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and STEPHEN WALSH, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a process for enhancing growth and development of cotton. The Patent Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-004164 Application 11/897,291 2 STATEMENT OF THE CASE Claims 1-5, 8, 9, and 12-16, which are all the pending claims, are on appeal. Claim 1 is representative and reads as follows: 1. A process for enhancing the growth and development of cotton comprising applying ethephon to cotton seed or a growing cotton plant at a stage of growth between and including a plant at the cotyledon stage up to and including a plant at the six-leaf stage, and further wherein said ethephon is applied to said seed or said plant which are cultivated under conditions of water-deficit stress or drought and is applied at a concentration effective to elicit one or more effects in the plant selected from the group consisting of increased lateral root development, increased root hair development along the seminal roots, thickening of the hypocotyl, increased rate of leaf development, and enhancement of the reproductive process, all in comparison to an untreated control. The Examiner rejected the claims under 35 U.S.C. § 103(a) as unpatentable over EXTOXNET,1 Fritz,2 and Naumann.3 OBVIOUSNESS The Issue Whether the evidence of record supports the rejection’s conclusion of obviousness. Findings of Fact 1. We adopt the Examiner’s findings concerning the scope and content of the prior art.4 1 Extension Toxicology Network, Pesticide Information Profiles, Ethephon, 1-4, http://extoxnet.orst.edu/pips/ethephon.htm (last visited 6/7/2009), (1995). 2 Charles D. Fritz et al., US 3,879,188, issued April 22, 1975. 3 Kalus Naumann et al., US 4,076,517, issued Feb. 28, 1978. Appeal 2011-004164 Application 11/897,291 3 2. Naumann disclosed phospholenium salts said to “exhibit a substantially greater plant growth-regulating action than 2- chloroethane-phosphonic acid, known by the art to be a compound, of good activity having the same type of action.” (Naumann, col. 1, ll. 42-46.) Principles of Law “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990) (“what Woodruff terms a ‘new use’ (preventing fungal growth) is at least generically encompassed by the prior art purpose of preventing the deterioration of leafy and head vegetables”). Analysis After reviewing the evidence and arguments, we conclude that the Examiner has the better position. We will affirm the rejection for the reasons given in the Examiner’s Answer. The evidence shows: (i) the use of ethephon to regulate cotton growth was a well known and authorized practice; (ii) the application of ethephon to seeds and to plants at the 2-, 4-, 6- leaf and cotyledon stages was a routine practice in the art; (iii) the application of ethephon to various places on cotton plants and other plants was a routine practice in the art; and (iv) it was known that plant growth regulators could induce drought resistance. Appellant contends that Naumann’s disclosure relating to inducing drought resistance concerned phospholenium salts but not ethephon. (App. Br. 14.) 4 The Hofer disclosure (Wolfgang Hofer et al., US 3,846,513, issued Nov. 5, 1974) is not relied upon. (Ans. 10.) Appeal 2011-004164 Application 11/897,291 4 However, Naumann stated that ethephon had “good activity of the same type of action,” although not as great as the phospholenium salts. (FF 2.) Given the evidence presented, we have no difficulty affirming the rejection of claims 1, 9, and 13-16, or the separately grouped claims 2-5, 8 and 12. On this record, we conclude that the effects recited in claim 1 appear to be a newly discovered benefit to known and obvious uses of ethephon on cotton. However, discovering and claiming the new benefit does not make the process patentable. See Woodruff, 919 F.2d at 1577-78 (obviousness rejection affirmed where using claimed elements in the manner suggested by the prior art necessarily resulted in claim-recited effect); see also, In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.”). SUMMARY We affirm the rejection of claims 1-5, 8, 9, and 12-16 under 35 U.S.C. § 103(a) as unpatentable over EXTOXNET, Fritz, Naumann, and Hofer. 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 lp Copy with citationCopy as parenthetical citation