Ex Parte Burke

Board of Patent Appeals and Interferences

Aug 30, 2011

11897291 (B.P.A.I. Aug. 30, 2011)

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

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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

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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

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