Ex Parte BuschhausDownload PDFPatent Trial and Appeal BoardMay 24, 201613261025 (P.T.A.B. May. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/261,025 11/17/2011 Herbert Buschhaus 22428 7590 05/26/2016 Foley & Lardner LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 099790-0121 7577 EXAMINER STIJLII, VERA ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 05/26/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HERBERT BUSCHHAUS Appeal2014-003952 Application 13/261,025 Technology Center 1700 Before BEYERL YA. FRANKLIN, JULIA HEANEY, and MONTE T. SQUIRE Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests review pursuant to 35 U.S.C. § 134(a) of a decision of the Examiner finally rejecting claims 1 and 3---6 of Application 13/261,025. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. BACKGROUND The subject matter on appeal relates to a method for preventing gushing of a fermented malt beverage, by treating cereal grains with a 1 Appellant identifies the real party in interest as Nippon Soda Co., Ltd. App. Br. 3. Appeal2014-003952 Application 13/261,025 fungicide to reduce the content of deoxynivalenol (hereinafter, "DON"), a metabolite of the fungus Fusarium, in harvested crops. Spec. 1-2. Claim 1 is illustrative of the subject matter on appeal and reproduced from the Claims Appendix of the Appeal Brief as follows (emphasis added): 1. A method for producing a fermented malt beverage, which uses cereal treated with thiophanate-methyl or wheat treated with prothioconazole, wherein the cereal treated with thiophanate-methyl is cereal which has been treated with thiophanate-methyl after a flower formation stage and before harvesting. REFERENCES The Examiner relied upon the following prior art in rejecting the claims on appeal: Ueda et al., Effect of Thiophanate Methyl on the Incidence of Scab and the Mycotoxin Contamination in Wheat and Barley, 54 Ann. Phytopath. Soc. Japan 476-482 (1988) ("Ueda"). Schwarz et al., Relationship Between Fusarium Infestation of Barley and the Gushing Potential of Malt, 102 J. Inst. Brew. 93-96 (1996) ("Schwarz"). THE REJECTION Claims 1 and 3---6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Schwarz and Ueda. DISCUSSION Appellant's arguments for reversal of the rejection focus on a single claim limitation which is present in all of the claims at issue; Appellant does not present separate arguments for any of the independent or dependent claims. App. Br. 7-13. We choose claim 1 as representative; all other claims stand or fall with claim 1. 2 Appeal2014-003952 Application 13/261,025 Appellant argues that the Examiner failed to establish a prima facie case ofunpatentability because Schwarz and Ueda, alone or in combination, do not disclose treating a cereal with thiophanate-methyl after a flower formation stage and before harvesting. The Examiner finds that Schwarz discloses a close relationship between Fusarium infestation of barley and gushing of beer, and that levels of DON are strongly correlated with the amount of gushing. Ans. 2-3. The Examiner further finds that Ueda discloses that application of the fungicide Topsin-M (thiophanate-methyl) at earing and flowering stages of cereal crops in three separate years effectively inhibited Fusarium infestation. Id. The Examiner concludes that a person of ordinary skill in the art would have been led to modify Schwarz in view of Ueda to use barley treated with thiophanate-methyl in production of beer in order to reduce DON contamination and reduce undesired effects such as gushing as taught by Schwarz. Id. at 3. Appellant does not dispute the Examiner's findings as to Schwarz. See App. Br. 7-13. As to Ueda, Appellant argues that the Examiner fails to consider the reference as a whole, and that if Ueda were properly considered, a person of ordinary skill in the art would not have been motivated to reduce DON contamination with a reasonable expectation of success in achieving the results of Schwarz, because Ueda teaches away from treating with thiophanate-methyl after the flower formation stage and before harvesting. Id. at 7-10. Appellant further argues that the rejection is improperly based on hindsight (id. at 11 ), and that even if the rejection established a prima facie case of obviousness, the claimed method would not have been expected to achieve the results disclosed in Schwarz. Id. at 12. 3 Appeal2014-003952 Application 13/261,025 Appellant's arguments lack persuasive merit. Contrary to Appellant's contention, Ueda does not "teach[] that thiophanate is more effective the earlier it is applied to wheat" (App. Br. 8), nor does it "extol[] the benefits of the application of a fungicide at the earliest stage possible." Id. at 9. Rather, Ueda summarizes its study as examining the preventive effect of fungicide on the basis of three factors, without emphasis as to the timing of fungicide application, and concludes that application of thiophanate-methyl effectively prevents contamination levels of DON and another mycotoxin, NIV. Ueda, Abstract and p. 11. Ueda's experimental data shows both early (earing stage) and late (flowering stage) application of fungicide and does not provide comparative data for earlier application of fungicide, but rather compares treated cereal to untreated cereal. Id. at 2-9. Although Appellant points to Ueda's statement that "it is necessary to apply a fungicide at the earliest stage possible to prevent attachment of the fungus" (Ueda 9; App. Br. 8-9), that statement does not reflect Ueda's teaching as a whole, as described above. Therefore, the Examiner did not reversibly err in concluding that a person of ordinary skill in the art would have understood Ueda as teaching treatment of cereal with thiophanate-methyl at any stage of growth leads to effective reduction in levels of DON, and would have been led to combine Ueda with Schwarz in order to reduce DON contamination and undesired effects such as gushing, as taught by Schwarz. Ans. 3--4. We have also considered Appellant's argument that the Examiner's finding that Ueda discloses treatment with thiophanate-methyl a week after flowering (on April 22, 1987) is based on a clear typographical error in Ueda concerning the 1987 experiment. Reply Br. 2-5. Appellant asserts that a person of ordinary skill in the art would have recognized the error, which appears in both the original language document and translation. Id. at 4. 4 Appeal2014-003952 Application 13/261,025 Appellant first raised this issue in the reply, and we do not have the Examiner's position. Even if we were to accept Appellant's assertion as fact, which we decline to do on this record, it would not affect the outcome because our decision does not tum on whether Ueda's 1987 experiment included application of fungicide a week after flowering. We determine that a preponderance of the evidence supports the conclusion that Ueda' s teaching as a whole would have led a person of ordinary skill to apply thiophanate-methyl at any stage of growth, including after flower formation, in order to reduce DON contamination and undesired effects such as gushing, as taught by Schwarz. Appellant further argues that its own publication, "Appropriate time for controlling (preventing) the incidence of akakabi-disease by the application of Topsin-M (wheat)" (Oct. 2005)(Exhibit B to Appeal Brief) would have suggested to a person of ordinary skill in the art that treatment with thiophanate-methyl has a greater effect in hindering development of Fusarium than in hindering attack of Fusarium. App. Br. 9-10. Thus, Appellant suggests that its prior art corroborates Ueda in teaching away from application of thiophanate-methyl after flowering. Id. We are not persuaded, however, that Exhibit B teaches that earlier application is more effective. In particular, the lower figure of Exhibit B shows that the treatment for "protective effect" involved application of thiophanate-methyl both before and after flowering. Finally, Appellant argues that unexpected results support the patentability of the claimed method. App. Br. 12-13. Appellant relies on the same evidence as it does in arguing that the Examiner failed to establish a prima facie case. Id. As discussed above, we are not persuaded that the 5 Appeal2014-003952 Application 13/261,025 evidence supports nonobviousness; accordingly, we are not persuaded that it supports unexpected results. SUMMARY We affirm the rejection of claims 1 and 3--6. 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 6 Copy with citationCopy as parenthetical citation