Ex Parte Chikami et al

Board of Patent Appeals and Interferences

Oct 5, 2010

10311268 (B.P.A.I. Oct. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOSHIHIRO CHIKAMI, NARUTOSHI KIMOTO, and
ATSUSHI TAKAHASHI
____________

Appeal 2009-012609
Application 10/311,268
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-012609
Application 10/311,268

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 29-42, the only claims pending in the
Application.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention is directed to a method for improving storage stability
of release function of a coated fertilizer and/or agricultural chemical.
(Independent claims 29 and 36.) The invention is said to minimize the
difference in predetermined release characteristics of a coated fertilizer and
actual release characteristics of the fertilizer after storage, thereby enabling
users to feed fertilizer or agricultural chemicals to plants much more
precisely. (Br. 10-11.) Claim 29 is representative of the invention and is
reproduced below from the Claims Appendix to the Appeal Brief:
29. A method for improving the storage stability of release function
of a coated fertilizer and/or agricultural chemical comprising:

coating a fertilizer and/or agricultural chemical granule with a coating
material comprising a thermoplastic resin dissolved in a solvent while
blowing hot air onto the fertilizer and/or agricultural chemical granule;

halting the coating and degassing the coated fertilizer and/or
agricultural chemical granule until the concentration of volatile substances
contained in the coated fertilizer and/or agricultural chemical granule is 500
ppm or less based on the coated fertilizer and/or agricultural granule;

wherein the degassing is carried out at a temperature of T-60 °C to T-
5 °C, wherein T °C is the melting point of the thermoplastic resin; and

wherein the storage stability of release function of the coated fertilizer
and/or agricultural chemical is improved to show a stable release function
such that the number of days (dl) it takes to release a cumulative amount of

2 Final Office Action (“Final”), mailed Apr. 21, 2008.
3 Appeal Brief (“Br.”), filed Nov. 19, 2008.
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Application 10/311,268

10% of the fertilizer or agricultural chemical remains substantially constant
even after storage of the coated fertilizer and/or agricultural chemical for a
period of 2 weeks in a sealed polyethylene bag in a cold and dark place and
dl is determined by measuring the amount of fertilizer and/or agricultural
chemical released into water when 10 g of the coated fertilizer and/or
agricultural chemical is placed in 200 mL of standing water at 25 °C.

The Examiner maintains (Ans.4 4-12), and Appellants request review
of (Br. 4), the following grounds of rejection:
1. claims 29-40 under 35 U.S.C. § 103 as unpatentable over
Fujita5 and Ejima6 (applied as evidence) in view of Kawabata7;
2. claims 29-40 under 35 U.S.C. § 103 as unpatentable over Fujita
and Ejima in view of Kawabata, as applied in ground of rejection 1, and
further in view of Marder8;
3. claims 29-40 under 35 U.S.C. § 103 as unpatentable over Fujita
and Ejima in view of Kawabata, as applied in ground of rejection 1, and
further in view of Shirley9;
4. claims 34 and 41 under 35 U.S.C. § 103 as unpatentable over
Fujita and Ejima in view of Kawabata, as applied in ground of rejection 1, or
further in view of Marder or Shirley, as applied in grounds of rejection 2 and
3, and further in view of JP 77810 or JP 52811;

4 Examiner’s Answer, mailed Jan. 22, 2009.
5 U.S. 4,019,890, issued Apr. 26, 1977.
6 U.S. 4,189,338, issued Feb. 19, 1980.
7 U.S. 5,888,021, issued Mar. 30, 1999.
8 U.S. 5,674,529, issued Oct. 07, 1997.
9 U.S. 5,211,985, issued May 18, 1993.
10 Toyobo, JP 52146778, pub. Dec. 06, 1977 (as translated).
11 Haruna, JP 62241528 A, pub. Oct. 22, 1987 (as translated).
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Application 10/311,268

5. claims 34, 35, 41 and 42 under 35 U.S.C. § 103 as unpatentable
over Fujita and Ejima in view of Kawabata, as applied in ground of rejection
1, or further in view of Marder or Shirley, as applied in grounds of rejection
2 and 3, and further in view of Preisegger12; and
6. claims 34, 35, 41 and 42 under 35 U.S.C. § 103 as unpatentable
over Fujita and Ejima in view of Kawabata, and further in view of Brück13.
Appellants rely on the same arguments in traversing all six grounds of
rejection. (See Br. 17-18.) Appellants’ arguments are directed to limitations
common to independent claims 29 and 36. Accordingly, the remaining
dependent claims stand or fall with these claims.
We affirm all six grounds of rejection based on the Examiner’s fact
finding and reasoning (Ans. 4-22), which we adopt as our own. We add a
discussion of the following issues raised by Appellants for emphasis only:
(1) Did the Examiner err in finding that Fujita discloses a step of
“halting the coating and degassing the coated fertilizer and/or agricultural
chemical granule” (claims 29 and 36)?
(2) Did the Examiner err in finding that Fujita discloses a step of
degassing which is carried out at the recited temperature of “T-60 ºC to T-5
ºC, wherein T ºC is the melting point of the thermoplastic resin” (claims 29
and 36)?
(3) Did the Examiner err in determining that it would have been
obvious to have reduced the concentration of volatile substances contained
in Fujita’s coated fertilizer and/or agricultural chemical granule to a level of
500 ppm or less as recited in claims 29 and 36?

12 U.S. 4,583,985, issued Apr. 22, 1986.
13 U.S. 5,759,236, issued Jun. 02, 1998.
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Appeal 2009-012609
Application 10/311,268

(4) Did the Examiner properly take into account Appellants’ evidence
of nonobviousness in concluding that a preponderance of the evidence
weighs in favor of obviousness?
Issue 1: Did the Examiner err in finding that Fujita discloses
a step of “halting the coating and degassing the coated fertilizer
and/or agricultural chemical granule”?

The purpose of Appellants’ claimed degassing step is to reduce the
concentration of the volatile substance contained in the coated bioactive
granule. (Spec. 30.) According to the Specification, “[t]he degassing
method is not particularly limited,” and may include heating the granule by
ventilation of hot air, microwave, pressure reduction, and by blowing a gas
not containing the volatile substance, such as heated nitrogen or air, and
water vapor, into the coated bioactive granule. (Spec. 30-31.) The degassing
time is said to depend on the “thickness of the coating film, the
concentration of the volatile substance contained in the coated bioactive
granule immediately after the production, and the like, but is preferably from
0.05 to 2 hours.” (Spec. 33.)
Fujita discloses a method for producing coated fertilizer which utilizes
an apparatus consisting of a principal drying part which performs
instantaneous drying and a supplementary drying part which removes a
certain extent of remaining solvent. (Fujita, col. 4, ll. 22-26 cited in App.
Br. 6.)
The Examiner finds Appellants’ claimed step of “halting the coating
and degassing the coated fertilizer” is met by Fujita’s Example 3 in which
granules are coated in a fluidized bed by drying them with hot air while
spraying a solution of the coating material, followed by allowing the
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Appeal 2009-012609
Application 10/311,268

granules to stand for 10 minutes while blowing hot air (Ans. 4-5 (citing
Fujita cols. 11 and 12)). The Examiner’s finding is consistent with the
Specification’s description of suitable degassing methods as including
blowing hot air onto the granules for a time period which encompasses 10
minutes.
Appellants’ arguments (see Br. 5-7) fail to identify error in this
finding or otherwise convincingly explain how the claimed degassing step
patentably defines over Fujita’s drying steps.
Issue 2: Did the Examiner err in finding that Fujita suggests a step of
degassing which is carried out at the recited temperature of “T-60 ºC to T-5
ºC, wherein T ºC is the melting point of the thermoplastic resin”?

Appellants argue that Fujita fails to suggest the recited range of
degassing temperatures and that arriving at the recited degassing
temperatures would not have been a matter of routine optimization. (Br. 6-
7.)
The Examiner relies on Ejima to establish that one of the solvents
used by Fujita, amorphous polypropylene, would be expected to have a
melting point of at least 130 ºC. (Ans. 5.) The Examiner finds that the
drying temperatures used by Fujita are at least 5 ºC lower than the melting
point of amorphous polypropylene. (Ans. 5-6.) The Examiner identifies
additional disclosure in Fujita which reasonably supports a finding that one
of ordinary skill in the art would have been motivated to optimize the
temperature of degassing to within Appellants’ recited range of “T-60 ºC to
T-5 ºC, wherein T ºC is the melting point of the thermoplastic resin.” (Ans.
6 (citing Fujita, col. 5).)
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Appeal 2009-012609
Application 10/311,268

Appellants’ arguments fail to address the Examiner’s detailed findings
and reasoned analysis and, therefore, have not persuaded us of error in the
Examiner’s finding that Fujita suggests a step of degassing in the recited
temperature range.
Issue 3: Did the Examiner err in determining that it would have been
obvious to have reduced the concentration of volatile substances
contained in Fujita’s coated fertilizer and/or agricultural chemical
granule to a level of 500 ppm or less?

Kawabata provides evidence that solvents of the type used by
Appellants, e.g., chlorine-based solvents (Spec. 30), are teratogenic and
carcinogenic. (Kawabata, col. 1, ll. 26-32.) Kawabata notes the importance
of purifying soil polluted by these contaminants, as well as isolating the
pollution source. (Id. at ll. 32-36.) In Example 7, Kawabata discloses the
treatment of soil to reduce trichloroethylene concentration from 10 ppm to 1
ppm to provide “effective remediation of the soil” (col. 11, l. 13).
Relying on the above-cited disclosure (see Ans. 6-7), the Examiner
concluded it would have been obvious to have reduced the final residual
content of volatile substances in Fujita’s coated fertilizer to 1 ppm or less to
avoid soil pollution (Ans. 7). In our view, the Examiner’s fact finding and
reasoning is sufficient to support this conclusion. See In re Vaidyanathan,
No. 2009-1404, 2010 WL 20000682, at *9 (Fed Cir. May 19, 2010)
(unpublished) (“Where . . . prior art references are cited to support an
obviousness rejection, the references themselves need not in every case
provide a ‘specific hint or suggestion’ of the alteration needed to arrive at
the claimed invention; the examiner's analysis ‘may include recourse to
logic, judgment, and common sense available to [the] person of ordinary
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Appeal 2009-012609
Application 10/311,268

skill that do[es] not necessarily require explication in any reference or expert
opinion.’” (quoting Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324,
1329 (Fed. Cir. 2009))); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003) (“[T]he existence of overlapping or encompassing ranges shifts the
burden to the applicant to show that his invention would not have been
obvious.”).
“[W]here the prior art gives reason or motivation to make the claimed
[invention] . . . the burden (and opportunity) then falls on an applicant to
rebut that prima facie case.” In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir.
1990) (en banc).
Appellants contend the ordinary artisan would not expect the use of a
small amount of fertilizer to cause a serious pollution problem, “i.e., to raise
volatile substance concentration over a wide area to exceed 10 ppm, even 1
ppm.” (Br. 9.) Appellants have not, however, provided any evidentiary
support for this statement. As such, Appellants have not met their burden to
rebut the Examiner’s prima facie case of obviousness.
Issue 4: Did the Examiner properly take into account Appellants’ evidence
of nonobviousness in concluding that a preponderance of the evidence
weighs in favor of obviousness?

Appellants argue the Examiner failed to afford adequate weight to the
evidence of unexpected results provided in the § 132 Declaration of
Narutoshi Kimoto (Br., Appx. 2). (Br. 16.) Appellants’ evidence provides a
comparison between a prior claimed invention (i.e., claims which differ from
the current claims) and a single example in Fujita. For the reasons explained
by the Examiner (Ans. 21), this evidence, considered anew together with all
of Appellants’ arguments in support of nonobviousness, fails to outweigh the
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Appeal 2009-012609
Application 10/311,268

Examiner’s evidence of obviousness. See Sud-Chemie, Inc. v. Multisorb
Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of
unexpected results and other secondary considerations will not necessarily
overcome a strong prima facie showing of obviousness”).
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).

AFFIRMED

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