Ex parte DUKE

Board of Patent Appeals and Interferences

Jul 15, 1997

07938960 (B.P.A.I. Jul. 15, 1997)

Application for patent filed September 1, 1992.1
1
Paper No. 21
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte GENE L. DUKE
______________
Appeal No. 95-0678
Application 07/938,9601
_______________
ON BRIEF
_______________
Before KIMLIN, PAK and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-20, which are all of the claims in the application.
Claims 1 and 10 are illustrative and read as follows:
1. A coated gin-run fuzzy cottonseed, said coating
comprises
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2
a) a guar product,
b) which after drying makes the coated seed flowable.
10. A method of coating gin-run fuzzy cottonseed comprising
the steps of:
a) wetting seed, thereafter
b) applying an excess of powdered coating material to
the wetted seed, said coating material comprising a water-soluble
material.
THE REFERENCES
Hinkes 3,911,183 Oct. 7, 1975
Redenbaugh 4,779,376 Oct. 25, 1988
THE REJECTIONS
Claims 1-9 stand rejected under 35 U.S.C. § 101 on the
ground that the claimed invention is directed toward non-
statutory subject matter. Claims 1-20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Hinkes taken with
Redenbaugh.
OPINION
We have carefully considered all of the arguments advanced
by appellant and the examiner and agree with appellant that the
rejection of claims 1-9 under 35 U.S.C. § 101 and the rejection
of claims 10-20 under 35 U.S.C. § 103 are not well founded.
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Accordingly, these rejections will be reversed. However, we
agree with the examiner that the invention recited in appellant’s
claims 1-9 would have been obvious to one of ordinary skill in
the art at the time of appellant’s invention over the applied
references. The rejection of claims 1-9 under 35 U.S.C. § 103
therefore will be affirmed.
Appellant’s claimed invention, as it is most broadly
recited, is 1) a gin-run fuzzy cottonseed coated with a guar
product such that the coating, after drying, makes the coated
seed flowable, and 2) a method for coating gin-run fuzzy
cottonseed by wetting the cottonseed and then applying thereto an
excess of a powdered coating material which includes a water-
soluble material.
Rejection Under 35 U.S.C. § 101
The examiner argues that in claims 1-9, “[t]he mere presence
of a coating does not confer a unique property to the seed itself
which would distinguish the seed from a naturally occurring seed”
(answer, page 3). In the examiner’s view (answer, page 6):
. . . the facts of the instant application
mirror those of American Fruit Growers v.
Brogdex, 8 USPQ 131 (U.S. 1931) which holds
that the presence of a coating on an orange
does not confer a unique property to an
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orange which would distinguish the orange
from one that is naturally occurring. In
addition, Ex parte Grayson, 51 USPQ 413 holds
that a thing occurring in nature, which is
substantially unaltered, i.e. a headless and
deveined shrimp, is not a “manufacture.” See
MPEP 706.03(b). In both instances the
physical alteration of a naturally occurring
product was not deemed to distinguish that
product from the naturally occurring article,
even if the physical alteration provided some
benefit.
The examiner’s argument is not well taken because of the
differences in the facts of the present case and those of the
cases relied upon by the examiner. The Supreme Court’s reasoning
in American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1,
11-12, 8 USPQ 131, 133 (1931) is:
Addition of borax to the rind of natural
fruit does not produce from the raw material
an article for use which possesses a new or
distinctive form, quality, or property. The
added substance only protects the natural
article against deterioration by inhibiting
development of extraneous spores upon the
rind. There is no change in the name,
appearance, or general character of the
fruit.
In contrast, appellant’s coating on the cottonseed causes
the cottonseed to have a different property. Before coating, the
lint on the cottonseed prevents the cottonseed from flowing like
materials such as beans, corn and grain (specification, page 2,
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Application 07/938,960
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lines 13-15 and page 3, lines 15-16). After coating, the lint is
adhered close to the seed coat and the cottonseed is flowable
(specification, page 6, lines 15-20).
In Ex parte Grayson, 51 USPQ 413, 414 (Bd. App. 1941), a
beheaded, deveined shrimp was held to be a product of nature
because “the part he is claiming is still in its natural state
which has been changed in no manner.” In the present case, in
contrast, the cottonseed is not in its natural state, but has
a different property due to the coating as discussed above.
The facts of the present case are more like those of
Ex parte Mowry, 110 USPQ 389, 390 (Bd. App. 1955) and Ex parte
Shepherd, 185 USPQ 480, 483 (Bd. App. 1974).
In Mowry, the claimed article was a soil coated with a film
of a specified water-soluble polymer. The Board stated (Mowry
110 USPQ at 390):
The claims are easily distinguished from the
American Fruit Growers, Inc. v. Brogdex Co.
case in that here the polymer is adsorbed by
electrolytic phenomena on the soil particles
and the individual soil particles are
chemically bound to form an erosion resistant
but water pervious layer on the surface of
the soil. Such soil is quite distinct from
untreated soil.
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In Shepherd, the claimed article was soil having applied
thereto a polymer gel which contained a fumigant. The Board’s
reasoning for holding that this article is patentable subject
matter is (Shepherd 185 USPQ at 483):
. . . the claims specifically call for “soil
having applied thereto” a fumigant. The
claims, therefore, clearly cover a
combination of soil and fumigant. The fact
that the claims can be read to permit the
presence of only an “infinitesimal” amount of
fumigant does not alter the fact the claims
are directed to a combination.
We believe, essentially for the reasons set forth in
Ex parte Mowry, supra, that the claimed combination may
reasonably be considered statutory subject matter within the
meaning of 35 U.S.C. § 101. Soil which is treated with
appellant’s fumigant has been transformed from soil and is a
new and different article.
In our view, appellant’s coating, by adhering the lint
close to the seed coat and rendering the cottonseed flowable,
transforms the cottonseed into an article which has a property
which is not possessed by cottonseed in its naturally-occurring
state. Thus, in line with the reasoning in Mowry and Shepherd,
we consider appellant’s coated cottonseed to be a “manufacture”
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within the meaning of 35 U.S.C. § 101. Accordingly, the
rejection of claims 1-9 under 35 U.S.C. § 101 is reversed.
Rejection Under 35 U.S.C. § 103
Hinkes discloses a seed coated with a polymeric, pesticide-
containing coating so that there is slow release of the pesticide
(col. 1, lines 35-42). Hinkes teaches (col. 1, lines 50-58) that
. . . where the seed surface is covered with
linters or short fibers, e.g., cotton seed,
which alter the surface area of the
polymeric-pesticide film, pretreatment is
recommended. It was found that the surface
of cotton seed, even after flame delinting,
was covered with short fibers. Thus, the
surface of linter covered seed is desirably
first precoated with a natural or synthetic
substance which will cover the fibers and
adhere the fibers to each other as well as to
the seed.
Hinkes teaches that the weight of the pretreatment coating is
about 0.5 to 5 wt% of the coated seed (col. 3, lines 17-19), and
that the pretreatment coating material preferably is water
soluble and can be, among others, vegetable gums (col. 3, lines
23 and 30-33). The pretreatment coating is applied wet and then
is dried (col. 3, lines 24-26).
Hinkes does not disclose guar gum as the vegetable gum. To
remedy this deficiency, the examiner relies upon Redenbaugh.
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This reference discloses seeds coated with adjuvant-containing
gels (col. 3, lines 29-35). One of the disclosed gel materials
is guar gum (col. 4, lines 66-67).
Appellant argues that Hinkes coats flame delinted cottonseed
and therefore is not concerned with making fuzzy cottonseed
flowable (brief, page 11). We are not persuaded by this argument
because Hinkes broadly teaches that applying the pretreatment
coating is preferred “where the seed surface is covered with
linters or short fibers, e.g., cotton seed” (col. 1, lines 50-
52). Thus, the cottonseed used by Hinkes does not appear to be
limited to that which has been flame delinted. Furthermore,
Hinkes teaches that the cottonseed, even after flame delinting,
is covered with short fibers (col. 1, lines 53-55). Such
partially delinted cottonseed falls within the scope of “fuzzy
cottonseed” as that term is used by appellant (specification,
page 11). Since Hinkes’ precoating covers the fibers on the
seeds (col. 1, lines 55-58), it appears to make the seeds
flowable.
Appellant argues that there is no teaching to combine Hinkes
and Redenbaugh (brief, page 18). This argument is not convincing
because in view of the teaching by Hinkes that vegetable gums can
Appeal No. 95-0678
Application 07/938,960
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be used in the pretreatment coating (col. 3, lines 27-33), it
would have been prima facie obvious to one of ordinary skill in
the art to use any vegetable gum known in the art to be suitable
for use in coating seeds, such as guar gum as taught by
Redenbaugh (col. 4, lines 66-67).
Appellant further argues that Redenbaugh lists guar gum
along with about 60 other coatings and that In re Baird, 16 F.3d
380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994), is authority
for the proposition that selecting one out of a multitude of
disclosed materials would not have been obvious to one of
ordinary skill in the art (brief, page 3).
In Baird, the Knapp reference disclosed a genus encompassing
what the court estimated to be more than 100 million diphenols.
Id. Bisphenol A as recited in Baird’s claim was encompassed by
the genus but was not specifically disclosed in that reference.
Id. The court stated that “[w]hile the Knapp formula
unquestionably encompasses bisphenol A when specific variables
are chosen, there is nothing in the disclosure of Knapp
suggesting that one should select such variables. Indeed, Knapp
appears to teach away from the selection of bisphenol A by
focusing on more complex diphenols . . . .” Id.
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Unlike Baird, in the present case guar gum is specifically
disclosed by Redenbaugh along with many other species (col. 4,
lines 66-67). Thus, to arrive at appellant’s claimed invention,
there is no need to select an undisclosed specie out of a genus
encompassing over 100 million species. It is only necessary to
select one of many disclosed species. The fact that many species
are disclosed would not have made any of them less obvious,
particularly where, as here, the material recited in appellant’s
claim is used for the same purpose taught by the reference, i.e.,
coating seeds. See Merck & Co. v. Biocraft Labs., 874 F.2d 804,
807, 10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied, 493 U.S. 975
(1989).
For the above reasons, we conclude that a gin-run fuzzy
cottonseed coated with a guar product such that the dried coated
seed is flowable as recited in appellant’s claim 1 would have
been obvious to one of ordinary skill in the art over Hinkes and
Redenbaugh. Accordingly, the rejection of this claim under
35 U.S.C. § 103 is affirmed. Since appellant states that claims
2, 3, 5 and 8 stand or fall with claim 1 (brief, page 5), the
rejection of these claims under 35 U.S.C. § 103 also is affirmed.
See 37 CFR § 1.192(c)(5)(1988).
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Regarding claim 4, the examiner argues that the use of whole
ground guar would be substantially the same as using guar gum
because the properties of the seed coating would be the same
(answer, page 9). Appellant does not challenge the examiner’s
argument but, rather, states that he does not find that the guar
gum disclosed by Redenbaugh is properly described as ground guar
and does not find it described as the principal ingredient in the
coating (brief, page 13). Hinkes’ disclosure that the precoating
material can be a vegetable gum (col. 3, lines 30-33) indicates
that the gum is the principal ingredient of the precoating.
Although the references do not disclose use of ground guar, in
our view the teaching by Redenbaugh that guar gum is a suitable
seed coating material (col. 4, lines 66-67) would have fairly
suggested, to one of ordinary skill in the art, that ground guar
including the gum also would be an effective coating material.
As for claims 6 and 7, the examiner argues that determining
the weight of coating as a percentage of the seed weight would be
optimization of a process parameter (answer, page 5). Appellant
argues that Hinkes limits the weight to 7% and that Redenbaugh
does not indicate the weight (brief, page 14).
The amount of the first coating disclosed by Hinkes is about
0.5 to 5.0 wt% of the coated seed (col. 3, lines 17-19). This
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Application 07/938,960
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amount is disclosed for use with flame delinted cottonseed (col.
3, lines 14-17). The cottonseed used by Hinkes, however, does
not appear to be limited to that which has been flame delinted.
Hinkes broadly teaches that “where the seed surface is covered
with linters or short fibers, e.g., cotton seed, which alter the
surface area of the polymeric-pesticide film, pretreatment is
recommended” (col. 1, lines 50-53). Hinkes points out that “[i]t
was found that the surface of cotton seed, even after flame
delinting, was covered with short fibers” (col. 1, lines 53-55),
but then broadly teaches that “[t]hus, the surface of linter
covered seed is desirably first precoated with a natural or
synthetic substance which will cover the fibers and adhere the
fibers to each other as well as to the seed” (col. 1, lines
55-58). In our view, this teaching would have fairly suggested,
to one of ordinary skill in the art, that suitable cottonseed
includes both that which has and has not been flame delinted, and
would have indicated to such a person that the amount of coating
needed is that which would cover the fibers and adhere them to
the seed. The required amount of coating, whether the amount
is within the range disclosed by Hinkes for flame delinted
cottonseed or is above this range for cottonseed which has not
been flame delinted, would have been determinable by one of
Appeal No. 95-0678
Application 07/938,960
The amendment to claim 9 submitted in the reply brief filed on April2
19, 1994 (Paper No. 15) has not been entered and therefore is not before us.
13
ordinary skill in the art through no more than routine
experimentation in view of the Hinkes disclosure. See In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980); In re
Aller, 220 F.2d 454, 457, 105 USPQ 233, 236 (CCPA 1955). Thus,
cottonseed having a coating of a guar product in an amount
recited in appellant’s claims 6 and 7 would have been prima facie
obvious to one of ordinary skill in the art in view of the
applied references.
Concerning claim 9 , appellant argues that neither Hinkes2
nor Redenbaugh discloses a conditioning binder for reducing dust
and toughening and strengthening the coating on the exterior
surface thereof (brief, page 14). We are not persuaded by this
argument because it appears that the polymeric film (col. 1,
lines 35-39) formed on the Hinkes’ vegetable gum pretreatment
coating would toughen and strengthen the coating and would reduce
dust emission from it.
For the above reasons, the rejection of claims 4, 6, 7, and
9 under 35 U.S.C. § 103 over Hinkes and Redenbaugh is affirmed.
Regarding process claim 10, the examiner argues that
“wetting the seeds first and then applying a water soluble powder
Appeal No. 95-0678
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coat, would be substantially the same as applying the water
soluble powder coat to the seed surface in solution” (answer,
page 5).
The deficiency in the examiner’s argument is that the
examiner does not explain where the suggestion to coat seed by
wetting the seed and then applying an excess of water-soluble
powdered coating material to the seed is found in the prior art.
“The mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the
modification.” In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1783-84 (Fed. Cir. 1992). See also Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The examiner also argues that the prior art and appellant’s
claimed process “would produce the same coated seed” (answer,
page 10). As correctly pointed out by appellant (brief, page
20), since claim 10 is directed toward a process, the relevant
inquiry under 35 U.S.C. § 103 is not whether the product produced
by the process is the same as that of the prior art, but whether
appellant’s claimed process would have been obvious to one of
ordinary skill in the art. Furthermore, the examiner has not
Appeal No. 95-0678
Application 07/938,960
15
explained why appellant’s claimed process and the prior art
produce the same coated seed. Appellant’s specification (page
17) states that the coating on appellant’s seeds, prior to
addition of a binder to its surface, has a dusty surface. The
examiner has not explained why the prior art process wherein
seeds are coated with a solution produces a coating which has a
dusty surface or a coating which is the same as one having a
binder applied over a dusty surface.
The examiner further argues, in reliance on In re Kuhle,
526 F.2d 553, 188 USPQ 7 (CCPA 1975), that since appellant’s
recited powder coating method solves no apparent problem and
provides no unexpected results, it is a matter of obvious design
choice (answer, page 10).
The court in Kuhle considered certain aspects of a portable
electrical instrument for measuring moisture in soil to be an
obvious design choice. The examiner in the present case,
however, has not provided a convincing explanation as to why
using appellant’s powder coating method would have been an
obvious design choice. We note that the examiner’s statement
that appellant’s process “solves no apparent problem” is contrary
to appellant’s specification which indicates that appellant’s
process solves the problem of poor flowability of fuzzy
Appeal No. 95-0678
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cottonseed (specification, page 6, lines 10-14), and we further
note that whether appellant’s process produces an unexpected
result becomes an issue only when the examiner has established a
prima facie case of obviousness. See In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 882 (CCPA 1981).
For the above reasons, the examiner has not established a
prima facie case of obviousness of the invention recited in
appellant’s claim 10. Accordingly, the rejection under 35 U.S.C.
§ 103 of this claim and claims 11-20 which depend from it is
reversed.
DECISION
The rejections of claims 1-9 under 35 U.S.C. § 101 on the
ground that the claimed invention is directed toward non-
statutory subject matter, and of claims 10-20 under 35 U.S.C.
§ 103 as being unpatentable over Hinkes taken with Redenbaugh,
are reversed. The rejection of claims 1-9 under 35 U.S.C. § 103
as being unpatentable over Hinkes taken with Redenbaugh is
affirmed.
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17
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )

Appeal No. 95-0678
Application 07/938,960
18
Wendell Coffee
P. O. Box 3726
Lubbock, TX 79452
TJO/cam