Ex parte FOAN et al.

Board of Patent Appeals and Interferences

Nov 30, 2000

08229118 (B.P.A.I. Nov. 30, 2000)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte COLIN C. FOAN and ANTHONY R. WOODFORD
________________
Appeal No. 1997-1903
Application No. 08/229,118
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HEARD: October 24, 2000
________________
Before KIMLIN, WARREN and JEFFREY SMITH, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-4,
7-23 and 28-32, all the claims remaining in the present
application. Claim 1 is illustrative:
1. A mixture of bromoxynil n-octanoate and bromoxynil
n-heptanoate wherein the molar ratio of bromoxynil n-octanoate
to bromoxynil n-heptanoate is from 1:1.5 to 1.5:1.
Appeal No. 1997-1903
Application No. 08/229,118
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Appeal No. 1997-1903
Application No. 08/229,118
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The examiner relies upon the following references as
evidence of obviousness:
Heywood et al. (Heywood) 1,067,033 Apr. 26, 1967
(Great Britain patent specification)
Esposito 4,332,613 Jun. 1, 1982
Appellants' claimed invention is directed to a herbicidal
mixture of bromoxynil n-octanoate and bromoxynil n-heptanoate.
According to appellants, the claimed mixture possesses an
unexpectedly lower melting point than the melting point of
either of the separate compounds, a significantly lower
crystallization temperature than that exhibited by either of
the separate compounds, as well as unexpected superiority in
herbicidal activity.
Appealed claims 1-4, 7-23 and 28-32 stand rejected under
35 U.S.C. § 103 as being unpatentable over Heywood in
combination with Esposito.
Upon careful consideration of the opposing arguments
presented on appeal, we agree with appellants that the prior
art applied by the examiner fails to establish the obviousness
of the claimed subject matter within the meaning of 35 U.S.C.
§ 103. Accordingly, we will not sustain the examiner's
rejection.
Appeal No. 1997-1903
Application No. 08/229,118
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While there is no dispute that Heywood discloses a broad
genus which encompasses appellants' bromoxynil n-octanoate and
bromoxynil n-heptanoate which exhibits herbicidal activity,
the examiner relies upon Esposito for disclosing a combination
of esters of bromoxynil within a narrower genus which includes
C -C esters. Like the presently claimed compounds and those4 8
disclosed by Heywood, Esposito teaches that the mixture of
esters exhibits herbicidal activity. According to the
examiner, "[a]lthough Esposito suggests the combination of the
n-butyrate and
n-octanoate esters of bromoxynil as the preferred and most
effective embodiment, the initial teaching embodies various
combination [sic, combinations] of C4-C8 esters of bromoxynil"
(page 4 of Answer, first paragraph).
The fatal flaw in the examiner's reasoning is that
Esposito does not disclose C -C esters of bromoxynil. Rather,4 8
in the section of Esposito relied upon by the examiner (column
2, lines 10-23), Esposito expressly discloses that "n is an
integer having a value of 2 or 6" (lines 22 and 23, emphasis
added), which translates into the singular mixture of the n-
butyrate and n-octanoate esters. Hence, the examiner errs in
Appeal No. 1997-1903
Application No. 08/229,118
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stating that the structural formula disclosed by Esposito
includes the
n-heptanoate ester. Consequently, based on this deficiency in
Esposito, it cannot be said that Esposito provides the
motivation to select a mixture of the particular esters
recited in the appealed claims from the genus disclosed by
Heywood.
To the extent that the genus of Heywood, considered
alone, establishes a prima facie case of obviousness for
appellants' mixture, the prima facie case has been effectively
rebutted by appellants' specification evidence and Declaration
of Robert G. Bruss. Regarding the examiner's criticism that
the Bruss Declaration is not probative of nonobviousness
because the herbicidal advantages demonstrated in the
Declaration "were never disclosed by the applicant in the
specification at the time the application was filed" (page 7
of Answer), the examiner has not demonstrated that such
herbicidal advantages would not naturally flow from use of the
claimed mixture. In re Davies, 475 F.2d 667, 670, 177 USPQ
381, 384-85 (CCPA 1973); In re Khelghatian, 364 F.2d 870, 876,
Appeal No. 1997-1903
Application No. 08/229,118
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150 USPQ 661, 666 (CCPA 1966); In re Zenitz, 333 F.2d 924,
927-28, 142 USPQ 158, 161 (CCPA 1964). See also
In re Herr, 304 F.2d 906, 909, 134 USPQ 176, 178-79 (CCPA
1962).
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY SMITH )
Administrative Patent Judge )
ECK:clm
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