Ex Parte Hance et al

Board of Patent Appeals and Interferences

Jan 21, 2010

10481102 (B.P.A.I. Jan. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THIERRY HANCE, MICHELE DEBATTY-MESTDAGH,
VINCENT CAMBIER, CATHERINE BOEGEN, FREDERIC MURATORI,
OLIVIER LEBBE, and ANA-MARIA DOS SANTOS GONCALVES
____________

Appeal 2009-003304
Application 10/481,102
Technology Center 3600
____________

Decided: January 21, 2010
____________

Before LINDA E. HORNER, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL
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STATEMENT OF THE CASE
Thierry Hance et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-21 and 25. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ claimed invention is to a method of rearing
endoparasitoids of insects using spherical polymer beads or capsules. Spec.
1:6-8. Claims 1, 14, 16, 18, and 25 reproduced below, are representative of
the subject matter on appeal.
1. A method of rearing an endoparasitoid
comprising: rearing the endoparasitoid in a
spherical biopolymer bead or capsule, whereby the
bead or capsule acts as a host for the
endoparasitoid.

14. A method for continuous in vitro rearing of
an endoparasitoid comprising the steps of:
- laying an egg of an endoparasitoid in a spherical
biopolymer bead or capsule which comprises a
nutritive solution, and
- maintaining said bead or capsule in an
oxygenated sterilized nutritive solution during
endoparasitoid development.
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16. A method according to claim 14 further
comprising the steps of: in vitro rearing said
endoparasitoid in said bead or capsule until the
stage of adult emergence mummies and collecting
the endoparasitoid emerged from the bead or
capsule.

18. An endoparasitoid obtainable by the method
of claim 16.

25. A method of treating a pest which comprises
administering the endoparasitoid of claim 18 to a
pest population.

THE EVIDENCE
The Examiner relies upon the following evidence:
Hoffman US 4,418,647 Dec. 6, 1983
Smith US 5,750,126 May 12, 1998
“Cereal Leaf Beetle: Control Using Parasitic Wasps,”
http://web.archive.org/web/19980502102856/http://www.agr.state.nc
.us/plaintind/PLANT/BIOCTR/BIOPRO/CLBINFO.HTM
(hereinafter “CLB”).

THE REJECTIONS
Appellants seek review of the following rejections:
1. The Examiner rejected claims 1-6, 10-19, 21, and 25 under 35 U.S.C.
§ 102(b) as being anticipated by, or in the alternative under 35 U.S.C.
§ 103(a) as being unpatentable over, Hoffman.
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2. The Examiner rejected claims 7 and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Hoffman and Smith.
3. The Examiner rejected claims 8 and 9 under 35 U.S.C. § 103(a) as
being unpatentable over Hoffman and CLB.

ISSUES
The Examiner found Hoffman discloses the method of rearing an
endoparasitoid, as called for in claims 1 and 14, but that it does not explicitly
disclose the bead or capsule being spherical. Ans. 3, 7-8. The Examiner
further found that Hoffman’s disclosure that the curvilinear surface region
extends through an arc of “at least about 90°,” indicates that an arc of greater
than 90 degrees, including an arc of 360 degrees, had been contemplated.
Ans. 4. The Examiner concluded that it would have been obvious to make
the membrane, to include the underlying nutrient medium, spherical, since
there is no invention in merely changing the shape or form of an article
without changing its function, and Hoffman discloses that a hemispherical
shape suffices to encourage oviposition. Ans. 4.
Appellants contend that Hoffman’s curvilinear surface is open-sided
and nowhere in Hoffman is it taught that a spherical bead or a capsule may
be used as an alternative for the described membrane. Br. 12. Appellants
further argue that use of a sphere would be contrary to the teaching of
Hoffman which requires that the inner surface of the curvilinear region
defines a semi-enclosed cavity which has sufficient access from the inner
surface side of the membrane to enable flushing. Id.
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The Examiner found that Hoffman discloses the endoparasitoid of
claim 18 and discloses utilizing the parasitic wasps to protect agricultural
areas and crops, as called for in claim 25. Ans. 7, 8. Appellants argue for
claim 18 that “Hoffman does not teach biopolymer beads or capsules which
contain mummy endoparasitoids.” Br. 17. Appellants argue for claim 25
that “as Hoffman does not teach the claimed biopolymer beads and capsules,
he also cannot teach their use in a method of treating pests.” Id.
The issues presented by this appeal include:
Have Appellants shown the Examiner erred in finding that Hoffman
discloses or renders obvious a spherical bead or capsule, as called for in
claims 1 and 14?
Have Appellants shown the Examiner erred in finding that Hoffman
discloses the endoparasitoid as called for in claim 18?
Have Appellants shown the Examiner erred in finding that Hoffman
discloses the method of using such an endoparasitoid for the treatment of a
pest, as called for in claim 25?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Ordinary and customary meanings of “spherical” include “[h]aving
the shape of a sphere; globular” and “[h]aving a shape
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approximating that of a sphere.” The American Heritage
Dictionary, Second Coll. Ed. (1982), definitions 1a, 1b.
2. Appellants’ Specification describes that polymer beads encapsulate
the nutritive medium in order to rear endoparasitoids in a nutritive
solution. Spec. 4:19-21; id. at 4:27-29.
3. Appellants’ Specification also describes that the horizontal
orientation of the needle used in the method of making the beads,
the viscosity of the ionic solution, and the duration time in the
polymer solution must be controlled to ensure a correct
“sphericity” of the bead. Spec. 7:28-30; id. at 8:23-25; id. at
8:31-32.
4. Hoffman discloses a method of rearing Trichogramma, a genus of
a vast array of endoparasitic species, using an artificial substrate.
Hoffman, col. 1, ll. 8-10 and ll. 59-65.
5. Hoffman discloses the substrate includes an artificial membranous
material 1 which is shaped to incorporate one or more curvilinear
surface regions 2 each having an outer convex surface 3 and an
inner concave surface 4, where the curvilinear surface regions
should extend through an arc of “at least 90°.” Hoffman, col. 2, ll.
28-32 and ll. 53-54. Figure 1 of Hoffman shows the curvilinear
surface regions 2 formed in the shape of hemispheres. Hoffman,
fig. 1.
6. Hoffman discloses that the inner concave surface 4 defines a semi-
enclosed cavity which has sufficient access from the inner surface
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side of the membrane to enable flushing and which is adapted to
receive and hold in contact with the inner concave surface 4, an
inducement medium 5 for further enhancing oviposition.
Hoffman, col. 2, ll. 57-64.
7. Hoffman discloses that once eggs have been oviposited, the eggs
are recovered by flushing the inducement medium and entrained
eggs from the inner membrane surface, and thereafter the eggs are
transferred to a nutrient medium 7 for further development.
Hoffman, col. 2, ll. 64 - col. 3, l. 1.
8. Hoffman discloses that the nutrient medium 7 may be either in a
separate facility or underlie the membrane 1 for in situ rearing of
larvae 8 without transfer to a separate facility. Hoffman, col. 3, ll.
3-7.
9. Hoffman discloses that “for either in situ or remote rearing, the
inducement and nutrient media can be combined as a single dual-
purpose medium.” Hoffman, col. 3, ll. 9-11.
10. Hoffman discloses it was known in the art to use Trichogramma
for the control of agricultural pests. Hoffman, col. 1, ll. 25-26.

PRINCIPLES OF LAW
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
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properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
“A product-by-process claim is ‘one in which the product is defined at
least in part in terms of the method or process by which it is made.’”
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir.
2006) (quoting Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
141, 158 (1989)). “The purpose of product-by-process claims is to allow
inventors to claim ‘an otherwise patentable product that resists definition by
other than the process by which it is made.’” SmithKline, 439 F.3d at 1315
(quoting In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)). Such claims are
still directed to the ultimate product, not the underlying process. See id. at
1317 (“Regardless of how broadly or narrowly one construes a product-by-
process claim, it is clear that such claims are always to a product, not a
process.”). “[O]nce a product is fully disclosed in the art, future claims to
that same product are precluded, even if that product is claimed as made by a
new process.” SmithKline, 439 F.3d at 1315. Thus, “[i]f the product in a
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
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by a different process.” In re Thorpe, 777 F.3d at 697. In other words,
“[t]he patentability of a product does not depend on its method of
production.” SmithKline, 439 F.3d at 1317.

ANALYSIS
Claim Construction
This appeal turns, in part, on the meaning of “spherical.” Appellants’
arguments evince that Appellants are interpreting “spherical” to mean
having the form of a sphere, while the Examiner’s position is that
Appellants’ claim to a “spherical” bead or capsule is broader and
encompasses a form having a shape less than a complete sphere. Br. 12;
Ans. 10. The ordinary and customary meanings of “spherical” arguably
include both Appellants’ and the Examiner’s definitions of spherical
(Fact 1). However, because Appellants’ Specification clearly describes the
polymer beads of the present invention as being in the shape of a complete
sphere (Facts 2, 3), we find that one having ordinary skill in the art, upon
reading Appellants’ Specification, would understand “spherical” to mean
having the shape of a sphere. See In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004).

Rejection of claims 1-6, 10-19, 21, and 25 over Hoffman
We find that Hoffman does not anticipate the method of claims 1 and
14 because it does not disclose a “spherical biopolymer bead or capsule”
used for oviposition and rearing of an endoparasitoid. We agree with the
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Examiner that Hoffman does not explicitly disclose beads in the shape of a
sphere (Fact 5). Ans. 3. We further find that Hoffman does not inherently
disclose beads in the shape of a sphere. In particular, Hoffman’s disclosure
that the curvilinear surface regions should extend through an arc of “at least
90°” does not necessarily mean that the surface regions form complete
spheres, and in fact, Hoffman does not appear to have contemplated the use
of complete spheres for these regions because Hoffman requires that the
cavity formed by this region is semi-enclosed and remains open for flushing
the eggs from the inner membrane surface (Facts 6, 7). Further, while
Hoffman discloses an embodiment in which the eggs are reared “in situ,”
Hoffman describes that in this method, the eggs are recovered by flushing
the inducement medium and entrained eggs from the inner membrane
surface, and transferring them to a nutrient medium 7, which underlies the
membrane (Facts 7, 8). As such, it appears from this description and figure
3 of Hoffman that the membrane 1 rests atop nutrient medium 7, and thus,
even if the inducement and nutrient media are the same medium, as
disclosed in Hoffman (Fact 9), this fact does not evince a disclosure in
Hoffman of a curvilinear region in the shape of a sphere.
We likewise conclude that it would not have been obvious in view of
Hoffman to have modified the membrane of Hoffman to form a spherical
bead or capsule. As noted supra, Hoffman requires that the inner surface of
its curvilinear region remains open so as to allow for flushing of the
oviposited eggs from the membrane for rearing of the eggs in a nutrient
medium (Facts 6, 7). As noted by Appellants and acknowledged by the
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Examiner, modifying the semi-enclosed curvilinear region of Hoffman to
make it a sphere would be “in contrast and contrary to the teaching of
Hoffman.” Br. 12; Ans. 10.
As such, we will not sustain the rejection of claims 1 and 14, of claims
2-5, 10-13, and 21, which depend from claim 1, or of claims 15 and 16,
which depend from and add further limitations to the method of rearing of
claim 14.
Claim 17 recites “[a] biopolymer bead or capsule comprising an
embed mummy of an endoparasitoid obtainable by the method of claim 15.”
Claim 15 depends from claim 14 and recites that the method of claim 14
further comprises in vitro rearing of the endoparasitoid in the bead or
capsule until the stage of embed mummies. We understand claim 17 to be
directed to the spherical bead of claim 15, since such a spherical bead is
necessary in order to obtain an embed mummy of an endoparasitoid within
the bead. As such, we will not sustain the rejection of claim 17 for the same
reasons as discussed supra in our analysis of claim 14.
Claim 19 recites “[a] method of treating a pest which comprises
administering the biopolymer bead or capsule of claim 17 to a pest
population.” Since claim 19 requires the use of the spherical bead or capsule
of claim 17 in its method, we likewise will not sustain the rejection of claim
19 for the same reasons as discussed supra in our analysis of claim 14.
Claim 18, however, recites “[a]n endoparasitoid obtainable by the
method of claim 16.” This claim is presented in product-by-process format,
in which the product (an endoparasitoid) is defined by the process by which
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it is made. Claim 16 depends from claim 14 and includes the step of
“collecting the endoparasitoid emerged from the bead or capsule.” We see
no structural difference between an endoparasitoid which emerges from
Appellants’ bead or capsule upon the completion of the method of claim 16
and an endoparasitoid that emerges upon the completion of the method of
Hoffman. In Hoffman, the end product is an emerged endoparasitoid
(Fact 4). “Once a product is fully disclosed in the art, future claims to that
same product are precluded, even if that product is claimed as made by a
new process.” SmithKline, 439 F.3d at 1315. Because the endoparasitoid of
claim 18 is the same as the endoparasitoid of Hoffman, even though it is
made by a different process, we find that Hoffman anticipates claim 18.
Claim 25 is directed to a method of treating a pest which comprises
administering the endoparasitoid of claim 18 to a pest population. Hoffman
discloses that it was known in the art to use Trichogramma, a genus
representing a vast array of endoparasitic species of minute wasps, in the
control of agricultural pests (Facts 4, 10). As such, we find that Hoffman
anticipates the method of claim 25, because it teaches using the same
endoparasitoid as called for in claim 18 to treat pests.

Rejection of claims 7 and 20 over Hoffman and Smith
Claim 7 depends from claim 1 and thus calls for a spherical bead or
capsule. The Examiner relied on Smith for the teaching of using chitosan
for coating bacteria. Ans. 8. The Examiner did not articulate how Smith
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would cure the deficiency of Hoffman identified supra in our analysis of
claim 1. As such, we cannot sustain the rejection of claim 7 under § 103.
Claim 20 depends from claim 15 and calls for a method of mass
production of endoparasitoids by pulverization of biopolymer beads or
capsules obtainable by the method of claim 15. As we determined supra, the
method of claim 15 requires the spherical bead or capsule of claim 14. The
Examiner relied on Smith for the teaching of using an orchard blast sprayer
to apply the formulations. Ans. 9. The Examiner did not articulate how
Smith would cure the deficiency of Hoffman identified supra in our analysis
of claim 14. As such, we cannot sustain the rejection of claim 14 under
§ 103.

Rejection of claims 8 and 9 over Hoffman and CLB
Claim 8 and 9 depend from claim 1 and thus calls for a spherical bead
or capsule. The Examiner relied on CLB for the teaching that
endoparasitoids are naturally attracted to essentially yellow eggs. Ans. 9.
The Examiner did not articulate how CLB would cure the deficiency of
Hoffman identified supra in our analysis of claim 1. As such, we cannot
sustain the rejection of claims 8 and 9 under § 103.

CONCLUSIONS
Appellants have shown the Examiner erred in finding that Hoffman
discloses or renders obvious a spherical bead or capsule, as called for in
independent claims 1 and 14.
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Appellants have failed to show the Examiner erred in finding that
Hoffman discloses the endoparasitoid as called for in claim 18.
Appellants have failed to show the Examiner erred in finding that
Hoffman discloses the method of using an endoparasitoid for the treatment
of a pest, as called for in claim 25.

DECISION
We REVERSE the decision of the Examiner to reject claims 1-17 and
19-21.
We AFFIRM the decision of the Examiner to reject claims 18 and 25.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

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