Ex parte Jones et al.

Board of Patent Appeals and Interferences

Nov 10, 1998

08071963 (B.P.A.I. Nov. 10, 1998)

Application for patent filed June 7, 1993. According1
to appellants, this application is a division of Application
No. 07/883,422, filed May 12, 1992, now abandoned.
-1-
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journal and (2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte KEITH A. JONES, ANTHONY E. WINSTON,
M. STEPHEN LAJOIE and AMY L. JOSEPH
________________
Appeal No. 96-2324
Application No. 08/071,9631
________________
ON BRIEF
________________
Before WINTERS, DOWNEY and WARREN, Administrative Patent
Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision
rejecting claims 39 through 42. Claim 38, which is the only
Appeal No. 96-2324
Application No. 08/071,963
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other claim remaining in the application, stands withdrawn
from further consideration by the examiner as directed to a
non-elected invention.
Claim 39, which is illustrative of the subject matter on
appeal, reads as follows:
39. A fungicide composition which is a dry blend
formulation comprising (1) between about 10-80 weight percent
of an ingredient selected from the group consisting of alkali
metal and ammonium bicarbonates, (2) between about 0.5-20
weight percent of a compatibility enhancing ingredient
selected from the group consisting of water-soluble
polyhydroxy compounds which are in solid form at a temperature
below about 10EC, (3) between about 0.01-10 weight percent of
a fungicide ingredient, and (4) between about 1-20 weight
percent of a surfactant ingredient, based on the weight of
water-insoluble ingredients; wherein the composition contains
nitrogen, phosphorus and potassium elements in a ratio which
is functional as a fertilizer formulation.
The references relied on by the examiner are:
Duyfjes et al. (Duyfjes) 3,140,977 July 14, 1964
Misato et al. (Misato) 4,599,233 July 8, 1986
Rehberg et al. (Rehberg) 5,174,804 Dec. 29, 1992
Joo et al. (Joo) 53-096319 Aug. 23, 1978
(Japanese Kokai publication)
Oosumi 60-153785 Aug. 13, 1985
(Japanese Kokai publication)
Van Nostrand Reinhold, Encyclopedia of Chemistry 85 (4th ed.,
Van Nostrand Reinhold Co. 1984)
The Merck Index 818-19 (Martha Windholz ed., 10th ed., Merck &
Co., Inc. 1983)
Appeal No. 96-2324
Application No. 08/071,963
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The issue presented for review is whether the examiner
erred in rejecting claims 39 through 42 under 35 U.S.C. § 103
as unpatentable over the combined disclosures of Duyfjes,
Misato, Japanese Kokai No. 53-096319, Japanese Kokai No. 60-
153785, Rehberg, The Merck Index, and Van Nostrand.
OPINION
We shall not sustain this rejection.
We agree with the examiner that it would have been
obvious to arrive at a fungicide composition, which is a dry
blend formulation, comprising ingredients (1), (3), and (4) in
the proportions recited in claim 39. For the reasons set
forth by the examiner, and amply documented by the cited prior
art, a fungicide composition which is a dry blend formulation
comprising (1) an alkali metal bicarbonate, (3) a triphenyltin
fungicide, and (4) a surfactant in the proportions recited in
claim 39 would have been obvious within the meaning of
35 U.S.C. § 103. Adding to that composition a compound or
compounds which provide nitrogen, phosphorus, and potassium in
a ratio functional as a fertilizer formulation also would have
been obvious for the reasons expressed by the examiner.
Appeal No. 96-2324
Application No. 08/071,963
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The weakness in the examiner's position, however, is an
inadequate evidentiary foundation to support a conclusion of
obviousness of claims reciting ingredient (2). In relevant
part, claim 39 defines a fungicide composition which is a dry
blend formulation comprising
(2) between about 0.5-20 weight percent of a
compatibility enhancing ingredient selected from the
group consisting of water-soluble polyhydroxy
compounds which are in solid form at a temperature
below about 10EC.
Mannitol is exemplary of a compatibility enhancing ingredient
meeting the terms of claim 39 (specification, page 7, line 1).
Citing the Merck Index, 10th ed., Monograph No. 5569, and
Van Nostrand, page 85, the examiner argues that it would have
been obvious to add mannitol to solid fungicidal compositions
known in the art, e.g., the fungicidal compositions of
Duyfjes, as an anticaking and free-flow agent. We disagree.
Motivation in the prior art to combine references does
not have to be identical to that of the applicant to establish
obviousness. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309,
1311 (Fed. Cir. 1996). Nevertheless, the examiner has the
burden of establishing adequate reason, suggestion, or
motivation to combine references in such manner to arrive at
Appeal No. 96-2324
Application No. 08/071,963
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the claimed invention. The examiner has not met that burden
here.
The examiner has not established that solid fungicidal
compositions known in the art, e.g., the fungicidal
compositions of Duyfjes, contain one or more hygroscopic
substances and, therefore, require the addition of an
anticaking agent to inhibit formation of aggregates and lumps
and to ensure a free-flowing characteristic. See Van
Nostrand, page 85, right-hand column, first full paragraph.
Nor has the examiner established that (1) the prior art
suggests the desirability that solid fungicidal compositions
be free-flowing; or (2) it was known in the art to add an
anticaking agent or agents to solid fungicidal compositions,
thus ensuring a free-flow characteristic. Therefore, the
examiner has not established an adequate reason, suggestion,
or motivation which would support the rejection under
35 U.S.C. § 103.
The examiner states that "solid formulations are known to
benefit from the addition of adjuvants such as anticaking
agents via retention of free-flowing properties" (Examiner's
Answer, page 6, last full paragraph). That statement is
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Application No. 08/071,963
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overly broad and not supported by evidence of record. In
contrast, Van Nostrand discloses that
[s]ome products, particularly foods that contain one
or more hygroscopic substances, require the addition
of an anticaking agent to inhibit formation of
aggregates and lumps and thus retain the free-
flowing characteristic of the products. [Van
Nostrand, page 85, right-hand column, first full
paragraph].
Appeal No. 96-2324
Application No. 08/071,963
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Manifestly, the above-quoted statement from Van Nostrand is
more narrow than the broad, unsupported statement in the
Examiner's Answer, page 6.
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
MARY F. DOWNEY ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
clm
Appeal No. 96-2324
Application No. 08/071,963
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Charles B. Barris
Church & Dwight, Co., Inc.
469 North Harrison St.
Princeton, NJ 08543