Ex Parte Kohno et al

Board of Patent Appeals and Interferences

Jul 15, 2008

09837020 (B.P.A.I. Jul. 15, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YASUSHI KOHNO and NORITOSHI KATSUTANI
____________

Appeal 2008-3022
Application 09/837,020
Technology Center 3600
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Decided: July 15, 2008
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Before DONALD E. ADAMS, TONI R. SCHEINER, and
LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3, 7, 13, 15, and 16. We have
jurisdiction under 35 U.S.C. § 6(b). Claim 1 is representative of the claims
on appeal, and reads as follows:

Appeal 2008-3022
Application 09/837,020

1. A method of preventing defective germination or growth of a plant
comprising the steps of:
encapsulating at least one plant seed of a light germinator in an
aqueous gel capsule having a moisture content of at least 90% by weight, the
at least one plant seed having a size of 1 mm or less;
refrigerating the at least one plant seed under one of a humidifying
condition or in an airtight container so that moisture is not lost from the
aqueous gel capsule and under the condition that the at least one plant seed
does not germinate; and
sowing the at least one plant seed.
The Examiner relies on the following references:
Hinkes US 3,950,891 Apr. 20, 1976
Carlson US 5,666,762 Sep. 16, 1997

We reverse. 1

DISCUSSION
Claims 1, 3, 7, 13, 15, and 16 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Hinkes and Carlson.
Hinkes is cited for teaching a method of encapsulating a natural, light
germinating seed of less than 1mm (Final Rejection 2). The Examiner notes
that:

1 This Application has been previously before the Board as Appeal No. 2005-
2520, decided December 20, 2005 (having the merits panel of Garris, Pak,
and Kratz), in which the Examiner was affirmed. Claim 1 has been amended
since that Appeal, and the Examiner now relies on different prior art than
was relied upon in the previous Appeal.
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Application 09/837,020

Hinkes is silent on explicitly teaching that the coating is
an aqueous gel capsule having a moisture content of at least
90% by weight and the steps of refrigerating the at least one
plant seed under on of [sic] a humidifying conditions or in an
airtight container so that moisture is not lost from the aqueous
gel capsule and under the condition that the at least one plant
seed does not germinate; and sowing the at least one plant seed.

(Id.)
Carlson is cited as evidence that:
[I]t is general knowledge in the art of plant husbandry to
encapsulate seeds with an aqueous gel coat (Carlson, Col. 5 line
4-7) for long-term storage (Carlson abstract line 7) and to store
the seeds under refrigerated conditions in an airtight container
(Carlson Col. 22 line 61-67) so that the plant does not
germinate and then plant the seed.
(Final rejection 2-3.)
The Examiner concludes:
It would have been obvious to one of ordinary skill in the art to
modify the teachings of Hinkes with the teachings of Carlson at
the time of the invention since the modification is merely the
selection of a seed coat selected for its known advantage of
improving germination as taught by Carlson (Carlson Col. 1
line 65-66). Hinkes teaches there is sufficient motivation in the
art to modify a celery seed with a seed coat to improve
mechanized planting (Hinkes Col. 1 line 50-53). Carlson is
cited merely to teach that seeds coated with aqueous gel coats
are old and notoriously well-known in the art along with the
commonly practiced procedures of long-term storage of coated
seeds.

(Id. at 3.)
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
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Appeal 2008-3022
Application 09/837,020

argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present. An invention “composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” KSR Int’l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “Often, it will be necessary . . .
to look to interrelated teachings of multiple [references] . . . and the
background knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed[.]” Id. at 1740-41.
“[T]his analysis should be made explicit” (id. at 1741), and it “can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does” (id.).
The Examiner argues that:
Hinkes and Carslon are teachings of general knowledge in the
art of plant husbandry to coat a seed with an aqueous gel to
enhance germinations and to pelletize a seed that has an
aqueous gel coat to utilize mechanized planting equipment i.e.
combining the prior art elements according to known methods
to yield known results.
(Ans. 6.)
As noted by Appellants (App. Br. 6-7), Hinkes teaches:
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Appeal 2008-3022
Application 09/837,020

Investigations covering many combinations of coating
materials were carried out. Only a small group were found
which would accomplish the desired objectives. The present
invention is based on the concept of employing a coating
composition wherein the admixed materials have different
swelling rates, so that when the dried coating is exposed to the
moisture of the seed bed, there is a gradual swelling of the
coating over a period of time, and this swelling continues after
the hydration of the fastest swelling ingredient. The component
having the slower rate of hydration continues to act as a binder
during the hydration and swelling of the faster swelling
component. This interplay of the forces generated causes one
component to expand whereas the other component restrains the
coating to insure that the coating will open or expand much like
the opening of petals of a flower and then will fall away from
the seed rather than merely swelling and staying in place. In
this manner, the underlying seed is exposed to moisture, air,
and light shortly after being planted. This contrasts with
conventional coatings which remain on the seed after planting
to shield the seed from light and air for a longer time.

(Hinkes, col. 2, l. 53-col. 3, l. 7.)
Thus, while Carlson teaches that “encapsulating natural seeds in
hydrated gels can improve germination in some species” (Carlson, col. 1, ll.
64-67), the Examiner has not established that adding an aqueous gel capsule
as taught by Carlson would perform the function of Hinkes, that is, that it
will allow the coating of Carlson to open and expand and fall away from the
seed, or that the gel coating will allow the seed to be exposed to moisture,
air, and light shortly after being planted.
Therefore, we conclude that the Examiner has not set forth a prima
facie case of obviousness, and we are compelled to reverse the rejection.

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Application 09/837,020

CONCLUSION
In summary, we conclude that the Examiner has not set forth a prima
facie case of obviousness, and therefore reverse the Examiner’s rejection of
claims 1, 3, 7, 13, 15, and 16.

REVERSED

clj

MICHAEL S. GZYBOWSKI
BUTZEL LONG
350 SOUTH MAIN STREET
SUITE 300
ANN ARBOR, MI 48104

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