Ex Parte Landolt et al

Board of Patent Appeals and Interferences

Feb 23, 2010

10637922 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PETER J. LANDOLT and CONNIE L. SMITHHISLER
__________

Appeal 2009-0095751
Application 10/637,922
Technology Center 1600
__________

Decided: February 24, 2010
__________

Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to compositions
for attracting moths and other lepidopteran species. The Examiner rejected
the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The United States of America, as represented by the Secretary of
Agriculture, the assignee of the application, is the real party in interest.
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STATEMENT OF THE CASE
Claims 1 and 21-24 stand rejected and are on appeal (App. Br. 3).2
Claims 1 and 21, the independent claims, are representative and read as
follows:
1. A composition for attracting noctuid moths and other
lepidopteran species comprising an attractant component
which comprises β-myrcene and one or more compounds
selected from the group consisting of phenylacetaldehyde
and benzyl acetate, wherein said attractant component
provides an effective moth attractant of a vapor blend of I
and II.

21. A composition for attracting noctuid moths and other
lepidopteran species which comprises an attractant
component comprising phenylacetaldehyde (PA) and
methyl-2-methoxybenzoate, wherein said attractant
component provides an effective moth attractant amount
of a vapor blend of phenylacetaldehyde and methyl-2-
methoxybenozate, and wherein the composition does not
include methyl salicylate.

The Examiner cites the following documents as evidence of
unpatentability:
Lopez , Jr. [hereinafter Lopez ‘406] US 6,440,406 B1 Aug. 27, 2002
Lopez, Jr. [hereinafter Lopez ‘634] US, 6,074,634 Jun. 13, 2000
Light US 6,264,939 B1 Jul. 24, 2001

The following rejections are before us for review:
(1) Claim 1, rejected under 35 U.S.C. § 103(a) as being obvious in
view of Light and Lopez ‘634 (Ans. 3-4); and

2 Appeal Brief filed October 17, 2008.
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(2) Claims 21-24, rejected under 35 U.S.C. § 103(a) as being obvious
in view of Lopez ‘406 (Ans. 4-5).
OBVIOUSNESS -- LIGHT AND LOPEZ ‘634
ISSUE
The Examiner cites Light as teaching that compositions useful for
attracting codling moths and other Lepidoptera are prepared by combining
pheromones with mixtures of plant-derived volatile compounds (Ans. 3).
According to the Examiner “MT-2 (a myrcene blend) was shown to have
‘good effect’ to attract mole coddling moth (Table 9, good effect- column
27) while myrcene alone was ineffective” (id. at 4).
The Examiner concedes that Light does not describe the “claimed
combination of the [m]yrcene (I) with either (II) phenylacetaldehyde (PA) or
benzyl acetate” and cites Lopez ‘634 to meet that limitation (id.).
Specifically, the Examiner finds that Lopez ‘634 describes attracting
lepidopteran species “with compositions of volatiles of an ester with an
aldehyde, particularly PA (column 12, lines 6-8) and terpene (limonene- col.
4,lines 47-55). Other Monoterpenes can be added (column 8, lines 26-50)
and esters, and pheromones” (id.).
Based on these teachings the Examiner concludes that a person of
ordinary skill in the pest control art would have considered it obvious to add
the phenylacetaldehyde of Lopez ‘634 to the “myrcene monoterpene mix of
volatile attractants of Light, in order to attract 2 or more pest species of
lepidoptera with one composition. One would expect to not only attract
coddling moth, but also those shown by LOPEZ-plutella” (id.).
Appellants contend that the Examiner erred because neither Light nor
Lopez ‘634 discloses the use of benzyl acetate as an attractant for
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Lepidoptera (App. Br. 6). Moreover, Appellants argue, Light “specifically
teaches one of skill in the art away from the inclusion of myrcene [in
attractant compositions] as it teaches a myrcene blend had ‘no effect’
(emphasis added).(col. 27 table 9)” (id. at 7).
In view of the positions advanced by Appellants and the Examiner,
the issue with respect to this rejection is whether the Examiner erred in
finding that the cited references would have prompted an ordinary artisan to
prepare a composition that has a combination of ingredients encompassed by
claim 1.
FINDINGS OF FACT (“FF”)
1. Light discloses “attractants isolated from pear or apple volatiles which
have superior and selective attractancy for adult codling moths and other
lepidopterous species” (Light, col. 1, ll. 11-13).
2. Light’s attractants can be used in methods for “monitoring, control,
mass trapping and mating disruption of codling moth and other
lepidopterous species. The method includes luring the pest to a formulation
containing the attractant, aggregant or arrestant of the invention, alone, or in
combination with a sex pheromone and/or another kairomone and/or
insecticide” (id. at col. 1, ll. 17-22).
3. Among the apple and pear volatiles, Light also discloses the
preparation of a “[m]onoterpene [b]lend[]” termed “MT-2” that contains
γ-terpinene, terpinen-4-ol, ρ-cymene, myrcene, (E)-β-ocimene, and β-pinene
(id. at col. 17 (Table 2)).
4. Light studied the interaction of its blends of plant volatiles with
pheromone by comparing the attractiveness to codling moths of pheromone
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alone to the attractiveness of pheromone plus the volatile compound or blend
of compounds (id. at col. 25, ll. 35-39).
5. Light presented the results relevant to this case in Table 9, which is
reproduced below in relevant part (see id. at cols. 26-28):

Table 9 shows that a combination of pheromone and the monoterpene
blend “MT-2” attracted 138% more codling moths to the experimental trap,
compared to pheromone alone, and that the impact of the blend on the
pheromone attractancy was considered a “Good Effect” (id. at col. 27).
In contrast, myrcene by itself did not potentiate the attractancy of the
pheromone, and was considered to have “No Effect” (id.).
6. Lopez ‘634 discloses “compositions which are effective as attractants
for a variety of economically important noctuids and other lepidopteran
pests. This composition includes a mixture of effective amounts of the
volatile compounds phenylacetaldehyde, methyl-2-methoxybenzoate, methyl
salicylate, and optionally 2-phenylethanol and/or limonene” (Lopez ‘634,
col. 4, ll. 46-52).
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7. Lopez ‘634 discloses that a “variety of lepidopteran pheromones are
suitable for use with the attractant composition” (id. at col. 8, ll. 26-27).
8. Lopez ‘634 discloses:
Volatile or non-volatile extracts of Gaura or other plant
species may also be included in the attractant composition.
Suitable volatiles include but are not limited to one or more, but
less than all, of the compounds selected from (E)-2-hexenal,
(Z)-3-hexenol, (E)-2-hexenol, nonane, (Z)-3-hexenyl acetate,
γ-terpinene, terpinen-4-ol, nerol, geraniol, eugenol, isoeugenol,
γ -muurolene, valencene, 3,4-dihydro-8-hydroxy-3-methyl-1H-
2-benzopyran-1-one, dodecyl acetate, methyl epijasmonate, 2-
methylbutanal oxime, 2-methylbutanal (isomer A), 2-
methylbutanal (isomer-B), cinnamaldehyde, benzyl alcohol,
(E)-2-octenal, octanol, lilac aldehyde, an isomer of lilac
aldehyde, lilac alcohol, an isomer of lilac alcohol, 2-phenyl-2-
butenal, carvacrol, β-farnesene, α-selinene, selina-13,7(11)-
diene, and benzyl benzoate, or mixtures thereof[.]

(Id. at col. 8, ll. 36-50.)
9. It is undisputed that monoterpenes are among the suitable volatile
compounds disclosed by Lopez ‘634 as being suitable for inclusion in its
compositions.
PRINCIPLES OF LAW
In KSR Int’ l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), the
Supreme Court emphasized “an expansive and flexible approach” to the
obviousness question. The Court nonetheless reaffirmed that “a patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” Id. at 418.

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Rather, as the Court stated:
[I]t 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 . . . because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

Id. at 418-419 (emphasis added); see also id. at 418 (requiring a
determination of “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue”) (emphasis
added).
Ultimately, therefore, as our reviewing court has stated, “[i]n
determining whether obviousness is established by combining the teachings
of the prior art, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.” In re GPAC Inc.,
57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations omitted).
When evaluating claims for obviousness, “the prior art as a whole
must be considered. The teachings are to be viewed as they would have
been viewed by one of ordinary skill.” In re Hedges, 783 F.2d 1038, 1041
(Fed. Cir. 1986).
ANALYSIS
Appellants’ arguments do not persuade us that the Examiner erred in
finding that the cited references would have prompted an ordinary artisan to
prepare a composition including a combination of ingredients encompassed
by claim 1.
We note, as Appellants urge, that the Examiner failed to cite any
portion of Light or Lopez ‘634 that discloses including benzyl acetate in an
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attractant composition. However, claim 1 recites that the attractant
component “comprises β-myrcene and one or more compounds selected
from the group consisting of phenylacetaldehyde and benzyl acetate.” Claim
1 is therefore a Markush claim and the composition can encompass either
phenylacetaldehyde or benzyl acetate or both.
Thus, in addition to encompassing compositions that have an
attractant component which contains β-myrcene and benzyl acetate, claim 1
also encompasses compositions that include β-myrcene and
phenylacetaldehyde, in the absence of benzyl acetate. Thus, the fact that
neither reference teaches or suggests benzyl acetate in its attractant
compositions does not demonstrate that claim 1 is distinguishable over the
Light and Lopez ‘634.
Nor are we persuaded that Light teaches away from the composition
recited in claim 1. As noted above, Light teaches that its
myrcene-containing blend MT-2 potentiated the attractancy of a pheromone
to codling moths (FF 5).
Thus, we agree with the Examiner that an ordinary artisan, advised by
Lopez ‘634 of the usefulness of combining phenylacetaldehyde with
pheromones and monoterpenes in lepidopteran attractant compositions, and
further advised by Light of the advantageousness of myrcene-containing
monoterpene compositions in pheromone-containing attractants, would have
been prompted to include phenylacetaldehyde in myrcene-containing
attractant compositions. Accordingly, as Appellants’ arguments do not
demonstrate error in the Examiner’s conclusion of obviousness we affirm
the Examiner’s rejection of claim 1 over Light and Lopez ‘634.

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OBVIOUSNESS -- LOPEZ ‘406
ISSUE
Claims 21-24 stand rejected under 35 U.S.C. § 103(a) as being
obvious in view of Lopez ‘406 (Ans. 4-5).
The Examiner finds that Lopez ‘406 discloses “compositions of
volatiles, phenyl acetaldehyde (PA) and methyl L-2-methoxybenzoate
(MB)” and urges that “it is clear that no methyl salicylate is required” (id.
(citing Lopez ‘406, col. 2 l. 66 through col. 3, l.4)).
The Examiner further finds that Lopez ‘406 “states that the
practitioner may determine optimum effective concentrations to attract the
particular specific targeted insect (column 3, lines 40-45), in this case,
Scarabaeidae” (id. at 5). The Examiner urges that “[v]olatiles would be
released from any of the carrier of LOPEZ-see Examples-and so attract a
targeted organism” (id.). Moreover, the Examiner urges, “[n]o patentable
weight is given to future intended use as lepidoptera attractants, as opposed
to Lopez [‘406’s] use as, Scarabaeidae attractants” (id.).
Appellants contend that the Examiner’s obviousness conclusion is
erroneous because Lopez ‘406 “specifically limits the ‘effective’
concentration to that which only effects insects of the family Scarabaidae”
and because Lopez ‘406 does not contain any “teaching that any of the
components are effective for the claimed family of insects, Noctuidae;
moreover, that a specific vapor blend of these components constitutes an
effective concentration for Noctuidae” (App. Br. 8).
Appellants further contend that the Examiner “has not provided any
other support or rationale to show that either insect morphology, the state of
the art or the prior art allows one of skill in the art to assume that the claimed
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composition may be generally used and applied across different families of
insects” (id.). Moreover, Appellants urge, “the fact that Lopez [‘406]
limited the effective components to attracting insects from the famly [sic;
family] Scarabaidae indicates that there was still an unmet need for the
attraction of insects outside the family of Scarabaidae” (id. at 9).
Appellants do not present separate arguments with respect to any of
the claims subject to this rejection. We select claim 21 as representative of
the rejected claims. See 37 C.F.R. § 41.37(c)(1)(vii).
In view of the positions advanced by Appellants and the Examiner,
the issue with respect to this rejection is whether the Examiner erred in
concluding that Lopez ‘406 would have suggested a composition having the
ingredients recited in claim 21, in the amounts recited in the claim, to an
artisan of ordinary skill.
FINDINGS OF FACT
10. Claim 21 recites a composition for attracting noctuid moths and other
lepidopteran species. The composition contains an attractant component that
includes phenylacetaldehyde (PA) and methyl-2-methoxybenzoate, but
“does not include methyl salicylate.”
Claim 21 requires the attractant component to “provide[] an effective
moth attractant amount of a vapor blend of phenylacetaldehyde and methyl-
2-methoxybenozate.”
11. The Specification discloses:
Effective odorant amounts of phenylacetaldehyde or
methyl-2-methoxybenzoate released as a vapor into air are most
readily defined as weight amounts released per unit time from a
formulation, dispenser, bait or trap. The broad range of release
rates is that which is an effective attractant for the target moth.
An effective release range for phenylacetaldehyde is about 30
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μg per hour to about 1 milligram per hour. A preferred release
rate range is about is about [sic] 100 μg per hour to 1 mg per
hour. An effective release rate range for methyl-2-
methoxybenzoate is from about 1.0 μg per hour to about 1
milligram per hour.

(Spec. [0033].)
12. The Specification discloses:
A dispensing means may take several forms, wherein a
formulation to produce the volatilized compounds or mixture is
contained for release into a selected area where moths may
occur. Dispensing means include an adsorbent material such as
cotton or paper which both holds and releases a compound or
mixture. In general, however, a dispensing means will comprise
a reservoir for holding an amount of a compound either within a
space or a polymeric matrix, with the release into the
atmosphere controlled by a permeable wall or membrane or by
a small opening surrounded by an impermeable wall or
membrane.

(Spec. [0038].)
13. The Specification discloses attracting moths by placing 5 milliliters of
the attractant compound in eight milliliter polypropylene vials that contain
cotton in the bottom of the vial, and which have 3 mm holes in the vial lids
(Spec. [0067]; see also [0082] (testing vial hole sizes ranging from 1.5 mm
to 6 mm)).
14. Lopez ‘406 discloses “compositions which are effective as attractants
for a number of economically important scarabs. This composition includes
a mixture of effective amounts of one or more of the volatile compounds
phenylacetaldehyde, methyl-2-methoxybenzoate, methyl salicylate,
2-phenylethanol, and limonene” (Lopez ‘406, col. 2, ll. 9-15).

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15. Lopez ‘406 discloses:
Compounds effective for use as attractants herein include at
least one, preferably two of the plant volatile components
phenylacetaldehyde, methyl-2-methoxybenzoate, methyl
salicylate, 2-phenylethanol, and limonene. However, while
compositions of only one or two of these volatiles are attractive,
generally efficacy is significantly improved by inclusion of
three, four or preferably all five of these volatiles.

(Id. at col. 2, l. 66 through col. 3, l. 6.)
16. Lopez ‘406 discloses:
The attractant can be applied or disseminated using a variety of
conventional techniques, such as in an exposed solution,
impregnated into a wicking material or other substrate, or
incorporated in a dispenser similar to those sometimes used as
deodorant dispensers. Further, the components of the attractant
may be combined in a single dispenser provided within a single
trap, or provided separately in a plurality of dispensers, all
within a single trap. The attractant can be applied to the device
undiluted, or formulated in an inert carrier. Volatilization can
be controlled or retarded by inclusion of components as
described above. Controlled, slow release over an extended
period of time may also be effected by placement within vials
covered with a permeable septum or cap, by encapsulation
using conventional techniques, or absorption into a porous
substrate.

(Id. at col. 5, l. 59 through col. 6, l. 7.)
PRINCIPLES OF LAW
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Where . . . the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
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applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
. . . Whether the rejection is based on ‘inherency’ under 35
U.S.C. § 102, on ‘prima facie obviousness' under 35 U.S.C. §
103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted).
Thus, in In re Best, the court required a showing that the prior art
product was the same or substantially the same as the claimed product,
before shifting the burden to the applicant to show that a claimed functional
property was missing from the reference. Id.
In KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court cautioned that, “[i]n determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective reach of the
claim. If the claim extends to what is obvious, it is invalid under § 103.” Id.
at 419.
ANALYSIS
Appellants’ arguments do not persuade us that the Examiner erred in
concluding that Lopez ‘406 would have suggested a composition having the
claimed ingredients, in the claimed amounts, to an artisan of ordinary skill.
Claim 21 recites a composition that contains phenylacetaldehyde (PA)
and methyl-2-methoxybenzoate, but “does not include methyl salicylate.”
Lopez ‘406 discloses scarab attracting compositions that can contain the
volatile compounds phenylacetaldehyde and methyl-2-methoxybenzoate, but
do not require methyl salicylate for their attractant effect (FF 12-13).
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While it may be true that Lopez ‘406’s rationale for combining these
compounds -- attracting beetles -- is different than Appellants’ purpose
-- attracting noctuid moths -- that fact does not render the claimed
combination of compounds any less obvious. See KSR, 550 U.S. at 419 (“In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.
What matters is the objective reach of the claim. If the claim extends to
what is obvious, it is invalid under § 103.”).
Claim 21 also requires the attractant component to “provide[] an
effective moth attractant amount of a vapor blend of phenylacetaldehyde and
methyl-2-methoxybenozate.” We are not persuaded that the Examiner erred
in concluding that the compositions taught by Lopez ‘406 would provide the
attractant amounts encompassed by this recitation.
The Specification discloses that a very broad range of release rates
provide effective odorant amounts of the claimed compounds -- about 30 μg
per hour to about 1 milligram per hour for phenylacetaldehyde, and from
about 1.0 μg per hour to about 1 milligram per hour for methyl-2-
methoxybenzoate (FF 11). The Specification further discloses that these
release rates can be obtained using relatively simple dispensing means, such
as a vial with cotton in the bottom and holes of varying size in the vials’ lids
(FF 12-13).
As noted above, Lopez ‘406 teaches scarab attracting compositions
that contain the same volatile compounds as recited in claim 21, and also
teaches that the compositions’ attracting effect is provided by placing the
compositions in dispensing means that include wicking means or other
substrates that take up the compounds and allow them to volatilize (FF 16).
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Because Lopez ‘406 teaches compositions having the same volatile
compounds as recited in claim 21, and also teaches that those compounds are
amenable for use in dispensing means which are very similar to those
described by Appellants as providing the claimed attractant effect, we agree
with the Examiner that it was reasonable to conclude that the compositions
of Lopez ‘406 would “provide[] an effective moth attractant amount of a
vapor blend of phenylacetaldehyde and methyl-2-methoxybenozate” as
required by claim 21.
Thus, given the broad range of amounts encompassed by claim 21,
and the close similarity between the dispensing means of Lopez ‘406 and
those described by Appellants as achieving the claimed attractant amounts,
we find that the Examiner was reasonable in finding that the
scarab-attracting amounts described by Lopez ‘406 at least overlap with the
moth-attracting amounts recited in claim 21, absent evidence to the contrary.
We again acknowledge that an ordinary artisan’s rationale for
providing compositions with the claimed amount of attractant compounds
would have been for attracting scarabs rather than moths. However, as
discussed above, when the prior art suggests practicing the claimed subject
matter, the claim is properly considered obvious, even if the prior art’s
rationale for providing the claimed features is different than Appellants’.
KSR, 550 U.S. at 419.
In sum, we are not persuaded that the Examiner erred in concluding
that Lopez ‘406 would have suggested a composition having the ingredients
recited in claim 21, in the amounts recited in the claim, to an artisan of
ordinary skill. Accordingly, we affirm the Examiner’s obviousness rejection
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of claim 21 over Lopez ‘406, as well as the rejection of claims 22-24, which
were not argued separately. See 37 C.F.R. § 41.37(c)(1)(vii).
SUMMARY
We affirm the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 103(a) as being obvious in view of Light and Lopez ‘634.
We also affirm the Examiner’s rejection of claims 21-24 under
35 U.S.C. § 103(a) as being obvious in view of Lopez ‘406.

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

AFFIRMED

alw

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