Ex Parte Larose

Patent Trial and Appeal Board

May 4, 2018

14072466 (P.T.A.B. May. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/072,466
27569 7590
PAUL AND PAUL
FILING DATE
11/05/2013
05/08/2018
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Robert Larose
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2013-135 1017
EXAMINER
BRANSON, DANIELL
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
05/08/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
INFO@PAULANDPAUL.COM
claire@paulandpaul.com
fpanna@paulandpaul.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT LAROSE
Appeal2017-006887 1
Application 14/072,466
Technology Center 1600
Before RICHARD M. LEBOVITZ, JOHN G. NEW, and TA WEN CHANG,
Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to methods of preventing or
killing post-harvest and/or storage disease pathogens on fruits and/or
vegetables. The Examiner rejected the claims under 35 U.S.C. § 103(a) as
obvious. We have jurisdiction under 35 U.S.C. § 6(b ). The rejection is
affirmed.
1 The Appeal Brief ("Appeal Br.") identifies BioSafe Systems LLC, as the
real-party-in-interest. Appeal Br. 1.
Appeal2017-006887
Application 14/072,466
STATEMENT OF THE CASE
Appellant appeals from the Examiner's final rejection of claims 11-15
under 35 U.S.C. § I03(a) as obvious in view of U.S. Patent Application
Publication 2010/0119669 Al, published May 13, 2010 ("Ben Yehuda") in
view of U.S. Patent Application Publication 2007/0179193 Al, published
August 2, 2007 ("Takeuchi"). Appeal Br. 2.
Claim 11, the only independent claim on appeal, reads as follows:
11. A method of preventing or killing post-harvest and/or
storage disease pathogens on fruits and/or vegetables
comprising contacting a fruit or vegetable with an effective
amount of a composition consisting essentially of ( 1) hydrogen
peroxide, an organic peroxide or a combination thereof; and (2)
phosphorous acid, mono- and/or di-salts of phosphorous acid or
a combination thereof.
CLAIM INTERPRETATION
Claim 11 is directed to a method of "preventing or killing post-harvest
and/or storage disease pathogens on fruits and/or vegetables comprising
contacting a fruit or vegetable with an effective amount of a composition."
The composition is "consisting essentially of' two components:
1) hydrogen peroxide, an organic peroxide, or a combination of them;
and
2) phosphorous acid, mono- and/ or di-salts of the acid, or a
combination of them.
We interpret the meaning of "consisting essentially of' as recited in
claim 11.
"Consisting essentially of' is a transition phrase commonly
used to signal a partially open claim in a patent. Typically,
"consisting essentially of' precedes a list of ingredients in a
composition claim or a series of steps in a process claim. By
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Application 14/072,466
using the term "consisting essentially of," the drafter signals
that the invention necessarily includes the listed ingredients and
is open to unlisted ingredients that do not materially affect the
basic and novel properties of the invention.
PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998).
Therefore, we must determine the "basic and novel properties" of the
claimed invention. Appellants did not provide a definition or explanation in
their Appeal Brief. However, the claim preamble states that the purpose of
the composition is for "preventing or killing post-harvest and/or storage
disease pathogens on fruits and/or vegetables." Therefore, it is reasonable to
adopt this purpose as a basic and novel property of the composition.
Consistently, the Specification states that "current phosphorus acid based
products have a narrow spectrum of activity" and that "[ w ]hat is needed are
compositions and methods that are broad spectrum in their activity and that
are effective in protecting plants and crops from pathogenic infections
and/or pre- and post-harvest pathogenic organisms which include bacteria
and fungi." Spec. 2:12-18. Accordingly, we consider the ability of the
combination of peroxide and phosphorous acid to protect crops from
pathogens to constitute the basic and novel properties of the invention.
Based on this determination, we conclude that the claim is open to
unlisted ingredients that do not materially affect the ability of the
composition to prevent or kill pathogens on fruits and vegetables.
Moreover, even if the preventative or killing activity of the composition is
diminished, the basic and novel properties of the claimed invention are not
materially affected if the effect is not "of importance or consequence to
those of ordinary skill in the art." PPG Industries, 156 F.3d at 1354.
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Application 14/072,466
Finally, we note that the Specification states that "[t]he amount of hydrogen
peroxide, an organic peroxide, or a combination can range from about 12 to
about 18% by weight of the composition," that "[t]he amount of
phosphorous acid, mono- and/or di-salts of phosphorous acid or a
combination thereof can range from about 25 to about 30% by weight of the
composition," and that "[t]he typical amount of the composition according to
the invention that can be used in the methods described [in the Specification]
can range from 1:2.5 dilution to about 1: 1000 dilution rate applied at from
about 30 to about 100 gallons of spray solution per treated acre." Spec.
4:19--23, 5:3-6. Thus, the Specification suggests that a certain amount of
variation in the amounts of the claimed ingredients used would not
"materially affect" the basic and novel properties of the claimed invention.
DISCUSSION
The Examiner found that Ben Y ehuda describes or suggests a
composition, as claimed, comprising hydrogen peroxide, potassium ions,
and a pH regulator, which can be phosphorous acid. Final Act. 4. The
Examiner found that Ben Y ehuda does not disclose an organic peroxide ( an
alternative in claim 11 and recited specifically in claim 13), but found that
Takeuchi describes a sterilization composition that includes an organic
peroxide and a pH regulator. Id. Takeuchi teaches that its composition can
be used for treatment of plants that are growing. Takeuchi ,r 50. The
Examiner determined it would have been obvious to have utilized the
organic peroxide described in Takeuchi in Ben Yehuda's composition
"[b ]ased upon the teaching in Takeuchi et al. that an organic peroxide may ..
. function as the source of peroxide in a composition that may be applied to
plant products." Final Act. 5.
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Application 14/072,466
Appellant contends that "both Ben Y ehuda and Takeuchi require
additional components to be effective." Appeal Br. 5. Appellant states:
"Ben Y ehuda requires at least one of the metals or metal ions of silver,
copper or zinc. Further, Takeuchi requires an acrylimidazole as a precursor
of the organic peroxide." Id.
Appellant's argument does not persuade us that the Examiner erred.
Contrary to Appellant's argument, Ben Yehuda does not require silver,
copper, or zinc to be effective. In a preferred embodiment, Ben Y ehuda
describes a composition comprising hydrogen peroxide, a "metal ion
selected from the group consisting of copper, zinc, nickel, iron, manganese,
molybdenum, potassium or combinations thereof', and optionally a pH
regulator, which can be phosphorous acid. Ben Yehuda ,r,r 71-74, 78, 105.
Thus, silver, copper, and zinc are among a list of choices that also includes
potassium, which is required by dependent claim 14. See Final Act. 14.
Appellant attempts to denigrate this broader teaching by stating that the
abstract teaches inclusion of at least one of the three metals and all the
examples contain silver. Reply Br. 2. However, "[i]t is well settled that a
prior art reference is relevant for all that it teaches to those of ordinary skill
in the art." In re Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992). Thus,
while there may be narrower teachings in Ben Y ehuda, we have not been
given reason to ignore Ben Yehuda's broader teaching.
Appellant contends that insoluble phosphates would form with silver,
copper, and zinc, which would diminish the efficacy of the phosphorous
acid. Appeal Br. 6.
This argument is not supported by evidence or scientific reasoning,
but is conclusory attorney argument. Appellant did not provide objective
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Application 14/072,466
evidence that insoluble phosphates would form when following Ben
Yehuda's teachings with respect to silver, copper, and zinc, and that such
insoluble phosphates "would change the essential characteristics of the
invention." Appeal Br. 6. An argument made by counsel in a brief does not
substitute for evidence lacking in the record. Estee Lauder, Inc. v. L 'Orea!,
S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Indeed, Appellant did not identify
the "essential characteristics" of the claimed invention. As we defined it
above in the claim interpretation section, even if the insoluble phosphate
diminished the activity of the composition, such diminished activity would
have to make the composition ineffective for preventing or killing the
pathogens on the fruits and vegetables to an extent that is "of importance or
consequence to those of ordinary skill in the art." Appellant has not
established this fact nor made the argument that the composition would be
ineffective to such a degree.
In addition to this, even if insolubility were to occur when silver,
cooper, or zinc are present, as discussed above, Ben Yehuda does not require
their presence, rendering the argument moot.
Appellant also asserts, without evidence or scientific reasoning, "one
of ordinary skill in the art would expect ... [ silver, copper, or zinc] metal
ions to catalyze the hydrolysis of an added acrylimidazole, [thereby]
reducing the production of peroxycarboxylic acid, and the activity of the
biocidal composition." Appeal Br. 6.
Appellant also contends that presence ofN-acrylimidazole in
Takeuchi would change the basic and novel properties of the claimed
invention. Appeal Br. 6.
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Although Appellant did not specifically identify the claim number,
this argument applies only to claim 13, which requires an organic peroxide. 2
Takeuchi teaches that N-acrylimidazole is mixed with hydrogen
peroxide to produce an organic peroxide. Takeuchi ,r 12. Appellant states
that N-acrylimidazole would:
change the basic and novel character of the invention, because,
as disclosed by Takeuchi, the acrylimidazole would react with
the hydrogen peroxide to generate a preoxycarboxylic [ sic,
peroxycarboxylic] acid, thus substituting another active species
with necessarily different chemical and biological properties for
the hydrogen peroxide.
Appeal Br. 6.
We do not find this argument to be persuasively supported. The N-
acrylimidazole is used to produce an organic peroxide (i.e.,
peroxycarboxylic acid), which is specifically recited in all the rejected
claims. Appellant did not provide adequate evidence that there is any N-
acrylimidazole remaining after its reaction with hydrogen peroxide, or, if
there is remaining N-acrylimidazole, that its presence would affect the
ability of the composition to prevent or kill pathogens on fruits and
vegetables. Reply Br. 2. Attorney argument is insufficient, absent objective
evidence and/or adequate scientific reasoning. Consequently, any remaining
N-acrylimidazole is not excluded by the claims.
In the Reply Brief, Appellant argues that organic peroxide degrades,
producing organic alcohol as a contaminant. Reply Br. 2. For this reason,
Appellant states it would not have been substituted "for Ben Yehuda's
2 Claim 13. A method according to claim 11 wherein the composition
comprises an organic peroxide [ sic, and?] a mono-salt of phosphorous acid
and a di-salt of phosphorous acid.
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hydrogen peroxide, which Ben Yehuda touts as 'a well-known non-polluting
oxidizing agent' (Paragraph [0029])." Id. Notwithstanding that this appears
to be a new argument, which is not permitted in an Appeal Brief (3 7 C.F .R.
§ 4I.52(a)), Appellant did not establish, with adequate evidence, that an
organic alcohol is produced when organic peroxide degrades, or that such an
alcohol would been a deterrent to using organic peroxide in place of
hydrogen peroxide.
Appellant also appears to make another impermissible new argument
in the Reply Brief:
[T]here is nothing to suggest to one of ordinary skill in the art
that Takeuchi's compositions would be "broad spectrum in their
activity and that are effective in protecting plants and crops
from pathogenic infections and/or pre- and post-harvest
pathogenic organisms which include bacteria and fungi"
(specification, page 2, lines 15-18).
Reply Br. 2.
Even if Appellant's argument had been timely, Appellant did not
establish that the obvious combination of an organic peroxide and
phosphorous acid would not have possessed broad spectrum activity or that
such activity would have been unexpected. When a claimed product appears
to be substantially identical to a product disclosed by the prior art, the
burden is on the patent owner to prove that the product of the prior art does
not necessarily or inherently possess characteristics or properties attributed
to the claimed product. In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977).
Appellant has not met this burden on the record before us.
The Examiner's decision to reject claims 11 is AFFIRMED.
Dependent claims 12-15 were not argued separately and fall with claim 11.
37 C.F.R. § 4I.37(c)(l)(iv).
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Application 14/072,466
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)(l )(iv).
AFFIRMED
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