Ex Parte Lipman

Board of Patent Appeals and Interferences

Nov 9, 2007

10278114 (B.P.A.I. Nov. 9, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RUTH LIPMAN
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Appeal 2006-3407
Application 10/278,114
Technology Center 1600
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Decided: November 9, 2007
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Before LORA M. GREEN, NANCY J. LINCK, and
RICHARD M. LEBOVITZ, 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 19, 20, and 23-35.1 We have
jurisdiction under 35 U.S.C. § 6(b). Claim 19 is representative of the claims
on appeal, and reads as follows:

1 This Appeal is related to Appeal No. 2005-0124, USSN 10/035,305,
decided August 17, 2005.
Appeal 2006-3407
Application 10/278,114

19. A composition for repelling animals from a living plant, comprising:
a living plant;
an extract from an Alliaceae family, Allium genus; and
at least one chicken egg, having a yolk portion, wherein the extract
and at least one egg, having a yolk portion is applied on the living plant.

The Examiner relies on the following references:
Messina US 4,965,070 Oct. 23, 1990
King US 5,417,973 May 23, 1995
Sasaki (translation) JP-A-139515 Jun. 1, 1989
We note that in response to an election of species requirement set
forth by the Examiner, Appellant elected to prosecute onion plants from the
genus and species Allium cepa (Answer 2). We have limited our
consideration of the issues accordingly.
We affirm.
BACKGROUND
The present invention is drawn to a repellant “to protect property from
damage from animals without posing . . . risk of irritation for the humans
handling it.” (Specification 2.) The repellant contains an extract from a
plant from the family Alliaceae, genus Allium, and may be applied to
substrates such as plants, living animals, inanimate objects, and
combinations thereof (id.).
DISCUSSION
Claims 19, 20, and 23-35 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Messina in view of King (Answer 3).
Messina is cited for teaching a composition comprising eggs (which
naturally contain lecithins and phospholipids), thiram and hot pepper sauce
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to a plant in order to repel animals, specifically deer, from plants (Answer
3). The hot pepper sauce acts as a respiratory irritant (id.).
King is cited for also teaching the use of hot pepper sauce to repel
animals from substrates that are potentially damaged by animals, in which
the small of the extract repels the animal from the substrate (id.). King is
also cited for teaching that onion extract can be used in place of the hot
pepper extract, and that the onion may be extracted and dried (id.).
According to the Examiner, from the teachings of King, a person of
ordinary skill in the art at the time the invention was made
would reasonably expect that hot pepper extracts and onion
extracts function equivalently in their ability to repel an animal
from a substrate that needs to be protected from damage. Based
on this reasonable expectation that onion extract will function
equivalently to the hot pepper extract in [Messina], a person of
ordinary skill in the art would be motivated to substitute the hot
pepper extract with an onion extract. Thus, this substitution
would yield a composition comprising a living plant coated
with a composition that comprises onion extract, thiram and
egg.

(Id. at 3-4.)
The Examiner notes that the references as combined “do not
specifically teach adding the ingredients in the amounts [specified] by
[A]ppellant,” but asserts that the amount of the ingredients in the
composition is a result effective variable, and it would be obvious to
optimize the amounts (id. at 4). As to ornamental plants, the Examiner
states that all of the plants claimed by Appellant are well known ornamental
plants, and it would be obvious to the ordinary artisan to protect any of those
plants as the plant disclosed in Messina (id.).
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The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 1739. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982).
As to claims 19, 25, 27, and 32, of which we choose claim 19 to be
representative, Appellant argues that there is no motivation to combine
Messina with King, as Messina teaches repelling only deer, while King is
drawn to repelling carnivores from a dead carcass (Br. 7).
Appellant argues further that neither Messina nor King either alone or
in combination, suggests that hot pepper extracts and onion extracts function
equivalently to repel animals (id. at 8). Messina, according to Appellant,
teaches that hot pepper sauce may irritate a respiratory system, whereas
King does not teach a function for hot pepper sauce and onion extracts in
repelling pests (id.).
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Appellant’s argument is not convincing. Both Messina and King deal
with protecting a substrate, such as a living plant in Messina, and a dead
carcass in King, from an animal. We recognize that Messina only
specifically refers to deer. King, however, teaches that the repellent is
applicable to a wide variety of pests, such as insects, cats, dogs, birds, and
other pests (col. 1, ll. 19-23). King also teaches that either pepper or extracts
of onion may be used. Thus, the ordinary artisan would have expected that
substituting onion as taught by King for the pepper as taught by Messina
would have also repelled animals such as deer, as King teaches that
repellents such as pepper and onion repel a wide variety of pests.
As noted by the United States Supreme Court,

If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its application is beyond his or her skill.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007). Moreover, “the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill would employ.” Id. at
1741. Here, the prior art establishes that both pepper and onion are known
to repel animals, such as deer, cats, dogs, birds, and insects, thus providing a
reason that would have prompted the ordinary artisan to substitute onion for
pepper in the composition of Messina. Id. at 1742 (“One of the ways in
which a patent’s subject matter can be proved obvious is by noting that there
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existed at the time of invention a known problem for which there was an
obvious solution encompassed by the patent’s claims.”).
Claim 32 requires the addition of a phospholipid or a lecithin, wherein
the lecithin or phospholipid is from a chicken egg. Appellant argues further
as to claim 32 that “nowhere do the Examiner's cited prior art nor does the
Examiner support the rejection of Claim 32 with prior art that teaches or
suggests a composition containing lecithin or phospholipid, as claimed in
Appellant's Claim 32.” (Br. 9.)
As noted by the Examiner (Answer 9), the Specification (p.17)
teaches that lecitithin and phosphotidylcholine are found in egg yolks. As
Messina teaches using whole eggs (abstract), the composition would
naturally contain lecitithin and phosphotidylcholine.
Claim 20 is drawn to the composition of claim 19, wherein the Allium
genus is selected from the group consisting of ramp, onions, chives, shallots,
scallions, leeks, wild leek, garlic, garlic chives, wild garlic, ransoms and
combinations thereof. As to claim 20, Appellant argues that the Examiner
does not support her position that Allium cepa is one of the mentioned
varieties of onion (Br. 10).
As noted by the Examiner (Answer 9), the Markush group was
specifically examined for the elected species, onion, whose botanical name
is Allium cepa. We also note that the Specification (p. 4) teaches that
Allium cepa is the botanical name for onion.
Claim 23 is drawn to the composition of claim 19, wherein the living
plant includes ornamental plants. As to claim 23, Appellant argues that the
Examiner “does not support her rejection of Claim 23 that claims the living
plant is an ornamental plant.” (Br. 10-11.)
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Claim 24 is drawn to the composition of claim 23, wherein the
ornamental plant is selected from the group consisting of hosta, lily, gerber
daisy, azalea, and combinations thereof. As to claim 24, Appellant argues
that the Examiner does not support her rejection that the ornamental plant is
selected from the group consisting of hosta, lily, gerber daisy, azalea, and
combinations thereof, and that none of the cited prior art teaches or suggests
that the living plant is an ornamental plant (Br. 11).
We find that the ordinary artisan would have applied the composition
to any ornamental plant, such as hosta, lilly, azalea, etc., in order to protect
those plants from animal pests such as deer. Note that “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.
KSR, 127 S. Ct. at 1742.
Claims 26, 28, and 30 specify the form and concentration of the onion
extract, and claim 31 specifies the amount of egg containing the egg yolk
used. As to claims 26 and 28-31, Appellant argues that the Examiner is
wrong in asserting that they are result effective variables, as they are not
recognized as such in the prior art cited by the Examiner (Br. 12-13).
As noted by the Examiner, “the references do teach that the
concentration of the specific ingredients is a variable that can be optimized.
Both references teach adding each of the individual ingredient[s] in a variety
of amounts (for example, see claims of [Messina] and column 2 of [King]).
Thus, this teaching of varying the ingredient amount shows that the
references consider the concentration of the ingredient amount to be a
variable that can be optimized during routine experimentation and product
development.” (Answer 10.) It would also be within the level of skill of the
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ordinary to vary the concentration of repellent, such as the onion, in the
composition, to achieve the desired repellent effect.
Claim 33 specifies the lecithin concentration, claim 34 specifies the
phospholipid concentration, and claim 35 specifies that the phospholipid is
phosphatidylcholine. As to claims 33-35, Appellant argues that the prior art
does not teach or suggest the claimed limitations (Br. 14).
As to claim 35, phosphatidylcholine is found in eggs yolks, thus it
would be naturally present in the composition of Messina. Moreover, it
would have also been obvious to optimize the concentrations of lecithin and
phospholipid (i.e., the amount of egg used) for the reasons set forth above, as
Messina teaches that the egg also acts as a deterrent (col. 2, ll. 67-68).
Claims 19, 20, and 23-35 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Messina in view of Sasaki (Answer
6).
Messina is relied upon as in the previous combination (Answer 6).
Sasaki is relied upon for teaching the use of pepper to repel animals
from substrates that may be potentially damaged by them, and for teaching
that onion extract may be used in the place of pepper (id.). Thus, given the
teachings of Sasaki, according to the Examiner,
a person of ordinary skill in the art would reasonably expect
that pepper and onion function equivalently in their ability to
repel an animal from a substrate that needs to be protected from
damage. Based on this reasonable expectation that onion will
function equivalently to the pepper in [Messina], a person of
ordinary skill in the art would be motivated to substitute the hot
pepper extract with onion. Thus, this substitution would yield a
composition comprising a living plant coated with a
composition that comprises onion, thiram and egg.
(Id.)
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As to ornamental plants, the Examiner states that all of the plants
claimed by Appellant are well known ornamental plants, and it would be
obvious to the ordinary artisan to protect any of those plants as the plant
disclosed in Messina (id. at 6).
Appellant argues claims 19 and 25 as a separate group. As Appellant
does not argue claims 26-35 separately, we group those claims with claims
19 and 25, and we choose claim 19 to be representative.
Appellant argues that there is no motivation to combine Messina with
King, as Messina teaches repelling only deer, while Sasaki is drawn to
repelling dogs, cats, and birds (Br. 16).
Appellant argues further that neither Messina nor Sasaki, either alone
or in combination, suggests that hot pepper extracts and onion extracts
function equivalently to repel animals (Br. 16).
Appellant’s argument is not convincing. Both Messina and Sasaki
deal with protecting a substrate, such as a living plant in Messina, from an
animal. We recognize that Messina only specifically refers to deer. Sasaki,
however, teaches that the repellent is applicable to a wide variety of pests,
such as cats, dogs, and birds (Translation, p. 2). Sasaki also teaches that
either pepper or extracts of onion may be used (id. at 4). Thus, the ordinary
artisan would have expected that substituting onion as taught by Sasaki for
the pepper of Messina would have produced a composition which would
have also repelled deer, as Sasaki teaches that repellents such as pepper and
onion repel a wide variety of pests.
Claim 20 is drawn to the composition of claim 19, wherein the Allium
genus is selected from the group consisting of ramp, onions, chives, shallots,
scallions, leeks, wild leek, garlic, garlic chives, wild garlic, ransoms and
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combinations thereof. As to claim 20, Appellant argues that the Examiner
does not support her position that Allium cepa is one of the mentioned
varieties of onion (Br. 17).
As already noted, the Markush group was specifically examined for
the elected species, onion, whose botanical name is Allium cepa. We also
note that the Specification (p. 4) teaches that Allium cepa is the botanical
name for onion.
Claim 23 is drawn to the composition of claim 19, wherein the living
plant includes ornamental plants. As to claim 23, Appellant argues that the
Examiner “does not support her rejection of claim 23 that claims the living
plant is an ornamental plant.” (Br. 18.)
Claim 24 is drawn to the composition of claim 23, wherein the
ornamental plant is selected from the group consisting of hasta, lilly, gerber
daisy, azalea, and combinations thereof. As to claim 24, Appellant argues
that the Examiner does not support her rejection that the ornamental plant is
selected from the group consisting of hosta, lily, gerber daisy, azalea, and
combinations thereof, and that none of the cited prior art teaches or suggests
that the living plant is an ornamental plant (Br. 18-19 ).
As noted above, we find that the ordinary artisan would have applied
the composition to any ornamental plant, such as hosta, lily, azalea, etc., in
order to protect those plants from animal pests such as deer, dogs, cats, and
birds.
CONCLUSION
In summary, we conclude that the Examiner has set forth a prima
facie case of obviousness over claims 19, 20, and 23-35 that has not been
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adequately rebutted by Appellant. Thus, the rejections over the combination
of Messina with either King or Sasaki are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

AFFIRMED

lbg

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