Ex Parte Long

Board of Patent Appeals and Interferences

Nov 5, 2003

09557044 (B.P.A.I. Nov. 5, 2003)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte GARY S. LONG

Appeal No. 2003-2129
Application No. 09/557,044

ON BRIEF

Before KIMLIN, WALTZ and POTEATE, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-12.
Claims 1 and 9 are illustrative:
1. A process for protecting an agricultural crop from freezing
which comprises applying an effective amount of a freeze
protection compound to the agricultural crop, the agricultural
crop in a living and growing condition, the freeze protection
compound including a fermented biomass material as an active
ingredient for the purpose of protecting the agricultural crop
from freezing.
9. A composition for the freeze protection of an agricultural
crop, the composition including a fermented biomass as an active
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Application No. 09/557,044
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ingredient for the purpose of protecting the agricultural crop
from freezing.
The examiner relies upon the following references as
evidence of obviousness:
Janke et al. (Janke) WO 97/34960 Sep. 25, 1997
(PCT International Application)
Kobayashi 05-328859 Dec. 14, 1993
(Japanese Unexamined Patent Publication)
Appellant's claimed invention is directed to a process for
protecting an agricultural crop from freezing, and a composition
that is used in such a process. The process entails applying a
fermented biomass material to the agricultural crop.
Appealed claims 1-12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kobayashi in view of Janke.
We have thoroughly reviewed the respective positions
advanced by appellant and the examiner. In so doing, we concur
with appellant that the examiner has not established a prima
facie case of obviousness for process claims 1-8. Accordingly,
we will not sustain the examiner's rejection under § 103 of
claims 1-8. We will, however, sustain the examiner's rejection
of claims 9-12.
We consider first the examiner's rejection of process claims
1-8 under § 103 over the combined teachings of Kobayashi and
Janke. While Kobayashi discloses a process for protecting
Appeal No. 2003-2129
Application No. 09/557,044
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agricultural crops from freezing by applying a composition to the
crop, the examiner appreciates that Kobayashi does not teach the
claimed application of a fermented biomass material. The process
of Kobayashi entails spraying a liquid aqueous solution or
emulsion of waxes, or resins, or a combination of both to the
agricultural crop. To remedy the deficiency of Kobayashi, the
examiner cites Janke for its teaching of utilizing a fermented
biomass material as a deicing or anti-icing composition for
roads, bridges, runways, taxiways and other outdoor surfaces.
Based on the Janke disclosure, the examiner concludes that it
would have been obvious for one of ordinary skill in the art "to
modify the method of Kobayashi by using a fermented biomass as
the spray material as disclosed by Janke et al. so as to use
material that is inexpensive and widely-available in large
quantity" (page 4 of Answer, first paragraph). However, we agree
with appellant that Janke's disclosure of treating inorganic,
inanimate structures as roads and bridges with a fermented
biomass material in order to prevent icing would not have
provided the requisite motivation for one of ordinary skill in
the art to use the fermented biomass material of Janke for
treating living, organic material, such as the claimed
agricultural crop. Appellant presents a persuasive argument that
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Application No. 09/557,044
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"[l]iving tissues are delicate structures and inherently require
careful consideration in the selection and use of chemical freeze
protectants" (page 10 of Brief, second paragraph). On this
point, the examiner has not demonstrated that one of ordinary
skill in the art would have had a reasonable expectation of
effectively preventing freezing of an agricultural crop without
damaging the crop during the application process. Stated
otherwise, the examiner has not established that one of ordinary
skill in the art would have had a reasonable expectation that
fermented biomass material would not cause harm to an
agricultural crop. Without the establishment of such a
reasonable expectation of success, all that can be concluded from
the present record is that it may have been obvious to try the
fermented biomass material of Janke, which is taught to be
effective on inorganic structures such as roadways, on a living
agricultural crop. Manifestly, obvious to try is not the proper
standard for establishing obviousness under § 103.
The examiner's rejection of composition claims 9-12 is
another matter. The composition claims on appeal simply define a
composition which includes a fermented biomass as an active
ingredient, and appellant cannot deny that Janke, indeed,
discloses a composition which includes a fermented biomass as an
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Application No. 09/557,044
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active ingredient. Since it is not necessary for Janke to
disclose appellant's use for the fermented biomass composition,
we find that Janke describes the claimed composition within the
meaning of 35 U.S.C. § 102. The recited statement of intended
use, i.e., "for the freeze protection of an agricultural crop,"
does not serve as a limitation which further defines the claimed
composition. It is well settled that a prior art composition
does not undergo a metamorphosis into a different composition
when an applicant uses the prior art composition in a way not
described in the prior art. In re Pearson, 494 F.2d 1399, 1403,
181 USPQ 641, 644 (CCPA 1974). Hence, since anticipation is the
epitome of obviousness, we find that appealed claims 9-12 are
obvious over Janke, considered alone. Moreover, we find that the
claimed fermented biomass material is unpatentable over the
admitted prior art found in the Background section of appellant's
specification.
In conclusion, the examiner's rejection of claims 1-8 under
35 U.S.C. § 103 is reversed, whereas the examiner's rejection
of claims 9-12 under 35 U.S.C. § 103 is affirmed. As a result,
the examiner's decision rejecting the appealed claims is
affirmed-in-part.
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Application No. 09/557,044
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
THOMAS A. WALTZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
ECK:clm
Appeal No. 2003-2129
Application No. 09/557,044
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Chris E. Svendsen
Stratton Ballew PLLC
213 South 12th Avenue
Yakima, WA 98902