Ex Parte Miles

Board of Patent Appeals and Interferences

Feb 9, 2011

10161260 (B.P.A.I. Feb. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/161,260 05/31/2002 David Miles C241 1010.1 3905
7590 02/10/2011
James F. Vaughan
Womble Carlyle Sandridge & Rice, PLLC
P.O. Box 7037
Atlanta, GA 30357-0037
EXAMINER
PRYOR, ALTON NATHANIEL
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
02/10/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID MILES
__________

Appeal 2010-007812
Application 10/161,260
Technology Center 1600
__________

Before TONI R. SCHEINER, ERIC GRIMES, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a cotton
boll opening or defoliation improvement method. The Examiner has
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-007812
Application 10/161,260

2
STATEMENT OF THE CASE
Claims 66-87 are pending and on appeal (App. Br. 2). The claims
have not been argued separately and therefore stand or fall together. 37
C.F.R. § 41.37(c)(1)(vii). We will focus on claims 66 and 77, the only
independent claims on appeal, which read as follows:
66. A method of improving the speed or degree of cotton boll
opening comprising the steps of
providing a composition comprising an adjuvant and at least one plant
growth regulating compound, wherein the adjuvant comprises at least one
permeabilizing agent and at least one flow agent, wherein the at least one
permeabilizing agent is a combination of citric acid and oxalic acid, wherein
the citric acid is present in an amount of between 1% w/w and 89% w/w of
the adjuvant, and wherein the oxalic acid is present in an amount of between
10% w/w and 98% w/w of the adjuvant; and
applying the composition to at least one plant surface in an amount
sufficient to improve the speed or degree of opening of at least one cotton
boll compared to the speed or degree of opening upon application of the at
least one plant growth regulating compound alone.
77. A method of improving the speed or degree of cotton
defoliation comprising the steps of
providing a composition comprising an adjuvant and at least one plant
growth regulating compound, wherein the adjuvant comprises at least one
permeabilizing agent and at least one flow agent, wherein the at least one
permeabilizing agent is a combination of citric acid and oxalic acid, wherein
the citric acid is present in an amount of between 1% w/w and 89% w/w of
the adjuvant, and wherein the oxalic acid is present in amount of between
10% w/w and 98% w/w of the adjuvant; and
applying the composition to at least one plant surface in an amount
sufficient to cause cotton defoliation at an improved speed or degree
compared to application of the at least one plant growth regulating
compound alone.
Appeal 2010-007812
Application 10/161,260

3
ANALYSIS
Claims 66-87 stand rejected under 35 U.S.C. § 103(a) as obvious over
Kuramochi et al. (US 5,661,111, Aug. 26, 1997) (Ans. 3). Appellant argues
that Kuramochi “fail[s] to teach or suggest a method of improving the speed
or degree of cotton boll opening or defoliation” (App. Br. 7-8). However,
the evidence supports the Examiner’s conclusion that this is an inherent
effect of the claimed method steps (Ans. 3-6). “It is a general rule that
merely discovering and claiming a new benefit of an old process cannot
render the process again patentable.” In re Woodruff, 919 F. 2d 1575, 1578
(Fed. Cir. 1990). Thus, we affirm the rejection over Kuramochi for the
reasons set forth in the Examiner’s Answer.
Claims 66-70, 76-81, and 87 stand rejected under 35 U.S.C. § 103(a)
as obvious over Chang et al. (US 6,897,185 B1, May 24, 2005) (Ans. 6).
Appellant argues that Chang “fail[s] to teach or suggest a method of
improving the speed or degree of cotton boll opening or defoliation” (App.
Br. 10). In particular, Appellant argues that Chang “and the instantly
claimed method represent completely diverging objectives and one of
ordinary skill considering these references would have actually been lead
[sic] away from the claimed invention” (id. at 11). We do not agree.
“It is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation consistent
with the specification.” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
The Examiner interprets claims 66 and 77 to encompass both inhibiting
abscission and hastening leaf removal (Ans. 8). Given that claims 66 and 77
recite “improving the speed or degree” of cotton boll opening or defoliation,
Appeal 2010-007812
Application 10/161,260

4
and do not clearly specify whether the speed is increased or decreased, we
are aware of no reason that this interpretation is unreasonable. Thus, we
affirm the rejection over Chang for the reasons set forth in the Examiner’s
Answer.
TIME PERIOD FOR RESPONSE
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

James F. Vaughan
Womble Carlyle Sandridge & Rice, PLLC
P.O. Box 7037
Atlanta, GA 30357-0037