Ex Parte Quaghebeur

Patent Trial and Appeal Board

Sep 25, 2012

10966838 (P.T.A.B. Sep. 25, 2012)

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.
10/966,838 10/14/2004 Koen Quaghebeur GL7.P01 7348
21792 7590 09/25/2012
Ballew Law
P.O. Box 428
Yakima, WA 98907
EXAMINER
KARPINSKI, LUKE E
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
09/25/2012 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KOEN QUAGHEBEUR
__________

Appeal 2011-010212
Application 10/966,838
Technology Center 1600
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, 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 rejection of claims 1, 2, 4-12, 14, 17, 19-25, and 27. We have
jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. A method for treating a plant to reduce a cracking of a fruit produced
by the plant, which comprises the steps of:
a) selecting the fruit from the group consisting of: a stone fruit, a pip
fruit, or a berry fruit;
b) applying the Tryptophan to the fruit of the plant more than two
weeks after full bloom of the fruit, and less than four weeks prior to a
harvesting of the fruit; and
c) reducing the cracking of a skin of the fruit.

The following grounds of rejection are before us for review:
I. Claims 1, 2, 4-11, 17, 19-25, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Lovatt
1

and Young
2
(Ans. 5).
II. Claims 4-6, 12, 14, and 24 stand rejected under 35 U.S.C. § 103(a)
as being rendered obvious by the combination of Lovatt, Young,
and Devisetty
3
(Ans. 9).
We affirm.

ANALYSIS
Rejection I
The Examiner rejects claims 1, 2, 4-11, 17, 19-25, and 27 as being
rendered obvious by the combination of Lovatt and Young (Ans. 5-8). As

1
Lovatt, US 6,169,057 B1, issued Jan. 2, 2001.
2
Young, US 4,682,999, issued Jul. 28, 1987.
3
Devisetty et al., US 6,984,609 B2, issued Jan. 10, 2006.
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we agree with the Examiner‟s findings and conclusions, we adopt them as
our own.
Appellant argues that neither Lovatt or Young “suggest a Tryptophan
based method for reducing cracking in a fruit, as applied to the fruit after
bloom and prior to harvest, be utilized, or be of any such benefit” (App. Br.
9). Appellant asserts that he “has . . . developed a new use for Tryptophan
formulations” (id. at 10), and that “[n]ew uses have long been patentable as
methods or processes” (id. at 9). Applicant asserts that at the time of
invention, “no one skilled in orchard arts and practices would have
reasonably expected Tryptophan to reduce fruit cracking, and would have
instead expected an increase in fruit cracking from a post bloom Tryptophan
application, due to skin pressures from larger fruit” (id. at 10).
Appellant argues further, citing col. 8, l. 52 of Lovatt, that the
“function, purpose and timing of the Lovatt spray is significantly and
remarkably different” from the claimed method (id. at 12). Appellant also
argues that Young was published more than ten years before Lovatt, “and
yet Lovatt failed to teach or suggest the use of the claimed compound on a
stonefruit, a pip fruit, or a berry fruit” (id.). Thus, Appellant asserts, the
Examiner has relied upon impermissible hindsight in combining the
references to arrive at the method of claim 1 (id. at 13).
We agree with the Examiner‟s response to argument as set forth in the
Answer (Ans. 14-18). We also make the following additional observation.
We point Appellant‟s attention to In re Woodruff, 919 F.2d 1575 (Fed.
Cir. 1990). The claim at issue in that case was a claim to a method of
inhibiting fungi on fresh leafy and head vegetables by storing the vegetable
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in a specified, modified atmosphere. Id. at 1575-76. The Court found that
even as though “Woodruff may have been the first to recognize the fungal-
inhibiting benefit of the method,” the method was still not patentable. Id. at
1577-78. Specifically, the court found:
It is a general rule that merely discovering and claiming a new
benefit of an old process cannot render the process again
patentable. While the processes encompassed by the claims are
not entirely old, the rule is applicable here to the extent that the
claims and the prior art overlap.

Id. at 1578 (citations omitted).
Appellant‟s primary argument appears to be that the combination of
references does not teach using tryptophan to reduce cracking in fruit. But,
as noted by the Examiner:
the combination of art does teach application of the same
compositions to the same plants in the same concentrations and
within the same time frames as claimed. The effect of
reduction in cracking would be an inherent result when
practicing the methods taught by the combination of Lovatt and
Young.

(Ans. 14.) We therefore conclude that Woodruff applies as the art teaches a
method that overlaps the claimed method, and thus Appellant is not entitled
to a claim to a new benefit of, in this case, an obvious process.
As to Appellant‟s argument that Young was published more than ten
years before Lovatt, but that Lovatt failed to teach or suggest the use of the
claimed compound on a stonefruit, a pip fruit, or a berry fruit, we note, as
did the Examiner (Ans. 18), that Lovatt in fact teaches that exemplary plants
may be from the genus Prunus, which encompasses cherries.
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We thus affirm the rejection of claim 1 under 35 U.S.C. 103(a) as
being rendered obvious by the combination of Lovatt and Young. Claims 2
and 4-11 fall with that claim (App. Br. 7).
As to claim 17, Appellant essentially reiterates the arguments made
with respect to claim 1 (App. Br. 15-20), and those arguments are not found
to be convincing for the reasons set forth with respect to claim 1. We thus
affirm the rejection of claim 17 as being rendered obvious by the
combination of Lovatt and Young. Claims 19-25 fall with claim 17 (App.
Br. 15).
As to claim 27, Appellant reiterates the arguments made with respect
to claim 1, which are not found to be convincing for the reasons set forth
above. Appellant argues further that “applying the compound to sweet
cherries, renders an especially effective and unforeseen result in the
reduction of cracking in the mature fruit” (App. Br. 21). Appellant,
however, points to no evidence in the record to support that assertion, and
attorney argument cannot take the place of evidence lacking in the record.
Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). We
thus affirm the rejection of claim 27 as being rendered obvious by the
combination of Lovatt and Young.

Rejection II
The Examiner rejects claims 4-6, 12, 14, and 24 as being rendered
obvious by the combination of Lovatt, Young, and Devisetty (Ans. 9-13).
As we agree with the Examiner‟s findings and conclusions, we adopt them
as our own.
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As to claim 4, Appellant reiterates the arguments made with respect to
claim 1 (App. Br. 22), which are not found to be convincing for the reasons
set forth with respect to claim 1.
Appellant also asserts that it was in error for the Examiner to find
“that because „growth regulators can be applied a rate ranging from 0.02 to
about 50/lbs per acre,‟ the Applicant‟s claimed application rates are
obvious” (id.). According to Appellant, “[t]he efficacy of any agricultural
compound, especially for heretofore unknown use and result can not be
guessed or estimated, based purely on analogous compounds used for
broadly defined effects, such as „growth regulation‟” (id.).
Appellant‟s arguments are not convincing. As noted by the Examiner,
“Lovatt clearly states that simple and routine experimentation may need to
be performed to achieve the desired result and further go on to state that one
of ordinary skill in the art is well aware of how to perform such optimization
as well as to provide an example of how to perform said optimization” (Ans.
19; see also Lovatt). Moreover, Devisetty teaches that in general, growth
regulators are applied at a rate of from 0.1 to about 5/lbs per acre (Devisetty,
col. 8, ll. 58-62), which is encompassed by the broad range set forth in
instant claim 4, which is 8.9 x 10
-5
lbs/acre to 8.9 x 10
5
lbs/acre.
We thus affirm the rejection of claim 4 as being rendered obvious by
the combination of Lovatt, Young, and Devisetty. Clams 5, 6, and 12 fall
with claim 4 (App. Br. 22).
As to claim 14, Appellant reiterates the arguments made with respect
to claims 1 and 27, which are not found to be convincing for the reasons set
forth above (id. at 23).
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Appellant argues further that the “anti-cracking results of the claimed
method spray are not obvious, and without field trials and experimentation,
the effect of an additional UV protectant could not be assured” (id.).
Appellant‟s arguments are not convincing. As noted by the Examiner,
“Lovatt teaches the addition of auxiliary agents to said growth-regulator
formulations and Devisetty [ ] teach plant growth regulator formulations
comprising UV agents” (Ans. 19). Thus, we agree with the Examiner that it
would have been prima facie obvious to add a UV agent to the tryptophan
composition used in the method of Lovatt (id. at 19-20).
We thus affirm the rejection of claim 14 as being rendered obvious by
the combination of Lovatt, Young, and Devisetty. Claim 24 falls with claim
14 (App. Br. 23).

SUMMARY
We affirm the rejection of claims 1, 2, 4-11, 17, 19-25, and 27 under
35 U.S.C. § 103(a) as being rendered obvious by the combination of Lovatt
and Young; as well as the rejection of claims 4-6, 12, 14, and 24 under 35
U.S.C. § 103(a) as being rendered obvious by the combination of Lovatt,
Young, and Devisetty.

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Application 10/966,838

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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

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