Ex parte Quimby, Jr. et al.

Board of Patent Appeals and Interferences

Nov 27, 2001

08695249 (B.P.A.I. Nov. 27, 2001)

1
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.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 PAUL C. QUIMBY, JR. ANTHONY J. CAESAR, JENNIFER L. BIRDSALL,
WILLIAM J. CONNICK, JR., CLYDE D. BOYETTE, and NINA K. ZIDACK
____________
Appeal No. 2000-1568
Application No. 08/695,249
____________
ON BRIEF
____________
Before WILLIAM F. SMITH, ELLIS and GRIMES, Administrative Patent Judges.
ELLIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the final rejection of claims
1-18, all the claims pending in the application.
Claims 1, 9 and 17 are illustrative of the subject matter on appeal and read as
follows:
1. A granular biocontrol formulation comprising: (1) a biocontrol agent for an
agricultural pest selected from the group consisting of insects, weeds, crop diseases, and
detrimental nematodes, said agent being pathogenic upon contact or ingestion by said
pest and selected from the group consisting of bacteria, fungi, viruses, microsporidians,
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protozoa, nematodes and pathogenic components of said agents; (2) a water absorbent
material; (3) a membrane stabilization agent; and (4) a granulating agent, wherein the
biocontrol agent is in aqueous suspension, wherein the water absorbent material binds
with available water in the suspension of biocontrol agent, wherein the amount of
membrane stabilization agent is in the range of about 10-65% by dry weight of the
complete formulation and wherein the aqueous suspension of biocontrol agent, the water
absorbent material, the membrane stabilization agent and the granulating agent exist in
said formulation as a blended mixture.
9. A method of preparing a biocontrol agent in a granular formulation, wherein
said biocontrol agent is pathogenic upon contact or ingestion by an agricultural pest
selected from the group consisting of insects, weeds, crop diseases, and detrimental
nematodes and wherein said agent is selected from the group consisting of bacteria,
fungi, viruses, microsporidians, protozoa, nematodes and pathogenic components of said
agents, comprising the steps of:
a. blending said biocontrol agent in aqueous suspension with a water
absorbent material and a membrane stabilization agent into a dough;
b. blending the dough of step (a) with a granulating agent to reduce said dough
to discrete granules;
c. recovering the granules of step (b).
17. The method of Claim 9 wherein the granules recovered in step (c) are
redispersed in water to yield a sprayable formulation.
The references relied upon by the examiner are:
Levy 4,818,534 Apr. 4, 1989
Shasha et al. (Shasha ‘377) 4,859,377 Aug. 22, 1989
Shasha et al. (Shasha ‘697) 5,061,697 Oct. 29, 1991
Quimby, Jr. et al. (Quimby)5,358,863 Oct. 25, 1994
Webster’s II New Riverside University Dictionary, Soukhanov et al. (eds.) Houghton Mifflin
Company, Boston, MA p. 67 (1984).
Connick et al. (Connick), Journal of Nematology, Vol. 25, pp. 198-203 (1993).
Appeal No. 2000-1568
Application 08/695,249
In the final rejection, claims 1-18 were also rejected under 35 U.S.C. § 103 as1
being unpatentable over Zidack (Zidack et al., Phytopathology, “Am. Phytopathol. Soc.
Annual Meeting”, Vol. 85, Abstract 792 (August 12-16, 1995)), Shasha ‘697, Connick,
Quimby, and Levy. However, since this rejection was not repeated in the Examiner’s
Answer, we presume that it has been withdrawn.
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The claims stand rejected as follows:
I. Claims 1-18 stand rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which the
appellants regard as their invention.
II. Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Shasha ‘697, Shasha ‘377, Connick, Quimby and Levy.1
We reverse.
Background and Discussion
As indicated by the claims, the present invention is directed to a granular
formulation which comprises (i) a biocontrol agent selected from the group consisting of
bacteria, fungi, viruses, microsporidians, protozoa, nematodes and pathogenic
components thereof, (ii) a water absorbent material (e.g., starch polyacrylonitrile graft
copolymers such as “Super Slurper” and “Water-lock ”), (iii) a membrane stabilization®
agent (e.g., sucrose and disaccharides such as trehalose), and (iv) a granulating agent
(e.g., diatomaceous earth, Cab-O-Sil , and Hi-Sil ), combined together in a blended® ®
mixture. The membrane stabilization agent is present in the range of about 10-65%
by dry weight of the complete formulation. In addition, the invention is directed to a method
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of preparing a granular biocontrol agent which comprises (i) blending an aqueous
suspension of a biocontrol agent selected from the group consisting of bacteria, fungi,
viruses, microsporidians, protozoa, nematodes and pathogenic components thereof with a
water absorbent material and a membrane stabilization agent into a dough, (ii) blending
the dough of subsection (i) with a granulating agent to produce granules, and (iii)
recovering the granules of subsection (ii). The granules can be dispersed in water to
produce a sprayable formulation.
According to the specification, the present formulation is useful in the control of
agricultural pests such as insects, weeds, crop diseases, and detrimental nematodes.
Specification, p. 5.
I. § 112, second paragraph rejection
First, the examiner contends that claims 1 and 9 are vague and indefinite in the
recitation of “and pathogenic components of said agents.” Answer, p. 3. According to the
examiner, it is not clear which parts of the claimed biocontrol agents are pathogenic. Id.
We find the examiner’s position untenable.
A seminal case which provides guidance for determining whether the claims satisfy
the requirements of the second paragraph of § 112 is In re Moore, 439 F.2d 1232, 169
USPQ 236 (CCPA 1971). There, the court pointed out, inter alia, that “the definiteness of
the language employed must be analyzed- not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it would be
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interpreted by one possessing the ordinary level of skill in the pertinent art.” In re Moore,
439 F.2d at 1235, 169 USPQ at 238. Thus, the issue becomes would one skilled in the art
have understood what is encompassed by the phrase “pathogenic components of said
[biocontrol] agents.”
To that end, we find that the specification provides guidance through the example of
one biocontrol agent, B.t. (Bacillus thuringiensis), wherein it discloses that the pathogenic
components include vegetative cells, spores, proteinaceous crystals. Specification, p. 6,
lines 18-22. More importantly, however, we agree with the appellants that should a
question arise as to whether a particular component of a biocontrol agent is pathogenic,
one skilled in the art would have understood that simple testing of the component in
question against the appropriate pest would resolve the issue. Brief, p. 6. Thus, we find
that claim 1 sets forth with a reasonable degree of precision and particularity the “metes
and bounds” of the appellants’ invention with the use of phrase “and pathogenic
components of said [biocontrol] agents.” In re Moore, 439 F.2d at 1235, 169 USPQ at
238.
Second, the examiner argues that claim 1 is vague and indefinite in the recitation of
“about.” Answer, p. 4. According to the examiner, it is not clear “how much less than or
more than the 10 or the 65%” of the membrane stabilizing agent is intended to be included
or excluded. Id. We find that this argument lacks merit.
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Again, considering In re Moore, and the direction provided therein by the court, we
turn to the specification and find that it discloses that “the membrane stabilization agent
should be in the range of about 50 mM to about 1M, or about 10-65% by dry weight of the
complete formulation.” Specification, p. 9. In our view, one skilled in the art, upon reading
the broad range of the membrane stabilization agent recited in the claim and the
specification would have understood that the exact amount of this agent in the formulation
is not critical. Thus, we agree with the appellants, that the claimed range is more for
purposes of guidance in making the formulation, and not for precision.
Third, the examiner argues that
Claim 17 recites adding water, it is not clear that the granules remain as granules
and do not dissolve or become adherent to each other. Claim 9 is [directed] to [the]
formation of a granule, however, the admixture with more water, a solvent, would be
expected to result in solvation of the material placed in the solvent. Addition of
more water makes the claim indefinite as to the retention of “granular formulation”
that is recited in claim 9 and in claim 17 since claim 17 is dependent upon claim 9 [
Answer, p. 4].
It is not really clear to us what the examiner’s problem is with claim 17. We find
nothing indefinite with the claim language. In our view, one skilled in the art would have
understood that claim 17 is directed to dispersing the granules produced by the method of
claim 9 in water. Claim 17 merely adds an additional step to the method.
Accordingly, in view of the foregoing, Rejection I is reversed.
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II. § 103 rejection
The examiner has premised his conclusion of obviousness on the teachings of
Shasha ‘697, Shasha ‘377, Connick, Quimby, and Levy.
Shasha ‘697 discloses a method of making a sprayable, starch-based
formulation comprising (i) biocontrol agents such as bacteria, fungi, yeasts, viruses,
microsporidians, protozoa, and other pathogenic organisms, and pathogenic
components thereof, and (ii) a sugary material as a sticking agent. Shasha, col. 1, lines
59-64. The starch includes any pre-gelatinized starch which will form a gel when
rehydrated in an aqueous solution. Id., col. 2, lines 34-36. The preferred pre-
gelatinized starch is a commercial product known as “MIRA-SPERSE®” which mostly
contains amylopectin, but other sources of pre-gelatinized starch can include pearl corn
starch, potato starch, tapioca starch, flours containing these starches as well as mixtures
of these with waxy corn starch and high-amylose starch. Id., col. 2,
lines 40-47. The sugary materials in the formulations include sucrose, glucose, fructose,
mannose, "-methyl glucoside, and various corn syrups. Id., col. 2,
lines 48-51. Shasha ‘697 further discloses that in another embodiment of the invention,
the biocontrol agent, pre-gelatinized starch, and the sugar, can be admixed and applied
to plant foliage as a dry formulation. Id., col. 3, lines 51-54.
Shasha ‘377 discloses a method of encapsulating biocontrol agents such
bacteria, fungi, yeasts, viruses, microsporidians, protozoa, and pathogenic components
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thereof, so that they will be suitable for use in the control agricultural pests. Shasha ‘377,
col. 2, lines 50-54 and col. 3, lines 59-65. The encapsulation is said to extend the field
life of the biocontrol agents by providing protection from environmental exposure and
chemical and biological degradation. Id., col. 1,
lines 7-12. The encapsulation procedure is performed by blending a biocontrol agent
with an aqueous dispersion of a commercially-available, amylose-containing, pre-
gelatinized starch such as pearl corn starch, potato starch, tapioca starch, flours
containing these starches as well as mixtures of these with waxy cornstarch and high-
amylose corn starch. Id., col. 2, lines 51-58; col. 3, lines 39-43 and 51-58. Shasha ‘377
discloses that the starch concentration must be in the range of about 25-40% solids by
weight in order to have rapid gelling. Id., col . 4, lines 54-57. The gelled mixture is
placed on trays and left to stand for thirty (30) minutes to form a non-sticky mass which is
then ground into non-agglomerating particles. Id., col. 4, lines 63-69. Shasha further
discloses that coating the gelled mixture with pearl cornstarch powder prior to grinding
facilitates particulation. Id., col. 4, line 69- col. 5, line 2. Shasha ‘377 still further
discloses that the presence of about 5-10% corn oil by weight (i) helps to disperse the
biocontrol agent, (ii) helps to minimize clumping of the pre-gelatinized
starch, and (iii) acts as a mild phagostimulant for some insects. Id., col. 4,
lines 24-29.
Connick discloses a method of entrapping biocontrol agents in a cohesive dough
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The granules are said to be made by mixing a sterile sodium alginate and kaolin2
solution with a culture of the biocontrol agent(s). Quimby, col. 2, lines 31-39.
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comprising semolina (a durum wheat flour), kaolin and peat moss. Connick, para.
bridging pp. 198-199. The dough is dried on a rack at room temperature and ground
into granules. Id., para. bridging pp. 199-200. Connick suggests that given the wheat
flour composition of the disclosed biocontrol formulation, and its compatibility with
substances like wheat bran, sugars, vegetable oils, etc., it could be formulated as a bait.
Id., p. 202, col. 2, first para.
Quimby discloses a method of making an encapsulated biocontrol agent which is
resistant to water evaporation. Quimby, col. 1, lines 36-38. The method involves mixing
granules of biocontrol agents with a calcium salt solution to form calcium alginate2
granules. Id., col. 2, lines 31-42. The granules are said to typically contain 0.7%-1.0%
sodium alginate and 4.5%-5.5% kaolin. Id., col. 2, lines 42-43. The granules are
thoroughly coated with an oil-in-water emulsion and an oil absorbent such as hydrated
silica, fumed silica, kaolin and other clays, corn bran, oat bran, wheat bran and other
brans, diatomaceous earth, zeolite and absorbent starch or combinations thereof, and
allowed to dry. Id., col. 2, line 58- col. 3, line 48.
Levy discloses an insecticidal delivery composition comprising one or more solid
super absorbent polymers and at least one insecticidal agent. Levy, col. 6,
lines 8-14. The superabsorbent polymers are synthetic organic polymers selected from
acrylamide and acrylate polymers, copolymers and ter-polymers which are capable of
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absorbing over 100 times their weight in water. Id., col. 7, lines 30-35. The
compositions are said to be useful for controlling insect populations in an aquatic
environment. Id., col. 1, lines 17-27.
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72,
223 USPQ 785, 787-88 (Fed. Cir. 1984). It is the examiner’s responsibility to show that
some objective teaching or suggestion in the applied prior art, or knowledge generally
available [in the art] would have led one of ordinary skill in the art to combine the
references to arrive at the claimed invention. Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
Here, the examiner’s rejection is not a model of clarity. Rather, we find that the
examiner points, in an unfocused manner, to numerous teachings in the
various references which disclose assorted limitations present in different claims, and
concludes that
Insofar as both Shasha et al. references and the Quimby et al. reference
disclosed using starch as an encapsulant, it would have been obvious to
one of ordinary skill in the art to have used other starch compositions to
effect encapsulation such as starch copolymers which contain acrylamide
or acrylonitriles as disclosed in the Levy patent. In view of the combined
references, the claimed invention was within the skill in the art to make and
use at the time it was made and was as a whole, prima facie obvious
[Answer, p. 6].
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However, the examiner has failed to point to any teachings in the applied prior art,
or referred to knowledge generally available in the art, which would have suggested
combining the teachings of the references in order to produce a granular, biocontrol
formulation comprising (i) an aqueous suspension of a biocontrol agent selected from
the group consisting of bacteria, fungi, viruses, microsporidians, protozoa, nematodes,
and pathogenic agents thereof; (ii) a water absorbent material; (iii) a membrane
stabilization agent; and (iv) a granulating agent, wherein the membrane stabilization
agent is present in the range of about 10-65% by dry weight of the complete formulation.
Independent teachings of different elements present in the claims, standing alone, do not
provide a reason to combine said elements into a single formulation. At best, it appears
that the examiner is confusing the level of skill in the art with the teachings of the prior art.
In re Kratz, 592 F.3d 1169, 1175, 201 USPQ 71, 76 (CCPA 1979) (“There is a
difference between somehow substituting skill in the art for statutory prior art, as the PTO
attempts to do here, and using that skill to interpret prior art”).
Thus, on this record, we are constrained to agree with the appellants that the
examiner has engaged in impermissible hindsight in making his determination of
obviousness. In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991)(“It is impermissible, however, simply to engage in a hindsight reconstruction of
the claimed invention, using the applicant’s structure as a template and selecting
elements from references to fill the gaps”); Interconnect Planning Corp. v. Feil, 774 F.2d
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1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985); W.L. Gore & Assocs. v. Garlock, Inc.,
721 F.2d 1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984)(“To imbue one of ordinary skill in the art with knowledge of the invention in
suit, when no prior art reference or references of record convey or suggest that
knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that
which only the inventor taught is used against its teacher”).
Accordingly, Rejection II is reversed.
III. Other issues
Upon return of the application to the corps, the examiner may wish to consider the
following.
1. Reject the claims individually, or in the very least, identify the claim(s) to
which the rejection is directed. In our reading of the examiner’s rejection in the Answer, it
was never clear to us which claim(s) the examiner was addressing. The examiner would
be well advised to consider the limitations present in each claim individually, starting with
claim 1, and to address those limitations before moving on to other claims.
2. The issue of obviousness in view of the teachings of Shasha ‘697 and
Shasha ‘377. To that end, we direct attention to the teachings of Shasha ‘697, col. 3,
lines 50-54, wherein it states:
In yet another embodiment of the invention, the biocontrol agent,
pregelatinized starch material, and the sugary material can be admixed and
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Application 08/695,249
We agree with the examiner that the claims are not limited to water absorbent3
materials which are capable of absorbing several times their own weight in water, as
argued in the appellants’ brief (Brief, p. 12). Thus, the water absorbent material recited in
the claims appears to “read on” the water absorbing, pre-gelatinized starch disclosed by
Shasha ‘697 and Shasha ‘377.
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applied to the plant foliage as a dry formulation [emphasis added].
Thus, it appears that Shasha ‘697 teaches a dry biocontrol formulation which
comprises a biocontrol agent, a water absorbent material (pregelatinized starch), and a3
membrane stabilization agent (sucrose, etc.).
We further direct attention to the teachings of Shasha ‘377 with respect to the
encapsulation of a biocontrol agent by uniformly dispersing said agent in an aqueous
dispersion of the pre-gelatinized starch. Shasha ‘377, col. 4, lines 32-35. Shasha ‘377
further discloses that
The recovery procedure is aimed at converting the homogenous mass to
discrete, free-flowing, nonagglomerating particles. In accordance with one
method of recovery contemplated herein, the gelled starch-agent mixture is
placed on trays and allowed to stand for about 30 min at room temperature. The
resultant, nonsticky mass is then ground by suitable means into nonagglomerating
particles. Coating the mass with pearl cornstarch powder prior to grinding will
facilitate particulation [emphasis added].
Thus, Shasha ‘377 appears to disclose a granular, biocontrol formulation
comprising, a biocontrol agent, a water absorbent material and a granulating agent.
Upon return of the application, the examiner may wish to consider whether it would have
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been obvious to one of ordinary skill in the art to employ the granulating agent (pearl
cornstarch powder) described by Shasha ‘377 in the dry biocontrol formulation
described by Shasha ‘697 in order to produce particles of said biocontrol formulation.
Alternatively, the examiner might wish to consider whether it would have been
obvious to those of ordinary skill in the art to add the membrane stabilization agent
(sucrose) taught by Shasha ‘697 to the granular biocontrol formulation described by
Shasha ‘377.
In view of the foregoing, the decision of the examiner is reversed.
REVERSED
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOAN ELLIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ERIC GRIMES )
Administrative Patent Judge )
Curtis P. Ribando
USDA Ars Ott National Center for
Agricultural Utilization Research
1815 N. University Street
Peoria, IL 61604
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Application 08/695,249
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