Ex Parte Rossi et al

Patent Trial and Appeal Board

May 18, 2017

12731711 (P.T.A.B. May. 18, 2017)

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.
12/731,711 03/25/2010 Paolo Rossi 267.123 1650
7590 05/22/2017
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
EXAMINER
MENDEZ, ZULMARIAM
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
05/22/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
info@lmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAOLO ROSSI, MARIACHIARA BENEDETTO,
LUCA BUONERBA, ACHILLE DE BATTISTI,
SERGIO FERRO, and FABIO GALLI
Appeal 2016-005716
Application 12/731,711
Technology Center 1700
Before TERRY J. OWENS, KAREN M. HASTINGS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of a decision
of the Primary Examiner to reject claims 15 and 18 under 35 U.S.C. § 103(a)
over the combined prior art of Maruyama,2 Kindred,3 4 5and Grab.45
We have jurisdiction under 35 U.S.C. § 6.
1 According to the Appellants, the real party in interest is Industrie De Nora
S.P.A. (Br. 2).
2 Maruyama (JP-11-028397 A; published Feb. 2, 1999; as translated).
3 Kindred (US 2006/0076248 Al; published Apr. 13, 2006).
4 Grab et al. (US 2006/0147549 Al; published July 6, 2006).
5 As noted by the Examiner, Appellants cancelled all claims except for
claims 15 and 18 (Ans. 2).
Appeal 2016-005716
Application 12/731,711
We AFFIRM.
Claim 15 is illustrative of the claimed subject matter:
15. A method for reducing or treating microorganism-induced
pathologies in vegetable species by in situ sprinkling of an
electrochemically-produced oxidizing solution comprising:
loading of an electrochemical device for the execution of biocide
treatment with an alkali chloride solution, the electrochemical device
comprises:
a feed vessel comprising a feed solution to be electrolyzed, the feed
comprising a potassium chloride solution, wherein the potassium chloride
solution has a concentration comprised between 1 and 50 g/1 and at a pH
comprised between 6 and 8;
at least one electrolysis cell comprising at least one anode and at least
one cathode;
means for keeping an electrical potential between the anode and the
cathode suitable for producing an oxidizing solution containing
hypochlorous acid having a concentration comprised between 0.01 to 2 g/1;
and
means for sprinkling the solution;
applying an electrical potential between the anode and the
cathode;
producing an oxidizing solution comprising 0.01 to 2 g/1 of
hypochlorous acid; and
in situ sprinkling the oxidizing solution on the vegetable species to be
treated, wherein the microorganisms comprise one or more of Erwinia
amylovora, Valsa ceratosperma, Nectria galligena or Pseudomonas
syringae.
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Appeal 2016-005716
Application 12/731,711
ANALYSIS
Upon consideration of the appeal record including the Appellants’
position in this appeal as set forth on pages 4—7 of the Appeal Brief, we
affirm the Examiner’s rejection for the reasons stated by the Examiner (Final
Office Action mailed April 10, 2015, at 11—18; Examiner’s Answer mailed
February 25, 2016 at 2—9).
Appellants’ main argument is that the references do not teach or
suggest that after electrolysis the oxidizing solution has a solution containing
hypochlorous acid with a concentration as recited in claim 15 (Br. 6).
Appellants fail, however, to address the Examiner’s position that arriving at
such an acid concentration would have been optimizing a known result
effective variable for its known purpose of treating microorganisms on
vegetable species (e.g., Ans. 7, 8). It has been established that a
“recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.” In re Applied Materials, Inc.,
692 F.3d 1289, 1297 (Fed. Cir. 2012).
As indicated by the applied prior art and the Examiner, the
concentration of the hypochlorous acid is a result-effective variable for a
given service application, e.g., treating microorganisms on vegetable species
(Ans. 8; Kindred e.g., 4, 26). Moreover, it is well settled that it would
have been obvious for an artisan with ordinary skill to develop workable or
even optimum ranges for result-effective parameters. In re Boesch, 617 F.2d
272, 276 (CCPA 1980); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990) (where the difference between the claimed invention and the prior art
is some range, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results).
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Appeal 2016-005716
Application 12/731,711
Thus, obtaining and using an oxidizing solution containing an appropriate
concentration of hypochlorous acid (including .01 to 2 g/1) for its known
purpose of treating microorganisms on vegetable species is deemed within
the level of ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416-417 (2007) (the predictable use of prior art elements according to
their established functions is likely to be obvious).
Appellants also argue that Grab does not teach treating vegetable
species but only teaches sterilizing surfaces (Br. 6). This argument fails to
show reversible error in the Examiner’s rejection because Grab does suggest
using antimicrobial agents on citrus products as well as other surfaces (Grab,
e.g., 114). Furthermore as pointed out by the Examiner, both Maruyama
and Kindred teach the use of a hypochlorous acid solution on
vegetation/vegetables as an antimicrobial/antibacterial agent (Ans.
generally). Grab is merely relied upon to exemplify that at least one of the
listed microorganisms listed in claim 15 was explicitly known to be a
microbe that was desirable to remove from tomato vegetation (Ans. 5, 9).
Thus, Appellants have not shown reversible error in the Examiner’s
determination that one of ordinary skill in the art, using no more than
ordinary creativity, would have obtained from the electrolysis of a feed of
potassium chloride an appropriate concentration of hypochlorous acid to use
for sprinkling the solution on vegetation (as exemplified in
Maruyama/Kindred) and treating at least one of the claimed microorganisms
as suggested in Grab (e.g., Ans. 9; Grab Tflf 10, 14, 23). In re Keller, 642
F.2d 413, 425—26 (CCPA 1981) (“The test for obviousness ... is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”); In re Merck & Co., Inc., 800 F.2d 1091, 1097
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Appeal 2016-005716
Application 12/731,711
(Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”).
In this appeal, Appellants do not rely upon any evidence of
unexpected results.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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