Ex parte Schipper et al.

Board of Patent Appeals and Interferences

Jun 28, 2001

08667167 (B.P.A.I. Jun. 28, 2001)

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publication and is not binding precedent of the Board.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. 14

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOB SCHIPPER, PETER VAN DER TOORN
and TONKO BRUGGINK
__________

Appeal No. 1999-1298
Application No. 08/667,167
__________

ON BRIEF
__________

Before ROBINSON, ADAMS and GRIMES, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 45-65, which are all the claims pending in the application.
Claims 45 and 59 are illustrative of the subject matter on appeal and are
reproduced below:

45. A process for prolonging the shelf life of primed non-germinated
seeds comprising the steps of:

a) incubating primed non-germinated seeds under conditions
selected from the group consisting of

(i) drying the primed seeds from about 1 to 7 days at a
temperature range of about 3° to 40°C;

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(ii) drying the primed seeds for not more than 24 hours to a
moisture content of about 3 to 20% units lower than the moisture
content of non-incubated primed seeds of the same species and
maintaining the seeds in a container with minimal air and moisture
exchange for about 1 to 7 days at a temperature range of about 3° to
40°C;

(iii) exposing the primed seeds to an osmoticum solution for
about 1 to 7 days within the range of about –0.5 to about –0.4 MPa;

(iv) exposing the primed seeds to a heat shock at a
temperature in the range of about 25° to 45°C for about 1 to 5 hours;
and

(v) a combination of substeps (i) or (ii) or (iii) and (iv) above;
and

b) obtaining incubated primed non-germinated seeds wherein the
seed has a moisture content about 3 to 20% units lower than the moisture
content of nonincubated primed non-germinated seeds of the same plant
species and the incubated primed seeds have a prolonged shelf life without
loss of viability as compared to the viability of nonincubated primed non-
germinated seeds of the same plant species.

59. A process for prolonging the shelf life of primed non-germinated
seeds comprising the steps of:

a) incubating primed non-germinated seeds by exposing the seeds to
a heat shock from about 1 to 5 hours at a temperature range of 25° to 45°C;

b) obtaining incubated primed seeds wherein the seed has a
moisture content about 3 to 20% units lower than the seed moisture content
of nonincubated primed non-germinated seeds of the same plant species;
and

c) storing the incubated seeds at a temperature in the range of about
3° to 25°C and at a relative humidity of 20 to 90%

wherein the incubated seeds have a prolonged shelf life without loss of viability as
compared to the viability of the nonincubated primed non-germinated seeds of the
same plant species.

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The references relied upon by the examiner are:

Finch-Savage 4,905,411 Mar. 6, 1990
Rowse 5,119,589 Jun. 9, 1992

(Hartmann), Plant Propagation, Principles and Practices, pp. 100-116 (Hartmann et
al. eds., Prentice Hall, 2nd ed. 1968)

Hegarty, “Seed Activation and Seed Germination Under Moisture Stress,” New
Phytol., Vol. 78, pp. 349-359 (1977)

(Bewley), Physiology and Biochemistry of Seeds, in Relation to Germination, Vol. 2,
pp. 7-59 (Bewley et al. eds., Springer Verlag, 1982)

Bradford, “Manipulation of Seed Water Relations Via Osmotic Priming to Improve
Germination Under Stress Conditions,” Hort. Science, Vol. 21, No. 5, pp. 1105-
1111 (1986)
GROUND OF REJECTION

Claims 45-651 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Rowse in view of Finch-Savage, Hegarty, Bradford, Bewley and Hartmann.
We reverse.
DISCUSSION
In reaching our decision in this appeal, we considered appellants’
specification and claims, in addition to the respective positions articulated by the
appellants and the examiner. We make reference to the examiner’s Answer2 for the

1 We note the following typographical error. The examiner’s statement of the
rejection does not include claim 65. However, the examiner’s explanation of the
rejection clearly includes a discussion of claim 65. See, e.g., Answer, page 14. In
addition, appellants correctly note that claims 45-65 are included in this rejection.
See, e.g., Brief, page 5. Accordingly, this typographical error is corrected herein.
2 Paper No. 13, mailed January 5, 1998.

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examiner’s reasoning in support of the rejections. We further reference appellants’
Brief3 for the appellants’ arguments in favor of patentability.
THE REJECTION UNDER 35 U.S.C. § 103:
The test of obviousness is “whether the teachings of the prior art, taken as a
whole, would have made obvious the claimed invention.” In re Gorman, 933 F.2d
982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). Furthermore, as set forth in In
re Antonie, 559 F.2d 618, 619, 195 USPQ 6, 8 (CCPA 1977), “[j]ust as we look to a
chemical and its properties when we examine the obviousness of a composition of
matter claim, it is this invention as a whole, and not some part of it, which must be
obvious under 35 USC 103. Cf. In re Papesch, 50 CCPA 1276, 315 F.2d 381, 137
USPQ 43 (1963).”
In evaluating appellants’ invention as a whole, we note that the claims include
a limitation of “obtaining incubated primed non-germinated seeds wherein the seed
has a moisture content of about 3 to 20% units lower than the moisture content of
nonincubated primed non-germinated seeds of the same plant species….” The
examiner recognizes this claim limitation (Answer, bridging paragraph, pages 16-
17):
While appellants’ claims may detail exactly “3-20% units” lower than
the moisture content of “non incubated primed seeds”, because the
moisture content of primed seeds is not clearly defined in any
independent claim, it is not clear how the ultimate moisture content of
the incubated seed might define over the “dried back”, primed seed
of the prior art. However, appellants’ “3-20% units” range of moisture

3 Paper No. 12, received November 7, 1997.

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content is a broad range. “Drying back” as taught by the prior art,
would reduce the moisture [content] of [a] seed to a safe storage
moisture level; a level at which the pre-germinative changes in
enzyme and metabolic activity are slowed or halted, to achieve the
stated object of increasing the storage longevity of seed, like the 9%
taught by Rowse, line 65, column 7.

Upon review of this record, we note that Rowse, Hegarty and Bradford are
the only references relied upon that teach drying back “primed non-germinated
seeds.” In fact, Rowse disclose a process of “priming” seeds, and discloses at
column 1, lines14-17 that “[m]ethods involving partial hydration of the seeds followed
by drying back to the original moisture content are sometimes referred to as ‘Seed
Hardening’…. Seed priming can be carried out by partial hydration … after which
the seeds may be dried back to their original water content.” Stated differently, the
seeds are dried back ~100% units lower than the moisture content of nonincubated
primed non-germinated seeds, back to their original water content prior to priming.
The examiner directs our attention (Answer, page 17) to Rowse, column 7,
line 65, wherein the primed seeds are “dried back to 9% water content.” However,
we note, as do appellants (Brief, page 11) that by drying back the seeds to a water
content of 9%, the water content of the dried back seeds is the same as the seeds’
original water content. See, Rowse, column 7, lines 50-51. Therefore, although
Rowse discloses (column 3, lines18-22) that seeds can be dried back to a lower
water content to facilitate storage after priming, there is no disclosure of a lower
water content in the range of appellants’ claimed invention.

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While, as the examiner represents (Answer, page 6), Bradford teach “the
processes of priming, [and] redrying, ‘a process termed ‘hardening’’…” the
examiner failed to explain the nexus between this reference, and moisture content in
the range of appellants’ claimed invention. The same is true of Hegarty, relied on by
the examiner (id.) to teach “that raising then lowering the moisture level of seeds,
before radicle emergence, is tolerated by and may even benefit seeds.”
Bewley and Hartmann fail to make up for the deficiencies in the references
discussed above. As appellants point out (Brief, page 12) neither reference is
concerned with the moisture content of primed non-germinated seeds.
We note that Finch-Savage disclose a process of priming seeds and then
drying the seeds to a moisture content of “around 20% or less, e.g. 15% being
preferred.” Finch-Savage, column 6, lines 49-59. However, Finch-Savage is
concerned with germinated seeds (see e.g., abstract, and column 5, line 62), not
“primed non-germinated seeds” according to the claimed invention. The examiner
failed to explain the nexus between this reference and the claimed invention.
While we do not disagree with the examiner’s conclusion (Answer, page 16)
that “[d]rying back seed[s] to ensure safe storage for longer periods is routine to the
seedsman,” we can not agree with the examiner’s position that the combination of
references relied upon render appellants’ claimed invention prima facie obvious.
Prima facie obviousness based on a combination of references requires that the
prior art provide “a reason, suggestion, or motivation to lead an inventor to combine

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those references.” Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). While a person of ordinary
skill in the art may possess the requisite knowledge and ability to modify the
protocol taught by the examiner’s combination of references, the modification is not
obvious unless the prior art suggested the desirability of the modification. In re
Gordon, 733 F.2d 900, 902, 211 USPQ 1125, 1127 (Fed. Cir. 1984). Here we see
no such reason to modify the references as applied, to obtain incubated primed
non-germnated seeds wherein the seed has a moisture content about 3 to 20%
units lower than the moisture content of nonincubated primed non-germinated seeds
of the same plant species.
Accordingly, in our opinion, the examiner has failed to provide the evidence
necessary to support a prima facie case of obviousness. Where the examiner fails
to establish a prima facie case, the rejection is improper and will be overturned. In
re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Therefore,
we reverse the rejection of claims 45-65 under 35 U.S.C.
§ 103 as being unpatentable over Rowse in view of Finch-Savage, Hegarty,
Bradford, Bewley and Hartmann.
REVERSED

Douglas W. Robinson )

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Administrative Patent Judge )
)
)
) BOARD OF PATENT
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )

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Lynn Marcus Wyner
Sandoz Agro Inc.
Patent Department
975 California Avenue
Palo Alto, CA 94304-1104