Ex Parte Schrader

Patent Trial and Appeal Board

Apr 4, 2013

11737405 (P.T.A.B. Apr. 4, 2013)

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.
11/737,405 04/19/2007 Lawrence E. Schrader 03170013CA 5556
30743 7590 04/04/2013
WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
HAYES, KRISTEN C
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
04/04/2013 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 LAWRENCE E. SCHRADER
____________

Appeal 2011-001650
Application 11/737,405
Technology Center 3600
____________

Before JOHN C. KERINS, WILLIAM A. CAPP and
JEREMY M. PLENZLER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001650
Application 11/737,405
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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 20-28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s invention relates to a method for suppressing cracking
and water loss in fruits and vegetables, particularly cherries. Spec. 1.
Claim 20, reproduced below, is illustrative of the subject matter on appeal.
20. A method for suppressing cracking of cherry skins
for cherries which are harvested or to be harvested where the
cracking is due to water absorption by said cherries comprising:
applying to cherries, after harvest or while said cherries
are on a cherry tree prior to harvest, a wax emulsion in a
sufficient quantity to suppress cracking of skins of said cherries
due to water absorption in said cherries and
suppressing cracking of cherry skins of said cherries due
to water absorption in said cherries using said wax emulsion
after said step of applying.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claims 20, 26 and 28 are rejected under 35 U.S.C. § 102(b), as
being anticipated by Cushman.
Miller
Tisdale
Dutton
Cushman
US 2,013,063
US 2,128,973
US 2,198,991
US 3,847,641
Sep. 3, 1935
Sep. 6, 1938
Apr. 30, 1940
Nov. 12, 1974
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2. Claims 20-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tisdale and Cushman.
3. Claims 20-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miller and Cushman.
4. Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miller, Cushman and Tisdale.
5. Claim 25 is rejected is under 35 U.S.C. § 103(a) as being
unpatentable over Cushman.
6. Claim 27 is rejected is under 35 U.S.C. § 103(a) as being
unpatentable over Cushman and Dutton.
OPINION
Anticipation of Claims 20, 26 and 28 Cushman
Appellant argues claims 20, 26 and 28 as a group. App. Br. 12-14.
We select independent claim 20 as representative of the group. See 37
C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Cushman discloses all of the limitations of
claim 20. Ans. 4. In particular, the Examiner finds that Cushman discloses
a method of applying a wax emulsion to a cherry tree that is inherently
capable of suppressing cracks in the skins of cherries. Id.
Appellant traverses the Examiner’s rejection by arguing that Cushman
is directed to controlling transpiration in plants, not cracking of fruit skin.
App. Br. 13. More particularly, Appellant argues that Cushman coats
nursery stock, not cherries, and that Cushman is concerned with preventing
transpiration, i.e., the exiting of water, from plant leaves. Id. Appellant
distinguishes the instant invention by arguing that the claimed wax emulsion
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coating prevents water from going into the cherry as opposed to preventing
water from transpiring or exiting the leaves of a plant. Id.
In response, the Examiner states that Cushman applies a wax
emulsion to cherry trees and cherries. Ans. 7, citing Cushman, Col. 1, ll. 22
and 55. The Examiner states suppression of cracking of cherry skins would
be inherent, since the wax would provide a barrier to protect the skin. Id.
The Examiner’s factual finding that Cushman discloses the coating of
cherry fruit, not just the plant leaves, is corroborated by additional disclosure
in Column 3 of Cushman that the emulsions are applied about one week
before harvest.1 The Column 3 disclosure effectively refutes Appellant’s
contention that Cushman is limited to coating nursery stock before it
produces fruit.
Appellant does not otherwise effectively rebut the Examiner’s
position that Cushman’s coating would inherently be effective in
suppressing skin cracking in cherries.
Where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). We sustain the
Examiner’s rejection of claims 20, 26 and 28.

1 “Application of the novel emulsions of the present invention,
particularly to drupaceous fruits shortly before harvest (usually about one
week) can significantly increase the size of the fruit and result in improved
yield per acre.” Cushman, Col. 3, ll. 29-34.
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Unpatentability of Claims 20-22 over Tisdale and Cushman
Appellant argues claims 20 and 22 together. App. Br. 14-15. We
select independent claim 20 as the representative claim. See 37 C.F.R. §
41.37(c)(1)(vii) (2011).
The Examiner finds that Tisdale discloses a method for applying a
wax emulsion to prevent damage to fruit. Ans. 4-5. The Examiner
acknowledges that Tisdale does not disclose cherries as the fruit. Ans. 5.
The Examiner relies on Cushman as teaching applying a wax emulsion to
cherries. Id. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to substitute
cherries for the fruit of Tisdale as suggested by Cushman. Id. The
Examiner finds that suppressing cracking of cherry skins is inherent when
the wax emulsion is applied. Id.
Appellant traverses the Examiner’s rejection by arguing that Tisdale
and Cushman describe the use of wax emulsions for a different purpose than
prevention of skin cracking. App. Br. 14. Appellant argues that neither
Tisdale nor Cushman deal with water absorption. Id. The Examiner
responds by reiterating that the waxes of Tisdale and Cushman provide a
seal that inherently prevents water from entering fruit as well explicitly
preventing water from exiting the fruit. Ans. 7.
We have already sustained the Examiner’s anticipation rejection of
claim 20 over Cushman, supra. “A disclosure that anticipates under
35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103
since anticipation is the epitome of obviousness. See In re Fracalossi, 681
F.2d 792, 794 (CCPA 1982). Also, we do not find persuasive Appellant’s
argument that Tisdale and Cushman have a different purpose than the
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claimed invention. It is not necessary for the prior art to serve the same
purpose as that disclosed in Appellants’ Specification in order to support the
conclusion that the claimed subject matter would have been obvious. See In
re Linter, 458 F.2d 1013, 1016 (CCPA 1972). “A reference may be read for
all that it teaches, including uses beyond its primary purpose.” In re
Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418-421 (2007). Appellant has not rebutted the
Examiner’s determination that Tisdale and Cushman inherently possess the
capability to suppress the cracking of cherry skins. Swinehart, supra.
We sustain the Examiner’s rejection of claims 20 and 22 as
unpatentable over Tisdale and Cushman. Appellant did not separately argue
claim 21 and, therefore, we also sustain the rejection of claim 21 over
Tisdale and Cushman. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Unpatentability of Claims 20-22 over Miller and Cushman
The Examiner finds that Miller discloses a method comprising
applying a wax emulsion to a plant. Ans. 5. The Examiner acknowledges
that Miller does not disclose that the plant is a cherry tree. Id. The
Examiner relies on Cushman as teaching the application of a wax emulsion
to a cherry tree. Id. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time of the invention to
substitute cherry trees for the plant of Miller depending on what fruit was
desired to be protected, the suppression of skin cracking being inherent
when the wax emulsion is applied. Id.
Appellant’s main Brief fails to address the ground of rejection of
claims 20-22 as unpatentable over Miller and Cushman. Appellant
addresses this ground of rejection, for the first time, in the Reply Brief.
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Reply Br. 3-4.2 However, inasmuch as we have already sustained the
Examiner’s alternative ground of rejection of claims 20-22 over the
combination of Tisdale and Cushman, we do not reach the Examiner’s
rejection of claims 20-22 over Miller and Cushman.
Unpatentability of Claims 23 and 24 over Miller, Cushman and Tisdale
Appellant argues claims 23 and 24 together. App. Br. 15-16. We
select independent claim 23 as the representative claim. See 37 C.F.R. §
41.37(c)(1)(vii) (2011). Claim 23 depends from claim 20, which we have
previously found is anticipated by Cushman and unpatentable over Tisdale
and Cushman. Therefore, we focus herein on the dependent limitation of
claim 23, namely: “wherein said wax emulsion comprises an
osmoregulator.” Clms. App’x.
The Examiner finds that Tisdale discloses a protective composition
for fruits made of an emulsion comprising the fungicide borax, which
contains boric acid. Ans. 6. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time of the
invention to use Tisdale’s boric acid with the predictable result of providing
a safe, readily available fungicide for the emulsion. Id.
Appellant traverses the Examiner’s rejection by arguing that Cushman
and Miller are directed to coating plants, not fruit. App. Br. 15-16.
Appellant also argues that Tisdale is concerned with water exit, not water
entrance. Id. Appellant summarizes his argument by asserting that neither

2 This new argument is untimely. Ex parte Borden, 93 USPQ2d 1473,
1474 (BPAI 2010) (informative)(“Any bases for asserting error, whether
factual or legal, that are not raised in the principal brief are waived.”)
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Cushman, nor Miller, nor Tisdale show or describe suppressing cracking of
cherry skins. App. Br. 16; Reply Br. 4.
We reject Appellant’s argument that Cushman does not teach coating
cherries for the reasons previously discussed above with respect to claim 20.
Boric acid is a suitable osmoregulator. See Spec., p. 19, l. 8. Appellant does
not dispute that Tisdale’s boric acid satisfies the claim limitation directed to
an osmoregulator, neither does Appellant argue persuasively against the
combinability of Tisdale with Cushman and Miller. We sustain the
Examiner’s rejection of claims 23 and 24.
Unpatentability of Claim 25 over Cushman
Claim 25 depends from claim 20 and adds the limitation: “wherein
said cherries are selected from the group consisting of Bing, Rainier,
Sweetheart, Van, Lapins, Chelan, Tieton, and Liberty Bell.” App. Br., Clms.
App’x.
The Examiner acknowledges that, although Cushman discloses the
method of claim 20, it does not disclose the type of cherries as being
selected from the claimed group. Ans. 6. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to select the cherries from the claimed group, depending on
which type of cherry was desired to be protected. Id.
Appellant traverses the Examiner’s rejection of claim 25 by relying on
essentially the same arguments that we have considered and found
unpersuasive with respect to claim 20. App. Br. 16-17. Appellant otherwise
offers no evidence or technical reasoning to demonstrate that application of
the claimed wax emulsion to the particular varieties of cherries listed in
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claim 25 would be patentably non-obvious vis-à-vis application to cherries
generally. We sustain the Examiner’s rejection of claim 25.
Unpatentability of Claim 27 over Cushman and Dutton
Claim 27 depends from claim 20, which we have previously found is
anticipated by Cushman. Therefore, we focus herein on the dependent
limitation of claim 27, namely: “wherein said step of applying a wax
emulsion is performed multiple times.” App. Br., Clms. App’x.
The Examiner acknowledges that Cushman does not disclose the step
of applying the emulsion multiple times. Ans. 6. The Examiner relies on
Dutton as teaching a wax emulsion being applied to trees multiple times. Id.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to modify Cushman’s
method so that the step of applying wax to cherries is performed multiple
times. Id. The Examiner states that this would accomplish the predictable
result of ensuring the wax emulsion provided full protection. Id.
In traversing the Examiner’s rejection, the Appellant relies first on the
same arguments that we have previously considered and rejected with
respect to claim 20. App. Br. 17. Appellant next argues that Dutton does
not teach protecting cherries. Id.
Appellant does not dispute that Dutton discloses the technique of
applying a wax emulsion multiple times. Appellant does not otherwise
challenge the Examiner’s finding that Dutton could have been combined
with Cushman to instruct someone of ordinary skill to apply Cushman’s
coating multiple times. In view of our previous analysis that Cushman
anticipates claim 20 and considering that Appellant has altogether failed to
rebut the Examiner’s conclusion that it would have been obvious to apply
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the teaching of Dutton so that Cushman’s emulsion could have been applied
multiple times, we sustain the Examiner’s rejection of claim 27.

DECISION
The decision of the Examiner to reject claims 20-28 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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