Ex Parte Seifert et al

Patent Trial and Appeal Board

Feb 11, 2013

10147100 (P.T.A.B. Feb. 11, 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.
10/147,100 05/15/2002 John G. Seifert 365.0001 0101 2567
26813 7590 02/11/2013
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
EXAMINER
CLAYTOR, DEIRDRE RENEE
ART UNIT PAPER NUMBER
1627
MAIL DATE DELIVERY MODE
02/11/2013 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 JOHN G. SEIFERT and LINDA M. SHECTERLE
__________

Appeal 2011-006319
Application 10/147,100
Technology Center 1600
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
to treat plants. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appeal 2011-006319
Application 10/147,100

2
STATEMENT OF THE CASE
Claims 24-25, 27, 29-30, 32-33, 35-36, and 40-42 are on appeal.
Claim 24 is representative and reads as follows:
24. A method to treat plants consisting of the topical application
of a solution of a pentose comprising 1.25 to 5 grams of the
pentose dissolved in 250 milliliters of water to the roots of the
plants, wherein the pentose is D-ribose, and whereby the
hardiness and growth of the plants is enhanced.

The sole rejection
1
before us for review is the Examiner’s rejection of
claims 24-25, 27, 29-30, 32-33, 35-36, and 40-42
2
under 35 U.S.C. § 103(a)
as unpatentable over Shin et al. (US 5,459,121, issued Oct. 17, 1995).
I.
Issue
The Examiner finds that Shin discloses a method of treating a plant
with xylitol (Ans. 4), where “it is clear that administration of xylitol converts
to D-ribose in vivo making it obvious that the method of treating a plant with
xylitol will readily convert to D-ribose in vivo and ribose is providing the
treatment to the plant” (id. at 7.)
Appellants contend that the passage in the Specification cited by the
Examiner “fails to establish any predictability for using ribose as an osmo-
adjusting solute for reducing plant water loss” (App. Br. 6).

1
The rejection of claims 26, 31, 34, 37 and 43 under 35 U.S.C. § 112, first
paragraph is withdrawn due to cancellation of the claims (Ans. 3).
2
Claims 1-23, 26, 28, 31, 34, 37-39 and 43 are canceled (App. Br. 2 and
Ans. 2).
Appeal 2011-006319
Application 10/147,100

3
The issue presented is: Does the evidence of record support the
Examiner’s conclusion that Shin renders obvious the claimed use of D-
ribose?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. Shin discloses “[a] method for reducing plant water loss by
closing stomatal openings and reducing the transpiration rate” using “a
water loss reducing composition made of an osmo-adjusting solute such as
sorbitol or xylitol is applied to plants” that is “applied to the root zone”
(Shin, abstract) (emphasis added).
Analysis
The initial burden of presenting a prima facie case of obviousness
rests on the examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
On the record before us, we find that the Examiner has failed to point to
those facts or provide evidence which would reasonably support a prima
facie case of obviousness within the meaning of 35 U.S.C. § 103 as to the
claimed subject matter. The claims are limited to the use of a specific
compound, D-ribose, which is not described in Shin (see, e.g., FF1). Further,
there is no disclosure in Shin which would establish that xylitol metabolites
were known to be active for any purpose. The general statements by the
Examiner relating to the activity of xylitol metabolites do not rise to the
level of evidence necessary to establish that a person of ordinary skill in the
art would have known to substitute D-ribose for xylitol in a method for
treating plants.
Appeal 2011-006319
Application 10/147,100

4
Conclusion of Law
The preponderance of evidence on this record does not support the
Examiner’s conclusion that Shin renders the claims on appeal obvious.

SUMMARY
We reverse the rejection of claims 24-25, 27, 29-30, 32-33, 35-36, and
40-42 under 35 U.S.C. § 103(a) as unpatentable over Shin.

REVERSED

cdc