Ex Parte Yamashita

Board of Patent Appeals and Interferences

Feb 15, 2012

11040182 (B.P.A.I. Feb. 15, 2012)

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.
11/040,182 01/20/2005 Thomas T. Yamashita YAMA-008CON 6186
24353 7590 02/15/2012
BOZICEVIC, FIELD & FRANCIS LLP
1900 UNIVERSITY AVENUE
SUITE 200
EAST PALO ALTO, CA 94303
EXAMINER
WILLIAMS, MONICA L
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
02/15/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS T. YAMASHITA
____________________

Appeal 2010-000723
Application 11/040,182
Technology Center 3600
____________________

Before: CHARLES N. GREENHUT, WILLIAM V. SAINDON, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000723
Application 11/040,182
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. A composition comprising a plurality of distinct microbial
species, wherein all microbial species in said composition:
(a) are antagonistic against a plurality of microbial pathogens;
(b) are non-pathogenic towards plants and animals;
(c) are tolerant of high temperatures;
(d) grow rapidly; and
(e) proliferate on a complex substrate.

The Examiner relies upon the following prior art references:
Hoitink
Muir
Novitski
Rheaume
US 4,642,131
US 4,952,229
US 5,264,210
US 5,560,909
Feb. 10, 1987
Aug. 28, 1990
Nov. 23, 1993
Oct. 1, 1996

The Examiner makes the following rejections under 35 U.S.C. § 103(a):
I. Claims 1, 2, 6-9, and 13-20 over Muir.
II. Claims 3 and 5 over Muir and Hoitink.
III. Claim 4 over Muir, Rheaume, and Novitski.
IV. Claims 10-12 over Muir, Hoitink, Rheaume, and Novitski.

SUMMARY OF DECISION
We REVERSE.

OPINION
The independent claims each require, in effect, a composition of
microbial species, wherein all of the microbial species in the composition
Appeal 2010-000723
Application 11/040,182
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have certain traits (a)-(e)1. The Examiner’s rejection is premised on the
teachings of Muir, which describes a composition comprising some
microbial species having traits (a)-(e) but some microbial species that do
not. See Ans. 4-5. The Examiner found that Muir teaches, “the number and
type of microorganisms may be varied to meet individual soil conditions.”
Ans. 5 (quoting Muir, col. 2, ll. 39-41). On these facts, the Examiner
concluded that it would have been obvious to “choose different
combinations of the disclosed microbial species with known characteristics
to treat known conditions and produce plant productivity and quality.” Ans.
5 (citing Muir, col. 2, ll. 37-41) (discussing the microorganisms as “capable
of a broad range of beneficial activities” and the types and number of which
are “vari[able] to meet individual soil conditions”).
A proper conclusion of obvious requires the Examiner to identify
“some articulated reasoning with some rational underpinning” to support the
conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007) (holding a rigid insistence on teaching, suggestion, or motivation
[TSM] is incompatible with its precedent concerning obviousness)).
While Muir may suggest that the combination of microbial species
may be varied, neither Muir nor the Examiner provide any basis to conclude
it would have been obvious to select, in particular, only those microbial
species having traits (a)-(e). As Appellant points out (App. Br. 10), Muir
does not discuss selecting only microbial species having traits (a)-(e). The
Examiner reasons that it is obvious to use known microbial species with

1 Alternatively referred to by Appellant and the Examiner as
“characteristics,” “elements,” or “properties.” See App. Br. passim; Ans.
passim.
Appeal 2010-000723
Application 11/040,182
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known characteristics to treat known conditions. Ans. 5. However, the
Examiner does not provide any evidence or technical analysis explaining
that traits (a)-(e) were known characteristics or that these characteristics
treated any known condition, such as to explain why it would have been
obvious to select only microbial species based on their possession of traits
(a)-(e). Without evidence or technical reasoning addressing why it would
have been obvious to select only microbial species based on their possession
of traits (a)-(e), we cannot sustain the Examiner’s conclusion of
obviousness. Each of the Examiner’s rejections relies on this unsupported
conclusion and the Examiner makes no findings with respect to Hoitink,
Rheaume, or Novitski that would remedy this deficiency.

DECISION
For the above reasons, we reverse the Examiner’s decision regarding
claims 1-20.

REVERSED

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