Ex Parte YamashitaDownload PDFBoard of Patent Appeals and InterferencesFeb 15, 201211040182 (B.P.A.I. Feb. 15, 2012) Copy Citation 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 3 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 4 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 hh Copy with citationCopy as parenthetical citation