Ex Parte Code

Board of Patent Appeals and Interferences

May 4, 2012

12012297 (B.P.A.I. May. 4, 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.
12/012,297 01/31/2008 Kenneth R. Code 617.004US1 2280
97462 7590 05/04/2012
Mark A. Litman & Associates, P.A.
7001 Cahill Road, Ste. 15A
Edina, MN 55439
EXAMINER
CHOI, FRANK I
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
05/04/2012 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 KENNETH R. CODE
__________

Appeal 2011-012804
Application 12/012,297
Technology Center 1600
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a process for reducing pest content in a land mass. The
Patent Examiner rejected the claims for obviousness. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
Appeal 2011-012804
Application 12/012,297

2
STATEMENT OF THE CASE
Claims 1-8 and 11-20 are on appeal. Claim 1 is representative and
reads as follows (paragraphing added):
1. A process for reducing the pest content in land mass comprising
providing molecular iodine into the land mass in a concentration in aqueous
material in the land mass of at least 10 parts per million,
the process comprising
applying a composition into or onto the land mass, the composition
comprising two distinct reactants as coated particles, at least one of the two
reactant particles may be independently coated with a soluble/dispersible
coating and the two reactants kept apart by the coating on or in the ground,
and
providing water on or in the ground after application of the coated
particles to cause the coating to disperse or dissolve and the water carrying
reactants together in or on the ground to cause the two reactants to react to
form molecular iodine to attack pests in the land mass.

The Examiner rejected claims 1-8 and 11-20 under 35 U.S.C. § 103(a)
as unpatentable over Basinger,1 Iodine,2 The Merck Index,3 Akiyama,4 and
Oda.5

1 William H. Basinger et al., Patent Application Publication US
2001/0019728, published Sept. 6, 2001.
2 Periodic Table of Elements: LANL, “Iodine,” Los Alamos Nat’l Lab.
Chemistry Division (2003), www.periodic.lanl.gov/elements/53.html,
accessed June 19, 2010.
3 Item 2659. Cupric Sulfate, THE MERCK INDEX 414, 11th ed. (1989)
4 Yohko Akiyama et al., US 5,162,057, issued Nov. 10, 1992.
5 Harunori Oda et al., JP 10-130014, published May, 19, 1998.
Appeal 2011-012804
Application 12/012,297

3

OBVIOUSNESS
The Issue
Appellant argues the rejection is in error for several reasons. (App.
Br. 12-15.) Appellant contends that “there is no disclosure by Basinger of
actually embedding reactive particles into the land mass” (id. at 12), and
“the majority of the molecular iodine provided in all of the compositions
actually suggested by Basinger are provided as solid molecular iodine, not a
reactive composition” (id. at 13.) According to Appellant, this deficiency
is not made up by Akiyama because Akiyama fails to separate the individual
reactants:
even though multiple ingredients are described within the capsules,
these are separate and distinct ingredients mixed together and they are
not separated FROM EACH OTHER by at least one individual
coating. The ingredients of Akiyama are combined for independent
use within single capsules. There is no prevention of reaction between
ingredients, but rather there is merely timed and CONTROLLED
release of the multiple ingredients which act independently. There is
no disclosure in any of the particulate coatings to protect against a
designed later reaction between separated components.

(Id. at 15.)

Findings of Fact
1. Basinger disclosed:
As used herein, the term “molecular iodine” includes both I2
and any composition or ionic iodine complex which comprises,
generates or releases I2. Preferably, the molecular iodine comprises I2,
Most preferably, the molecular iodine is I2.

(Basinger ¶34.)
Appeal 2011-012804
Application 12/012,297

4
2. Basinger’s Example 8 applied molecular iodine as a soil nematicide.
(Id. at 12-13.)
3. Akiyama described solid agrochemical preparations, such as granules,
that undergo rapid elution of active ingredients when they contact
water. The granules could include mixtures of ingredients.
(Akiyama, col. 5, ll. 21-49.)

Principles of Law
“The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not . . . resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies” in the cited references. In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967).

Analysis
Basinger described methods that included applying molecular iodine
to the soil to kill nematodes. (FF 2.) We agree with the Examiner that
Basinger broadly stated that the term “molecular iodine” includes both I2 and
any composition . . . which . . . generates . . . I2. (FF 1.) We agree with the
rejection’s finding that a “difference between Basinger et al. and the claimed
invention is that the Basinger et al. does not expressly disclose use of two
reactants in water to produce the iodine . . . .” (Ans. 6.) A difficulty with
the rejection is that there is no evidence that Basinger implicitly suggested
using two reactants to produce molecular iodine in its process,
notwithstanding its broad definition of “molecular iodine.” (See FF 1.) As
Appellant explains, Akiyama did describe granules containing multiple
ingredients, but not reactants. (FF 3.)
Appeal 2011-012804
Application 12/012,297

5
The rejection provides evidence that iodine preparation from
potassium iodide and copper sulfate was known. (Ans. 5, citing the “Iodine”
reference.) However, the rejection did not provide evidence that one of the
applied references taught or suggested applying two distinct reactants to soil,
nor was any scientific reasoning for the application of two distinct reactants
to soil in the place of a single reaction product provided. Thus, when the
rejection states “one of ordinary skill in the art would expect that the two
reactants can be copper sullfate [sic] and potassium iodide” (id. at 7), there is
no antecedent for “the” two reactants, and no evidence or reasoning
establishing that a person of ordinary skill would have been looking for two
reactants in the context of soil treatment.
The rejection is reversed because, on this record, the evidence does
not support a prima facie case for obviousness absent hindsight.

SUMMARY
We reverse the rejection of claims 1-8 and 11-20 under 35 U.S.C.
§ 103(a) as unpatentable over Basinger, Iodine, The Merck Index, Akiyama,
and Oda.

REVERSED

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