Ex Parte Marshall et al

Patent Trial and Appeal Board

Mar 19, 2018

13444272 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/444,272 04/11/2012
26158 7590 03/21/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Jerry Wayne Marshall
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
R60999 2670US.l (0355.2) 1004
EXAMINER
FELTON, MICHAEL J
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
03/21/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY WAYNE MARSHALL,
SERBAN C. MOLDOVEANU, MICHAEL F. DA VIS,
and MARVIN GLENN RIDDICK
Appeal2017-005799
Application 13/444,272
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal the final rejections of claims 1, 2, 4, 7, 8, and 10-
21under35 U.S.C. § 134(a). Claims 3, 5, 6, and 9, the other claims pending
in this application, stand withdrawn from consideration by the Examiner.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
Appellants' invention relates to a method of treating a plant or a
portion thereof to modify the amount of certain compounds present in the
1 Appellants identify the real party in interest as "R. J. Reynolds Tobacco
Company." (Appeal Br. 1).
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Application 13/444,272
plant (Spec. 3 :26-27). In particular, the method relates to treating a tobacco
plant with one or more probiotics. Id. at 4:27-28.
Claim 1 is illustrative (emphasis added):
1. A method of modifj;ing amino acid and tobacco-specific
nitrosamine content in a tobacco material, comprising
contacting a tobacco plant component with one or more
probiotics, wherein the one or more probiotics include at least
one probiotic selected from the genus lactobacillus.
Appeal Br. 17 (Claims App.).
Appellants appeal the following rejections:
I. Claims 1, 2, 4, 8, and 10-21 as unpatentable under 35 U.S.C.
§ 103(a) over Kahn, 2 in view of Visser3 (Final Act. 5---6; Ans.
2-3). 4
II. Claim 7 as unpatentable under 35 U.S.C. § 103(a) over Kahn,
Visser, and further in view of Fravel5 (Final Act. 6-7; Ans. 3-
4).
2 Kahn, Plant Diseases 74 (Gyan Publishing House 2001).
3 Visser et al., Antagonism of Lactic Acid Bacteria against Phytopathogenic
Bacteria, 52 Applied and Environmental Microbiology 552-555 (1986)
(hereinafter "Visser").
4 The Examiner omitted claim 4 from the statement of rejection (I) (Ans. 2).
However, we find this to be harmless error because the Examiner includes
grounds for rejecting claim 4. Id. Accordingly, it is clear from the record
that the subject matter of claim 4 was inadvertently omitted from the
statement of rejection (I).
5 Deborah R. Fravel & Harvey W. Spurr, Jr., Biocontrol of Tobacco Brown-
Spot disease by Bacillus cereus subsp. mycoides in a Controlled
Environment, 67 Phytopathology 930-932 (July 1977) (hereinafter
"Fravel").
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Application 13/444,272
Appellants' arguments focus on the subject matter of independent
claim 1 of rejection (I) (Appeal Br. 2-14; Reply Br. 1-3). Any claims not
argued separately with regard to rejections (I) and (II) will stand or fall with
our analysis regarding claim 1.
FINDINGS OF FACT & ANALYSIS
The Examiner's findings and conclusions regarding Kahn and Visser
are located on pages 5---6 of the Final Action dated May 5, 2016 and pages
2-3 of the Answer dated December 22, 2016.
The Examiner finds that Kahn "discloses spraying tobacco material
(i.e.[,] live plants) with one or more pro biotic (i.e.[,] bacteria)" and that
"'spraying of peanut or tobacco plants with Pseudomonas cepacia or
Bacillus sp. reduced Cercospora and Altemaria leaf spot on these hosts,
respectively"' (Ans. 2 (citing Kahn 74 (italics added))). The Examiner
further finds that, although Kahn teaches "a wide range of specific bacteria
for use in treating plants," the primary reference does not explicitly disclose
Lactobacillus acidophilus (Ans. 2).
The Examiner instead relies upon Visser for teaching that a variety of
lactic acid bacteria are useful in preventing plant diseases. Id.
The Examiner determines that it would have been obvious for the
ordinary skilled artisan to modify Kahn's method for plant disease control in
tobacco plants "with other bacteria such as one of [Visser' s] lactic acid
bacteria." Id. The Examiner further determines that, although Visser
discloses several Lactobacillus bacterial species, "it would have been
obvious to use any of the lactic acid bacteria, including [L]actobacillus
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Application 13/444,272
acidophilus[,] because there are a limited number of possible species." Id.
(italics added).
Appellants argue that Kahn and Visser "are not 'analogous art' to the
pending claims, as these references focus on preventing plant diseases by
treating growing plants to decrease pathogens associated therewith, whereas
the pending claims relate to modifj;ing the chemical makeup of growing
plants" (Appeal Br. 4 (emphasis added)). Appellants further argue that the
applied prior art is not reasonably pertinent to the Specification's concern
with "modifying the content compounds within a tobacco plant, e.g.,
decreasing the content of certain such compounds (including, but not limited
to, amino acids and tobacco-specific nitrosamines)." Id. at 5.
Appellants' arguments are not persuasive.
As we understand it, the Examiner's rejection is based on the
determination that if the teachings of Kahn and Visser had been combined,
for the purpose of to controlling plant disease, a method identical to the
claimed invention would have resulted (Ans. 2). Accordingly, because the
method of Kahn as modified by Visser is identical to the claimed method,
the intended result of modifying amino acid and tobacco-specific
nitrosamine content in a tobacco material must flow naturally from
practicing the method of the prior art. Ex parte Obiaya, 227 USPQ 58, 60
(BPAI 1985). The Examiner's finding that the combined teachings of Kahn
and Visser teach the claimed process (i.e., the same process) supports the
determination that the amino acid and tobacco-specific nitrosamine content
modification would have occurred in Kahn's tobacco plant as modified by
Visser (Ans. 7). We, therefore, agree with the Examiner that the references
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are from the same field of endeavor as the claimed invention, which is the
field of contacting a tobacco plant with one or more probiotics. Id. at 4--5.
Appellants argue that, unlike Kahn, Visser is "directed primarily to
bean plants" and "biological control of bacterial plant disease" (Appeal Br.
7-8). Appellants further argue that "[ o ]ne of skill in the art recognizes that
fungi . . . and bacteria ... are fundamentally different types of pathogens
and would have no motivation, in treating the fungal infections disclosed in
the Kahn reference, to tum to bacteria disclosed to be effective for treating
bacterial infections (as disclosed in the Visser reference)." Id. at 8.
Appellants' arguments are not persuasive.
The Examiner has made findings that Kahn provides sufficient
motivation to combine Kahn's and Visser's teachings (Ans. 5). As the
Examiner found, Kahn explicitly discloses that "[i]n several cases, spraying
leaf surfaces with preparations of saprophytic bacteria, or with avirulent
strains of pathogenic bacteria, has reduced considerably the number of
infections caused by bacteria[] and fungal pathogens" (Kahn 7 4 (emphasis
added); see Ans. 5). 6
Based on Kahn's teachings, a person of ordinary skill in the art would
have reasonably inferred that Visser' s lactic acid bacteria may be effective in
6 We are not persuaded by Appellants' arguments that Kahn's "'several
cases'" language would have suggested to the ordinary skilled artisan that
such disclosure was "limited to the specific combinations referenced
therein" (Reply Br. 2). Disclosed examples do not constitute a teaching
away from a broader disclosure. In re Susi, 440 F.2d 442, 446 n.3 (CCP A
1971 ). Thus, it is immaterial that Kahn only exemplifies Pseudomonas
cepacia or Bacillus sp. that inhibit fungal pathogens in tobacco plants (see
Reply Br. 3).
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Application 13/444,272
treating tobacco plants afflicted with a disease caused by fungal pathogens.
That is because "[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
4 21 (2 007). 7 Thus, Appellants' arguments have not identified reversible
error in the Examiner's determination that Kahn would have provided
sufficient motivation for the ordinary skilled artisan to tum to Visser' s
lactobacillus bacteria.
Appellants argue that the teachings of the applied prior art would not
have provided the ordinary skilled artisan a reasonable expectation of
success (Appeal Br. 9-10). In particular, Appellants argue that Visser
neither teaches nor suggests that the disclosed lactic acid bacteria would
have any effect on tobacco plants or would have been effective against
pathogens in tobacco plants. Id. at 10.
"[W]here a skilled artisan merely pursues 'known options' from a
'finite number of identified, predictable solutions,' obviousness under § 103
7 Appellants argue that Visser's haricot beans are of a different genus and
species than Kahn's tobacco plants (Reply Br. 2-3). Appellants further
argue that "[t]he Examiner has pointed to nothing to teach or suggest that
plants that differ in genus and species, but which are from the same family
would be expected to exhibit similar behavior with respect to bacterial
treatment." Id. at 3. However, Appellants' arguments are unsupported by
any persuasive rationale or credible evidence that plants from different
genus and species, yet from the same family, would not have been expected
to respond similarly to bacterial treatment. See In re Best, 562 F.2d 1252,
1255 ( CCP A 1977) (explaining that "[ w ]here, as here, the claimed and prior
art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.").
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arises." In re Kubin, 561F.3d1351, 1359 (Fed. Cir. 2009) (quoting KSR,
550 U.S. at 421 ).
As set forth above, Kahn teaches reducing infections caused by
bacteria and fungal pathogens by contacting leaf surfaces with bacterial
preparations (see Kahn 7 4 ). Furthermore, we find that the Examiner's
rejection is based on findings regarding the knowledge of one skilled in the
art presented with 12 specific lactic acid bacteria species known to reduce
plant disease incidence as disclosed by Visser (see Visser 552; Tables 1, 2;
see also Ans. 2, 6)). Accordingly, Visser's finite list of lactic acid bacteria
species, including Lactobacillus acidophilus, would have suggested the
modification of Kahn. Therefore, we find that the preponderance of the
evidence of record favors the Examiner's obviousness conclusion.
Appellants argue that "one of skill in the art could arrive at the
presently claimed method based only on impermissible hindsight, using the
present application as a guide" (Appeal Br. 11 ).
Appellants' argument is not persuasive.
The Examiner's stated rejection is not based on impermissible
hindsight, but rather the teachings of the prior art, as detailed above (see,
also Ans. 2-7).
Appellants argue that the claimed method provides amino acid and
tobacco-specific nitrosamine reductions, which are "surprising and
unexpected with respect to the disclosures of the Kahn and Visser
references, as there is nothing in these references to teach or suggest such
results" (Appeal Br. 13; see also id. at 4).
Appellants' argument is not persuasive.
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When the Examiner establishes a prima facie case of obviousness,
"[t]he burden then shifts to the applicant, who then can present arguments
and/or data to show that what appears to be obvious, is not in fact that, when
the invention is looked at as a whole." In re Dillon, 919 F.2d 688, 696 (Fed.
Cir. 1990) (en bane). Thus, "the burden of showing unexpected results rests
on [the party] who asserts them." In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972).
Appellants have not met their burden of showing unexpected results
because the arguments are not commensurate in scope with the claims.
Appellants' arguments are limited only to a purportedly unexpected "notable
reduction in the content of various compounds within the tobacco material"
(Appeal Br. 12; see also id. at 4), whereas claim 1 is directed to any
modification (e.g., an increase or a decrease) of amino acid and tobacco-
specific nitrosamine content. Accordingly, we agree with the Examiner that
"increases in amino acids and tobacco specific nitrosamine content are
encompassed by the claim limitation, but are outside the scope of
unexpected results argued" (Ans. 7).
Moreover, Appellants only direct us to pages 6 and 9 of the
Specification as allegedly showing unexpected reductions in TSNAs and
asparagine (App. Br. 13). Our review of pages 6 and 9 amount to mere
statements of the results with no evidence or explanation of the evidence to
support the stated results (Spec. 6, 8-9). In other words, Appellants have not
provided sufficient evidence to support the argument of unexpected results.
Therefore, on this record, we affirm the Examiner's§ 103 rejection of
claims 1, 2, 4, 8, and 10-21 over Kahn and Visser.
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Appellants argue that the Examiner's reliance upon Fravel fails to
remedy the deficiencies of Kahn and Visser (Appeal Br. 14). Because we
agree with the Examiner that Appellants have not identified any such
deficiencies, we further affirm the Examiner's§ 103 rejection of claim 7
over Kahn, Visser, and Fravel.
CONCLUSION
Accordingly, on this record and for the above reasons, we sustain the
35 U.S.C. § 103 rejections (I) and (II) of claims 1, 2, 4, 7, 8, and 10-21 over
the cited prior art.
DECISION
The Examiner's§ 103 rejections are 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)(l )(iv).
AFFIRMED
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