Ex Parte McIntyre et al

Patent Trial and Appeal Board

Jun 27, 2016

12932640 (P.T.A.B. Jun. 27, 2016)

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.
12/932,640 03/02/2011 Gavin McIntyre 3913
7590 06/27/2016
Francis C. Hand, Esq.
c/o Carella, Byrne, Cecchi, Olstein,
Brody and Agnello, P.C
5 Becker Farm Road
Roseland, NJ 07068
EXAMINER
PYLA, EVELYN Y
ART UNIT PAPER NUMBER
1651
MAIL DATE DELIVERY MODE
06/27/2016 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 GAVIN MCINTYRE, ALLISON POETZSCH, SUE VAN HOOK,
and DANIEL FLAGG
__________

Appeal 2014-005918
Application 12/932,640
Technology Center 1600
__________

Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants have requested rehearing of the decision entered May 24,
2016 (“Decision”). The Decision affirmed the Examiner’s rejection of
claims 1–10 and 14–16 under 35 U.S.C. § 103(a) as being unpatentable over
Kalisz,1 Armstrong,2 and Angelini.3

1 Kalisz et al., US 2011/0265688 A1, published Nov. 3, 2011.
2 Armstrong et al., US 5,149,715, issued Sept. 22, 1992.
3 P. Angelini, et al., Effect of antimicrobial activity of Melaleuca alternifolia
essential oil on antagonistic potential of Pleurotus species against
Trichoderma harzianum in dual culture, World J. Microbiol. Biotechnol.,
24:197–202 (2008).
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A request for rehearing “must state with particularity the points [of
law or fact] believed to have been misapprehended or overlooked by the
Board,” and must comply with 37 C.F.R. § 41.52(a)(1). We have considered
Appellants’ Request for Rehearing on the merits but are not persuaded that it
shows that we misapprehended or overlooked any relevant issues of fact or
law in reaching the conclusions set out in the Decision. The request for
rehearing is denied.
DISCUSSION
In the Request for Rehearing, Appellants argue that our Decision did
not consider that the Examiner’s rejection “made no fact-findings with
respect to claim 6 other than to acknowledge that none of Kalisz, Angelini
and Armstrong teaches the claimed method” and that there was “no evidence
to support” the Examiner’s position that it would have been prima facie
obvious to “remove any excess plant essential oil so as to prevent
oversaturation of the growth substrate.” (Req. Reh’g 2.) The Request for
Rehearing further argues that our Decision did not consider that the
Examiner “has cited to no teaching, suggestion or incentive in support of the
conclusionary statement that it would be obvious to de-volatilize an added
plant essential oil emulsion from the liquid aggregate 32.” (Id. 3–4.)
These arguments are unpersuasive. In the Decision, we expressly
noted that Appellants’ disagreement with the rejection then, as now, was that
the Examiner offered “‘no evidence’ . . . to support the position that it would
have been obvious ‘to remove excess plant essential oil prior to fungal
inoculation to prevent oversaturation and any inhibitory effects that the plant
essential oil may have on the desired fungal inoculum.’ (Appeal Br. 7–8.)”
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(Decision 9–10). As we stated in our Decision regarding the limitations of
“dependent claims 6, 10, 15, and 16 concerning removal or deactivation of
the emulsion prior to addition of the fungal inoculant,” the Examiner’s
findings regarding removal were grounded in common sense “to prevent
oversaturation or any inhibitory effects that the plant essential oil emulsion
may have on the desired fungal inoculum. (Final Action 12–13.)” (Decision
5, 10.)
As we understand the Request for Rehearing, Appellants cite In re
Fine, 837 F.2d 1071 (Fed. Cir. 1988); Ashland Oil, Inc. v Delta Resins and
Refractories, Inc., 776 F.2d 281 (Fed. Cir. 1985); ACS Hospital Systems,
Inc. v Montefiore Hospital, 732 F.2d 1572 (Fed. Cir. 1984), and Pentec, Inc.
v. Graphic Controls Corp., 776 F.2d 309 (Fed. Cir. 1985), to show that our
decision misapprehended the controlling law. (See Req. Reh’g 1–2.) These
are the same cases Appellants cited in their Appeal brief (Appeal Br. 4), and
here, as in our Decision, we do not find these cases controlling. As noted in
the Decision, the law does not require explicit or express teaching in a
reference to support a conclusion of obviousness; common sense can suffice.
(Decision 10 (citing Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d
1324, 1328–29 (Fed. Cir. 2009)), and KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007).)
The Supreme Court made clear in KSR, a case post-dating Appellants’
cited cases, that “[t]he obviousness analysis cannot be confined by . . .
overemphasis on the importance of published articles and the explicit
content of issued patents.” KSR, 550 U.S. at 419. Indeed, the Supreme
Court noted that “the [obviousness] analysis need not seek out precise
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teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418.
The Examiner’s common sense reasoning as to the obviousness of
removing or de-volatizing the essential oil emulsion stands unrebutted by
Appellants. Appellants instead contend that none of the cited references
teach oversaturation is a problem. (Req. Reh’g 3.) Appellants have not,
however, directed us to where this specific new argument was made in the
Appeal or Reply briefs such that our Decision may have overlooked or
misapprehended it. To the extent Appellants are contending that a lack of
evidence countermands the Examiner’s common sense argument, we
disagree. In particular, Appellants are incorrect in their factual assessment
of the cited prior art. Both Armstrong and Angelini teach that oversaturation
with essential oil can inhibit mycelium growth of the desired fungal
inoculum. (Armstrong 6:2–12 (Ex. 2 (noting that at concentrations of
cinnamon oil of 30, 50 and 100 ppm, Verticillium growth was inhibited but
so was A. bisporus, whereas at 20 ppm Verticillium growth was inhibited but
A. bisporus growth was not); Angelini 200 (noting that at maximum
concentrations of essential oil, growth of all the Pleurotus species tested was
inhibited in addition to the T. harzianum strains, whereas Pleurotus species
mycelial growth was not inhibited although T. harzianum was at lower
concentrations).)
Appellants also argue “the Examiner has not explained how an
essential oil emulsion can be volatilized from a liquid aggregate formed
from a mixture of finely ground aggregate 34 and a liquid 36 without
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volatilizing the liquid 36 from the aggregate thereby destroying the liquid
aggregate 34 for the purpose intended for the liquid aggregate 34.” (Req.
Reh’g 4.) Here again, Appellants have not directed us to where this specific
new argument was made in the Appeal or Reply briefs such that our
Decision may have overlooked or misapprehended it. Nor have Appellants
explained why this argument falls within the exceptions in 37 C.F.R.
§ 41.52(a)(2) through (a)(4), which permit submission of new argument in
rehearing requests. We are, therefore, not persuaded that Appellants have
adequately explained why it would be appropriate to consider this new
argument at this time.
While Appellants disagree with the ultimate conclusion reached in the
Decision regarding claims 6, 10, 15, and 16, Appellants have not sustained
their burden of showing that the Board misapprehended or overlooked
relevant points of fact or law.
DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our decision entered May 24, 2016.
We deny Appellants’ request for relief from that Decision.

DENIED