Ex parte MORRISON et al.

Board of Patent Appeals and Interferences

Feb 19, 1998

07868492 (B.P.A.I. Feb. 19, 1998)

Application for patent filed April 15, 1992. According to1
the appellants, this application is a continuation-in-part of
Application 07/617,030, filed November 21, 1990, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BRUCE J. MORRISON, DEAN B. MORRISON
and ADAM MORRISON
__________
Appeal No. 94-4173
Application 07/868,4921
__________
ON BRIEF
__________
Before WILLIAM F. SMITH, WEIFFENBACH and ELLIS, Administrative
Patent Judges.
ELLIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 8
through 16. Claim 17 is also pending, but was withdrawn from
consideration by the examiner in accordance with 37 CFR §
1.142(b).
Appeal No. 94-4173
Application 07/868,492
2
Claims 8 and 15 are illustrative of the subject matter on
appeal and read as follows:
8. A method of extending the life of a pesticidal
composition comprising a mixture of dichlorvos and chlorpyrifos,
said method comprising subjecting said mixture to microwave
radiation to extend life of the pesticidal composition.
15. An aqueous pesticidal composition having improved
residual pesticidal protection prepared by the method of Claim 8.
The references relied on by the examiner are:
Sears 4,514,960 May 07, 1985
Allan et al. (Allan) 4,554,155 Nov. 19, 1985
Wilson 4,707,355 Nov. 17, 1987
Claims 8 through 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Sears in view of Wilson and Allan.
Claims 15 and 16 stand rejected under 35 U.S.C. § 102(b) as
unpatentable over Wilson.
We reverse both rejections.
Rejection under 35 U.S.C. § 103
It is well settled that the examiner has the initial burden
of establishing a prima facie case of obviousness. In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976). This burden can be satisfied when the examiner
provides objective evidence that some teaching or suggestion in
Appeal No. 94-4173
Application 07/868,492
We direct attention to the examiner’s conclusion on p. 52
of the final rejection (Paper No. 6) that
[i]t would have been obvious to one of ordinary skill in the
art to modify Sears with the teachings of Wilson and allan
[sic, Allan] et al. since Sears teaches a bait as suggested
by Wilson who teaches the specific organophophates [sic,
organophosphates] suggested by Sears and Allan et al.
suggests pva may be used with pesticides including
chlorpyrifos and dichlorvos.
3
the applied prior art, or knowledge generally available, would
have led one of ordinary skill in the art to combine the
teachings of the references and to produce the claimed subject
matter. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). The teaching or suggestion must be in the
prior art, and not in the applicants’ disclosure. In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1532 (Fed. Cir.
1988). In the case before us, the examiner has not provided a
single, coherent reason, based on the applied references, or2
general knowledge, as to why it would have been obvious to one of
ordinary skill in the art to arrive at the claimed method of
extending the life of a pesticidal composition by microwaving a
mixture of dichlorvos and chlorpyrifos. Accordingly, the
rejection is reversed.
Appeal No. 94-4173
Application 07/868,492
4
Rejection under 35 U.S.C. § 102(b)
According to the examiner, “Wilson (‘355) discloses the
structural limitations of the instant claims. Namely dichlorvos
and chlorpyrifos (column 3, lines 57-68) mixture.” Final
rejection (Paper No. 6), p. 4. We recognize that when the
claimed and prior art products appear to be “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434
(CCPA 1977). Here, however, we do not find that the composition
disclosed by Wilson is made by the same or substantially the same
method as the claimed composition; nor does the examiner contend
that they are. Rather, what we find on this record is an
assertion by the examiner that the composition in representative
claim 15 has the same basic components as the composition
described by Wilson. Final rejection, p. 4. However, the
examiner has not provided any explanation as to the basis for his
finding. Without an explanation or reasons, it is improper for
the to shift the burden to the appellants to establish that the
“product produced by microwave radiation produces a structurally
Appeal No. 94-4173
Application 07/868,492
We do, however, direct the examiner’s attention to the3
statement in the Reply Brief that
[t]his is the first time that the Examiner has criticized
Appellant’s [sic, Appellants’] evidence in support of
patentability. This “sandbagging” approach to examination
is clearly improper, grossly unfair to Appellant [sic,
Appellants], and should not be tolerated.
We agree.
5
unique pesticidal composition which is unlike a simple mixture of
dichlorvos and chlorpyrifos”; i.e., that there is a difference
between the claimed and prior art products. Answer, p. 5.
Inherency must be based on inevitability, and not speculation.
In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)
(“[i]nherency, however may not be established by probabilities or
possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient”).
Accordingly, the rejection is reversed.
Since the examiner has not discharged his responsibility of
establishing a prima facie case of (i) obviousness for the method
of claims 8 through 14, or (ii) anticipation of the compositions
of claims 15 and 16, we need not consider the experimental data
in Tables 1-3 of the specification relied on by the appellants
for purposes of rebuttal.3
Appeal No. 94-4173
Application 07/868,492
6
Accordingly, the decision of the examiner is reversed.
REVERSED
)
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CAMERON WEIFFENBACH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOAN ELLIS )
Administrative Patent Judge )
Appeal No. 94-4173
Application 07/868,492
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