Ex parte TESHIMA et al.

Board of Patent Appeals and Interferences

Jun 26, 1998

08056882 (B.P.A.I. Jun. 26, 1998)

Application for patent filed May 5, 1993.1
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not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HAYATO TESHIMA and TAKAAKI ITOH
__________
Appeal No. 95-2088
Application 08/056,8821
__________
HEARD: JUNE 10, 1998
__________
Before RONALD H. SMITH, METZ and ELLIS, Administrative Patent
Judges.
ELLIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 6,
16, 17, 22 and 25 through 31. Claims 23 and 24 have been
withdrawn from consideration by the examiner pursuant to 37
Appeal No. 95-2088
Application 08/056,882
2
CFR § 1.141(b). Claims 1 through 5, 7 through 15 and 18
through 21 have been canceled.
As a preliminary matter we note the appellants’ statement
on p. 3 of the Brief that all the claims stand or fall
together. 37 CFR § 1.192(c)(5)(1994). Accordingly, for
purposes of this appeal, we will consider the issues as they
apply to representative claim 6.
Claim 6 reads as follows:
6. A method for controlling termites, comprising the
step of applying to soil where termites are alive a termite
controlling effective amount of a composition comprising:
(a) a termite controlling effective amount of an active
agent comprising:
(i) at least one pyrethroid compound selected from
the group consisting of "-cyano-3-phenoxybenzyl 2-(4-
chlorophenyl)-3-methylbutyrate, 3-phenoxybenzyl 3-(2,2-
dihalovinyl)-2,2-dimethylcyclopropanecarboxylate and "-cyano-3
phenoxybenzyl 3-(2,2-dihalovinyl)-2,2-
dimethylcyclopropanecarboxylate; and
(ii) N-(2-ethylhexyl)bicyclo [2.2.1]hept-5-en-2,3-
dicarboximide; and
(b) an inert carrier.
The references relied on by the examiner are:
Ito et al. (Ito) 4,276,308 Jun. 30,
1981
Appeal No. 95-2088
Application 08/056,882
We note that the appellant’s Reply Brief (Paper No. 13)2
was found to be improper by the examiner for failing to
specifically point out the new point(s) of argument in the
Answer. Thus, the examiner refused entry into the record.
Paper No. 15. Accordingly, our decision is based exclusively
on the written record as it appears in the appellants’ Brief
(Paper No. 11) and the examiner’s Answer (Paper No. 12).
3
Kimura et al. (Kimura) 63-270610 Nov. 08,
1988
(Japanese Kokai)
Joyce et al. (Joyce), Abstract No. 144583j “Synergism of
Pyrethroids by Piperonyl Butoxide and MGK-264 against
Heliothis virescens, Spodoptera exigua, and Spodoptera
frugiperda (Lepidoptera: Noctuidae)” Chemical Abstracts, vol.
109, p. 270 (1988).
Claims 6, 16, 17, 22 and 25 through 31 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Ito, Kimura
and Joyce.
We have carefully considered the arguments advanced by
both the appellants and the examiner and we find ourselves in
complete agreement with the examiner’s findings of fact,
conclusions of law and rebuttals to argument. Accordingly,2
we affirm the examiner’s rejection and adopt the examiner’s
position as our own. We add the following comments only for
clarification.
Appeal No. 95-2088
Application 08/056,882
4
It is well established that the PTO bears the initial
burden of establishing a prima facie case of obviousness. In
re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988); In re Piasecki, 745 F.2d 1468, 1472, 223, USPQ 785, 788
(Fed. Cir. 1984). The examiner must establish that the
teachings of the applied prior art would have suggested the
present method for controlling termites to a person having
ordinary skill in the art, and that such persons would have
had a reasonable expectation of success of performing said
method. In re O’Farrell, 853 F.2d 894, 903-4, 7 USPQ2d 1673,
1681 (Fed. Cir. 1988). This suggestion need not be expressly
stated in any of the references but, rather, the test of
obviousness is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.
In re Betz, 418 F.2d 942, 947, 163 USPQ 691, 695 (CCPA 1969).
Based on the collective teachings of the applied prior
art, and of Kimura, in particular, we agree with the examiner
that it would have been obvious to one of ordinary skill in
the art to control termites by applying a composition
comprising a known wood pest controlling agent, such as "-
Appeal No. 95-2088
Application 08/056,882
5
cyano-3-phenoxybenzyl 2-(4-chlorophenyl)-3-methylbutyrate
(a.k.a., fenvalerate), and a known efficacy enhancer of wood
pest-controlling agents, such as N-(2-
ethylhexyl)bicyclo[2.2.1]hept-5-en-2,3-dicarboximide (a.k.a.,
MGK-264), to the soil. Since both Ito and Kimura teach the
use of a composition comprising fenvalerate and an efficacy
enhancer to control termites in the soil, and Kimura further
teaches the use of the efficacy enhancer MGK-264,
specifically, we concur with the examiner that it would have
been obvious to one of ordinary skill in the art to arrive at
the claimed method. It is considered obvious to employ two
known compounds for their known and expected results. In re
Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Throughout the Brief, we find that the appellants’
response to the examiner’s rejection has primarily focused on
the shortcomings of the individual references and has not been
directed to the combined teachings of the applied prior art.
The appellants argue, individually, that Ito, Kimura and Joyce
do not teach a method of applying a combination of fenvalerate
Appeal No. 95-2088
Application 08/056,882
6
and MGK-264, to soil containing live termites. Brief, pp. 4-
5. To that end, we point out that the references were relied
on in combination and that the appellants cannot demonstrate
nonobviousness by attacking the references individually. In
re Betz, supra; In re Young, 403 F.2d 754, 757, 159 USPQ 725,
728 (CCPA 1968).
In addition, we find that the appellants have
mischaracterized the teachings of Kimura. According to the
appellants Kimura “does not teach or suggest the combination
of fenvalerate and MGK 264, much less a method as recited in
claim 6 whereby a composition containing fenvalerate and MGK
264 is applied to soil where termites are alive.” Brief, p.
4, last para. We disagree. As discussed above, Kimura
describes his invention as being directed to a composition
comprising a wood pest-controlling agent and an efficacy
enhancer. Kimura, p. 3. Kimura points to a limited list of
efficacy enhancers, which includes the well-known enhancer,
MGK-264. Kimura teaches that the disclosed efficacy enhancers
will work effectively with “any insecticides belonging to
pyrethroid compounds [emphasis added].” Kimura, p. 6, lines
Appeal No. 95-2088
Application 08/056,882
7
1-2. Kimura further teaches that fenvalerate is one of those
pyrethroid compounds whose activity will be enhanced. Thus,
we do not find from the facts before us that those of ordinary
skill in the art would need to pick and choose from two broad
genera of compounds to arrive at the present method. Rather,
we find Kimura teaches that all combinations will work. That
is, Kimura states that each of the disclosed efficacy
enhancers will increase the effects of each of the wood pest-
controlling agents listed. From such teachings, it is
reasonable to conclude that the claimed method of using the
known wood pest-controlling agent, fenvalerate, in combination
with a known efficacy enhancer of wood pest- controlling
agents, MGK-264, would have been obvious to one of ordinary
skill in the art at the time the application was filed.
As to the appellants’ contention that Kimura does not
teach the application of the compositions disclosed therein to
soil containing live termites, we agree with the examiner that
this claim limitation is clearly suggested by the reference.
See Kimura, p. 15, the penultimate sentence.
After a prima facie case of obviousness under 35 U.S.C.
Appeal No. 95-2088
Application 08/056,882
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§ 103 has been established by the examiner, the burden of
going forward shifts to the appellants. In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). In
response, the appellants can submit objective evidence of
nonobviousness. Such evidence can include unexpected results,
commercial success, long-felt need in the industry, etc.
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966).
In the case before us, the appellants urge that they
achieved unexpectedly superior results when a composition
comprising fenvalerate and MGK-264 is added to soil containing
live termites. Brief, pp. 6-7. The appellants rely on Table
1 in the specification to support their position. We find
this argument unpersuasive for several reasons.
First, we point out that representative claim 6 does not
require any specific mortality rate for termites in the
treated
soil. Rather, the claim only requires the application of an
“effective amount” of a composition comprising fenvalerate and
MGK-264. The applied prior art demonstrates that “effective”
Appeal No. 95-2088
Application 08/056,882
9
amounts of the claimed compounds were well known in the art at
the time the application was filed.
Second, for a showing of unexpected results to be
probative evidence of nonobviousness, the appellant must
establish (i) that there is a difference between the results
obtained for the claimed invention and those of the prior art,
and (ii) that the difference obtained is significant and would
not have been expected by a person having ordinary skill in
the art at the time the invention was made. In re Freeman,
474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973); In re
D'Ancicco, 439 F.2d 1244, 169 USPQ 303 (CCPA 1971). This the
appellants have not done.
An efficacy enhancer by definition is a compound which
enhances, or increases, the effectiveness of another compound.
Therefore, it is reasonable to conclude that those skilled in
the art would have expected that a compound known to increase
the effectiveness of termite-controlling agents, in general,
and of
fenvalerate, in particular, would result in an increased
mortality rate in termites when applied to the soil. We
Appeal No. 95-2088
Application 08/056,882
10
direct attention to the teachings of Kimura that compositions
comprising a wood pest-controlling agent and an efficacy
enhancer “exhibit extremely superior effects.” Kimura, p. 5,
lines 1-4. According to Kimura, such a composition is “much
superior in its controlling effect on termites and wood
borers, as well as in its preservative effect.” Id., para. 4.
Thus, in view of the teachings of Kimura, we find that one of
ordinary skill in the art would have expected that a
combination of fenvalerate and MGK-264 would increase the
mortality rate in termites when applied to the soil.
Accordingly, the decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
RONALD H. SMITH )
Administrative Patent Judge )
)
Appeal No. 95-2088
Application 08/056,882
11
)
) BOARD OF PATENT
ANDREW H. METZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOAN ELLIS )
Administrative Patent Judge )
Sughrue, Mion, Zinn,
MacPeak & Seas
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