11055433 (B.P.A.I. Oct. 30, 2009)

Ex Parte Watson

Board of Patent Appeals and InterferencesOct 30, 2009

11055433 (B.P.A.I. Oct. 30, 2009)

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. 11/055,433 02/10/2005 James B. Watson 2938 31083 7590 10/30/2009 THOMTE LAW OFFICE, L.L.C. 2120 S. 72ND STREET, SUITE 1111 OMAHA, NE 68124 EXAMINER BARNHART, LORA ELIZABETH ART UNIT PAPER NUMBER 1651 MAIL DATE DELIVERY MODE 10/30/2009 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 JAMES B. WATSON __________ Appeal 2009-008281 Application 11/055,433 Technology Center 1600 __________ Decided: October 30, 2009 __________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a composition comprising dormant microorganisms, and a method of making it. The Examiner has rejected the claims for anticipation, obviousness, and obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2009-008281 Application 11/055,433 2 STATEMENT OF THE CASE “Live bacteria formulations are frequently applied to forage products, feed, etc., to enhance fermentation and/or digestion” (Spec. 1). The Specification discloses a “live bacteria product . . . wherein the live bacteria are in a dormant state and are suspended in a clear liquid fluid carrier or medium” (id. at 3). Claims 1-7, 12-18, and 25-27 are on appeal.1 Claims 1 and 12 are representative and read as follows: 1. A method of forming stabilized admixtures of viable organisms which are alive but in a dormant state, comprising: (a) preparing an admixture by intermixing a substantially moisture- free liquid carrier and the viable organism. 12. A stabilized admixture for application to feed, forage, or animals or the like, said stabilized admixture for application to feed, forage, or animals or the like comprising a substantially moisture-free liquid carrier and viable organisms which are alive but in a dormant state suspended in said carrier. The Examiner relies on the following references: Johnston US 3,034,968 May 15, 1962 Bellet et al. US 4,161,397 July 17, 1979 Welsh US 4,810,494 Mar. 7, 1989 Sudoma et al. US 4,927,763 May 22, 1990 Dennett et al., Evaluation of methylated soy oil and water-based formulations of Bacillus thuringiensis var. israelensis and Golden Bear Oil® (GB-1111) against Anopheles quadrimaculatus larvae in small rice plots, 16 J. Amer. Mosquito Control Assoc. 342-345 (2000) 1 Claims 8-11 and 19-24 are also pending but have been withdrawn from consideration by the Examiner. Office Action mailed Nov. 5, 2007, page 1. Appeal 2009-008281 Application 11/055,433 3 Elmore, Final report of the safety assessment of aluminum silicate, calcium silicate, magnesium aluminum silicate, magnesium silicate, magnesium trisilicate, sodium magnesium silicate, zirconium silicate, attapulgite, bentonite, Fuller’s earth, hectorite, kaolin, lithium magnesium silicate, lithium magnesium sodium silicate, montmorillonite, pyrophyllite, and zeolite, 22 Int. J. of Toxicol. 37-102 (2003) (abstract only) The claims stand rejected as follows:2 • Claims 1-3, 12-14, 25, and 27 under 35 U.S.C. § 102(b) as anticipated by Bellet with evidence provided by Johnston and Elmore (Ans. 3); • Claims 1, 2, 12, 13, 25, and 27 under 35 U.S.C. § 102(b) as anticipated by Johnston (Ans. 5); • Claims 1, 12, 25, and 27 under 35 U.S.C. § 102(b) as anticipated by Dennett (Ans. 6); • Claims 1, 12, and 26 under 35 U.S.C. § 102(b) as anticipated by Welsh (Ans. 6); and • Claims 1-7, 12-18, 25, and 27 under 35 U.S.C. § 103(a) as obvious in view of Bellet, Johnston, Elmore, and Sudoma (Ans. 6). ANTICIPATION BY BELLET Issue The Examiner has rejected claims 1-3, 12-14, 25, and 27 as anticipated by Bellet with evidence provided by Johnston and Elmore. The 2 In addition to the rejections listed above, claims 12-18, 25, and 27 stand provisionally rejected for obviousness-type double patenting based on claims 52-57 of application 10/853,346 (Ans. 8-9). Appellant does not dispute the merits of the provisional rejection (see Appeal Br. 18). Therefore, we summarily affirm it. Appeal 2009-008281 Application 11/055,433 4 Examiner finds that Bellet teaches “a liquid composition intended for coating seeds, said composition comprising microdried Rhizobium japonicum, mineral oil, and quaternium-18 hectorite . . . made by suspending the dried bacteria in the carrier” (Ans. 3-4). The Examiner concludes that the claim language reciting feed, forage, etc. does not limit the claims because it only states the intended use of the composition (id. at 4). Appellant contends that “[i]n this case, the preamble limits the invention and is necessary to give life, meaning and vitality to the claim. The disputed preamble phrase limits claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.” (Appeal Br. 7.) Appellant concludes that “Bellet . . . cannot possibly anticipate the claim[s] in question since Bellet . . . only makes reference to the treatment of a seed and makes no mention of feed, forage, or animals or the like” (id. at 8). The issue with respect to this rejection is: Has Appellant shown that the Examiner erred in finding that Bellet’s seed-treating composition meets all the structural limitations of claim 12? Findings of Fact 1. The Specification discloses that “the carrier or medium for the live bacteria is comprised of a substantially moisture-free liquid which is comprised of: (1) mineral oil and polymers; or (2) a processed oil obtained from either animal, vegetable or petroleum origins” (Spec. 3: 19-22). 2. The Specification does not define “substantially moisture-free” to require less than a specific amount of water. Appeal 2009-008281 Application 11/055,433 5 3. Bellet discloses seed treatment compositions that “comprise microdried bacteria in a non-bactericidal, non-phytotoxic liquid carrier” (Bellet, col. 2, ll. 24-25). 4. Bellet discloses that “[s]everal procedures are available for drying bacteria. One highly satisfactory drying method . . . is the oil drying method described in U.S. Pat. No. 3,034,968 to Johnston” (id. at col. 2, ll. 31-35). 5. Bellet discloses that “[m]ineral oil is one carrier which . . . has proven highly effective in the practice of the invention. Various vegetable oils may also be used effectively in the compositions of the invention.” (Id. at col. 2, ll. 64-68.) 6. Bellet exemplifies a composition comprising oil-dried Rhizobium japonicum, mineral oil, a quaternium-18 hectorite clay gellant, Thiram, sodium molybdate, and charcoal (id. at col. 4, ll. 33-38). 7. The exemplary compositions contained between 2.8 x 106 and 6 x 106 viable bacteria per gram after 5 days (id. at col. 5, l. 6). 8. Elmore discloses that hectorite is a silicate and that clay silicates “primarily function as adsorbents, opacifiers, and viscosity-increasing agents” (Elmore 1). Principles of Law “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Appeal 2009-008281 Application 11/055,433 6 “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). “[T]he patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Arguments not made in the Appeal Brief or Reply Brief are waived. 37 C.F.R. § 41.37(c)(1)(vii). Analysis Claim 12 is directed to a composition comprising viable, dormant organisms in a substantially moisture-free carrier. The Examiner finds that the composition disclosed by Bellet, which comprises viable, dormant Rhizobium japonicum bacteria in a mineral oil-based carrier, meets the structural limitations of claim 12. We agree. Appellant argues that the preamble of claim 12, which states that the composition is “for application to feed, forage, or animal or the like,” should be considered a claim limitation because “it indicates a reliance on both the preamble and claim body to define the claimed invention. Here, applicant clearly and unmistakably relies on the preamble to distinguish prior art.” (Appeal Br. 7.) Appeal 2009-008281 Application 11/055,433 7 This argument is not persuasive. Although Appellant argues that he relies on the preamble to distinguish the claimed composition from the prior art, Appellant has provided no explanation of how the preamble of claim 12 distinguishes the claimed composition from the composition disclosed by Bellet; i.e., how the intended use of the claimed composition requires properties that are not present in Bellet’s composition. Appellant argues that Bellet’s composition uses mineral oil as a carrier for “Rhizobium bacteria and a Fungicide, which currently both are not recognized by either the American Feed Control Officials (AAFCO) or the Food and Drug Administration (FDA) as a feed ingredient for livestock” (Appeal Br. 8). This argument is also unpersuasive. First, Appellant has presented no evidence to support the assertion that any of the components of the composition of Bellet’s Example 1 are unsuitable for use in livestock feed. Attorney’s argument does not take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In addition, claim 12 is not limited to compositions that are suitable as feed ingredients for livestock. It also encompasses compositions that are suitable for application to forage or to “animals or the like.” Appellant has not disputed that Bellet’s composition would be suitable for at least some of the uses encompassed by claim 12. Claims 1-3 fall with claim 12 because Appellant did not provide separate reasons for their patentability. 37 C.F.R. § 41.37(c)(1)(vii). With respect to claim 13, Appellant argues that the “mineral oil of Bellet obviously contains moisture due to the huge die-offs of his bacteria” (Appeal Br. 9). This argument is unpersuasive because Appellant has Appeal 2009-008281 Application 11/055,433 8 presented no evidence to show that those of skill in the art would interpret the loss of cell viability observed by Bellet to mean that the mineral oil used contained more than an insubstantial amount of moisture. Again, attorney’s argument does not take the place of evidence. Pearson, 494 F.2d at 1405. With respect to claim 14, Appellant argues that Bellet does not teach a composition comprising a hydrophilic molecular sieve adsorbent because “Bellet makes no reference to their use of quaternium-18 hectorlite [sic] or silica as being used as a moisture adsorbent, but rather very clearly recites its use as a gallant [sic, gellant] pre-blended into the mineral oil” (Appeal Br. 10). This argument is also unpersuasive. The Examiner has provided evidence, which Appellant has not disputed, that quaternium-18 hectorite is an example of a hydrophilic molecular sieve adsorbent. Even if Bellet included the material for its effect of increasing viscosity (i.e., as a gellant), rather than to adsorb moisture, the fact remains that Bellet’s composition comprised a hydrophilic molecular sieve adsorbent. With regard to claims 25 and 27, Appellant argues that “Bellet does not teach the claimed admixture including a bacteria vaccine” or “including a modified or non-modified pathogen” (Appeal Br. 10). These arguments are unpersuasive because the Examiner has provided a reasoned basis for concluding that the claim language reads on the composition disclosed by Bellet and Appellant has pointed to no evidence to support a contrary conclusion. Appellant’s unsupported assertion that Bellet does not teach what is claimed does not persuade us that the Examiner erred in finding that it does. Appeal 2009-008281 Application 11/055,433 9 Conclusion of Law Appellant has not shown that the Examiner erred in finding that Bellet’s seed-treating composition meets all the structural limitations of claims 12-14, 25 or 27. OBVIOUSNESS Issue The Examiner has rejected claims 1-7, 12-18, 25, and 27 as obvious in view of Bellet, Johnston, Elmore, and Sudoma (Ans. 6). The Examiner relies on Bellet, Johnston, and Elmore for the same teachings relied on as evidence that Bellet anticipates claims 1-3, 12-14, 25, and 27 (Ans. 7) and finds that Sudoma teaches a composition comprising dry bacteria and a zeolite, as recited in some dependent claims (id.). The Examiner concludes that it would have been obvious “to substitute the zeolites of Sudoma et al. for the quaternium-18 hectorite in the method and composition of Bellet et al. in order to optimize the composition for various downstream applications” (id. at 8). Appellant contends that none of the Examiner’s references teaches “that the liquid carrier could be comprised of a substantially moisture-free carrier as required by the claims” and that “there is absolutely no suggestion, motivation or teaching whatsoever in the prior art patents that the teachings of those prior art references could be combined” (Appeal Br. 16-17). The issue with respect to this rejection is: Has Appellant shown that the Examiner erred in concluding that the cited references would have suggested substituting Sudoma’s zeolite for the quaternium-18 hectorite in Bellet’s composition? Appeal 2009-008281 Application 11/055,433 10 Additional Findings of Fact 9. Elmore discloses that hectorite and zeolite are both silicates (Elmore 1). 10. Elmore discloses that typical uses of silicates include increasing viscosity of formulations (id.). 11. Sudoma discloses compositions comprising dried viable bacteria, particulate carriers, and a hydrophilic molecular sieve adsorbent (Sudoma, col. 2, ll. 28-43). 12. Sudoma discloses that the adsorbent “may be a natural or synthetic zeolite” (id. at col. 3, l. 52). Principles of Law “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. at 418. However, the obviousness analysis “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. “Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982). Appeal 2009-008281 Application 11/055,433 11 Analysis Bellet teaches a composition meeting all the limitations of claim 12. Bellet’s composition also comprises quaternium 18-hectorite, and the Examiner has provided evidence that hectorite and zeolite are both silicates that were recognized in the art as functional equivalents. Therefore, we agree with the Examiner’s conclusion that a worker of ordinary skill in the art would have considered it obvious to substitute Sudoma’s zeolite for the quaternium-18 hectorite in Bellet’s composition. Appellant’s argument to the contrary is unpersuasive. Appellant also argues that the references cited by the Examiner do not teach “that the liquid carrier could be comprised of a substantially moisture- free carrier” (Appeal Br. 17). This argument is unpersuasive because Bellet does not disclose adding any water or aqueous component to its compositions, and Appellant has provided no evidence to show that Bellet’s composition included more than an insubstantial amount of moisture. Conclusion of Law Appellant has not shown that the Examiner erred in concluding that the cited references would have suggested substituting Sudoma’s zeolite for the quaternium-18 hectorite in Bellet’s composition. ANTICIPATION BY JOHNSTON The Examiner has rejected claims 1, 2, 12, 13, 25, and 27 as anticipated by Johnston (Ans. 5). The Examiner finds that Johnston teaches “compositions comprising highly viable bacteria in mineral oil . . . made by suspending the former in the latter” and therefore anticipates the rejected Appeal 2009-008281 Application 11/055,433 12 claims. We agree with the Examiner’s fact-finding (see, e.g., Johnston, col. 4, ll. 30-43) and analysis. Appellant argues that “Johnston does not teach an animal, animal feed or forage material treatment composition” (Appeal Br. 13). This argument is unpersuasive for the reasons discussed above in regard to anticipation by Bellet. Appellant also argues that Johnston’s composition does not comprise a polymer (Appeal Br. 12-14). This argument is also unpersuasive, because none of the claims subject to this rejection requires the claimed composition to comprise a polymer. Claim 2, the only claim rejected on this basis that recites a polymer, requires that the carrier be either (a) mineral oil and polymers or (b) “a processed oil obtained from animal, vegetable or petroleum origins.” A “processed oil obtained from . . . petroleum origins” is reasonably interpreted to encompass the mineral oil disclosed by Johnston. Therefore, it is immaterial whether Johnston’s composition comprised a polymer. ANTICIPATION BY DENNETT Issue The Examiner has rejected claims 1, 12, 25, and 27 as anticipated by Dennett (Ans. 6). The Examiner finds that Dennett anticipates the claims because it teaches a “composition comprising methylated soybean oil (MSO) and viable dormant Bacillus thuringiensis, but no water; Dennett et al. also teach mixing the dormant bacteria with the MSO to make the composition” (Ans. 6). Appeal 2009-008281 Application 11/055,433 13 Appellant contends that Dennett does not teach the method of claim 1 or the composition of claims 12, 25, and 27 (Appeal Br. 15). The issue with respect to this rejection is: Has Appellant shown that the Examiner erred in finding that Dennett discloses a method meeting the limitations of claim 1 and a product meeting the limitations of claim 12? Additional Findings of Fact 13. Dennett discloses “formulations containing methylated soybean oil (MSO) alone and with technical-grade Bacillus thuringiensis var. israelensis (Bti)” (Dennett, abstract). 14. Dennett discloses that “[t]hree replicates were performed with treatments consisting of MSO with 2% Pyroter® (a surfactant) (MSO + PYR) [and] MSO with 2% Pyroter and 4 g of Bti technical powder (6,656 ITU/mg . . . ; MSO + PYR + Bti)” (id. at 343, left col.). 15. Dennett discloses that the MSO + PYR + Bti formulation was significantly more active than the MSO + PYR formulation (id., paragraph bridging 343-344). Analysis Dennett discloses a composition containing Bti technical powder (i.e., dried bacteria), methylated soybean oil, and a surfactant. Dennett does not disclose that the composition contained any water or aqueous components. Therefore, we agree with the Examiner’s finding that Dennett discloses the method of claim 1 and the product of claim 12. Appellant denies that Dennett anticipates the rejected claims but provides no evidence or reasoned basis for concluding that the Examiner’s findings are erroneous. Appeal 2009-008281 Application 11/055,433 14 Conclusion of Law Appellant has not shown that the Examiner erred in finding that Dennett discloses a method meeting the limitations of claim 1 and a product meeting the limitations of claim 12. Claims 25 and 27 fall with claims 1 and 12. 37 C.F.R. § 41.37(c)(1)(vii). ANTICIPATION BY WELSH Issue The Examiner has rejected claims 1, 12, and 26 as anticipated by Welsh (Ans. 6). The Examiner finds that Welsh discloses “a canine parvovirus (CPV) vaccine comprising live CPV suspended in an adjuvant, which may be mineral oil, prepared by suspending the former in the latter” (Ans. 6). Appellant contends that “[t]here is absolutely no teaching whatsoever in Welsh that the mineral oil is substantially moisture-free” (Appeal Br. 15). The issue with respect to this rejection is: Has Appellant shown that the Examiner erred in finding that Welsh discloses a composition comprising a viral vaccine in a substantially moisture-free carrier? Additional Findings of Fact 16. Welsh discloses a canine parvovirus vaccine (Welsh, col. 1, ll. 4- 5). 17. Welsh discloses that the “vaccine may be prepared in the form of a suspension or may be lyophilized. In lyophilized CPV vaccines it is preferable to add one or more stabilizers.” (Id. at col. 1, ll. 55-57.) Appeal 2009-008281 Application 11/055,433 15 18. Welsh discloses that “[o]ptionally, one or more compounds having adjuvant activity may be added too. Suitable adjuvants are for example . . . mineral oils” (id. at col. 1, ll. 64-67). Analysis Welsh teaches a composition comprising canine parvovirus (i.e., a viral vaccine) and mineral oil. We agree with the Examiner’s finding that Welsh’s composition meets the limitations of claim 12. Claims 1 and 26 fall with claim 12 because they were not separately argued. 37 C.F.R. § 41.37(c)(1)(vii). Appellant argues that Welsh does not teach that its mineral oil is substantially moisture-free. This argument is unpersuasive because Welsh does not disclose that its mineral oil must be mixed with water or any aqueous component, and Appellant has provided no evidence to show that those of ordinary skill in the art would have understood “mineral oil,” as disclosed by Welsh, to mean a carrier that included more than an insubstantial amount of moisture. Conclusion of Law Appellant has not shown that the Examiner erred in finding that Welsh discloses a composition comprising a viral vaccine in a substantially moisture-free carrier. SUMMARY We affirm all of the rejections on appeal. Appeal 2009-008281 Application 11/055,433 16 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED lp THOMTE LAW OFFICE, L.L.C. 2120 S. 72ND STREET, SUITE 1111 OMAHA NE 68124