Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claims 1-13 of R. Ridgeway et al., US 18/333,759 (Nov. 5, 2021) are pending. Claims 1-3 and 6-13 are rejected. Claims 4 and 5 are objectionable.
Election of Species
Pursuant to the election of species requirement Applicant elected, without traverse, the compound of Formula (4), Applicant elects:
(1) a compound of formula RnSiR14-n -- tetravinyl silane; and
(2) a claim 4 “stabilizer” --- 2,3,6, di-tert-butyl-4-methyl phenol (BHT)
for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. The elected species of formula RnSiR14-n was searched and determined to be unpatentable over the prior art. The search/examination was not further extended. MPEP § 803.02 (III)(C)(2). The elected species of BHT was found to be free of the art of record. The search was extended to the full scope of claims 4 and 5, which were found to be free of the art of record. The provisional election of species requirement is given effect with respect to a compound of formula RnSiR14-n and no claims are withdrawn from consideration as not reading on the elected species. MPEP § 803.02(III)(A).
Claim Objections
Claim 6 is objected to because it is missing a word as pointed out below:
6. The system of claim 1, wherein the at least one distilled alkenyl or alkynyl-containing organosilicon compound has [missing word] than 100 ppm (0.01 wt. %) of> 1000 amu impurities as determined by Gel Permeation Chromatography (GPC).
Based on the specification, the missing word is “less”. Specification at page 7, last six lines of [0023]. Correction is required.
Claims 4 and 5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 102 (AIA )
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
§102(a)(1) Rejection over GuideChem Chemical Trading Guide (2017) (“GuideChem”)
Claims 1-3 and 7-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GuideChem Chemical Trading Guide (2017) (“GuideChem”).
GuideChem teaches that tetravinylsilane is packaged and offered for sale by HuiChem Company in aluminum foil bags before the effective filing date. Aluminum foil is asserted by the Examiner to be an opaque material that prevents the transmission of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm. See footnote 3 below. This is evidenced by the specification, which teaches that metal foils are examples of materials that prevent the transmission of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm. See footnote 2 below.
[0028] The material from which the container is made and the thickness of the container's wall structure operably inhibits transmission of light through the container wall structure having a wavelength between about 290 nm to 450 nm. In some embodiments, the container is made of stainless steel. If a glass or quartz container is employed, then either the container has walls thick enough to prevent the transmission of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm or the walls of such container are covered with a layer of material to prevent the transmission of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm. Examples of such materials include metal foils and synthetic resin coatings.
Specification at pages 8-9, [0028]. GuideChem therefore meets the instant claim 1 limitation of:
Claim 1 . . . a container, wherein the container permits transmission into the container of no more than 10% of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm . . .
Every limitation of claim 1 is met by GuideChem and claim 1 is anticipated.
The further limitations of claims 2 and 3 are clearly met by tetravinylsilane. The further narrower light blocking limitations of claims 7-11 are met under the same rationale given above.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 and 6-13 are under AIA 35 U.S.C. 103 as being unpatentable over Y. Isono e al., JP 2018052918 (Apr. 5, 2018) (“Isono”) in further view of Ereztech LLC, Safety Data Sheet (2016) (“Ereztech”); GuideChem Chemical Trading Guide (2017) (“GuideChem”); T. Wilkins, Metano Tote Talk Blog (2017) (“Wilkens”); G. Kim et al., US 2019/0020063 (2019) (“Kim”); and U. Heider et al., Journal of Power Sources, 119-122 (1999).
Y. Isono e al., JP 2018052918 (Apr. 5, 2018) (“Isono”)
An English-language translation (Google Translate) of Y. Isono e al., JP 2018052918 (Apr. 5, 2018) (“Isono”) is attached as the first half of this reference.
Isono teaches that unsaturated bond-containing silane compounds are industrially useful products used as comonomers of polyolefins, and in recent years they have also been increasingly used as additives in electrolytes for lithium-ion batteries. Isono at page 4, [0002].
Isono teaches a method for purifying an unsaturated bond-containing silane compound of formula Si(R1)x(R2))4-x (formula (1)) by performing distillation. Isono at page 6 [0013]. Isono teaches that method provides makes it possible to obtain a highly pure unsaturated bond-containing silane compound. Isono at page 6 [0015]. Isono teaches that tetravinylsilane (compound 1-6) is an example compound. Isono at page 8.
Isono teaches that if the required purity is not achieved in a single distillation, multiple distillations may be performed. Isono at page 6, [0018].
In Example 3-1, Isono teaches preparation of tetravinylsilane by reacting vinylmagnesiumchloride (Grignard) with tetrachlorosilane in diethylene glycol diethyl ether (DGDE). Isono at pages 18-19 [0067]. After filtration and evaporative condensation to remove solid components, Isono arrived at a mixture containing 4% by mass of tetravinylsilane, 1% by mass of tetrahydrofuran, and 95% by mass of diethylene glycol diethyl ether. Isono at page 19 [0067]. Isono isolated the tetravinylsilane by distillation to obtain GC purity of 99%. Isono at page 19 [0067].
Differences between Isono and Claim 1
Isono does not teach the that the distilled tetravinylsilane is contained with the claim 1 “system for storing”, where the container does not permit the claimed light transmission ranges.
1. A system for storing an alkenyl or alkynyl-containing organosilicon compound, the system comprising: a container,
wherein the container permits transmission into the container of no more than 10% of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm . . .
Ereztech LLC, Safety Data Sheet (2016) (“Ereztech”)
Ereztech teaches that tetravinylsilane (<=100%) was offered for sale on or about May 6, 2016. Ereztech at page 3. Ereztech teaches that the tetravinylsilane should be stored under an inert gas and that contact with water liberates toxic, highly flammable gas and to keep away from flame, sparks, excessive temperatures and open flame. Ereztech at page 6. Ereztech teaches to keep container tightly closed and sealed until ready for use. Id. Ereztech teaches that tetravinylsilane should be stored in original container protected from direct sunlight in a dry, cool and well-ventilated area, away from incompatible materials (oxidizing agents, heat/fire sources) and food and drink. Id.
GuideChem Chemical Trading Guide (2017) (“GuideChem”)
GuideChem teaches that tetravinylsilane is packaged and offered for sale by HuiChem Company in aluminum foil bags before the effective filing date. Aluminum foil is asserted by the Examiner to be an opaque material that prevents the transmission of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm. See footnote 3 below. This is evidenced by the specification, which teaches that metal foils are examples of materials that prevent the transmission of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm. See footnote 2 below; see, specification at pages 8-9, [0028]. GuideChem therefore meets the instant claim 1 limitation of:
Claim 1 . . . a container, wherein the container permits transmission into the container of no more than 10% of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm . . .
T. Wilkins, Metano Tote Talk Blog (2017) (“Wilkens”)
Wilkens teaches that transporting and storing chemical compounds is a complex and potentially dangerous proposition. Wilkens at page 1/6. There are thousands of industrial chemicals, many of which are toxic to humans and the environment. Id. Wilkens teaches that stainless steel is the material of choice when transporting chemicals. Id. Wilkens further teaches that it's vitally important that chemical containers are rust proof and resistant to the abrasive action of chemicals and solvents. Wilkens at page 2/6. Wilkens teaches that if a tank is compromised, the contents will leak, potentially causing harm to people or the environment and that stainless steel tanks are well suited for the job. Id. Wilkens teaches that not only do they resist chemicals stored inside them, they are also tolerant of the often abrasive solvents used in cleaning. Id. Wilkens further teaches that the properties of stainless steel totes, such as ease of cleaning, corrosion resistance, and durability make it ideal for use with a huge variety of chemicals. Wilkens ta page 3/6.
Stainless steel is asserted by the Examiner to be an opaque material that prevents the transmission of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm. See footnote 3 below. This is evidenced by the specification, which teaches that stainless steel is a material that prevents the transmission of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm. See footnote 2 below.
[0028] The material from which the container is made and the thickness of the container's wall structure operably inhibits transmission of light through the container wall structure having a wavelength between about 290 nm to 450 nm. In some embodiments, the container is made of stainless steel. If a glass or quartz container is employed, then either the container has walls thick enough to prevent the transmission of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm or the walls of such container are covered with a layer of material to prevent the transmission of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm. Examples of such materials include metal foils and synthetic resin coatings.
Specification at pages 8-9, [0028]. Wilkens therefore meets the instant claim 1 limitation of:
Claim 1 . . . a container, wherein the container permits transmission into the container of no more than 10% of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm . . .
G. Kim et al., US 2019/0020063 (2019) (“Kim”)
Kim is cited that as of the instant application’s filing date, tetravinylsilane was known as a non-aqueous electrolyte additive in lithium batteries (this was also mentioned by Isono, as discussed above).
Kim teaches secondary battery including an ionizable lithium salt, an organic solvent, and an additive , wherein the additive is a mixed additive which includes lithium difluorophosphate ( LiDFP ), tertiary alkyl benzene represented by Formula 1, and tetravinyl silane (TVS). Kim at page 1, [0013]-[0014].
U. Heider et al., Journal of Power Sources, 119-122 (1999)
Heider teaches that the quality of electrolytes for lithium batteries are a major topic in science and battery industries. The solvents and lithium salts should be of highest purity. Heider at Abstract. Therefore, during preparation and handling of electrolyte solutions, the contamination level has to be minimized and the quality during packaging, storage and transportation has to be guaranteed. Heider at Abstract.
Heider teaches that liquid organic electrolytes are mostly used in commercial lithium secondary batteries of today. Heider at page 119, col. 1. The chemistry and electrochemistry of these electrolytes and the interrelation of electrolytes and other materials inside the battery were addressed by many publications throughout the last years. Heider at page 119, col. 1. The electrolytes under discussion for the use in secondary lithium-ion batteries are mixtures of aprotic organic solvents and conductive salts. Heider at page 119, col. 1.
Claims 1-3 and 6-13 Are Obvious Over the Cited Art
Claims 1-3 and 6-13 are obvious pursuant to § 103 because one of ordinary skill seeking high-purity tetravinylsilane (for example, for use as an additive in a lithium battery as taught by Isono and/or Kim) is motivated to purify the tetravinylsilane by distillation as taught by Isono. Isono at page 19 [0067]. One of ordinary skill is motivated purify the tetravinylsilane to high purity for use as an additive in a lithium battery in view Heider’s teaching that quality of electrolytes for lithium is very important and the solvents and lithium salts should be of highest purity. Heider at Abstract.
One of ordinary skill further motivated by Wilkens in view of Ereztech’s teaching of the hazardous, reactive nature of tetravinylsilane and required inert storage conditions (including being kept away from direct sunlight) of tetravinylsilane (Ereztech at page 6) to package, store and or ship the isolated, high-purity tetravinylsilane in a stainless-steel tote as taught by Wilkens to maintain its purity, thereby meeting the claim 1 limitation of:
1. A system for storing an alkenyl or alkynyl-containing organosilicon compound, the system comprising: a container,
wherein the container permits transmission into the container of no more than 10% of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm . . .
as well as the narrow light-blocking limitations of claims 7-11. Both Ereztech and GuideChem provide a strong inference that tetravinylsilane should be stored under light free conditions. In this regard, stainless steel is an example container given in the instant specification that meets the claimed light-blocking requirements. Specification at pages 8-9, [0028]; specification at page 9, lines 1-2; Id. at pages 12-13 (Example 5).
One of ordinary skill is so motivated because Wilkens teaches that stainless steel totes are suitable packaging for storing and transporting hazardous chemicals that require inert conditions. Wilkens at page 1/6. The rational underlying the instant § 103 rejection is that the selection of a known material (i.e., stainless steel) based on its suitability for its intended use may support a prima facie obviousness determination. MPEP § 2144.06; § 2144.07. Every limitation of claims 1-3 is met by combining the cited art as proposed above, as well as the narrow light-blocking limitations of claims 7-11.
Note that the motivation to employ the stainless-steel toes of Wilkens to package/store/transport tetravinylsilane need not be specifically to block light, although both Ereztech and GuideChem provide a strong inference that tetravinylsilane should be stored under light free conditions. That is, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. MPEP § 2144(IV); MPEP § 2145 (II) (citing In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990)). In the instant case, Wilkens provides a satisfactory packaging that meets the hazardous storage requirements of tetravinylsilane. MPEP § 2145(II) (citing Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)).
Claims 6, 12, and 13 are obvious for the following reasons. Claims 6, 12 and 13 recites purity1 limitations as follows:
6. The system of claim 1, wherein the at least one distilled alkenyl or alkynyl-containing organosilicon compound has than 100 ppm (0.01 wt. %) of > 1000 amu impurities as determined by Gel Permeation Chromatography (GPC).
12. The system of claim 1, wherein less than 50 ppm water impurity is contained within the container.
13. The system of claim 1, wherein less than 10 ppm halide impurity is contained within the container.
Claim 6, 12 and 13 are obvious because one of ordinary skill is motivated purify the tetravinylsilane to high purity (and to within the claimed levels) for use as an additive in a lithium battery in view Heider’s teaching that quality of electrolytes for lithium is very important and the solvents and lithium salts should be of highest purity. Heider at Abstract. Isono teaches (with respect to unsaturated bond-containing silane compound of formula Si(R1)x(R2))4-x (formula (1)) that if the required purity is not achieved in a single distillation, multiple distillations may be performed. Isono at page 6, [0018].
In any case, it is asserted the tetravinylsilane prepared according to Isono by distillation, as proposed above, inherently meets the claimed purity limitations as evidenced by the teachings of the instant specification.2 Here, the specification teaches no specific distillation techniques (rather just distillation generally) evidencing that the claimed purity levels are inherently achieved or achievable by simple or general distillation techniques.3 That is, the specification teaches that distillation achieves the claimed purity levels.
[0007] The present disclosure provides a method for producing an alkenyl or alkynyl-containing organosilicon precursor composition, the method comprising the steps of: distilling at least once a composition comprising an alkenyl or alkynyl-containing organosilicon compound.
Specification at page 3, [0007] (emphasis added); see also Id. at [0008] (reciting “contained within the container, a distilled alkenyl or alkynyl-containing organosilicon compound”); Id at page 4, [0010]; Id. at page 8, [0025]. The specification further teaches:
[0013] To the extent that a composition comprising a crude (i.e., prior to purification by distillation according to the present disclosure) alkenyl or alkynyl-containing organosilicon compound such as, for example, one having a residual chloride or other halide impurity, the majority of the chloride-containing components can be removed from the crude alkenyl or alkynyl-containing organosilicon compound through distillation.
Specification at page 4, [0013] (emphasis added). In Comparative Example 3, the specification teaches that a flow test was done with distilled high purity tetravinylsilane (TVS). Specification at pages 10-11, [0037]. The specification teaches that:
-- the TVS chemical assay was 99.5%,
-- chloride content was 0.2 ppm and
-- H2O content was 35 ppm.
Specification at lines bridging pages 10 and 11.
The specification does not teach any special distillation technique was used to obtain the distilled high purity tetravinylsilane (TVS) used in Comparative Example 3. Specification at pages 10-11, [0037].
In sum, claims 6, 12 and 13 are obvious over the cited art because one of ordinary skill is motivated purify the tetravinylsilane to high purity (and to within the claimed levels) for use as an additive in a lithium battery are, alternatively, the claimed purity levels are inherently achieved by the proposed distillation as taught by Isono as evidence by the instant specification.
Subject Matter Free of the Art of Record
Claims 4 and 5 are free of the art of record. Claims 4 and 5 further require that the “a stabilizer compound is further contained within the container”.
The closest art of record is Y. Khoroshavina et al, 83 Russian Journal of General Chemistry, 1039–1042 (2013) (“Khoroshavina”). Khoroshavina teaches a study of vinylation of silanes and disiloxanes. Khoroshavina at Abstract. Khoroshavina teaches that in the reactions of silanes with vinyl chloride and magnesium or sodium the sole product formed is tetravinylsilane. Id. Khoroshavina teaches that tetravinylsilane was formed with high yield from any chloro- or alkoxysilane in reaction with vinyl chloride and sodium or magnesium. Khoroshavina at page 1040, col. 2.
In the following excerpt, Khoroshavina teaches that tetravinylsilane is prone to polymerization, at least at elevated temperatures, for example, during distillation.
However, upon tetravinylsilane distillation or later during its transformation into hexavinyldisiloxane, complications arose due to its polymerization. For instance, upon heating the reaction mixture up to 60°C the polymer was formed already in 0.5 h.
Khoroshavina at page 1040, col. 2 (emphasis added).
In this regard, Khoroshavina investigated tetravinylsilane stability towards polymerization in the presence of various inhibitors, taken in the same amount, 1 mol %, where the data obtained is summarized in the Table. Khoroshavina at page 1040, col. 2 (see Table at page 1040, col. 1). Khoroshavina teaches that common inhibitors as hydroquinone and its monomethyl ether, phenothiazine, or allylbenzene were not effective in inhibiting tetravinylsilane polymerization. Khoroshavina at page 1040, col. 2 (see Table at page 1040, col. 1). Khoroshavina teaches that Iron(III) and cobalt(III) acetylacetonates were, on the contrary, effective, allowing to isolate tetravinylsilane by vacuum distillation without noticeable loss. Khoroshavina at page 1040, col. 2.
Significantly, regarding the non-obviousness of claims 4 and 5, although not directly stated by Khoroshavina, one of ordinary skill would recognize that the data summarized in the Khoroshavina Table at page 1040, is the case where the inhibitors are added to the specific Khoroshavina filtered reaction mixture obtained as follows:
General procedure of silanes vinylation with sodium/vinyl chloride in the presence of copper(II) salts. 70 g (3.0 mol) of sodium dispersed in 500 ml of hexane, 1.0 mol of the silane, and 26.5 ml of the catalyst solution were placed into a four-necked flask equipped with a mechanic stirrer, a cold-finger condenser, a thermometer, and a gas-inlet tube. The vinyl chloride dosing was started at room temperature, and the temperature was maintained below 25°C during the dosing by cooling with a bath of hexane with dry ice. The reaction started at 18–20°C. After the dosing of vinyl chloride had been completed, the mixture was heated up to 40°C and incubated at this temperature for 2 h. Subsequently, the mixture was cooled to room temperature, and the precipitate was filtered off. Tetravinylsilane was isolated by vacuum distillation, with addition of 1 mol % of cobalt(III) acetylacetonate.
Khoroshavina at page 1041, col. 2 (underlining emphasis added). Here, Khoroshavina teaches that in the experimental synthesis, the tetravinylsilane was finally isolated by vacuum distillation from the filtered reaction mixture (which would presumably contain some dissolved metal salts), with addition of 1 mol % of cobalt(III) acetylacetonate as a polymerization inhibitor. Khoroshavina at page 1041, col. 2. Thus, the polymerization of tetravinylsilane (during heating/distillation) appears to be particular to the specific Khoroshavina filtered reaction mixture (presumably containing metal salts) rather than a teaching that purified tetravinylsilane is generally prone to polymerization, during heating/distillation or otherwise. In this regard, no art of record directly teaches that purified tetravinylsilane is prone to polymerization.
In view of the foregoing, and respecting claim 4, one of ordinary skill is only motivated by Khoroshavina to add the polymerization inhibitors Iron(III) or cobalt(III) acetylacetonates during distillation of the specific Khoroshavina filtered reaction mixture. Khoroshavina does not motivate one of ordinary skill to practice (per claim 4) “a stabilizer compound is further contained within the container”, wherein (per claim 1):
1 . . . the container permits transmission into the container of no more than 10% of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm . . .
That is, neither Khoroshavina, nor secondary art, provides any reason to add polymerization inhibitors other than during the specific Khoroshavina reaction-mixture distillation. And neither Khoroshavina, nor secondary art, provides any reason to perform the Khoroshavina distillation in the claimed container.
Secondary references Ereztech LLC, Safety Data Sheet (2016) (“Ereztech”) and GuideChem Chemical Trading Guide (2017) (“GuideChem”), as discussed above, provide an inference that tetravinylsilane should be stored under light free conditions. However, these references provide no explanation of why. Further these references in no way teach adding a stabilizer compound.
As discussed in the § 103 rejection, one of ordinary skill is motivated by Wilkens in view of Ereztech’s teaching of the hazardous, reactive nature of tetravinylsilane and required inert storage conditions (including being kept away from direct sunlight) of tetravinylsilane (Ereztech at page 6) to package, store and or ship the isolated, high-purity tetravinylsilane in a stainless-steel tote as taught by Wilkens to maintain its purity, thereby meeting the claim 1 limitation of:
1. A system for storing an alkenyl or alkynyl-containing organosilicon compound, the system comprising: a container,
wherein the container permits transmission into the container of no more than 10% of ultraviolet and visible light having a wavelength of between 290 nm to 450 nm . . .
However, there is no motivation to combine Khoroshavina with Wilkens to arrive at the invention of claims 4 and 5.
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 Purer forms of known products may be patentable, but the mere purity of a product, by itself, does not render the product nonobvious. MPEP § 2144.04 (VII). Factors to be considered in determining whether a purified form of an old product is obvious over the prior art include whether the claimed chemical compound or composition has the same utility as closely related materials in the prior art, and whether the prior art suggests the particular form or structure of the claimed material or suitable methods of obtaining that form or structure. MPEP § 2144.04 (VII).
2 It is appropriate to look to the instant specification for evidence that a claimed feature is inherent in the prior art. See, MPEP § 2112.02(I) (discussing Ex parte Novitski, 26 USPQ2d 1389 (Bd. Pat. App. & Inter. 1993) (In Ex parte Novitski the Board rejected a claim directed to a method for protecting a plant from plant pathogenic nematodes by inoculating the plant with a nematode inhibiting strain of P. cepacia. A U.S. patent to Dart disclosed inoculation using P. cepacia type Wisconsin 526 bacteria for protecting the plant from fungal disease. Dart was silent as to nematode inhibition but the Board concluded that nematode inhibition was an inherent property of the bacteria. The Board noted that applicant had stated in the specification that Wisconsin 526 possesses an 18% nematode inhibition rating).
3 Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). This is a procedural burden shifting. The requirement that the prior art necessarily teaches the alleged inherent (functional) element still remains. MPEP § 2112(IV). However, the burden is shifted to Applicant to demonstrate the alleged inherent element is not necessarily present in the cited prior art. See also, MPEP § 2112.01(I) (citing In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971).
Prosecution Insights