DECISION OF THE COMMISSIONER
CONFLICT S. 45 (4): C-claims only considered; anticipated by the
teaching of the prior art.
The Final Action refused the C-claims and claims dependent
thereon. Applicant submitted new set of claims (to which Rule 68
applies), and disagreed that all the claims in the application are
"not patentably different" per S. 45(2) action. Since S. 45(4)
applies only to the C-claims, no decision was made with respect to
any other claim. The subject matter of the C-claims held to be
substantially taught by the prior art (originally submitted by this
applicant under S. 45(3) and (4) as anticipating) and are refused
to both applicants. (See decision on application 963, 979) .
FINAL ACTION:Affirmed in-part
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This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated November 1, 1971
on application 948,406. This application was filed in the name of
Mr.Tien C Tso and refers to Method Of Tobacco Sucker Control".
In the prosecution terminated by the Final Action the examiner
refused conflict claims C1, C2 and C3 and all dependent claims in
view of prior art. The prior art cited is as follows:
1. Saunders et al, "Autoxidant of Fatty Materials in
Emulsions", Journal of the Americal Oil Chemists
Society, October 1962.
2. Sagarin, Cosmetics, Science and Technology, 1957,
Inter Science Publications, Inc. pages 102, 119,
122, 123 and 125.
(The decision quotes the Final Action, in part).
In the response date January 31, 1972 the applicant submitted
a sey of 88 claims and discussed at length why these claims should be
acceptable as allowable claims. However, the Examiner's action
should have been made under Section 45 (4) as well as Rule 46 of the
Patent Rules and under the provisions of Rule 68 no amendment to
introduce new claims may be made without permission of the
Commissioner. Therefore the Board does not find it necessary to
consider the new claims when making its decision on the rejected
conflict claims C1, C2 and C3.
It is also noted that the examiner has refused the claims dependent
on the conflict claims, however, Section 45(4) provides for the
re-examination of conflict claims only. Section 45(4) reads in part
" .... conflicting claims... may submit to the Commissioner such
prior art alleged to anticipate the claims: thereupon each application
shall be re-examined with reference to such prior art and the Commi-
ssioner shall decide if the subject matter of such claims is
patentable" (underlining added ) . Hence, no consideration will be
given to claims which are dependent on the conflict claims.
In the circumstance, therefore, the only question which may be
decided is whether the subject matter of claims C1, C2 and C3 is
taught by the references.
This application relates to a method for controlling the growth
of suckers in tobacco plants. Claim C1 reads as follows:
A composition for inhibiting the growth of
suckers in tobacco plants comprising a mixture
of an effective amount of a suitable emulsifying
agent and at least one lower alkyl ester of a
C6 to C18 fatty acid.
It is well established that if an invention is in the discovery
of an unexpected and unobvious property of the particular known
substance, appropriate claims may set out the novel mode of giving
effect to the newly discovered property as a novel method of using
that substance, or as a novel composition comprising the particular
substance, including mixtures with carriers suitable for the new
use.
The Saunders et al reference discloses aqueous emulsions of methyl
and ethyl linoleate, and the reference to Sagarin discloses emulsi-
fied fatty acid esters ,e.g, oil-in-water emulsions containing
methyl, isopropyl or butyl esters of fatty acids such as isopropyl
palmitate for use as emollients. More specifically the Saunders
reference at page 435,lines 33 the bottom of the page of the
Sagarin paper.
It is noted that claim C1 refers to an ester (C6 to C18 fatty
and an emulsifying agent while claim C2 refers to an ester (C6 to C18
fatty acid) emulsified in water. The composition of claim C3, which
is basically a concentrated form of the composition of claim C1 in
which the control agent can very from 90% of the composition to 20%
claim C1.
The Board is satisfied that the subject matter of the compound
and emulsion mixtures of the claim C1,C2, and C3 are substantially
taught by Saunders and Sagarin.
The Examiner also relied on the Gilbert v. Sandoz, Ex. C.R.
Sept. 24/70), decision to further reject the claims under
consideration. The Board is satisfied that the circumstances in the
Gilbert v. Sandoz decision are not analogous with the facts of the
present application and this ground is withdrawn.
The applicant has requested clarification on the "method of use"
claims which may be considered "not patentably different" from the
conflict subject matter in the Office action of May 30, 1969, but
such disposition assumes patentability of the conflict claims. As
already indicated, the Board may consider the conflict claims(C1,
C2 and C3) only at this time. However it is well established in
law that if an invention lies in the discovery of a new unexpected
property of a known substance an applicant is entitled to make claims
for a new process using that substance.
The Board recommends that the decision of the Examiner, to refuse
conflict claims C1,C2 and C3 in view of the cited prior art, be
upheld. The Board further recommends that no decision or
recommendation be made with respect to any other claim.
R.E.Thomas,
Chairman, Patent Appeal Board.
I I concur with the findings of the Patent Appeal Board and refuse
conflict claims C1, C2 and C3 for want of invention. The applicant
has six months in which to delete these claims from the application
or to appeal this decision in accordance with Section 44 of the
Patent Act.
Decision accordingly,
A.M.Laidlaw,
Commissioner of Patents
Dated at Ottawa, Ontario,
this 24th day of May 1972.