COMMISSIONER'S DECISION
OBVIOUSNESS: Method and Composition for Tobacco Sucker Control
The composition's claims, which related to mixtures of alcohols with a carrier,
were refused for failing to define a patentable advance in the art over the
references cited.
Final Action: Affirmed.
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated June 29, 1976, on application
955,790 (Class 71-12.0). The application was filed on March 24, 1966 in
the name of Tien C. Tso et al, and is entitled "Method And Compositions
For Tobacco Sucker Control". The Patent Appeal Board conducted a Hearing
on December 8, 1976, at which Mr. M. Marcus represented the applicant.
Also in attendance was Messrs. Rice and Moss.
The application relates to a method of inhibiting the growth of suckers in
tobacco plants by applying to said plants an effective amount of a saturated
C6 to C18 alcohol, and to mixtures of a growth inhibiting composition.
In The Final Action the examiner refused composition claims 23 to 32 in view
of the following prior art.
References Re-Applied
"Retardation of Evaporation by Monolayers" Lamar, (1962)
pages 205 and 224-230
United States Patents
3,205,059 Sept.7 1965 C1. 71-2.7 Robertson
(corresponds to Belgian 615,406 April 13, 1962)
2,903,330 Sept. 1959 C1. 21-60.5 Dressler
2,164,723 July 4, 1939 C1. 252-6 Schrauth et al
2,054,257 Sept.15, 1936 C1. 252-6 Heuter
C.A. 44,8053 d
C.A. 50,13367 i
C.A. 47,11885 f
C.A. 51,10180 c
In the action the examiner stated (in part):
The Lamar reference discloses various C12 to C24
fatty alcohol emulsions including alcohol-Tween
emulsions. Clearly, the Lamar reference shows
fatty alcohol emulsions in general to be known.
Applicant's amendment letter of April 24, 1970
clearly admits that the alcohol emulsions are old.
See also amendment letter of November 6, 1975,
page 1 "while it is admitted that emulsions of
fatty alcohols may be old...".
United States Patent 3,205,059 to Robertson relates
to emulsions of fatty alcohols used to reduce trans-
piration in plants.
United States Patent 2,903,330 to Dressler relates
to emulsions of fatty alcohols used to prevent
evaporation of water from for example lakes.
United States Patent 2,164,723 to Schrauth et al
relates to emulsions of alcohols useful as bases
for therapeutic and cosmetic compositions.
United States Patent 2,054,257 to Heuter relates to
the emulsification of fatty acids, their esters and
alcohols (for example for the treating of textiles).
All four of the Chemical Abstracts cited teach emul-
sions of fatty alcohols.
The above group of citations relate in general to
emulsions of alcohols and other similar fatty sub-
stances in water. These references clearly show a
composition of emulsified fatty alcoh ols is old.
Accordingly claims 23-32 are refused as being obvious
in view of the prior applied art.
In response to the Final Action the applicant discussed and cited the case
law on "selection" patents. He also stated (in part):
...
Similarly, in this case, applicants have claimed a
different product or composition (due to the very
specific, selective nature of the fatty alcohols).
Since the compositions of the prior art were not
used for tobacco desuckering, that point should be
sufficient to dismiss any thought of the prior art
anticipating the applicants claims. Clearly, the
Examiner agrees with applicants submission of un-
obvious use due to a similar composition, since
the Examiner states:
"there has never been any suggestion that the
cited prior art has taught the use of fatty
alcohol compositions as being useful for tob-
acco desuckering."
This case is moreover to be distinguished from the ana-
logous case of; Re application No. 948,406 (Patent
968,176) 22 C.P.R. (2d) 245 decided on May 24, 1972.
In that case, a claim directed generically to a com-
position 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 was held to
be "substantially taught" by two references which dis-
closed, in the one hand aqueous emulsions of methyl and
ethyl linolcate, and on the other hand emulsified 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. In the
present case, however, applicant is not claiming a
generic invention, but is claiming a selection invent-
ion, within the broad ambit of the prior art. Since it
is applicants submission that he has a selection patent,
the general principles governing the validity of select-
ion patents, were as discussed above in I.G. Farben
Industry A.G.'s patents 47 R.P.C. 289 at page 332 will
now be reiterated: (1) the selection must be based on
securing some advantage by the use of the selected
members; (2) all the selected members must possess the
required advantage; but a few exceptions here and there
would not be sufficient to make the patent invalid;
(3) the selection roust be for "a quality of a special
character" which is peculiar to the selected group and
this quality must not be one which would be obvious to
an expert. It is also necessary "for the patentee to
define in clear terms the nature of the characteristic
which he alleges to be possessed by the selection ...
he must disclose an invention; he fails to do this in
the case of a selection for special characteristics if
he does not adequately define them."
...
In summary, therefore applicants claims are for a new
composition, specially adapted to an unexpected use.
The particular composition is new since the prior art
does not syecifically teach a C8 - C12 fatty alcohol
in combination with a wetting agent; that particular
composition inherits additional novelty since it is a
selection from within the ambit of a broad claim of
compounds. The particular composition is an "invention"
since it possess admitted unexpected unobvious utility.
Consequently, it is submitted that all the requirements
of patentability have been met and that the composition
claims are patentable.
Claims 1 to 22, which refer to a method of inhibiting the growth of suckers
in tobacco plants, have been found allowable. Claim 1 reads as follows:
A method of inhibiting the growth of suckers in
tobacco plants which comprises applying to said
plants an effective amount of a saturated C6 to
C18 alcohol or a mixture of two or more such
alcohols.
We are satisfied that the discovery that the known C6 to C18 alcohols could
be effectively used for inhibiting the growth of suckers in tobacco plants is
the inventive step which gives to the invention the necessary merit (see
Raleigh Cycle Co. Ltd. v. H. Miller & Co. Ltd., (1946) 63 R.P.C. 113).
In a situation of this kind the applicant may obtain claims to the method of
use, such as those already found allowable. He may also obtain novel comp-
osition claims specifically adapted to the new discovery. The novel composi-
tion however, must not just be something artificially created to avoid the
prior art. It must be an integral part of the invention. For example, "gold
dust " added to an old composition might make it novel, but unless its presence
contributes to the invention it would not render the new composition patent-
able.
Mr. Marcus and Mr. Rice raised some interesting points at the Hearing which
we shall carefully consider. Mr. Marcus conceded early in his presentation
that there was, at least in part, some substance to the examiners refusal.
He conceded that "a portion of the claims now on file directed exclusively
to the single fatty alcohols are not clearly patentably over the prior art."
He then submitted amended claims 23 to 32 for consideration by the Board.
These claims are restricted to a wetting agent and a mixture of alcohols.
The Board must now consider whether or not the newly amended claims represent
a novel composition specifically adapted to the new discovery. Claim 23
reads as follows:
A tobacco plant sucker growth inhibiting composition
comprising a mixture of a wetting agent, and a fatty
alcohol component containing mixture of at least two
C8, C9, C10, C11 or C12 fatty alcohols.
At the Hearing Mr, Marcus argued that he was concerned with "selection" type
claims and layed down criteria for them. First, "a substantial advantage is
to be secured by the selected members." The question asked by the Board was,
"Do they have any substantial advantage over the individual alcohols -
that you are now presumably conceding are not patentable." The answer was,
"I donut think so - we are not prepared to say that a mixture in the C8 to
C10 range would have an advantage over a single species." Surely then, the
selected members, as claimed, do not meet the "substantial advantage" criteria.
Another criteria was that, "The selection must be in respect to a quality of
a special character which can fairly be skid to be peculiar to the selected
group." In our view they are not peculiar to this group, and as stated at
the Hearing, "they are also peculiar to the compositions you are not claiming
- as in Heuter. Single alcohol mixed with a wetting agent have the same
properties as you are claiming here." The applicant agreed that "C8, C10
and C12 alone would provide this particular utility." In his summation at
the bearing Mr. Rice stated that, "I don't think we want to make any represent-
ation that the mixture is better than the C8 alcohol alone, the C10 alone,
or the C12 alone.... We represent that the C8 and C12 range is efficacious
in de-suckering tobacco and the mixture is also effective.... We really don't
want to try and distinguish the mixture from any one of the 8 to 12 groups as
far as its efficacy is concerned."
In the jurisprudence we find that, "a mere selection among possible altern-
atives is not subject matter. A selection to be patentable must select in
order to secure some advantage or avoid some disadvantage. It follows that
in describing and ascertaining the nature of an invention consisting in the
selection between possible alternatives, the advantages to be gained, or
the disadvantages to be avoided, ought to be referred to." (see Clyde Nail
Co. Ltd. v. Russell (1916) 33 R.P.C. 291).
The disclosure, as filed, is silent about the specific selection now appear-
ing in the amended claims, In fact it would seem to indicate a different
view. For example, at page 7, lines 14 f.f., we read: "From experimental
results, fatty alcohols with various carbon chain lengths appeared to show
little variability in their effectiveness on sucker control." Claim 1 refers
to the use of alcohols from C6 to C18. It appears clear from the specifi-
cation as filed that this range is the real selection related to the discovery
of the new utility. Restricting the claims to at least two alcohols (claim
23) in an attempt to avoid the prior art, is not, in our view, a true
selection.
In the circumstances we are not persuaded that the evidence before us lays the
formal foundation for allowing claims (23 to 32) on any basis of there being
a "selection" patent. Moreover, the present composition claims are no more
pertinent to the specific utility of the invention than the known compositions
in the prior art.
It is also clear from the cited art that emulsified fatty alcohol composi-
tions (i.e. an alcohol plus a wetting agent) are known in the art, and the
applicant has recognized this. To merely take two alchols and mix them with
a wetting agent is not materially different from using one alcohol with a
wetting agent, unless there is a new or unexpected result. As the evidence
shows, no such result was achieved. The result, as indicated above, is the
same. The applicant also stated that when you manufacture C8 and C10, for
example, "you do not get a pure mixture of alcohols ... it is a nuisance to
separate C8 and C10." Surely, this admission is an indication of lack of
novelty in the selection of these two alcohols.
The Board places on record a reference to a document, as being of interest
only, which refers to a mixture of C10 and C12 alcohols (see H. Luther and
W. Miemenz, Chem Eng. Tech. 29.530-5 (1957).
Despite the contentions of the applicant we are not satisfied that the
claims 23 to 32 meets the criteria for a selection patent. On the other
hand we are satisfied that the alleged invention defined in these claims is
substantially taught in the cited references. The claim to an alleged
novel composition, in our view, is really an artificial one without any real
foundation. In any event, according to the applicant, it is routine pro-
cedure for a mixture of alcohols to be manufactured at the same time in a
single batch.
We recommend that the decision to refuse present claims 23 to 32 be affirmed,
and that amended claims 23 to 32 should not be entered in this application.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have studied the prosecution of this application and reviewed the recommend-
ations of the Patent Appeal Board. In the circumstances I have decided to
refuse instant claims 23 to 32 and not to accept amended claims 23 to 32.
The applicant has six months within which to cancel claims 23 to 32, or to
appeal this decision under the provision of Section 44 of the Patent Act.
J.H.A. Gari‚py
Commissioner of Patents
Dates at Hull, Quebec
this 24th day of February, 1977
Agent for Applicant
Moffat, Butler, Marcus & Graham
P.O. Box 2088, Station I
Ottawa, Ontario
K1P 5W3