COMMISSIONER' S DECISION
OBVIOUSNESS: Combatting Undesirable Aquatic Plant Life
Claims 1 to 23 were rejected as unpatentable over the cited art. In response the
Applicant submitted a proposed new claim defining copper complexes which clears
the art. Amended claims 1 to 15 are now based on this claim.
Rejection Affirmed - amended claims accepted.
****
Patent application 209196 (Class 260-429.7), was filed on Sept. 13,
1974 for an invention entitled "Copper (II) Alkanolamine Complexes
Useful As Algaecides And Herbicides." The inventors are Carol B.
Freedenthal et al, assignors to Kocide Chemical Corporation. The
Examiner in charge of the application took a Final Action on May 1,
1980 refusing to allow it to proceed to patent.
The application is directed to a method and a copper complex for combat-
ting undesirable aquatic plant life in a water locus.
In the Final Action the Examiner refused all of the claims in view of
the following United States patents:
2,446,682 Aug. 10, 1948 Whitner
2,734,028 Feb. 7, 1956 Domogalla
These patents are directed to methods of combatting algae in water with
a concentrated aqueous solution of copper.
In that action the Examiner had this to say (in part):
...
Claims 1 to 23 are rejected as being unpatentable in view of
United States Patent 2,734,028. The method of combatting algae
in water and a concentrated aqueous solution of copper (II)
complex claimed in this application are clearly taught in
column 1 last paragraph, column 2 lines 1 to 38 and lines
64 to 67 and claims 1, 3 to 6 and 8 of the United States Patent
2, 734,028.
The paragraph bridging columns 1 and 2 and example 6 of
United States patent 2,446,682 teaches that a portion of
the water-insoluble copper hydroxide (or hydrated oxide)
is dissolved in an aqueous solution of an alkylolamine
and a solution of the alkylolamine-copper complex, which is
substantially devoid of alkylolamine salts, is obtained.
Therefore it is abundantly clear that copper (II) complex
has been prepared from basic copper (II) salt which are
water-insoluble and the said copper (II) complex is quite
stable.
There is no indication in the applicant's disclosure that the
dehydrated or crystalline forms of the prior art copper (II)
complex have special advantages over the concentrated
aqueous solution of the said complex. Therefore claims 18
to 23 are further rejected as being unpatentable in view of
United States patents 2,446,682 and 2,734,028.
...
In response to the Final Action the Applicant submitted a new claim 13 for
consideration. He argued that this claim clearly avoids the cited refer-
ences. He also had, inter alia, this to say:
...
It is submitted that in the present instance there is a pre-
ferred concentration making the complex particularly suitable
œor its intended purpose. The Examiner has relied on Example
6 of U.S. Patent 2,446,682 wherein a complex of copper hydroxide
and triethanolomine is said to be obtained. In this Example 6
copper hydroxide is prepared by the addition of aqueous sodium
hydroxide to copper sulphate. The obtained copper hydroxide
is then isolated and reacted with triethanolamine. The copper
content of the solution obtained according to Example 6 is,
however, very low (0.9% of copper oxide per 100 cc), and the
difference between the concentration of the basic copper salt sol-
ution (Example 6) with the copper concentration in the other
examples, where acidic copper salts were used (2.5% in
Example 1, 5.0% in Example 4 and 7.5% in Example 5) can be
clearly seen as consistent with the apparent difficulties in
working with the insoluble basic copper compound. Therefore
claims such as claim 13 and its dependent claims which are
clearly limited to a much higher concentration of copper than
taught by the reference clearly overcome the reference. The
concentration of 6 to 10% is particularly suitable for applicant's
purpose. As U.S. Patent 2,446,682 does not describe these
concentrations and gives no hint of applicant's purpose, it is
submitted that this limitation is amply sufficient to impart
patentability to the product claims.
The Examiner's objection to claims such as claim 13 would seem
to be that, as applicant's disclosure indicates a broader
range of concentrations can be used, there is no invention in
selecting a preferred concentration and that there has been
an insufficient showing of special advantages to justify
claims for the dehydrated or crystalline forms. This objection,
as previously pointed out, is submitted to be based on an
application of the wrong test. The test is not whether someone
knowing of applicant's invention would make up the composi-
tions in these forms, the test is whether, as stated in
Continental vs Short in the quotation reproduced at page xxi
of the Commissioner's decision on Patent 1,014,068, whether
the effect of the claims is to prevent anything being done
that had been done or proposed previously. It has not been
shown that U.S. Patent 2,446,682 discloses the products claimed
in any of claims 13 to 20 or 22. There is also no disclosure
in that patent of applicant's purpose. The results achieved
by applicant are certainly unexpected to someone reading the
teaching of U.S. Patent 2,446,682 which has an entirely
different object. Therefore, these claims should be allowable
over U.S. 2,446,682 in the absence of some other sound objection.
There is no good reason to reject claims restricted to 6-10%
which is a small range encompassing the example for which
applicant has demonstrated unexpected superiority for purposes
not even contemplated by U.S. 2,446,682.
...
The issue before the Board is whether or not the Applicant had made a patent-
able advance in the art. Proposed new claim 13 reads:
A storage-stable water soluble aqueous concentrate comprising a
water solution of a complex of cupric hydroxide with a trialkano-
lamine of formula I,
(See formula 1)
wherein R1 is hydroxyalkyl (C2-10) and
R2 and R3 are hydroxyalkyl (C2-8), the aggregate
number of carbon atoms in R1, R2, and R3 being
C6 to C10,
or with a mixture of a trialkanolamine of formula I with a
dialkanolamine (C4-10), ratio of the trialkanolamine or
trialkanolamine/dialkanolamine mixture to cupric hydroxide
being in the range of from 1.75 to 2.2:1, said solution contain-
ing from 6 to 10 percent by weight of elemental copper.
We have carefully reviewed the prosecution of this application and studied
the cited art. It is our view that the Whitner patent, which broadly describes
an alkanol amine-copier complex, does not specifically teach nor suggest the
copper complexes of proposed claim 13. The same applies to the Domogalla
patent.
With this in mind we contacted the Agent, Mr. D. Watson, and discussed our
views with him. On September 8, 1981 Mr. Watson cancelled all of the claims
on file and submitted new claims 1 to 15 with claim 1 as the broadest claim
and the same as proposed claim 13 discussed above.
No further discussion is therefore deemed necessary and we recommend that
amended claims 1 to 15 be accepted.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and concur with the
reasoning and findings of the Patent Appeal Board. Accordingly, I direct
that prosecution should resume on the basis of the amended claims.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 29th day Of October, 1981
Agent for Applicant
Gowling & Henderson
Box 466, Terminal A,
Ottawa, Ont.