In re Pearson

• Decision Date: 25 April 1974
• Docket Number: Patent Appeal No. 9226.
• Citation: 494 F.2d 1399,181 USPQ 641
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: Application of Melton T. PEARSON.

181 USPQ 641, 494 F.2d 1399 (1974)

Application of Melton T. PEARSON.

Patent Appeal No. 9226.

United States Court of Customs and Patent Appeals.

April 25, 1974.

Geoffrey R. Myers, Bethesda, Md. (Moore & Hall, Washington, D. C.) attorney of record, for appellant.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Fred E. McKelvey, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, RICH, MILLER and LANE, Judges, and ALMOND, Senior Judge.

ALMOND, Senior Judge.

Appellant brings this appeal from a decision of the Patent Office Board of Appeals that affirmed the examiner's rejection of claims 59-79 and 83-86 in his application¹ entitled "Novel Compositions and Methods of Use." The parties have submitted the case on the record and briefs. We affirm in part and reverse in part.

The Invention

Appellant's invention relates to a composition and its use to inhibit the formation of "pops" and "unsound kernels" during the growth of a peanut crop. According to the record, the term "pops" refers to peanut shells in which no peanut has developed at maturity. By contrast, the term "unsound kernel" is used to describe the condition in which the peanuts that do develop within the shell are small and malformed. An extensive occurrence of either defect significantly reduces the value of a peanut crop.

An adequate summary of the prior art method for avoiding pops and unsound kernels is set forth in the following extract from appellant's specification:

Although the exact biological reason for the formation of "pops" and unsound kernels is not known at the present time, it was known as early as 1800 that if the earth surrounding a peanut plant is treated with some form of calcium-containing compound the problem of "pop" and unsound kernel formation could be materially reduced. In recent years this land treatment has been refined to a highly sophisticated degree. Such a treatment is currently referred to by those in the industry as landplastering. Landplastering as used today consists of spreading large quantities of an inorganic calcium salt (e.g. CaO, CaCO3 and preferably CaSO4) on the ground surrounding the peanut plant. Experts in the use of this landplaster technique advocate the criticality of both the time and place at which the calcium salt must be applied if the technique is to be effective. Generally speaking, current expert opinion is that to be at least operative and at best, effective, the calcium salt must be applied at early bloom to the soil at the base of the plant in order to insure that calcium is present at the points of pegging when it occurs. This is usually accomplished by applying a 16-inch band of the salt to the soil centered over the plant row. As is well known, "pegging" is a term used in the peanut industry to describe that process which occurs wherein the bloom-shoots of a peanut plant bend downward from their basically upright position and seek entry into the earth to thereby form "pegs" in the earth from which peanut pods will grow. Although such landplaster techniques have proved useful in diminishing the problem of "pop" and unsound kernel formation, they do require the use of large quantities of the calcium salt and thus result in high costs. For example, it has been found that in most peanut producing areas, about 500 to 1000 lbs. per acre of the preferred compound gypsum (commercially available CaSO4, having particle sizes of about 100 to 200 microns), must be applied to the soil in order to substantially eliminate the formation of "pops" and unsound kernels by landplaster techniques. For most other calcium salts equal or greater amounts per acre are required to achieve the same results.

Appellant's invention, which also involves the use of calcium compounds to reduce the occurrence of pops and unsound kernels, is summarized in the specification as follows:

The basic composition as contemplated by this invention is comprised of a calcium-containing compound of reduced particle size. By reduced particle size is meant, particles having a size of about 20 microns or less, preferably of submicron size. Such basic compositions may be in dust, powder, slurry, or other conventional form. Preferably such compositions also include fungicides, insecticides, herbicides, and mixtures thereof.

The novel techniques as contemplated by this invention generally comprise contacting the foliage of a peanut crop with the above described compositions to thereby reduce the number of "pops" and unsound kernels formed in a particular peanut crop. In most instances, from about 15 to about 80 pounds per acre of a calcium-containing compound having a particle size of about 20 microns or less, preferably of about 2 microns or less, and most preferably of sub-micron size, and preferably from 20 to 75 pounds per acre, are all that is necessary to apply to the foliage of a peanut crop in order to substantially eliminate the problem of "pops" and unsound kernels.

According to the specification, the preferred calcium compound is calcium sulfate (CaSO4), especially in the form of its naturally occurring dihydrate (CaSO4.2H2O) known as gypsum.

Composition claim 59 and method claim 75, both of which are reproduced below, are representative of the claims on appeal.

59. An anti-pop and unsound kernel peanut foliage preparation for reducing pops and unsound kernels in peanut plants comprising, as an active ingredient, a calcium-containing compound of a sufficiently small particle size which when applied to the foliage of a peanut crop will substantially reduce the formation of pops and unsound kernels.

75. A method of treating a peanut crop comprising applying to the foliage of said peanut crop a sufficient amount of a composition comprised of, as an active ingredient, a calcium-containing compound having a sufficiently small particle size to substantially reduce the formation of pops and unsound kernels.

The remaining composition claims add one or more limitations. These limitations include requirements that the calcium compound be CaSO4 and that the average particle size be less than 20 microns, or even submicron (less than 1 micron) in size. Other limitations require that the composition include a glycol ether, lignin sulfonate or a fungicide and that the composition have sufficient calcium compound so that it can be applied at the rate of 15-80 pounds per acre.

The method claims closely parallel the composition claims in format in that they specify foliage treatment with a composition generally as set forth in the composition claims. Two of these claims, 84 and 85, require separate consideration. Claim 84 is directed to a method wherein the composition used contains a fungicide.

Claim 85 stands in a somewhat different posture in that it is an attempt to define a method of treatment as an improvement to the conventional landplastering process described supra. Claim 85 reads as follows:

85. In the method of treating a peanut plant by applying to the soil at the point of pegging, a layer of a calcium-containing compound, the improvement which comprises, the additional application, but to the foliage of said peanut plant, of a composition containing, as an active ingredient, a calcium-containing compound having a particle size less than about 20 microns such that, upon the application of said active ingredient to the surfaces of the foliage of the peanut plant, said active ingredient is introduced into the structure of said plant, the combined application both to the soil and to the surfaces of the foliage of the peanut plant being in an amount and at a rate per acre of said crop sufficient to reduce the formation of peanut pops and unsound kernels in the peanuts yielded by said crop.

The board reversed the examiner's rejection of method claims which call for applying to the peanut plant a composition wherein either a glycol ether or lignin sulfonate is used in combination with the calcium compound.

Opinion

The examiner's rejection of the claims in issue finds its statutory basis in 35 U.S.C. § 103. However, the board interpreted the examiner's reasoning, accurately we think, as setting forth as one ground for the rejection that the claims did not define novel subject matter. The board affirmed the rejection on this ground.

Of course, a rejection such as that sustained by the board would normally be based upon one of the applicable subsections of 35 U.S.C. § 102. However, this court has sanctioned the practice of nominally basing rejections on § 103 when, in fact, the actual ground of rejection is that the claims are anticipated by the prior art. See In re Dailey, 479 F.2d 1398 (Cust. & Pat.App. 1973). The justification for this sanction is that a lack of novelty in the claimed subject matter, e.g., as evidenced by a complete disclosure of the invention in the prior art, is the "ultimate or epitome of obviousness." In re Kalm, 378 F.2d 959, 962, 54 CCPA 1466, 1470 (1967).²

The solicitor suggests that we resolve this case by first determining whether the claims define novel subject matter and, if one or more do, then determine whether unobvious subject matter is set forth.³ In order to facilitate our discussion of these questions, we shall separately consider the merits of the rejection as applied to the composition and method claims.

The Composition Claims

The board interpreted the composition claims as reading on compositions that include a calcium compound of small particle size and held that such...