Appeal No. 1998-2047
Application No. 08/400,559
presented data showing the efficacy of cyproconazole treatment of onion seeds
in controlling S. cepivorum infection. Cyproconazole was compared to six other
fungicides at four different concentrations: 0.1, 1, 10, and 100 grams of active
ingredient per 100 kilograms of seed. See ¶ 5. These concentrations
correspond to 0.001, 0.01, 0.1, and 1 gram of active ingredient per kilogram of
seed. Since the instant claims recite treatment with 0.5 to 8.0 grams of
cyproconazole per kilogram of seed, only the highest concentration tested by Dr.
Gisi falls within the scope of the instant claims.2
Dr. Gisi’s data show that at a concentration of 100 grams of active
ingredient per 100 kilograms of seed, all of the compounds tested showed 100%
fungicidal control of S. cepivorum. See Table 1. Thus, the declaratory evidence
shows that cyproconazole, used as recited in the instant claims, is no more
effective against S. cepivorum than other fungicides. The Gisi declaration
therefore does not show any unexpected results for the claimed invention.
Summary
We reverse the rejection for obviousness and enter a new ground of
rejection based on two of the references cited by the examiner, in combination
with a reference of record which provides ample motivation to practice the
claimed method and make the claimed product.
2 We decline to consider the declaratory evidence as it relates to embodiments outside the scope
of the claims. See In re Fenn, 639 F.2d 762, 765, 208 USPQ 470, 472 (CCPA 1981) (“Although it
is well settled that comparative test data showing an unexpected result will rebut a prima facie
case of obviousness, the comparative testing must be between the claimed invention and the
closest prior art.” (emphasis added)).
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