Andrew Malec et al.

Patent Trials and Appeals Board

Oct 15, 2020

12456567 - (D) (P.T.A.B. Oct. 15, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/456,567 06/17/2009 Andrew D. Malec 102-009US 8373
74275 7590 10/15/2020
DILWORTH IP, LLC
2 CORPORATE DRIVE, SUITE 206
TRUMBULL, CT 06611
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
10/15/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@dilworthip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW D. MALEC,
TIMOTHY M. FIGLEY, and KRISTA L. TURPIN
____________

Appeal 2019-006038
Application 12/456,567
Technology Center 1600
____________

BEFORE DONALD E. ADAMS, ULRIKE W. JENKS, and
TAWEN CHANG, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–16, 18–24, 26, 27, 29, and 31 (Final Act.2 2).3
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies “Stepan Company” as the real party in
interest (Appellant’s February 14, 2019 Appeal Brief (Appeal Br.) 1).
2 Examiner’s August 21, 2018 Final Office Action.
3 Appellant’s claims 32–42, 44–50, 52, 53, and 55 stand withdrawn from
consideration (Final Act. 2).
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STATEMENT OF THE CASE
This is the second Appeal of Appellant’s claimed subject matter,
which “relates to a storage stable, aqueous, herbicidal formulation
containing an ultra-high concentration of glyphosate salt in combination
with a surfactant system” (Spec.4 ¶ 2; see also Appeal Br. 12–13).
In the first Appeal, 2013-005196, the Board affirmed obviousness
rejections over Pallas5 alone or in combination with Parker.6 Our reviewing
court subsequently “vacate[d] the Board’s [2013-005196] decision holding
[Appellant’s] claims 1–31 . . . obvious and remand[ed] for further
proceedings consistent with [its] opinion.” In re Stepan Company, 868 F.3d
1342, 1348 (Fed. Cir. 2017). The Board subsequently remanded the
Application to “Examiner for further fact finding, analysis, and
consideration consistent with the court’s holding in Stephan” (Remand7 2).
On remand, Examiner reopened prosecution to enter a rejection under
35 U.S.C. § 103(a) over Becher8 (see Non-Final Act.9 2–7). Upon further
prosecution, Appellant amended its claims. Examiner maintained the
rejection over Becher, and Appellant appealed, bringing this second Appeal
to this Board.

4 Appellant’s June 17, 2009 Specification.
5 Pallas et al., US 2003/0087764 A1, published May 8, 2003.
6 Parker et al., US 5,843,866, issued Dec. 1, 1998.
7 Decision on Remand, entered November 21, 2017.
8 Becher et al., US 2006/0019828 A1, published Jan. 26, 2006.
9 Examiner’s January 12, 2018 Non-Final Office Action.
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Appellant’s only independent claim, claim 1, is reproduced below:
1. An ultra-high load, aqueous glyphosate salt-containing
concentrate comprising:
(a) water;
(b) glyphosate salt in solution in the water in an amount
greater than about 39 weight percent of acid equivalent,
based on the weight of the concentrate, said glyphosate
salt being selected from the group consisting of the
isopropylamine salt of glyphosate, the potassium salt of
glyphosate, mixtures of the isopropylamine salt and the
potassium salt of glyphosate and mixtures of the
potassium salt and the ammonium salt of glyphosate;
(c) a surfactant system in an amount ranging from about
1 to about 20 weight percent, based on the weight of the
concentrate, comprising:
(i) from about 10 to about 60 weight percent, based
on the weight of the surfactant system, of one or
more dialkoxylated alkylamines having the
formula
R1-N(R2)(R3)
wherein R1 is a C8-C24 straight or branched chain,
saturated or unsaturated hydrocarbyl group, R2 is
an (AO)nH group and R3 is an (AO)n’H group
wherein A represents an alkylene group and n and
n’ are integers such that n+n’ has an average value
of from 2 to 20;
(ii) from about 5 to about 30 weight percent, based
on the weight of the surfactant system, of one or
more water miscible solubilizers selected from the
group consisting of monohydric alcohols, dihydric
alcohols, polyhydric alcohols, alkylene glycols and
polyalkylene glycols; and

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(iii) from about 30 to about 75 weight percent,
based on the weight of the surfactant system, of
one or more amine oxides having the formula
R4R5R6N→O
wherein R4 is a C8-C24 straight or branched chain,
saturated or unsaturated hydrocarbyl group or
R7CONH(CH2)n, wherein R7 is a C8-C24 straight or
branched chain, saturated or unsaturated
hydrocarbyl group and n is from 1 to 3; R5 and R6
are independently C1-C3 hydrocarbyl groups or
substituted C1-C3 hydrocarbyl groups;
said concentrate having a cloud point above at least
70°C. or no cloud point when the concentrate is heated to
its boiling point.
(Appeal Br. 12–13.)

Claims 1–16, 18–24, 26, 27, 29, and 31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Becher.

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Becher discloses, inter alia,
an aqueous herbicidal concentrate composition comprising
glyphosate, predominantly in the form of the potassium salt
thereof in a concentration of at least 65 grams acid equivalent
per liter, and an auxin herbicide comprising one or more auxin
herbicides selected from the group consisting of 2,4-D, 2,4-DB,
dichlorprop, MCPA, MCPB, mecoprop, dicamba, picloram,
quniclorac and agriculturally acceptable salts or esters thereof.
The herbicidal concentrate composition further comprises a first
surfactant component in solution or stable suspension, emulsion
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or dispersion comprising one or more surfactants selected from
the group consisting of secondary or tertiary amines,
dialkoxylated quaternary ammonium salts, monoalkoxylated
quaternary ammonium salts, quaternary ammonium salts, ether
amines, amine oxides, dialkoxylated amines, aminated
alkoxylated alcohols, alkyl alkoxylated phosphates and
alkylpolyglycosides.
Yet another embodiment of the present invention is
directed to an aqueous herbicidal concentrate composition
comprising glyphosate, predominantly in the form of the
isopropylammonium salt thereof in a concentration of greater
than 360 grams acid equivalent per liter, an auxin herbicide
component comprising one or more auxin herbicides selected
from the group consisting of 2,4-D, 2,4-DB, dichlorprop,
MCPA, MCPB, mecoprop, dicamba, picloram, quniclorac and
agriculturally acceptable salts or esters thereof, and a surfactant
component in solution or stable suspension, emulsion or
dispersion, comprising one or more surfactants. The glyphosate
(acid equivalent basis) and the auxin herbicide component (acid
equivalent basis) are present in a weight ratio of at least 9.5:1
and the composition has a cloud point of at least about 50° C.
and a crystallization point not higher than about 0° C.
[A]nother embodiment of the present invention is
directed to a method of killing or controlling weeds or
unwanted plants comprising diluting an aqueous herbicidal
concentrate composition in an amount of water to form an
application mixture and applying a herbicidally effective
amount of the application mixture to foliage of the weeds or
unwanted plants, wherein the weeds or unwanted plants
comprise Commelina and the aqueous herbicidal concentrate
composition comprises glyphosate or a herbicidal derivative
thereof, an auxin herbicide component comprising one or more
auxin herbicides selected from the group consisting of 2,4-D,
2,4-DB, dichlorprop, MCPA, MCPB, mecoprop, dicamba,
picloram, quniclorac and agriculturally acceptable salts or esters
thereof, and a surfactant

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component in solution or stable suspension, emulsion or
dispersion, comprising one or more surfactants.
(Becher ¶¶ 11–13; see Ans. 4 (citing Becher Abstract and ¶¶ 11–13 and 41–
42) (Examiner finds that Becher discloses aqueous “herbicidal compositions
comprising glyphosate . . . having [a] cloud point of at least 50 degrees
Celsius comprising at least 65 g/L of glyphosate in the form of the potassium
salt or the isopropylamine salt and surfactants selected from amine oxides
and dialkoxylated amines,” wherein Becher’s “dialkoxylated alkylamines
include Ethomeen C/12, C/15, C/20, T/12, T/20 and T/25” and “amine
oxides include Chemoxide L70”); see also Ans. 4 (citing Becher ¶¶ 102–103
(Examiner finds that Becher exemplifies “[e]thoxylated tallowamine and
myristyl dimethyl amine oxide”); Ans. 4 (citing Becher ¶¶ 20–32)
(Examiner finds that Becher’s “formulations may include a co-herbicide
and ammonium salt as well”); Ans. 7–8 (citing Becher ¶¶ 11–13).
FF 2. Becher discloses that “the surfactant component [of its aqueous
herbicidal composition] is present in an amount of at least about 5 wt. %
based on the total weight of the composition” (Becher ¶ 34; see also Ans. 4
(citing Becher ¶ 34) (Examiner finds that “[t]he amount of surfactants [in
Becher’s composition] are at least 5% of the total weight of the
formulation”); Ans. 8 (citing Becher ¶ 34)).
FF 3. Examiner finds that Becher discloses that its “formulations comprise
ratios of glyphosate to surfactant can be about 1:1 to about 20:1” (Ans. 9
(citing Becher ¶ 52)).
FF 4. Examiner finds that Becher’s composition may comprising
“[a]dditional excipients include[ing] PEG 600, 1500, 4000 and 6000” (Ans.
4 (citing Becher ¶ 71); see also Ans. 8 (citing Becher ¶ 71)).
FF 5. Examiner finds that Becher does not disclose
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the specific ranges within the surfactant system for the
dialkoxylated alkyl amine, diethoxylated tallow amine (10-60%
of the solvent component); the water miscible solubilizers (5-
30%); and the amine oxides (30-75%) to form a concentrate
having a cloud point above at least 70 degrees Celsius when the
concentration is heated to its boiling point.
(Ans. 4–5.)
ANALYSIS
As our reviewing court explained, Appellant’s Specification
is directed to herbicidal formulations containing glyphosate salt
with a surfactant system. Surfactants can enhance glyphosate’s
effectiveness as an herbicide by providing better adherence to
leaves, thereby enhancing penetration. According to the
[S]pecification, “[t]he present invention is based on the
unexpected discovery that surfactant systems comprising
dialkoxylated alkylamine, water miscible solubilizer and amine
oxide allow for formulation of ultra-high loaded (‘high-
strength’) glyphosate salt concentrates possessing high or no
cloud points.” [Spec.] ¶ 13. A cloud point is the temperature at
which a solution becomes cloudy due to the surfactants
becoming insoluble and separating into layers. Cloudiness can
be avoided if the cloud point is higher than the solution’s
temperature or if the solution is cooled before adding the
surfactant. The [S]pecification explains that because
glyphosate salt is created at about 75°C, it is advantageous to
formulate glyphosate with a surfactant system exhibiting a high
cloud point to “obviate the necessity of waiting for the
temperature of the glyphosate salt reaction product to cool
down.” [Spec.] ¶ 7. Surfactant systems with high cloud points
or no cloud point, in which the solution never becomes cloudy,
allow for quicker formulation of glyphosate concentrates and
thus quicker delivery to the market. Id.
Stepan, 868 F.3d at 1344.
Examiner recognizes that Becher does not disclose
the specific ranges within the surfactant system for the
dialkoxylated alkyl amine, diethoxylated tallow amine (10-60%
of the solvent component); the water miscible solubilizers (5-
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30%); and the amine oxides (30-75%) to form a concentrate
having a cloud point above at least 70 degrees Celsius when the
concentration is heated to its boiling point.
(FF 5). Examiner finds, however, that Becher discloses: (a) “[S]urfactants
range from at least 5% of [its] formulation whereas [Appellant’s] claims
only require 1-20% of surfactant” and (b) “the cloud point temperature to be
at least 50 degrees Celsius, which means any temperature above 50 degrees
is contemplated and thus encompasses a cloud point temperature of 70
degrees since 70 degrees[, which] meets the definition of ‘at least above 50
degrees’” required by Appellant’s claimed invention (Ans. 5; see also FF 1–
2). Therefore, based on Becher, Examiner concludes that, at the time
Appellant’s invention was made, it would have been prima facie obvious “to
formulate the specific solvent system with components i), ii) and iii) with a
reasonable expectation of success” (Ans. 5). In this regard, Examiner
reasons that “[o]ne of ordinary skill would have been motivated to make the
formulation since Becher teaches that the surfactants can range from at least
5% of the formulations” (id.; see id. at 6 (Examiner finds that Becher
discloses “all the components found in the surfactant system and also teach
formulating glyphosate formulations with a cloud point greater than 50
Degrees Celsius. Therefore, the claimed invention would have been prima
facie obvious to one of ordinary skill in the art at the time of [Appellant’s]
invention”); id. at 7 (Examiner reasons that because “Becher teaches that
other surfactants may be selected, one of ordinary skill in the art would have
been motivated to combine different surfactants into the formulations in
order to make alternative solutions”)).
In sum, Examiner reasons that because Becher discloses an aqueous
composition comprising, inter alia, glyphosate and surfactants, having a
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cloud point of at least about 50º C, there would have been a reasonable
expectation that a person of ordinary skill in this art would optimize
Becher’s composition to achieve a cloud point above at least 70º C, because
“a cloud point of at least 50 degree Celsius . . . encompasses formulations
with a cloud point of at least about 70 degrees Celsius” and “where the
claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a
prima facie case of obviousness exists” (Ans. 11 (citing MPEP § 2144.05
and In re Wertheim, 541 F.2d 257 (CCPA 1976)); see FF 1; see also Ans. 5).
This is, however, the same rationale our reviewing court found
unpersuasive in Stepan. See Stepan, 868 F.3d at 1345 (In Stepan, Examiner
found that “Pallas disclose[d] highly-loaded glyphosate compositions
containing surfactants having a cloud point of at least 50ºC and ideally
60ºC” and, although, “Pallas does not teach a cloud point about
70ºC . . . achieving this cloud point would be a matter of ‘optimizing the
formulation’ because Pallas teaches the ideal cloud point should be above
60ºC.”). On this record, Examiner failed to explain why it would have been
routine optimization to select, from Becher’s disclosure, the specific
surfactants required by Appellant’s claimed invention and then adjust the
concentration of these surfactants to achieve a cloud point about at least
70º C as required by Appellant’s claims (see Appeal Br. 4 (Appellant
contends that Examiner recognizes that “Becher fails to teach the claimed
ranges for Appellant[’s] claimed surfactant combination and fails to teach
that the formulation should have a cloud point greater than 70º C”); see FF
5; Reply Br. 2 (Appellant contends that its “claims require not only a
specific combination of surfactant classes . . ., but also a specific proportion
of those components, particularly a high proportion of the amine oxide”
resulting in a composition having a cloud point above at least 70º C or not
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cloud point when the concentrate is heated to its boiling point). Cf. Stepan,
F.3d at 1346 (“Missing from the Board’s analysis is an explanation as to why
it would have been routine optimization to arrive at the claimed invention”).
Stated differently, even if a person of ordinary skill in this art would select,
from Becher, the specific components required to achieve Appellant’s
claimed surfactant system, Examiner fails to establish an evidentiary basis
on this record to support a conclusion that Becher suggests optimizing the
concentration of the components of this surfactant system to achieve a cloud
point above 70º C. Thus, we agree with Appellant’s contention that
“Examiner erroneously concluded that any combination of the surfactants
disclosed by Becher and used at 5% or more would yield success in making
formulations having cloud points greater than 70º C because Becher’s
teachings as a whole do not support that position” (Appeal Br. 10; cf. Ans.
10 (Examiner concludes that because Becher discloses “herbicidal
compositions comprising glyphosate which have a cloud point of at least 50
degrees Celsius,” Becher teaches “one of ordinary skill . . . to make a
glyphosate formulation with a cloud point of at least about 70 degrees
Celsius with a reasonable expectation of success”); Ans. 11 (Examiner
asserts that because Becher discloses “glyphosate compositions with a cloud
point greater than 50 degrees Celsius . . . cloud points of at least about 70
degrees Celsius are encompassed by Becher”)).
Further, here, as in Stepan, Examiner failed to establish that a person
of ordinary skill in this art would have had a reasonable expectation of
success in formulating a composition having a cloud point of at least 70º C.
See id. at 1347 (“Reciting Pallas’ teachings that ‘any combination’ of
surfactants may be used and that a cloud point above 60ºC is desired fails to
illuminate why a skilled artisan would have selected the claimed
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combination of surfactants and reasonably expected a cloud point above at
least 70ºC.”).
Examiner’s reliance on Wertheim to establish a prima facie case of
obviousness is inapplicable for the two reasons set forth in Stepan:
First, for the reasons discussed above, . . . [Examiner] did not
establish a prima facie case of obviousness because it failed to
adequately articulate its reasoning. See In re Kahn, 441 F.3d
977, 986 (Fed. Cir. 2006) (“[T]o establish a prima facie case of
obviousness based on a combination of elements disclosed in
the prior art, . . . [Examiner] must articulate the basis on which
it concludes that it would have been obvious to make the
claimed invention.”). Second, . . . [Appellant] does not merely
claim a range of surfactants that is within or overlaps with the
range of surfactant systems taught by [Becher]. The claimed
surfactant system contains four elements. The first three
elements describe the surfactants, and their respective ranges,
that comprise the surfactant system. The fourth element limits
the combination of those surfactants to only those combinations
that produce a cloud point above at least 70°C or no cloud point
at all. The cloud point thus limits and defines the scope of what
surfactant combinations satisfy the claimed composition. It
therefore may be that not all compositions that contain the
claimed combination and range of surfactants fall within the
claims. As an element of the composition claims, it . . . [is
Examiner’s] burden to show that achieving a cloud point above
70°C would have been obvious to a person of ordinary skill in
the art.
Stepan, F.3d at 1348; see Appeal Br. 8 (Appellant recognizes that Becher
discloses compositions having cloud points greater than 70º C, but contends
that Becher fails to provide a person of ordinary skill in this art a reasonable
expectation of success in achieving a composition, comprising an amine
oxide as a surfactant component, that has a cloud point greater than 70º C);
Reply Br. 5 (Appellant contends that “Becher offers the skilled person no
such reasonable expectation [of success]”).
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CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 1–16, 18–24,
26, 27, 29, and 31 under 35 U.S.C. § 103(a) as unpatentable over Becher is
reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16, 18–24,
26, 27, 29, 31
103(a) Becher 1–16, 18–24,
26, 27, 29, 31

REVERSED