BASF Corporation

Patent Trials and Appeals BoardMay 26, 2021

2020005677 (P.T.A.B. May. 26, 2021)

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. 14/029,376 09/17/2013 Terrence R. Burke 27843-693 0000062132US05 6172 76656 7590 05/26/2021 Patent Docket Department Armstrong Teasdale LLP 7700 Forsyth Boulevard Suite 1800 St. Louis, MO 63105 EXAMINER SULLIVAN, DANIELLE D ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 05/26/2021 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): USpatents@armstrongteasdale.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte TERENCE R.BURKE __________ Appeal 2020-005677 Application 14/029,376 Technology Center 1600 __________ Before DONALD E. ADAMS, ERIC B. GRIMES, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a ready- to-use foamable pesticide composition. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the Real Party in Interest as BASF Corporation (see Appeal Br. 1). We have considered the Specification of Sept. 17, 2013 (“Spec.”); Final Office Action of Jan. 23, 2019 (“Final Action”); Appeal Brief of July 15, 2019 (“Appeal Br.”); Examiner’s Answer of June 22, 2020 (“Ans.”); and Reply Brief of July 1, 2020 (“Reply Br.”). Appeal 2020-005677 Application 14/029,376 2 Statement of the Case Background “A broad range of compounds have been found to be toxic to insects and other arthropods such that formulations containing the compounds may be used for their control” (Spec. ¶ 6). “However, many arthropods inhabit spaces and voids both inside and outside residential and commercial structures in which it is difficult to apply the compounds” (id.). The Specification teaches “ready-to-use foamable pesticide compositions . . . Once applied, the composition expands to fill the void, space or crevice allowing for greater bioavailability of the pesticide and for more effective control of the target pest” (Spec. ¶ 16). The Claims Claims 1, 5–11, and 15–25 are on appeal. Claim 1 is an independent claim, is representative and reads as follows: 1. A ready-to-use foamable pesticide composition comprising: a diluent; a particulate fipronil pesticide suspended in the diluent; a thickening agent; and a surfactant system comprising at least two fatty acid soaps wherein the pH of the pesticide composition is from about 6.5 to 8. The Rejection The Examiner rejected claims 1, 5–11, and 15–25 under U.S.C. § 103(a) as obvious over Tamarkin2 and Howe3 (Final Act. 3–6). 2 Tamarkin et al., US 2007/0020304 A1, published Jan. 25, 2007. 3 Howe, US 2003/0080445 A1, published May 1, 2003. Appeal 2020-005677 Application 14/029,376 3 The issue with respect to this rejection is: Does a preponderance of the evidence of record support the Examiner’s conclusion that Tamarkin and Howe render the claims obvious? Findings of Fact 1. Tamarkin teaches the insecticide composition is a foamable composition, including: (1) a first insecticide; (2) at least one organic carrier selected from a hydrophobic organic carrier, a polar solvent, an emollient and mixtures thereof, at a concentration of about 2% to about 5%, or about 5% to about 10%; or about 10% to about 20%; or about 20% to about 50% by weight; (3) a surface-active agent; (4) about 0.01% to about 5% by weight of at least one polymeric agent selected from a bioadhesive agent, a gelling agent, a film forming agent and a phase change agent; and (5) a liquefied or compressed gas propellant at a concentration of about 3% to about 25% by weight of the total composition. (Tamarkin ¶¶ 17–22). 2. Tamarkin teaches in “one or more embodiments, the insecticide is a pyrazole insecticide, such as . . . fipronil” (Tamarkin ¶ 47). 3. Tamarkin teaches the “gelling agent can be . . . sodium alginate” (Tamarkin ¶ 82). The Specification teaches “suitable thickening agents are . . . xantham gum . . . sodium alginate (Spec. ¶ 30). 4. Tamarkin teaches in “one or more embodiments, the surface active agent includes a mixture of at least one non-ionic surfactant and at least one ionic surfactant” (Tamarkin ¶ 93). Appeal 2020-005677 Application 14/029,376 4 5. Example 1 of Tamarkin teaches “a foamable insecticide composition containing permethrin (1% or 5%), or malathion (0.5%). The following compositions were prepared by blending the listed ingredients.” Example 1 is reproduced below: ” Tamarkin’s example shows three foamable insecticides, each with a pH of 5.5 (Tamarkin ¶ 135, Example 1). 6. Howe teaches “foam generation equipment of the present invention is particularly well suited for introducing foamed pesticides into walls and other confined or enclosed building locations” (Howe ¶ 1). 7. Howe teaches “the term ‘pesticide’ includes but is not limited to termiticides, fungicides . . . particles of bait treated or impregnated with agents that destroy pests, and other agents used to destroy pests” (Howe ¶ 6). 8. Howe teaches “pesticides of the present invention typically Appeal 2020-005677 Application 14/029,376 5 include: a non-repellant termiticide, such as a non-repellant termiticide with imidacioprid [sic] or fipronil as the active ingredient” (Howe ¶ 46). 9. Howe teaches the “preferred adjuvant of the present invention includes the following ingredients . . .” Table from paragraph 39 of Howe reproduced below: (Howe ¶ 39). The Examiner explains the “adjuvant composition comprises water as a diluent, coconut fatty acid, ethoxylated fatty acid and disodium laureth sulfosuccinate, a thickener” (Final Act. 4). 10. Howe teaches these adjuvants are prepared by mixing ingredients 1–3, then adding and mixing in ingredients 4–6, and then adding and mixing in ingredients 7–9 (Howe ¶¶ 40–43). 11. Howe teaches the “adjuvant has a specific gravity of about 1.020 to 1.026 and a pH (in a 2% solution) of 7.0” (Howe ¶ 44). 12. Howe teaches “a foamable liquid blended in accordance with the present invention will require between 5 and 30 milliliters of the adjuvant of the present invention to be added to 1 liter of the solution or mixture to be foamed” (Howe ¶ 47). Appeal 2020-005677 Application 14/029,376 6 Principles of Law The Examiner has the initial burden of establishing a prima facie case obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[B]ecause the prior art of record teaches pH ranges that overlap with the pH range . . . [the overlap] at least raised a prima facie case of obviousness.” Valeant Pharm. Int’l, Inc. v. Mylan Pharm. Inc., 955 F.3d 25, 33 (Fed. Cir. 2020). Analysis We adopt the Examiner’s findings of fact and conclusion of law (see Final Act. 3–6, FF 1–12) and agree that Tamarkin and Howe render the claims obvious. We address Appellant’s arguments below. Appellant contends Howe’s only disclosure of pH is related to the adjuvant and is not relevant to the composition as a whole. The claimed pesticide composition as a whole requires a pH of from about 6.5 to 8. Tamarkin fails to teach such a pesticide composition and teaches that a pH of 5.5 is important for the composition as a whole. Howe fails to indicate that the pH of the pesticide composition as a whole is of any importance. (Appeal Br. 4). We find this argument unpersuasive because while Tamarkin teaches a pH of 5.5 (FF 5), Appellant does not identify any teaching in Tamarkin that this pH is important or critical for pesticide function. Tamarkin does not discourage or discredit the use of any particular pH values. Howe teaches that the pH of pesticide adjuvants may be 7 (FF 11), teaches the use of fipronil as a pesticide (FF 8), and does not suggest that the pH of 7 will be changed when mixed to form a final composition with the pesticide. Thus, contrary to Appellant’s argument, the prior art teaches a range of pH values Appeal 2020-005677 Application 14/029,376 7 that may be employed with fipronil containing foaming pesticide compositions, and “even a slight overlap in range establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329, 1330 (Fed. Cir. 2003). Appellant contends “it cannot be expected that the addition of such a small amount (5-30 ml or 0.5 to 3%) of adjuvant into a liter of the formulation will result in a composition having a pH from about 6.5 to 8” (Appeal Br. 4). We find this argument unpersuasive because Howe teaches a particular pH (FF 11) and no evidence has been presented rebutting the Examiner’s finding that “Howe has recognized a benefit by including adjuvants having a pH of 7. Therefore Howe provides motivation to optimize the pH of ingredients to 7 without changing the properties of the composition as a whole” (Ans. 8). “Unsubstantiated attorney argument regarding the meaning of technical evidence is no substitute for competent, substantiated expert testimony.” Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005). We note “measurement of pH is on a logarithmic scale, with each whole number difference representing a ten-fold difference in acidity.” Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 21 (1997) (footnote 1). In the absence of a buffer in Howe, the addition of a neutral adjuvant solution of pH 7 would have been expected to shift the pH of the pesticide formulation towards pH 7. Thus, it would have been obvious to optimize the pH to 7 because Howe teaches that this is a desirable pH value (FF 11; cf. Ans. 8). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or Appeal 2020-005677 Application 14/029,376 8 workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). Appellant contends “one of skill in the art is taught that the formulations of Tamarkin should be adjusted to 5.5, which is much lower than the presently claimed pH range” (Appeal Br. 4). We agree that Tamarkin is reasonably understood as suggesting a pH of 5.5 (FF 5). However, the Examiner’s rejection is combination of the teachings of Tamarkin and Howe, and as already discussed, Howe teaches a different foamable pesticide formulation that may be composed of fipronil, water as a diluent, disodium laureth sulfosuccinate as a thickener, and coconut fatty acid and ethoxylated fatty acid as fatty acid soaps (FF 8–9) with a pH of 7 (FF 11). Prior art “must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). It is the combination of Tamarkin and Howe that renders the claims obvious, not Tamarkin alone. Appellant contends even if one of ordinary skill in the art were to modify Tamarkin with the foam adjuvants of Howe, one would have to further modify this combination, without teaching, suggestion, motivation, or other reason provided in Tamarkin or Howe, by substantially raising the pH to arrive at the subject matter of the present claims. Such a combination and modification would require impermissible hindsight. (Reply Br. 3). While we are fully aware that hindsight bias may plague determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has clearly stated that Appeal 2020-005677 Application 14/029,376 9 the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). We agree with the Examiner that adjusting pH is predictable for the ordinary artisan and that Howe teaches “to increase the pH of the individual ingredients to 7, adjusting the pH of the whole composition to 7 would have been considered routine optimization that would not interfere with the properties of the fipronil formulation” (Ans. 8; FF 11). Conclusion of Law A preponderance of the evidence of record support the Examiner’s conclusion that Tamarkin and Howe render the claims obvious. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5–11, 15–25 103(a) Tamarkin, Howe 1, 5–11, 15–25 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED