BASF Corporation

Patent Trials and Appeals Board

Aug 27, 2020

2019005927 (P.T.A.B. Aug. 27, 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.
14/651,356 06/11/2015 Ronald O. Richardson 27843-857 (PF74684US03) 2273
76656 7590 08/27/2020
Patent Docket Department
Armstrong Teasdale LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
RICCI, CRAIG D
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RONALD O. RICHARDSON
____________

Appeal 2019-005927
Application 14/651,356
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims to an extruded pesticide granular composition. 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(a). Appellant identifies BASF Corporation as the real party
in interest. Appeal Br. 2. Herein, we refer to the Final Action mailed
November 8, 2018 (“Final Act.”); Appellant’s Appeal Brief filed March 1,
2019 (“Appeal Br.”); Examiner’s Answer mailed June 28, 2019 (“Ans.”);
and Appellant’s Reply Brief filed August 5, 2019 (“Reply Br.”).
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STATEMENT OF THE CASE
The Specification describes “extruded pesticide granules including a
urea carrier and at least one pesticide active agent that when mixed with
water form long term stable near micro-emulsions suitable for pesticide
application.” Spec. ¶ 1.
Claims 1, 3, 7, 8, and 10–14 are on appeal and can be found in the
Claims Appendix of the Appeal Brief. Claim 1 is representative of the
claims on appeal. It reads as follows:
1. An extruded pesticide granular composition
comprising urea, a non-ionic surfactant, a pesticide active
ingredient, and water, wherein the pesticide active ingredient has
a water solubility of at least 25 g/L, and wherein the non-ionic
surfactant is present in the composition in an amount of from
about 5 wt.% to about 20 wt.%.
Appeal Br. 9.
Appellant seeks review of Examiner’s rejection2 of claims 1, 3, 7, 8,
and 10–14 under 35 U.S.C. § 103 as unpatentable over Hill,3 EPA,4 and
Misselbrook.5 Appeal Br. 2. Appellant does not argue any claim separately
from independent claim 1 so claims 3, 7, 8, and 10–14 stand or fall with
claim 1. 37 C.F.R. § 41.37 (c)(1)(iv).

2 Examiner rejected the claims as obvious over Hill and EPA “alone or,
alternatively, in further view of Misselbrook.” Final Act. 4–5. Herein, we
consider Examiner’s combination of Misselbrook with Hill and EPA.
3 US 5,709,871; issued January 20, 1998 (“Hill”).
4 EPA Pesticide Fact Sheet: Dinotefuran, EPA Publication No. 738F04015,
available at https://nepis.epa.gov. (“EPA”).
5 US 6,872,689 B1; issued March 29, 2005 (“Misselbrook”).
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The issue is whether the preponderance of the evidence supports
Examiner’s conclusion that the composition in claim 1 is obvious over the
cited prior art.
FINDINGS OF FACT
FF1. Hill teaches “[a] water dispersible solid formulation comprising
an active ingredient,” such as a “pesticide,” “a surfactant of non-ionic type, a
surfactant of anionic type and at least 30 wt% of urea.” Hill, Abstr., 1:65–
2:6. Hill teaches that the “the term ‘active ingredient’ (or similar term)
includes, within its scope, pesticides, for example, insecticides, fungicides,
acaricides, ovicides, nematocides and herbicides.” Id. at 2:7–9.
FF2. Hill discloses exemplary formulations in the form of granules
comprising a pesticide active ingredient (triazamate), urea, water, and a non-
ionic surfactant (Hoe S4004) in amount (18%) that is within the range recited
in claim 1. Hill 7–8 (Ex. 5).
FF3. Hill teaches that the “solubility in water at 25°C of said active
ingredient may be less than 10,000 ppm and is preferably less than 1,000
ppm.” Hill 3:48–49. According to Hill, “It has, surprisingly, been found that
a solid formulation which includes an active ingredient of low solubility in
water does, in fact, disperse relatively rapidly in water.” Id. at 3:52–55.
FF4. Hill teaches that its formulations are preferably prepared by
melting the active ingredient and non-ionic surfactant together and then
mixing them with urea before allowing the mixture to cool. Hill, 5:5–16.
Hill teaches that the product of this process is “allowed to dry and may then
be milled in order to produce a fine powder or formed into pellets or
granules.” Id. at 5:41–43.
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FF5. EPA describes dinotefuran as “a broad-spectrum insecticide”
used to control a variety of “insect pests.” EPA 1–2. EPA teaches that
dinotefuran “has a solubility of 39.83 g/L in water.” Id. at 2.
FF6. Misselbrook teaches that “dispersible granules” comprising a
pesticide and a dispersing agent such as a non-ionic surfactant “may be
prepared by extrusion.” Misselbrook 1:6–10, 1:18. Misselbrook teaches that
such extruded granules are “dry, free-flowing, [and] dustless.” Id. at 3:22.
ANALYSIS
Examiner finds that Example 5 of Hill discloses all of the limitations
of claim 1, except that the pesticide in that example, triazamate, “does not
have a water solubility of at least 25 g/L” and Hill “does not indicate that
the composition is an extruded pesticide granular composition, as instantly
claimed.” Final Act. 5–6.
Regarding the first distinction, Examiner determines that Hill teaches
that its water dispersible formulations “may comprise ‘an active ingredient
of low solubility’” and, therefore, “it would have been obvious (and not
surprising) to one of ordinary skill in the art that [such formulations] could
also include water soluble active ingredients . . . which would similarly
‘disperse relatively rapidly in water.’” Id. at 6. Examiner finds that EPA
teaches a known pesticide, i.e., dinotefuran, which has a water solubility
exceeding 25 g/L. Id. at 7. Examiner concludes that it would have been
obvious to utilize dinotefuran in Hill’s formulation because
[t]he simple substitution of one known . . . active ingredient in a
pesticide formulation for another known pesticide as an active
ingredient in a pesticide formulation is prima facie obvious.
And, as noted by the court in in re Fout, 675 F.2d 297 (CCPA
1982), an express suggestion to substitute one equivalent
component (i.e., an equivalent pesticide) for another is not
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necessary to render such substitution obvious. In the instant case,
(1) the prior art element of Hill performs the function specified
in the claim with only insubstantial differences; (2) the claimed
component and its function was known in the art; (3) a person of
ordinary skill in the art would have recognized the
interchangeability of the elements and could have substituted one
known element for another; and (4) the results of the substitution
would have been predictable.
Id. at 7.
Regarding the “extruded” limitation in the claim preamble, Examiner
finds that Misselbrook teaches that “dispersible granule formulations of
pesticides ‘may be prepared by extrusion.’” Id. at 8. Examiner concludes
that it would have been obvious to formulate the granular composition of
Hill “via extrusion, in an effort to provide ‘a dry, free-flowing, dustless and
rapidly dispersing granular formation,’” as taught in Misselbrook. Id.
We adopt Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 4–11; FF1–FF6) and agree that
the claims are obvious over the articulated combination of Hill, EPA, and
Misselbrook. We are not persuaded by Appellant’s arguments to the
contrary, as explained below.
Appellant first argues “that one of the main focuses of Hill is the use
of an active ingredient having a solubility in water of less than 10,000 ppm,
preferably less than 1,000 ppm” and “nowhere does Hill . . . mention any
active ingredients that have a water solubility of at least 25 g/L.” Appeal Br.
4. Thus, urges Appellant, “it simply cannot be concluded that one skilled in
the art would have any motivation to modify the formulation of Hill . . . with
an active ingredient that has a solubility that is the opposite of what is
disclosed as preferred by Hill.” Id. at 5. We disagree.
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The rejection is premised on a finding that it would have been prima
facie obvious to use dinotefuran, i.e., a known pesticide, as the pesticide
active ingredient in Hill’s granules. Final Act. 7. As Examiner correctly
observed, “when a patent simply arranges old elements [here, substituting
one known pesticide for another] with each performing the same function it
had been known to perform and yields no more than one would expect from
such an arrangement, the combination is obvious.” Id. (quoting KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (internal quotations omitted)).
In other words, contrary to the implication of Appellant’s argument,
Examiner need not show that there was an express teaching in the prior art
that would have motivated a skilled artisan to use dinotefuran as the active
ingredient in Hill’s granules because, as Examiner found, substituting one
pesticide for another is no “more than the predictable use of prior art
elements according to their established functions.” KSR, 550 U.S. at 418.
The record here supports that finding. See FF1, FF5.
Hill’s teaching that the solubility of its active ingredient “may be less
than 10,000 ppm and is preferably less than 1,000 ppm” (FF3) does not
demonstrate otherwise. This teaching refers to Hill’s preferred embodiment.
Nothing in Hill suggests that one of ordinary skill in the art would lack a
reasonable expectation that a more soluble active ingredient, e.g.,
dinotefuran, could be successfully substituted for the exemplified pesticide
in Hill’s water-dispersible granules.6

6 Appellant asserts that “under the Office’s line of reasoning any active
ingredient . . . no matter its respective water solubility, would be obvious to
include in the formulation disclosed by Hill” because Hill teaches that “a
solid formulation which includes an active ingredient of low solubility in
water does, in fact, disperse relatively rapidly in water.” Reply Br. 4.
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Appellant’s argument that “Hill fails to disclose extruded granules” is
also unpersuasive. Appeal Br. 6–7. Misselbrook teaches that dispersible
granules may be prepared by extrusion and describes certain advantages in
doing so. FF6. Based on those teachings, Examiner concluded that it would
have been obvious to prepare Hill’s granules via extrusion as opposed to
milling them. Final Act. 8. Appellant asserts “even assuming it would be
possible to form the composition of Hill by extrusion, there is no reason one
skilled in the art when reading Hill would be motivated to prepare the
compositions of Hill to be in any other form than what is specifically
disclosed therein.” Appeal Br. 7. However, that argument is unpersuasive
because Examiner’s rationale for combining the references is based on the
teachings in Misselbrook, not Hill. See Soft Gel Techs., Inc. v. Jarrow
Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017) (quoting In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)) (“[N]on-obviousness cannot
be established by attacking references individually where the rejection is
based on the teachings of a combination of references.”). Appellant does not
challenge Examiner’s findings concerning Misselbrook in its Appeal Brief.
Moreover, we agree those findings are supported by the record (see FF6) and
that Examiner has articulated a sufficient rationale for modifying Hill’s
process to form granules via extrusion, as taught in Misselbrook.
For these reasons, we determine that the preponderance of the
evidence supports Examiner’s rejection of claim 1. Appellant does not

Appellant has not presented persuasive argument, nor evidence, to explain
why Examiner’s reasoning is not supported by the teachings in Hill. Indeed,
we note that Appellant’s own Specification states that “[s]uitable pesticide
active ingredients include both water-soluble . . . and water-insoluble . . .
pesticide active ingredients.” Spec. 5.
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argue any of the other claims separately from claim 1. Thus, we affirm
Examiner’s rejection of claims 3, 7, 8, and 10–14 for the same reasons.
CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 7, 8,
10–14
103 Hill, EPA,
Misselbrook
1, 3, 7, 8,
10–14

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED