Ex Parte Anderson et al

Patent Trials and Appeals BoardJun 4, 2019

13284303 - (D) (P.T.A.B. Jun. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/284,303 13173 7590 Blue Filament Law 700 E. Maple Road Suite 450 FILING DATE 10/28/2011 06/06/2019 Birmingham, MI 48009 FIRST NAMED INVENTOR Charles W. Anderson 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 ATTORNEY DOCKET NO. CONFIRMATION NO. TAS-194US 7560 EXAMINER ALLEY, GENEVIEVE S ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 06/06/2019 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): ag@bluefilamentlaw.com ap@bluefilamentlaw.com patentdocketing@bluefilamentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLES W. ANDERSON, TIMOTHY D. BIRTHISEL, JAMES R. LYNCH, and JOE SCHALK1 Appeal2018-000241 Application 13/284,303 Technology Center 1600 Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and RYAN H. FLAX, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) involving claims to a weed control particle. The Examiner's rejections of claims 1, 4, 5, 20-22, and 28-36 under 35 U.S.C. Â§ 103(a) are appealed. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 2 1 The Real Party in Interest is identified as "The Andersons, Inc." Appeal Br. 2. 2 Oral argument was heard May 23, 2019. A transcript of the hearing will be made a part of the appeal record in due course. Appeal2018-000241 Application 13/284,303 STATEMENT OF THE CASE Independent claims 1 and 28, reproduced below, are representative: 1. A weed control particle comprising: a delivery granule having a surface and a core; and active agents consisting of two herbicides of: a dicarboximide herbicide, wherein said dicarboximide herbicide is flumioxazin, adhered to the surface, mixed into the core, or a combination thereof; and a dinitroaniline herbicide, wherein said dinitroaniline herbicide is trifluralin, adhered to the surface, mixed into the core, or a combination thereof. 28. A weed control particle comprising: a delivery granule having a surface and a core; and active agents consisting of two herbicides of: a dicarboximide herbicide, wherein said dicarboximide herbicide is flumioxazin, adhered to the surf ace, mixed into the core, or a combination thereof; and a dinitroaniline herbicide, wherein said dinitroaniline herbicide is prodiamine, adhered to the surf ace, mixed into the core, or a combination thereof. Appeal Br. 33, 37 (Claims Appendix). The following rejections are on appeal: Claims 1, 4, 5, 20, 21, and 31-33 stand rejected under 35 U.S.C. Â§ I03(a) over Devic3 and Grichar. 4 Final Action 3. 3 US 7,635,404 Bl (issued Dec. 22, 2009) ("Devic"). 4 W. James Grichar & A. Edwin Colburn, Flumioxazinfor Weed Control in Texas Peanuts (Arachis hypogaeaL.), 3 PEANUT SCI. 30-36 (1996) ("Grichar"). 2 Appeal2018-000241 Application 13/284,303 Claims 1, 4, 5, 20-22, and 31-33 stand rejected under 35 U.S.C. Â§ I03(a) over Devic, Grichar, and Lynch. 5 Final Action 6. Claims 1, 4, 5, 20, 21, and 28-36 stand rejected under 35 U.S.C. Â§ I03(a) over Devic, Grichar, and Satchivi. 6 Final Action 8. FINDINGS OF FACT We adopt the Examiner's findings of fact and rationale on obviousness as set forth in the Final Action and Answer. Final Action 3-13; Answer 2-9. The following findings of fact highlight certain evidence: FF 1. Devic discloses: blends of fertilizer granules and highly absorbent cellulosic granules carrying one or more pesticidal or other active ingredients that resist the formation of actives dust or segregation of the granules and that ensure even and efficient application of both the fertilizer and the active ingredients include but are not limited to herbicides, insecticides, fungicides, wetting agents, microorganisms/micronutrients, biostimulants, root stimulants and industrial and turf related enzymes. Devic 2:52-58 (emphasis added); see also id. at 5:18-32 (discussing embodiments having a discrete core and coating). FF2. Further to the preceding finding of fact, Devic discloses: Any herbicide that is compatible with the cellulosic granules can be used in the practice of the present invention. For example, any one of the following herbicides could be used: benefin, jlumioxazin, dithiopyr, oxadiazon, pendimethalin, penoxsulam, trifluralin and trifluralin/benefin. Devic 6: 17-21 ( emphasis added); see also id. at claim 6. 5 US 2006/0178271 Al (published Aug. 10, 2006) ("Lynch"). 6 US 2009/0062121 Al (published Mar. 5, 2009) ("Satchivi"). 3 Appeal2018-000241 Application 13/284,303 FF3. Further to the preceding findings of fact, Devic teaches that such granules may be sized between about 60-4 mesh (i.e., about 250-4760 Âµm). 7 Devic 4:55-56; see also id. at claim 13. FF4. Further to the preceding findings of fact, Devic teaches that such granules may have a density of about 30-48 pounds per cubic foot (i.e., in excess of 28 lbs./ft.2). Devic 4:62---64; see also id. at claim 12. FF5. Further to the preceding findings of fact, Devic teaches that the active ingredient( s) may be provided by spraying liquid active ingredients on the granules and by applying the active ingredient to the granules' surface in dried powder form (e.g., applied to the surface, where they may or may not be absorbed into the surface, or applied to an extent and processed so that the granules have a uniform mixture of the active component). Devic 5:47-6:10. FF6. Grichar discloses: Field experiments were conducted in 1991 and 1993 to evaluate flumioxazin alone and in various herbicide programs for weed control in peanut. Flumioxazin alone provided inconsistent control of annual grasses, while the addition of pendimethalin or trifluralin improved control considerably. Grichar 30 (Abstract) ( emphasis added). FF7. Grichar further discloses: These data indicated that jlumioxazin alone failed to provide adequate season-long control of annual grasses. 7 Mesh converted to microns using table at https://www.sigmaaldrich.com/ chemistry/ stockroom-reagents/leaming- center/technical-library/particle-size-conversion.html, accessed May 29, 2019. 4 Appeal2018-000241 Application 13/284,303 Control of pitted momingglory was excellent while pigweed and eclipta control was variable with flumioxazin alone. The addition either of a dinitroaniline herbicide (pendimethalin or trifluralin) or a chloroacetamide herbicide (metolachlor) improved weed control considerably. Grichar 35 (Summary) ( emphasis added). FF8. Lynch discloses: A foaming [cellulose material] granule is provided that includes an acid, a gas-evolving acid neutralizing agent, a surfactant foaming agent, and an active agent that is a plant growth enhancer, pest control agent, de-icer or anti-icer. Upon wetting a granule, the acid and neutralizing agent are brought into contact releasing gas that is trapped in the surfactant to form a foam that disperses the active agent to a greater area and more uniformly than a conventional nonfoaming granule containing a like amount of active agent. Lynch Abstract (emphasis added); see also id.,I,I 8, 23. FF9. Satchivi teaches a synergistic mixture of one or more herbicides and discloses that such herbicides can include: dicarboximide herbicides such as benzfendizone, cinidon-ethyl, flumezin, flumiclorac, jlumioxazin and flumipropyn; [and] dinitroaniline herbicides such as benfluralin, butralin, dinitramine, ethalfluralin, fluchloralin, isopropalin, methalpropalin, nitralin, oryzalin, pendimethalin, prodiamine, profluralin and trifluralin. Satchivi ,r 87 ( emphasis added); see also id. ,r 90 ("can be solids, such as, for example, ... granules"), ,r 95 ("compositions may also contain other compatible components, for example, other herbicides, plant growth regulants .... liquid fertilizers or solid, particulate fertilizer carriers"). 5 Appeal2018-000241 Application 13/284,303 DISCUSSION "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability. [Once] that burden is met, the burden of coming forward with evidence or argument shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). We have considered those arguments made by Appellants in the Appeal Brief and properly presented in the Reply Brief; arguments not so presented in the Briefs are deemed to be waived. See 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BP AI 2010) (informative) ("Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived."). "The combination of familiar elements [ or steps] according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem; it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See, e.g., In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). It is obvious to combine known compounds, for their known properties, if they would complement one another. Novo NordiskA/S v. Caraco Pharmaceutical Laboratories, Ltd., 719 F.3d 1346, 1355 (Fed. Cir. 2013). "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been 6 Appeal2018-000241 Application 13/284,303 individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)). It is obvious to those skilled in the art to substitute one known equivalent for another. See In re Omeprazole Patent Litigation, 483 F.3d 1364, 1374 (Fed. Cir. 2007) ("[T]his court finds no ... error in [the] conclusion that it would have been obvious to one skilled in the art to substitute one ARC [alkaline reactive compound] for another."). "[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine." Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). "'The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another."' Id. ( quoting Winner Int 'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)). The Examiner determined that claims 1, 4, 5, 20, 21, and 31-33 would have been obvious over the prior art combination of Devic and Grichar. Final Action 3-6; Answer 2-7. Recognizing that this prior art combination is silent regarding providing a foaming agent, as in Appellants' claim 22, the Examiner added Lynch to the prior art combination for such a teaching. Final Action 6-8; Answer 2, 7-8. Recognizing that the Devic-Grichar combination was also silent as to pairing the herbicide prodiamine with flumioxazin, as required by Appellants' claims 28-30, 32, and 34--36, the Examiner added Satchivi to the combination. Final Action 8-13; Answer 2, 8-9. The Examiner's determinations and conclusions on obviousness are supported by the evidence on appeal. See FF1-FF9; see also Final Action 7 Appeal2018-000241 Application 13/284,303 3-13; Answer 2-9. We discern no error in the Examiner's determinations or conclusions on obviousness. Appellants argue, regarding claims 1, 21, 32, that the Examiner did not identify a sufficient rational underpinning to support motivation to combine Grichar with Devic. Appeal Br. 7, 17-18. Appellants also argue claim 1 recites the active ingredients as "consisting of' flumioxazin and trifuralin, which means "both herbicides [are] associated with a common delivery granule for simultaneous delivery of both herbicides via the common delivery granule," and, in contrast, Grichar applies flumioxazin and trifluralin separately. Id. at 9. Appellants further argue that Grichar teaches away from the claimed invention because it states that the use of flumioxazin and trifluralin stunted peanut plant growth. Id. at 11-13. These arguments are not persuasive. The rationale for combining the teachings of Devic and Grichar is quite apparent. Devic teaches incorporating one or more herbicides in a granule, listing flumioxazin and trifluralin (and pendimethalin) as examples of such herbicides. See FFl, FF2; Novo Nordisk, 719 F.3d at 1355 (obvious to combine components that complement one another); Kerkhoven, 626 F.2d at 850 ( obvious to combine components useful for same purpose). Without more, this is likely sufficient to establish that Appellants' claimed invention would have been obvious; however, Grichar explicitly states that the combination of flumioxazin and trifluralin ( or pendimethalin) achieved superior results. See FF6, FF7. Thus, combining the claimed herbicides would have been obvious. The fact that Grichar teaches the separate application of these herbicides is not determinative; Devic teaches or 8 Appeal2018-000241 Application 13/284,303 suggests that they be applied together on the same granule. See FF5. And, the fact that Grichar indicated that the flumioxazin + trifluralin herbicide combination stunted one species of plant (peanuts), while otherwise providing effective weed control, is not a teaching away from the claimed invention, which does not limit the application of herbicides to peanut plants. Medichem, 437 F.3d at 1165 (the presence of some disadvantages does not obviate motivation to combine). Regarding claims 4 and 31, Appellants argue the claims require that the herbicides are only on the surface of the granules, which would not have been obvious over Devic and Grichar. Appeal Br. 13-14. This argument is not persuasive. Devic teaches or suggests to have its herbicides only on the surface of its granules. FF5. Devic teaches processing the granules so that the herbicide( s) can be uniformly incorporated into the granules, or the herbicides can be absorbed into the surface of the granules, or the herbicides can be retained only on the outer-most surface of the granules. Id. Therefore, these claims would have been obvious. Regarding claim 5, Appellants argue the claim requires a granule particle size of 20-500 Âµm, which would not have been obvious over Devic and Grichar. Appeal Br. 14--16. Similarly, regarding claim 20, Appellants argue the claim requires a granule particle size of 20-4000 Âµm, also not obvious. Id. at 16-17. These arguments are not persuasive. "In cases involving overlapping ranges, [ our reviewing] court ha[ s] consistently held that even a slight overlap in range establishes a prima facie case of obviousness ... [ and has] also held that a prima facie case of 9 Appeal2018-000241 Application 13/284,303 obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties." In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Here, Devic teaches a particle size range of 250- 4 7 60 Âµm, which significantly overlaps and substantially extends beyond the claimed ranges. FF3. Appellants present no evidence the claimed ranges are critical or provide unexpected results. Therefore, the claims would have been obvious over the cited art. Regarding claim 33, Appellants argue the claim requires further including, e.g., a fertilizer particulate or biostimulant in the granule, which is not obvious. Appeal Br. 18-19. This argument is not persuasive. Devic combines the aforementioned herbicides with fertilizer in a granule. FFl, FF2. Thus, this claim would have been obvious over the Devic-Grichar combination. Regarding claims 1, 4, 5, 20-22 and 31-33 as rejected over the Devic- Grichar-Lynch combination, Appellants argue Lynch does not remedy the deficiencies of Devic and Grichar. Appeal Br. 20. This is not persuasive for the reasons above, as we find no deficiencies in Devic or Grichar. Regarding the rejection of claims 1, 4, 5, 20, 21, and 28-36 over the Devic-Grichar-Satchivi combination, Appellants present the same arguments as for the first rejection not including Satchivi. Appeal Br. 22-23. These arguments remain unpersuasive. Regarding claims 28-36, Appellants argue that the Examiner interprets Satchivi incorrectly and that it would be unpredictable to combine its teachings with the other cited art. Id. at 23-31. These arguments are not 10 Appeal2018-000241 Application 13/284,303 persuasive. Satchivi teaches or suggests that pendimethalin, prodiamine, and trifluralin are each dinitroaniline herbicides and, so, are known alternatives, which would be obvious to substitute for one another to be used for their known functions, for example, to be paired with flumioxazin as taught or suggested by Devic and Grichar. FF9; see also FF 1, FF2, FF6, FF7; Omeprazole, 483 F.3d at 1374. Thus, incorporating any such herbicides together in a granule would have been obvious. SUMMARY The rejection of claims 1, 4, 5, 20, 21, and 31-33 under 35 U.S.C. Â§ 103(a) over Devic and Grichar is affirmed. The rejection of claims 1, 4, 5, 20-22, and 31-33 under 35 U.S.C. Â§ 103(a) over Devic, Grichar, and Lynch is affirmed. The rejection of claims 1, 4, 5, 20, 21, and 28-36 under 35 U.S.C. Â§ 103(a) over Devic, Grichar, and Satchivi is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 11