Ex Parte Chen

Patent Trial and Appeal Board

Aug 17, 2017

11325525 (P.T.A.B. Aug. 17, 2017)

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.
11/325,525 01/05/2006 Chi-Yu R. Chen CS8358C/CS04-11C 7309
34469 7590 08/21/2017
BAYER CROPSCIENCE LP
Patent Department
2 T .W. ALEXANDER DRIVE, P.O. Box 12014
RESEARCH TRIANGLE PARK, NC 27709
EXAMINER
BROWN, COURTNEY A
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
08/21/2017 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):
uspoccs @ bayer. com
docketing @ mm w vlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHI-YU R. CHEN
Appeal 2015-005329
Application 11/325,525
Technology Center 1600
Before JOHN G. NEW, CHRISTOPHER PAULRAJ and
KRISTI L. R. SAWERT, Administrative Patent Judges.
PAULRAJ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to a fluid
thixotropic composition. The Examiner rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Background
According to the Specification, physical and chemical
“[cjompatibility of fertilizers with pesticides in tank-mixtures has proved a
1 Appellant identifies the Real Party in Interest as Bayer CropScience LP
(See Appeal Br. 1).
Appeal 2015-005329
Application 11/325,525
persistently troublesome problem.” Spec. 1 11. 13—14. The Specification
further notes that:
The problem can be persistent despite the use of
compatibility agents which mostly are organic nonionic
surfactants. Between the two incompatibility types, the
physical incompatibility is the most serious of all, since
chemical incompatibility can be generally avoided beforehand.
Physical incompatibility is generally overcome by use of
surfactants or wetting agents and dispersants. Although there
have been pesticide suspension patents of fertilizer compatible
compositions as described above, they are found to suffer from
one major problem, foaming. This can be a persistent problem
during tank mixing with fertilizers, apparently caused by the
presence of surfactant combinations. As a result, the foaming
problem can lead to inaccurate spray volume of the fertilizer
mix.
Id. at 2,11. 3—13. The claimed invention seeks to solve the foregoing
problems with a fluid thixotropic composition that includes a metal
lignosulfate salt and a water soluble salt of a strong acid. Id. at 3,11. 15—25.
The Claims
Claims 1—5, 18, 20-22, and 34-44 are on appeal. Independent claim 1
is representative and reads as follows:
1. A fluid thixotropic fertilizer-compatible pesticidal
composition substantially free of surfactants comprising:
(a) at least one agrochemically active compound;
(b) a metal lignosulfate salt, wherein said metal
lignosulfate salt is a non-surface active dispersant;
(c) at least one lubricant selected from silica or alumina;
(d) a water soluble salt of a strong acid; and
(e) water;
wherein the agrochemically active compound is in the
form of solid particles, wherein the solid particles have an
average diameter from 1 nm to 100 microns and are of a
sufficiently small average diameter to be effectively dispersed
in the composition and the metal lignosulfate salt and water
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Appeal 2015-005329
Application 11/325,525
soluble salt are present in a ratio of from about 2:1 to about
1:20 and are combined in amounts effective to disperse the
particles in the water.
The Rejection
The Examiner rejected the claims under 35 U.S.C. § 103(a) as being
obvious over Schlatter2 and Newton.3
ANALYSIS
Independent claim 1 requires a composition “substantially free of
surfactants,” and independent claim 44 requires a composition “free of a
surfactant.” Cls. land 44. Schlatter teaches a composition requiring 2—10%
of a surface-active agent. Schlatter, 2:49—50. The Examiner, therefore,
acknowledges that Schlatter does not teach a composition that is free of
surfactant (Non-Final Act. 8), but relies upon Newton’s teaching that the
addition of electrolyte permits the preparation of mobile structured systems
containing relatively low concentrations of surfactant. Id. at 8—9 (citing
Newton, 4:66—5:5). The Examiner further relies upon Newton’s teaching of
a lamellar system formed “by adding enough electrolyte to ensure that the
liquid suspending medium separates on centrifuging at 800 G for seventeen
hours to form a lye phase containing little or no surfactant.” Id. at 10 (citing
Newton, 5:44—53). The Examiner concludes “there would have been a
reasonable expectation of success in combining the teachings of the cited
references to form a fluid thixotropic fertilizer-compatible pesticidal
composition that is surfactant free due to the use of a high concentration of
2 Schlatter et al., US 7,307,043 B2, issued Dec. 11, 2007 (“Schlatter”).
3 Newton, EP Pub. 0 498 231, published Aug. 8, 1992 (“Newton”).
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Application 11/325,525
an electrolyte (i.e., any water soluble, ionisable non-surface-active
compound).” Id. at 10-11.
We conclude that the Examiner has not made a prima facie showing
of obviousness. Newton teaches that “[t]he compositions of our invention
preferably contain at least 3%, more usually at least 6%, e.g. at least 8% by
weight of surfactants.” Newton, 3:24—25. Although Newton teaches that
the “[a]ddition of electrolyte permits the preparation of mobile structured
systems containing relatively low concentrations of surfactant” (id. at 4:39—
40), the reference does not indicate that the composition can be free or
substantially free of surfactant altogether. Moreover, the Examiner’s
reliance on Newton’s alternative teaching of a lamellar system formed “by
adding enough electrolyte to ensure that the liquid suspending medium
separates on centrifuging at 800G for seventeen hours to form a lye phase
containing little or no surfactant” (id. at 5:4—6) is misplaced insofar as the
content of a “lye phase” formed upon centrifugation does not suggest or
indicate that the composition as a whole would be free or substantially free
of surfactant. As noted by Appellant, the composition of GB 2,123,846,
referenced in this alternative teaching of Newton, still requires at least 5%
by weight of surfactant, below which “the composition cannot be stabilized
by adding more [electrolyte.” Appeal Br. 7 (citing GB 2,123,846, at p.10,1.
46). The Examiner, therefore, has not shown why an ordinarily skilled
artisan would have chosen to modify the composition of Schlatter so that it
is surfactant-free or substantially surfactant-free.
For the foregoing reasons, we reverse the obviousness rejection of
claims 1—5, 18, 20-22, and 34-44 based on the combination of Schlatter and
Newton.
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Appeal 2015-005329
Application 11/325,525
SUMMARY
We reverse the rejection under 35 U.S.C. § 103(a).
REVERSED
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