Ex Parte Grech et al

Patent Trial and Appeal Board

Nov 30, 2016

11248373 (P.T.A.B. Nov. 30, 2016)

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.
11/248,373 10/11/2005 Nigel Grech 061802-5001US 1140
43850 7590 12/02/2016
MORGAN, LEWIS & BOCKIUS LLP (SF)
One Market, Spear Street Tower, Suite 2800
San Francisco, CA 94105
EXAMINER
SMITH, JENNIFER A
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
sfipdocketing @ morganlewis.com
donald.mixon@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIGEL GRECH and JOHN PETERSON
Appeal 2015-004681
Application 11/248,373
Technology Center 1700
Before JAMES C. HOUSEL, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
1 This decision makes reference to the Specification filed Oct. 11, 2005
(“Spec.”), the Final Office Action mailed Jan. 22, 2014 (“Final Act.”), the
Appeal Brief filed Dec. 15, 2014 (“Br.”), and the Examiner’s Answer mailed
Jan. 16, 2015 (“Ans.”).
Appeal 2015-004681
Application 11/248,373
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—50, 62—64, and 66. We have jurisdiction under 35 U.S.C. § 6(b).
The subject matter of this appeal relates to fertilizer concentrate
compositions including composite materials including calcium phosphite.
Spec. 62, 67. Claim 1, the sole independent claim, is illustrative
(disputed elements italicized):
1. A fertilizer concentrate comprising:
a suspension of calcium phosphite
wherein said calcium phosphite is present in an amount of
about 0.125 kg of calcium phosphite/kg of fertilizer concentrate
or greater, and said suspension is a member selected from an
aqueous suspension and a non-aqueous suspension; and
an organic acid.
Appellants2 appeal the following rejections under 35 U.S.C. § 103(a):
(1) claims 1, 9, 10, 12, 13, 26, and 27 over Thizy,3 (2) claims 1—4, 6, 7, 38,
39, 41—43, 49, 50, and 66 over Hsu,4 and (3) claims 5, 8, 9-50, and 62—64
over Hsu in combination with various secondary references. Appellants
support their arguments with the Declaration of Nigel M. Grech, Ph.D.,
dated March 2, 2011 (“Grech Decl.” or “Grech Declaration”). Appellants
argue the subject matter of independent claim 1 and rely on those same
arguments for the dependent claims. Br. 10—29. In accordance with
37 C.F.R. § 41.37(c)(l)(iv), and based upon the lack of arguments directed
to the subsidiary rejections, claims 2—50, 62—64, and 66 will stand or fall
2 Appellants identity the real party in interest as Verdesian Life Sciences
U.S., LLC. Br. 3.
3 Thizy et al., US 4,075,324, issued Feb. 21, 1978 (“Thizy”).
4 Hsu, US 6,168,643 Bl, issued Jan. 2, 2001 (“Hsu”).
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together with independent claim 1 from which they depend directly or
indirectly. See In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding
that the Board reasonably interpreted 37 C.F.R. § 41.37 (c)(1) as requiring
“more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art”).
For purposes of this appeal only, the Examiner entered an amendment
cancelling claim 2 and incorporating claim 2 (which further claims an
organic acid) into claim 1. Br. 10; Advisory Action mailed May 27, 2014.
The amendment has not been entered in the application, however. Advisory
Action mailed May 27, 2014. Appellants assert that the amendment of claim
1 moots the rejection over Thizy in this appeal. Br. 10. The Examiner does
not include Thizy among the rejections “applicable to the appealed claims.”
Ans. 2—17. The rejection based on Thizy, therefore, is not before us in this
appeal for at least the reason that there is no rejection of amended claim 1
(or dependent claim 2) over Thizy for us to review.
OPINION
The dispositive issues for the rejections based on Hsu are:
1. Did the Examiner reversibly err in finding that Hsu discloses a
phosphorous acid salt within the claimed amount?
2. Did the Examiner reversibly err in finding that Hsu’s disclosure of
a precipitate is adequate disclosure of the solubility properties of
calcium phosphite forming a suspension?
3. Did the Examiner reversibly err in finding that the Grech
Declaration is insufficient to overcome the rejections?
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After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the stated rejections.
It is the Examiner’s position that Hsu suggests the subject matter of
claim 1 for the reasons stated on pages 2, 3, and 14—19 of the Answer and
pages 5 and 15—19 of the Final Action.
In the Appeal Brief, Appellants argue that because Hsu teaches that
the solution form is critical and precipitates are undesirable, Hsu teaches
away from a suspension. Br. 10-12. Appellants also argue that modifying
Hsu’s solution to be a suspension would change the principle of operation
and render it unsatisfactory for its intended purpose as a phosphorous
fertilizer. Id. at 12—13.
Appellants also contend that the Examiner’s finding that Hsu
discloses an amount of phosphorous acid salt (such as calcium phosphite) in
an amount equal to 0.318 kg/kg total fertilizer based on Hsu’s Example II is
flawed because “no calcium phosphite can possibly be generated in this
process [of Hsu’s Example II].” Id. at 13—14. Appellants additionally
contend that the Examiner’s calculations produce “the amount of
phosphorous acid relative to total fertilizer, not the amount of phosphorous
acid salt (here, potassium phosphite produced by the reaction of the
potassium hydroxide and phosphorous acid).” Id. at 14—15 (emphasis
omitted).
Appellants further contend that the Examiner did not properly weigh
the Declaration evidence and mischaracterized the evidence of record by
referring to calcium phosphate instead of calcium phosphite in one instance.
Id. at 15—17 (citing Office Action mailed Jan. 22, 2014, 18:10—12).
Appellants also assert that the Examiner’s finding that the Declaration
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evidence is not commensurate in scope with the claimed invention
disregards evidence of surprising results containing additional components
that fall within the scope of the claims. Id. at 17—21. According to
Appellants, “[comparison data was provided for the calcium phosphite
formulations of the present invention against their potassium phosphite or
ammonium phosphite counterparts when applied to citrus trees, red cabbage,
or citrus seedlings.” Id. at 19 (citing Grech Decl. 2—6). Appellants also
argue that their discovery and solution of a “previously unknown problem”
of phytotoxicity of prior art phosphite fertilizers also weighs in favor of non­
obviousness of the claims. Id. at 21. Finally, Appellants argue that
inclusion of a negative proviso reciting any and all phytotoxic elements in
the art is not warranted. Id. at 22—23.
The Examiner responds that Hsu’s preference for a solution instead of
a suspension does not alter Hsu’s disclosure “that a mixture of calcium
phosphite with water causes material to precipitate” and would have “lead
one of skill to expect a calcium phosphite suspension.” Ans. 12; see id. at
11 (citing Hsu, 2:1, 3:1—3, 3:52, 4:10-11 for disclosure of low solubility of
phosphite in water and support for fertilizer composition of Hsu not being
present as a fully dissolved solution). Regarding Hsu’s disclosure of the
amount of phosphorous salt in its fertilizer, the Examiner responds:
[wjhile the Hsu reference does not explicitly teach the molar
amount of potassium phosphite producible from the reaction, the
amount of phosphorous component present in the formulation is
comparable to other phosphorous salts which Hsu recited such as
calcium phosphite [See Column 3, lines 9-10]. The substitution
of one phosphorous acid salt taught in the Hsu reference for
another phosphorous acid salt (calcium phosphite) taught in the
Hsu reference is within the level of one of skill in the art.
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Id. at 12—13. The Examiner finds that “Hsu also teaches, in the other
Examples, formulations with about 30 wt. % of the phosphorous acid
component” and “one of skill in the art would expect similar values when
utilizing any of the other disclosed phosphorous salts.” Id. at 13.
Regarding the Grech Declaration, the Examiner responds “[w]hile the
demonstration and experimental results show the variable levels of
phytotoxicity, this does not overcome the teachings of the prior art which
anticipate or make obvious the claimed composition.” Id. at 14. The
Examiner also responds that the evidence of record regarding unexpected
results is not commensurate in scope with independent claim 1 because the
evidence does not address the impact of including mancozeb and not
including ammonium phosphite and potassium phosphite in the calcium
phosphite formulation tested. Id. at 14—15.
We are not persuaded that the Examiner erred in finding that Hsu’s
disclosure of a precipitate in phosphorous fertilizer compositions suggests a
suspension to one of skill. We also are not persuaded that the Examiner
erred in finding the amount of phosphorous salt in Hsu’s composition would
have been expected to be a similar value for the other disclosed phosphorous
salts. In addition, we are not persuaded that the Examiner erred in
considering the secondary evidence of non-obviousness.
Appellants’ arguments are not persuasive for a number of reasons.
First, Appellants do not dispute that the presence of precipitates constitutes a
suspension as required by claim 1. Instead, Appellants contend that because
Hsu teaches that precipitates are undesirable, Hsu teaches away from a
suspension. Br. 11—12. “A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
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from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The Examiner’s undisputed
finding, which is supported by the record, is that Hsu discloses that
precipitates exist in its formulations and form in known phosphorous
fertilizers. Ans. 11—12; Final Act. 15—16 (citing Hsu col. 1:38-45, 3:52,
4:10-11).
Second, the Examiner’s finding that Hsu teaches a fertilizer
concentrate containing a phosphorous acid salt within the claimed amount
and multiple substitutable phosphorous acid salts, including calcium
phosphite, is supported by the record. Hsu, col. 3:1—3, 3:9—10, 3:56—67;
Ans. 2—3, 12—13; Final Act. 5. Appellants do not dispute that Hsu teaches
the interchangeability of the phosphorous acid salts listed therein in column
3, including calcium phosphite. Nor do Appellants dispute that Hsu’s
Example II teaches a concentrate containing a phosphorous acid salt within
the range claimed. Appellants only dispute the Examiner’s calculations, but
not the finding that the phosphorous acid salt in Hsu’s example meets the
claimed amount. Additionally, the Examiner finds that the Appellants’
arguments regarding the calculation of total fertilizer components available
after reaction is a temporal argument not reflected in the claim language.
Ans. 13. Appellants have not filed a Reply Brief in this appeal to address
this point.
Third, Appellants’ declaration evidence was considered by the
Examiner and is not entitled to substantial if any weight for several reasons.
Whether an invention has produced unexpected results is a question of fact.
In reMayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). “[TJhere is no hard-and-
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fast rule for determining whether evidence of unexpected results is sufficient
to rebut aprima facie case of obviousness.” Kao Corp. v. Unilever U.S.,
Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688,
692—93 (Fed. Cir. 1990) (“[e]ach situation must be considered on its own
facts.”). However, a party asserting unexpected results as evidence of
nonobviousness has the burden of proving that the results are unexpected. In
re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). “[I]t is not enough to
show that results are obtained which differ from those obtained in the prior
art: that difference must be shown to be an unexpected difference.” In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Moreover, “when an inventor
tries to distinguish his claims from the prior art by introducing evidence of
unexpected ‘synergistic’ properties, the evidence should at least demonstrate
‘an effect greater than the sum of the several effects taken separately.’”
Merck & Co. v. Biocraft Lab., Inc., 874 F.2d 804, 808 (Fed. Cir. 1989).
Furthermore, an applicant attempting to establish unexpected results must do
so with clear and convincing evidence. In re Heyna, 360 F.2d 222, 228
(CCPA 1966) (“It was incumbent upon appellants to submit clear and
convincing evidence to support their allegation of unexpected . . .
property.”). See also McClain v. Ortmayer, 141 U.S. 419, 429 (1891)
(conclusive evidence needed to establish new function).
Appellants’ evidence that “the mixtures of the calcium phosphite
formulations of the invention and mancozeb are more effective in
suppressing fungal growth than the mixture of potassium ammonium
phosphite with mancozeb” is limited to a single sentence in paragraph 3 of
the Grech Declaration that is (1) conclusory, (2) not supported by any data,
and (3) made by a named inventor. Grech Decl. 13. One’s expertise, even
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draped with a skilled-artisan veil, does not entitle a naked opinion to much
weight. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going
to factual determinations . . . may render the testimony of little probative
value in a validity determination.”). Moreover, the Grech Declaration lacks
any support for what would have been expected from formulations
containing calcium phosphite and mancozeb, apart as well as in
combination, and provides only a conclusory statement that “nor would a
skilled artisan assume that the mixtures of the calcium phosphite
formulations of the invention and mancozeb are more effective in
suppressing fungal growth than the mixture of potassium ammonium
phosphite with mancozeb.” Grech Deck 14. Furthermore, the Grech
Declaration does not establish that the calcium phosphite formulations tested
are formulations that meet the requirements of claim 1. The Grech
Declaration is silent as to whether the formulation included a solution or
suspension of calcium phosphite, the amount of calcium phosphite in the
concentrate, and whether it included an organic acid to meet the
requirements of claim 1.
The Grech Declaration is also insufficient because it does not provide
support for the claimed range of “about 0.125 kg of calcium phosphite/kg of
fertilizer concentrate or greater.” In re Harris, 409 F.3d 1339, 1344 (Fed.
Cir. 2005) (“[T]he record does not show that the improved performance
would result if the weight-percentages were varied within the claimed
ranges. Even assuming that the results were unexpected, Harris needed to
show results covering the scope of the claimed range.”). The Grech
Declaration merely provides a general observation that a known fertilizer
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component, calcium phosphite, performs better than other known fertilizer
components, potassium phosphite and ammonium phosphite, with regard to
one property, phytotoxicity. The Declaration does not provide any measure
of how much “more effective” the composition with calcium phosphite
component performed with respect to fungal growth. The Declaration also
does not establish the alleged unexpected result for fungal growth
suppression and phytotoxicity across the claimed range of calcium phosphite
in the concentrate or even if the concentrate was tested. Because the
Declaration indicates “the phosphites were applied at equivalent PO3'2
concentration of 1.5% w/w by foliar sprays completely covering the canopy
of citrus trees” (Grech Decl. 15), it appears that the claimed concentrate was
not tested, but, rather, a dilution or solution was tested.
It also is well settled that an applicant relying on comparative tests to
rebut a prima facie showing of obviousness must compare his claimed
invention to the closest prior art. See In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984). Neither Appellants nor the Grech Declaration establish
that the formulations tested were compared to the closest prior art. Here, the
closest prior art is Hsu’s composition containing calcium phosphite. Absent
a comparison to the closest prior art, that is, a prior art calcium phosphite
formulation, Appellants’ evidence of unexpected results is entitled to little
weight.
“For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention.” Wyers v. Master Lock
Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (quotation, emphasis, and
alteration omitted). Where the offered secondary consideration actually
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results from something other than what is both claimed and novel in the
claim, there is no nexus to the merits of the claimed invention. Tokai Corp.
v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If
commercial success is due to an element in the prior art, no nexus exists.”)
Based on the evidence of record, Appellants have not established any results
that are claimed and novel in the claim. Appellants’ evidence of alleged
unexpected results, which do not show any significance of the amount of
calcium phosphite present, also undermine Appellants’ arguments
distinguishing Hsu’s compositions based on the amount of calcium
phosphite/kg of fertilizer concentrate.
For the foregoing reasons, we affirm all of the Examiner’s rejections
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
AFFIRMED
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