Ex Parte Kirby et alDownload PDFPatent Trial and Appeal BoardDec 9, 201511722912 (P.T.A.B. Dec. 9, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111722,912 0612712007 7590 12/09/2015 Legal Department Huntsman Corporation 10003 Woodloch Forest Drive The Woodlands, TX 77380 FIRST NAMED INVENTOR Andrew F. Kirby 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. 81665 4116 EXAMINER PRYOR, AL TON NATHANIEL ART UNIT PAPER NUMBER 1616 MAILDATE DELIVERY MODE 12/09/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW F. KIRBY and ALICE LAVRANOS Appeal2013-005059 Application 11/722,912 Technology Center 1600 Before DONALD E. ADAMS, JACQUELINE T. HARLOW, and RICHARD J. SMITH, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL 1 This appeal under 35 U.S.C. § 134(a) involves claims 1-11, 13, 15- 17, 22, 23, and 28-35 (Ans. 3). 2 Examiner entered a rejection under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE Appellants' "invention relates to aqueous agricultural formulations exhibiting reduced foaming. In particular, the invention relates to the use of 1 Appellants identify the Real Party in Interest as "Huntsman Chemical Corporation" (App. Br. 2). 2 Pending claims 19-21 and 24--27 stand withdrawn from consideration (March 12, 2012, Final Rej. 2). Appeal2013-005059 Application 11/722,912 fatty acid salts in conjunction with a chelating agent in reducing foaming when dispersing agriculturally active ingredients in solid form, as well as compositions comprising fatty acid salts and chelating agents" (Spec. 1: 4-- 7). Claim 1 is representative and reproduced in the Claims Appendix of Appellants' Brief. Claims 1-11, 13, 15-17, 22, 23, and 28-35 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kurita3 and Ikeda4 or Chiba. 5 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Kurita "relates to an agricultural chemical composition comprising an enhancer for agricultural chemicals" (Kurita i-f 1 ). FF 2. Kurita discloses an "alkyl or alkenyl amine oxide [of formula (I) that] has a strong[] effect-enhancing action on various agricultural chemicals" (Kurita i-fi-16-10). FF 3. Kurita discloses an agricultural chemical composition comprising: (A) an alkyl or alkenyl amine oxide of formula (I), (B) an agricultural chemical, that may further comprise: (C) a surfactant, other than (A), and (D) a chelating agent (Kurita i-fi-18-12 and 16; see also Kurita 9: claims 1-3; see Ans. 6 (Active ingredient No. "9 in Table 2 of Kurita []discloses a 3 Kurita et al., US 2004/0038826 Al, published Feb. 26, 2004. 4 Ikeda et al., JP 60214701 A, published Oct. 28, 1985. 5 Chiba et al., JP 60041601 A, published Mar. 5, 1985. Examiner refers to this reference as "Murata et al." (See Ans. 5---6.) 2 Appeal2013-005059 Application 11/722,912 formulation comprising amine oxide(3), POE(9) lauryl ether as the surfactant and sodium gluconate as the chelating agent") 6). FF 4. Kurita discloses that "by[] using a surfactant (C)[, which includes a nonionic surfactant, an anionic surfactant, a cationic surfactant, and an amphoteric surfactant or a mixture thereof,] in combination with the compound (A), the amount of the compound (A) used as the enhancer for the agricultural chemicals according to the present invention can be reduced while maintaining the effect-enhancing action of the compound (A) on the agricultural chemicals" (Kurita i-f 22; see also id. i-fi-123-27 (listing a number of nonionic, cationic, anionic, and amphoteric surfactants)). FF 5. Examiner finds that Kurita "suggests a composition comprising fatty acid salt such as steric acid salt," a specific anionic surfactant included in Kurita's list of surfactants (Ans. 5; see Kurita i-f 25). FF 6. Kurita discloses that "[t]he chelating agent is not particularly limited insofar as it has an ability to chelate metal ions" and identifies a number of chelating agents that are useful in Kurita's composition, including "ethylenediaminetetraacetic acid (EDT A)" (Kurita i-fi-1 30-46; see Ans. 5 (Kurita "suggest[ s] [] a chelate agent such as EDTA (para 39)"). FF 7. Kurita discloses that the "agricultural chemical active ingredient" of the composition may be a herbicide, such as, triazine (Kurita i-fi-148 and 53; Ans. 6). FF 8. Kurita discloses "that the composition can exist in powder or granular form" (Ans. 6; Kurita i-f 57). 6 Kurita discloses that "[i]n Table 2, POE is an abbreviation of polyoxyethylene, [] and the number in parentheses is the average number of molecules added" (Kurita i-f 73). 3 Appeal2013-005059 Application 11/722,912 FF 9. Examiner finds that Kurita fails to suggest a composition "comprising sodium polyacrylate" and relies on Ikeda or Chiba to make up for this deficiency in Kurita (Ans. 5---6). ANALYSIS Based on the combination of Kurita and Ikeda or Chiba, Examiner concludes that, at the time Appellants' invention was made, it would have been prima facie "obvious to arrive at [] a composition [comprising stearic acid salt plus EDT A and a herbicide] since Kurita [] suggest[ s] a combination of stearic acid salt plus EDTA plus a herbicide," such as atrazine (Ans. 5). In this regard, Examiner directs attention to the Active Ingredient No. 9 composition listed in Kurita's Table 2 and concludes, inter alia, that it would have been prima facie obvious to substitute stearic acid salt for the POE(9) lauryl ether, surfactant, component of this composition; because Kurita discloses "that the surfactant can be nonionic, cationic or anionic or mixtures thereof[,] which suggest[ s] that the surfactants are equivalent in Kurita['s] [disclosure]" (Ans. 7; see FF 3-5). We are not persuaded. "[E]xaminer bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In satisfying this initial burden, "[i]t is impermissible to use the claimed invention as an instruction manual or 'template' to piece together the teachings of the prior art so that the claimed invention is rendered obvious." In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). On this record, Kurita discloses a composition comprising, component A, which is an "alkyl or alkenyl amine oxide [of formula (I) that] has a 4 Appeal2013-005059 Application 11/722,912 strong[] effect-enhancing action on various agricultural chemicals" (FF 1-2). Kurita discloses that the composition may additionally comprise a nonionic, anionic, cationic, or amphoteric surfactant, or mixtures thereof, and a chelating agent (FF 3--4). In this regard, Kurita discloses that by including a surfactant in the composition the amount of component A in the composition may be reduced (FF 4). Examiner, however, fails to identify an evidentiary basis on this record to support a conclusion that Kurita suggests a defoaming composition that may be achieved by combining specific surfactants and chelating agents from those listed in Kurita's disclosure (see App. Br. 4--5 ("There is no indication in the disclosure of Kurita that any of the compositions of Kurita is a defoaming composition"); id. at 3 ("Kurita does not teach or suggest any defoaming compositions"); Reply Br. 3). Appellants "claim, as part of a solid agrochemical formulation, a defoaming composition comprising a fatty acid salt and a chelating agent" (Reply Br. 2). While Examiner asserts that the nonionic, anionic, cationic, or amphoteric surfactant surfactants are disclosed as "equivalent" in Kurita (Ans. 7), "[t]here is no teaching[] in Kurita that any of the thousands of possible combinations of chemicals recited therein results in a defoaming composition (Reply Br. 3). Simply stated, Examiner failed to establish an evidentiary basis on this record to support a conclusion that Kurita suggests the specific selection of a steric acid salt from Kurita's list of surfactants for combination with a chelating agent to produce a defoaming composition (see generally Reply Br. 3--4). To establish obviousness, there must be "an apparent reason to combine the known elements in the fashion" recited in the claims. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). 5 Appeal2013-005059 Application 11/722,912 Examiner, failed to establish an evidentiary basis on this record to support a conclusion that Ikeda or Chiba, alone or in combination, make up for the foregoing deficiency in Kurita (FF 9). In sum, we agree with Appellants' contention that Examiner's prima facie case of obviousness is based in hindsight (see Reply Br. 4 ). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claims 1-11, 13, 15-17, 22, 23, and 28-35 under 35 U.S.C. § 103(a) as unpatentable over the combination ofKurita and Ikeda or Chiba is reversed. REVERSED lp 6 Copy with citationCopy as parenthetical citation