Ex Parte Martin

Patent Trials and Appeals Board

Mar 28, 2019

14217549 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/217,549 03/18/2014 Timothy M. Martin
111801 7590 04/01/2019
FMC I Fox Rothschild LLP
2929 Walnut Street
Philadelphia, PA 19104
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.
115111.00042 (60960) 6676
EXAMINER
VANHORN, ABIGAIL LOUISE
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
ipdocket@foxrothschild.com
Andrea.Small@fmc.com
patents@fmc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY M. MARTIN 1,2
Appeal 2018-002331
Application 14/217 ,549
Technology Center 1600
Before RICHARD M. LEBOVITZ, JEFFREY N. FRED MAN, and
JOHN G. NEW, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant states that the real party-in-interest is FMC Corporation. App.
Br. 2.
2 We note that Appellant's Brief lacks page numbers. We therefore number
and refer to the pages seriatim, with the cover page of the Appeal Brief as
page 1.
Appeal 2018-002331
Application 14/217 ,549
SUMMARY
Appellant files this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 1, 2, 7, 8, 12-18, 22, and 23 as
unpatentable under 35 U.S.C. § I03(a) over the combination of Martin (US
2008/0206361 Al, August 28, 2008) ("Martin") and Gewehr et al. (US
2012/0184589 Al, July 19, 2012) ("Gewehr").
Claims 1, 2, 7, 8, 12-18, 22, and 23 also stand provisionally rejected
as unpatentable under the nonstatutory doctrine of obviousness-type double
patenting over claims 1, 2, and 5-20 of US 2015/0099627 Al, April 9,
2015) (the "'627 application") and Gewehr.
Claims 1, 2, 7, 8, 12-18, 22, and 23 stand further provisionally
rejected as unpatentable under the nonstatutory doctrine of obviousness-type
double patenting over claims 1, 2, and 4--9 of Martin (US 2015/0099626 Al,
April 9, 2015) (the "'626 application") and Gewehr.
Claims 1, 2, 7, 8, 12-18, 22, and 23 also stand rejected as
unpatentable under the nonstatutory doctrine of obviousness-type double
patenting over claims 1-10 of Martin US 8,263,527 B2, September 11,
2012) (the "'527 patent") and Gewehr.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellant's invention is directed to insecticidal compositions suitable
for use in preparation of insecticidal liquid fertilizer. Abstr.
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REPRESENTATIVE CLAIM
Independent claim 1 is representative of the claims on appeal and
recites:
1. A homogenous insecticidal composition comprising:
a) bifenthrin;
b) from about 0.75% to about 1.25% of pyraclostrobin or
fluoxastrobin;
c) a hydrated aluminum-magnesium silicate;
d) at least one dispersant selected from the group
consisting of a sucrose ester, a lignosulfonate, an
alkylpolyglycoside, a naphthalenesulfonic acid formaldehyde
condensate and a phosphate ester; and
e) a liquid fertilizer, wherein said liquid fertilizer is
aqueous-based and present in a concentration of at least 95.0%
wherein all % are % by weight based upon the total weight of all
components in the composition.
App. Br. 11. Appellant also argues independent claim 2 separately. Claim 2
recites:
2. A homogenous composition comprising:
a) from about 15% to about 25% of a pyrethroid;
b) a strobilurin fungicide selected from the group
consisting of azoxystrobin, dimoxystrobin, fluoxastrobin,
kresoxim-methyl, orysastrobin, picoxystrobin, pyraclostrobin,
trifloxystrobin, and mixtures of two or more thereof;
c) from about 1 % to about 20% of hydrated aluminum-
magnesium silicate;
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Id.
d) from about 0.2% to about 20% of at least one dispersant
selected from the group consisting of a sucrose ester, a
lignosulfonate, an alkylpolyglycoside, a naphthalenesulfonic
acid formaldehyde condensate and a phosphate ester; and
e) from about 5% to 9% anti-freeze agent,
wherein all % are % by weight based upon the total weight
of all components in the composition.
ISSUES AND ANALYSES
We are persuaded by, and expressly adopt, the Examiner's findings,
reasoning, and conclusions establishing that Appellant's claims are prima
facie obvious over the cited prior art. We address the arguments raised by
Appellant below.
A. Claims 1, 7, 8, 12, 13, and 15
Issue 1:
Appellant argues that the Examiner erred because Martin neither
teaches nor suggests the combination of bifenthrin with pyraclostrobin or
fluoxastrobin. App. Br. 4.
Analysis
The Examiner finds that Martin teaches insecticidal compositions
which significantly improves physical stability when used to prepare an
insecticidal liquid fertilizer. Final Act. 5. The Examiner finds that the
compositions taught by Martin comprise a pyrethroid, preferably bifenthrin,
a hydrated aluminum-magnesium silicate, and at least one dispersant
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Application 14/217 ,549
selected from the group consisting of a sucrose ester, a lignosulfonate, an
alkylpolyglycoside, a naphthalene-sulfonic acid formaldehyde condensate
and a phosphate ester. Id. ( citing Martin ,r 5). The Examiner finds Martin
teaches that the pyrethroid is preferably present in an amount from 1 to 25%
by weight and, more preferably from 15 to 25% by weight of the
composition. Id. ( citing Martin ,r 7). The Examiner finds that Martin further
teaches that the composition may further comprise at least one of an anti-
freeze agent, an anti-foam agent and a biocide, as well as a liquid fertilizer
liquid fertilizer present in an amount from 95 to 99.99%. Id. (citing Martin
,r,r 9, 11, claims 10, 13 ).
The Examiner finds that Martin does not expressly teach the use of
pyraclostrobin or fluoxastrobin in combination with bifenthrin. Final Act. 6.
However, the Examiner finds, Gewehr teaches synergistic mixtures of
insecticidal and fungicidal compounds, including combinations of bifenthrin
and pyraclostrobin and ofbifenthrin and fluoxastrobin. Id. (citing Gewehr,
Table 1).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to combine the teachings of the cited references to
include pyraclostrobin or fluoxastrobin in the compositions taught by Martin
including bifenthrin, to obtain the synergistic effects of the combination of
insecticidal and fungicidal compounds taught by Gewehr. Final Act. 7.
Appellant argues that Martin does not provide guidance for producing
homogeneous mixtures ofbifenthrin, liquid fertilizer, and pyraclostrobin or
fluoxastrobin. App. Br. 4. According to Appellant, it was known in the art
that pyraclostrobin is not compatible in this way with liquid fertilizer and
bifenthrin and, in fact, the incompatibility (i.e., heterogeneity) of such
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mixtures has been demonstrated by Appellant. Appellant points to the
Declaration of Timothy M. Martin (the "Martin Declaration"), the named
inventor, in support of this contention. Id.
Specifically, Appellant contends that the Martin Declaration provides
demonstrative evidence that combinations of bifenthrin and pyraclostrobin
and liquid fertilizer do not necessarily or inherently result in homogeneous
mixtures. App. Br. 5. Appellant alleges that the Examiner has improperly
disregarded Appellant's demonstrative evidence in the Martin Declaration,
using an unreasonable standard of proof. Id.
Appellant contends that Gewehr, as the closest prior art, discloses
combinations of bifenthrin and pyraclostrobin or fluoxastrobin with a solid
fertilizer (as a carrier for the insecticide and fungicide). App. Br. 5.
Appellant contends that the Examiner relies upon Martin as the closest prior
art, even though Martin does not disclose even the possibility of the
combination of each of the active components. Id.
Furthermore, argues Appellant, the Examiner's conclusion that a
person of ordinary skill in the art would have been motivated to combine the
teachings of Martin with those of Gewehr is based on an alleged synergism
between bifenthrin and pyraclostrobin, but Appellant asserts, evidence that
such a synergism actually exists is not within the teachings of Gewehr. App.
Br. 5. Nor Appellant argues, does Gewehr define the concentration of
pyraclostrobin recited by Appellant's claims. Id.
We are not persuaded by Appellant's arguments. The Martin
Declaration states that: "The state of [the] art is highly unpredictable as to
the outcome of any agricultural formulation because there are multiple
unrelated factors that can impact the ultimate results." Martin Dec. ,r 4. As
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proof of this assertion, Martin presents the results of mixing: (1)
pyraclostrobin (BASF Headline® SC Fungicide) with 11-37-0 liquid
fertilizer (11 % nitrogen, 37% phosphorus, 0% potassium) at a ratio of 5% to
95%; (2) pyraclostrobin (40% Mill Base or Manufacture Use Product) with
11-37-0 liquid fertilizer (concentrations not specified); (3) bifenthrin and
pyraclostrobin (40% Mill Base or Manufacture Use Product) with 11-37-0
liquid fertilizer (concentrations not specified); and (4) pyraclostrobin (40%
Mill Base or Manufacture Use Product) bifenthrin, hydrated aluminum-
magnesium silicate, and dispersant with an 11-37-0 liquid fertilizer (95% by
weight). Id. at ,r,r 5-8. Martin states that it is only the fourth mixture, which
is the same as recited in the claims, that unexpectedly produces a
homogeneous mixture. Id. at ,r 9.
We do not find this argument persuasive that a person of ordinary skill
in the art would not have been motivated to combine the teachings of Martin
and Gewehr. Martin expressly teaches methods by which physically stable
compositions can be synthesized incorporating all of the elements of claim 1
except pyraclostrobin. See, e.g., Martin ,r,r 5, 27-28, Table 1. Appellant
provides no evidence of record that a person of ordinary skill,
knowledgeable in the art at the time of invention, would not have been
motivated to combine the teachings of Martin with Gewehr to achieve a
synergistic effect, nor any evidence that the skilled artisan would not have
had a reasonable expectation of success. In other words, because Martin
teaches homogeneous compositions containing everything except
pyraclostrobin, Appellant has not adduced any evidence as to why a person
of ordinary skill in the art, following those teachings of Martin, would not
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have reasonable expected that the addition of pyraclostrobin to that solution
would similarly result in a homogeneous composition.
The Martin Declaration demonstrates that pyraclostrobin will not, by
itself, form homogeneous compositions when combined with liquid fertilizer
(Examples 1 and 2) or, in combination with bifenthrin, with liquid fertilizer
(Example 3). Martin Deel. ,r,r 5-7. However, the Martin Declaration offers
no evidence that a person of ordinary skill would have reasonably expected
that adding pyraclostrobin to the homogeneous, physically stable bifenthrin
composition taught by Martin (i.e., also containing a hydrated aluminum-
magnesium silicate and a dispersant) would not also be homogeneous or
physically stable. We consequently accord the Martin Declaration little
probative weight in our analysis. See In re American Academy of Science
Tech Center, 367 F.3d 1359, 1370 (Fed. Cir. 2004) ("[T]he Board is entitled
to give such weight to declarations as it deems appropriate").
Furthermore, with respect to the synergistic effects of combining
bifenthrin and pyraclostrobin or fluoxastrobin, Gewehr teaches:
[W]e have found that simultaneous, that is joint or separate,
application of the compound I [including bifenthrin] and
compound II [including pyraclostrobin or fluoxastrobin] or
successive application of the compound I and compound II
allows enhanced control of pests, that means animal pests, and
harmful fungi, compared to the control rates that are possible
with the individual compounds (synergistic mixtures, wherein
the synergism is pesticidal synergism, i.e. synergistic fungicidal
mixtures/synergistic insecticidal mixtures).
Gewehr ,r 26. Contrary to Appellant's argument, Example 8 of Gewehr
expressly teaches that a combination of pyraclostrobin and another most
preferred pyrethoid Compound I insecticide (alpha-cypermethrin) has a
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calculated synergy of 42%. See Gewehr ,r,r 30, 140-142. We agree with the
Examiner that, given the general teachings of Gewehr, a person of ordinary
skill would have reasonably expected the other most preferred pyrethoid
insecticides, inclusing bifenthrin, to have similar properties.
Furthermore, Gewehr also teaches that the most preferable ratio of
compound 1 and compound II is: "most preferably from 1: 10 to 10: 1."
Gewehr ,r 36. Martin teaches the claimed compound (with the exception of
pyraclostrobin or fluoxastrobin) in which the concentration ofbifenthrin is:
"preferably present in a concentration of from 1.0% by weight to 25% by
weight." See Martin ,r 7. Claim 1 recites no requisite concentration of
bifenthrin, however, claim 12, which depends from claim 1 and which is the
only claim so dependent to specify a concentration of bifenthrin, recites that:
"bifenthrin is present in about 0.75% to about 1.25%." Claim 1 requires:
"about 0.75% to about 1.25% of pyraclostrobin or fluoxastrobin." These
concentrations are within the range taught by Gewehr. Consequently, we do
not find Appellant's arguments persuasive.
Issue 2
Appellant argues that the prior art references are not enabling, because
Gewehr does not provide supportive data or examples for any synergistic
combination of the claimed components. App. Br. 5.
Analysis
Appellant argues that, at most, the allegedly unsupported claim of
synergy taught by Gewehr is a suggestion to experiment with combinations
of bifenthrin and pyraclostrobin, but, Appellant contends, there is no
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Application 14/217 ,549
enabling disclosure of a synergistic combination of the claimed components,
or even any suggestion that the specific amounts defined by the Appellant's
claims would provide a synergistic combination ofbifenthrin and
pyraclostrobin. App. Br. 5. Appellant points out that there is no clearly
defined ratio of bifenthrin and pyraclostrobin in either independent claim 1
or independent claim 2. Id. Appellant asserts that there is no suggestion in
the references to provide pyraclostrobin in the amount recited in claim 1. Id.
Appellant also argues that the number of possible combinations within the
specified range would be daunting for one of ordinary skill in the art. Id.
Appellant argues further that that there would be no expectation that a
combination of pyraclostrobin with the formulation taught by Martin would
lead to a homogeneous mixture. App. Br. 6. Appellant points to Drug
Development Serve' s, Physical Stability of Disperse Systems, 1 PARTICLE
SCIENCES, TECH. BRIEF 1-2 (2009) ("Drug Dev."), which states that:
"[s]uspension stability is the result of various physical and electrochemical
forces over which formulators often feel that they have little control." Id.
Appellant further argues that the teachings of Martin are consistent with the
conventional knowledge and understanding of heterogeneous mixtures, viz.,
that the stability of complex mixtures is unpredictable. Id. ( citing Martin ,r
4).
We are not persuaded by Appellant's arguments. Appellant contends
that Gewehr is not enabling because it does not teach synergy of its claimed
compounds. For the reasons we have explained supra, we disagree that
Geweht does not teach the synergistic effects of its compositions.
With respect to the concentrations of the pesticides, and whether a
person of ordinary skill would be motivated to combine the reference in
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Application 14/217 ,549
view of Appellant's argument that the art is unpredictable, we have similarly
addressed Appellant's arguments supra, and find them no more persuasive
in this context.
Finally, we have also explained why Appellant has not provided any
persuasive evidence of record why a person of ordinary skill in the art would
have reasonably expected that the addition of pyraclostrobin or
fluoxacostrobin to the stable, homogeneous compositions taught by Martin
would have not also formed a stable homogeneous combination.
Issue 3
Appellant alleges the Examiner impermissibly employed hindsight
reasoning. App. Br. 7.
Analysis
Appellant argues that neither reference teaches or suggests how or
why the constituents recited by the claims should be combined in the manner
claimed and, therefore, the Examiner must have impermissibly employed
hindsight reasoning. App. Br. 7.
We disagree.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). We have
explained supra how the combined references teach the limitations recited in
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Application 14/217 ,549
claim 1, as well as why a person of ordinary skill would be motivated to
combine the references. Appellant points to no evidence of record to show
that the Examiner relied upon knowledge that could have been gleaned only
from Appellant's Specification and not from the teachings of Martin and
Gewehr, and from the knowledge of a skilled artisan at the time of invention.
We are consequently not persuaded by Appellant's argument that the
Examiner impermissibly relied upon hindsight analysis.
Issue 4
Appellant argues that the Examiner erred because Gewehr teaches
away from combining its teachings with those of Martin to arrive at the
claimed invention. App. Br. 7.
Analysis
Appellant contends that Gewehr teaches water soluble concentrates,
heterogeneous emulsions, or suspensions of active compounds. App. Br. 7.
According to Appellant, there is no distinction made in Gewehr with respect
to one form being more desirable than another. Id. Further, Appellant
argues that Gewehr teaches that conventional solid fertilizers such as
ammonium sulfate and ammonium phosphate are used as solid carriers. Id.
( citing Gewehr ,r 48). Appellant asserts that this is a teaching away from the
claimed invention. Id. at 7-8.
We disagree. A teaching away requires a reference to actually
criticize, discredit, or otherwise discourage the claimed solution. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Furthermore, teaching an
alternative or equivalent method, however, does not teach away from the use
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of a claimed method. In re Dunn, 349 F.2d 433, 438 (C.C.P.A. 1965).
Appellant points to no teaching or suggestion in either Gewehr or Dunn that
would discourage a person of ordinary skill in the art 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).
Gewehr teaches the use of its synergistic combination with solid
fertilizers, but it does not expressly teach, or implicitly suggest, that its
combination could not be used in combination with the compositions taught
by Martin, nor would its teachings have expressly or implicitly discouraged
or diverted a person of ordinary skill from combining the references.
Consequently, we affirm the Examiner's rejection of claims 1, 7, 8,
12, 13, and 15.
B. Claims 2, 14, 16-18, 22, and 23
Issue
Appellant argues that the Examiner erred by interpreting the
transitional claim term "comprising" permits the claims to be interpreted so
as to include a liquid fertilizer component. App. Br. 3.
Analysis
According to Appellant, "the rules of claim construction" dictate that,
where the clear meaning of the words are not definitive, the claims are to be
interpreted so that the claims are of different scope. Id. Appellant argues
that the term "comprising" is typically interpreted so that other components
can be present, however, in this case there are reasons why "comprising"
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should be interpreted otherwise, at least in the case of the inclusion of liquid
fertilizer. Id. at 3--4. Specifically, Appellant contends that, according to the
conventional rules of claim construction, claim 2 cannot be construed to
include liquid fertilizer, because that would force claim 2 to have
substantially the same scope as claim 1. App. Br. 3.
We are not persuaded. As an initial matter, Appellant cites no
authority in law for the asserted exception to the use of the claim term
"comprising." Furthermore, we disagree with Appellant's basic premise,
viz., that if the transitional term "comprising" permits liquid fertilizer to be
also within the scope of the claim, the scope of claim 2 would be
"substantially the same" as that of claim 1.
The scope of claim 2, even were it to include the unrecited liquid
fertilizer, is materially different than the scope of claim 1. In claim 2,
limitation a) recites: "15% to about 25% of a pyrethroid," whereas in claim
1, limitation a) recites a single species of pyrethoid, bifenthrin, in an
unspecified amount. Limitation (b) of claim 2 recites unspecified amounts
of a: "strobilurin fungicide selected from the group consisting of
azoxystrobin, dimoxystrobin, fluoxastrobin, kresoxim-methyl, orysastrobin,
picoxystrobin, pyraclostrobin, trifloxystrobin, and mixtures of two or more
thereof," whereas limitation b) of claim 1 recites only two species of
fungicide, pyraclostrobin or fluoxastrobin, in a concentration range of:
"about 0.75% to about 1.25%." Limitation c) of both claims 1 and 2 recite:
"a hydrated aluminum-magnesium silicate," but claim 2 is narrower,
requiring a concentration of: "from about 1 % to about 20%," whereas claim
1 recites no required concentration. Similarly, limitation d) of both claims
recite: "at least one [ of]" the same list of possible dispersants, however claim
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2 also recites a concentration of: "from about 0.2% to about 20%," whereas
claim 1 is again broader, reciting no requisite concentration. Finally,
limitation e) of claim 2 recites: "from about 5% to 9% anti-freeze agent,"
which is not recited in claim 1 at all.
Because the premise of Appellant's argument that, if the term
"comprising" permits the inclusion of the liquid fertilizer recited in claim 1,
then the scope of claims 1 and 2 would be substantially the same is thus
erroneous, the rest of Appellant's argument also fails.
Furthermore, Appellant includes brief arguments presented with
respect to claim 1, supra, viz., that the references teach away from the
claimed invention and that the Examiner impermissibly employed hindsight
analysis, and that there would have been no motivation for a skilled artisan
to combine the references. App. Br. 4. We have explained in Section A
why we do not find these arguments persuasive.
Finally, Appellant argues that claim 2 recites: "a strobilurin fungicide
selected from the group consisting of azoxystrobin, dimoxystrobin,
fluoxastrobin, kresoxim-methyl, orysastrobin, picoxystrobin, pyraclostrobin,
trifloxystrobin, and mixtures of two or more thereof." App. Br. 4.
Appellant argues that neither of the references teaches this limitation. Id.
We disagree. Gewehr expressly teaches the use of: "as compound II a
strobilurine fungicide." Gewehr ,r 30. Specifically, Gewehr teaches the use
of: "azoxystrobin, dimoxystrobin, enestroburin,jluoxastrobin, kresoxim-
methyl, metominostrobin, orysastrobin, picoxystrobin, pyraclostrobin,
pyribencarb or trifloxystrobin." Id. ,r 32 (Compounds that are italicized are
also recited in claim 2). Gewehr thus teaches the recited fungicides of
limitation claim 2.
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We consequently affirm the Examiner's rejection of claims 2, 14, 16,
17, 18, 22, and 23.
C. Obviousness-type double patenting rejections
Appellant does not address these rejections in the Appeal Brief. We
consequently summarily affirm the Examiner's rejections upon this ground.
See 37 C.F.R. § 4I.37(c)(iv) ("[A]ny arguments or authorities not included
in the appeal brief will be refused consideration by the Board for purposes of
the present appeal").
DECISION
The Examiner's rejection of claims 1, 2, 7, 8, 12-18, 22, and 23 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
The Examiner's rejections of claims 1, 2, 7, 8, 12-18, 22, and 23 as
unpatentable under the nonstatutory doctrine of obviousness-type double
patenting is affirmed.
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 )(iv).
AFFIRMED
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