Ex Parte Martin et al

Patent Trial and Appeal Board

Mar 11, 2019

14217534 (P.T.A.B. Mar. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/217,534 03/18/2014 Timothy M. Martin
111801 7590 03/13/2019
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.
115111.00041 (60966) 1085
EXAMINER
VANHORN, ABIGAIL LOUISE
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
03/13/2019 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,
WILLIAM SCHERZINGER, and MARGARITA GIA VIS 1,2
Appeal2018-002330
Application 14/217 ,534
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 Appellants state that the real party-in-interest is FMC Corporation. App.
Br. 2.
2 We note that Appellants' Brief lacks page numbers. We therefore number
and refer to the pages seriatim, with the beginning page of the Appeal
Brief as page 1.
Appeal2018-002330
Application 14/217,534
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 1-2, 5-18, and 21-22 as unpatentable
under 35 U.S.C. § I03(a) over the combination of Martin (US
2008/0206361 Al, August 28, 2008) ("Martin"), Shirley et al. (US
2008/0306026 Al, December 11, 2008) ("Shirley"), Brahm et al. (US
2012/0009238 Al, January 12, 2012) ("Brahm"), and Tsuda et al (US
2012/0156303 Al, June 21, 2012) ("Tsuda").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to insecticidal compositions suitable
for use in preparation of insecticidal liquid fertilizer. Spec. Abstr.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A homogeneous insecticidal liquid composition
compnsmg:
a) unencapsulated bifenthrin;
b) at least one encapsulated crop protection agent having a
melting point of 50°C or less prepared via an interfacial
polymerization carried out in the presence of the
ingredients consisting essentially of the crop protection
agent, a salt ofligninsulfonic acid, water, and inert organic
solvent, polyfunctional polyisocyanate and a
polyfunctional amine;
2
Appeal2018-002330
Application 14/217,534
c) a hydrated aluminum-magnesium silicate; and
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) water.
App. Br. 13.
ISSUES AND ANALYSES
We are persuaded by, and expressly adopt, the Examiner's findings,
reasoning, and conclusions establishing that Appellants' claims are prima
facie obvious over the cited prior art. We address the arguments raised by
Appellants below.
Issue 1
Appellants argue that the Examiner erred because the combined cited
prior art fails to teach or suggest:
[ A ]t least one encapsulated crop protection agent having a
melting point of 50°C or less prepared via an interfacial
polymerization carried out in the presence of the ingredients
consisting essentially of the crop protection agent, a salt of
ligninsulfonic acid, water, and inert organic solvent,
polyfunctional polyisocyanate and a polyfunctional amine.
App. Br. 6.
Appellants further argue that there is no teaching or suggestion in the
cited prior art references that would lead a person of ordinary skill in the art
to combine their teachings to arrive at Appellants claimed composition.
App. Br. 7.
3
Appeal2018-002330
Application 14/217,534
Analysis
The Examiner finds that Martin teaches generally that formulations of
insecticides combined with fertilizers are desirable in agricultural and related
endeavors due to the multiple benefits conveyed by just one application in a
single piece of equipment. Final Act. 5 ( citing Martin ,r 3). The Examiner
finds that Martin is directed to such compositions, in which the insecticide
comprises a pyrethoid, preferably bifenthrin, a hydrated aluminum-
magnesium silicate and at least one dispersant selected from the group
consisting of a sucrose ester, a lignosulfonate, an alkylpolyglycoside, a
naphthalene-sulfonic acid formaldehyde condensate and a phosphate ester.
Id. at 6 (citing Martin ,r 5, 7).
The Examiner finds that Martin teaches that the phosphate esters
included in the composition may be nonyl phenol phosphate ester and a
tridecyl alcohol ethoxylated phosphate potassium salt. Final Act. 6 ( citing
Martin ,r 9). The Examiner finds that Martin further teaches that the
composition may also comprise at least one of an anti-freeze agent, an anti-
foam agent and a biocide, and may further comprise an insecticidally-
effective amount of one or more additional insecticides. Id. (citing Martin
,r,r 9, 10). The Examiner finds that Martin additionally teaches the inclusion
of a liquid fertilizer. Id. ( citing Martin ,r 11, claims 10, 13 ).
However, the Examiner finds that, although Martin suggests the
composition can comprise additional actives such as insecticides, Martin
does not expressly teach the incorporation of an encapsulated crop
protection agent. Final Act. 7.
4
Appeal2018-002330
Application 14/217,534
The Examiner finds that Shirley teaches the formulation of capsules
prepared with at least one other pesticide which broadens the spectrum of
pest control of a first pesticide. Final Act. 7 ( citing Shirley ,r 60).
The Examiner finds that Brahm is directed to a method for treating
crops with an encapsulated pesticide. Final Act. 7. Specifically, the
Examiner finds Brahm teaches a composition comprising an encapsulated
pesticide, in which the encapsulation material comprises a polyfunctional
isocyanate and a diamine (i.e., a polyfunctional amine) and in the core of the
capsules of the encapsulated pesticide at least 80% of the pesticide is
dissolved in an organic solvent. Id. (citing Brahm claim 22). The Examiner
finds Brahm teaches that suitable wall forming materials include
polyfunctional isocyanate and polyfunctional amine. Id. (citing Brahm ,r,r
136, 138). The Examiner finds Brahm further teaches mixtures of
encapsulated pesticide and a non-encapsulated additional pesticide, which
may be present in a suspended, emulsified, but preferably dissolved form.
Id. at 7-8 ( citing Brahm ,r 102).
The Examiner finds Tsuda teaches a method of microcapsule
production. Final Act. 8. Specifically, the Examiner finds that Tsuda
teaches that the pesticide is suspended in a mixture of an organic solvent and
a polyisocyanate. Id. The Examiner finds Tsuda teaches that the resultant
suspension is mixed with water to give oil liquid droplets emulsified in
water: an anionic surfactant is then added to the emulsion and the
polyisocyanate reacts with a polyamine to form a coating film of a resin
around the liquid droplet. Id. The Examiner finds Tsuda teaches that the
anionic surfactant is a salt of ligninsulfonic acid. Id. (citing Tsuda ,r,r 0029-
0033).
5
Appeal2018-002330
Application 14/217,534
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to combine the teachings of Martin, Brahm,
Tsuda, and Shirley utilize to include a microencapsulated pesticide in the
composition of Martin. Final Act. 8. The Examiner concludes that a skilled
artisan would have been motivated to utilize a microencapsulated pesticide
with a non-encapsulated pesticide to broaden the spectrum of pest control, as
taught by Shirley. Id. The Examiner further concludes that a person of
ordinary skill in the art would have had a reasonable expectation of success,
because Brahm teaches the use of both encapsulated and non-encapsulated
pesticides. Id.
Appellants acknowledge that Martin teaches a mixture of liquid
fertilizer with bifenthrin, which is a stable mixture. App. Br. 7. Appellants
assert that their claimed invention is a more complex mixture of non-
encapsulated bifenthrin and an encapsulated crop protection agent that is
also stable and ready to mix with a liquid fertilizer. Id. Appellants contend
that the addition of an encapsulated crop protection agent is neither taught
nor suggested by Martin. Id. Appellants argue that the Examiner incorrectly
dismisses the complexity and inventive nature of the Appellants' claimed
composition because formulations of encapsulated biologically active
materials are known in the art. Id. However, Appellants argue, the claimed
formulation of encapsulated and non-encapsulated active materials is not
known. Id.
Appellants argue further that none of the references singly teaches
each element of the claimed invention, and none of the secondary references
suggest combining their teachings with those of Martin. App. Br. 7.
According to Appellants, this is instructive, because each of the secondary
6
Appeal2018-002330
Application 14/217,534
references was published after Martin yet none of them took the obvious
step of teaching the composition claimed by Appellants. Id. Appellants
contend that, although the Examiner may combine the references, the
suggestion to combine the references should be clear from the references
themselves. Id. Appellants argue that Martin does not suggest the
incorporation of an encapsulated crop protection agent, and the other cited
references teach encapsulated agents, but do not suggest the combination
with the teachings of Martin, or that such a combination would form a stable
homogenous mixture. Id. Nor, Appellants assert, do the references suggest
the encapsulation of a crop protection prepared via an interfacial
polymerization carried out in the presence of the ingredients consisting
essentially of the crop protection agent, a salt of ligninsulfonic acid, water,
and inert organic solvent, polyfunctional polyisocyanate and a
polyfunctional amine. Id.
Appellants further assert that chemical arts are unpredictable and the
stability of complex mixtures occupies an unpredictable space within an
unpredictable art. App. Br. 8. Appellants point to Drug Development
Servc's, Physical Stability of Disperse Systems, 1 PARTICLE SCIENCES, TECH.
BRIEF 1-2 (2009) ("Drug Dev."), which states that: "[S]uspension
stability ... is somewhat of a moving target that each formulator must define
on a case-by-case basis because it depends upon the timescale of the
observations - how long do you need the system to remain 'stable"'? Id.
( quoting Drug Dev. 1 ). Appellants contend that it therefore stands to reason
that any reasonable expectation of success based on Martin should be limited
to a case-by-case basis, according to the teaching in Martin and as suggested
by experts. Id.
7
Appeal2018-002330
Application 14/217,534
We are not persuaded by Appellants arguments. However, before
addressing Appellants' patentability arguments on the merits, we must, as a
matter of claim construction, consider Appellants' contention that the
Examiner has misconstrued Appellants' claims with respect to the use of the
transitional claim language "consisting essentially of." App. Br. 3.
Appellants accuse the Examiner of holding Appellants to an unreasonable
burden of persuasion by denying Appellants the use of "consisting
essentially of' language, or otherwise ignoring the effect of such use. Id. at
4.
Specifically, Appellants point to the Examiner's finding that stated
that: "if the prior art teaches an encapsulated crop protection agent, it would
appear to suggest the same claimed component instantly claimed." App. Br.
4. Appellants point to the Examiner's reliance upon PPG Industries Inc. v.
Guardian Industries Corp., 156 F.3d 1351 (Fed. Cir. 1998) as holding that
Appellants have the burden of showing that introduction of additional steps
or components would materially change the characteristics of the invention,
when the presumption that such is the case has been challenged. Id.
Appellants then point to the Declaration of Timothy M. Martin, August 5,
2015 (the "Martin Declaration")3, and Drug Dev., as providing evidence that
changing certain features would materially affect the homogeneity and the
stability of the claimed composition. Id. Appellants argue that this evidence
meets their burden of showing that a person of ordinary skill would have
understood that obtaining or preserving a stable homogenous system would
3 Timothy M. Martin is one of the named inventors of the application on
appeal.
8
Appeal2018-002330
Application 14/217,534
be subject to a number of physical and chemical interactions and actors. Id.
at 4--5.
Appellants argue further that, throughout their Specification, they
stress that the invention is a composition that is, in one regard, a stable and
homogenous mixture of bifenthrin with an encapsulated crop protection
agent. App. Br. 5. Similarly, Appellants contend that, in another aspect, the
present invention is a homogenous mixture of the bifenthrin, crop protection
agent, and liquid fertilizer. Id. Appellants contend that the homogeneity and
stability of these mixtures are basic and novel to the claimed invention and
would be understood as such by one of ordinary skill in the art of
formulation science or formulation chemistry. Id.
We are not persuaded by Appellants that the Examiner has
misconstrued the language of the claims. Appellants' complaint centers
upon the use of the transitional term "consisting essentially of' in the
limitation of claim 1 reciting:
[ A ]t least one encapsulated crop protection agent having a
melting point of 50°C or less prepared via an interfacial
polymerization carried out in the presence of the ingredients
consisting essentially of the crop protection agent, a salt of
ligninsulfonic acid, water, and inert organic solvent,
polyfunctional polyisocyanate and a polyfunctional amine;
(Emphasis added). We construe this language to mean that the claimed
encapsulated crop protection agent (i.e., a pesticide) consists essentially of:
(1) the crop protection agent; (2) a salt of ligninsulfonic acid; (3) water; (4)
an[] inert organic solvent, (5) polyfunctional polyisocyanate; and (6) a
polyfunctional amine. Furthermore, we construe the overall claim to mean,
9
Appeal2018-002330
Application 14/217,534
from the language on its face, that the transitional term "consists essentially
of' applies only to this limitation.
By using the term "consisting essentially of," the drafter signals
that the invention necessarily includes the listed ingredients and
is open to unlisted ingredients that do not materially affect the
basic and novel properties of the invention. A "consisting
essentially of' claim occupies a middle ground between closed
claims that are written in a "consisting of' format and fully open
claims that are drafted in a "comprising" format.
PPG, 156 F.3d at 1354. Consequently, the claimed encapsulated "crop
protection agent" must contain the recited constituents, but may also contain
other constituents, provided these additional constituents do not materially
affect the basic and novel properties of the encapsulated crop protection
agent.
Tsuda is directed to a microcapsule containing a pesticidal compound
of high water solubility and methods of production thereof. Tsuda ,r,r 1-2.
Specifically, Tsuda teaches:
A method of microcapsule production, wherein (1) at least one
solid pesticidal compound whose water solubility at 20° C. is
more than 100 ppm and at least one solid pesticidal compound
whose water solubility at 20° C. is less than 30 ppm are
suspended in a mixture of a compound of formula (I) defined in
[1] 4 and a polyisocyanate, (2) the resultant suspension is mixed
4 Formula (1), as defined in [1] consists of: "A microcapsule in which a
liquid droplet is coated with a resin, wherein in the droplet, a pesticidally
active solid ingredient is suspended in a compound of formula (I):
10
Appeal2018-002330
Application 14/217,534
with water to give oil liquid droplets emulsified in water, (3) an
anionic surfactant is added to the emulsion containing the liquid
droplet, and then, the polyisocyanate in the liquid droplet is
reacted with a polyol or a polyamine to form a coating film of a
resin around the liquid droplet. ... wherein the anionic swfactant
is a salt of ligninsulfonic acid.
Tsuda ,r,r 29--33 ( emphases added and paragraph numbers omitted). Tsuda
also teaches that: "Coating of the liquid droplet with a resin is usually
carried out by forming a coating film of a resin by an interfacial
polymerization method." Tsuda ,r 57.
Tsuda thus teaches an encapsulated crop protection agent comprising:
(1) the crop protection agent; (2) a salt of ligninsulfonic acid; (3) water; (4)
an[] inert organic solvent; (5) polyfunctional polyisocyanate; and (5) a
polyfunctional amine, as recited in claim 1. Tsuda thus teaches the elements
of which this limitation "consists essentially of." Appellants point to no
other constituents of the encapsulated crop protection agent recited in Tsuda
that might otherwise materially affect the basic and novel properties of the
claimed encapsulated crop protection agent. Rather, Appellants appear to
argue that the overall stability and homogeneity of the claimed mixture of
unencapsulated bifenthrin, encapsulated crop protection agent, and fertilizer
are the basic and novel properties of the claimed invention. However, the
"consisting essentially of' limitation applies only to the constituents of the
1.....----....
l,~~.u
i
,:cu,,;;, (I)
wherein R represents a Cl-C5 alkyl group." Tsuda ,r 5.
11
Appeal2018-002330
Application 14/217,534
encapsulated crop protection agent, and not to the overall claimed mixture.
Furthermore, Appellants adduce no evidence of record to show that the
encapsulated crop protection agent ( which corresponds to Appellants'
claimed encapsulated agent) would destabilize or otherwise cause the
claimed mixture to not be homogeneous. We therefore conclude that the
Examiner properly relied upon Tsuda as teaching this disputed limitation.
With respect to Appellants' arguments concerning the Examiner's
conclusion that the claims on appeal are obvious over the cited prior art, we
are similarly not persuaded. Appellants argue that that the addition of an
encapsulated crop protection agent is neither taught nor suggested by Martin,
and that: "the claimed formulation of encapsulated and non-encapsulated
active materials is not known." See App. Br. 7. However, the Examiner
points to Brahm, which expressly teaches that:
In a preferred embodiment, the method according to the
invention comprises the treatment with a mixture of an
encapsulated pesticide and a non-encapsulated, additional
pesticide. The additional pesticide may be selected from the
aforementioned pesticides. The non-encapsulated, additional
pesticide may be present in a dissolved, suspended and/or
emulsified form. Preferably, the non-encapsulated, additional
pesticide is present in a dissolved form.
Brahm ,r 102 ( emphasis added). Brahm further teaches that: "A suitable
insecticide may be a pyrethoid or a nicotinic receptor agonists/antagonists
compound, more preferably a pyrethoid, especially alpha-cypermethrin." Id.
Both bifenthrin and alpha-cypermethrinare are pyrethoid pesticides. See
Spec. ,r 37.
Appellants also argue that the references neither teach nor suggest the
encapsulation of a crop protection prepared via an interfacial polymerization
12
Appeal2018-002330
Application 14/217,534
carried out in the presence of the ingredients consisting essentially of the
crop protection agent, a salt of ligninsulfonic acid, water, and inert organic
solvent, polyfunctional polyisocyanate and a polyfunctional amine.
However, as we have demonstrated supra, Tsuda teaches this method, and
these ingredients, explicitly. See Tsuda ,r,r 5, 29--33, 57.
Appellants also argue that, due to the unpredictability of the chemical
arts, "any reasonable expectation of success based on Martin should be
limited to a case-by-case basis, according to the teaching in Martin and as
suggested by experts." See App. Br. 8. However, Brahm, as quoted supra,
expressly teaches the combination of encapsulated pesticides with non-
encapsulated pyrethoid (bifenthrin) pesticides. Brahm ,r 102.
The Martin Declaration is adduced by Appellants as demonstrating
the unpredictability of the art. See App. Br. 4, Martin Deel. ,r 4. The Martin
Declaration is primarily concerned with demonstrating that: "the essential
components of [Dexter et al. (US 2010/0234225 Al, September 16, 2010)
("Dexter")] (for example MgS04 and xanthan gum) resulted in an unstable
or heterogeneous system when mixing bifenthrin and encapsulated zeta
cypermethrin with a liquid fertilizer." Martin Deel. ,r 4. The Martin
Declaration concludes that: "The presence of the essential components of
Dexter (for example MgS04 and Xanthan gum) resulted in an unstable or
heterogeneous system in the above tested samples. Therefore, one [ of]
ordinary skill in the art would not have combined Dexter with Martin to
obtain the claimed homogeneous system." Id. at 10.
We are not persuaded of the relevance of the Martin Declaration to the
rejection presently before us. The Examiner does not rely upon, or even
cite, the Dexter reference in the Final Rejection. However, Brahm expressly
13
Appeal2018-002330
Application 14/217,534
teaches combining encapsulated pesticides with non-encapsulated pyrethoid
insecticides. See Brahm ,r 102. Tsuda teaches the preparation of
encapsulated pesticides prepared in the same manner as claimed. We take
Appellants' point that there is a level of unpredictability in the art of
composing stable and homogeneous pesticide compositions, but Appellants
adduce no evidence that teaches or suggests that a person of ordinary skill,
relying upon the teachings of Martin, Tsuda, Brahm, and Shirley would not
have had a reasonable expectation of success in successfully combining the
references to arrive at Appellants' claimed composition.
Issue 2
Appellants argue the Examiner erred because Shirley teaches away
from the claimed invention. App. Br. 9.
Analysis
Appellants contend that the Examiner relies upon Shirley as a basis
for including an encapsulated agent. App. Br. 9. However, Appellants
argue, Shirley teaches an encapsulant that is not a polyurethane coating, i.e.,
the claimed invention, and that the other cited prior art references do not
cure the teaching away. Id. Appellants assert that a skilled artisan would
have had no guidance in choosing their encapsulant over the encapsulating
materials taught by Shirley. Id. Appellants contend that the references are
at least contradictory with regard to this teaching, and do not suggest the
limitations of Appellants' claimed invention. Id.
We do not agree. The Examiner relies upon Shirley as teaching that:
"the capsules according to the instant invention are prepared with at least
14
Appeal2018-002330
Application 14/217,534
one other pesticide (co-pesticide), such as another insecticide ... which
would broaden the spectrum of pest control of [the encapsulated] pesticide
(a)." See Final Act. 7 (citing Shirley ,r 60). As we have explained above,
the Examiner relies upon Tsuda as teaching the claimed encapsulation
method which teaches the claimed polyurethane component.
"A reference teaches away when "a person of ordinary skill, upon
reading the reference, would be discouraged 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 ). Although we acknowledge that Shirley teaches a different method of
encapsulation than that taught by Tsuda or recited in the claims, Appellants
point to no teaching of Shirley that expressly or impliedly would discourage
a person of ordinary skill in the art from employing the encapsulation
technique taught by Tsuda, or otherwise suggests that the Tsuda method
would be unsuitable, inoperative, or otherwise inappropriate. We therefore
reject Appellants' argument as lacking merit.
Issue 3
Appellants argue the Examiner erred because Shirley is non-
analogous art to Appellants' claimed invention. App. Br. 9.
Analysis
Appellants argue that Shirley is non-analogous to their claimed
invention. App. Br. 9. According to Appellants, Shirley is not within the
field of Appellants' endeavor. Id. Appellants contend that Shirley's field of
endeavor is to create a photo-labile encapsulant, whereas Appellants'
15
Appeal2018-002330
Application 14/217,534
endeavor is to provide a stable and homogenous mixture of bifenthrin, an
encapsulated crop protection, and liquid fertilizer. Id. Appellants contend
that Shirley is directed to addressing a different problem than that faced by
Appellants, and it cannot be considered reasonably pertinent to the claims on
appeal.
We disagree.
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). All of the references are
directed generally to the field of plant pesticidal compounds, and Shirley,
Tsuda, and Brahm are specifically directed to compositions of encapsulated
pesticides and methods for their synthesis. See Martin Abstr., Brahm Abstr.
Tsuda Abstr., Shirley Abstr. Moreover, Shirley and Brahm both teach
compositions of mixtures of encapsulated and non-encapsulated pesticides
for expanding the spectrum of those compositions' activities. See Shirley ,r
60, Brahm ,r 102. As such, they are all within the same field of endeavor as
the claims and are analogous art.
Issue 4
Appellants argue that the Examiner erred because the prior art does
not teach how to form a stable and homogenous mixture as claimed by
Appellants. App. Br 10.
16
Appeal2018-002330
Application 14/217,534
Analysis
Appellants argue that the prior art does not teach how to form a stable
and homogenous mixture as claimed by Appellants. App. Br. 10.
According to Appellants, homogenous combinations of encapsulated and
unencapsulated insecticidal formulations are not inherently stable and are
liable to separation. Id. Appellants contend that the claimed encapsulated
crop protection agent is a complex mixture, and that the encapsulation
process requires the combination of: (1) an aqueous phase mixture; and, (2)
a water-immiscible phase mixture comprising the crop protection agent and
other additional components, wherein the combination of mixtures (1) and
(2) forms a heterogeneous mixture. Id. Appellants assert that the resulting
two-phase mixture comprising the crop protection agent, an aqueous phase
mixture and a water-immiscible mixture is then modified by addition of
several other components, including a diamine reactant to form the
encapsulated mixture. Id. Appellants explain that the encapsulated mixture
comprises at least three blended phases, comprising the aqueous phase, the
water-immiscible phase, and the solid encapsulated crop protection agent.
Id. Appellants assert that this multi-phase mixture is then mixed with (i)
unencapsulated bifenthrin and (ii) liquid fertilizer. Id. According to
Appellants, maintaining the stability of an insecticidal formulation after
addition of such a complex mixture is neither trivial nor obvious. Id.
Appellants argue that Martin does not teach or suggest that such a complex
mixture could be combined with an insecticidal formulation and liquid
fertilizer and remain stable, and that "conventional knowledge" would
suggest otherwise. Id.
17
Appeal2018-002330
Application 14/217,534
We are not persuaded. As we have explained, Tsuda, upon which the
Examiner relies, teaches the method of synthesizing encapsulated pesticides
recited in the claims. See Tsuda ,r,r 29--33, 57. Appellants point to no
evidence of record that these teachings of Tsuda are not enabled.
Furthermore, and as we have explained, both Brahm and Shirley teach
mixing encapsulated pesticides with non-encapsulated pesticides; Brahm
expressly teaches combining encapsulated pesticides with pyrethoid
pesticides such as bifenthrin. See Brahm ,r 102. Appellants point to no
specific evidence of record that these teachings are not enabled. Appellants'
assertion of non-enablement relies upon general assertions that creating such
mixtures is complicated and difficult, but they point to no evidence of record
demonstrating that a person of ordinary skill in the art could not follow the
teachings of the cited prior art with a reasonable expectation of success
beyond such generalized assertions. That is not sufficient to overcome the
Examiner's primafacie case that the claims are obvious, based upon the
express teachings of the prior art.
Issue 5
Appellants allege that the Examiner erred by improperly relying upon
hindsight analysis in arriving at a conclusion of prima facie obviousness.
App. Br. 11.
Analysis
Appellants argue that Martin does not suggest an encapsulated crop
protection agent incorporated as claimed. App. Br. 11. Appellants assert
that Shirley does not suggest the polyurethane encapsulant, nor does Shirley
18
Appeal2018-002330
Application 14/217,534
suggest the combination with a liquid fertilizer. Id. Appellants contend that
no other reference suggests how or why the composition claimed by
Appellants should be combined in the manner claimed, and that there is
therefore no basis for the combination other than Appellants' claims.
We are not persuaded. The Examiner properly set forth in the Final
Action, and we have explained supra, the reasons why the combined
references teach all of the limitations of the claims and teach or suggest
combining the references to arrive at Appellants' claimed invention. As we
have explained, Martin teaches, as Appellants acknowledge, a mixture of
bifenthrin and plant fertilizer, but does not teach combining it with
encapsulated pesticides. Shirley teaches that mixing encapsulated and non-
encapsulated pesticides is advantageous because it increases the spectrum of
the compositions' activities. See Shirley ,r 60. Tsuda expressly teaches the
method of synthesizing encapsulated pesticides recited in the claims. See
Tsuda ,r,r 29--33, 57. Brahm also teaches mixing encapsulated and non-
encapsulated pesticides, specifically including pyrethoid pesticides such as
bifenthrin in the latter category. See Brahm ,r 102.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
In re Keller, 642 F.2d 413,425 (C.C.P.A. 1981). Furthermore:
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
19
Appeal2018-002330
Application 14/217,534
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). Appellants point
to no reasoning by the Examiner that relies solely upon knowledge that
could be obtained only from Appellants' Specification, and not from the
prior art, beyond a mere unsupported and general assertion that such is the
case. We do not find such reasoning persuasive, and we affirm the
Examiner's rejection of the claims.
DECISION
The Examiner's rejection of claims 1-2, 5-18, and 21-22 as
unpatentable under 35 U.S.C. § 103(a) 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
20