Ex Parte Pedersen

Patent Trial and Appeal BoardNov 23, 2018

13318218 (P.T.A.B. Nov. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/318,218 10/31/2011 22045 7590 Brooks Kushman 1000 Town Center 22nd Floor SOUTHFIELD, MI 48075 11/27/2018 FIRST NAMED INVENTOR Morten Pedersen 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. AWACOlOlPUSA 1078 EXAMINER THOMAS, TIMOTHY P ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 11/27/2018 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): docketing@brookskushman.com kdilucia@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MORTEN PEDERSEN Appeal2017-007624 Application 13/318,218 Technology Center 1600 Before ULRIKE W. JENKS, JAMES A. WORTH, and TIMOTHY G. MAJORS, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), Appellant1 appeals from Examiner's decision to reject claims directed to a concentrated formulation of dimethoate as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellant identifies the real party in interest as Cheminova A/S. Appeal Br. 1. Appeal2017-007624 Application 13/318,218 STATEMENT OF THE CASE Claims 1, 14--16, 22-28, 34, 36-39, and 41 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. Claim 1 is representative of the claims2 on appeal, and reads as follows: 1. A formulation comprising: a) dimethoate; b) 30-75% by weight of a solvent including random co-polymer compounds of ethylene oxide (EO) and propylene oxide (PO) units, wherein a ratio of random copolymer compounds of ethylene oxide (EO) and polypropylene oxide (PO) units to dimethoate is 1 part of random co-polymer compounds of ethylene oxide (EO) and polypropylene oxide (PO) units to 2 parts or less of dimethoate; and c) one or more co-solvent( s) selected among the group consisting of mineral oils; aliphatic, cyclic, and aromatic carbon hydride compounds; aliphatic, cyclic and aromatic alcohols; gamma- butyrolactone; and cyclohexanone, wherein a ratio of random co-polymer compounds of ethylene oxide (EO) and polypropylene oxide (PO) units to the co-solvent is between 1:0.7 - 1:0.15. Appeal Br., Claims Appendix. 2 Appellant elected Group I without traverse, and additionally elected the following species: Agnique E-D 0001 as a solvent, cyclohexanone as a co- solvent, and acetic acid anhydride as stabilizer. See Final Office Action mailed May 16, 2016 ("Final Act.") 2. 2 Appeal2017-007624 Application 13/318,218 Appellant requests review of the rejection of claims 1, 14--16, 22-28, 34, 36-39, and 41 under pre-AIA 35 U.S.C. Â§ I03(a) as unpatentable over Finch 3 in view of Pompeo 4 and Roberts. 5 Appeal Br. 2. 6 Obviousness over Finch, Pompeo, and Roberts The issue is: Does the preponderance of evidence of record support Examiner's conclusion that the combination of references teach a dimethoate composition, containing a solvent with random co-polymer ethylene oxide (EO) and propylene oxide (PO) in the recited ratios, and co-solvent as claimed? Findings of Fact We generally agree with and adopt Examiner's findings of fact, reasoning on scope and content of the prior art, and conclusions set out in the Final Office Action and Answer. Any findings of fact set forth below are provided only to highlight certain evidence. 3 Charles W. Finch et al., US 2007/0184983 Al, published Aug. 9, 2007 ("Finch"). 4 Michael P. Pompeo et al., WO 2007/095163 A2, published Aug. 23, 2007 ("Pompeo"). 5 Johnnie R. Roberts, US 5,234,919, issued Aug. 10, 1993 ("Roberts"). 6 In the Answer, the Examiner withdrew the rejection of claims 1, 14--16, 22-28, 34, 36-38, and 41 under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Finch in view of Pompeo. Ans. 2. Nevertheless, we understand the Examiner to rely on the "rejection basis considering Finch and Pompeo," including the reasoning set forth at pages 5-12 of the Final Office Action, as part of the reasoning for the rejection over Finch, Pompeo, and Roberts, where the "rejection basis considering Finch and Pompeo" is further modified by Roberts. See Ans. 2. 3 Appeal2017-007624 Application 13/318,218 FF 1. Finch teaches formulating concentrated pesticide compositions using pesticides that ordinarily have low water-solubility. Finch ,r 8. Finch teaches combining: a) at least one organic pesticide compound C having a water solubility of not more than 5 g/1 ... ; b) at least one organic solvent Shaving a water solubility of at least 10 g/1 at 25Â° C./1013 mbar, and which is capable of dissolving the pesticide compound C, or a mixture of at least one organic solvent S with water, provided that the weight ratio of water to solvent S does not exceed 1 :2, c) at least one non-ionic blockcopolymer P comprising at least one polyethyleneoxide moiety PEO and at least one hydrophobic polyether moiety consisting of repeating units selected from C3-C10-alkyleneoxides and styrene oxide, d) optionally one or more non-polymeric surfactants, wherein the weight ratio of the non-ionic blockcopolymer to the organic pesticide compound P:C is from 0.6:1 to 10:1 and wherein the components a), b), c) and optionally d) make up at least 95% of the composition. Finch ,r,r 9--13; see Final Act. 5-6. FF2. Finch teaches that dimethoate is a pesticide/insecticide belonging to a group of compounds identified as compound C. Finch ,r,r 118-119; see Final Act. 6, see id. at 15. Finch teaches that the amount of active ingredient is not to exceed 60% of the total weight of the composition. Finch ,r 192; see Final Act. 6. FF3. Finch teaches that suitable organic solvents include cyclohexanone, y- butyrolactone, among others. Finch ,r 48, see generally id. ,r,r 42-58; see Final Act. 6. 4 Appeal2017-007624 Application 13/318,218 FF4. Table 2 of Finch, reproduced below, shows a composition containing a compound C pesticide/fungicide, mixed with an organic solvent, and a blockcopolymer. TABLE 2 { :.r..np.;:,,;;!1Â·;~Â·.:r.-:=: f:.nnti:lNinf. :-r~f:fhy; }.f .. {2,{t ,t4-Â·r.-:hk,rc:rh.::'~l_:..:1)-- tH--pyr . .1zr)] .. J ... ? l;_rx?;n.::-::.l.!_,,:{ t.1":cÂ·.;.'.:,:\ 1 (N Â·)"::.::~1.}~-:.~~y X>~-?h~-'.~;.:~:tt' '.}\Â·r~i-:~ kwt.;x)h ~i~ fA:Jc.J;.:.c,t:i():;'Â°!I:r,~!- .t:.(Â· :25/) :~~.r: 25)) :'.:~,(J r~_{: 2s.:.~: l~.n ~> .. r 1 bl~)Gk;;>'\t:w,j~:Â·t~iÂ·~tPÂ·~Â· l(i_~-~ l)f: L\i) EU) 1:Â·u_: ~-~Â·.::_i ~sn The ingredients listed in table 2 are given in percent (%) weight. Finch ,r 337. Pyraclostrobin, listed in table 2 above, is identified as a pesticide/fungicide belonging the group of compounds identified as compound C. Finch ,r,r 75, 146, 339; see Final Act. 9 (specifically directing attention to composition 2.3 in the table). Finch describes the block copolymers listed in the composition of table 2 as follows: "[B]lockcopolymer pa: EO/PO triblockoopolymer, OH terminated; MN 4960, EO/PO ratio 43:57, HLB-Value 9." Finch i1332. "[B]lockoopolymer Pb: EO/PO triblockcopolymer, OH terminated; MN 3650, EO/PO ratio 25:75, HLB-Value 6." Finch i1333. FF5. Examiner finds that "that PO-EO block polymers and random EO-PO copolymers are equivalents; i.e., that it would have been obvious to substitute one for the other to accomplish the same purpose." Final Act. 10; see also Reply to Office Action submitted Jan. 20, 2015 5 Appeal2017-007624 Application 13/318,218 ("Applicant agrees that PO-EO block polymers and random EO-PO copolymers are equivalents. For this reason, Applicant requests that the non-elected subject matter be considered for rejoinder"). FF6. Pompeo teaches the use of nonionic surfactant or a mixture of nonionic surfactants "comprising a capped or uncapped ethylene oxide and/or propylene oxide copolymer which can be a statistical or block copolymer and preferably a block copolymer." Pompeo 3: 10- 13; see Final Act. 9. "The nonionic surfactant copolymers can be random or block copolymers containing residues of ethylene oxide (EO), propylene oxide (PO) and butylene oxide (BO)." Pompeo 6:4-- 6; see Final Act. 10. Pompeo exemplifies the use of several commercially available emulsifiers including AgniqueÂ® and TergitolÂ®. Pompeo 14:5-26; see Final Act. 10. FF7. Roberts teaches that "0,0-dimethyl S-(N-methylcarbamyl) phosphorodithioate ('dimethoate') is a known pesticide and is available as an emulsifiable concentrate containing an emulsifier and an organic nonaqueous solvent." Roberts 1: 14--17; see Final Act. 18. Roberts teaches that "[ m ]ixtures of xylene hydrocarbons and cyclohexanone have been used as a solvent system for dimethoate." Roberts 1 :48--49. FF8. Roberts teaches using "a lower alkyl alcohol and a lower alkyl acetate ester" (id. at 2:43--44) as a solvent and additionally teaches that "[ o ]ther ingredients can be added to the formulations ... to enhance product performance or stability of the dimethoate. . . . Acetic anhydride is an example of a useful stabilizer. The stabilizers are typically added in an amount from about 0.50 to about 3 .5% by 6 Appeal2017-007624 Application 13/318,218 weight of the formulation." Id. at 3:6-14; see Final Act. 18. In addition, Roberts also teaches including surfactants such block copolymers containing ethylene oxide and propylene glycol into the dimethoate composition. Roberts 4: 44--54; see Final Act. 19. Principle of Law "[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007), citing United States v. Adams, 383 U.S. 39, 50-51 (1966). Analysis Examiner finds that Finch teaches liquid pesticide concentrate compositions. Final Act. 5; FFl. The composition includes at least one organic pesticide, one organic solvent, and at least one non-ionic block copolymer "P comprising at least one polyethyleneoxide moiety PEO and at least one hydrophobic polyether moiety consisting of repeating units selected from C.sub.3-C.sub.10-alkyleneoxides and styrene oxide." Final Act. 5; FF 1. Examiner finds that Finch teaches using dimethoate as an insecticide. Final Act. 6; FF2. Examiner finds that Finch teaches suitable organic solvents including ketones, such as cyclohexanone, as well as lactones such as y-butyrolactone. Final Act. 6 (citing Finch ,r,r 42, 43, 48, 49); FF3. Examiner finds that Finch teaches non-ionic block copolymer P, the examiner notes that each of the example blockcopolymers pa_pm contain EO and PO units. The Finch compositions utilize EP and PO containing copolymer 7 Appeal2017-007624 Application 13/318,218 compounds which employ EO and PO as block copolymers, not as random copolymers, required by instant claim 1. Thus, Finch does not anticipate the instant claims. Final Act. 7 ( citation omitted) ( citing Finch ,r,r 322-332); FF4. "The ratio of blockcopolymer to organic pesticide compound P:C is from 0.6: 1 to 10: 1 ([Finch] paragraph 0013), i.e., a range that overlaps with the instant 1 part EO/PO random copolymer compounds: 2 parts or less of dimethoate," and overlaps the claimed range. Final Act. 7; FF4. "The teaching [in Finch] of dimethoate as a suitable pesticide compound C renders obvious the use of these amounts [ disclosed in Table II], when dimethoate is substituted in place of pyraclostrobin," another type C compound identified by Finch. Final Act. 11; FF2, FF4. Examiner finds that Pompeo teaches an emulsifier adjuvant system that includes "the nonionic surfactant copolymers can be random or block copolymers containing residues of ethylene oxide (EO) and propylene oxide (PO) .... Emulsifiers include Agnique and Tergitol PO and EO containing block copolymers." Final Act. 10; FF6. Examiner finds that based on the combined teaching of Finch and Pompeo one of skill in the art at the time of the invention would find "substitution of random EO/PO copolymer solvents in place of the EO/PO blockcopolymers taught by Finch" obvious (Final Act. 10), because the ordinary artisan at the time of the invention would have known that "PO-EO block polymers and random EO-PO copolymers are equivalents." Final Act. 10; FF5. Appellant contends that (a) Finch teaches away from using dimethoate because the solubility is much greater than the highest solubility suggested in Finch and therefore the concentrate will not form nanoparticles upon 8 Appeal2017-007624 Application 13/318,218 dilution, (b) there is no reason to substitute dimethoate for pyraclostrobin, ( c) hindsight, and ( d) the prior art requires additional components. Teaching away Appellant contends that Finch requires an organic pesticide that has a solubility of not more than 5 g/1. Appeal Br. 2, 4, 11, 12; see Reply Br. 2 ("poor water solubility of the pesticide component was required by the prior art (Finch), and that the reference therefore teaches away from the claimed invention"), see id. at 5---6 ("the reference in fact provides guidance that would lead one of ordinary skill away from choosing dimethoate"). Specifically, dimethoate has solubility of 23 .3 g/1 and technical grade dimethoate has even greater solubility of 3 9. 8 g/1, and because of this high solubility, one of ordinary skill would not select this pesticide component. See Appeal Br. 3. We are not persuaded by Appellant's teaching away argument based on the water solubility of dimethoate. Examiner acknowledges that dimethoate has a known solubility of 23.3 g/L or about 2.33 %, but notes that "dimethoate is clearly taught by Finch as a suitable compound C for use in the Finch formulations." Final Act. 15. Even if the solubility of dimethoate is higher than the solubility called for in the preferred embodiments taught in Finch, this does not distract from the fact that the compound is listed as suitable for the disclosed purpose. Final Act. 15; see Ans. 4 ("dimethoate is explicitly named as a suitable organic pesticide compound C by Finch"). We agree with the Examiner that Finch expressly lists dimethoate as an example of compound C. FF2, FF4. Further, the disclosed purpose in Finch is to produce a liquid pesticide concentrate. See Finch, Abstract. 9 Appeal2017-007624 Application 13/318,218 Appellant contends "that dimethoate will not form ... nanoparticles upon dilution." Appeal Br. 9. According to Appellant, this teaches away from using pesticides that have greater solubility. Id. at 3, 5. Appellant contends that Finch teaches the formation of nanoparticles upon dilution, and to achieve this it is essential that the pesticide and organic solvent have particular solubilities. Id. at 6. Because of the need to form nanoparticles, Appellant contends "that Finch would teach a person of ordinary skill away from using technical dimethoate having a water solubility of 39.8 g/1 since nanoparticles of technical dimethoate would not form." Id. at 7. We are also not persuaded by Appellant's nanoparticle argument. As Examiner explains, formation of"[ n ]anoparticles are not the objective [in Finch]; sufficient solubility or stable suspension upon dissolution is." Ans. 19, see id. at 16. Finch teaches formation of clear solutions upon dilution with water. . . . Clear solutions correspond to either a smaller particle size (which would have less concern of a large aggregate that precipitates out of solution, i.e., which doesn't scatter blue light, or a dilution in which the pesticide is still dissolved at this diluted level of solvent and surfactant. Ans. 16 ( citing Finch ,r 15). Examiner explains that "the concentrates of Finch preferably achieve 10-40% by weight of pesticide stably solubilized. Dimethoate does not dissolve in aqueous solution at this level." Ans. 11; see also Final Act. 15 ( dimethoate has solubility of "23 .3 x 103 mg/L (23 .3 g/L, or about 2.33%)"); see also Appeal Br. 3 ("the water solubility of technical grade dimethoate for use in an industrial product is 39.8 g/1"). Finch contemplates numerous structures of the pesticide upon dilution of the concentrates but stipulates that the components do not form course materials upon dilution. See Finch ,r 15 ("Upon dilution with water, the compositions 10 Appeal2017-007624 Application 13/318,218 of the present invention form a bluish or even clear emulsion or dispersion"), see id. ,r 8 ("[T]he formulation should not form coarse material upon dilution with water and the active ingredient should be stable in the liquid concentrate formulation upon prolonged storage or storage at elevated temperatures"). We agree with Examiner, that Finch does not require formation of nanoparticulate structures upon dilution and encompasses pesticides that are dissolved. Substitution Appellant contends that it would not be obvious to substitute dimethoate for pyraclostrobin because they have different solubilities, with pyraclostrobin being insoluble while dimethoate has a much greater solubility. Appeal Br. 8. We are not persuaded. It is generally obvious to those skilled in the art to substitute one known equivalent for another. See In re Omeprazole Patent Litig., 483 F.3d 1364, 1374 (Fed. Cir. 2007) ("[T]his court finds no ... error in [the] conclusion that it would have been obvious to one skilled in the art to substitute one ARC [alkaline reactive compound] for another."). Here, the Examiner reasonably is relying on Finch's identification of pesticides belonging to compound C to arrive at the conclusion that it is obvious to substitute one known compound C component for another compound C component. See Final Act. 11 ("The teaching of dimethoate as a suitable pesticide compound C renders obvious the use of these amounts, when dimethoate is substituted in place of pyraclostrobin"). Hindsight 11 Appeal2017-007624 Application 13/318,218 Appellant contends that "Finch includes a laundry list comprising potentially millions of pesticides," therefore, one could only arrive at the claimed invention by the application of hindsight. Reply Br. 4. We do not find the "laundry list" argument persuasive. Simply because Finch "discloses a multitude of effective combinations does not render any particular formulation less obvious." Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); see also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that "hydrated zeolites will work" in detergent formulations, even though "the inventors selected the zeolites of the claims from among 'thousands' of compounds"). Further, as discussed below, the Examiner also relies on Roberts as evidence that it would have been obvious to select dimethoate as a pesticide for use in a solvent system. FF7-8; Ans. 7; Final Act. 18-19. Additional Components Appellant contents that "Pompeo at no point suggests that the emulsifier adjuvant system not include an anionic surfactant having an average HLB value of from about 6 to about 11." Appeal Br. 13-14. We are not persuaded. Even if Pompeo makes use of a hydrophobic anionic surfactant in conjunction with a hydrophilic nonionic surfactant, the claims as presented do not exclude the use the additional anionic surfactant. See Ans. 21 ("The inclusion of an anionic surfactant is not excluded by the instant claims. Nonetheless, the inclusion of Pompeo makes clear that statistical (random) and block copolymers of EO/PO are obvious alternatives for each other, providing motivation to substitute the required random copolymer for the block copolymer"); FF5; see Final Act. 10. 12 Appeal2017-007624 Application 13/318,218 Furthermore, we find Appellant's focus on Finch does not take into account the rejection as presented by Examiner, which relies on the additional teachings of Pompeo and Roberts to arrive at the conclusion that the claimed dimethoate concentrate is obvious. Appellant errs in attacking the references individually, as the rejection is based on a combination of references. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The references cannot be read in isolation, but for what they teach in combination with the prior art as a whole. See id. Appellant contends that characterizing dimethoate "'as a less preferred embodiment' of the invention in Finch" is an error. Reply Br. 3. We are not persuaded. Finch clearly lists dimethoate as a pesticide encompassed by compound C. FF2. A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not "criticize, discredit, or otherwise discourage" investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir.2004). Here, Finch does not criticize, discredit, or otherwise discourage one of ordinary skill in the art from selecting any one of the expressly listed components to include the disclosed pesticide concentrate even if the object of Finch is to formulate compounds having low aqueous solubility. FF 1. In sum, we determine that the use of dimethoate in a solvent system would have been suggested by the teachings of Finch, Pompeo, and Roberts. As Examiner explains "[ t ]he benefits taught by Finch would also have been expected for dimethoate formulations, and are not somehow contra-intuitive as alleged; these include that the concentrates are stable against formation of 13 Appeal2017-007624 Application 13/318,218 solids upon storage, and can be easily diluted with water without the formation of coarse material." Ans. 10. Claim 38 With respect to claim 38, Appellant contends "that emulsions and suspensions are two distinct formulation types that the person skilled in the art will not confuse. . . . Upon dilution, dimethoate is an emulsion and pyraclostrobin is a suspension." Appeal Br. 9. And, because an emulsion differs from a suspension, it would not be possible to take a teaching from a suspension and apply it to an emulsion. Id. Examiner acknowledges that acetic anhydride, an elected species, is not taught by Finch or Pompeo, but finds that it is taught by Roberts. Final Act. 18; FF8. "Examiner notes that [indeed all] the components of the instant claimed formulations are also found within Roberts: dimethoate, cyclohexanone as solvent, and EO/PO block copolymers (which Pompeo establishes, and Appellant has conceded, is an obvious alternative for EP/PO random copolymers)." Ans. 9. Examiner explains that "Roberts clearly uses various solvents, including Appellant['s] elected cyclohexanone, for solubilizing dimethoate, and teaches surfactants including EO/PO copolymers, without any such concern about solubility or nanoparticles not forming, as is argued." Id. at 14. We are not persuaded by Appellant's contention that the teachings of the references cannot be combined. Finch teaches that "[ u Jpon dilution with water, the compositions of the present invention form a bluish or even clear emulsion or dispersion." Finch ,r 15. "Moreover, the formulation should not form coarse material upon dilution with water and the active ingredient should be stable in the liquid concentrate formulation upon prolonged 14 Appeal2017-007624 Application 13/318,218 storage or storage at elevated temperatures." Finch ,r 8. Here, Finch suggests that the formation of either a suspension or emulsion after diluting their concentrated stock is within the scope of their invention. See Ans. 16 ("Clear solutions correspond to either a smaller particle size (which would have less concern of a large aggregate that precipitates out of solution, i.e., which doesn't scatter blue light, or a dilution in which the pesticide is still dissolved at this diluted level of solvent and surfactant"). Because dimethoate has higher solubility in water, the formation of aggregates is less likely. See id. ("dimethoate ... would not have as much concern upon dilution as pyraclostrobin, because dimethoate is more soluble in aqueous solution"). Examiner further explains that the addition of a surfactant as suggested by Roberts helps "surface wetting or uptake [ of the pesticide] into plants." Id. at 17. As explained by Examiner, the fact that the combination of dimethoate, having a higher aqueous solubility, in conjunction with a surfactant would provide a clear solution rather than a coarse particulate is not detrimental for a finding of obviousness based on the combined references because Finch already contemplates creating clear solutions upon dilution. We conclude that the evidence cited by the Examiner supports a prima facie case of obviousness with respect to claims 1 and 3 8 and Appellant has not provided persuasive evidence to rebut the prima facie case. As Appellant does not argue the claims separately, claims 14--16, 22-28, 34, 36, 37, 39, and 41 fall with claims 1 and 38. 37 C.F.R. Â§ 41.37 (c)(l)(iv). 15 Appeal2017-007624 Application 13/318,218 SUMMARY We affirm the obviousness rejection over Finch, Pompeo, and Robert. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 16