Ex Parte Reap

Patent Trial and Appeal Board

Nov 16, 2016

12525878 (P.T.A.B. Nov. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/525,878 10/14/2010
23906 7590 11/18/2016
EIDUPONTDENEMOURSANDCOMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
James J. Reap
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.
BA9397USPCT 2173
EXAMINER
CHUI, MEI PING
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
11/18/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES J. REAP
Appeal2015-004110
Application 12/525,878
Technology Center 1600
Before JEFFREYN. FREDMAN, RICHARD J. SMITH, and
DAVID COTTA, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving a single liquid-
phase herbicide composition. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
"Sulfonylurea herbicides like other agricultural chemicals can be
formulated as concentrates in a variety of different forms ... [but]
[c]ompared to solid formulations, liquid formulations of sulfonylureas are
more prone to certain problems" (Spec. 1: 13-20). "New stabilized liquid
formulations of sulfonylurea herbicides providing consistently good
1 Appellant identifies the Real Party in Interest as the E. I. du Pont de
Nemours and Company (see Br. 2).
Appeal2015-004110
Application 12/525,878
herbicidal activity when diluted with water and sprayed on undesired
vegetation have now been discovered" (Spec. 1 :25-27).
The Claims
Claims 1-17 are on appeal. Claim 1 is representative and reads as
follows:
1. A single liquid-phase herbicide composition comprising
by weight
(a) from 0.1 to 30% of one or more sulfonylurea
herbicides;
(b) from 0 to 40% of one or more biologically active
agents other than sulfonylurea herbicides;
( c) from 0 to 30% of one or more herbicide safeners;
(d) from 10 to 99.9% of one or more polyalkoxylated
triglycerides wherein no more than 50% by weight of the fatty
acid-derived moieties in the polyalkoxylated triglycerides are
derived from hydroxy fatty acids;
( e) from 0 to 89 .9% of one or more fatty acid esters of
C1--C4 alkanols; and
(f) from 0 to 70% of one or more additional formulating
ingredients.
The Issues
A. The Examiner rejected claims 1-9, 12-14, 16, and 17 under 35 U.S.C.
§ 103(a) as obvious over Sixl2 and Kober3 (Final Act. 3-7).
B. The Examiner rejected claims 10, 11, and 15 under 35 U.S.C. § 103(a)
as obvious over Sixl, Kober, and Meyer4 (Final Act. 7-9).
2 Sixl, F., US 6,479,432 Bl, issued Nov. 12, 2002 ("Sixl").
3 Kober et al., GB 2 309 904 A, published Aug. 13, 1997 ("Kober").
4 Meyer, W., US 5, 163,996, issued Nov. 17, 1992 ("Meyer").
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Application 12/525,878
A. 35 U.S.C. § 103(a) over Six! and Kober
The Examiner finds that Sixl teaches a formulation comprising
elements (a), (b), (c),(e), and (t), but "Sixl does not teach the
polyalkoxylated triglyceride" required by element (d) (Final Act 4--5).
The Examiner finds that Kober teaches "a formulation-auxiliaries
mixture, which when used with crop protection compositions can lower the
application rate of the crop protection and/or widens the spectrum of action
of the crop protection active compounds" (Final Act. 5). The Examiner
finds that Kober teaches
(Id).
a dicarboxylic acid ester of the formula (I); and (ii) a product
(II) obtainable by the reaction of an oil based on a
triglyceride of carboxylic acids having 2 to 30 carbon atoms
and ethylene oxide and/or propylene oxide in the presence of
a base, wherein the suitable oils can be vegetable oils, i.e.
soybean oil, rapeseed oil, or mixtures thereof.
The Examiner finds inclusion of Kober's reaction product into Sixl's
composition obvious because "it can lower the application rate of the
composition and widens the herbicidal spectrum of action of said crop
protection active compounds" (Final Act. 7).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Sixl and Kober render claims
and 14 obvious?
Findings of Fact
1. Sixl teaches "suspensions which comprise at least one solid,
specifically from the group of the herbicidal sulfonylureas, dispersed in the
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organic phase, and surfactants, and other active compounds dissolved in the
organic phase" (Sixl 1:6-10).
2. Sixl teaches herbicides including nicosulfuron and rimsulfuron
(Sixl 5: 10---13) in amounts "from 0.1 to 20% by weight" (Sixl 6:33).
3. Sixl teaches "formulations according to the invention preferably
comprise safeners in amounts of from 0.1 to 40% by weight" (Sixl 10:32-
33).
4. Sixl teaches solvents including "rapeseed oil fatty acid (C1-C6)-
alkyl esters, preferably rapeseed oil fatty acid methyl ester (='rapeseed oil
methyl ester') and rapeseed oil fatty acid ethyl ester (='rapeseed oil ethyl
ester')" (Sixl 12:45--48).
5. Sixl teaches the "solvent content is, for example, in the range
... from 40 to 80% by weight, based on the weight of the formulation" (Sixl
12:51-54).
6. Sixl teaches "[ s ]uitable emulsifiers ... in combination \'l1ith one
another, in particular surfactants" (Sixl 12:55-58) including "surfactants
from the group of the ethoxylated sorbitan esters" (Sixl 13:35-36).
7. Sixl teaches "[ s ]uitable thickeners from the class of the mineral
thickeners are pure silica ... magnesium phyllosilicates, such as bentonites
or hectorites" (Sixl 14:51-56).
8. The Specification teaches "[i]n one method, glycerol fatty acid
esters (e.g., vegetable oils) are polyethoxylated in a process typically
involving heating with a catalytic amount of an alkali metal hydroxide or
alkoxide, optionally a catalytic amount of an alcohol (e.g., glycerol), and an
amount of ethylene oxide depending upon the extent of ethoxylation
desired" (Spec. 27:33-36).
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9. The Specification teaches that "[a]n ethoxylation process
minimizing residual unmodified triglycerides involves heating glycerol fatty
acid esters (i.e. triglycerides) with ethylene oxide in the presence of a
calcined or hydrophobicized (e.g., fatty-acid-modified) hydrotalcite
heterogeneous catalyst as described in U.S. Patent 5,292,910" (Spec. 28:22-
26).
10. The Specification teaches "[ e ]thoxylation using a calcined or
hydrophobicized hydrotalcite heterogeneous catalyst also minimizes
formation of alkoxylated (e.g., ethoxylated) fatty acid impurities" (Spec
28:28-30).
11. Kober teaches "formulation auxiliaries for crop protection
compositions, to crop protection compositions which are conditioned in two
parts and contain such auxiliaries, to the use of the auxiliaries for their
production" (Kober 1 :3-7).
12. Kober teaches the "mixture component II is obtainable by the
reaction of an oil/fat based on a triglyceride of carboxylic acids having 2 to
30 carbon atoms and ethylene oxide and/or propylene oxide in the presence
of a base. Fatty acid alkoxylates are primarily formed" (Kober 4:5-9).
13. Kober teaches: "Per mol of the triglyceride on which the oil is
based, from 1 to 100 ... and in particular from 15 to 30, mol of ethylene
oxide and/or propylene oxide are employed" (Kober 4: 15-35).
14. Kober teaches:
Suitable bases are especially inorganic bases such as the alkali
metal or alkaline earth metal hydroxides, e.g. sodium
hydroxide, potassium hydroxide or calcium hydroxide. Instead
of the direct use of hydroxides, it is possible to use carbonates
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Application 12/525,878
or hydrotalcites, which, if appropriate, were hydrophobized
with aliphatic or aromatic carboxylic acids.
(Kober 4:36-42).
15. Kober teaches "[p]er mol of triglyceride, from 0.1 to 5, and in
particular from 0.1 to 2, % by weight of base, based on the weight of the
triglyceride, are generally added to the reaction mixture" (Kober 5:6-8).
16. Kober teaches the "reaction is generally carried out at elevated
pressure . . . and especially from 100 to 150°C" (Kober 5: 11-13).
17. Kober teaches:
Preferably, the present invention uses naturally occurring oils
and fats which contain triglycerides as the main constituent.
They can be crude, denatured or refined. Suitable natural oils
and fats are: vegetable oils such as olive oil, safflower oil,
soybean oil, groundnut oil, cotton oil, com oil, rape oil, castor
oil, sunflower oil, coffee oil, linseed oil, coconut fat and
mixtures thereof.
(Kober 4:15-23).
18. Kober teaches the "present invention seeks to provide
formulation auxiliaries by means of which the application rates of crop
protection compositions comprising crop protection active compounds and
formulation auxiliaries can be lowered and/or the spectrum of action of the
crop protection active compounds can be widened" (Kober 2: 1---6).
19. Kober teaches the "mixture according to the invention also
increases the rate and intensity with which the herbicidal crop protection
active compounds are absorbed. Furthermore, the resistance to rain, i.e. the
danger of the herbicidal crop protection active compound being washed off
by rain shortly after treatment, is improved" (Kober 15:26-30).
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Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR!nt'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417.
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 3-7; FF 1-19) and agree that
the claims are obvious over Sixl and Kober. We address Appellant's
arguments below.
Claim 1
Appellant contends "that the only component II species identified
with enough particularity to be fairly classifiable as having been suggested
by Kober in such manner that it \'l/ould have come to the attention of the
artisan is a fatty acid alkoxylate" (Br. 13). Appellant contends that
Kober very specifically states that, as the product of its
alkoxylation reaction, "[f]atty acid alkoxylates are primarily
formed." This is not inconsistent with the literature, as
represented by Behler, in the sense that this type of reaction can
give a variety of products, but a fatty acid alkoxylate, as a
distinct reaction product, is entirely different from, and should
not be mistaken for, a polyalkoxylated triglyceride.
(Br. 14). Appellant contends that "[e]ven with respect to the few
alkoxylated triglycerides that might be produced as an incidental result of
the Kober reaction, Kober further fails to teach or provide direction to ensure
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that they would be the low hydroxy type of triglycerides required by
Appellant's claims" (Br. 15).
The Examiner responds that:
Kober teaches several embodiments for forming the
reaction product (II) obtained from the reaction of a
triglyceride of carboxylic acids having 2 to 30 carbon atoms
and ethylene oxide and/or propylene oxide. For instance, in
one embodiment, Kober suggested the suitable base can be
inorganic hydroxides. Alternatively, Kober suggested that
carbonates or hydrotalcites which [are] hydrophobized with
aliphatic or aromatic carboxylic acids, alcohols having 4 to 22
carbon atoms or the ethoxylates of alcohols of this type [can]
also [be] the suitable bases for making the reaction product (II)
(Ans. 11-12).
We find the Examiner has the better position. Kober teaches a
process for obtaining the mixture component II substantially identical to the
process used in Appellant's Specification (FF 8-16). In particular, the
Specification teaches "heating glycerol fatty acid esters (i.e. triglycerides
with ethylene oxide in the presence of a ... hydrophobic (e.g. fatty-acid-
modified) hydrotalcite heterogeneous catalyst" (FF 9). Kober teaches that
the mixture component II may be formed from a reaction of triglycerides
and ethylene oxide (FF 12) where "instead of the direct use of hydroxides, it
is possible to use ... hydrotalcites, which, if appropriate, were
hydrophobized" (FF 14).
Thus, Kober suggests an alternative embodiment that uses
hydrophobized hydrotalcite as the base (FF 14 ), and Kober teaches the use
of elevated temperatures as well (FF 16). As taught by Appellant's
Specification, we find that using a hydrotalcite base in the synthesis will
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"minimize[] formation of alkoxylated (e.g., ethoxylated) fatty acid
impurities" (FF 10; see Ans. 13). Therefore, even if one embodiment of
Kober's process for obtaining mixture component II primarily forms a
mixture of fatty acid alkoxylates that are not necessarily within the scope of
claim 1 (FF 12), Kober also teaches another embodiment using a
hydrophobicized hydrotalcite catalyst (FF 14) that the Specification
demonstrates will form polyalkoxylated triglycerides within the scope of
claim 1 (FF 10).
We recognize, but find unpersuasive, Appellant's contention that
"Example 1 fails to provide useful guidance to the artisan desiring to make
Appellant's composition [because] Kober used only 1 mole of ethylene
oxide to react with 1 mole of castor oil. A 1/1 molar ratio of those reactants
does not suggest to the artisan that QQ.lyalkoxylation will be obtained from
use of a Kober reaction" (Br. 16). We also recognize, but find unpersuasive,
1A .. ppellant's argument that "fatty acid alkoxylate is entirely different from a
polyalkoxylated triglyceride as required for present component ( d), and is
not even remotely suggestive of a PLHF A triglyceride, which Kober
Example 1 actually teaches away from in view of its reliance on castor oil"
(Id.).
These arguments are limited to Example 1 and fail to address the
broader teaching of Kober to use other vegetable oils containing
triglycerides (FF 17) as well as Kober' s teaching that a molar ratio of 15 to
30 mol ethylene oxide per mol of triglyceride is most preferred (FF 13). The
arguments also fail to recognize Kober' s direct suggestion to use
hydrophobicized hydrotalcite catalysts (FF 14) that the Specification teaches
will form polyalkoxylated triglycerides within the scope of claim 1 (FF 10).
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Disclosed examples, such as example 1 of Kober, and even preferred
embodiments do not constitute a teaching away from a broader disclosure or
non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA
1971 ).
Here, nothing in Kober discourages or discredits a mixture component
II formed using triglyceride sources other than castor oil, ethylene oxide
ratios 15 to 30 mol per mol of triglyceride, and hydrophobicized hydrotalcite
catalysts as expressly taught by Kober (FF 13, 14, 17).
Appellant contends the "artisan would likewise have no motivation to,
and would be discouraged from, selecting a Kober component II for
inclusion into a Sixl composition because Kober maintains the component II
in its auxiliary mixture as a separate component until the time of application
of the active to weeds" (Br. 16; cf Br. 18 "Correspondingly, the Examiner
has cited no apparent reason why the artisan would include the Kober
component II in a Sixl composition \'l1hen Sixl has clearly chosen its
components in view of a need to achieve active stability")).
We find these arguments unpersuasive because Sixl teaches inclusion
of auxiliary components including surfactants into the herbicide composition
(FF 4--7) and Kober teaches that inclusion of the formulation auxiliaries
comprising mixture component II allows lower application rates, provides a
wider spectrum of action (FF 18), "increases the rate and intensity with
which the herbicidal crop protection active compounds are absorbed," and
provides rain resistance (FF 19). These are specific benefits taught by Kober
that would provide reason to the ordinary artisan to include mixture
component II into the herbicidal composition of Sixl.
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With regard to the argument that the components should be kept
separate, while Kober prefers that "delivery of the mixture and of the
herbicidal crop protection active compound to the consumer preferably takes
place in separate packages" (Kober 12:41--43), Kober clearly recognizes a
nonpreferred delivery of a "'built-in' product" combining both components
(Kober 12:44). See In re Susi, 440 F.2d at 446 n.3. Moreover, as the
Examiner points out "Kober also provides the guidance that the crop
protection composition can be processed first mixing the above components
(I) and (II) with other components" (Ans. 15; "the parts of the combipack
are first mixed and the herbicidal composition thus obtained is then diluted
with water to the desired concentration" (Kober 13:26-28)). Claim 1, drawn
to a composition, does not require any duration for product storage.
Consequently, the mixture prior to dilution with water would itself satisfy
the requirements of claim 1.
1A .. ppellant contends:
It is thus shear speculation for the Examiner to propose that the
artisan would be attracted to a PLHF A triglyceride for
inclusion in a Sixl composition since Kober encourages the
artisan to focus only on fatty acid alkoxylates and avoids
having to deal with any impact that storage might have on
active stability by keeping its auxiliary mixture separate from
the active until the spray liquor is formed.
(Br. 17-18).
We find this argument unpersuasive because claim 1 includes no
stability or storage requirements. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) ("[A]ppellant's arguments fail from the outset because ...
they are not based on limitations appearing in the claims."). Therefore, even
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if the mixture of Sixl and Kober were combined immediately prior to
dilution for use, that obvious mixture reasonably renders claim 1 obvious.
Claim 14
Appellant contends "[c]laim 14 requires that the composition contain
no more than 5% of unmodified triglycerides and no more than 5% of
alkoxylated fatty acids by weight" and that "minimizing the amount of
unmodified triglycerides and the amount of alkoxylated fatty acids allows
maximizing the content of other liquid phase components that confer other
beneficial effects and properties on the composition" (Br. 18, 20). "In
addition, Appellant refers to processes that are capable of providing a PLHF
A triglyceride characterized by a content of unmodified triglycerides and
alkoxylated fatty acids as described in Claim 14" (Br. 20; with footnote 71
citing the Spec. at page 28, lines 22-36).
We find this argument unpersuasive for the reasons already given
above. In particular, the portion of the Specification identified as teaching a
process of synthesizing polyalkoxylated triglycerides with the properties
required by claim 14 utilizes the same hydrophobicized hydrotalcite
catalysts of Kober (FF 14) as well as other reagents taught by Kober (FF 9,
13, 15-17). Thus, as the Examiner notes "ifthe prior art teaches the
identical chemical structure (the reaction product II taught [b ]y Kober '904),
the properties applicant discloses and/or claims are necessarily present"
(Ans. 16; citing In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("when the
PTO shows sound basis for believing that the products of the applicant and
the prior art are the same, the applicant has the burden of showing that they
are not")).
Conclusion of Law
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The evidence of record supports the Examiner's conclusion that Sixl
and Kober render claims and 14 obvious.
B. 35U.S.C.§103(a) over Six!, Kober, and Meyer
Appellant contends "Meyer provides no disclosure relating
specifically to the usefulness of lignosulfonates in non-aqueous or low-water
liquid suspension concentrate compositions such as taught by Sixl" (Br. 22).
Appellant contends that "both suspension concentrate compositions of
Meyer are incompatible with the teaching of Sixl. Meyer is therefore not
reasonably combined with Sixl alone, or in further combination with Kober,
to remedy the deficiency of disclosure of the Sixl liquid composition in
regards to lignosulfonate" (Br. 23).
We do not find this argument persuasive because Meyer teaches
"suitable surface-active compounds are non-ionic, cationic and/or anionic
surfactants having good emulsifying, dispersing and wetting properties"
(l\1eyer 9:48-51) including lignosulfonic acid salts (see l\1eyer 9:67 to l 0:4).
Meyer's teaching to use surfactants, in combination with Sixl' s teaching to
use "surfactants which are soluble in the solvent in question" (Sixl 12:56-
57) and Kober's teaching that "mixtures according to the invention can
moreover additionally contain further customary additives such as
surfactants" (Kober 10: 14--15) reasonably supports the Examiner's position
that "the secondary reference Meyer is relied upon to that the use of
conventional adjuvants, i.e. metal lignosulfonate salts (e.g. sodium and
calcium lignosulfonates) in a sulfonylurea composition is desirable" (Ans.
17).
Appellants provide no evidence that the surfactants of Meyer would
not function as in the suspensions of Sixl, instead relying solely upon
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attorney argument, while Meyer teaches that the composition may be
incorporated into emulsifiable concentrates and directly sprayable or
dilutable solutions (Meyer 9:5-6). However, "attorney argument [is] not the
kind of factual evidence that is required to rebut a prima facie case of
obviousness." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
SUMMARY
In summary, we affirm the rejection of claims 1 and 14 under 35
U.S.C. § 103(a) as obvious over Sixl and Kober.· Claims 2-9, 12, 13, 16 and
17 fall with claims 1 and 14.
We affirm the rejection of claims 10, 11, and 15 under 35 U.S.C.
§ 103(a) as obvious over Sixl, Kober, and Meyer.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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