Ex Parte Volgas et al

Patent Trial and Appeal BoardSep 17, 2012

11139117 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/139,117 05/27/2005 Greg Volgas 00306-00411-US 9941 23416 7590 09/17/2012 CONNOLLY BOVE LODGE & HUTZ, LLP P O BOX 2207 WILMINGTON, DE 19899 EXAMINER SULLIVAN, DANIELLE D ART UNIT PAPER NUMBER 1617 MAIL DATE DELIVERY MODE 09/17/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte GREG VOLGAS, JOHNNIE R. ROBERTS, MARVIN BAKER III, and PETER DELASHMIT __________ Appeal 2011-007090 Application 11/139,117 Technology Center 1600 __________ Before TONI R. SCHEINER, MELANIE L. McCOLLUM, and JEFFREY N. FREDMAN, Administrative Patent Judges. SCHEINER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-21 and 33, directed to a stabilized herbicide concentrate. The claims have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-007090 Application 11/139,117 2 STATEMENT OF THE CASE Claims 1-21 and 33 are pending and on appeal. Claims 22-29 are also pending, but have been withdrawn from consideration; claims 30-32 have been canceled (App. Br. 2). The Specification teaches that “[a]cid herbicides . . . have traditionally been reacted into amine or other salts, which are soluble in water, or into esters which are oil soluble” (Spec. ¶ 3). Both the salt and ester forms have disadvantages, and, in any case, “must then break down in the environment back into the acid, which is herbicidal” (id. at ¶¶ 2, 3). According to the Specification, it is preferable to apply the herbicides as acids. Because the acid forms “are not significantly soluble in water” (id. at ¶ 4), they are conventionally combined with surfactants, including alcohol ethoxylate surfactants (id. at ¶¶ 18, 19). However, Appellants “discovered that the free alcohol in alcohol ethoxylates is capable of reacting with the acid herbicides” (id.at ¶ 23), “even at ambient temperatures” to produce an ester of the acid herbicide, which is generally much more volatile that the acid form and can damage non-target plants (id. at ¶¶ 2, 24). The Specification discloses “acid herbicide compositions with little or no free alcohol . . . [in which] the alcohol-acid herbicide reaction and decomposition is prevented” (id. at ¶ 25). Claim 1 is representative of the subject matter on appeal: 1. A stabilized concentrate comprising herbicide compound in acid form and an alcohol ethoxylate surfactant, wherein the alcohol ethoxylate surfactant contains less than 2.0% free un-reacted alcohol and the alcohol ethoxylate surfactants contains, on average, less than 5 moles of ethylene oxide. Appeal 2011-007090 Application 11/139,117 3 Claims 1-21 and 33 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Herold et al. (US 6,803,345 B2, October 12, 2004), Chamberlain (US 5,529,975, June 25, 1996), and AkzoNobel (online brochure entitled “Berol 260, 266 and 840, Narrow range ethoxylated alcohols”). 1 ISSUE Would an herbicide concentrate comprising an herbicide in acid form and an alcohol ethoxylated surfactant with less than 5 moles of ethylene oxide and less than 2.0 % free alcohol have been obvious, given the teachings of Herold, Chamberlain, and AkzoNobel? FINDINGS OF FACT 1. Herold discloses herbicide concentrates comprising herbicides in their acid forms and alcohol ethoxylated surfactants (Herold, see e.g., Examples, col. 17-19). Herold does not disclose the percent free alcohol for any of the alcohol ethoxylated surfactants. 2. Chamberlain discloses an herbicide composition comprising glyphosate and “a blend of 2 parts nonylphenyl ethoxylate (5 mole ethylene oxide HLB 10.5) with 1 part C12-15 alcohol ethoxylate (4 mole ethylene oxide, HLB 9.8)” (Chamberlain, col. 14, ll. 30-47; Example 2). Chamberlain does not disclose the percent free alcohol for the alcohol ethoxylated surfactant. 1 Accessed May 11, 2001 at http://www.se.akzonobel.com/cleaning/brochures/Berol_260_266_and_840_ Narrow_range_ethoxylates.pdf Appeal 2011-007090 Application 11/139,117 4 3. AkzoNobel teaches that “standard alcohol ethoxylates” have higher amounts of free alcohol, coupled with lower the degrees of ethoxylation (AkzoNobel 2). AkzoNobel discloses “narrow range” alcohol ethoxylates with less free alcohol at lower degrees of ethoxylation, and therefore “significantly lower odour” (id. at 3), for use in various cleaning applications (id.). PRINCIPLES OF LAW A rejection on the ground of obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[T]his analysis should be made explicit” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l Co., v. Teleflex Inc., 550 U.S. 398, 418 (2007). OBVIOUSNESS The Examiner’s position is that it would have been obvious for one of ordinary skill in the art to combine the teachings of Herold, Chamberlain, and AkzoNobel in the manner required by the claims because “Herold et al. and Chamberlain et al. are both drawn to agricultural formulations which are silent as to the percent of unreacted alcohol present, while [AkzoNobel] is drawn to surfactants for multipurpose use” (Ans. 6), “Chamberlain et al. teach herbicidal formulations . . . combined with surfactants comprising 4 moles of ethylene oxide” (id. at 7), and AkzoNobel “teaches narrow range ethoxylates have focused properties, low odor and avoid formulation properties” (id.). Appeal 2011-007090 Application 11/139,117 5 Nevertheless, Appellants contend, and the Examiner does not dispute, that “[i]n all [of Herold’s] examples where alcohol ethoxylates were used, the specific alcohol ethoxylates contain high levels of free alcohol” (App. Br. 9; see also Spec. ¶ 21). Thus, Appellants contend that Herold does not disclose any compositions “wherein [the] alcohol ethoxylate surfactant contains less than 2.0% free un-reacted alcohol and . . . less than 5 moles of ethylene oxide” as required by the claims (id. at 10-11 (emphasis omitted)). Moreover, Appellants contend that “[t]he specific problem encountered by using alcohol ethoxylates with less than 5 moles of EO and greater than 2% free unreacted alcohol was unknown at the time of Herold” (id. at 12 (emphasis omitted)). Appellants further contend, and the Examiner does not dispute, that Chamberlain does not disclose “the concentration of unreacted alcohols” in its alcohol ethoxylated surfactants - nor does Chamberlain disclose an herbicide in acid form (id. at 11). Finally, Appellants contend that there is no disclosure or teaching in AkzoNobel that narrow range ethoxylated alcohols could be used with acid herbicides (id. at 11, 14). We agree with Appellants that the Examiner has not established that one of ordinary skill in the art would have had a reason to replace the alcohol ethoxylates in Herold’s herbicide concentrates with the “narrow range” alcohol ethoxylates disclosed by AkzoNobel. Herold does not identify any particular problem with its acid herbicide concentrates, much less a problem associated with the free alcohol levels in the alcohol ethoxylated surfactants. Chamberlain does not mention the free alcohol content of its herbicide formulations, and in any case, is of little or Appeal 2011-007090 Application 11/139,117 6 no relevance to herbicides in the acid form. AkzoNobel merely discusses the advantages of “narrow range” alcohol ethoxylates in terms of cleaning applications. At best, the Examiner has established that all of the components of the claimed concentrates were known in the art, but that, in and of itself, does not provide a reason to combine them in the manner required by the claims. SUMMARY The rejection of claims 1-21 and 33 as unpatentable over Herold, Chamberlain, and AkzoNobel is reversed. REVERSED cdc