Neivaldo Tunes. Caceres et al.

Patent Trials and Appeals Board

Oct 30, 2019

14201416 - (D) (P.T.A.B. Oct. 30, 2019)

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.
14/201,416 03/07/2014 Neivaldo Tunes Caceres 10284-086US1 5832
25212 7590 10/30/2019
DOW AGROSCIENCES LLC
9330 ZIONSVILLE RD
INDIANAPOLIS, IN 46268
EXAMINER
CHUI, MEI PING
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
10/30/2019 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):
PatentsUS@pioneer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEIVALDO TUNES CACERES and
REGINALDO FARIAS SOUZA1
Appeal 2018-003548
Application 14/201,416
Technology Center 1600
Before ERIC B. GRIMES, JAMES A. WORTH and
JOHN E. SCHNEIDER, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
herbicidal composition and method, which have been rejected as indefinite
and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the rejections for obviousness.

1 Appellant identifies the real party in interest as Dow AgroSciences, LLC.
Appeal Br. 3. We use the word Appellant to refer to “applicant” as defined
in 37 C.F.R. § 1.42(a).
Appeal 2018-003548
Application 14/201,416

2
STATEMENT OF THE CASE
“[T]o encourage grasses, low-growing ground cover, and wildflowers
on rights-of-way . . . individual plant control treatments are desirable to
remove tall-growing woody plants.” Spec. ¶ 2. “One such treatment program
consists of the use of basal bark or stem application of a herbicide to control
undesired vegetation.” Id. ¶ 3. “[B]asal application means hand delivering a
herbicide directly to the bark on the lower 12 to 18 inches of the trunk or
stem of an undesirable plant.” Id. ¶ 13.
“[W]hen applying the herbicide by basal or stem application, it is
desirable to dissolve the herbicide in a non-aqueous organic carrier.” Id. ¶ 3.
The Specification states that such carriers include diesel oil and kerosene,
which pose hazards to the environment and the applicator. Id. For example,
“TOGAR TBTM is a Dow AgroSciences LLC herbicide product marketed in
South America for control of broadleaved weeds, semi-shrubs and shrubs in
pastures. It has customarily been recommended that . . . TOGAR TB be
mixed with . . . diesel fuel . . . for basal application.” Id. ¶ 4. “TOGAR TB™
herbicide is composed of: triclopyr-butoxyethyl ester . . . ; picloram-isooctyl
ester . . . ; [and] inert ingredients.” Id. ¶ 9.
The Specification discloses “methods for controlling undesirable
woody vegetation which comprises basal application of an herbicidal
composition comprising triclopyr butoxyethyl ester, picloram-isooctyl ester,
and glycerin as herbicide carrier.” Id. ¶ 5.
Claims 1–9 are on appeal. Claim 1, reproduced below, is
representative:
1. A method for controlling undesirable woody
vegetation which comprises basally applying a herbicidally
Appeal 2018-003548
Application 14/201,416

3
effective amount of an herbicidal composition comprising
triclopyr butoxyethyl ester, picloram-isooctyl ester, and
glycerine.
The claims stand rejected as follows:
Claim 5 under 35 U.S.C. § 112, second paragraph, as indefinite (Final
Action2 3);
Claims 1–5, 8, and 9 under 35 U.S.C. § 103(a) as obvious based on
Keeney ’659,3 Keeney ’976,4 and Dissinger5 (Final Action 4); and
Claims 6 and 7 under 35 U.S.C. § 103 as obvious based on Keeney
’659, Keeney ’976, Dissinger, and Lopes6 (Final Action 8–9).
OPINION
Indefiniteness
The Examiner has rejected claim 5 as indefinite. Final Action 3. In
relevant part, claim 5 recites “[t]he method of claim 1 wherein the herbicidal
composition . . . further comprises 0 to 30% v/v of water.”
The Examiner reasons that, “[w]hile the recitation of ‘the composition
further comprises up to 30 % v/v of water’ is permissible, the recitation of
‘the composition further comprises 0 % v/v of water’ is indefinite because
this phrase ‘further comprise’ positively identified water is present in the
composition. As such, water cannot be present at 0 % v/v.” Id.

2 Office Action mailed February 27, 2017.
3 Keeney et al., US 5,466,659, issued November 14, 1995.
4 Keeney et al., WO 2007/061976 A2, published May 31, 2007.
5 Dissinger et al., WO 2009/056494 A2, published May 7, 2009.
6 P.H. Lopes et al., Caracterização Bioquímica do Caule da Ciganinha –
Memora peregrina, XXVIII Congresso Brasileiro da Ciencia das Plantas
Daninhas (September 3–6, 2012).
Appeal 2018-003548
Application 14/201,416

4
Appellant argues that claim 5 is definite because “one of ordinary skill
in the art would understand that when 0% water is included, the composition
of claim 5 would not further comprise any water. Furthermore, the claim
only makes sense if it includes 0% water when the maximum amount of
glycerine (92%) is used in combination with 8% v/v total of triclopyr and
picloram.” Appeal Br. 8.
We agree with Appellant. “[A] patent is invalid for indefiniteness if its
claims, read in light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable certainty, those skilled in
the art about the scope of the invention.” Nautilus, Inc. v. Biosig
Instruments, Inc., 572 U.S. 898, 901 (2014). Here, as the Examiner has
acknowledged, a skilled artisan would recognize the disputed claim
language as equivalent to “further comprises up to 30% v/v water.” Thus,
claim 5 informs those skilled in the art of the scope of the claim with
reasonable certainty.
The rejection of claim 5 under 35 U.S.C. § 112, second paragraph, is
reversed.
Obviousness: Claims 1–5, 8, and 9
The Examiner has rejected claims 1–5, 8 and 9 as obvious based on
Keeney ’659, Keeney ’976, and Dissinger. Appellant does not argue that
claims separately. Therefore, we select claim 1 as representative of the
rejected claims, and decide this ground of rejection based on claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Keeney ’659 teaches a method and
composition for controlling brush and woody undesirable vegetation. Final
Appeal 2018-003548
Application 14/201,416

5
Action 4. The Examiner finds that the composition comprises triclopyr
butoxyethyl ester, an additional herbicide such as picloram ethylhexyl ester,
and “vegetation oil as carrier.” Id. at 4–5.
The Examiner finds that the composition of Keeney ’659 “does not
include other esters of picloram, i.e., isooctyl ester of picloram as claimed in
claims 1 and 8.” Id. at 5. The Examiner finds, however, that Keeney ’976
“teaches that picloram isooctyl ester is a particular suitable herbicide to
combine with triclopyr butoxyethyl ester for controlling undesirable woody
vegetation.” Id. at 6.
The Examiner finds that Keeney ’659 also does not teach the use of
glycerine in the composition, but Dissinger “teaches the use of glycerol (also
known as glycerin) in agricultural treatments can help replacing the use of
vegetable oil partly or completely with several advantages, such as low
volume of spray solution can be used, low cost and good performance.” Id.
See also Spec. ¶ 8 (“Glycerin (glycerol) is the compound (CH2OH)2CHOH.”).
The Examiner concludes that it would have been obvious to substitute
picloram isooctyl ester for picloram ethylhexyl ester because Keeney ’976
teaches that picloram isooctyl ester is particularly suitable for use with
triclopyr butoxyethyl ester for controlling undesirable woody vegetation. Id.
at 6–7. The Examiner also concludes that it would have been obvious to
modify the composition of Keeney ’659 by incorporating glycerine because
Dissinger teaches the advantages of partially or completely replacing
vegetable oil in agricultural treatments with glycerine. Id. at 7.
We agree with the Examiner that the method of claim 1 would have
been obvious based on the cited references. Keeney ’659 discloses “triclopyr
Appeal 2018-003548
Application 14/201,416

6
butoxyethyl ester (triclopyr BEE) compositions comprising the use of esters
of vegetable oils as carriers . . . for use in the control of undesirable
vegetation. These ester carriers are especially useful in basal or stem
application of triclopyr BEE compositions to control brush and woody
vegetation.” Keeney ’659 1:9–15.
Keeney ’659 teaches that “[o]ther additional ingredients may include,
for example, one or more other herbicides, dyes, and emulsifiers.” Id. at
3:22–24. “Additional herbicidal compounds . . . can include, for example,
the compound picloram EHE.” Id. at 3:28–32. Picloram EHE is picloram
ethylhexyl ester. Id. at 2:49–51.
Keeney ’976 discloses “a method for controlling undesired woody
vegetation which comprises applying to the foliage of the woody vegetation
an herbicidal composition comprising” triclopyr butoxyethyl ester, an
emulsifier, and “either a dearomatized aliphatic solvent, vegetable oil or an
ester of a vegetable oil as a carrier.” Keeney ’976 2:11–16. “Other additional
ingredients may include, for example, one or more other herbicides, dyes,”
etc. Id. at 4:26–27.
Particularly useful herbicidal compounds for use with triclopyr
butoxyethyl ester in foliar brush-control applications are
clopyralid esters and amines, e.g., 3,6-dichloro-2-pyridine
carboxylic acid monoethanolamine salt, as well as mixtures
with 2,4-D butoxyethyl ester, with fluroxypyr 1-methylheptyl
ester, with picloram iso-octyl ester and with aminopyralid salts.
Id. at 5:14–18.
Dissinger discloses “a method of agricultural treatment using glycerol
as adjuvant or coadjuvant in systems for agricultural treatments, namely the
system Glycerol for Agricultural Spraying (GAS) with systems for control
Appeal 2018-003548
Application 14/201,416

7
of weeds with herbicides.” Dissinger 4:40–42. Dissinger discloses that “[t]he
results of the method demonstrated that the glycerol replaced the use of
vegetable oil partly or completely, preferably used with low volumes of
spraying solution, optimizing the applications of this form with low cost and
good performance, reducing the volume of vegetable oil by 1/3 or
completely.” Id. at 20:37–40.
The method of claim 1 would have been obvious to a skilled artisan in
view of these teachings. Both of the Keeney references disclose herbicidal
compositions for controlling unwanted woody vegetation. Both
compositions comprise triclopyr butoxyethyl ester and both references
disclose an ester of a vegetable oil as a carrier. Both references suggest
including a picloram herbicide in the composition: Keeney ’659 suggests
including picloram ethylhexyl ester, and Keeney ’976 states that “mixtures
. . . with picloram iso-octyl ester” are “[p]articularly useful.” Keeney ’976
5:14–18.
Thus, it would have been obvious to modify the composition of
Keeney ’659 to include picloram isooctyl ester, instead of picloram
ethylhexyl ester, because Keeney ’976 states that it is particularly useful in
combination with triclopyr butoxyethyl ester for control of brush. Keeney
’659 discloses application of its composition to the bark and stem of
undesired plants, while Keeney ’976 discloses application to leaves, but it
would have been reasonable to expect picloram isooctyl ester to also be
useful in the composition of Keeney ’659 because (a) the compositions of
both Keeney references comprise triclopyr butoxyethyl ester in a carrier that
is (for Keeney ’659) or can be (for Keeney ’976) an ester of a vegetable oil
Appeal 2018-003548
Application 14/201,416

8
and (b) the Keeney references teach that their similar compositions
effectively deliver the herbicide through either bark (Keeney ’659) or leaves
(Keeney ’976). Given the equivalent effectiveness of the two modes of
delivery of the two similar compositions, a skilled artisan would reasonably
expect that modifying the composition of Keeney ’659 as suggested by
Keeney ’976 would result in a composition that was useful in the basal
delivery disclosed by Keeney ’659.
In addition, Dissinger discloses that replacing, for example, one-third
of the vegetable oil in a herbicidal spray composition with glycerine
“optimiz[ed] the applications of this form with low cost and good
performance.” Dissinger 20:38–39. Thus, it would have been obvious to
modify the composition made obvious by the Keeney references to comprise
glycerine for part of the vegetable oil ester, because Dissinger teaches that
doing so results in low cost and good performance. The composition made
obvious by the cited references, applied by basal application as disclosed by
Keeney ’659, thus meets all of the limitations of claim 1.
Appellant argues that, although Keeney ’976 discloses that picloram
isooctyl ester is particularly useful for use with triclopyr butoxyethyl ester,
“picloram isooctyl ester is merely one of several ‘particularly useful’
additional herbicides listed, and Keeney ’976 provides no guidance for
selecting picloram isooctyl ester over any of the other possible ‘particularly
useful’ additional herbicides described therein.” Appeal Br. 9.
This argument is unpersuasive. The fact that Keeney ’976 discloses
that several compounds are particularly useful in combination with triclopyr
butoxyethyl ester would have made any of those compounds, including
Appeal 2018-003548
Application 14/201,416

9
picloram isooctyl ester, an obvious choice for combining with triclopyr
butoxyethyl ester. Cf. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (“[D]isclos[ing] a multitude of effective combinations
does not render any particular formulation less obvious.”).
Appellant also argues that “Keeney ’659 is directed to methods of
controlling undesired vegetation . . . by applying the herbicidal compositions
to the bark or stem of the vegetation (Abstract). Keeney ’976, on the other
hand, is directed to foliar applications of herbicidal compositions
(Abstract).” Appeal Br. 11. Appellant argues that, because of the different
routes of application, “one of ordinary skill in the art reading Keeney ’976
would not choose to modify the compositions of Keeney ’659 to include
picloram isooctyl ester based on the description of Keeney ’976.” Id.
This argument is also unpersuasive. Keeney ’659 states that “[b]asal
bark or stem applications of herbicidal compositions requires the herbicide
to pass through the bark.” Keeney ’659 1:46–47. Keeney ’659 states that,
conventionally, herbicides for basal application were dissolved in carriers
such as diesel oil or kerosene, but such carriers pose risks to the environment
and the applicator. Id. at 1:49–58. Keeney ’659 discloses that triclopyr
butoxyethyl ester (triclopyr BEE) compositions using esters of vegetable oil
as a carrier are suitable for basal application. Id. at 2:10–14. Keeney ’659
discloses that picloram ethylhexyl ester can be delivered in the composition
along with triclopyr BEE. Id. at 3:29–33.
Similarly, Keeney ’976 discloses that, “[i]n order to have [a] herbicide
penetrate into the leaves of woody plant, it is desirable to dissolve the
herbicide in a non-aqueous organic carrier,” such as diesel oil or kerosene.
Appeal 2018-003548
Application 14/201,416

10
Keeney ’976 2:3–6. “However, these carriers present risks not only to the
surrounding environment, but also to the applicator.” Id. at 2:7–8. Keeney
’976 discloses triclopyr butoxyethyl ester compositions that include an
emulsifier and a carrier that is either a dearomatized aliphatic solvent, a
vegetable oil or an ester of a vegetable oil, and discloses that the
compositions are suitable for foliar application. Id. at 2:10–14. Keeney ’976
discloses that other herbicides, including picloram isooctyl ester, can be
delivered in the composition along with triclopyr butoxyethyl ester. Id. at
5:3–18.
Thus, the Keeney references show that a composition comprising
triclopyr butoxyethyl ester and a vegetable oil ester carrier can be delivered
by either basal or foliar application. The Keeney references also suggest
delivering a picloram ester (ethylhexyl or isooctyl) along with the triclopyr
butoxyethyl ester. Because the references disclose that triclopyr butoxyethyl
ester can be delivered by either route, and can be delivered with a picloram
ester, it would be reasonable to expect that either of the specific picloram
esters would also be effectively delivered in a vegetable oil ester carrier via
either basal or foliar application. Thus, a skilled artisan would have had a
reason to combine the teachings of the references in the manner recited in
claim 1, with a reasonable expectation of success.
Finally, Appellant argues that “Dissinger fails to overcome the
deficiencies of Keeney ’659 and Keeney ’976 with regard to the
combination of triclopyr-butoxyethyl ester and picloram isooctyl ester.
Furthermore, although Dissinger discloses a laundry list of herbicides for
Appeal 2018-003548
Application 14/201,416

11
which its teachings are applicable, triclopyr and picloram are not listed.”
Appeal Br. 13.
These arguments are also unpersuasive. First, we conclude that the
Keeney references would have made obvious the combination of triclopyr
butoxyethyl ester and picloram isooctyl ester, and thus there is no deficiency
in this respect for Dissinger to overcome. Second, Dissinger does in fact list
picloram as a suitable herbicide (Dissinger 13:6–7), along with herbicides
from any of a variety of chemical classes (id. at 12:13–24). Although
Dissinger does not expressly suggest triclopyr, Appellant has provided no
evidence or sound reasoning to show that a skilled artisan would have
considered Dissinger’s teachings to be inapplicable to triclopyr butoxyethyl
ester.
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) based on Keeney ’659, Keeney ’976, and Dissinger. Claims 2–5,
8, and 9 fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
Obviousness: Claims 6 and 7
The Examiner has rejected claims 6 and 7 as obvious based on
Keeney ’659, Keeney ’976, Dissinger, and Lopes. The Examiner relies on
Keeney ’659, Keeney ’976, and Dissinger for the same teachings discussed
above, and concludes that it would have been obvious based on Lopes to
apply the composition to control Memora peregrina. Final Action 9–10.
We agree with, and adopt, the Examiner’s fact-finding and
conclusion. Appellant argues only that “Lopes fails to overcome the
deficiencies of Keeney ’659, Keeney ’976, and Dissinger.” Appeal Br. 13.
That argument is unpersuasive for the reasons discussed above.
Appeal 2018-003548
Application 14/201,416

12
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5 112 Indefiniteness 5
1–5, 8, 9 103(a) Keeney ’659, Keeney
’976, Dissinger
1–5, 8, 9
6, 7 103(a) Keeney ’659, Keeney
’976, Dissinger, Lopes
6, 7
Overall
Outcome
1–9

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. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED