Neivaldo Tunes. Caceres et al.Download PDFPatent Trials and Appeals BoardOct 30, 201914201416 - (D) (P.T.A.B. Oct. 30, 2019) Copy Citation 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 Copy with citationCopy as parenthetical citation