Allen, Dave R. et al.

Patent Trials and Appeals Board

Dec 17, 2019

15323188 - (D) (P.T.A.B. Dec. 17, 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.
15/323,188 12/30/2016 Dave R. Allen 102-278US 1083
74275 7590 12/17/2019
DILWORTH IP, LLC
2 CORPORATE DRIVE, SUITE 206
TRUMBULL, CT 06611
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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):
docketing@dilworthip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVE R. ALLEN and ANDREW D. MALEC1
Appeal 2019-004715
Application 15/323,188
Technology Center 1600
Before ERIC B. GRIMES, RACHEL H. TOWNSEND, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
agricultural composition, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
“Ethoxylated fatty amine surfactants are well-known adjuvants for
agricultural applications.” Spec. 1:8–9. “Many of the commercial materials

1 Appellant identifies the real party in interest as Stepan Company. Appeal
Br. 1. We use the word Appellant to refer to “applicant” as defined in 37
C.F.R. § 1.42(a).
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are ethoxylated tallow amines, . . . and their use in agricultural compositions,
particularly glyphosate formulations, is well documented.” Id. at 1:12–16.
“Tallowamine ethoxylates are . . . moderately toxic in aquatic
invertebrate acute toxicity tests, so less-toxic alternatives are needed.” Id. at
1:23–24. The Specification discloses “agricultural compositions
compris[ing] a monounsaturated C10–C12 fatty amine ethoxylate. Preferably,
the fatty amine ethoxylate is a monounsaturated C11 fatty amine ethoxylate.”
Id. at 7:19–21. The Specification states that “[u]nexpectedly, the
monounsaturated C10–C12 fatty amine ethoxylates have reduced aquatic
toxicity when compared with their saturated analogs.” Id. at 2:22–24.
Claims 1, 3–5, 7, 9–13, and 15–20 are on appeal. Claim 1, reproduced
below, is illustrative:
1. An agricultural composition having reduced aquatic
toxicity, comprising:
(a) an agricultural active;
(b) a monounsaturated C11 fatty amine ethoxylate,
wherein the fatty amine ethoxylate has the structure:

wherein R is linear or branched C11H21, each of m and n
represents an average number of oxyethylene units, each of m
and n is at least 1, and m+n has a value from 2 to 7;
(c) optionally, water;
(d) optionally, an auxiliary surfactant; and
(e) optionally, a solvent;
and wherein the fatty amine ethoxylate has at most slight
aquatic toxicity as measured in the Acute Mobilization Test as
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reflected by a 48-hour EC50 value with Daphnia magna greater
than or equal to 10 mg/L.

Claims 17 and 19 are also independent and, like claim 1, are directed
to agricultural compositions comprising a monounsaturated C11 fatty amine
ethoxylate having the same maximum toxicity recited in claim 1.
The claims stand rejected as follows:
Claims 1, 3–5, 7, 9–11, and 15–18 under 35 U.S.C. § 103 as obvious
based on Forbes2 (Ans. 3) and
Claims 12, 13, 19, and 20 under 35 U.S.C. § 103 as obvious based on
Forbes and Kisenwether3 (Ans. 6).
OPINION
Obviousness
All of the claims stand rejected as obvious based on Forbes, or Forbes
and Kisenwether. The same issue is dispositive for both rejections.
The Examiner finds that Forbes teaches compositions comprising
glyphosate and C8–C22 fatty amine ethoxylates, but does not specifically
teach a C11 fatty amine ethoxylate. Ans. 4–6.4 The Examiner concludes that
it would have been obvious to select a C11 fatty amine ethoxylate surfactant
because it is encompassed by the surfactants used by Forbes, and “[a] prior
art reference that discloses a range encompassing a somewhat narrower

2 Forbes et al., US 5,668,085, issued Sept. 16, 1997.
3 Kisenwether et al., US 2012/0040833 A1, published Feb. 16, 2012.
4 The rejection refers to “C10–C12 fatty amine ethoxylates” but the
Examiner states that “any reference made to C10–C12 amine ethoxylate . . .
was taken to refer the teaching of the C11 amine ethoxylate.” Ans. 10.
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claimed range is sufficient to establish a prima facie case of obviousness.”
Id. at 6, citing In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
The Examiner cites Kisenwether as evidence that it would have been
obvious to modify Forbes’ composition by including auxiliary surfactants or
propylene glycol, or by diluting Forbes’ composition to comprise specific
percentages of a glyphosate salt and water. Ans. 8–9.
Appellant argues that neither Forbes nor the combination of Forbes
and Kisenwether supports a prima facie case of obviousness. Appeal Br. 4–
7, 10. Appellant also argues that the Specification shows unexpected results
in the “experimental demonstration that monounsaturated C11 amine
ethoxylates have reduced aquatic toxicity compared with a saturated C11
analog.” Id. at 8. Appellant reasons that “[b]ecause the prior art did not
evaluate aquatic toxicity at all, the skilled person expects, at best, equivalent
performance from the claimed amine ethoxylates compared with any of
compositions fairly taught or suggested by Forbes.” Id. Thus, Appellant
argues, the “demonstration of a substantial reduction in aquatic toxicity from
the claimed compositions when compared with their closest structural analog
is therefore valuable and unexpected based on anything a skilled person
could reasonably surmise from Forbes or other related art.” Id.
We agree with Appellant that the rejection is not supported by a
preponderance of the evidence of record. As the Examiner finds, Forbes
discloses a genus of alkyl or alkenyl, C8 to C22, fatty amine ethoxylates that
includes the specific monounsaturated C11 fatty amine ethoxylates recited in
the claims. However, the Examiner has not pointed to any disclosure in
Forbes, or provided other evidence or scientific reasoning, that would have
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led a skilled artisan to choose the specific monounsaturated C11 fatty acid
ethoxylate of the claims from within the much larger genus disclosed by
Forbes. Thus, the evidence supports only a weak prima facie case of
obviousness.
Balanced against the evidence of obviousness is the Specification’s
data showing that a monounsaturated C11 fatty acid ethoxylate has reduced
toxicity compared to its saturated counterpart. The Specification’s Example
3 describes combining potassium glyphosate “with a monounsaturated C11
fatty amine 5EO ethoxylate.” Spec. 14:7–9. This fatty amine ethoxylate
corresponds to the compound recited in claim 1 where m+n is 5.
The Specification describes testing of the “[a]quatic toxicity of the
saturated C11 fatty amine 5EO ethoxylate and the unsaturated C11 fatty amine
5EO ethoxylate on the Cladoceran, Daphnia magna.” Id. at 14:18–19. The
results showed that the saturated C11 amine ethoxylate was “moderately
toxic,” with an EC50 of 3.3 mg/L, while the unsaturated C11 amine ethoxylate
was “slightly toxic,” with an EC50 of 20 mg/L. Id. at 14:26–27.
The Specification states that “[t]he results indicate that the
monounsaturated amine ethoxylate is more than one order of magnitude (i.e.,
more than 10x) less toxic toward Daphnia magna in the standard test.” Id. at
14:29–31. The Specification also states that “[u]nexpectedly, the
monounsaturated C10–C12 fatty amine ethoxylates have reduced aquatic
toxicity when compared with their saturated analogs.” Id. at 2:22–24; see
also id. at 12:21–24 (“Surprisingly, . . . formulations comprising the
monounsaturated C10–C12 fatty amine ethoxylates have a reduced level of
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aquatic toxicity when compared with analogous formulations that
incorporate saturated fatty amine ethoxylates.”).
Thus, Appellant has provided evidence that the monounsaturated C11
amine ethoxylate is ten-fold less toxic than its unsaturated counterpart in a
standard test, and the Specification states that these results are unexpected
and surprising. “[W]hen an applicant demonstrates substantially improved
results . . . and states that the results were unexpected, this should suffice to
establish unexpected results in the absence of evidence to the contrary.” In
re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995).
In response to Appellant’s evidence, the Examiner does not provide
evidence showing that a monounsaturated fatty amine ethoxylate would be
expected to be less toxic than the corresponding saturated fatty amine
ethoxylate. The Examiner reasons that “the discovery of a previously
unappreciated property of a prior art composition, or of a scientific
explanation for the prior art’s functioning, does not render the old
composition patentably new to the discoverer.” Ans. 11, citing Atlas Powder
Co. v. IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). The rejections on
appeal, however, are based on obviousness, not anticipation, so this is not a
case of discovering a new property of an old composition. The holding of
Atlas Powder does not apply.
The Examiner also faults Appellant’s evidence on the basis that
“Table 1 fails to show unexpected results commensurate in scope with the
claimed invention. The data only compares unsaturated [sic, saturated] and
unsaturated C11 fatty amines (2EO and 5EO) with 540 g/L glyphosate
against Roundup Powermax.” Ans. 12. The data shown in the
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Specification’s Table 1, however, does not pertain to aquatic toxicity, as
recited in the claims, but to the herbicidal effectiveness of glyphosate
formulations comprising either monounsaturated or saturated fatty amine
ethoxylates, compared to the commercial product Roundup® Powermax®.
Spec. 15:7 to 16:24.
Thus, the Examiner has not addressed the evidence of reduced toxicity
that Appellant relies on as evidence of unexpected results. And, because the
claims are limited to a monounsaturated C11 fatty amine ethoxylate, and the
Specification provides evidence of unexpected results for a monounsaturated
C11 fatty amine ethoxylate, the Examiner has not shown that the evidence of
reduced toxicity is not commensurate in scope with the claims.
In summary, we conclude that a preponderance of the evidence of
record fails to show that the claimed compositions would have been obvious
based on Forbes, or on Forbes and Kisenwether. We therefore reverse the
rejections on appeal.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5, 7, 9–11,
15–18
103 Forbes 1, 3–5, 7, 9–
11, 15–18
12, 13, 19, 20 103 Forbes, Kisenwether 12, 13, 19,
20
Overall
Outcome
1, 3–5, 7, 9–
13, 15–20
REVERSED