Allen, Dave R. et al.Download PDFPatent Trials and Appeals BoardDec 17, 201915323188 - (D) (P.T.A.B. Dec. 17, 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. 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). Appeal 2019-004715 Application 15/323,188 2 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 Appeal 2019-004715 Application 15/323,188 3 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. Appeal 2019-004715 Application 15/323,188 4 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 Appeal 2019-004715 Application 15/323,188 5 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 Appeal 2019-004715 Application 15/323,188 6 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 Appeal 2019-004715 Application 15/323,188 7 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 Copy with citationCopy as parenthetical citation