BASF SE

Patent Trials and Appeals Board

Jan 7, 2021

2020001336 (P.T.A.B. Jan. 7, 2021)

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.
15/119,883 08/18/2016 Evgueni KLIMOV 32471/R75009 2642
4743 7590 01/07/2021
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
BASQUILL, SEAN M
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
01/07/2021 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EVGUENI KLIMOV, KATHARINE KLAMCZYNSKI, and
MURAT MERTOGLU

Appeal 2020-001336
Application 15/119,883
Technology Center 1600
____________

Before ULRIKE W. JENKS, AMEE A. SHAH, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims directed to an aqueous co-formulation
of metalaxyl as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as BASF SE.
Appeal Br. 3. Herein we refer to Appellant’s Appeal Brief filed August 19,
2019 (“Br.”), Examiner’s Answer of October 8, 2019 (“Ans.”), and the Final
Office Action of February 19, 2019 (“Final Act.”).
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STATEMENT OF THE CASE
Claims 18, 19, 23, 24, 26, 27, 29–32, 35, and 36 are on appeal,2 and
can be found in the Claims Appendix of the Appeal Brief. Claim 18 is
representative of the claims on appeal, and reads as follows:
18. An aqueous co-formulation of metalaxyl comprising:
i. 0.2 to 5% by weight, based on the total weight of the
formulation, of metalaxyl;
ii. 0.2 to 15% by weight, based on the total weight of the
formulation, of at least one organic pesticide compound
PC1, which has a solubility in water of at most 1g/l at
20°C and a melting point in the range from 40 to 100°C;
iii. an aqueous phase containing at least 50% by weight,
based on the total weight of the formulation, of water and
0.5 to 20% by weight, based on the total weight of the
formulation of at least one surfactant comprising 0.2 to
10% by weight, based on the total weight of the
formulation, of at least one salt of an oligomer or
polymer having a plurality of arylsulfonyl groups;
wherein the at least one organic pesticide compound PC1
is present in the form of particles suspended in the
aqueous phase and where at least 95 % of the metalaxyl
present in the aqueous formulation is present dissolved in
the aqueous phase; and
iv. an alcohol having at least one OH group in a
concentration ranging from 1 to 30% by weight, based on
the total weight of the formulation.
Appeal Br. 29 (Claims Appendix) (formatting added).

2 In response to Examiner’s Election/Restriction requirement of July 14,
2017, Appellant elected to prosecute group 1 with a further species election
of pyraclostrobin as a PC1 pesticide, sodium salt of naphthalene
formaldehyde condensate as a surfactant, and fluxapyroxad as a PC2
pesticide. See Response filed Sept. 14, 2017.
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REJECTION(S)
The following grounds of rejection are before us for review:
I. claims 18, 19, 23, 24, 26, 27, 29–32, 35, and 36 under
35 U.S.C. § 103 over Ypema,3 as evidenced by Metalaxyl,4 in
view of Finch;5 and
II. claims 18, 19, 23, 24, 26, 27, 29–32, 35, and 36 under
35 U.S.C. § 103 over Ypema, Metalaxyl, Finch and further in
view of Voeste.6

I. Obviousness over Ypema, Metalaxyl, and Finch
Does the preponderance of evidence of record support Examiner’s
conclusion that the combination of references renders the claims obvious?
A. Findings of Fact (FF)
We agree with and adopt Examiner’s findings of fact and reasoning
regarding the scope and content of the prior art as set out in the Final Office
Action and Answer. For emphasis only we highlight the following:
FF1. Ypema teaches synergistic fungicidal compositions containing a
mixture of compounds I, II, and III. The ratio between the compounds
includes, for example, the mixtures I:II:III such as 100:1:1 to 1:100:1
to 1:1:100. Ypema 7:4–11. The formulations comprise from 0.01 to

3 Hendrik Ypema et al., WO 2007/054469 A2, published May 18, 2007
(“Ypema”).
4 Agrochemical General Information Sheet – Metalaxyl, Technical Bulletin
#67, March 2013 (“Metalaxyl”).
5 Charles W. Finch, WO 2011/006896 A2, published Jan. 20, 2011
(“Finch”).
6 Dirk Voeste et al., US 2012/0021905 A1, published Jan. 26, 2012
(“Voeste”).
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95% by weight, preferably from 0.1 to 90% by weight, of the active
compounds. Id. at 9:10–11.
Compound I, reproduced below, is triticonazole:

The figure shows the chemical formula for triticonazole. Id. at 3:5–10.
Compound II, reproduced below, is pyraclostrobin:

The figure shows the chemical formula for pyraclostrobin.
Id. at 3:10–15.
Compound III, reproduced below, is metalaxyl-M:

The figure shows the chemical formula for metalaxyl-M.
Id. at 3:20–25.
FF2. Ypema teaches that the formulations are prepared with solvents
and auxiliaries including water and alcohols (for example
methanol, butanol, pentanol, benzyl alcohol). Id. at 8:4–8.
FF3. Ypema teaches the use of surfactants such as condensates of
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sulfonated naphthalene and naphthalene derivatives with
formaldehyde. Id. at 8:19–24.
FF4. Ypema exemplifies seed treatment of bent grass with a product
containing “Triticonazol and Pyracl[o]strobin were used as 200g/l FS-
formulation. Metalaxyl als a 17.7 % LS-formulation.” Id. at 12:36–38.
“The data show that the negative effect of the mixture of TTZ and
Pyraclostrobin can be over compensated by Metalaxyl.” Id. at 13:4–5.
FF5. “Metalaxyl is a systemic fungicide with protective and curative
properties and is absorbed through the leaves, stems and roots. It acts
by suppressing sporangial formation, mycelia growth, and the
establishment of new infections.” Metalaxyl 1. “Metalaxyl is water
soluble.” Id.
FF6. Finch teaches the production of stable aqueous suspensions of
pyraclostrobin. Finch 7:6–13. Finch teaches that pyraclostrobin has a
melting point of 55–64°C depending on the polymorphic structure and
a water solubility of 1.9 mg/L. Id. at 7 (table); see 3:6–7
(“Pyraclostrobin is practically insoluble in water (solubility < 2 mg/l
at 20°C)”).
FF7. Finch teaches the inclusion of anti-freeze agents that will not exceed
20% by weight with the preferred range being from 1 to 5% by
weight. Id. at 25:1–4. Suitable antifreeze agents include “ethylene
glycol, 1,2-propane diol, 1,3-propane diol, glycerol and 1,4-butane
diol.” Id. at 24:34–37.
FF8. Finch teaches that the aqueous emulsions contain at least one
surfactant in amounts from 0.1 to 20 % by weight. Id. at 10:15–16.
Suitable polymeric anionic surfactants include condensates of
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arylsulfonic acid, such as naphthalenesulfonic acid or phenolsulfonic
acid, with formaldehyde and optionally with urea. Id. at 11:24–26.
FF9. Finch teaches that pyraclostrobin can be co-formulated with other
fungicides such as for example: penflufen, sedaxane, penthiopyrad,
fluxapyroxad and N-(4'-trifluoromethylthiobiphenyl-2-yl)-1-methyl-
3-d ifluoromethyl-1 H-pyrazole-4-carboxamid. Id. at 28:36–29:2.
B. Analysis
Examiner finds that Ypema teaches synergistic pesticidal
compositions containing triticonazole, pyraclostrobin, and metalaxyl. See
Final Act. 4–6; Ans. 3–4; FF1, FF4. Examiner finds that Ypema teaches
mixing the formulations with water, alcohols, and surfactants. See Final
Act. 4; Ans. 4; FF2, FF3. Examiner finds that one of ordinary skill in the art
would understand metalaxyl to be water soluble, and as a result would
expect metalaxyl to be present in the aqueous phase. See Final Act. 4;
Ans. 4; FF5. Examiner relies on Finch to establish that pyraclostrobin is
known to one of ordinary skill in the art to be insoluble in water, and that
pyraclostrobin is often formulated as a particulate suspension in conjunction
with surfactants and alcohols. See Final Act. 4; Ans. 4; FF6, FF8, FF9.
Based on the combination of Ypema, Metalaxyl, and Finch, Examiner
concludes that
it would have been prima facie obvious to have selected various
combinations of various disclosed ingredients including
metalaxyl, pyraclostrobin, and triticonazole in an
aqueous/aliphatic alcohol solvent employing as a surfactant the
salts of condensates of naphthalene sulfonic acid and
formaldehyde in concentrations overlapping the instantly
claimed concentrations from within a prior art disclosure, to
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arrive at compositions “yielding no more than one would expect
from such an arrangement.”
Final Act. 6.
Appellant contends: (1) that the Office has not provided evidence that
metalaxyl was known to be water soluble (Appeal Br. 14); (2) that Ypema
does not teach a co-formulation of metalaxyl with a second pesticide (id.);
(3) that the combination lacks motivation to prepare a formulation with the
surfactant element (id. at 17); (4) that the combination lacks motivation to
prepare a formulation with the alcohol element (id.); (5) that Examiner’s
action lacks an articulated rationale for the skilled artisan to combine an
aqueous solution of metalaxyl with an aqueous suspension of the pesticide
PC1 (id. at 15, id. at 17 (missing element that “metalaxyl is essentially, i.e.
to an extent of at least 95 %, dissolved in the aqueous phase”), id. at 21
(“mixing metalaxyl with water will normally not result in complete
dissolution of metalaxyl and lead to a suspension that will have to be further
treated to dissolve metalaxyl”)); and (6) that “it is unpredictable what
components should be combined in which concentrations and in which
physical form to generate a stable formulation” (id. at 24). We have
reviewed Appellant’s contentions in light of the cited art and find that
Examiner has the better position. We address Appellant’s contentions below.
1. Water solubility of metalaxyl
Appellant contends that the Office failed to provide evidentiary
support for the position that metalaxyl is soluble in water. Br. 14. Appellant
contends that because metalaxyl is only sparingly soluble in water,
specifically, that it has a solubility of 8.4 g/L, one of skill in the art would
not consider it soluble in water. Id. (citing
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https://pubchem.ncbi.nlm.nih.gov/compound/metalaxyl#section=Boiling-
Point).7
We are not persuaded by Appellant’s contention that the Office failed
to provide any evidentiary support for the solubility of metalaxyl. We agree
with Examiner that this position ignores the citation of Metalaxyl (FF5)
which was cited for the sole purpose “to establish the water solubility of
metalaxyl and the concomitant expectation that it would therefore dissolve
in an aqueous carrier.” Ans. 9. Appellant directs us to another source with
respect to the solubility of metalaxyl, and that source suggests that metalaxyl
has a solubility of 8.4 g/L in water. We note that the same reference cited by
Appellant also suggests that the solubility of metalaxyl in alcohol is much
greater than the 8.4 g/L, and note that the claims require from 1–30%
alcohol.
A solubility of 8.4 g/L equates to a 0.84% by weight solution. The
claims recite a range of 0.2 to 5% by weight of metalaxyl in the aqueous
phase. Ypema teaches that the active compound can be in a range from 0.1
to 90% by weight. FF1. Here, the solubility at 0.84% overlaps with the
percent range of the active compound contemplated in Ypema. Therefore,
we determine that the art cited by Examiner reasonably supports the position
that metalaxyl is soluble in the aqueous phase at least in the lower range
cited in Ypema. Accordingly, we are not persuaded by Appellant’s
contention that there is no evidentiary support for the position that metalaxyl
is soluble in water.

7 We note that the same reference shows that metalaxyl has a solubility “[i]n
ethanol 400, acetone 450, toluene 340, n-hexane 11, n-octanol 68 (all g/l at
25 °C).”
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2. Co-formulation with metalaxyl
We are not persuaded by Appellant’s contention that Ypema does not
disclose a co-formulation8 of metalaxyl with a second pesticide. Br. 14.
The claims are directed to a formulation containing metalaxyl, an
organic pesticide compound PC1, water, surfactant, and alcohol. The claims
further describe that the pesticide compound PC1 is present in the form of
suspended particles and that metalaxyl is at least 95% dissolved. We agree
with Examiner’s position that the “comprising” limitation in the preamble of
the claim allows for the inclusion of additional actives. Ans. 12 (“nothing of
the claims discounts the incorporation of additional pesticidal elements.”).
This interpretation is further supported by dependent claims 26 and 27 that
recite the inclusion of additional organic pesticides. See Br. 20 (Claims
Appendix).
Ypema teaches the production of synergistic mixtures containing
triticonazole, pyraclostrobin, and metalaxyl-M. FF1, FF4. Based on these
teachings in Ypema we are not persuaded by Appellant’s contention that the
art does not disclose a co-formulation of the recited pesticides in the claim.
The issue is whether the pyraclostrobin and metalaxyl components,
suggested for incorporation together by Ypema, are present in solution and
particulate form when combined. Examiner explains that metalaxyl is
considered soluble in water, and therefore would be considered to be at least
95% dissolved in an aqueous solution. See Final Act. 4 (“Because metalaxyl

8 The Specification does not provide a separate definition for co-formulation,
therefore, we interpret co-formulation to be the incorporation of more than
one active compound into a single composition. We also note that the claims
are directed to a product and not a method of making the product.
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is understood to be water soluble . . . the skilled artisan would understand
that nearly, if not all, of the metalaxyl incorporated in such compositions
would be present in the aqueous phase.”). Even if we accept that metalaxyl
is only soluble in water at a concentration of 0.84% or below, Ypema’s
teaching that the active compound can have a concentration range from 0.1
to 90% would indicate that there are overlapping ranges where metalaxyl has
a solubility of 95% or greater. “Even a slight overlap in range establishes a
prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003).
Ypema teaches incorporating pyraclostrobin into the synergistic
mixture but does not discuss the form of pyraclostrobin in the composition.
FF1. Examiner relies on Finch for teaching that pyraclostrobin is not soluble
in water, and provides a method for preparing stable aqueous suspensions of
pyraclostrobin. Final Act. 4; FF6. We agree with Examiner that based on the
teachings in Ypema and Finch,
it would have been prima facie obvious to have selected various
combinations of various disclosed ingredients including
metalaxyl, pyraclostrobin, and triticonazole in an
aqueous/aliphatic alcohol solvent employing as a surfactant the
salts of condensates of naphthalene sulfonic acid and
formaldehyde in concentrations overlapping the instantly
claimed concentrations from within a prior art disclosure, to
arrive at compositions “yielding no more than one would expect
from such an arrangement.”
Final Act. 6. It is proper to “take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
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3. Lacks surfactant
We are not persuaded by Appellant’s contention that the art
combination as proposed by Examiner is missing a surfactant element or a
reason to include a surfactant. See Br. 17. Ypema and Finch both specifically
teach inclusion of a surfactant in their formulations, including the species
selected by Appellant. FF3; FF8. That they may disclose a list of surfactants
does not establish a lack of motivation to select the species under
examination. “Reading a list and selecting a known compound to meet
known requirements is no more ingenious than selecting the last piece to put
into the last opening in a jig-saw puzzle. It is not invention.” Sinclair &
Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945); see also
Merck & Co. Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989). We note that “picking and choosing may be entirely proper in
the making of a 103, obviousness rejection, where the applicant must be
afforded an opportunity to rebut with objective evidence any inference of
obviousness.” In re Arkley, 455 F.2d 586, 587–88 (CCPA 1972). Just
because Appellant now explains that the inclusion of salts of oligomers or
polymers having a plurality of arylsulfonyl groups assist in solubilizing
metalaxyl in the aqueous phase does not make the formulation claimed
patent eligible. See Spec. 2:35–3:2. “The general principle that a newly-
discovered property of the prior art cannot support a patent on that same art
is not avoided if the patentee explicitly claims that property.” Abbott Labs. v.
Baxter Pharm. Products, Inc., 471 F.3d 1363, 1368 (Fed. Cir. 2006). “[T]he
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.” Atlas Powder Co. v.
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IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). Ypema already suggests
the inclusion of surfactants including naphthalene derivatives. FF3; see also
FF8. Here, the solubilization of metalaxyl is a benefit that is a direct result
from carrying out what the prior art already suggests – to incorporate
naphthalene derivatives into the pesticide formulations. See FF3, FF8.
4. Lacks alcohol
We are not persuaded by Appellant’s contention that the art
combination as proposed by Examiner is missing the alcohol element or a
reason to include the alcohol into the formulation. See Br. 17.
Just because Ypema and Finch use various solvents and alcohols does
not detract from the specific teaching that 1,2-propanediol may be
incorporated into the composition. FF2; FF7. Picking and choosing may be
entirely appropriate in an obviousness rejection. Arkley, 455 F2d at 587–88.
Furthermore, Finch teaches the inclusion of antifreeze components into
pesticide composition. FF7. Here, Examiner reasons that based on the
teachings in the references the skilled artisan would have “incorporat[ed]
1,2-propanediol into the compositions of Ypema [in order to] provide such
aqueous solutions protection against freezing.” Final Act. 6; Ans. 13–14
(“The optional nature of the inclusion of such compositions is irrelevant;
Finch clearly teaches the use of 1,2-propanediol as an antifreeze agent,
which advantageously prevents aqueous agricultural pesticidal compositions
from freezing”), 14–15 (“Finch clearly establishes that the inclusion of 1,2-
propanediol as an antifreeze agent would preserve the flowability, and hence
stabilize the aqueous nature of the composition, of aqueous agricultural
pesticidal compositions including them.”). We find that Examiner’s
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articulated rationale for including alcohol in the formulation is sufficiently
supported by evidence in the record.
5. Lacks articulated rationale for combining metalaxyl with other
pesticide
We are not persuaded by Appellant’s contention that the art
combination as proposed by Examiner lacks an articulated rationale for
combining metalaxyl with other pesticides. Br. 15 (“There is nothing in
Ypema that would have reasonably suggested the skilled artisan to combine
an aqueous solution of metalaxyl with an aqueous suspension of the
pesticide PC1 or any other process which would have resulted in a co-
formulation.”).
Ypema teaches creating a synergistic mixture containing triticonazole,
pyraclostrobin, and metalaxyl. FF1, FF4. Thus, Ypema expressly provides
motivation for combining the three pesticides into a single formulation.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
6. Unpredictability
Appellant contends that “it is unpredictable what components should
be combined in which concentrations and in which physical form to generate
a stable formulation.” Br. 24. Specifically, arguing that “mixing metalaxyl
with water will normally not result in complete dissolution of metalaxyl and
lead to a suspension that will have to be further treated to dissolve
metalaxyl.” Id. at 21. And “Finch does not reasonably suggest that providing
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a pesticide (let alone metalaxyl) in dissolved form may increase formulation
stability.” Id. at 22.
We agree with Examiner that Appellant’s “arguments [are]
unsupported by objective evidence, which are therefore properly considered
per se unpersuasive.” Ans. 15–16 (citing In re Schulze, 346 F.2d 600, 602
(CCPA 1965); In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997) (indicating that
the arguments of counsel cannot take the place of evidence in the record)).
Furthermore, arguing limitations that are directed to the method of making
the composition and the stability of the resulting composition are not
persuasive because they are directed to limitations that are not in the claims.
As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998), “the name of the game is the claim.” It is well established
that limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
C. Conclusion
The preponderance of evidence of record supports Examiner’s
conclusion of obviousness.
Claims 19, 23, 24, 26, 27, 29–32, 35, and 36 were not argued
separately and therefore fall with claim 18. 37 C.F.R. § 41.37(c)(1)(iv)
(2018). For any additional arguments made by Appellant but not addressed
in this opinion, we incorporate and adopt Examiner’s findings and reasoning
set out in the Final Office Action and Answer.

II. Obviousness over Ypema, Metalaxyl, Finch, and Voeste
Appellant does not provide separate arguments with respect to the
combination of Ypema, Metalaxyl, Finch, and Voeste. See Br. 27 (“Voeste
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does not provide any reasoning additional to those provided by Ypema,
Metalaxyl and Finch for preparing the claimed formulations.”). Having
found no error with Examiner’s combination of Ypema, Metalaxyl, and
Finch (see above § I), we affirm this rejection for the reason discussed above
(see above § I) and those set out by Examiner in the Final Office Action and
Answer, which we incorporate herein and adopt as our own.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis  Affirmed Reversed
18, 19,
23, 24,
26, 27,
29–32,
35, 36
103 Ypema, Metalaxyl, Finch   18, 19,
23, 24,
26, 27,
29–32,
35, 36

18, 19,
23, 24,
26, 27,
29–32,
35, 36
103 Ypema, Metalaxyl, Finch,
Voeste
18, 19,
23, 24,
26, 27,
29–32,
35, 36

Overall
Outcome
18, 19,
23, 24,
26, 27,
29–32,
35, 36

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).

AFFIRMED