Ex Parte Anderson et alDownload PDFPatent Trial and Appeal BoardDec 9, 201612764151 (P.T.A.B. Dec. 9, 2016) 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. 12/764,151 04/21/2010 Thomas E. Anderson 60704-USA 6846 48219 7590 12/13/2016 PATFNT DFPT EXAMINER FMC CORPORATION ORWIG, KEVIN S 2929 WALNUT STREET PHILADELPHIA, PA 19104 ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 12/13/2016 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): patents@fmc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS E. ANDERSON, WILLIAM T. SOMMER, JAMES F. WALTER, and MARK WUSATY1 Appeal 2015-001184 Application 12/764,151 Technology Center 1600 Before ULRIKE W. JENKS, JOHN G. NEW, and TIMOTHY G. MAJORS, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims directed to a method of controlling ant populations with granules containing a mixture of zeta-cypermethrin and bifenthrin. The Examiner rejects the claims as obvious and on the ground of non-statutory obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is FMC Corporation. (Br. 2.) Appeal 2015-001184 Application 12/764,151 STATEMENT OF THE CASE Claims 1, 2, and 4—9 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. Claim 1 is representative of the claims on appeal, and reads as follows: 1. A method for controlling ants comprising applying an insecticidally effective amount of a composition comprising: 1) a solid granular support and 2) an active ingredient consisting of a mixture of zeta- cypermethrin and bifenthrin wherein said zeto-cypermethrin and bifenthrin are present in a ratio of from 1:20 and 10:1 to a locus where quick knockdown of the ants is needed or expected to be needed. (Br. 16, Claims Appendix) Appellants seek review of the following rejections: I. claims 1, 2, and 4—6 under 35 U.S.C. § 103(a) as unpatentable over Herrick2 in view of Steward3 (Br. 7); II. claim 2 under 35 U.S.C. § 103(a) as unpatentable over Herrick in view of Steward, and further in view of Birthisel4 (id. at 9); III. claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Herrick in view of Steward, and further in view of Mehra5 (id. at 10); 2 Herrick et al., WO 2007/076028 A2, published July 5, 2007 (“Herrick”). 3 Steward et al., US 2009/0118367 Al, published May 7, 2009 (“Steward”). 4 Birthisel et al., US 2007/0104749 Al, published May 10, 2007 (“Birthisel”). 5 Mehra, EP 0295442 A2, published Dec. 21, 1988 (“Mehra”). 2 Appeal 2015-001184 Application 12/764,151 IV claim 9 under 35 U.S.C. § 103(a) as unpatentable over Herrick in view of Steward and Mehra, and further in view of Cosky6 (id. at 11); V. claim 9 under 35 U.S.C. § 103(a) as unpatentable over Herrick in view of Steward and Mehra, and further in view of Cosky or Tisdell7 (id. at 12); VI. claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Herrick in view of Steward, and further in view of Karren8 (id. at 10); VII. claim 9 under 35 U.S.C. § 103(a) as unpatentable over Herrick in view of Stewart, and Karren, and further in view of Tisdell (id); VIII. claims 1, 2, and 4—7 under 35 U.S.C. § 103(a) as unpatentable over Herrick in view of Karren and Ager9 (id. at 11); IX. claim 2 under 35 U.S.C. § 103(a) as unpatentable over Herrick in view of Karren, and further in view of Birthisel (id.); X claim 9 under 35 U.S.C. § 103(a) as unpatentable over Herrick in view of Karren and Agar, and further in view of Tisdell (id. at 12); XI. claims 1, 2, and 4—9 on the grounds of non-statutory obviousness-type double patenting over co-pending U.S. 6 Cosky et al., US 2011/0039907 Al, published Feb. 17, 2011 (“Cosky”). 7 Tisdell et al., US 2008/0262057 Al, published Oct. 23, 2008 (“Tisdell”) 8 Karren and Roe, Carpenter Ants and Control in Homes, Fact Sheet 31, revised May 2000; http://extension.usu.edu/insect/fs/carpente.htm (last accessed June 25, 2003) (“Karren”). 9 Ager, US 4,997,970, issued Mar. 5, 1991 (“Ager”). 3 Appeal 2015-001184 Application 12/764,151 Application No. 12/158,48710 in view of Karren, Agar and optionally Birthisel, Cosky, or Tisdell {id. at 13). I. Obviousness over Herrick and Steward (claims 1, 2, and 4—6) The Examiner finds that Herrick “discloses insecticidal mixtures where the active agents consist of bifenthrin and cyano-pyrethroids” (Ans. 2 (emphasis omitted)). The Examiner acknowledges that “Herrick does not appear to teach the use of these compositions to control ants specifically, even though any ordinary artisan understands that ants, particularly carpenter and harvester ants, are within the category of ‘chewing insects’ disclosed by Herrick” (Ans. 3). The Examiner, however, finds that “a skilled artisan would have expected Herrick’s compositions to be effective against ants, at least because the insecticides disclosed by Herrick are well recognized to control ants, specifically carpenter ants” citing Stewart to support this position (Ans. 3; see Stewart 151 (showing the effect of Ortho Home Defense (containing 0.05% bifenthrin see 149) on carpenter ants), claims 3 and 18). The Examiner concludes that “[i]n light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to use a combination of bifenthrin and zeto-cypermethrin as suggested by Steward and taught by Herrick in the ratio taught by Herrick to control ants such as carpenter ants” (Ans. 4). We agree with the Examiner that the method of claim 1 would have been obvious based on the teaching of Herrick and Steward. We adopt and 10 Now issued as US 9,107,416, issued Aug. 18, 2015. 4 Appeal 2015-001184 Application 12/764,151 incorporate herein by reference the Examiner’s factual findings and conclusion, as set out in the Final Action and Answer. To summarize, Herrick teaches the insecticidal combination of bifenthrin and zeta-cypermethrin (see Herrick 14, Table 2, Abstract). Herrick teaches that “zeto-cypermethrin is a potent and quick acting insecticide, which controls a broad spectrum of chewing, sucking and flying insects” (id. at 2). Herrick teaches that “[t]he ratio of bifenthrin active ingredient (AI) to cyano-pyrethroid AI may be from 1/99 to 99/1. Preferably the ratio of bifenthrin AI to cyano-pyrethroid AI is from 1/4 to 4/1. More preferably the ratio is from 1/3 to 3/1” (id. at 5). Herrick explains that “by combining these two potent insecticides, an unexpected increase in insecticidal activity is observed in certain insect species” (id. at 2, see 14, table 2). Herrick further teaches that the insecticide formulation can be applied to powders and granules which are then used to treat the pest. Specifically, teaching that “[t]he wettable powder is ultimately applied to the locus where insect control is needed either as a dry dust or as an emulsion in water or other liquid. Typical carriers for wettable powders include Fuller’s earth, kaolin clays, silicas, and other highly absorbent, readily wet inorganic diluents” (Herrick 6). Herrick also teaches the production of “[gjranular formulations, wherein the toxicant is carried on relative coarse particles, are of particular utility for aerial distribution or for penetration of cover crop canopy” (id. at 7). “These insecticidal compositions may be applied either as water-diluted sprays, or dusts, or granules to the areas in which suppression of insects is desired” (id. at 5). Based on these teachings it would have been obvious to apply the combination bifenthrin and zeta- 5 Appeal 2015-001184 Application 12/764,151 cypermethrin as taught by Herrick to granules and deposit them in areas where insect suppression is desired. Steward teaches that Ortho Home Defense contains 0.05% bifenthrin and is active against carpenter ants (Steward | 51, see also claim 3 and 18). Based on the combined teaching of Herrick and Steward it would have been obvious to also apply the combination of bifenthrin and zeta- cypermethrin as a spray, dust, or granule to treat an area for carpenter ants because bifenthrin alone is already known to be active against carpenter ants. Appellants contend that “one of ordinary skill in the art could not have predicted the quick knockdown achieved by the present claimed method” (Br. 8). This argument is not persuasive. Steward teaches that Ortho Home Defense, a 0.05% bifenthrin composition, results in a 40% mortality of carpenter ants within 15 min and that beyond 15 minutes all compositions produced complete mortality (see Steward H 51 and 52). Thus, a combination of bifenthrin and zeto-cypermethrin, as taught by Herrick, would also be expected to also have an effect on carpenter ants based on the effect of bifenthrin alone as taught by Steward. Furthermore, we agree with the Examiner’s position that the scope of “quick knockdown” is undefined (see Ans. 19-21). “No definition or discussion of this term is provided in the instant application. Indeed, ‘quick knockdown’ is construed to mean any timeframe less than the normal lifespan of the ants desired to be controlled since any time less than this results in ant control that is more rapid (i.e. ‘quicker knockdown’) than ants at a locus that is untreated” (Ans. 20). Without evidence to the contrary, we 6 Appeal 2015-001184 Application 12/764,151 do not find this interpretation unreasonable. We agree that based on the teachings of Steward that shows a 40% mortality of carpenter ants within 15 min of exposure to bifenthrin would reasonably be considered “quick” in comparison to the lifespan of a carpenter ant (see Steward H 51 and 52). We are also not persuaded by Appellants’ contention that the “disclosures of Herrick and Steward do not suggest - and in fact teach away from - the present claimed invention” (Br. 8). A reference is said to “teach away” from a claimed invention when it “suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). That is not the case here. Herrick discloses the combination of bifenthrin and zeto-cypermethrin to treat insects, including chewing insects (see Herrick 14, Table 2, Abstract), and even suggests formulating the composition as a dust or granule to apply onto areas were insect control is desired (see Herrick 5). We conclude that the evidence cited by the Examiner supports a prima facie case of obviousness with respect to claim 1, and Appellants have not provided sufficient argument or evidence of secondary considerations that outweighs the evidence supporting the prima facie case. As Appellants do not argue the claims separately, claims 2, and 4—6 fall with claim 1. 37 C.F.R. §41.37 (c)(l)(iv). II. Obviousness over Herrick, Steward, and Birthisel (claim 2) Appellants contend that “Birthisel expressly indicates that the use of a mixture of pyrethroids having the same mode of action is undesirable (Br. 9). 7 Appeal 2015-001184 Application 12/764,151 We are not persuaded by Appellants contention because this argument ignores the teaching of Herrick and Steward. Furthermore, the test for obviousness is what the combined teachings of the references as a whole would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the Examiner relied on Birthisel for teaching that “carrier particle[s] (i.e. the support) can be, inter alia, fragmented peanut hulls, clays, or dolomitic limestone” (Ans. 5). “Appellants do not dispute Birthisel’s teaching of materials suitable for use as pesticide particle carriers, including peanut hulls and limestone particulates” (Ans. 22). We conclude that the evidence cited by the Examiner supports a prima facie case of obviousness with respect to claim 2. III. Obviousness over Herrick, Steward, andMehra (claims 7 & 8) Appellants contend that “the bait composition of Mehra is [] transported by the ants themselves into the nest. . . . Nothing in this publication suggests or discloses directly introducing granules into an ant nest through its entrance holes” (Br. 10). This argument does not persuade us for the reasons given by the Examiner (see Ans. 22). We agree with the Examiner’s position that with respect to the limitation of “wherein the composition is introduced into an ant nest having one or more entrance holes through said entrance holes” Appellants are arguing limitations that are not in the claims. We agree with the Examiner’s interpretation that “[t]he instant claims embrace active participation of ants themselves transporting a granular bait into a nest through entrance holes” (Ans. 22; see Spec. 3^4 (“ants returning to the nest have enough time to carry the insecticidal composition on their feet into the 8 Appeal 2015-001184 Application 12/764,151 nest before dying.”)). We conclude that the evidence cited by the Examiner supports a prima facie case of obviousness with respect to claims 7 and 8. IV & V. Obviousness over Herrick, Steward, Mehra, in view of in view of Cosky or Tisdell (claim 9) Appellants contend that “Cosky teach that pyrethroids frequently exhibit repellent properties (as is discussed in detail above), but such publication implies that a non-pyrethroid insecticide (fipronil or a derivative thereof) must be employed in granular formulations to effectively control ants” (Br. 12). With respect to Tisdell, Appellants contend that “Tisdell further contains a broad shotgun disclosure including hundreds of insecticides which could be mixed {id. at 13). These arguments does not persuade us for the reasons given by the Examiner. As explained by the Examiner, Herrick teaches the insecticidal combination ofbifenthrin and zeto-cypermethrin {see Ans. 24; Herrick 14, Table 2, Abstract). “Cosky and Tisdell are merely cited as further evidence that zeto-cypermethrin and bifenthrin containing formulations are known for the control of ants, including carpenter and harvester ants. Appellants do not dispute this teaching” (Ans. 24). We conclude that the evidence cited by the Examiner supports a prima facie case of obviousness with respect to claim 9. VI. Obviousness over Herrick, Steward, and Karren (claims 7 & 8) Appellants contend that “in view of the known repellency of pyrethroids . . . one of ordinary skill in the art would not employ bifenthrin or zeta-cypermethrin in bait formulations” (Br. 10—11). 9 Appeal 2015-001184 Application 12/764,151 This argument does not persuade us for the reasons given by the Examiner. We find that the Examiner has sufficiently addressed the issue with respect to the repellant properties and that they are “directly refuted by the multiple cited prior art teachings of using zeto-cypermethrin and bifenthrin for ant control (e.g. Steward, Karren, Cosky, and Tisdell)” (Ans. 23). The Examiner notes that Karren does not provide “an exhaustive list of pesticides suitable for bait formulations, but rather a mention of a few pesticides available in commercial ant traps” (Ans. 23). We conclude that the evidence cited by the Examiner supports a prima facie case of obviousness with respect to claims 7 and 8. VII. Obviousness over Herrick, Steward, Karren, and Tisdell (claim 9) We have reviewed Appellants’ contentions that the Examiner erred in rejecting claim 9 as obvious over the cited art. (Br. 12.) We disagree with Appellants’ contentions and adopt the findings concerning the scope and content of the prior art, as well as conclusions set forth in the Examiner’s Answer and the Final Rejection dated March 7, 2014. VIII. Obviousness over Herrick, Karren, and Agar (claims 1, 2, and H-7) We have reviewed Appellants’ contentions that the Examiner erred in rejecting claims 1, 2, and 4—7 as obvious over the cited art. (Br. 11.) We disagree with Appellants’ contentions and adopt the findings concerning the scope and content of the prior art, as well as conclusions set forth in the Examiner’s Answer and the Final Rejection dated March 7, 2014. 10 Appeal 2015-001184 Application 12/764,151 IX. Obviousness over Herrick, Karren, and Birthisel (claim 2) Appellants contend “that granular compositions containing bifenthrin and zeta-cypermethrin (i.e, two pyrethroids) would not be effective to control ants, as ants would not be expected to transfer a granule containing repellent active ingredients to their nest” (Br. 11). We are not persuaded as neither claim 1 nor claim 2 require that the granules need to be carried to the nest. The Examiner relies on Birthisel for teaching “an overlapping set of carriers as Herrick, effectively establishing these materials [act] as functional equivalents” (Ans. 12). “Appellants do not dispute Birthisel’s teaching of materials suitable for use as pesticide particle carriers, including peanut hulls and limestone particulates (see Brief, lines 5-8 of p. 9). Birthisel does not teach away from the invention” (Ans. 22). We conclude that the evidence cited by the Examiner supports a prima facie case of obviousness with respect to claim 2. X. Obviousness over Herrick, Karren, Agar and Tisdell (claim 9) We have reviewed Appellants’ contentions that the Examiner erred in rejecting claim 9 as obvious over the cited art. (Br. 11—12.) We disagree with Appellants’ contentions and adopt the findings concerning the scope and content of the prior art, as well as the conclusions set forth in the Examiner’s Answer and the Final Rejection dated March 7, 2014. XI. Non-Statutory Obviousness-Type Double Patenting: U.S. Application No. 12/158,487 in view of Karren, Agar and optionally Birthisel, Cosky, or Tisdell We have reviewed Appellants’ contentions that the Examiner erred in rejecting claims 1, 2, and 4—8 as obvious claim 7 of copending Application 11 Appeal 2015-001184 Application 12/764,151 No. 12/158,487 (now US Pat. No. 9,107,416 B2) in view of the cited art. (Br. 11.) We find that Appellants rely on the same arguments discussed above with respect to Herrick and any of the combinations with Karren, Agar, Birthisel, Cosky, and Tisdell. We disagree with Appellants’ contentions and adopt the findings concerning the scope and content of the prior art, as well as the conclusions set forth in the Examiner’s Answer and the Final Rejection dated March 7, 2014. SUMMARY We affirm all grounds of rejections as set forth by the Examiner. 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 12 Copy with citationCopy as parenthetical citation