Ex Parte Baseeth et al

Patent Trial and Appeal Board

Jul 28, 2017

13603617 (P.T.A.B. Jul. 28, 2017)

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.
13/603,617 09/05/2012 Shireen Baseeth SI.0117.US02 1039
54245 7590 08/01/2017
ARCHER DANIELS MIDLAND COMPANY
4666 FARIES PARKWAY
DECATUR, IL 62526
EXAMINER
ARNOLD, ERNST V
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
patent @ adm. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIREEN BASEETH and BRUCE SEBREE
Appeal 2016-006398
Application lS/603,6171
Technology Center 1600
Before FRANCISCO C. PRATS, RYAN H. FLAX, and DAVID COTTA,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of dispersing a compound in an aqueous solution. The Examiner
rejected the claims on appeal as obvious under 35 U.S.C. § 103(a).
We affirm.
STATEMENT OF THE CASE
The Specification discloses: “[t]his invention is directed towards a
process for producing biobased and bio-degradable microemulsions
comprising agricultural adjuvants, compositions and uses thereof. The
1 According to Appellants, the real party in interest is Archer-Daniels-
Midland Company. App. Br. 3.
Appeal 2016-006386
Application 13/603,617
invention also relates to methods of using such microemulsions to disperse a
compound in water.” Spec. 12.
Claims 12, 15 and 17—26 are on appeal.2 Claim 12 is illustrative and
reads as follows:
12. A method of dispersing a compound in an aqueous
solution, the method comprising:
obtaining a microemulsion comprising:
an organic acid selected from the group consisting of
propionic acid, methyl acetic acid, acetic acid, lactic acid,
fumaric acid, succinic acid, and combinations of any thereof;
crude lecithin;
vegetable fatty acids;
water; and
a co-surfactant selected from the group consisting of
sorbitan monostearate, polyoxyethylene ester of rosin,
polyoxyethylene dodecyl mono ether,
polyoxyethylenepolyoxypropylene block copolymer,
polyoxyethylene monolaurate, polyoxyethylene monohexadecyl
ether, polyoxyethylene monooleate, polyoxyethylene mono(cis-
9-octadecenyl)ether, polyoxyethylene monostearate,
polyoxyethylene monooctadecyl ether, polyoxyethylene
dioleate, polyoxyethylene distearate, polyoxyethylene sorbitan
monolaurate polyoxyethylene sorbitan monooleate,
polyoxyethylene sorbitan monopalmitate, polyoxyethylene
sorbitan monostearate, polyoxyethylene sorbitan trioleate,
polyoxyethylene sorbitan tristearate, polyglycerol ester of oleic
acid, polyoxyethylene sorbitol hexastearate, polyoxyethylene
monotetradecyl ether, polyoxyethylene sorbitol hexaoleate, tail-
oil, hexaester with sorbitol, ethoxylated castor oil, ethoxylated
soybean oil, ethoxylated polyoxyethylene sorbitol tetraoleate,
fatty acids, mixed esters with glycerol and polyethylene glycol,
C9-C16 ethoxylated derivatives of any thereof, and
combinations of any thereof;
2 As discussed below, Appellants have canceled claims 1—3, 5, 6, 8, 9, and
11.
2
Appeal 2016-006386
Application 13/603,617
mixing the microemulsion and a compound selected from
the group consisting of a biocide, pesticide, herbicide,
fungicide, and miticide in water, thus dispersing the compound
in the aqueous solution;
wherein the microemulsion is a clear, isotropic,
thermodynamically stable liquid.
Reply Br. 4.
The Examiner rejected claims 1—3, 5, 6, 8, 9, 11, 12, 15 and 17—26
under 35 U.S.C. § 103(a) as obvious over the combination of Rowley,3
Herold,4 Ahlnas,5 and Weed Control.6
ANALYSIS
The Examiner found that Rowley disclosed stable microemulsion
formulations containing lecithin, at least one surfactant, a crop protection
product (including, e.g., glyphosate salt), an acidifying agent such as lactic
or propionic acid, oils, and carboxylic acids. Final Act. 4.7 The Examiner
also found that Rowley disclosed vegetable fatty acids. Id. at 8. The
Examiner acknowledged that Rowley did not disclose the specifically recited
co-surfactants of claim 12, but found that Ahlnas and Herold supplied this
element. Id. at 17.
The Examiner found that Herold disclosed a microemulsion
comprising an herbicide dissolved in surfactant and that Ahlnas disclosed
3 Rowley et al., US Patent Publication No. 2007/0078057 Al, published
Apr. 5, 2007 (“Rowley”).
4 Herold et al., US Patent Publication No. 2006/0205601 Al, published Sept.
14, 2006 (“Herold”).
5 Ahlnas et al., US Patent No. 5,482,529, issued Jan. 9, 1996 (“Ahlnas”).
6 National Research Council (U.S.) Committee on Plant and Animal Pests,
Subcommittee on Weeds, Weed Control, National Academies 243 (1968)
(“Weed Control”).
7 Office Action mailed August 15, 2014 (“Final Act.”).
3
Appeal 2016-006386
Application 13/603,617
fertilizer preparations in the form of emulsion suspensions. Final Act 10, 14.
The Examiner further found that Herold “directs the skilled artisan to fatty
acid ethoxylates” and that Ahlnas taught to add “the ester of a polyol and a
fatty acid, or a derivative of the ester such as an oily or fatty monoglyceride
thereof.” Id. at 19. The Examiner concluded that since Rowley “already
suggests] . . . adding acids and surfactants and Herold et al. and Ahlnas et
al. teach various acids known for use with microemulsions as well as
conventional surfactants” it would have been obvious to select the specific
surfactants disclosed in Herold and Ahlnas. Id. at 19. The Examiner notes
that this is “merely judicious selection of known acids or surfactants” and
that “[i]t is prima facie obvious to combine two compositions each of which
is taught by the prior art to be useful for the same purpose.” Id. (citing In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2—8; Final Act. 2—23) and agree that
the methods recited in the appealed claims would have been obvious over
Rowley, Herold, Ahlnas, and Weed Control. We address Appellant’s
arguments below.
Claims 1—3, 5, 6, 8, 9, and 11
After the submission of their Appeal Brief, Appellants submitted an
amendment cancelling claims 1—3, 5, 6, 8, 9, and 11. Reply Br. 1; see also
Amendment 2 (filed October 27, 2015). Claims 1—3, 5, 6, 8, 9, and 11 are
therefore canceled. See 37 C.F.R. § 41.33 (b)(1) (amendments filed after an
appeal brief may be admitted to cancel claims “where such cancellation does
not affect the scope of any other pending claim in the proceeding”). In view
4
Appeal 2016-006386
Application 13/603,617
of their cancellation, we do not substantively address arguments directed to
these claims.
Claims 12, 15 and 17—26
Appellants contend that Rowley does not disclose “crude lecithin” as
required by claim 12 or “lecithin that has not been de-oiled” as required by
claim 21. Appellants argue that the Examiner “erred in asserting that
Rowley et al. discloses crude lecithin since the statements and working
examples in Rowley et al. show[] that only de-oiled lecithins were able to
form microemulsions.” App. Br. 10; see also, Reply Br. 2. We are not
persuaded.
Rowley expressly defines lecithin for use in its microemulsions as
including unmodified — i.e. “crude” — lecithin. Rowley 33
(“Commercially, lecithin or unmodified lecithin refers to a complex product
derived from animal or plant tissues that is commonly used as a wetting and
emulsifying agent in a variety of commercial products.”); see also, id. at
137 (“Examples of modified or unmodified lecithin that can be used in the
present invention include but are not limited to soy hydroxylated lecithin,
soy acetylated lecithin, soy enzyme modified lecithin, and unmodified egg
yolk lecithin.”). Rowley, thus, clearly contemplates using crude lecithin in
its microemulsions.
To the extent Appellants contend that crude lecithin would not work
in Rowley’s microemulsions, it was their burden to provide evidence
rebutting the presumption that Rowley enabled what it disclosed. In re
Sasse, 629 F.2d 675, 681(CCPA 1980); see also In re Antor Media Corp.,
689 F.3d 1282, 1288 (Fed. Cir. 2012). Here, Appellants have not directed us
to evidence in the record to persuasively rebut the presumption that Rowley
5
Appeal 2016-006386
Application 13/603,617
enabled microemulsions that use crude lecithin. Moreover, a reference must
be considered for all that it discloses, not merely the exemplified or
preferred subject matter. See In re Mills, 470 F.2d 649, 651 (CCPA 1972)
(“All the disclosures in a reference must be evaluated, including
nonpreferred embodiments, and a reference is not limited to the disclosure of
specific working examples.”) (citations omitted).
Claims 15 and 24 require that the herbicide be a salt. Appellants
argue that Herold teaches away from using the salt form of an herbicide by
requiring that its herbicides be in acid form and discussing the advantages of
the acid form. App. Br. 12; see also. Reply Br. 2. We are not persuaded.
Rowley discloses that “[m]any herbicides and pesticides have limited
water solubility and significant [a]mounts of organic solvents must be used
to effectively formulate them.” Rowley 1126. This results in “heightened
environmental and toxicological concerns.” Id. Rowley also discloses that
glyphosate, the active ingredient in Monsanto’s Roundup™ herbicide is
“typically formulated as a salt, predominately the isopropylamine or
potassium salt” in order to “improve the water solubility.” Id. at 1122. We
agree with the Examiner that these teachings would have directed the skilled
artisan to salts of glyphosate as a means for improving its water solubility.
Final Act. 9.
Herold uses the acid form of an herbicide in its microemulsions and,
in the passage cited by Appellants (see Reply Br. 2 n. 3), discloses:
the use of a herbicide compound in acid form, especially applied
directly to a plant, and especially in a herbicide composition
having an acidic and a relatively low pH (e.g., below 7, 6, or 5,
6
Appeal 2016-006386
Application 13/603,617
or below the pKa of a herbicide compound, or lower) can effect
improvements in plant control.
Herold 122. This is not sufficient to establish a teaching away. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that a reference
teaches away from a claimed invention if it “criticize[s], discredits], or
otherwise discourage[s]” modifying the reference to arrive at the claimed
invention). As the statement in Herold regarding the advantages of the acid
form of herbicides does not include any criticism of the salt form, we find
that it does not constitute a teaching away. DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006)
(“We will not read into a reference a teaching away from a process where no
such language exists.”). Moreover, while Herold does not employ herbicide
salts in its emulsions, Herold expressly notes in the background section of its
disclosure that salt and ester forms of herbicides have been used in
microemulsions rather than acid forms because they were considered to be
“most easily dispersed or suspended in a microemulsion.” Herold 1 6.
Appellants argue that claims 19 and 21 are non-obvious because they
require a specific order of mixing. We are not persuaded because, as the
Examiner explains (see Final Act. 22), the selection of any particular order
of performing known process steps is generally prima facie obvious in the
absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 692
(CCPA 1946); see also In re Gibson, 39 F.2d 975, 976-77 (CCPA 1930)
(selection of any order of mixing ingredients is prima facie obvious). Here,
Appellants have not directed us to any evidence that the order of mixing the
emulsion led to new or unexpected results.
Finally, Appellants argue that Ahlnas discloses emulsions rather than
microemulsions and thus the person of ordinary skill would not “look to
7
Appeal 2016-006386
Application 13/603,617
combine the teachings of ordinary emulsions of Ahlnas et al. with the
microemulsions of Rowley et al. and Herold et al.” App. Br. 12. We are not
persuaded because, even if we were to credit Appellants’ argument,
Appellants do not explain how the absence of Ahlnas changes the
Examiner’s analysis so as to render the methods of the non-cancelled claims
— i.e. claims 12, 15, and 17—26 —non-obvious. See generally, App. Br. 5—
12; Reply Br. 1—3. We note that the Examiner found each of the individual
elements recited in claim 12 to be present in Rowley and Herold. See, Final
Act. 4—14. Accordingly, we affirm the Examiner’s rejection of claims 12,
15 and 17—26 as obvious over Rowley, Herold, Ahlnas and Weed Control.
SUMMARY
For these reasons and those set forth in the Examiner's Answer, the
Examiner’s final decision to reject claims 12, 15 and 17—26 is affirmed.
Claims 1—3, 5, 6, 8, 9, and 11 are cancelled.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
8