Ex Parte Cline et al

Board of Patent Appeals and Interferences

Nov 6, 2008

10675536 (B.P.A.I. Nov. 6, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT LEE CLINE, PETER H. MARKUSCH, and RALF
GUETHER
____________

Appeal 2008-4166
Application 10/675,536
Technology Center 1700
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Decided: November 6, 2008
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1-5, 7-
11, 13-17, 19-23, 25-29, and 31-35. Jurisdiction is under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The claims are directed to processes for producing polyurethane(urea)
encapsulated slow release fertilizer particles. Claims 1-5, 7-11, 13-17, 19-
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23, 25-29, and 31-35 are pending and stand rejected by the Examiner under
35 U.S.C. § 103(a) as obvious over Wynnyk (US 2004/0016276 A1, Jan. 29,
2004) and Moore (US 4,804,403, Feb. 14, 1989) (Ans. 3).
Claim 1, which is representative of the claimed subject matter, reads
as follows:
1. A process for producing polyurethane(urea) encapsulated,
slow release fertilizer particles comprising:
a) applying a polyisocyanate component to fertilizer
particles to form isocyanate coated fertilizer particles,
b) mixing an inert filler with said isocyanate coated
fertilizer, wherein said inert, inorganic filler is insoluble or
substantially insoluble in water and contains at least 50% by
weight of particles having a particle size of less than 100
microns,
c) adding an isocyanate-reactive component to the
mixture of step b), wherein said isocyanate-reactive component
is selected from the group consisting of polyether polyols
having an equivalent weight of less than 200 and a functionality
of 2 to 8 and compounds having a molecular weight of from
105 to 400 and an equivalent weight of from about 31 to less
than about 100 and containing from 2 to 4 hydroxyl groups, and
d) allowing the reactive components to form filler
containing polyurethane(urea) encapsulated fertilizer particles
containing from about 1 to about 15 percent by weight of filled
polyurethane(urea), said percent by weight based on the total
weight of the encapsulated fertilizer, with the proviso that the
weight ratio of polyurethane(urea) to filler is from about 80:20
to about 30:70.
ISSUE
The subject matter is this appeal is drawn to processes for producing
polyurethane(urea) encapsulated, slow release fertilizer particles. Claim 1
involves applying a polyisocyanate to a fertilizer, mixing in an inert filler,
adding a polyether polyol which reacts with the polyisocyanate, and
allowing the components to react to form polyurethane(urea) encapsulated
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fertilizer. Independent claims 7, 13, 19, 25, and 21 claim the same
components, but differ from claim 1 in the order of steps in which the
components are reacted or mixed. The cited prior art, Wynnyk and Moore,
teach producing polyurethane coated fertilizer using the same components
which are claimed, i.e., polyisocyanate, polyol, and filler, but differ in the
order in which the components are mixed or reacted. Appellants contend
that the prior art references do not disclose or suggest applying the claimed
components in the order recited in the claims.
The issue to be resolved is this appeal is as follows:
Does the combination of Wynnyk and Moore suggest applying
polyisocyanate, filler, and polyether polyol to fertilizer particles in the
manner recited in claim 1?

FINDINGS OF FACT (FF)
Scope and content of the prior art
The Wynnyk patent
1. Wynnyk describes a controlled release fertilizer material comprising a
plant nutrient which is surrounded by a “protective coating comprising at
least one substantially homogenous layer of a urethane-containing
compound and a filler(s)” (Wynnyk, Abstract).
2. “[T]he term ‘urethane-containing compound’ is intended to mean a
product obtained by reacting a polyol(s) and an isocyanate(s). Typically, the
so-produced compound will be a polyurethane” (Wynnyk, at ¶ 31).
3. Wynnyk states that the “term ‘homogeneous’ is used in a somewhat
broad sense for the purpose of excluding a controlled release fertilizer
material comprising only distinct layers of urethane and wax” (Wynnyk, at
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¶ 30).
4. The coating is produced with particulate filler that is mixed with a polyol
and reacted with an isocyanate (Wynnyk, at ¶ 20).
5. According to Wynnyk, the “choice of polyol is not particularly restricted
and is within the purview of a person skilled in the art . . . For example, the
polyol may be a hydroxyl-terminated backbone of a member selected from
the group comprising polyether . . . The most preferred such polyol is a
polyether polyol” (Wynnyk, at ¶ 47).
6. The “manner by which the particulate filler material is added to the
protective coating is not restricted. Thus, for example, it is possible to add
the particulate filler to the isocyanate or to a mixture of the polyols and
isocyanates or in conjunction with other non-reactive materials” (Wynnyk,
at ¶ 20).
7. Wynnyk describes a step (a) in which “particulate plant nutrient” is
contacted “with a mixture comprising: a polyol, an isocyanate, an organic
additive and filler to produce a coating surrounding the particulate plant
nutrient” (Wynnyk, at ¶ 66).
8. However, Wynnyk states that the “precise mode of applying the mixture
to the plant nutrient is not particularly restricted” (Wynnyk, at ¶ 66) and
states that each of the polyol, isocyanate, and filler and can be applied in
“streams” which are independent of each of other (id. at ¶ 71).
9. “[M]ixtures of some or all components in the coating can be combined
and applied in one or more streams. The mixing of coating components and
order of introducing these streams into the system can be in any possible
combination” (Wynnyk, at ¶ 71).
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10. According to Wynnyk, the step (a) can be accomplished with separate
streams, including a separate stream which contains only particular filler:
Step (a) comprises contacting the particulate plant nutrient with
a first stream comprising the polyol component (with/without
organic additive and/or filler) and a second stream comprising
the isocyanate (with/without organic additive and/or filler), the
first stream and the second stream being independent of one
another. In this embodiment, the particulate plant nutrient may
be contacted simultaneously with the first stream and the
second stream. Alternatively, the particulate plant nutrient may
be contacted with the second stream followed by the first
stream. A third stream may also be used, for example, the
particulate filler or the mixture of the filler and the organic
additive.
(Wynnyk, at ¶ 72.)
The Moore patent
11. Moore teaches fertilizer particles which are coated with polyfunctional
isocyanate to form a base coating (Moore, at col. 3, ll. 24-32).
12. The base coating can then be reacted with a polyol to provide a water-
insoluble coating (Moore, at col. 3, ll. 32-41 and 64-67; see also at col. 2, l.
65 to col. 3, l. 10-15; col. 7, ll. 32-39). The polyol can be a polyester polyol
(id. at 7, l. 39).
13. Moore states that fillers can be added between the base coating formed
by isocyanate and the water-insoluble coating formed by the polyol (Moore,
at col. 8, ll. 23-35).

Differences between the prior art and the claimed invention
14. Claim 1 is drawn to a process for producing a polyurethane
encapsulated fertilizer with the following four steps:
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a) applying polyisocyanate to fertilizer particles to form coated
particles;
b) mixing coated particles with an inert filler;
c) adding a polyether polyol (“an isocyanate-reactive component”) to
the mixture of step b); and
d) allowing the components to react to form filler containing
polyurethane(urea) encapsulated fertilizer particles.
15. Independent claims 7, 13, 19, 25, and 31 recite the same steps as in
claim 1, but in different orders or permutations of making a polyurethane
coated fertilizer particle.
17. Wynnyk’s process comprises reacting a polyisocyanate and polyol, the
same reactants recited in steps a) and c) of claim 1 (FF2, 4, 7-10).
18. Wynnyk also teaches the addition of filler – as in step b) of claim 1
(FF2).
19. Moore describes a process of producing coated fertilizer particles that
includes the steps of coating fertilizer with a isocyanate (FF11), reacting
with a polyol (FF12-13), and adding filler (FF13), meeting the limitations of
steps a), b), c), and d) of claim 1.
20. Neither Wynnyk nor Moore teaches all recited permutations of applying
a polyisocyanate, polyol, and filler as in the claims.

PRINCIPLES OF LAW
“During [patent] examination, the examiner bears the initial burden of
establishing a prima facie case of obviousness.” In re Kumar, 418 F.3d
1361, 1366 (Fed. Cir. 2005).
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It is well settled that, “in a section 103 inquiry, ‘the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”’ Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
Thus, “[a]ll the disclosures in a reference must be evaluated, including
nonpreferred embodiments.” In re Mills, 470 F.2d 649, 651 (CCPA 1972)
(citations omitted).
ANALYSIS
“During [patent] examination, the examiner bears the initial burden of
establishing a prima facie case of obviousness.” In re Kumar, 418 F.3d
1361, 1366 (Fed. Cir. 2005). In this case, the Examiner finds that each of
Wynnyk and Moore teach the same steps as in claim 1 and others of
applying isocyanate, polyol, and filler to fertilizer particles, but not the
specific order of steps recited in the claims (Ans. 6; FF14-20). However, the
Examiner concludes that:
even though the patents do not teach the various permutations
and combinations of applying the filler to a polyurethane coated
fertilizer granulate, in well enunciated steps to recite method
claims of the type herein, it would have been obvious to one of
ordinary skill in the art, based on the prior art of record, that in
following the references, every embodiment instantly claimed
was already known in the art at the time the invention was
made or clearly suggested by the above 2 references. Also
based on such prior art, to make further modifications to
optimize the various alternatives would have been obvious
because the normal desire of scientists or artisans to improve
upon what is already known.
(Ans. 6.)
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We agree with the Examiner that the subject matter of claim 1 would
have been prima facie obviousness to persons of ordinary skill in the art. As
established by the Examiner, each of Wynnyk and Moore describe making a
polyurethane coated fertilizer particle using polyisocyanate, polyol, and
filler – as in steps (a) through (d) of claim 1. Moore particularly teaches
mixing a filler with particles that have been coated with a polyisocyanate,
and then further reacting with a polyol (FF19). Moore, as does Wynnyk,
also teaches that the polyol can be a polyester polyol (FF5, 12) – the same
polyol which is recited in claim 1. Finally, Wynnyk states that mixing and
coating of the components can be accomplished “in any possible
combination” and “is not particularly restricted” (see FF8-10) and says the
same for addition of the filler (FF6). Thus, the prior art explicitly teaches
that the order of applying the various components can be varied as they have
been in the claimed subject matter.
Appellants argue that Wynnyk teaches a “protective controlled release
coating” which “incorporates urethane, filler and organic additive into one
substantially homogenous layer” (App. Br. 7). Appellants state Wynnyk
“clearly discloses that separate layers are not formed by the process therein”
(id.).
This argument does not persuade us that the Examiner erred.
Appellants have not pointed to any limitation in claim 1 that requires the
polyurethane encapsulated particle to be formed of separate layers.
Therefore, Appellants appear to be distinguishing claim 1 from the prior art
over limitations that are not recited in the claim. In addition to this, Wynnyk
expressly states that it uses the term “homogeneous” in a “somewhat broad
sense” to distinguish from layers of wax and urethane (FF3). Thus, Wynnyk
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does not expressly exclude the urethane, itself, from having a layered
structure. Finally, Wynnyk characterizes its urethane as a product “obtained
by reacting a polyol(s) and an isocyanate(s)” (Wynnyk, at ¶ 31; FF2). The
process of producing a urethane of claim 1 also involves reacting an
isocyanate and polyol (FF14). Thus, it is not evident that there is any
difference in the reaction between the components which are claimed and
those disclosed in Wynnyk. Accordingly, it would have reasonable for
persons of ordinary skill in the art to believe that the polyurethane structure
of Wynnyk is the same as that which is claimed. Appellants have not
provided any evidence to the contrary – or that the claimed steps result in a
product which differs from that described by Wynnyk or Moore.
Appellants also contend that it would not have been obvious to
combine Wynnyk with Moore because Moore “forms different or separate
layers of components” which is “clearly the opposite of what” Wynnyk
desires to achieve (App. Br. 8). This argument is not persuasive. Each of
Wynnyk and Moore use the same components, i.e., isocyanate, polyol, and
filler, to achieve a coated fertilizer particle. Each of the references teaches
that the components can be added to the fertilizer in different streams and in
different orders. For example, Wynnyk explicitly refers to adding in the
components in separate and independent streams (FF8-10). Moore also
expressly describes separately adding isocyanate, filler, and polyol to
particles (FF11-13). Thus, we are not persuaded that Wynnyk’s process is
“opposite” to Moore’s or that the combination is improper – as argued by
Appellants.
Appellants state that all the examples described in Wynnyk “add the
particulate filler to the polyol component and this mixture is applied
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simultaneously with the isocyanate component to the particular plant
nutrient” (App. Br. 9). Appellants contend that when the filler and polyol
are mixed, a thick paste results which cannot be applied to the fertilizer (id.;
Reply Br. 2).
This argument is not persuasive. Wynnyk expressly and clearly states
that the polyol, isocyanate, and filler can be applied in separate and
sequential streams:
Step (a) comprises contacting the particulate plant nutrient with
a first stream comprising the polyol component (with/without
organic additive and/or filler) and a second stream comprising
the isocyanate (with/without organic additive and/or filler), the
first stream and the second stream being independent of one
another. In this embodiment, the particulate plant nutrient may
be contacted simultaneously with the first stream and the
second stream. Alternatively, the particulate plant nutrient may
be contacted with the second stream followed by the first
stream. A third stream may also be used, for example, the
particulate filler or the mixture of the filler and the organic
additive.
(Wynnyk, at ¶ 72; see FF10.) Appellants have not addressed this explicit
disclosure, but instead focus on other parts of the reference which teach
embodiments in which all components are added at the same time. It is well
settled that, “in a section 103 inquiry, ‘the fact that a specific [embodiment]
is taught to be preferred is not controlling, since all disclosures of the prior
art, including unpreferred embodiments, must be considered.”’ Merck & Co.
v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Thus, “[a]ll the disclosures in
a reference must be evaluated, including nonpreferred embodiments.” In re
Mills, 470 F.2d 649, 651 (CCPA 1972) (citations omitted).
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In addition to Wynnyk’s disclosure that the isocyanate, polyol, and
filler components can be added in separate streams – one followed by
another – Moore also teaches a process in which the components can be
added in different steps as claimed (FF12-13). Thus, Moore’s teachings are
consistent with Wynnyk’s.
For the foregoing reasons, we affirm the rejection of claim 1.

CONCLUSION OF LAW
The combination of Wynnyk and Moore suggests applying
polyisocyanate, filler, and polyether polyol to fertilizer particles in the
manner recited in claim 1. Claims 2-5, 7-11, 13-17, 19-23, 25-29, and 31-35
fall with claim 1 because separate reasons for their patentability have not
been provided. See 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, the decision
of the Examiner as to all the appealed claims is affirmed.
TIME PERIOD
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

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