Ex Parte Gaytan et al

Patent Trial and Appeal Board

Sep 14, 2016

12365577 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/365,577 0210412009 Jesse H. Gaytan
34238 7590 09/16/2016
ARTHUR G. SCHAIER
CARMODY TORRANCE SANDAK & HENNESSEY LLP
195 CHURCH STREET
P.O. BOX 1950
NEW HAVEN, CT 06509-1950
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
30751-15A 6251
EXAMINER
FISHER, ABIGAIL L
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
09/16/2016 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@carmodylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JESSE H. GAYTAN, C. STEPHEN SECKINGER,
and OSBORN J. TURNER IV
Appeal2014-007954
Application 12/365,577
Technology Center 1600
Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
RYAN H. FLAX, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims 1, 5-23, 26-34, 38-39 and 41-51 for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b ).
We Affirm.
Appeal2014-007954
Application 12/365,577
STATEMENT OF CASE
The Specification discloses that, "[ t ]he present invention relates to
solid formulations of low melting active compounds. More particularly, the
invention relates to solid formulations comprising pesticidally active low
melting compounds, including herbicides, such as fluroxypyr." Spec. 1.
The Specification further discloses that:
Low melting compounds typically are soft and tacky at
processing temperatures causing the compound to stick to itself rather
than allowing formation of a homogeneous dispersion with the
additional solid formulation components. According to the present
invention, however, this difficulty has been overcome, in part, through
the use of a free-flow agent that is appropriately compatible with the
low melting compound so that, when the two ingredients are
combined, the low melting compound becomes intimately combined
with the free-flow agent to form an intermediate material wherein the
low melting compound is in a form allowing for further processing and
combination with the remaining composition components. In specific
embodiments, the low melting active compound can be so intimately
combined with the free-flow agent, such as through the application of
shear, that the combined material exhibits certain physical
characteristics of the free-flow material in preference to the low
melting active compound.
Spec. 19. In one embodiment, the free-flow agent comprises a solid, silica-
containing compound, including, but not limited to, hydrophobic silica,
synthetic precipitated silicas, and hydrated amorphous silicas. Spec. 20.
The following claims are representative:
1. A solid formulation comprising:
individual particles of a low melting active compound
impregnated with particles of a free-flow agent, wherein the
low melting active compound is a fluroxypyr ester;
a solid diluent; and
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Application 12/365,577
one or more further formulation adjuvants
wherein the particles of the low melting active compound
impregnated with the free-flow agent particles, the solid diluent,
and the one or more further formulation adjuvants are combined
in a homogeneous mixture.
3 8. The method of claim 27, wherein the fluroxypyr ester is
fluroxypyr-meptyl.
REJECTION AND REFERENCES
Claims 1, 5-23, 26-34, 38-39 and 41-51 are rejected under 35 U.S.C.
103(a) as being unpatentable over Chiba et al. (EP 0364601 Al, published
Apr. 25, 1990) in view of Bratz et al. (US 6,869,914 B2, issued Mar. 22,
2005).
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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Application 12/365,577
Analysis
We agree with the Examiner's fact finding, statement of the rejection
and responses to Appellants' arguments as set forth in the Answer. We find
that the Examiner has provided evidence sufficient to support a prima facie
case of obviousness. Appellants argue the claims in two groups (Claims 1,
5-23 and 26; Br. 21, and Claims 34, 38, 39 and 41-51; Br. 24), but do not
argue individual claims separately within the groups. Therefore we select
claim 1 as representative claim for group 1, and claim 38 as representative of
group 2. We provide the following additional comment to the Examiner's
argument set forth in the Final Rejection and Answer.
As to claim 1, the Examiner finds that Chiba discloses solid particles
of pesticidally active ingredient and that fine particles of a hydrophobic
substance
adhere evenly onto the surface of the particles of pesticidally
active ingredient (page 23, lines 11-25). It is taught that the individual
particles of the hydrophobic substance are partially embedded into the
surface layers of the particles of the pesticidally active ingredient to
provide such state that the particles of the hydrophobic substance are
rooting into the surface layers of the particles of the active ingredient
(page 24, lines 1-11 ).
Ans. 2-3. The fine particles of hydrophobic substance may be aerosol R972
(hydrophobic silica). Chiba, p. 14; Ans. 3.
Chiba et al. exemplify wettable powders and granules
comprising a pesticide, hydrophobic substance (silica or titanium
oxide), diluents and other adjuvants. Additional adjuvants taught
include natural materials such as starch and cellulose (page 26-27).
Other exemplified adjuvants include polyvinyl alcohol (example 2)
and xanthan gum (example 4). Pesticidal compounds taught include
insecticides, fungicides, bactericides and herbicides.
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Application 12/365,577
Ans. 4. The Examiner admits that Chiba does not teach that the
pesticide/herbicide is fluroxypyr-meptyl (ester). The Examiner relies on
Bratz for the disclosure that fluroxypyr-meptyl (Bratz, claim 2) is a well
known pesticide/herbicide. 1 Ans. 5, 10. Bratz is further relied on for the
disclosure that solid pesticide/herbicide powder
[f]ormulation[s] may contain anti-foam agents, anti-freeze agents,
thickeners, etc. (see column 4 lines 18-21 and column 6 lines 13-25).
Surfactants are used in 0 to 50% and 0 to 5% by weight in water
dispersible granules (column 6, lines 26-30). A pH adjuster may be
incorporated in an amount up to 5% by weight (see column 6 lines 13-
41).
Ans. 5.
Appellants contend that the Examiner has not provided sufficient
motivation to combine the cited references (Br. 17), and that the Examiner
has improperly overlooked expressly recited characteristics of the claimed
formulation that are not disclosed or suggested by Chiba et al. or Bratz et al.
Br. 21. It is argued that the nature of how Chiba et al. and Bratz et al. form
their composition is fundamentally distinct from the method by which the
presently claimed formulation is made. Br. 21-22.
The Examiner responds, arguing that:
Bratz et al. is utilized to teach the instantly claimed pesticidally active
ingredient. Chiba et al. clearly teaches that any pesticidally active
ingredient can be utilized; therefore, since fluroxypry [sic] esters are
known pesticidally active ingredients to be utilized in water-
dispersible granules its use is obvious. Based on the teachings of
Chiba et al., it does not appear that the type of pesticide utilized is
critical. Thus, there is a reasonable expectation in the utilization of
1 See also, fluoroxypyr (Bratz, col. 9, 11. 52).
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Application 12/365,577
any pesticide. Since applicants have not demonstrated the
unexpectedness or unobviousness of the instantly claimed pesticide,
the examiner maintains the combination of Chiba et al. and Bratz et al.
clearly suggest the use of the instantly claimed pesticidally active
agent. Additionally, Chiba et al. clearly teaches that auxiliary
additives conventionally utilized in the art can be utilized (see page 26
of Chiba et al.). Bratz et al. teach pH adjusting agents, anti-foam
agents and surfactants as adjuvants for water-dispersible granules
which are conventional additives. Since Chiba et al. teach the same
type of granules, the examiner does not see how the use of the
adjuvants taught by Bratz et al. are not obvious as they are used in the
exact same type of pesticidal formulation. Furthermore, the examiner
does not see how there would not be a reasonable expectation of
success since these are conventional additives. Since there does not
appear to be any criticality to the pesticide utilized or the adjuvants
utilized, the examiner maintains that based on the teachings of Chiba
et al. and Bratz et al., it would have been obvious to one of ordinary
skill in the art and modify Chiba et al. by choosing known pesticidally
active agents and conventional adjuvants for use in the formation of
water-dispersible granules.
i\.ns. 10-12. \Ve find that both Chiba and Bratz are analogous art to the
claimed invention. The test for analogous art is first whether the art is
within the field of the inventor's endeavor and, if not, whether it is
"reasonably pertinent to the particular problem with which the inventor was
involved." In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). "A reference is
reasonably pertinent if, even though it may be in a different field" of
endeavor, it logically would have commended itself to an inventor's
attention in considering his problem "because of the matter with which it
deals." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). We find that both
Chiba and Bratz are within the field of the inventor's endeavor, solid
pesticide formulations. Even though the Bratz formulation process is not
exactly the same as that of Chiba, it would logically would have commended
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itself to an inventor's attention in considering his problem because of the
general matter with which it deals. The Examiner relies on Bratz only for its
disclosure that fluroxypyr esters are known pesticidally active ingredients
for use in solid pesticide formulations or water dispersible granules
comprising pesticidally active ingredients. Ans. 10.
Appellants contend that
The examiner relies on Chiba et al.' s disclosure that particles charged
in a ball-mill cause titanium oxide to adhere to the surface of acephate
particles. Such a disclosure by Chiba et al. does not provide the
requisite facts or underlying motivation to combine such an unrelated
disclosure with Bratz et al. to arrive at the instantly claimed
formulations.
Bratz et al. specifically teach that when using active agents having a
melting point below 80 °C, the energy input during the milling
process frequently leads to partial or complete melting of the active
ingredient, which leads to unsatisfactory product quality or to
clogging of the mill owing to the aggregation of active ingredients
(column 1, lines 47-56).
Br. 22.
We are not persuaded. While Appellants may have found deficiencies
in Bratz' s milling process or disclosure, Appellants have pointed to no
deficiencies and have not provided evidence of deficiencies in, or problems
with, the Chiba particle formulation process. Attorney argument cannot take
the place of evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed.
Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). As to
motivation to combine argument, the Supreme Court in KSR Int 'l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1739 (2007), rejected a rigid application of the
teaching-suggestion-motivation test. The Court recognized that it is often
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Application 12/365,577
necessary to look at the interrelated teaches of multiple references; the
effects of demands of the marketplace; and the background knowledge
possessed by a person of ordinary skill, "all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed." Id. at 1740-41. Moreover, the "obviousness analysis cannot be
confined by a formalistic conception of the words teaching, suggestion, or
motivation, or by overemphasis on the importance of published articles and
explicit content of issued patents." Id. at 17 41. We have found Bratz to be
analogous or reasonably pertinent art to both Chiba and the claimed
invention, providing motivation for the combination of Chiba with Bratz.
Furthermore, Appellants do not provide evidence evidence to rebut
the Examiner's prima facie showing that there would have been motivation
to incorporate, and that it would have been reasonably possible to
incorporate the known, specific fluroxypyr esters and pesticidally active
ingredient of Bratz into the solid, composite particles of Chiba et al. Chiba
et al. teaches a substantially similar method of making solid pesticidal
composite particles to that instantly claimed. We find no evidence of the use
of improper hindsight by the Examiner in making the rejection. The
Examiner has pointed to specific disclosure in the prior art to support the
obviousness rejection of claim 1. The remaining claims in the first grouping
fall with claim 1.
Claim 38 recites, "[t]he method of claim 27, wherein the fluroxypyr
ester is fluroxypyr-meptyl." Br. 36. Fluroxypyr-meptyl is a known
pesticide/herbicide from Bratz. Bratz, col. 3, 1. 23; col. 18, 1. 56. As
discussed herein, it would have been obvious to one of ordinary skill in the
art to substitute the known pesticide/herbicide, fluroxypyr-meptyl, of the
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composite pesticide solid particles of Bratz for the pesticide/herbicide of the
composite pesticide solid particles of Chiba. We therefore affirm the
Examiner's rejection of claim 38, and the remaining claims in that grouping
fall with claim 3 8.
Additional arguments of Appellants have been addressed fully in the
Answer and we adopt them as our own.
The obviousness rejection is affirmed for the reasons of record.
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejection,
which is affirmed for the reasons of record. All pending, rejected claims
fall.
AFFIRMED
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