Ex Parte Gobbi et al

Patent Trial and Appeal Board

Jun 29, 2018

12665698 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/665,698 12/18/2009 Carlotta Gobbi
4372 7590 07/03/2018
ARENT FOX LLP
1717 K Street, NW
WASHINGTON, DC 20006-5344
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.
108907.00055 3019
EXAMINER
PRYOR, AL TON NATHANIEL
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARLO TT A GOBBI, LUCIO BASSETTI,
VALERIO BORZA TT A, MARCO BERNARDINI,
FRANCESCA BORGO, and LUIGI CAPUZZI 1
Appeal2017-006032
Application 12/665,698
Technology Center 1600
Before ULRIKE W. JENKS, JOHN G. NEW, and JOHN E. SCHNEIDER,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify ENDURA S.p.A. and SIPCAM S.p.A. as the real
parties-in-interest. App. Br. 1.
Appeal2017-006032
Application 12/665,698
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 3-9, 11-14, 18, 20-24, 33-35, 39,
40, 42--45, and 47. Specifically, the claims stand rejected as unpatentable
under 35 U.S.C. § 103(a) as being obvious over Chadwick et al. (US
5,229,122, July 20, 1993) ("Chadwick").
Claims 1, 3-9, 11, 13, 14, 18, 20-24, 34, 35, 39, 40, 42--45, and 47
also stand rejected as unpatentable under 35 U.S.C. § 103(a) as being
obvious over Borzatta et al. (WO 2006/111553 Al, October 26, 2006)
("Borzatta").
Claims 1, 3-9, 11-14, 18, 21-24, 35, 39, 40, and 43--45 also stand
rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over
Bassam et al. (WO 97 /13409, April 17, 1997) ("Bassam").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a method for modulating the
release rate of microencapsulated active ingredients, particularly
agropharmaceutical active ingredients. Spec. Abstr., 1.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A method for modulating the release rate of
microencapsulated active ingredients ( a.i.) in agricultural
application, comprising the following steps:
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I) preparation of an aqueous suspension A) compnsmg
microcapsules of at least one active ingredient to improve their
biological efficacy,
wherein the active ingredient is at least one crop protection
product selected from the group consisting of herbicides,
acaricides, insecticides, fungicides, biocides, plants and insects
growth regulators, and antidotes;
II) preparation of a water-emulsifiable liquid, component B),
comprising a solvent of the microencapusulated active ingredient
the solvent being inert with respect to the capsule shells [[an]]
and substantially immiscible with water and at least one
surfactant selected from nonionic surfactants or from admixtures
of nonionic surfactants with anionic surfactants,
wherein the solvent is at least one selected from the group
consisting of:
C9-C20 alkylbenzenes, wherein the alkyl is linear or
branched;
C1--C4 alkyl esters of C3-C14 dicarboxylic acids, or their
mixtures;
C3-C10 alkyl esters of carboxylic acids or of
hydroxyacids C3-C10;
methyl esters of C12-C22 saturated or unsaturated fatty
acids or their mixtures; and
C7C9 alkyl esters of acetic acid;
III) water, component C), for diluting the active ingredient to
an application rate, and
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Application 12/665,698
IV) mixing A), B) and C) and adjusting the ratio (by weight)
of the solvent in component B) over the active ingredient in
component A to modify a release rate of the active ingredient by
further adding component B),
wherein the ratio (by weight) between the solvent of
component B) and the active ingredient of component A) is
between 0.1: 1 and 40: 1, and
wherein component B) improves biological activity of
component A) in the crop protection product compared to the
crop protection product without component B).
App. Br. 16-17.
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner's findings and conclusion
that the appealed claims are obvious over the cited prior art references. We
address the arguments raised by Appellants below.
A. Rejection of the claims over Chadwick
Issue 1
Appellants argue that the Examiner erred because Chadwick is outside
the scope of Appellants' claims because Chadwick includes non-
encapsulated pesticides for immediate effect. App. Br. 10
Analysis
Appellants argue that Chadwick teaches a microencapsulated
pesticide formulation comprising a non-encapsulated pesticide as well as an
encapsulated pesticide, and that the two pesticides may be the same or
different. App. Br 10 (citing Chadwick 1 ). According to Appellants,
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Application 12/665,698
Chadwick is outside the scope of their claims on appeal, because the claims
recite a method of changing the release of the microencapsulated active, and
therefore the biological efficacy of a microcapsule formulation A), by
adding further amounts of the emulsifiable liquid component B). Id.
Appellants contend that, when the treatment of an infestation requires a
biological efficacy higher than that given by the microcapsule formulation
being used, a person of ordinary skill in the art reading Chadwick would not
have been motivated to arrive at Appellants' claim 1 because the reference
teaches to add a non-encapsulated active that is, the formulation prepared in
example 2 of Chadwick. Id.
We are not persuaded by Appellants' arguments. Claim 1 is directed
to: "A method for modulating the release rate of microencapsulated active
ingredients ... , comprising the following steps." (Emphasis added). "[U]se
[of the transition] "comprising" [in the language of a claim] creates a
presumption ... that the claim does not exclude additional, unrecited
elements." Crystal Semiconductor Corp. v. Tri Tech Microelectronics Int 'l,
Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). Appellants adduce no evidence
to show that Chadwick fails to teach or suggest the limitations of claim 1,
but argue only that Chadwick teaches an additional element, i.e., non-
encapsulated active ingredients, which is not present in Appellants' claims.
However, the use of "comprising" in the claim language does not exclude
such additional elements. We therefore affirm the Examiner's rejection of
claim 1 on this ground. Furthermore, Appellants rely upon the same
argument with respect to the remaining claims. App. Br. 11. For the
reasons we have explained, we similarly affirm the Examiner's rejection of
these claims.
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Application 12/665,698
B. Rejection of the claims over Borzatta
Issue
Appellants argue the Examiner erred because Borzatta neither teaches
nor suggests Appellants' claims or the solution to the technical problem
solved by Appellants' application. App. Br. 12.
Analysis
Appellants assert that the technical problem addressed by Borzatta
was to improve the performance of commercially known active agents
(insecticides, acaricides, snailcides, fungicides) by means of a single
treatment, particularly for resistant species. App. Br. 12 (citing Borzatta 1,
2-3). According to Appellants, the solution found by Borzatta is a
microcapsule formulation characterized by the presence of two components,
one of which (A) possesses pesticidal activity and the other (B) exhibits
synergistic activity on (A) by enhancing its effectiveness. Id. Appellants
contend that Borzatta teaches that the time of the encapsulated substance
release can be controlled by altering the thickness and structure of the
capsule membrane and, more specifically, by acting on several parameters,
such as the quantities of actives to be encapsulated and the components of
the polymer and the surfactant, etc. Id. (citing Borzatta 5---6). Appellants
contend that Borzatta teaches that the formulation included in a multilayer
system described in Example 11 is illustrated in Figure 1 of Borzatta, which
demonstrates that the synergist PBO is included between the microcapsule
shell enclosing the active (A) and the external shell. Id.
Appellants argue that Borzatta therefore neither teaches nor suggests
the present claims or the solution to the technical problem of the present
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application, but, rather, contend that Borzatta teaches that the time of the
microencapsulated active release can be controlled by controlling the
microcapsule shell properties.
We are not persuaded by Appellants' arguments. Appellants do not
argue that Borzatta fails to teach or suggest all of the limitations of claim 1,
but argue instead that Borzatta teaches that the structure of the microcapsule
shell properties is a mechanism by which the release time of the active
ingredient can be managed. See App. Br. 12.
Appellants' claim 1 recites, in relevant part: "preparation of an
aqueous suspension A) comprising microcapsules of at least one active
ingredient." Claim 1 recites no additional limitation with respect to the
microcapsules of suspension A. As we have explained in Section A, supra,
use of the claim term "comprising" does not exclude additional limitations
on, or properties of, the microcapsules, e.g., with respect to their structure or
release time rates. See Crystal, 246 F.3d at 1348. These properties are
expressly taught by Borzatta and would, therefore, have been obvious to a
person of ordinary skill in the art. We consequently affirm the Examiner's
rejection of claim 1 on this ground. Furthermore, Appellants rely upon the
same argument with respect to the remaining claims. App. Br. 13. For the
reasons we have explained, we similarly affirm the Examiner's rejection of
these claims.
C. Rejection of the claims over Bassam
Issue
Appellants argue the Examiner erred because Bassam relates only to
the addition of selected emulsifiers to improve the stability of aerosol
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formulations, and therefore does not teach the limitations of the claims.
App. Br. 14.
Analysis
Appellants argue that Bassam relates to insecticidal compositions in
aerosol form, in particular to compositions where the insecticides are
microencapsulated so as to provide a sustained release effect. App. Br. 14.
(citing Bassam 1 ). According to Appellants, Bassam teaches that the
incorporation of microencapsulated insecticides, particularly
microencapsulated insecticides in aqueous dispersions or suspensions, into
aerosol compositions has been found to be problematic owing to the
instability of the formed emulsions. Id. Appellants assert that Bassam
teaches that the inclusion of particular emulsifiers that act to stabilize the
compositions can solve this problem. Id. (citing Bassam 2).
Appellants therefore argue that Bassam does not render obvious
Appellants' claimed invention because Bassam relates only to the addition
of selected emulsifiers to improve the stability of aerosol formulations. App.
Br. 14. Appellants contend that a person of ordinary skill in the art, reading
Bassam, would find no suggestion, teaching or motivation for arriving at
step IV) of present claim 1, because Bassam is silent on a method of
modulating the biological efficacy of a microencapsulated formulation in
dependence of the infestation to be treated. Id. At best, Appellants argue, it
is only by impermissible hindsight that the Examiner could find that a
person of ordinary skill in the art would have arrived at the invention of
claim 1. Id.
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The Examiner finds that step IV of claim 1 is obvious in the teachings
of Bassam, because Bassam teaches percentage ranges of B to A that will
fall within the range of B :A recited in claim 1. Final Act. 6.
We are not persuaded by Appellants' arguments. Appellants do not
provide any evidence of record to dispute the Examiner's findings that
Bassam teaches all of the structural limitations of claim 1, including the
ranges recited in limitation IV of component B) to component A): "wherein
the ratio (by weight) between the solvent of component B) and the active
ingredient of component A) is between 0.1:1and40:1." App. Br. 3, 21.
Limitation IV of claim 1 further recites: "mixing A), B) and C) and
adjusting the ratio (by weight) of the solvent in component B) over the
active ingredient in component A) to modify a release rate of the active
ingredient by further adding component B), ... wherein component B)
improves biological activity of component A) in the crop protection product
compared to the crop protection product without component B )" (emphases
added). In other words, claim 1 recites modifying the release rate of
component A) by adding component B) in a prescribed range of ratios, such
that the release rate of the active ingredient is different from the release rate
of component A) alone.
Appellants do not dispute that Bassam teaches the prescribed ratios of
components A) and B). Bassam also teaches that:
[I]ncorporation of microencapsulated insecticides, particularly
microencapsulated insecticides that are aqueous dispersions or
suspensions into aerosol compositions has been found to be
problematic owing to the instability of the so-formed emulsions.
This instability has been attributed to the fact that the
microencapsulated insecticide is present in the dispersed aqueous
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phase rather than the oil phase as occurs with conventional water
based aerosol insecticides.
Bassam 1. Bassam further teaches that: "the present inventors have found
that it is possible to produce [sustained active agent release] formulations by
using particular emulsifiers that act to stabilise the compositions whilst not
impairing insecticidal effectiveness." Bassam 2. Finally, Bassam teaches
that: "In order to maintain emulsion stability and where required to enable
the incorporation of an optional oil phase soluble insecticide, a solvent is
incorporated in the compositions of the invention in an amount of from 1 to
20%. Generally, the solvent will be water immiscible." Bassam 4--5.
Appellants do not dispute that Bassam lists solvents that correspond to those
listed in limitation II of claim 1.
Bassam therefore teaches the compositions recited in claim 1, and
further teaches that such compositions are stabilized emulsions that retain
their activity (i.e., sustained release) longer than microencapsulated
insecticides that are in aqueous dispersions or suspensions in aerosol
compositions alone, i.e., longer than composition A), defined in the claim as
"an aqueous suspension comprising microcapsules of at least one active
ingredient" alone. We consequently agree with the Examiner that Bassam
teaches or suggests all of the limitations of claim 1 and we affirm the
Examiner's rejection. Furthermore, Appellants rely upon the same argument
with respect to the remaining claims. App. Br. 14--15. For the reasons we
have explained, we similarly affirm the Examiner's rejection of these claims.
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DECISION
The Examiner's rejection of claims 1, 3-9, 11-14, 18, 20-24, 33-35,
39, 40, 42--45, and 47 as unpatentable under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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