Ex Parte HARADA et al

Patent Trials and Appeals Board

Jun 11, 2019

15216224 - (D) (P.T.A.B. Jun. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/216,224 07/21/2016 Akiko HARADA
22428 7590 06/13/2019
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
095285-0121 1061
EXAMINER
KASSA, TIGABU
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
06/13/2019 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKIKO HARADA,
YOSHITO TANAKA, and TIMOTHY C. HADINGHAM
Appeal 2018-004015 1
Application 15/216,224
Technology Center 1600
Before FRANCISCO C. PRATS, JOHN E. SCHNEIDER, and
RYAN H. FLAX, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to a method of
controlling a pest by electrostatically spraying a pesticidal composition. The
Examiner rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The sole ground of rejection before us for review is the Examiner's
rejection of claims 1-8 under 35 U.S.C. § 103(a) for obviousness over
1 Appellants state that "[t]he real party in interest in this appeal is
SUMITOMO CHEMICAL COMPANY, LIMITED." Br. 3.
Appeal2018-004015
Application 15/216,224
Pirrie,2 Mori, 3 Vogt,4 and Tanaka. 5 Final Action 3-9 (entered April 21,
2017).
Claim 1 is the only independent claim on appeal and reads as follows:
1. A method of controlling a pest comprising:
electrostatically spraying, to the pest or a place where the
pest inhabits, a composition comprising
(1) an ester compound represented by the following
formula ( 1):
(2) at least one cyclic compound selected from the group
consisting of a first cyclic compound represented by formula
(2a):
• • ~ (2a)
wherein X 1 is an oxygen atom or an alkylimino group
having 1 to 8 carbon atoms, X2 is a methylene group, an oxygen
atom or an alkylimino group having 1 to 8 carbon atoms, and
R 1 is a hydrogen atom or a methyl group, and
a second cyclic compound represented by formula (2b ):
2 WO 2007 /083164 A2 (published July 26, 2007).
3 US 2003/0195119 Al (published Oct. 16, 2003).
4 US 6,071,857 (issued June 6, 2000).
5 US 6,051,606 (issued Apr. 18, 2000).
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Application 15/216,224
Br. 15.
· • • (2b)
wherein R2 is a hydrogen atom or a methyl group, and
(3) dipropylene glycol n-propyl ether.
DISCUSSION
The Examiner's Prima Facie Case
The Examiner cited Pirrie as disclosing a method of controlling pests
by electrostatically spraying a pesticidal composition. Final Action 3-4.
The Examiner cited Mori as evidence that it would have been obvious
to control pests by electrostatically spraying the ester compound of formula
(1) of Appellants' claims. Id. at 4-5.
The Examiner cited Vogt as evidence that it would have been obvious
to include gamma-butyrolactone, a compound encompassed by formula (2a)
of Appellants' claims, in an electrostatically sprayed pesticidal composition.
Id. at 5-6. The Examiner found that Vogt also rendered obvious the
inclusion of propylene carbonate in such a composition. Id. at 6.
The Examiner cited Tanaka as evidence that it would have been
obvious to include dipropylene glycol n-propyl ether in an electrostatically
sprayed pesticidal composition. Id. at 6-7.
Based on the references' combined teachings, the Examiner
determined that a skilled artisan would have considered it obvious to use
Pirrie's electrostatic spray device to deliver Mori's pesticidal compound
"because Pirrie teaches that the present invention is highly versatile with
application to a wide range of active ingredients, including those not
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Appeal2018-004015
Application 15/216,224
generally thought to be water miscible (such as many fragrances and pest
control agents) (see page 5, lines 21-23)." Id. at 7-8.
The Examiner determined that a skilled artisan would have been
motivated to include gamma-buytrolactone or propylene carbonate in Mori's
electrostatically sprayed composition "because gamma buytrolactone is [a]
suitable water-immiscible solvent[] in which the pesticides dissolve while
propylene carbonate serve[ s] as gelling agent since Gels are particularly
suitable for pesticides packing into water soluble bags or sachets, which
quickly dissolve when put into the water as taught by Vogt et al." Id. at 8.
The Examiner determined that a skilled artisan also would have been
motivated to use dipropylene glycol n-propyl ether in Mori's
electrostatically sprayed composition because Tanaka teaches that
"dipropylene glycol monoalkyl ethers have pesticidal propert[ies] and
perform well when synergized with other pesticide[s]." Id. at 9.
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
primafacie case ofunpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), although the Supreme
Court emphasized "an expansive and flexible approach" when analyzing the
issue of obviousness, id. at 415, the Court also reaffirmed the importance of
determining "whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue." Id. at 418 ( emphasis
added).
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Application 15/216,224
Thus, even under the flexible analysis outlined in KSR, "[ o ]bviousness
requires more than a mere showing that the prior art includes separate
references covering each separate limitation in a claim under examination."
Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir.
2011 ). Rather, "[i]n determining whether obviousness is established by
combining the teachings of the prior art, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal
quotations omitted). In other words, even under KSR, "obviousness
concerns whether a skilled artisan not only could have made but would have
been motivated to make the combinations or modifications of prior art to
arrive at the claimed invention." Belden Inc. v. Berk-Tek LLC, 805 F.3d
1064, 1073 (Fed. Cir. 2015).
Having carefully considered the arguments and evidence advanced by
Appellants and the Examiner, we find that the preponderance of the
evidence does not support the Examiner's conclusion of obviousness as to
Appellants' claim 1. In particular, although the Examiner has identified
prior art separately describing the limitations of claim 1, Appellants
persuade us that the Examiner has not explained sufficiently why the cited
references would have suggested combining the specific ingredients recited
in claim 1 in an electrostatically sprayed composition.
Appellants' claim 1 recites controlling a pest by electro statically
spraying a composition having at least three specific ingredients:
(1) a compound of formula (1 ),
(2) a compound of formula (2a) or formula (2b ), and
(3) dipropylene glycol n-propyl ether.
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Application 15/216,224
Br. 15. Appellants' Specification discloses that gamma-butyrolactone is a
preferred compound of formula 2a. Spec. 10.
Turning to the prior art, Pirrie discloses electrostatically sprayed
compositions, useful for applying pesticides, that contain (a) a propellant-
free non-aqueous component and (b) 0.1-25% water "as adjuvant to modify
the viscosity and/or resistivity and/or surface tension of the composition
optionally together with additional electrolytes." Pirrie, abstract.
Pirrie's propellant-free component (a) includes a carrier, which may
be an organic solvent in which an active agent is dispersed. Id. at 6. Pirrie
discloses that a variety of solvents are suitable carriers, including polyol
ethers such as glycol ethers, as well as ethylene glycol and propylene glycol.
Id. at 7.
Pirrie discloses that a "particularly suitable carrier is a mixture of
dipropylene glycol methyl ether and propylene glycol methyl ether used for
example in a ratio of 1 :9 to 9: 1 w/w, i.e. the carrier consists of 10-90% w/w
dipropylene glycol methyl ether and 10-90% w/w propylene glycol methyl
ether." Id.
As the Examiner found, Pirrie discloses that its composition "is highly
versatile with application to a wide range of active ingredients, including
those not generally thought to be water miscible (such as many fragrances
and pest control agents) and for which hitherto formulation with water has
been avoided." Id. at 5.
While Pirrie does not disclose electrostatically spraying any of the
ingredients recited in Appellants' claim 1, Mori discloses that the compound
of formula (1) of Appellants' claim 1 has "an excellent pesticidal efficacy."
Mori, abstract.
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Application 15/216,224
Mori discloses that its pesticidal compound is amenable to
combination with a variety of carriers, including water as well as organic
solvents. Id. ,-i 69.
As the Examiner found, Mori also discloses that compositions
containing its pesticidal compound can be diluted with water to produce a
sprayed formulation for controlling pests. Id. ,-i 81-82.
As Appellants contend, however, Mori's exemplified sprayed
compositions contain significant amounts of propellant (liquefied petroleum
gas), unlike the sprayed formulations of Pirrie. See id. ,-i,-i 112, 113.
Even assuming, for the sake of argument, that despite the significant
differences between the sprayed formulations of Pirrie and Mori, a skilled
artisan would nonetheless have considered it obvious to electrostatically
spray Mori' s compound in the manner taught by Pirrie, we are not persuaded
that the Examiner has explained sufficiently why it would have been obvious
to include gamma-butyrolactone, or dipropylene glycol n-propyl ether, in the
sprayed composition.
The Examiner cited Vogt as evidence that it would have been obvious
to include gamma-butyrolactone, a compound encompassed by formula (2a)
of Appellants' claim 1, in an electrostatically sprayed composition
containing Mori's pesticidal compound. Final Act. 8. Vogt discloses a
water-free liquid pesticidal composition that contains a hydrophobic
pesticide dissolved in an organic solvent, in combination with a mixture of
specific alkylphenol ethoxylate surfactants. Vogt, abstract. As the
Examiner found, Vogt discloses gamma-butyrolactone as a preferred water-
miscible pesticide-dissolving solvent for use in its compositions. Id. at
2:53-59.
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Application 15/216,224
We are not persuaded, however, that Vogt' s disclosure of a preference
for gamma-butyrolactone in its particular formulations would have
suggested to a skilled artisan that, instead of one of the many carriers
expressly disclosed in Mori for use with its pesticidal ester compound, one
should use gamma-butyrolactone. The Examiner, moreover, has not
explained with sufficient specificity why Vogt' s disclosure of a preference
for gamma-butyrolactone in its particular formulations would have
suggested that gamma-butyrolactone would be suitable, or even useful, in an
electrostatically sprayed composition, given Pirrie's disclosure that a
particular set of ingredients, distinct from those described in Vogt, should be
used when formulating electrosprayed compositions. We are not persuaded,
therefore, that the Examiner has shown by a preponderance of the evidence
that it would have been obvious to include gamma-butyrolactone in an
electrostatically sprayed composition containing Mori' s pesticidal
compound.
We are also not persuaded that the Examiner has shown by a
preponderance of the evidence that it would have been obvious to
additionally include dipropylene glycol n-propyl ether in an electrostatically
sprayed composition containing Mori's pesticidal compound and gamma-
butyrolactone.
The Tanaka reference cited by the Examiner discloses that the
pesticidal activity of a particular compound, 2-methyl-4-oxo-3-(2-
propynyl)cyclopent-2-enyl-3-(2,2-dichlorovinyl)-2,2-
dimethylcyclopropanecarboxylate, is potentiated by a number of propylene
glycol monoalkyl ethers, and dipropylene glycol monoalkyl ethers. Tanaka
1:30-2:41.
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Application 15/216,224
Tanaka discloses that dipropylene glycol n-propyl ether, recited in
Appellants' claim 1, is among the activity-potentiating compounds. See id.
at 1 :30-2:25.
The Examiner, however, identifies no persuasive evidence suggesting
that the specific compound recited in Appellants' claim 1, dipropylene
glycol n-propyl ether, would potentiate the pesticidal activity of any
compound other than the particular pesticidal compound synergized in
Tanaka, much less the specific compound disclosed in Mori. We are not
persuaded, therefore, that Tanaka would have suggested including the
dipropylene glycol n-propyl ether of Appellants' claim 1 in an
electrostatically sprayed composition containing Mori' s pesticidal
compound and gamma-butyrolactone.
As motivation for including the particular ether recited in Appellants'
claim 1 in an electrosprayed pesticidal composition, the Examiner also
appears to rely on Tanaka's disclosure that dipropylene glycol monoalkyl
ethers were known to have pesticidal activity. See Final Act. 9 ("Tanaka et
al. teach that dipropylene glycol monoalkyl ethers have pesticidal property
.... ").
Tanaka's disclosure in that regard is equivocal at best, stating:
Japanese unexamined patent publication No. Hei 2-
304004-A discloses propylene glycol monoalkyl ethers and
dipropylene glycol dialkyl ethers as active ingredients of a
termite-controlling agent. However, in order to control pests,
the efficacy of the propylene glycol monoalkyl ethers and
dipropylene glycol dialkyl ethers in the termite-controlling
agent is not satisfactory.
Tanaka 1 :21-27 ( emphasis added).
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Appeal2018-004015
Application 15/216,224
Given the ambiguity in Tanaka's disclosure regarding the pesticidal
activity of dipropylene glycol monoalkyl ethers, Tanaka's failure to describe
the specific ether of Appellants' claim 1 as having pesticidal activity, as well
as the fact that the specific ether of Appellants' claim 1 is one of a large
number of other compounds that might or might not have pesticidal activity,
we are not persuaded that Tanaka would have suggested including the
dipropylene glycol n-propyl ether of Appellants' claim 1 in an
electrostatically sprayed composition containing Mori' s pesticidal
compound and gamma-butyrolactone.
In sum, for the reasons discussed, we are not persuaded that the
Examiner has shown by a preponderance of the evidence that a skilled
artisan would have considered it obvious to prepare and electrostatically
spray a composition having the ingredients required by Appellants' claim 1.
We, therefore, reverse the Examiner's rejection of claim 1, and its
dependents, over the cited references.
SUMMARY
For the reasons discussed, we reverse the Examiner's rejection of
claims 1-8 under 35 U.S.C. § 103(a) for obviousness over Pirrie, Mori,
Vogt, and Tanaka.
REVERSED
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