Ex Parte HUEFFER et al

Patent Trial and Appeal Board

Oct 12, 2018

13720035 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/720,035 12/19/2012 Stephan HUEFFER
22850 7590 10/16/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
408802US99 2893
EXAMINER
SHIN, MONICA A
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
10/16/2018 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@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHAN HUEFFER, ALEJANDRA GARCIA MARCOS,
PAUL KLINGELHOEFER, and GERHARD SCHNABEL
Appeal2017-003937
Application 13/720,035
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREY N. FRED MAN, and
DEBORAH KATZ, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2,3 under 35 U.S.C. § 134 involving claims to an
agricultural formulation. The Examiner rejected the claims as indefinite, as
being of improper dependent form, and as obvious. We have jurisdiction
under 35 U.S.C. § 6(b ). We affirm-in-part.
1 Appellants identify the real party in interest as BASF SE (see App. Br. 2).
2 We have considered and herein refer to the Specification of Dec. 19, 2012
("Spec."); Non-Final Office Action of Mar. 8, 2016 ("Non-Final Act.");
Appeal Brief of Aug. 8, 2016 ("App. Br."); Examiner's Answer of Nov. 17,
2016 ("Ans.") and Reply Brief of Jan. 17, 2017 ("Reply Br.").
3 An oral hearing was held on October 9, 2018 but Appellants waived
transcription due to the unavailability of a court reporter.
Appeal2017-003937
Application 13/720,035
Statement of the Case
Background
"[O]rganic phosphorus-comprising compounds ... have a range of
effects on organisms such as weeds, vermin and undesired fungi" but a
"problem when applying many of these organic compounds is that they are
capable of reacting with soil components ... whereby they are converted
into a form which is insoluble in water and hence no longer available to
plants" (Spec. 1 :33-39). "It was therefore an object to provide formulations
whose organic phosphorus compounds can be taken up readily by the soil or
plants, for example in such a manner that an absorption capacity over a
period of up to 8 weeks is ensured" (Spec. 2: 16-18).
The Claims
Claims 7-9 and 18-25. Claim 7, 22, and 25 are representative and
read as follows:
7. A formulation, comprising:
(A) at least one aminocarboxylate selected from the
group consisting of methylglycine diacetate (MGDA), an alkali
metal salt of MGDA, glutamic acid diacetate (GLDA), an alkali
metal salt of GLDA, iminodisuccinate, hydroxyethylimine
diacetate, ethyleneiminodisuccinate, and an alkali metal salt of
iminodisuccinate, hydroxyethylimine diacetate or
ethyleneiminodisuccinate;
(B) at least one organic compound selected from the
group consisting of an organic phosphate, an organic
phosphonate, and an organic phosphite and a salt of an organic
phosphate, an organic phosphonate, or an organic phosphite;
and
(C) optionally water.
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22. The formulation according to claim 19, wherein a solids
content weight ratio of the aminocarboxylate (A) to the organic
compound (B) is in a range of 1.97 to 6.00.
25. The formulation according to claim 22, wherein
application of the formulation to soil results in less
mineralization of the glyphosate than does application of a
formulation comprising the same amount of glyphosate but
comprising ammonium sulfate instead of the aminocarboxylate.
The Issues
A. The Examiner rejected claims 22 and 23 under 35 U.S.C. § 112,
second paragraph as indefinite (Non-Final Act. 3).
B. The Examiner rejected claim 25 under 35 U.S.C. § 112, fourth
paragraph as being of improper dependent form (Non-Final Act. 4).
C. The Examiner rejected claims 7-9 and 18-25 under 35 U.S.C. §
I03(a) as obvious over Sedun,4 Pifer, 5 and Berger6 (Non-Final Act. 5-12).
A. 35 USC§ 112, second paragraph
The Examiner finds:
Claim 22 recites that the weight ratio of (A) to (B) is "in a
range of 1.97 to 6.00." It is unclear if the aforementioned
recited is intended to mean that the ratio of (A) to (B) is 1.97 to
6.00 (i.e. weight ratio of (A):(B) is 1.97:6.00), or if is intended
to mean that the weight ratio of (A) to (B) is in a range of
1.97: 1 to 6.00: 1. Similarly for claim 23.
(Non-Final Act. 3).
Appellants contend
the ranges recited in these claims are ranges of the ratio of the
aminocarboxylate (A) to the organic compound (B). That is, in
4 Sedun et al., US 2003/0181332 Al, published Sept. 25, 2003.
5 Pifer et al., US 2006/0009360 Al, published Jan. 12, 2006.
6 Berger et al., US 5,703,015, issued Dec. 30, 1997.
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Application 13/720,035
both claims, 1.97 is the lower limit of the ratio of (A) to (B). In
claim 22, 6.00 is the upper limit of the ratio of (A) to (B); and
in claim 23, 2.32 is the upper limit of the ratio of (A) to (B).
(App. Br. 15). Appellants contend "when the claims are read
in light of the examples on pages 11-13 of the specification, which have
variable weight ratios of component (A) to component (B) ... those skilled
in the art would be informed with reasonable certainty about the meaning of
claims 22 and 23" (id.).
We agree with the Examiner because "if a claim is amenable to two or
more plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008).
Here, the Examiner provides two plausible but inconsistent
interpretations of claims 22 and 23 (see Non-Final Act. 3). We have
reviewed the Specification, including the portion identified by Appellants,
but do not find that the specific examples in the Specification sufficient to
clarify this issue (see Spec. 11-13). The examples may inherently comprise
particular ratios, but Appellants do not identify any guidance in the
Specification regarding desirable ratio ranges, or whether the ranges should
be expressed as a ratio range from 1. 97: 1 to 6. 00: 1 or a range of about a
1.97:6.00 ratio as explained by the Examiner (see Non-Final Act. 3). This
indefiniteness can best be addressed by claim amendments proposed by
Appellants. As Zietz notes "during patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
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Application 13/720,035
explored, and clarification imposed." In re Zietz, 893 F.2d 319,321 (Fed.
Cir. 1989).
B. 35 US. C. § 112, fourth paragraph
The Examiner finds "Claim 25 appears to merely recite a property of
the composition of claim 22 rather than further structurally limiting the
composition of claim 22. This is supported by the data on the instant
Specification's Table 1" (Non-Final Act. 4).
Appellants contend "claim limitations may be structural or functional.
In this case, claim 25 recites a functional limitation not recited in claim 22.
Therefore, claim 25 does further limit the claim on which it depends" (App.
Br. 16).
We agree with Appellants because claim 25 further limits the genus of
formulations recited in claim 22 to those that result in less mineralization
relative to compositions with ammonium sulfate. To the extent that some
compositions may not result in less mineralization, claim 25 excludes those
compositions and therefore limits claim 22. The Examiner provides no
evidence that every composition of claim 22 inherently would satisfy this
requirement of claim 25.
C. 35 USC§ 103(a) over Sedun, Pifer, and Berger
The Examiner finds Sedun teaches "an environmentally safe selective
herbicide that includes at least one metal component and at least one
chelating agent" where the chelating agents may include GLDA and MGDA
(see Non-Final Act. 6). The Examiner finds Sedun teaches the "herbicidal
composition can further include other herbicides as a co-active ingredient.
Amongst those listed as herbicides that can be used as a co-active ingredient
includes glyphosate" (Non-Final Act. 7). The Examiner finds Sedun
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Application 13/720,035
discloses overlapping ranges for the ratio of chelating agent to herbicide (see
Non-Final Act. 7-8).
The Examiner finds Pifer teaches "adjuvant formulations that are
particularly useful with glyphosate" (Non-Final Act. 8). The Examiner finds
Berger teaches "ethoxylated tallowamine, is an herbicide surfactant well
known to potentiate the herbicidal activity of glyphosate" (Non-Final Act.
9).
The Examiner finds the ordinary artisan would have had reason "to
add glyphosate as an additional herbicide to Sedun's composition in order to
widen the spectrum of plant pests controlled by the composition" (Non-Final
Act. 10).
The issues with respect to this rejection are:
(i) Does the evidence of record support the Examiner's conclusion
that Sedun, Pifer, and Berger render the claims prima facie obvious?
(ii) If so, have Appellants presented evidence of secondary
considerations, that when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness?
Findings of Fact
1. Sedun teaches "an environmentally compatible, selective
herbicidal composition comprising a combination of a metal component and
a chelating agent" (Sedun ,r 10).
2. The Specification teaches in an "embodiment of the present
invention, compound (A) is selected among methylglycine diacetate
(MGDA) and glutamic diacetate (GLDA)" (Spec. 3:25-26)
3. Sedun teaches a "variety of chelating agents can be used in the
selective herbicide compositions of the present invention to form a metal
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Application 13/720,035
chelate. By way of non-limiting example, suitable chelating agents include
... glutamicaciddiacetic acid (GLDA) ... hydroxyiminodiacetic acid
(HIDA) ... methylglycinediacetate (MGDA)" (Sedun ,r 13).
4. Sedun teaches the "chelating agent of the present invention can
also be added to the herbicidal composition in a variety of forms ... it can
be a free acid. In another embodiment the chelating agent can be a salt.
Preferably, in this embodiment, the chelating agent is added as a sodium
salt" (Sedun ,r 16).
5. The Specification teaches that in an "embodiment of the present
invention, compound (B) is selected from among glyphosate and salts of
glyphosate" (Spec. 5:5---6).
6. Sedun teaches that "the herbicidal compositions of the present
invention can include other herbicides as a co-active ingredient. The co-
active ingredients that can be added as additional herbicides include
glyphosate ... ammonium salts, and combinations thereof' (Sedun ,r 25).
7. Sedun teaches, in Example 11, the effect of "a mixture of
FeEDDS and FeMGDA on daisy (Bellis perennis), dandelion (Taraxacum
officinale) and a turf bentgrass (Agrostis sp.)" where the "solutions were
made from NaEDDS (Octaquest E30, Octel) and NaMGDA (Trilon M
liquid, BASF, Germany). Ammonium sulfate was added at a concentration
of 1 %" (Sedun ,r 52).
8. The Specification teaches preparation of five concentrates, a
control V-K.1 and test concentrates K.2 to K.5, each containing glyphosate
and the test concentrates also containing MGDA or GLDA (see Spec. 11 :20
to 12: 14 ). The Specification teaches that the formulations were diluted to
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Application 13/720,035
provide spray solutions including control solution V-SL.1 and test solutions
SL.2 to SL.5 (see Spec. 13: 15-20).
9. Table 1 of the Specification is reproduced below:
Table 1 : Studies of soil samples ,------········-·························---:----------~----------------------------------------- ........ , ............... _ ··········-r .. ·····--------·······,
L ...................... _.J .. ___ Y:~~:.! .... _J .... ~~:~ ............ 1 ............ §.!:::;3 __ -f-··········-~~::: ............. 1 ..... ~~ ... ? ........... \ I Minerallz.ed i 1236 i 410 ! 25-0 l 246 l 700 I
I :;ic+ 92~- 30.6 [- -,e:, !
1
1
-------,,,, I s,, J
) glyphosate ! l ( 1 i I
l. ________ .... r?"l .... ___ ... J .. --············------ 1· ················--········J···············-------·-·······-L ................................ ) ......... ·-········--~
I E.h-Jted_ i to4 930 ·1 "1090 'I 1094 i 640 11
-- glyphosate J i '
....__[_mg]····-----J····-·············------(----···············-·······L··············-------·-······~'-·······························j_······-················'
Table 1 shows data on an experiment that compares the "amount of eluted
glyphosate and the amount of mineralized glyphosate fixed in the soil"
(Spec. 14:8-18).
10. Table 2 of the Specification is reproduced below:
Table 2: Studies of soi! sarnples in long-term experiments
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Application 13/720,035
Table 2 shows data on an experiment showing "that the availability of
glyphosate by the addition of aminocarboxylates (A) is at a high level
despite a certain water hardness (spray solution) and despite the presence of
soil minerals. Even SL. I 0, which comprises only 26% of the glyphosate
fraction, compared with V-SL.6, outperformed V-SL.6, in respect of the
elutable glyphosate fraction" (Spec. 15 :4--11 ).
Principles of Law
The Examiner has the initial burden of establishing a prima facie case
obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992 ). "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).
Prima facie obviousness can be rebutted by presenting evidence of
secondary considerations and when such evidence is submitted, all of the
evidence must be considered anew. In re Piasecki, 745 F.2d 1468, 1472-
1473 (Fed. Cir. 1984).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Non-Final Act. 5-12; FF 1-7) and agree
that the claims are rendered prima facie obvious by Sedun, Pifer, and Berger.
Appellants do not contest this prima facie case of obviousness, but
instead contend the Examiner "committed reversible error in not giving
proper weight to Appellants' rebuttal evidence of unexpected results" (App.
Br. 6). Appellants contend, relying upon Table 1 of the Specification (see
FF 9), that "experimental data in the present specification show that a
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Application 13/720,035
formulation comprising glyphosate with an aminocarboxylate (e.g., MGDA)
resulted in less mineralization of the glyphosate compared to a formulation
comprising glyphosate with ammonium sulfate" (App. Br. 7-8). Appellants
similarly contend that the results of Table 2 also demonstrate unexpected
results (App. Br. 9-10; cf FF 10).
The Examiner responds that "absent evidence to the contrary, Sedun's
composition is expected to demonstrate the same or substantially similar
effects as the instantly claimed composition" (Ans. 9).
We agree with Appellants that when an obviousness rejection is based
on a combination of components in the prior art reference as in the instant
situation, the comparison to show unexpected results need only be between
the closest prior art reference and the claimed invention. In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). It need not be between
the claimed invention and the invention suggested by the combined
teachings in the prior art reference or references. "Unexpected results are
shown in comparison to what was known, not what was unknown."
Millennium Pharm., Inc. v. Sandoz, Inc., 862 F.3d 1356, 1368 (Fed. Cir.
2017). Appellants were "not required to create the [ claimed invention],
when the product had not been created in the prior art." Id.
We also agree with Appellants that the evidence demonstrates
unexpected results for the tested MGDA and GLDA containing
compositions (FF 8-10). That Sedun suggests a genus of compositions
encompassing those claims may reasonably render specific compositions
prima facie obvious, but there is no reasonable expectation of the particular
unexpected results shown here where even the SL.5 composition at 52.2%
mineralization was significantly reduced relative to the control V-SL.1
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Application 13/720,035
composition at 92.2% (FF 9). Similarly, each of the other compositions
reasonably demonstrated "a 'difference in kind' that is required to show
unexpected results." In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)
given the significantly different results obtained.
But we also note that unexpected results must be "commensurate in
scope with the degree of protection sought by the claimed subject matter."
Id. In this case, we find that the results are commensurate in scope with
claims 19--25 that are limited to compositions where the aminocarboxylate is
selected from MGDA and GLDA. However, we find that the results are not
commensurate in scope with claims 7-9 and 18, which include
aminocarboxylates for which no unexpected results were demonstrated
including iminodisuccinate, hydroxyethylimine diacetate, and
ethyleneiminodisuccinate.
We, therefore, reverse the obviousness rejection as to claims 19--25
and affirm the obviousness rejection as to claims 7-9 and 18.
Conclusion of Law
(i) The evidence of record supports the Examiner's conclusion that
Sedun, Pifer, and Berger renders the claims prima facie obvious.
(ii) Appellants have presented evidence of secondary considerations,
that when weighed with the evidence of obviousness, is sufficient to support
a conclusion of non-obviousness for claims 19--25. Appellants have not
presented evidence of secondary considerations, that when weighed with the
evidence of obviousness, is sufficient to support a conclusion of non-
obviousness for claims 7-9 and 18.
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SUMMARY
In summary, we affirm the rejection of claims 22 and 23 under 35
U.S.C. § 112, second paragraph as indefinite.
We reverse the rejection of claim 25 under 35 U.S.C. § 112, fourth
paragraph as being of improper dependent form.
We affirm the rejection of claims 7-9 and 18 under 35 U.S.C. §
103(a) as obvious over Sedun, Pifer, and Berger.
We reverse the rejection of claims 19-25 under 35 U.S.C. § 103(a) as
obvious over Sedun, Pifer, and Berger.
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-IN-PART
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