Ex Parte Karl et al

Patent Trial and Appeal Board

Jul 31, 2017

10596677 (P.T.A.B. Jul. 31, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/596,677 06/21/2006 Ulrich Karl 074014-0050-US-286532 9328
123223 7590 08/02/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ULRICH KARL, HEINZ HEISSLER,
JOHN H. THOMAS, HOLGER SCHOPKE, and
JOACHIM BURGER1
Appeal 2016-001536
Application 10/596,677
Technology Center 1600
Before JEFFREY N. FREDMAN, TAWEN CHANG, and
RYAN H. FLAX, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
insecticide or repellent composition for application to textiles and plastics,
which have been rejected as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The Specification states that impregnation of textiles such as curtains
and bednets with insecticides is a known method of controlling spread of
1 Appellants identify the Real Party in Interest as BASF SE. (Br. 1.)
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Application 10/596,677
infectious diseases that are transmitted by insects. (Spec. 1:22—25.)
However, as the Specification goes on to explain, “[sjince this provides only
a loose adhesion of the insecticide molecules on the surface of the fibers,
this treatment is not wash-permanent and has to be repeated after each
washing.” {Id. at 1:25—27.) According to the Specification, it is therefore
advantageous to utilize “long-lasting, insecticide-treated nets which are
wash-permanent.” {Id. at 1:33.) Further according to the Specification, this
has been variously achieved in the prior art through the application to the
insecticide-treated fabric of film-forming components, polymer binders,
and/or cross-linking agents. {Id. at 2:1—40.)
Claims 37, 38, 63—65, 67—69, and 71—74 are on appeal. Claim 37 and
38 are illustrative and reproduced below (formatting added):
37. An insecticide or repellent composition for application to
a textile material or plastics material which composition
comprises a mixture including
a) at least one insecticide and/or repellent as component A, and
b) at least one acrylic binder as component B1 obtainable by
emulsion polymerization of the following components:
bla) 30 to 85% by weight of n-butylacrylate as component
B1A;
b2b) 0 to 65% by weight of at least one monomer of
formula I as component BIB
Ri y--OR5
R*
wherein R1 is H or methyl, R2 is H and R3 is methyl, ethyl,
or 2-ethylhexyl, as component BIB;
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Application 10/596,677
blc) 1 to 5% by weight of at least one monomer of
formula II
/
V- N
H
R4
■OH
(H)
wherein R4 is H or methyl, R5, R6, and R7 each are H as
component B1C;
bid) 1 to 10% by weight of at least one monomer of
formula III
o.
V""X
m
wherein R8 and R9 are H and X is H, OH, NH2, OR11 OH,
glycidyl or a group of the formula
or!&
^ /
'■0
wherein
R10 is selected from the group consisting of Ci- to Cio-alkyl
which may be branched or linear and substituted or
unsubstituted aryl;
R11 is selected from the group consisting of Ci- to Cio-
alkylene and substituted or unsubstituted arylenes;
as component BID;
ble) further monomers which are copolymerizable with the
monomers mentioned above selected from
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Application 10/596,677
b lei) 0 to 30% by weight of component B1E1; and/or
ble2) 0 to 40% by weight of component B1E2;
wherein the sum of components B1A, BIB, B1C and
optionally BID and B1E is 100% by weight.
38. An insecticide or repellent composition as claimed in
claim 37, wherein component B1 is obtainable by emulsion
polymerization of the following components:
bla) 81.0 % by weight of n-butylacrylate as component
B1A;
blc) 2.0 % by weight of N-methylol methyacrylamide as
component B1C;
bid) 1.0 % by weight of acrylic acid as component BID;
blel) 16 % by weight of acrylic nitrile as component
B1E1.
(Br. 27—29 (Claims App.).)
Claims 37, 38, 63—65, 67—69, 71, 72, and 74 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Marrs2 in view of Gordon.3
(Final Act. 3.4)
Claim 73 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Marrs in view of Gordon in further view of Laas.5 (Final Act. 8.)6
2 Marrs et al., EP0382382 Al, effective date January 26, 1990 (“Marrs”).
3 Gordon et al., US 3,713,868, issued January 30, 1973 (“Gordon”).
4 Examiner’s Final Action, mailed July 1, 2014 (“Final Act.”).
5 Faas et al., US 6,777,523 Bl, issued August 17, 2004 (“Faas”).
6 We limit our consideration of the merits of the appealed rejection to the
elected species. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987).
Thus, we read claim 37 as limited to alpha-Cypermethrin as the insecticide
and/or repellant (Component A) and to the acrylic binder (Component Bl)
recited in claim 38. (See Response to Election/Restriction filed on Feb. 28,
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DISCUSSION
Issue
The Examiner rejected claims 37, 38, 63—65, 67—69, 71, 72, and 74
under 35 U.S.C. § 103(a) as obvious over the combination of Marrs and
Gordon. The Examiner rejected claim 73 under 35 U.S.C. § 103(a) as
obvious over the combination of Marrs, Gordon, and Laas. The same issues
are dispositive for both rejections, and we discuss them together.
The Examiner finds that Marrs discloses all of the limitations of claim
37 except that Marrs “fail[s] to teach the specific polymer combination of
Bl.” (Final Act. 4—5.) The Examiner finds that Gordon discloses acrylate
polymer combinations that can be adjusted by “routine optimization ... to
formulate polymer Bl.” {Id. at 5.) The Examiner concludes that “[o]ne of
ordinary skill in the art would have been motivated to combine cypermethrin
with polymer Bl because Marrs . . . teach[es] polymers [] incorporated in
polyester nets with cypermethrin were known at the time of the invention
and Gordon . . . teaches polymers encompassing B1 impart beneficial
properties to fabric” such as increased water and solvent resistance. {Id.
at 6.) Accordingly, the Examiner further concludes that it would have been
obvious to a skilled artisan at the time of the invention to combine the
teachings of Marrs and Gordon to formulate Appellants’ claimed
composition with a reasonable expectation of success. {Id. at 5—6.)
Appellants contend that there was “no motivation in the art to modify
the polymer binders of Marrs with the acrylate copolymer of Gordon.” (Br.
10.) In addition, Appellants contend that “a person of ordinary skill would
2011.) We likewise read claim 73 as limited to an isocyanurate based on
HMDI as the fixative. {Id.)
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not possess a reasonable expectation of a successful result of obtaining an
effective insecticidal coating of a fabric substrate with the acrylate
copolymer of Gordon in combination with an insecticidal compound.” {Id.
at 14.) Appellants further contend that the claimed compositions are non-
obvious because they produce unexpected results. {Id. at 19-21.)
The issues with respect to this rejection are (1) whether a person of
ordinary skill in the art would have reason to combine the teachings of Marrs
and Gordon with a reasonable expectation of success; and (2) if so, whether
Appellants have presented evidence of unexpected results that, when
weighed with the evidence supporting obviousness, shows that the claimed
compositions would not have been obvious.
Findings of Fact
FF1. Marrs teaches that “[t]he use of pyrethroid insecticides for
‘impregnation’ of mosquito nets and curtains as a means of killing
mosquitoes and other flies that settle on the treated materials is well known.”
(Marrs 2:8—9.)
FF2. Marrs teaches that “it is desirable to enhance the persistence of
insecticides on treated materials by making them wash-proof, to some
extent.” {Id. at 2:13—14.)
FF3. Marrs teaches “a method of treating fabrics to impart washproof
insecticidal properties” by treating fabrics with a “composition comprising
an insecticidal active ingredient and a polymeric substance. . . . The effect
of the polymeric substance is to increase the adhesion of the insecticidal
substance to the fabric” to increase wash fastness. (Id. at 2:17—22.)
FF4. Marrs teaches that suitable polymeric substances include
“polyethylene, polypropylene, an ethylene/vinyl acetate copolymer,
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polystyrene, a styrene/butadiene copolymer, polyacrylonitrile, a copolymer
or [sic] acrylonitrile, butadiene and styrene, polyvinyl chloride, an acrylate
polymer such as polymethylmethacrylate, or a polyamide.” {Id. at 2:42-45.)
FF5. Marrs teaches that fabrics impregnated with compositions of
insecticide and polystyrene or shellac binders lose wash fastness and
insecticidal activity over repeated washings. {Id. Examples 6—7.)
FF6. Gordon teaches “a foam-coated sheet material, particularly
having a densified, cured, acrylic-nitrile copolymeric foam coating thereon”
that confers “improved water and solvent resistance.” (Gordon col. 2, lines
12-14, 26.)
FF7. Gordon teaches that the acrylic foam is obtained from 50—100%
acrylate monomer, 5—20% nitrile monomer, 0.5—5.0% unsaturated
carboxylic monomer, and 0.5—5.0% amide. {Id. Table I.)
FF8. Gordon teaches that suitable acrylates include butyl acrylate,
nitriles include acrylonitrile, carboxylic monomers include acrylic acid, and
amides include methylolacrylamide. (Id. at col. 3, lines 36—50.)
FF9. Gordon teaches an example composition comprising 50% butyl
acrylate, 10% acrylonitrile, 1.5% acrylic acid, and 2% methylolacrylamide.
{Id. Example 2.)
FF10. Gordon teaches an example composition comprising 60% butyl
acrylate, 15% acrylonitrile, 2% acrylic acid, and 1% methylolacrylamide.
{Id. Example 3.)
FF11. Marrs and Gordon both teach compositions for the treatment of
fabrics. (Marrs 2:1; Gordon Abstract.)
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Analysis
Claims 37. 67-69. 71. 72, and 74
Appellants argue claims 37, 67—69, 71, 72, and 74 collectively (Br.
10), and we limit our analysis to claim 37 as representative. 37 C.F.R.
§ 41.37(c)(l)(iv). We adopt the Examiner’s findings of fact and reasoning
regarding the scope and content of the prior art (Final Act. 3—9; Ans. 3—9;
FF1—11) and agree that claim 37 is obvious over Marrs and Gordon. We
address Appellants’ arguments below.
Appellants first argue that “[t]here is no disclosure in Marrs of any
copolymer acrylate binder” and that “Marrs has a strong preference for a
polystyrene binder,” since the Examples disclosed in Marrs primarily utilize
polystyrene binders. (Br. 13.) Accordingly, Appellants suggest that a
person of ordinary skill in the art would “first try the other polymer
substances disclosed in Marrs before seeking out Gordon.” {Id. at 13—14.)
We are not persuaded. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Therefore, Appellants cannot overcome the instant obviousness rejection
with the argument that Marrs fails to teach certain acrylate binders, when it
was for this reason that Gordon was joined.
In addition, we find that Marrs does generally disclose acrylate-type
binders, both polymers and copolymers. (FF4.) “It is well settled that a
prior art reference is relevant for all that it teaches to those of ordinary skill
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in the art,” including non-preferred embodiments. In re Fritch, 972 F.2d
1260, 1265 (Fed. Cir. 1992). We also find that Marrs teaches that fabrics
treated with compositions of insecticide and polystyrene or shellac binders
lose wash fastness and insecticidal activity over repeated washings. (FF5.)
Accordingly, we conclude that a person of ordinary skill in the art would
have reason to look to other binders to develop a composition with more
persistent wash fastness and insecticidal activity, and in doing so would have
been directed by the disclosure of acrylate binders in Marrs to seek out
Gordon, which teaches that acrylate binders exhibit improved wash fastness.
(FF6.)
Appellants also argue that a skilled artisan would not have reason to
modify Marrs’ composition by using Gordon’s acrylate copolymer, because
the skilled artisan would expect the acrylate binders disclosed in Gordon to
“permanently fix[]” the insecticide, preventing its release and insecticidal
activity. {Id. at 12.) We are not persuaded. Gordon discloses compositions
exhibiting improved wash “resistance” (FF6) but does not teach or suggest
that this effect is permanent. Moreover, Marrs teaches that use of an
insecticide with a polymeric binder generally permits release of the
insecticide and insecticidal activity. (FF3.) Neither have Appellants cited
any persuasive evidence in support of their position. Johnston v. IVAC
Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorneys’ argument is no
substitute for evidence.”). Therefore, we find that a skilled artisan would not
have expected an acrylate binder to preclude release of the insecticide and
insecticidal activity.
In the alternative, Appellants urge that a skilled artisan would have no
reasonable expectation of success of arriving at the claimed invention by
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combining Marrs and Gordon given the unpredictable nature of the art. (Br.
15.) In particular, Appellants argue Gordon teaches combinations of
acrylate binders with pigments, fillers, and other ingredients, but not
insecticides. (Id.) Because the binding properties of pigments and fillers
differ from the binding properties of insecticides, Appellants contend that a
person of ordinary skill in the art would have had no reasonable expectation
that an acrylate binder and insecticide could be successfully combined to
produce both wash fastness and insecticidal activity. (Id. at 15—17.)
Again, we are not persuaded. Mere allegation of unpredictability does
not, without more, support a finding that a skilled artisan would have no
reasonable expectation of success in making a claimed combination,
particularly in this case where Marrs disclose the use of acrylate-type
binders with insecticides. (FF4.) As discussed above, “[attorneys’
argument is no substitute for evidence.” Johnston, 885 F.2d at 1581.
Finally, even if the art were unpredictable to some degree, “[ojbviousness
does not require absolute predictability of success.” In re O’Farrell, 853
F.2d 894, 903-04 (Fed Cir. 1988).
Finally, Appellants argue that, even if the Examiner has established a
prima facie case of obviousness, the claims are nevertheless non-obvious
because the subject matter of the claims exhibit unexpected results. (Br. 10,
18—23.) In support of their unexpected results argument, Appellants cite to
experimental data from the Specification and from Marrs. (Id. at 19—23.)
Appellants note that higher insect mortality rates are seen with the claimed
compositions, and over a greater number of wash cycles, as compared to the
example compositions from Marrs. (Id.)
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We are not persuaded and agree with the Examiner that there was “no
evidence presented to show that [Appellants’ claimed compositions produce]
an unexpected result.” (Final Act. 7.) As an initial matter, it is unclear that
Appellants have shown that the claimed composition is superior to Marrs’
composition, given the potential differences in study designs and methods.
As an example, Appellants suggest that higher drying temperature and
longer drying times in drying/curing the impregnated netting material may
decrease kill efficacy. (Br. 20.) Appellants do not show, however, that the
experiments disclosed in Marrs used comparable drying temperature and
times as the experiments disclosed in the Specification. As another example,
the netting used in the experiments described in the Specification is made of
polyester (Spec. 46:10), while that used in Marrs’ examples is made of nylon
(Marrs Example 6).
More importantly, Appellants have not shown that the results obtained
in the Specification were unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1371 (Fed. Cir. 2007) (explaining that “any superior property must be
unexpected to be considered evidence of non-obviousness” and rejecting
assertion of unexpected results where “the record is devoid of any evidence
of what the skilled artisan would have expected”). Although Appellants
essentially argue that the data speak for themselves, the opposite argument
could also fairly be made based on the same data, i.e., that persistent wash
fastness and insecticidal activity are exactly the results one would expect
from combining an insecticide with acrylate binders which were known to
improve wash fastness. For this reason, “it is well settled that unexpected
results must be established by factual evidence. ‘Mere argument or
conclusory statements in the specification does not suffice.’” In re Geisler,
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116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984)). We find the requisite evidence here lacking.
Accordingly, we affirm the Examiner’s rejection of claim 37. Claims
67—69, 71, 72, and 74 have not been argued separately and therefore fall
with claim 37. See Br. 10; 37 C.F.R. § 41.37(c)(l)(iv).
Claims 3 8 and 63—65
Appellants argue claim 387 and 63—65 collectively, and we limit our
analysis to claim 38 as representative.8 Appellants contend that “claim 38 is
drawn to a very specific insecticidal composition” and that, in order to
produce the polymer B1 of claim 38, a person of ordinary skill in the art
would first need to select from a plethora of suitable alkyl acrylates,
carboxylic acids, and amides, then further “select the exact concentration or
weight percent for each monomer.” (Br. 24—25.) Accordingly to
Appellants, all of this would “simply not [be] possible without [Appellants’]
claim.” (Id. at 24.)
The Examiner notes several examples in Gordon which are
compositionally similar to the polymer recited in claim 38, and which are
reproduced below in relevant part together with the composition of polymer
B1 of claim 38:
7 We note that, because we limit our consideration of the merits of the
appealed rejections to the elected species, see supra n. 6, we also read claim
37 as limited to the acrylic binder (Component Bl) recited in claim 38.
8 Appellants’ only argument specific to claims 64 and 65 is the conclusory
statement that “additional selections must then be made for claims 64 and
65.” (Br. 25.) Statements in a brief that “merely mention [a] claim . . . and
lack any type of separate, substantive argument concerning the claim” are
not sufficient to constitute separate argument regarding that claim under 37
C.F.R. § 41.37(c)(l)(vii). In re Kao, 639 F.3d 1057, 1065 (Fed. Cir. 2011).
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Polymer Bl of Claim 38 Gordon Example 2 Gordon Example 3
81.0% by weight of
n-butylacrylate
50 parts by weight
butyl acrylate
60 parts by weight
butyl acrylate
2.0% by weight of N-
methylol methyacrylamide
2 parts by weight
methylolacrylamide
1 part by weight
methylolacrylamide
1.0% by weight of
acrylic acid
1.5 parts by weight
acrylic acid
2 parts by weight
acrylic acid
16% by weight of
acrylic nitrile
10 parts by weight
acrylonitrile
15 parts by weight
acrylonitrile
The table above summarizes the relevant portions of the compositions of the
copolymer described in Gordon’s Examples 2 and 3 and the acrylic binder
B1 recited in claim 38. (Gordon col. 4, line 60-col. 5, line 10; Br. 29 (Claim
App.).)
Based on this comparison, the Examiner concludes that “[i]t would
have been routine optimization to adjust the amounts [in Examples 2 and 3
of Gordon] to formulate polymer Bl.” (Final Act. 5.)
We agree with the Examiner. Gordon discloses the same or similar
monomers in the same or similar amounts as those found in Appellants’
polymer Bl. (FF9, FF10.) From such a starting point, we disagree with
Appellants that modifying Gordon to arrive at polymer B1 would amount to
undue experimentation. “[Discovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill of the art”
and “obvious.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re
Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977). See also In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“The normal desire of
scientists or artisans to improve upon what is already generally known
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provides the motivation to determine where in a disclosed set of percentage
ranges is the optimum combination of percentages.”).
Accordingly, we affirm the Examiner’s rejection of claim 38. Claims
65—68, which are not separately argued, fall with claim 38. 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 73
The Examiner rejected claim 73 under 35 U.S.C. § 103(a) as obvious
over the combination of Marrs, Gordon, and Laas. Appellants argue that
Laas does not cure the alleged deficiencies in Marrs and Gordon. Because
we do not find Marrs and Gordon deficient in rendering claim 37 obvious,
we affirm the Examiner’s rejection of claim 73 for the same reasons.
SUMMARY
For the reasons above, we affirm the Examiner’s decision rejecting
claims 37, 38, 63—65, 67—69, and 71—74.
TIME PERIOD FOR RESPONSE
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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