Ex Parte Maekawa et al

Patent Trial and Appeal Board

Aug 19, 2016

11573112 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111573, 112 0410312007 Yuichi Maekawa
22428 7590 08/23/2016
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.
099790-0118 7280
EXAMINER
KASSA, JESSICA M
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUICHI MAEKA WA, YOSHIHISA ENDO, and
YOSHIHIRO ENOMOT0 1
Appeal2014-008177
Application 11/573, 112
Technology Center 1600
Before LORA M. GREEN, FRANCISCO C. PRATS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to controlled
release agricultural chemical compositions. The Examiner rejected all
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as Nippon Soda Co., Ltd.
(App. Br. 4).
Appeal2014-008177
Application 11/573, 112
STATEMENT OF THE CASE
Background
The Specification discloses agricultural chemical-containing resin
compositions that have controlled active chemical release properties as well
as "the effects of improving residual efficacy of the agricultural chemical
active ingredient and reducing loss into the environment by improving rain
resistance . . . reducing the total amount of agricultural chemical sprayed,
reducing the number of sprayings, and reducing toxicity to the sprayer ... "
(Spec. 7). The Specification discloses the compositions are "particularly
useful as a seed treatment agent and soil treatment agent." (Id.).
The resin compositions comprise "an agricultural chemical-containing
resin composition, including: a composition containing (1) an agricultural
chemical active ingredient, (2) styrene-maleic anhydride copolymer or
styrene-maleic anhydride copolymer-resin mixture, and (3) a release
controller, forming a compatible state or matrix." (Spec. 2-3). "A
compatible state or matrix refers to a state in which an agricultural chemical
active ingredient is dissolved or dispersed in a non-discontinuous
(continuous phase) poorly water-soluble resin." (Spec. 16).
The Claims
Claims 1, 2, 5-9, 13-20, 24-26, and 28 are on appeal. 2
Claims 1 and 14 are illustrative and read as follows:
2 Claims 3, 4, 10-12, 21-23, and 27 are cancelled. (Amendment, dated Sept.
16, 2013; Reply Br. 2).
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Application 11/573, 112
1. An agricultural chemical-containing resin composition
comprising a compatible state or matrix, wherein the
compatible state or matrix comprises an agricultural chemical
active ingredient, a styrene-maleic anhydride copolymer or
styrene-maleic anhydride copolymer-resin mixture, and a
release controller comprising hydrophobic white carbon.
14. An agricultural chemical formulation comprising at least
one agricultural chemical containing resin composition
containing a compatible state or matrix, wherein the compatible
state or matrix comprises an agricultural chemical active
ingredient, a styrene-maleic anhydride copolymer or styrene-
maleic anhydride copolymer-resin mixture, and a release
controller comprising hydrophobic white carbon, wherein the at
least one agricultural chemical-containing resin composition
has a mean particle size of 200 µm or less, and wherein the
formulation is capable of being used as a seed treatment agent,
soil treatment agent, or stem and leaf treatment agent.
The Issue
The Examiner rejected claims 1, 2, 5-9, 13-20, 24-26, and 28 under
35 U.S.C. § 103(a) as obvious over the combination of Botts3, Jang4,
Kadowaki5, and Bucha6. (Fin. Rej. 3).
DISCUSSION
The Examiner finds Botts discloses "one or more active ingredients
such as fungicides or insecticides entrapped in polymeric matrixes that form
3 WO 99/00013, published Jan. 7, 1999.
4 U.S. Pat. No. 4,590,062, issued May 20, 1986.
5 JP 2001-233706, published Aug. 28, 2001.
6 H.C. Bucha and C.W. Todd, 3-(p-Chlorophenyl)-1,1-Dimethylurea-A
New Herbicide, 114 Science, 493--4 (Nov. 9, 1951) ("Bucha").
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Application 11/573, 112
microparticles" and that "the microparticles include a matrix that includes
one or more polymers and one or more active ingredients that are distributed
throughout the matrix." (Fin. Rej. 3--4). The Examiner finds the rates of
release of the active ingredients disclosed by Botts "may be controlled by,
e.g., the dispersing agent," which "therefore ... also constitutes a release
controller" and may be included as an "inactive ingredient or additive." (Id.
at 4). The Examiner further finds Botts discloses compositions comprising
"filled polymer and copolymer systems, i.e., using calcium carbonate, silica,
clay, etc." that are "are applied to soil, seeds or plants to release the active at
a sufficiently slow rate." (Id.). The Examiner finds Botts' disclosure of
particle sizes of "more preferably 3-50 microns in diameter" lies within the
range of claim 14. (Id.). The Examiner concludes the sole difference
between the scope of Botts and the claimed compositions is that "Botts et al.
is silent on whether the silica (i.e. white carbon) is hydrophilic or
hydrophobic" (id. at 5), which is a deficiency cured by Jang and Kadowaki.
According to the Examiner:
Botts et al. already teach the incorporation of silica and Jang
teaches the use of hydrophobic silica in matrix tablets to
prolong release rates of an active including, specifically, an
agrochemical. Moreover, the use of hydrophobic silica in
sustained-release agrochemical granules, specifically, is known
and taught in the art by Kadowaki . . . One of ordinary skill in
the art would have been motivated to select the hydrophobic
silica in order to control/prolong/slow the release of the active,
and improve the physical integrity of the matrix.
(Fin. Rej. 6-7).
The issue with respect to this rejection is whether a preponderance of
the evidence of record supports the Examiner's conclusion that the
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Application 11/573, 112
combination of Botts, Jang, Kadowaki and Bucha renders obvious the
compositions required by claims 1, 2, 5-9, 13-20, 24-26, and 28.
Findings of Fact
1. Botts discloses "controlled-release formulations for agricultural
chemicals that comprise microparticles in which one or more agricultural
active ingredients are dispersed or distributed in a polymeric matrix" that
can be "applied to seeds or plants ... " (Botts 1 :28-2:3). In these
compositions, "the active ingredient( s) is molecularly distributed or
dispersed substantially uniformly throughout the matrix material." (Id. at
8:23-25).
2. Botts discloses:
The matrix microparticles of the present invention can be
produced by any process that results in a polymer matrix having
active ingredients substantially uniformly distributed therein,
including but not limited to solvent evaporation, solvent
partition, hot melt microencapsulation, and spray drying.
(Id. at 17:8-11 ).
3. Botts discloses that the "[ m ]icroparticle preparations of the
present invention preferably have average particle sizes in the range from
about 0.2 microns to about 200 microns in diameter ... yet more preferably
about 3 microns to about 50 microns in diameter." (Id. at 9:13-16). The
compositions could include "certain resins such as polyalkyd resins,
phenolic resin, abietic acid and epoxy resins" as well as "filled polymer and
copolymer systems, i.e., using calcium carbonate, silica, clay, etc." (Id. at
13:1--4).
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Application 11/573, 112
4. Botts discloses inclusion of agricultural chemicals (active
ingredients) in the composition including a "biocide (e.g., a triazole
fungicide ... ), a plant growth regulator, a chemical hybridizing agent, a
plant nutrient or combinations thereof." (Id. at 3:3-6).
5. Botts discloses release of the active ingredient from the
disclosed compositions "in a controlled fashion by diffusion (e.g., in the case
of ... poly(styrene maleic anhydride copolymer) ... )"or through
formulations tailored to provide "'programmed' rates and levels of active
release over the duration of the seed germination and subsequent growth
periods." (Id. at 15:8-18).
6. Jang discloses a "composition for the controlled release dosage
forms of biologically active agents" as a
combination of this dry binder and excipients that collectively
cooperate to form a dry, compressible matrix which [h ]as the
property of the controlled release dosage forms of biologically
active solid particles dispersed through said matrix and a
method of using said combination to obtain a controlled release
table of useful integrity and desired release rates.
(Jang, 2:55-69).
7. Jang discloses:
. [B]iologically active agents which can be admixed with the
excipients to provide the controlled release tablet according to
this invention include all substances which when introduced
into the body of a human, animal, plants, soil and water is
biologically active, usually in a therapeutic sense, nutritional
purpose or biocidal effects.
(Id., 4:38-44).
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Application 11/573, 112
8. Jang discloses the "presence of 0.01 to 10, preferably 0.01 to 5,
optimally 0.05 to 3, wt. % of hydrophobic fumed silica ... can surprisingly
prolong the release rates by 20 to 40 percent ... " (id. at 13:9-14) and
discloses example compositions demonstrating the effectiveness of
hydrophobic fumed silica as a release agent. (Id. at 13:37-16:19).
9. Kadowaki discloses "an inexpensive agrochemical granule
having excellent sustained release." (Kadowaki, Abstract). The water
repellents used in the agrochemical granule are "chosen from waxes and
hydrophobic silica." (Id. at 2 iJ5).
10. Bucha discloses monuron "(3-(p-chlorophenyl)- l, 1-
dimethylurea) has been synthesized and found to be very effective in killing
many plant species." (Bucha, 493).
11. The Specification discloses that the claimed composition
components (agricultural chemical ingredient, styrene-maleic anhydride
copolymer or styrene-maleic anhydride copolymer-resin mixture, and
release controller) can be combined through multiple methods, such as
"mixed, melted by heating, kneaded and cooled" ... "dissolved, dispersed or
mixed in an organic solvent followed by distilling off the organic solvent"
and "dissolved, dispersed or mixed to prepare an acidic solution followed by
filtration and drying." (Spec. 3--4).
12. The Specification discloses:
[a Jn agricultural chemical active ingredient used in the present
invention is not limited to being a liquid or solid, organic
compound or inorganic compound, or single compound or
mixture, specific examples of which include the fungicide,
insecticides, acaricides, plant growth regulators, herbicides and
so forth indicated below. Furthermore, these agricultural
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Application 11/573, 112
chemical active ingredients can be used alone or as a mixture of
two or more types.
(Spec. 7).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSRint'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417.
The test for obviousness is what the combined teachings of the
references as a whole would have suggested to those of ordinary skill in the
art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Fin. Rej. 3-6, FF 1-10) and agree that the
claims are rendered obvious by the combination of Botts, Kadowaki, Jang,
and Bucha. We address the Appellants' arguments in tum.
Appellants argue that the obviousness rejection warrants reversal
because "using hydrophobic white carbon in a composition comprising a
compatible state or matrix, as claimed ... exhibits a superior active agent
release property that is surprising and unexpected over the cited prior art,"
which used nonhydrophobic white carbon. (Br. 9-11 ).
We agree with the Examiner that the teachings of Kadowaki and Jang
would reasonably lead one of ordinary skill in the art to believe that
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Application 11/573, 112
incorporation of hydrophobic silica would prolong the release of the active
ingredient in the claimed composition. (Ans. 3). Appellants' data, which
are cited as showing "surprising and unexpected" results, compare
compositions containing hydrophobic white carbon to those containing
"merely white carbon." (Br. 10). Consistent with In re Harris, the slight
changes in water dissolution rate of the tested compositions were not
identified as unexpected by the Specification (see Spec. 34-37, Table 1),
only by post-hoc argument of Appellants' counsel; also, the values in Table
1 do not significantly differ as in Harris where a "32--43% increase in stress-
rupture life, however, does not represent a 'difference in kind' that is
required to show unexpected results." In re Harris, 409 F.3d 1339, 1344
(Fed. Cir. 2005) (citing In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996)).
Accordingly, we do not find Appellants' argument that the results of Table 1
are unexpected persuasive in light of our findings of fact (FF 1-10)
regarding the teachings of the prior art or in light of the data itself.
Appellants additionally argue that none of the cited prior art
references teach or suggest the superior sustained release property of
hydrophobic white carbon in a composition comprising a compatible state or
matrix. (App. Br. 14). Specifically, Appellants argue that "the Kadowaki
reference describes compositions comprising hydrophobic silica, but the
reference fails to implicate the hydrophobic silica in causing an extended
active agent release rate, therefore failing to indicate the superior release
rates of the claimed compositions are expected" and that Bucha "does not
teach or suggest a composition comprising hydrophobic white carbon,
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Application 11/573, 112
therefore failing to indicate the superior release rates of the claimed
compositions are expected." (Id.).
This argument is unpersuasive as the Examiner's rejection is based on
the combined teachings of Botts, Kadowaki, Jang, and Bucha. (See Fin. Rej.
3). We agree with the Examiner that nonobviousness cannot be established
by attacking the references individually when the rejection is predicated
upon a combination of prior art disclosures. In re Merck & Co. Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d at 426
(CCP A 1981) (finding "one cannot show nonobviousness by attacking
references individually where, as here, the rejections are based on
combinations of references" (citations omitted)). Thus, whether Kadowaki
or Bucha individually fails to teach the use of hydrophobic silica as an
extended active release agent in a composition comprising a compatible state
or matrix is not dispositive to the sufficiency of the rationale underlying the
rejection. As stated by the Examiner, Botts teaches all elements of the claim
with the exception of explicitly disclosing hydrophobic silica. (FF 1-5, Fin.
Rej. 3-5). We agree with the Examiner that an ordinary artisan reading
Botts, Jang and Kadowaki would have reasonably expected that the
hydrophobic silica disclosed and used in Jang and Kadowaki would be
useful with the compositions disclosed in Botts, and that monuron as
disclosed by Bucha would be an effective herbicide that could be used in the
composition with a reasonable expectation of success. (Fin. Rej. 6-7).
Finally, Appellants argue the teachings of cited references Botts and
Jang are incompatible because "Jang focuses on dry, direct compression
compositions because of problems associated with compositions produced
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Application 11/573, 112
using a solvent ... [and] characterizes solvents as 'undesirable' for causing
a variety of problems" while "Botts is directed to compositions produced by
using solvents." (Br. 15-16). As a result of this incompatibility, Appellants
argue "the skilled artisan would not have found it obvious to apply the
teachings of Jang to Botts[.]" (Id.).
We understand Appellants' argument but find it unpersuasive in light
of the disclosures of Botts and Jang. Botts teaches that matrix microparticles
"can be produced by any process that results in a polymer matrix having
active ingredients substantially uniformly distributed therein, including but
not limited to solvent evaporation, solvent partition, hot melt
microencapsulation, and spray drying." (FF 2) (emphasis added). Given
that Botts's disclosure expressly contemplates embodiments that do not
employ solvents, we do not find that Jang's discouragement of the use of
solvents renders Jang incompatible with Botts.
Further, Appellants have not demonstrated that a "dry, direct
compression composition" as taught in Jang would not be encompassed by
the pending claims in light of the Specification's disclosure that the
agricultural chemical active ingredient can be liquid or solid, and used alone
or a mixture of two or more types. (FF 11). Appellants' arguments without
more do not meet this requirement. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) ("[A]ttomey argument [is] not the kind of factual evidence
that is required to rebut a prima facie case of obviousness").
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Application 11/573, 112
Conclusion of Law
The evidence of record supports the Examiner's conclusion that Botts,
Jang, Kadowaki and Bucha teach the compositions required by claims 1-2,
5-9, 13-20, 24-26, and 28.
SUMMARY
We affirm the rejection of obviousness under 35 U.S.C. § 103(a).
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. § l.136(a).
AFFIRMED
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