Ex Parte Martin

Board of Patent Appeals and Interferences

Jul 12, 2011

11914485 (B.P.A.I. Jul. 12, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TIMOTHY MARTIN
__________

Appeal 2011-000307
Application 11/914,485
Technology Center 1600
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-9 and 14.1 We have jurisdiction under
35 U.S.C. § 6(b).

1 Claims 10-13 and 15-19 stand withdrawn from consideration (App. Br. 5).
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Application 11/914,485

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STATEMENT OF THE CASE
Claims 1 and 14 are representative of the claims on appeal, and read
as follows:
1. An insecticidal composition consisting essentially of
a) a pyrethroid;
b) a hydrated aluminum-magnesium silicate;
c) at least one dispersant selected from the group consisting of a sucrose
ester, a lignosulfonate, an alkylpolyglycoside, a naphthalenesulfonic acid
formaldehyde condensate and a phosphate ester;
d) optionally an anti-freeze agent;
e) optionally an anti-foam agent;
f) optionally a biocide; and
g) optionally an insecticidally effective amount of one or more additional
insecticides selected from the group consisting of imidacloprid, flonicamid,
nithiazine, thiamethoxam, dinotefuran, nitenpyram, thiacloprid, clothianadin
and chlorfenapyr.

14. A composition consisting essentially of
a) from 15%to 25% of bifenthrin;
b) from 1 % to 20% of hydrated aluminum-magnesium silicate; and
c) from 0.02% to 15% of at least one dispersant selected from the group
consisting of a sucrose ester, a lignosulfonate, an alkylpolyglycoside, a
naphthalenesulfonic acid formaldehyde condensate and a phosphate ester;
wherein all % are % by weight based upon the total weight of all
components in the composition.

The following grounds of rejection are before us for review:
I. Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by Valcke.2

2 Valcke, U.S. Patent No. 5,714,507, issued February 3, 1998.
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Application 11/914,485

3
II. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Valcke and Beckmann.3
We affirm Rejection I but reverse Rejection II.

PRINCIPLES OF LAW
The “phrase ‘consisting essentially of’ limits the scope of a claim to
the specified ingredients and those that do not materially affect the basic and
novel characteristic(s) of a composition.” In re Herz, 537 F.2d 549, 551-52
(CCPA 1976) (emphasis added); see also PPG Indus., Inc. v. Guardian
Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir 1998). Appellant bears the
burden of establishing that the basic and novel characteristics of the claimed
invention would be materially affected by, or at least reasonably expected to
be materially affected by, any component or step of an applied reference that
is argued to be excluded by a “consisting essentially of” transitional phrase
used in the claims. See In re De Lajarte, 337 F.2d 870, 873-74 (CCPA
1964); Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (BPAI 1989).
“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).
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.

3 Beckmann, U.S. Patent No. 7,235,571 B1, issued June 26, 2007.
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Application 11/914,485

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Id. at 417. In 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
Keller, 642 F.2d 413, 425 (CCPA 1981). In addition, a reference disclosure
is not limited only to its preferred embodiments, but is available for all that it
discloses and suggests to one of ordinary skill in the art. In re Lamberti,
545 F.2d 747, 750 (CCPA 1976).
However, “a patent composed of several elements is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, the
Court stated:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does . . . because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

Id. at 418-419 (emphasis added).

ISSUE (Rejection I)
Has the Examiner established by a preponderance of the evidence that
Valcke renders obvious the composition of claim 1?

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Application 11/914,485

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FINDINGS OF FACT
FF1. The Examiner’s statement of Rejection I may be found at pages 3-5 of
the Answer. As Appellant does not argue the claims separately, we focus
our analysis on claim 1, and claims 2-9 stand or fall with the claim.
37 C.F.R. § 41.37(c)(1)(vii).
FF2. We adopt the Examiner’s findings and conclusions as our own.
FF3. Specifically, the Examiner finds:
Valcke teaches the following components named in instant
claim 1:
(a) pyrethroid (see column 12, line 30)
(b) hydrated aluminum-magnesium silicate (solid carriers
montmorillonite and attapulgite) (column 6, lines 22-24,
Example 4)
(c) dispersant (sodium lignosulfate or salts of naphthalene
sulfonic acid, column 7, lines 1-14) (sodium lignosulfonate,
Example 4)
(d) optional anti-freeze (column 6, line 18)
(e) optional anti-foam (not included)
(f) optional biocide (Example 4, azole)
(g) optional insecticide, imidacloprid (see column 12, line 30;
column 12, line 48; column 12, line 63).
(Ans. 9-10.)
FF4. Valcke “relates to synergistic compositions of metconazole and
another triazole for use a fungicidal preservatives in material protection (in
particular in wood), as well as for use as agrochemicals in the protection of
plants, fruits, and seeds” (Valcke, col. 1, ll. 8-12).
FF5. Valcke teaches that the composition may also contain other
microbiocides, and in particular, insecticides (id. at col. 11, ll. 5-9). Valcke
teaches that the insecticide may be, among others, a synthetic pyrethroid,
such as bifenthrin (see id. at col. 12, ll. 10-49, especially ll. 30-31).
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Application 11/914,485

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pyrethroid (particularly bifenthrin) which significantly improves physical
stability when used to prepare an insecticidal liquid fertilizer,” and, thus,
Valcke is not drawn to the same use as the present composition (id. at 12).
Moreover, Appellant argues that as Valcke requires metconazole and
another triazole, it cannot suggest the claimed composition, which does not
require those compounds (id.).
We have carefully considered Appellant’s arguments, but do not find
them convincing. Claim 1 is drawn to a composition, consisting essentially
of, minimally, a a) pyrethroid; b) a hydrated aluminum-magnesium silicate;
and c) at least one dispersant selected from the group consisting of a sucrose
ester, a lignosulfonate, an alkylpolyglycoside, a naphthalenesulfonic acid
formaldehyde condensate and a phosphate ester. As noted in the findings of
fact (FF8), Example IV suggests a composition containing elements (b) and
(c), as well as an additional biocide, element (f) of the claim. Example IV
does not include a pyrethroid, but Valcke specifically teaches that an
insecticide, such as a pyrethroid, may be added to the composition (see FF5).
We, thus, agree with the Examiner’s conclusion that Valcke renders prima
facie obvious the composition of claim 1.
As to the argument that Valcke requires metconazole and another
triazole, and thus cannot suggest the claimed composition, we agree with the
Examiner that claim 1 does not exclude the addition of such, but specifically
allows their addition in element (f), which recites an optional biocide.
Moreover, Appellant has not demonstrated that his addition materially alters
the composition as set forth by instant claim 1.
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Appellant further asserts that the rejection is based on the selection of
compounds that is contained in Valcke and thus amounts to an obvious to try
rejection (App. Br. 11). According to Appellant, however, the Examiner has
failed to set a proper “obvious to try” rationale sufficient to support a prima
facie case of obviousness (see, e.g., App. Br. 13-17).
Appellant’s argument is not convincing, as the rejection is based on
the teachings of Valcke as set forth above, and not an “obvious to try”
rationale. Moreover, all that is required is a reasonable expectation of
success, not absolute predictability of success, and that is provided by
Valcke, who specifically teaches that an insecticide, such as a pyrethroid,
may be added to the composition. See In re O’Farrell, 853 F.2d 894, 903
(Fed. Cir. 1988).

CONCLUSION OF LAW
We conclude that the Examiner has established by a preponderance of
the evidence that Valcke renders obvious the composition of claim 1. We,
thus, affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as being
rendered obvious by Valcke. As claims 2-9 stand or fall with that claim, we
affirm the rejection as to those claims as well.

ISSUE (Rejection II)
Has the Examiner established by a preponderance of the evidence that
the combination of Valcke and Beckmann renders obvious the composition
of claim 14?

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FINDINGS OF FACT
FF9. The Examiner’s statement of Rejection II may be found at pages 5-8
of the Answer.
FF10. The Examiner notes that Valcke does not teach “a single embodiment
having the specified quantities of the formulation as instantly claimed” (Ans.
6).
FF11. The Examiner cites Beckmann as teaching that it is obvious to
optimize formulations (id. at 7).
FF12. The Examiner further notes:
More specifically, Beckmann et al. teach a variety of
formulation examples including a dust, a wettable powder,
dispersion, an emulsifiable concentrate, and granules (see
column 29, line 46 - column 30, line 9). The instantly claimed
formulation is similar to the wettable powder, the dispersion,
and the emulsifiable concentrate since the wettable powder
includes 25% by weight of the active agent in combination with
65% by weight of kaolin-containing quartz (analogous to the
hydrate aluminum-magnesium silicate of the instant claim as
evidenced by Valcke et al.), and 10 parts by weight of
lignosulfonate (column 29, lines 49-56). Most similarly,
however, the granule formulation as taught by Beckman et al.
comprises 2-15% parts by weight of active substance, as well as
30% by weight of a carrier such as attapulgite (a hydrated
aluminum-magnesium silicate), and approximately 5% of a
wettable powder which itself comprises 1% of a dispersant.

(Ans. 7-8.)

ANALYSIS
Appellant argues that the fungicidal compositions of Valcke and the
insecticidal compositions of Beckmann are not drawn to the same use, and
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neither is drawn to the same use as Appellant’s (App. Br. 18). Appellant
further asserts that neither Valcke nor Beckmann teach or suggest the
components as required by claim 14 (id. at 19).
We agree with Appellant that the Examiner has failed to establish that
the composition as set forth in claim 14 is rendered obvious by the
combination of Valcke and Beckmann. First, the Examiner compares
Beckmann to the claimed composition, and not to Valcke and, thus, fails to
set forth evidence or scientific reasoning as to how the skilled artisan would
optimize a composition taught by the combination Valcke and Beckmann to
arrive at a composition having the amounts required by claim 14. More
specifically, Example IV of Valcke contains between 87 and 96% of kaolin
or attapulgite. Beckmann, as set forth by the Examiner, teaches a
composition containing 30% to 65% of the carrier kaolin. The Examiner has
not provided evidence or reasoning as to how one would optimize those
amounts to arrive at a composition containing 1% to 20% of hydrated
aluminum-magnesium silicate as required by claim 14, an amount well
below that of Valcke, and also below the amounts taught by Beckmann.

Appeal 2011-000307
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CONCLUSION OF LAW
We conclude that the Examiner has not established by a
preponderance of the evidence that the combination of Valcke and
Beckmann renders obvious the composition of claim 14. We, thus, reverse
the rejection of that claim.

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-IN-PART

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