Ex Parte Merlet et al

Patent Trials and Appeals Board

Mar 22, 2019

13698097 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/698,097 11/15/2012 Stephanie Merlet
76656 7590 03/26/2019
Patent Docket Department
Armstrong Teasdale LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
UNITED ST A TES OF AMERICA
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.
27843-964
CC00003522US01
CONFIRMATION NO.
5005
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHANIE MERLET, STEFAN BUSCH,
JURGEN RODER, and OLIVER MEINERT 1
Appeal2018-001606
Application 13/698,097
Technology Center 1600
Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to an agrochemical composition.
The Examiner rejected the claims as obvious under 35 U.S.C. § 103.
Pursuant to 35 U.S.C. § 134, Appellants appeal the Examiner's
determination that the claims are unpatentable. We have jurisdiction under
35 U.S.C. § 6(b). The Examiner's decision is affirmed.
1 The Appeal Brief ("Appeal Br." entered June 26, 2017) lists BASF, Gmbh
as the real party in interest. Appeal Br. 1.
Appeal2018-001606
Application 13/698,097
STATEMENT OF THE CASE
Claims 1, 2, 6-9, and 11 stand finally rejected by the Examiner
35 U.S.C. § I03(a) as obvious in view of Sasson et al. (US 2005/0169951
Al, published Aug. 4, 2005) ("Sasson"). Ans. 3.
Claim 1, the only independent claim on appeal, is reproduced below:
1. An agrochemical composition comprising:
(a) 40 to 75 % b.w.[2] of an isoamyl lactate;
(b) 25 to 40 % b.w. of an agrochemical active ingredient
comprises a fungicide that is a triazole or an herbicide that is a
diphenyl ether;
(c) 0 to 30 % b.w. of an oil component or a co-solvent;
and
( d) 5 to 10 % b. w of an emulsifier;
wherein the amounts add optionally together with water
to 100 % b.w. and
wherein upon dilution at 5% in water and formation of an
emulsion, the emulsion at 20°C exhibits no layering after two
hours.
DISCUSSION
The issue in this appeal is whether it would have been obvious to one
of ordinary skill in the art to have selected the claimed (a) isoamyl lactate to
put into an agrochemical composition, comprising a fungicide, based on the
disclosure in Sassoon of pesticide compositions comprising a lactate ester.
Appellants do not provide arguments for the other limitations in the claim.
Sassoon was cited by the Examiner as teaching a genus of lactate
esters. Final Act. 3. The Examiner found that the claimed isoamyl lactate
would have been obvious to one of ordinary skill in the art based on the
genus disclosed in Sasson. Id.
2 We understand "b.w." to mean "by weight."
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Application 13/698,097
Appellants argue, citing In re Baird, 16 F.3d 380, 382 (Fed. Cir.
1994 ), that "'the fact that a claimed compound may be encompassed by a
disclosed generic formula does not by itself render that compound
obvious."' Appeal Br. 4. Appellants state that the genus disclosed in Sasson
is large and the disclosed preferences lead away from the claimed
compound. Id. at 5, 8. Appellants argue there are numerous structural
differences between isoamyl lactate and the preferred species of Sasson. Id.
at 9. Appellants also contend there is insufficient data in Sasson to establish
that all the compounds in its genus would have the asserted utility. Id. at 7.
For these reasons, Appellants argue that the genus described in Sasson
would not have lead one of ordinary skill in the art to the single isoamyl
species which is claimed. Id. at 11.
Appellants do not provide sufficient evidence that the Examiner erred
in rejecting the claims as obvious.
Sasson teaches that the alkyl lactates ("lactate acid esters") are
crystallization prevention agents. Sasson Abstract, ,r 15. Sasson discloses
the following preferred genus of alkyl lactate esters:
According to a preferred embodiment of the present
invention, the preferred lactate esters for the practice of the
invention are lactate acid esters of C4 to C12 saturated and
unsaturated alkyl, C4 to C12 saturated and unsaturated
cyclically, C4 to C12 saturated and unsaturated branched alkyl
lactates and mixtures thereof. Particularly preferable lactate
esters are 2-ethyl hexyl lactate, cyclohexyl lactate, 2-
methylcyclohexyl lactate, heptyl lactate, octyl lactate and
mixtures thereof.
Sasson ,r 17. The Examiner cited Sasson description of a genus of alkyl
lactates which encompasses the claimed isoamyl lactate, a five-membered
(Cs) branched alkyl.
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Appeal2018-001606
Application 13/698,097
We agree with Appellants that Baird is pertinent to the obviousness
determination in this appeal. In Baird, a toner was claimed comprising "a
binder resin which is a bisphenol A polyester containing an aliphatic
di[ carboxylic] acid selected from the group consisting of succinic acid,
glutaric acid and adipic acid." Baird, 16 F.3d at 381. The claim was
rejected over the Knapp patent which disclosed a general formula for a
diphenol and for a carboxylic acid. Id. at 382. Knapp disclosed all three of
the specifically claimed carboxylic acids (succinic acid, glutaric acid and
adipic acid). Id. The Examiner rejected the claim as obvious on the basis
that the claimed bisphenol A could be "easily derived" from the generic
formula in Knapp which encompassed it. Id.
The court found that "the generic diphenol formula disclosed in
Knapp contains a large number of variables" which it estimated to
encompass "more than 100 million different diphenols, only one of which is
bisphenol A." Id. The court acknowledged that"[ w ]hile the Knapp formula
unquestionably encompasses bisphenol A when specific variables are
chosen, there is nothing in the disclosure of Knapp suggesting that one
should select such variables." Id. The court said that Knapp "appears to
teach away from the selection of bisphenol A by focusing on more complex
diphenols" in its preferred species. Id.
The court concluded:
Given the vast number of diphenols encompassed by the
generic diphenol formula in Knapp, and the fact that the
diphenols that Knapp specifically discloses to be "typical,"
"preferred," and "optimum" are different from and more
complex than bisphenol A, ... Knapp does not teach or fairly
suggest the selection of bisphenol A.
Baird, 16 F.3d at 383.
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Appeal2018-001606
Application 13/698,097
Appellants argue that the genus in Sasson is like Baird because the
genus is large and the pattern of preferences described by Sasson would
have lead the skilled worker away from the claimed isoamyl lactate.
This argument does not persuade us that the Examiner erred in
rejecting the claim as obvious in view of Sasson.
Appellants contend that, in just one subgenus of C12 lactate esters,
"there are over 4 million different possible combinations." Appeal Br. 7.
While this is nowhere near the "more than 100 million different diphenols"
found in the genus described in Knapp, we do not consider the mere size of
the genus in Sasson to be the decisive factor in this case. Baird, 16 F .3d at
3 82. Specifically, in addition to the genus disclosed by Sasson, there are a
small number of examples: "2-ethyl hexyl lactate, cyclohexyl lactate, 2-
methylcyclohexyl lactate, heptyl lactate, octyl lactate." Sasson ,r 1 7. As
explained below, these examples would have led the skilled worker to the
claimed isoamyl lactate.
Appellants provide Figure 2 showing the structure of the preferred
species in Sasson as compared to the claimed isoamyl lactate. Figure 2 is
reproduced below:
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Appeal2018-001606
Application 13/698,097
0o~
OH
!soamyl iactate
~o~
OH
2-ethyl hexyl lactate
~))
OH
2-methylcyclohexyl lactate
~OD 0 Yo~
OH OH
cyclohexyl lactate octyl lactate
~o~
OH
heptyl lactate
Figure 2. lsoamyt Lactate vs. the Preferred S1lecies in Sasson
As shown in Figure 2, isoamyl lactate is a five-membered (Cs)
branched alkyl that falls within the Sasson's disclosed genus of "C4 to C12"
alkyls. Heptyl lactate shown in Figure 2 is a seven-membered (C7)
unbranched, saturated, straight chain alkyl. Octyl lactate is an eight-
membered (Cs) unbranched, saturated, straight chain alkyl. Three species of
hexyl (C6) compounds are also disclosed: 2-ethyl hexyl lactate, cyclohexyl
lactate, 2-methylcyclohexyl lactate.
One of ordinary skill in the art would have readily an envisaged an
unbranched, unsubstituted, and saturated Cs alkyl because it is a near
adjacent homolog to the unbranched, unsubstituted, and saturated Cs and C7
alkyls described by Sasson. Thus, a Cs species would be readily suggested to
one of ordinary skill in the art as a numerical progression from the Cs, C7,
and c6 species.
The difference between isoamyl lactate and the preferred alkyls
saturated, straight chain Cs and C7 is that Cs is a branched alkyl. Branched
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Application 13/698,097
alkyls, however, are specifically disclosed in Sasson's genus. Sasson ,r 17.
Appellants identify 600 Cs alkyl group esters, only a subset of which are the
saturated type. Reply Br. 2. While each member of this group might not be
immediately envisaged by one of ordinary skill in the art, the group is small
enough that each member of the group could routinely be drawn out. There
is no additional substitution necessary to have arrived at the claimed isoamyl
alcohol. The only decision is to choose a branched alkyl, and make it
saturated and unsubstituted like the preferred Cs and C7 saturated, straight
chain alkyls.
Unlike in Baird where the prior art disclosed a generic formula
containing "a large number of variables" and where none of the preferred
species were found to suggest the claimed bisphenol A, the preferred Cs and
C7 alkyl lactates suggest the choice of a Cs amyl lactate, defining a narrow
subgenus from which to have chosen the branched isoamyl species.
Appellants focus on the size of the genus based on Sasson's disclosure
of a genus of "lactate acid esters of C4 to C12 saturated and unsaturated alkyl,
C4 to C12 saturated and unsaturated cyclically, C4 to C12 saturated and
unsaturated branched alkyl lactates and mixtures thereof." Sasson ,r 17.
For C12 alkyl lactates, Appellants state that "over 2100 possible species [are
present] in the preferred subgenus disclosed by Sasson without accounting
for the multiple positional attachments to the ester linkage." Appeal Br. 6.
This analysis does not persuade that the claimed species would be unobvious
to select from Sasson's disclosure because, as discussed above, the preferred
lower saturated alkyl Cs and C7 would have suggested a saturated Cs alkyl.
Appellants state that the only tested species in Sasson is the 2-ethyl
hexyl lactate, which Appellants assert is not even a lactate. Appeal Br. 8,
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10. Appellants argue that testing a single "data point" does not establish
"that any of the preferred species in Sasson have the same effect" nor does it
support the genus. Id. at 11. Appellants also argue that it is "well known in
the chemical arts ... [that] a single structure without more may be
suggestive of a similar activity, but it does not support a conclusion that
other compounds have a similar structure will have similar activity." Id. at
7. As an example, Appellants state that "[ e ]nantiomers often have different
activity despite being as close as chemically and physically possible to
having the same structure without being identical." Id. Appellants contend
stated that "[n]othing in Sasson suggests that a shorter, branched [Cs] ester
would have similar properties or have a similar utility as the one single
example tested." Id.
This argument does not persuade us that the Examiner erred. The
finding that a saturated Cs, branched ester would have activity as a
crystallization prevention agent is not the conjecture of the Examiner, but
rather it is the teaching of Sasson. Sasson expressly discloses a preferred
genus of lactate esters that includes "C4 to C 12 saturated and unsaturated
branched alkyl lactates" (Sasson ,r 17) of which the claimed isoamyl lactate
is a member. These alkyl lactates are described by Sasson as being
crystallization prevention agents. Sasson ,r 15. While it may be correct that
in some circumstances chemical and physically close compounds have
different activity (Appeal Br. 7), Appellants have not provided evidence in
this case that the alkyl lactates disclosed in paragraph 17 of Sasson would
not have similar activity, when Sasson asserts and expects that they do. We
think more is necessary than just attorney argument to rebut a statement by a
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Application 13/698,097
prior art publication that all members of a preferred genus have a disclosed
activity.
Appellants argue that the claimed isoamyl lactate differs from the
tested 2-ethyl hexyl lactate "in at least three significant structural
characteristics." Appeal Br. 9--10. This argument is not persuasive because
the specifically named octyl lactate and heptyl lactate are even closer in
structure to the isoamyl and are stated by Sasson to be crystallization
prevention agents.
Appellants further argue that only 2-ethyl hexyl lactate was tested and
"Sasson provides no evidence suggesting [that the preferred alkyl lactates
disclosed in paragraph 17 of Sasson] function in the same manner as 2-ethyl
hexyl lactate." Appeal Br. 10. See also id. at 9 ("Because the one species
tested by Sasson is so different than isoamyl lactate, as are the preferred ( and
untested) embodiments, nothing in the present application suggests isoamyl
lactate.") Once again, Appellants have provided no objective evidence to
undermine the statement by Sasson that all the compounds disclosed in
paragraph 17, including the specifically identified "cyclohexyl lactate, 2-
methylcyclohexyl lactate, heptyl lactate, [and] octyl lactate" possess
crystallization prevention activity. Appellants' contention regarding the
unpredictability of "the effect of lactate esters" because only one example
was tested is similarly deficient because it is merely attorney argument that
the different alkyl groups encompassed by the genus of Sasson would
eliminate the disclosed crystal prevention activity. Appeal Br. 10. An
argument made by counsel in a brief does not substitute for evidence lacking
in the record. Estee Lauder, Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed.
Cir. 1997).
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Appeal2018-001606
Application 13/698,097
For the foregoing reasons, the obviousness rejection of claim 1 is
affirmed. Claims 2, 6-9, and 11 fall with claim 1 because separate
arguments for their patentability were not provided. 37 C.F.R.
§ 4I.37(c)(l)(iv).
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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