Ex Parte Narayanan et al

Patent Trial and Appeal Board

Feb 3, 2016

10990995 (P.T.A.B. Feb. 3, 2016)

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.
10/990,995 11/17/2004 Kolazi S. Narayanan FDN-2851 6690
7590 02/04/2016
INTERNATIONAL SPECIALTY PRODUCTS
Attn: William J. Davis, Esq.
Legal Department - Building No. 8
1361 Alps Road
Wayne, NJ 07470
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
MAIL DATE DELIVERY MODE
02/04/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KOLAZI S. NARAYANAN, XIANBIN LIU,
KAREN WINKOWSKI, and JAYANTI PATEL1
__________

Appeal 2013-002100
Application 10/990,995
Technology Center 1600
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
ERIC B. GRIMES, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a biocidal
microemulsion composition, which have been rejected 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 ISP Investments Inc.
(Appeal Br. 3.)
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STATEMENT OF THE CASE
The Specification discloses “biocidal compositions, and, more
particularly, . . . IPBC (3-iodopropynyl)-2-butyl carbamate and/or triazole
fungicide, containing compositions in the form of a stable microemulsion
concentrate.” (Spec. 1.) The Specification states that “for treating wood
products no current formulations of biocides, e.g. IPBC or propiconazole (a
triazole) are available because the biocide separates from aqueous dilution
solutions.” (Id.) The Specification states that the disclosed emulsion
concentrates can be diluted with water to form a stable aqueous
microemulsion. (Id.)
Claims 1, 4–7, 9–16, and 18 are on appeal. Claims 1, 9, and 12 are
illustrative and read as follows:
1. A stable microemulsion concentrate comprising, by weight,
(a) 1–40% of a biocide selected from the group consisting of
iodopropargyl butyl carbamate, propiconazole, and mixtures thereof,
(b) a matrix of:
(i) 0–30% of a C1–C4 N-alkyl pyrrolidone,
(ii) 0.5–30% of a C8-C14 N-alkyl pyrrolidone,
(iii) 4–85% of castor oil ethoxylate,
(iv) 0.5–20% of an ethylene oxide/propylene oxide copolymer,
and
(v) 0.05–5% of an ethoxylated phosphate ester, and
(c) an organic solvent as diluent wherein said organic solvent is
propylene carbonate.

9. A concentrate of claim 1 wherein the biocide is IPBC.

12. A concentrate according to claim 1 which includes a quat.

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The claims stand rejected under 35 U.S.C. § 103(a) as follows:
Claims 1, 4–7, 11, 13–15, and 18 based on Narayanan ’264,2 Blease,3
and Narayanan ’4164 (Ans. 3) and
Claims 9, 10, 12, and 16 based on Narayanan ’264, Blease, Narayanan
’416, Nowak,5 and Radtke6 (Ans. 5).
I
Issue
The Examiner has rejected claims 1, 4–7, 11, 13–15, and 18 as
obvious based on Narayanan ’264, Blease, and Narayanan ’416. The
Examiner finds that Narayanan ’264 discloses “a stabilized herbicidal
emulsifiable concentrate” comprising propylene carbonate, a hydrophobic
solvent such as C6–18 N-alkyl pyrrolidone, and a mixture of anionic and
nonionic surfactants (e.g., an ethoxylated phosphate and ethoxylated castor
oil). (Ans. 3.) The Examiner also finds that Narayanan ’264 discloses that
its composition can contain “diluent agrochemicals (pesticides/fungicides)
such as triazine derivatives and thiocarbamates,” but does not disclose IPBC
or propiconazole in its composition. (Id. at 3–4.)
The Examiner finds that Blease discloses compositions (e.g., an
emulsifiable concentrate) “compris[ing] pesticides such as thiocarbamates,
triazoles and azoles such as propiconazole.” (Id. at 4.) The Examiner also
finds that Blease’s composition can comprise an ethoxylate/propoxylate

2 Narayanan et al., US 5,731,264 issued Mar. 24, 1998.
3 Blease et al., US 2002/0168417 A1 published Nov. 14, 2002.
4 Narayanan et al., US 6,251,416 B1 issued June 26, 2001.
5 Nowak, US 5,827,522 issued Oct. 27, 1998.
6 Radtke et al., US 5,013,748 issued May 7, 1991.
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(EO/PO) copolymer, and “[i]t’s taught that EO/PO surfactants are used in
agrochemical formulations as wetting agents, emulsifiers and/or solubilizers
as well as to increase the effect of agrochemical.” (Id.)
The Examiner concludes that it would have been obvious “to include
an EO/PO surfactant [in the composition of Narayanan ’264] with a
reasonable expectation in enhancing the wetting effect of the composition
thereby improving the biocidal activity of the formulation.” (Id.) The
Examiner also concludes that it would have been obvious “to include
propiconazole, as Blease teaches that propiconazole is a common fungicide
used in place of or together with other pesticides such as thiocarbamates and
triazoles. Thus, combining one fungicide with other agricultural actives
would provide beneficial results, i.e. inhibiting fungal growth and weed
growth, for instance.” (Id. at 5.)
Appellants contend that IPBC and propiconazole do not share the
properties of sulfonyl or sulfamoylurea herbicides, to which Narayanan ’264
is directed, and the Examiner has not provided sufficient reason for
combining the references. (Appeal Br. 7–8.) Appellants also argue that
“Blease discloses a lengthy list of other surfactants and various herbicides
and/or pesticides,” but “[o]ne of ordinary skill in the art would appreciate the
fact that these various bioactive components provide different functions and
are not functionally equivalent or interchangeable.” (Id. at 8.)
The issue with respect to this rejection is whether the Examiner has
provided sufficient reasoning to support the conclusion that the composition
of claim 1 would have been obvious to a person of ordinary skill in the art
based on Narayanan ’264 and Blease.
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Findings of Fact
1. Narayanan ’264 discloses a “stabilized liquid emulsifiable
concentrate for a sulfonyl or sulfamoylurea herbicide.” (Narayanan ’264,
1:27–28.)
2. In addition to a herbicide, the composition disclosed by Narayanan
’264 includes an optional 20–50% of diluent agchemicals, 5–95% of a polar
solvent such as propylene carbonate, 1–90% of a hydrophobic solvent such
as sterically hindered C6–18 N-alkyl pyrrolidones, and 5–35% of a mixture of
anionic and nonionic surfactants. (Id. at 1:31 to 2:8.)
3. Narayanan ’264 provides working examples that include 4% of
“Dionylphenol-ethoxylated phosphoric acid” as anionic surfactant and 16%
of “Castor Oil 40 EO” as nonionic surfactant. (Id. at 8:58 to 9:10.) The
Examiner finds that these components meet the requirements of parts (b)(v)
and (b)(iii), respectively, of claim 1. (Ans. 3.) Appellants do not dispute
this finding. (See Appeal Br. 7–8.)
4. Narayanan ’264 states that “sulfonylureas generally are used in
combination with a diluent agchemical in an amount of about 20–50% by
weight of the concentrate.” (Id. at 7:16–18.)
5. Narayanan ’264 discloses that “examples of diluent agchemicals
for use herein” include triazine derivatives and thiocarbamates. (Id. at 7:27–
40.)
6. Blease discloses that “certain surfactants including polyhydroxy
hydrocarbyl, particularly saccharide, amine groups can be useful in
agrochemical . . . formulations, in particular providing adjuvancy, wetting,
emulsification, dispersancy, thickening and/or solublisation.” (Blease 1 ¶ 4.)
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7. Blease discloses that its surfactants “can be used (particularly as
adjuvants) with a wide range of agrochemical active materials and
specifically, the active component of the formulation may be one or more
plant growth regulators, herbicides, and/or pesticides.” (Id. at 5 ¶ 96.)
8. Blease discloses that specific examples of actives include
herbicides such as triazines and sulphonyl ureas, and fungicides such as
thiocarbamates, benzimidazoles, and “azoles such as Propiconazole.” (Id. at
5–6 ¶¶ 96–112.)
9. Blease discloses that “[o]ther surfactants may also be included to
improve wetting. Examples of such wetting agents include nonionic
surfactants such as . . . polyoxyethylene/polyoxypropylene copolymers,
particularly block copolymers.” (Id. at 8 ¶¶ 162–3.)
10. Blease states that, “[w]hen used as wetting agents i.e. principally
to improve the wetting of plant leaves by the spray droplets, the surfactant
can be included in a concentrate or added as a tank mix additive. The
amount used . . . may be from 1 to 15% by weight of a concentrate.” (Id. at
7 ¶ 126.)
Analysis
We agree with the Examiner that the composition of claim 1 would
have been obvious to a person of ordinary skill in the art based on
Narayanan ’264 and Blease. Narayanan ’264 discloses a composition
comprising a sulfonyl or sulfamoylurea herbicide (FF1) and components
(b)(ii), (b)(iii), (b)(v), and (c) of claim 1; specifically, C6–18 N-alkyl
pyrrolidones (FF2), castor oil ethoxylate as a nonionic surfactant (FF3), an
ethoxylated phosphate ester as an anionic surfactant (FF3), and propylene
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carbonate (FF2).7 Narayanan ’264 also states that sulfonylureas are
generally used with 20–50% of a diluent agchemical such as triazine
derivatives or thiocarbamates (FF4, FF5).
Blease discloses compositions comprising certain surfactants (FF6)
and an active component that can be, among others, triazines, sulphonyl
ureas, thiocarbamates, or propiconazole (FF8). Blease also discloses that
polyoxyethylene/polyoxypropylene copolymers can be included as wetting
agents (FF9) and may be used at 1–15% by weight of a concentrate (FF10).
Based on these disclosures, it would have been obvious to include
propiconazole as the diluent agchemical in the composition of Narayanan
’264 because Blease discloses that propiconazole is a fungicide that, like
triazines, sulphonyl ureas, and thiocarbamates, is compatible with Blease’s
surfactants. Since Blease’s composition can be formulated with
propiconazole in place of or in combination with the active agent and the
expressly suggested diluent agchemicals of Narayanan ’264, a skilled artisan
would reasonably expect that propiconazole would be useful as a diluent
agchemical in the composition of Narayanan ’264, in order to control fungal
pathogens.
It would also have been obvious to include a polyoxyethylene/
polyoxypropylene copolymer in the composition of Narayanan ’264,
because Blease discloses that these copolymers are nonionic surfactants
(which are part of the composition of Narayanan ’264), and are used as
wetting agents to improve the wetting of plant leaves by spray droplets

7 Claim 1’s component (b)(i) can be present at 0%, and therefore is not
required.
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(FF10). Thus, it would have been obvious to include a polyoxyethylene/
polyoxypropylene copolymer in the composition of Narayanan ’264, in
order to improve wetting of plant leaves when spraying the composition.
Appellants argue that “[t]he ‘264 patent is directed to a specific liquid
delivery system designed for use with particular sulfonyl or sulfamoylurea
herbicides that are susceptible to hydrolysis in water . . . [because they] have
a labile sulfonamide bridge.” (Appeal Br. 7.) Appellants argue that IPBC
and propiconazole do not have a labile sulfonamide bridge, and “[t]here is
no reason that one of ordinary skill in the art would extend the teachings in
the ‘264 patent to other actives that did not contain the sulfonamide bridge
which is susceptible to hydrolysis in the presence of water.” (Id.)
This argument is unpersuasive. The Examiner’s rejection is not
premised on substituting propiconazole for the sulfonyl or sulfamoylurea
active agent of Narayanan ’264, but on including propiconazole as a diluent
agchemical in addition to the herbicidal active agent. (See Ans. 5:
“Narayanan in view of Blease would have motivated any ordinary person to
include propiconazole, as Blease teaches that propiconazole is a common
fungicide used in place of or together with other pesticides such as
thiocarbamates.”). Thus, whether propiconazole shares structure or
properties with sulfonyl or sulfamoylureas is not germane to the rationale
underlying the rejection.
Appellants also argue that “Blease discloses a lengthy list of other
surfactants and various herbicides and/or pesticides. . . . One of ordinary
skill in the art would appreciate the fact that these various bioactive
components provide different functions and are not functionally equivalent
or interchangeable.” (Appeal Br. 8.)
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This argument is also unpersuasive, because the Examiner’s rationale
for combining the teachings of Narayanan ’264 and Blease does not depend
on substituting components that provide different functions, but on including
propiconazole as a fungicidal diluent agchemical in the composition of
Narayanan ’264 in place of or in addition to the thiocarbamate fungicide
expressly suggested by Narayanan ’264.
Conclusion of Law
The Examiner has provided sufficient reasoning to support the
conclusion that the composition of claim 1 would have been obvious to a
person of ordinary skill in the art based on Narayanan ’264 and Blease.
Claims 4–7, 11, 13–15, and 18 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
II
Issue
The Examiner has rejected claims 9, 10, 12, and 16 as obvious based
on Narayanan ’264, Blease, Narayanan ’416, Nowak, and Radtke. The
Examiner finds that Nowak discloses agricultural microemulsions that
include “a surfactant such as ethoxylated castor oils and a biologically active
compound such as fungicides like that of IPBC and propiconazole.” (Ans.
6.) The Examiner finds that Radtke discloses emulsifiable concentrates that
contain a triazole and a quaternary ammonium fungicide (i.e., a quat).
The Examiner concludes that it would have been obvious to modify
the composition made obvious by Narayanan and Blease to include both
IPBC and a quat because Nowak teaches that “pyrethoids [sic] such as
cypermethrin are functionally equivalent to IPBC and propiconazole.
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Substitution for one over the other, or combining them to achieve a
synergistic result, would therefore be desirable to one ordinarily skilled in
the art.” (Id.) With regard to claim 12’s recitation of a quat, the Examiner
concludes that Radtke teaches a fungicidal quat, and therefore it would be
obvious “to further include a quat to provide additional agricultural
protective benefit to the composition of Narayanan.” (Id. at 6–7.)
Appellants contend that the Examiner has not provided an adequate
reason for combining the cited references. (Appeal Br. 9–10.) Appellants
also contend that they have provided evidence of unexpected results that
overcomes any prima facie case of obviousness. (Id. at 10.)
The issues with respect to this rejection are (1) whether the Examiner
has provided adequate reasoning to support the conclusion that the claimed
composition would have been obvious to a person of ordinary skill in the art
based on the cited references, and (2) whether Appellants have provided
evidence of unexpected results that, when weighed with the evidence
favoring obviousness, shows that the claimed composition would not have
been obvious.
Findings of Fact
11. Narayanan ’416 discloses an “aqueous microemulsion of an
agriculturally active pyrethroid insecticide.” (Narayanan ’416, 1:65–66.)
12. Nowak discloses “the use of a single surfactant which
simultaneously acts as a solvent for the biologically active, and generally
labile biocidal compound, such as a fungicide (iodopropargyl butyl
carbamate (IPBC) for example), and which by itself yields a stable
microemulsion.” (Nowak 3:20–24.)
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13. Radtke discloses a microemulsion composition comprising a
triazole fungicide, a quaternary ammonium fungicide, and a benzimidazole
fungicide. (Radtke, abstract.)
14. Propiconazole is a triazole. (Spec. 1.)
Analysis
We agree with Appellants (Appeal Br. 9) that the Examiner has not
provided a persuasive reason for concluding that a skilled artisan would have
considered it obvious to combine Nowak with Blease and the Narayanan
references. The Examiner reasons that it would have been obvious to
include IPBC in the Narayanan composition because “pyrethoids [sic] such
as cypermethrin are functionally equivalent to IPBC and propiconazole.”
(Ans. 6.) As disclosed by Narayanan ’416, however, pyrethroids are
insecticides (FF11), while IPBC and propiconazole are fungicides (FF8,
FF12). The Examiner’s reasoning is not supported by the evidence of
record. We therefore reverse the rejection of claims 9 and 10.
With regard to claim 12, however, we agree with the Examiner that
the cited references support a prima facie case of obviousness. Radtke
discloses a microemulsion comprising three fungicides: a triazole, a quat,
and a benzimidazole (FF13). Blease discloses that its formulations can
contain triazines, sulphonyl ureas, thiocarbamates, benzimidazoles, or
propiconazole (FF8). Propiconazole is a triazole (FF14). Thus, Blease
discloses that its composition can comprise two of the three types of
fungicide that are disclosed by Radtke, and since all three types of fungicide
can be used in Radtke’s composition, a skilled artisan would expect that a
quat would also be compatible with Blease’s composition.
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As discussed above with respect to claim 1, a skilled artisan would
also have expected that the active agents disclosed by Blease would be
useful as diluent agchemicals in the composition of Narayanan ’264 because
these references describe overlapping groups of active agents. Thus, it
would have been obvious to include a quat in the composition made obvious
by the combination of Narayanan ’264 and Blease in order to increase the
antifungal effectiveness of the composition, because Radtke discloses that
quats are a known type of fungicide.
Appellants argue that “[t]he purported motivation is based on the fact
that the references are all within the same general field of endeavor, and
there would be an expectation of success in combining them.” (Appeal Br.
10.) Appellants argue that “this conclusary [sic] statement fails to provide
the necessary findings to support the legal conclusion of obviousness.” (Id.)
This argument is not persuasive, because the Examiner supported the
rejection with logical reasoning: “Radtke teaches a fungicidally active
microemulsion wherein the fungicidally active compound is a quaternary
ammonium compound. One would endeavor to further include a quat to
provide additional agricultural protective benefit to the composition of
Narayanan.” (Ans. 6–7.) The Examiner thus provided the required
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Appellants also argue that “any prima facie case of obviousness is
overcome by unexpected results of the invention.” (Appeal Br. 10.)
Appellants point to the Specification’s examples, which they say show that
“the emulsion concentrates of the present invention provide stable matrix
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emulsion concentrates that remain stable when diluted in a suitable organic
solvent and can also be diluted with water without separation at room
temperature for an extended period of time.” (Id.)
This argument is also unpersuasive. “To be particularly probative,
evidence of unexpected results must establish that there is a difference
between the results obtained and those of the closest prior art, and that the
difference would not have been expected by one of ordinary skill in the art at
the time of the invention.” Bristol-Myers Squibb Co. v. Teva Pharms. USA,
Inc., 752 F.3d 967, 977 (Fed. Cir. 2014). Appellants’ Specification provides
no comparison to any prior art compositions, and thus does not show that
there is any difference between the results obtained with the claimed
composition and those of the prior art, much less that any difference would
have been unexpected.
Conclusion of Law
The Examiner has not provided adequate reasoning to support the
conclusion that the compositions of claims 9 and 10 would have been
obvious to a person of ordinary skill in the art based on the cited references.
The Examiner has provided adequate reasoning to support the
conclusion that the composition of claim 12 would have been obvious to a
person of ordinary skill in the art based on the cited references.
Appellants have not provided evidence of unexpected results that,
when weighed with the evidence favoring obviousness, shows that the
composition of claim 12 would not have been obvious.
Claim 16 has not been argued separately and therefore falls with claim
12. 37 C.F.R. § 41.37(c)(1)(iv).
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SUMMARY
We affirm the rejection of claims 1, 4–7, 11, 13–15, and 18 under
35 U.S.C. § 103(a) based on Narayanan ’264, Blease, and Narayanan ’416.
We affirm the rejection of claims 12 and 16 under 35 U.S.C. § 103(a)
based on Narayanan ’264, Blease, Narayanan ’416, Nowak, and Radtke.
We reverse the rejection of claims 9 and 10 under 35 U.S.C. § 103(a)
based on Narayanan ’264, Blease, Narayanan ’416, Nowak, and Radtke.
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