Ex Parte Otsubo et al

Board of Patent Appeals and Interferences

Oct 25, 2011

11058281 (B.P.A.I. Oct. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TOSHIRO OTSUBO and ATSUSHI WATANABE
__________

Appeal 2011-008539
Application 11/058,281
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal
1
under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-11. We have jurisdiction under 35 U.S.C.
§ 6(b).

1
This appeal is related to Appeal Nos. 2010-003848, 2011-007363, 2011-
008538, and 2011-009383, decided concurrently herewith.
Appeal 2011-008539
Application 11/058,281

2
STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. A herbicidal composition which comprises clethodim, a sulfonate
surfactant, polyoxyalkylene tristyryl phenyl ether and/or
polyoxyalkylene distyryl phenyl ether and an aromatic hydrocarbon.

The following grounds of rejection are before us for review:
I. Claims 1-7 and 10 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 1 and 11-14 of copending Application
No. 11/078,358.
II. Claims 1-3 and 10 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 2, 3, 6, and 7 of copending Application
No. 11/071,204 as combined with Zen.
2

III. Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Kober
3
and Zen.
IV. Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Zen and Bell.
4

2
Zen, US 6,635,663 B1, issued Oct. 21, 2003.
3
Kober et al., WO 01/67860 A1, published September 20, 2001. The
Examiner relies on Kober, US Patent No. 6,683,030 B2, issued Jan. 27,
2004, as the English language equivalent, which Appellants do not dispute.
Thus all references to Kober are to the US Patent.
4
Bell, WO 2004/017734 A1, published Mar. 4, 2004.
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Application 11/058,281

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V. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Zen and Bell as further
combined with Emerson.
5

As Appellants do not address the merits of the obviousness-type
double patenting rejections, that is, Rejections I and II (App. Br. 4-5), we
summarily affirm them. We affirm Rejection III, but reverse Rejections IV
and V.
ISSUE (Rejection III)
Has the Examiner established by a preponderance of the evidence that
the combination of Kober and Zen renders obvious the herbicidal
composition of claim 1?

FINDINGS OF FACT
FF1. The Examiner’s statement of Rejection III may be found at pages 7-10
of the Answer. We adopt the Examiner’s findings and conclusions as our
own.
FF2. As Appellants do not argue the claims separately, we focus our
analysis on claim 1, and claims 2-10 stand or fall with that claim. 37 C.F.R.
§ 41.37(c)(1)(vii).
FF3. The Examiner finds that Kober teaches an agrotechnical formulation
comprising at least one cyclohexanepolycarboxylic acid of a specified
formula, water, one or more active ingredients for plant treatment, and one
or more adjuvants or additives (Ans. 8).

5
Emerson et al., US 2003/0040436 A1, issued Feb. 27, 2003.
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Application 11/058,281

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FF4. The Examiner further finds:
The adjuvant and/or additives can include surfactants,
dispersants, wetters, thickeners, and organic solvents. Suitable
surfactants, dispersants, and wetters are anionic surfactants such
as sodium dodecylbenzenesulfonate (sulfonate surfactant),
nonionic surfactants such as polyoxyethylene sorbitan fatty acid
esters, polymer surfactants such as polyethylene oxide block
polypropylene oxide and fatty acid polyoxyethylene esters such
as lauryl alcohol polyoxyethylene ether acetate (see the entire
article, especially column 7 lines 30-35, 40 and 60-61 column 8
lines 1-5; column 9 lines 19-20).

(Id. at 8.)
FF5. Kober teaches:
The formulations according to the invention comprise
customary adjuvants and/or additives for the preparation of
formulations in the field of crop protection. These include, for
example, surfactants, dispersants, wetters, thickeners, organic
solvents, cosolvents, antifoams, carboxylic acids, preservatives,
stabilizers and the like.

(Kober, col. 7, ll. 29-35.)
FF6. Kober provides examples of numerous surfactants, including
surfactants that are anionic, cationic, nonionic, zwitterionic, polymer
surfactants, perfluoro surfactants, silicone surfactants, and phospholipids (id.
at col. 7, l. 36-col. 8, l. 13).
FF7. Kober also provides examples of preferred herbicidal plant
protectants, with clethodim being a preferred protectant (id. at col. 11, ll. 40-
52).
FF8. Kober also teaches that benzenes and naphthalines are examples of
organic solvents (id. at col. 9, ll. 53-61).
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FF9. The Examiner notes that while Kober teaches a composition that may
comprise nonionic surfactants, it does not specifically teach the use of a
polyoxyalkylene tristyryl phenyl ether and/or polyoxyalkylene distyryl
phenyl ether as the nonionic surfactant (Ans. 9).
FF10. The Examiner relies on Zen for teaching a pesticidal composition that
comprises at least one nonionic surfactant (id.).
FF11. The Examiner finds that the nonionic surfactants taught by Zen
include “nonionic surfactants such as polyoxyethylene polyaryl ethers,
polyoxyethylene polyoxypropylene polyaryl ethers such as polyoxyethylene
polyoxypropylene tristyryl phenol ether (e.g., Soprophor 796/P, same as
polyoxyethylene polyoxypropylene tristyryl phenyl ether), with an HLB of
9-14 (see column 3 lines 1-27 and Examples 1-4)” (id.).
FF12. The Examiner concludes that it would have been obvious to use
polyoxyalkylene tristyryl phenyl ether as taught by Zen in the agrotechnical
formulation of Kober because Kober teaches that nonionic surfactants may
be included in the agrotechnical formulation. (Id. at 10.)

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.”
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
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technique is obvious unless its actual application is beyond his
or her skill.

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).
While the analysis under 35 U.S.C. § 103 allows flexibility in
determining whether a claimed invention would have been obvious, it still
requires showing that “there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at
418. “We must still be careful not to allow hindsight reconstruction of
references to reach the claimed invention without any explanation as to how
or why the references would be combined to produce the claimed
invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008).

ANALYSIS
Appellants argue that even if one were to combine Zen with Kober,
“one would not have arrived at the present invention, because there is no
teaching, disclosure, suggestion or otherwise of polyoxyalkylene tristyryl
ether or polyoxyalkylene distyryl ether in particular” (App. Br. 15).
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Appellants’ argument is not factually supported. As found by the
Examiner (FF11), Zen teaches the use of polyoxyethylene tristyryl phenol
ether and polyoxyethylene polyoxypropylene tristyrylphenol ether, such as
Soprophor 796/P (see Zen, col. 3, ll. 4-7; col. 4, ll. 17-19). Thus, Zen
teaches that nonionic surfactants such as polyoxyalkylene tristyryl phenyl
ethers are known for use in agrotechnical formulations. As Kober suggests
agrotechnical formulations comprising an active agent, such as clethodim,
and teaches that additives and/or adjuvants such as nonionic surfactants may
be used, we agree with the Examiner that it would have been prima facie
obvious to use the polyoxyalkylene tristyryl ether as taught by Zen in the
composition of Kober.
Appellants argue further that the “composition of Zen is specifically
selected based on the claimed active ingredient compound, which according
to Zen, is selected from a pyriproxyfen and a pyrethroid compound” (App.
Br. 13). Thus, Appellants assert, the active ingredient of Zen is very
different from the clethodim of Kober, as pyriproxyfen is a waxy solid,
while clethodim is a liquid (id. at 14). Appellants assert that the Examiner’s
reasoning that as Kober teaches the use of nonionic surfactants, it would
have been obvious to use the polyoxyalkylene tristyryl (or distyryl) ether of
Zen because it would be an obvious variation is based on the reasoning that
because each element is known in the art, the claimed invention is obvious,
which, Appellants assert, is improper under KSR (id.). Appellants further
assert that the Examiner has failed to identify any reason why the ordinary
artisan would have modified the composition of Kober with the surfactant of
Zen (id.).
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We have carefully considered Appellants’ arguments, but do not find
them convincing. While Kober does teach a large number of possible
combinations, the teachings of Kober do encompass the composition of
claim 1. See KSR, 550 U.S. at 419 (“What matters is the objective reach of
the claim. If the claim extends to what is obvious, it is invalid under
§ 103.”). Moreover, we consider Kober to be evidence of the level of skill
of the ordinary artisan, and the ordinary artisan would know how to choose
the particular active ingredient, such as clethodim, as well as the suitable
additives and solvents, such as a sulfonate surfactant, a polyoxyalkylene
tristyryl phenyl ether and/or polyoxyalkylene distyryl phenyl ether, and an
aromatic hydrocarbon. As to the fact that the active of Zen is a waxy solid,
we note that Kober specifically teaches the use of nonionic surfactants, of
which a polyoxyalkylene tristyryl phenyl ether taught by Zen is a species.
Thus, we agree with the Examiner that it would have been well within the
level of skill of the ordinary artisan to choose nonionic surfactants that
would work with the desired active agent, which in this case is clethodim.
Note that all that is required is a reasonable expectation of success, not
absolute predictability of success. 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 the combination of Kober and Zen renders obvious the
herbicidal composition of claim 1. We thus affirm the rejection of claim 1
under 35 U.S.C. § 103(a) as being rendered obvious by the combination of
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Kober and Zen. As claims 2-10 stand or fall with claim 1, we affirm the
rejection as to those claims as well.
ISSUE (Rejections IV and V)
Has the Examiner established by a preponderance of the evidence that
the combination of Zen and Bell renders obvious the claimed composition?

FINDINGS OF FACT
FF13. The Examiner’s statement of the rejections may be found at pages 10-
15 of the Answer.
FF14. Specifically, the Examiner finds:
Zen teach a pesticidal composition comprising a) 1 to
50% by weight of a lipophilic compound as a pesticidally active
agent, b) 0.1 top [sic] 10% by weight of at least one nonionic
surfactant, c) 0.3 to 4% by weight of at least one anionic
surfactant, d) 15 to 40% by weight of a fatty acid ester and e)
20-80% by weight of at least one aromatic hydrocarbon solvent
(see the abstract, column 1 lines 24-43 and claim 1).

(Ans. 10.)
FF15. Zen teaches:
The pesticidal emulsifiable concentrate is normally
composed of a pesticidal active ingredient compound, a
surfactant and an organic solvent, and is used after diluting with
water. Various trials are made in selection of surfactants,
selection of organic solvents and their combinations on making
the pesticidal emulsifiable concentrate in order to enhance the
emulsion stability of emulsion obtained by diluting with water
and to reduce toxicity, phytotoxicity to crops, etc. depending on
the kind of the pesticidal active ingredient compound.

(Zen, col. 1, ll. 13-22.)
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FF16. Zen is drawn to a composition comprising a pesticidal active
ingredient selected from pyriproxyfen and a pyrethroid compound (id. at col.
1, ll. 26-30).
FF17. The Examiner finds that “Zen does not teach the lipophilic pesticidal
active, clethodim” (Ans. 11).
FF18. The Examiner finds that Bell teaches “an agrochemical composition
comprising (a) an agrochemical and (b) an adjuvant,” wherein the
“agrochemical is preferable [sic] lipophilic and examples include clethodim,
fenthion, fenevalerate, permethrin, allethrin, etc.” (id.).
FF19. The Examiner concludes that the ordinary artisan “would have been
motivated to substitute clethodim into the formulations taught by Zen,
because Zen teaches pesticidal formulations comprising lipophilic pesticidal
active ingredients” (id. at 12).
FF20. The Examiner relies on Emerson for teaching propyl gallate (id. at
13).

ANALYSIS
Appellants argue that the “composition of Zen is specifically selected
based on the claimed active ingredient, which according to Zen, is selected
from a pyriproxyfen and a pyrethroid compound” (App. Br. 17). Bell,
Appellants assert, is drawn to a “specific microcapsule formulation” (id. at
16). Appellants assert that the Examiner does not identify a reason as to
why one would substitute the clethodim of Bell for the pyriproxyfen or
pyrethroid of Zen, but instead relies on improper hindsight and conclusory
statements (id.).
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Application 11/058,281

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In this case we agree with Appellants. While the Examiner broadly
interprets Zen as being drawn to a lipophilic active ingredient, Zen is drawn
to a composition that has been optimized for use with a pyriproxyfen and a
pyrethroid compound. As such, the Examiner has not provided evidence or
scientific reasoning as to why the ordinary artisan would have chosen
clethodim to replace the pyriproxyfen and a pyrethroid compound in the
composition optimized for those active ingredients. We are thus compelled
to reverse Rejection IV. As Emerson does not remedy the deficiencies of
Zen and Bell, we are also compelled to reverse Rejection V.

CONCLUSION OF LAW
We conclude that the Examiner has not established by a
preponderance of the evidence that the combination of Zen and Bell renders
obvious the claimed composition. We thus reverse the rejection of claims 1-
10 under 35 U.S.C. § 103(a) as being rendered obvious by the combination
of Zen and Bell, as well as the rejection of claim 11 under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Zen and Bell as
further combined with Emerson.

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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