Ex Parte Otsubo et al

Board of Patent Appeals and Interferences

Oct 25, 2011

11058284 (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 2011-009383
Application 11/058,284
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 1-7. 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 2011-008539, decided concurrently herewith.
Appeal 2011-009383
Application 11/058,284

2
STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. A herbicidal composition which comprises 5 to 40% by weight of
clethodim, 0.1 to 10% by weight of sulfonate surfactant, 0.1 to 30%
by weight of at least one nonionic surfactant selected from the group
consisting of polyoxyalkylene fatty alcohol ether and polyoxyalkylene
alkylphenyl ether, and 50 to 94.8% by weight of aromatic
hydrocarbon.

The following grounds of rejection are before us for review:
I. Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Kober
2
and Minagawa.
3

II. Claims 1-7 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 1, 2 and 8-10 of copending Application
No. 11/058,281 as combined with Zen.
4

III. Claims 1-7 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-3 and 8 of copending Application No.
11/058,246 as combined with Clapperton.
5

2
Kober et al., WO 01/67860 A1, published Sept. 20, 2001. The Examiner
relies on Kober et al.,US Patent No. 6,683,030 B2, issued January 27, 2004,
as the English language equivalent, which Appellants do not dispute. Thus,
all references to Kober are to the US Patent.
3
Minagawa et al., US 5,128,329, issued Jul. 7, 1992.
4
Zen, US 6,635,663 B1, issued Oct. 21, 2003.
5
Clapperton et al., US 6,177,396 B1, issued Jan. 23, 2001.
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Application 11/058,284

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As Appellants do not argue the merits of Rejections II and III, we
summarily affirm them. We also affirm Rejection I.
ISSUE
Has the Examiner established by a preponderance of the evidence that
the combination Kober and Minagawa renders obvious the herbicidal
composition of claim 1?

FINDINGS OF FACT
FF1. The Examiner’s statement of Rejection I may be found at pages 3-7 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 2-7 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 a) 20 to 99.9% by weight of at least one
cyclohexanepolycarboxylic ester of formula I, b) 0 to 70% by weight of
water, c) 0.1 to 60 % by weight of at least one adjuvant and/or additive; and
d) 0 to 70% of at least one active ingredient for plant treatment (see the
entire article, especially the abstract).” (Ans. 4.)
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 alkyl polyoxyethylene ethers, alkyl
polyoxypropylene ethers, alkylaryl alcohol polyoxyethylene
ethers, such as octylphenol polyoxyethylene ether, polymer
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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 4.)
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), and that the solvent can amount to 0
to 60% by weight in the formulation (id. at col. 10, ll. 1-2).
FF9. Kober further teaches:
The formulation according to the invention can be
anhydrous or comprise 0.5 to 70% by weight of water.
Preferably, the formulation comprises water, viz. in an amount
of 16 to 70% by weight, in particular 20 to 70% by weight,
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based on the total weight of the formulation. The amount of
water depends on the formulation chosen.

(Id. at col. 7, ll. 23-28.)
FF10. Kober also teaches:
The formulations according to the invention can be
present as emulsifiable concentrate (EC), suspoemulsion (SE),
oil-in-water emulsion (O/W), water-in-oil emulsion (W/O),
aqueous suspension concentrate, oil suspension concentrate
(SC), microemulsion (ME), and the like. The formulations take
the form of aqueous or nonaqueous liquid formulations, the
cyclohexanepolycarboxylic esters acting as solvents for the
organic constituents, in particular the active ingredients, or as
inert diluents. Anhydrous formulations have the advantage
that, owing to the aprotic character of the
cyclohexanepolycarboxylic esters, even those active ingredients
can be employed where there is the risk of hydrolytic
degradation upon storage in the case of aqueous formulations.

(Id. at col. 13, ll. 29-42.)
FF11. The Examiner notes that while Kober teaches a composition that may
comprise nonionic surfactants, does not “explicitly disclose the use of at
least one nonionic surfactant selected from a polyoxyalkylene fatty alcohol
ether and a polyoxyalkylene alkylphenyl ether” (Ans. 5).
FF12. The Examiner cites Minagawa for teaching “an agricultural chemical
preparation in the form of an aqueous emulsion or suspension, with said
preparations containing insecticides, herbicides or fungicides (see the entire
article, especially column 1, lines 14-17)” (id.).
FF13. The Examiner finds that the preparation may contain 0.3 to 50% by
weight of a nonionic surfactant having an HLB value of 11 or less, wherein
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the nonionic surfactant may be polyoxyethylene lauryl ether and
polyoxyethylene nonylphenyl ether (id.).
FF14. Specifically, Minagawa teaches:
The present insecticidal preparation in the form of
aqueous emulsion or suspension comprises
(1) 0.5 to 60% by weight of one or more active
ingredient(s),
(2) 0.3 to 50% by weight of one or more nonionic
surfactant(s) having an HLB value of 11 or less,
(3) a thickener, and
(4) the balance of water.

(Minagawa, col. 2, ll. 56-63.)
FF15. The Examiner concludes that it would have been obvious to use a
polyoxyalkylene fatty alcohol ether or a polyoxyalkylene alkylphenyl ether
as taught by Minagawa as the nonionic surfactant in the agrotechnical
formulation of Kober because Kober teaches the use of nonionic surfactants,
and Minagawa teaches that such nonionic surfactants may be used in
agrochemical formulations (Ans. 6).

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).

ANALYSIS
Appellants argue that Kober is drawn to an oil-based formulation, but
“fails to disclose or suggest a herbicidal composition including at least one
nonionic surfactant selected from the group consisting of polyoxyalkylene
fatty alcohol ether and polyoxyalkylene alkylphenyl ether” (App. Br. 11).
Minagawa, Appellants assert, is drawn to a water-based formulation (id.).
Appellants assert that the Examiner has merely demonstrated that all
of the ingredients are known in the art, but has failed “to identify any reason
that would have prompted one of ordinary skill in the art to combine the
elements in the way Applicants have done” (id. at 12). Appellants argue that
“[i]n herbicidal formulations, the selection of surfactants, solvents and other
auxiliaries depends on the active ingredient,” and that the ordinary artisan
“would distinguish between the aqueous formulation of Minagawa and the
oily formulation of Kober” (id. at 12-13). Appellants further assert that even
if one were to combine Kober and Minagawa, “the combination would not
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result in the presently claimed invention which requires 50% or more of
aromatic hydrocarbon” (id. at 13).
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
fatty alcohol ether or a polyoxyalkylene alkylphenyl ether, and an aromatic
hydrocarbon.
As to the argument that one would not have combined Minagawa with
Kober as Minagawa relates to an aqueous formulation and Kober relates to
an oil-based formulation, we note that Kober specifically teaches the use of
nonionic surfactants, of which the polyoxyalkylene fatty alcohol ether or
polyoxyalkylene alkylphenyl ether taught by Minagawa is a species. Thus,
persons of ordinary skill in the art would have recognized that such
compounds are useful in both types of formulations.
Moreover, Kober teaches that the formulations comprise 0.5 to 70%
by weight of water, and Minagawa teaches that the formulations may
contain up to 60% of an active ingredient, and up to 50% of a nonionic
surfactant, and thus encompasses formulations that contain less than 40%
water. Kober also teaches different formulations, such as oil-in-water
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emulsion, water-in-oil emulsion, as well as aqueous and oil suspensions.
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, such as
that taught by Minagawa, that would work with the desired active agent,
which in this case is clethodim, as well as to choose the form of the
agrotechnical preparation. 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).
As to the amount of aromatic hydrocarbon, Kober teaches that the
solvent, of which benzene is an example, may comprise up to 60% by
weight of the formulation, and thus suggests an agrotechnical formulation
comprising more than 50% aromatic hydrocarbon.

CONCLUSION OF LAW
We conclude that the Examiner has established by a preponderance of
the evidence that the combination Kober and Minagawa 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
Kober and Minagawa. As claims 2-7 stand or fall with claim 1, we affirm
the rejection as to those claims as well.

Appeal 2011-009383
Application 11/058,284

10
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

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