Ex Parte Otsubo et al

Board of Patent Appeals and Interferences

Oct 25, 2011

11058246 (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 2011-008538
Application 11/058,246
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and RICHARD L. 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 1-8. We have jurisdiction under 35 U.S.C.
§ 6(b).

1
This appeal is related to Appeal Nos. 2010-003848, 2011-007363, 2011-
008539, and 2011-009383, decided concurrently herewith.
Appeal 2011-008538
Application 11/058,246

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, a polyoxyalkylene alkanolamide surfactant and an aromatic
hydrocarbon.

The following grounds of rejection are before us for review:
I. Claims 1-8 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-7 and 10-14 of copending Application
No. 11/078,358.
II. Claims 1-8 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-7 and 10 of copending Application No.
11/071,204 as combined with Kostka.
2

III. Claims 1-8 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Kober
3
and Clapperton.
4

As Appellants do not argue the merits of Rejections I and II (see App.
Br. 7), we summarily affirm them. We also affirm Rejection III.

2
Kostka et al., US 6,375,969 B1, issued Apr. 23, 2002.
3
Kober et al., US 6,683,030 B2, issued Jan. 27, 2004.
4
Clapperton et al., US 6,177,396 B1, issued Jan. 23, 2001.
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Application 11/058,246

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ISSUE
Has the Examiner established by a preponderance of the evidence that
the combination Kober and Clapperton renders obvious the herbicidal
composition of claim 1?

FINDINGS OF FACT
FF1. The Specification teaches that the “invention relates to a herbicidal
composition” (Spec. 1).
FF2. The Specification teaches further that “the composition containing
clethodim can provide a stable emulsion when it is diluted with hard water
as well as normal water” (id.).
FF3. Examples 1-4 teach that the recited ingredients were mixed to give the
herbicidal compositions of the invention (id. at 5-7).
FF4. Test Example 1 looked at the emulsion stability of Examples 1-4 (id.
at 7-8).
FF5. The Examiner‟s statement of Rejection III may be found at pages 6-9
of the Answer. We adopt the Examiner‟s findings and conclusions as our
own.
FF6. As Appellants do not argue the claims separately, we focus our
analysis on claim 1, and claims 2-8 stand or fall with that claim. 37 C.F.R.
§ 41.37(c)(1)(vii).
FF7. 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. 6).
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FF8. 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
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 6-7.)
FF9. 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.)
FF10. 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).
FF11. Kober also provides examples of preferred herbicidal plant
protectants, with clethodim being a preferred protectant (id. at col. 11, ll. 40-
52).
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FF12. Kober also teaches that benzenes and naphthalines are examples of
organic solvents (id. at col. 9, ll. 53-61).
FF13. The Examiner notes that while Kober teaches a composition that may
comprise nonionic surfactants, it does not specifically teach the use of
polyoxyalkylene polyalkanolamide as the nonionic surfactant (Ans. 7).
FF14. The Examiner relies on Clapperton for teaching the use of nonionic
surfactants, such as polyoxyalkylene polyalkanolamide, with pesticides (id.).
FF15. The Examiner concludes that it would have been obvious to use the
polyoxyalkylene polyalkanolamide as taught by Clapperton in the
agrotechnical formulations of Kober because Kober teaches the use of
nonionic surfactants and Clapperton teaches that polyoxyalkylene
polyalkanolamide is a nonionic surfactant that may be used with
agrotechnical formulations (id. at 8).

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
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
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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 Clapperton “teaches aqueous based surfactant
compositions that are suitable for use in a suspension of solids, such as
pesticides,” and that the Examiner picked polyoxyalkylene
polyalkanolamide from “a large generic list of surfactants” (App. Br. 9).
Appellants assert that “Clapperton fails to provide any additional guidance
on why this one particular component should be used in the composition of
Kober or how to make the specific combination” (id.). Appellants argue that
the function of a surfactant in the suspension of solids as taught by
Clapperton is different from an emulsion comprising clethodim and an
aromatic hydrocarbon to form an emulsion (id. at 11-12). Thus, Appellants
assert, Clapperton discourages the claimed composition (id. at 12).
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
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the particular active ingredient, such as clethodim, as well as the suitable
additives and solvents, such as a sulfonate surfactant, a polyoxyalkylene
polyalkanolamide, and an aromatic hydrocarbon. As to the fact that
Clapperton relates to the suspension of solids, we note that Kober
specifically teaches the use of nonionic surfactant, of which the
polyoxyalkylene polyalkanolamide taught by Clapperton 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 which nonionic surfactants 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).
Appellants argue that “the Examiner‟s position is essentially an
„obvious to try‟ rationale” (App. Br. 10). Specifically, Appellants assert that
the testing of all the listed components to identify the claimed
composition, without any degree of predictability as to which
components would provide a stable emulsion when diluted with
either hard water or normal water (specification page 1), is not
the easily traversed, small and finite number of alternatives that
KSR suggested might support an inference of obviousness

(id. at 9). Appellants further argue that the Examiner has not provided any
reasoning as to why the specific components of Kober and Clapperton would
have been chosen to arrive at the invention at claim 1 (id. at 10).
Appellants also argue that “a surfactant used in a formulation with one
active ingredient is not necessarily interchangeable with a surfactant used in
a formulation with a different active ingredient,” as “[i]t is known in the art
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that the active ingredient has a large influence on the stability of a given
formulation” (id.).
We disagree that this is an “obvious to try” case, but rather involves
using known materials for their intended purpose. Kober teaches
agrotechnical compositions that encompass the composition of claim 1.
While we agree that Kober encompasses a large number of combinations,
Kober is evidence of the level of skill in the art, and demonstrates that it is
known to combine an active agent, such as clethodim, with adjuvants and
additives, such as surfactants. As such, it would have been well within the
level of skill of the ordinary artisan to determine those surfactants that would
be compatible with the desired active agent for the desired purpose.
Appellants also argue that “the claimed composition is beneficial
because it provides a stable emulsion when diluted with either hard water or
normal water,” and that “[i]t would have been difficult for one or ordinary
skill in the art to predict the emulsion stability provided by the presently
claimed invention, since an experiment for determining emulsion stability
would have been needed” (App. Br. 11).
As noted above, we find that it would have been well within the level
of skill of the ordinary artisan to determine those surfactants that would be
compatible with the desired active agent for the desired purpose. Moreover,
the reason for combining provided by the prior art need not be the same as
that of Appellants. See KSR, 550 U.S. at 420 (“[A]ny need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.”). In this case, Kober teaches that active agents such as clethodim
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may be formulated with additives and adjuvants, such as nonionic
surfactants, and Clapperton teaches that polyoxyalkylene alkanolamide
surfactants are known to be used in agrotechnical compositions. To the
extent that Appellants are arguing unexpected results, they have not asserted
that the results are unexpected, nor do they compare the claimed
compositions to the closest prior art. See In re Baxter Travenol Labs., 952
F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.”).

CONCLUSION OF LAW
We conclude that the Examiner has established by a preponderance of
the evidence that the combination Kober and Clapperton 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 Clapperton. As claims 2-8 stand or fall with claim 1, we affirm
the rejection as to those claims as well.

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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